Ex Parte Lu

Board of Patent Appeals and Interferences

Aug 31, 2009

09778454 (B.P.A.I. Aug. 31, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte FUMIN LU
______________

Appeal 2008-003635
Application 09/778,454
Technology Center 1700
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Decided: August 31, 2009
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Before, BRADLEY R. GARRIS, ADRIENE LEPIANE HANLON, and
CHARLES F. WARREN, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL
Applicant appeals to the Board from the decision of the Primary
Examiner finally rejecting claims 1, 3, 5, 7 and 8 in the Office Action mailed
December 7, 2004. 35 U.S.C. §§ 6 and 134(a) (2002); 37 C.F.R.
§ 41.31(a) (2005).
We affirm-in-part the decision of the Primary Examiner.

Appeal 2008-003635
Application 09/778,454
Claim 1 illustrates Appellant’s invention of a spunbond fabric, and is
representative of the claims on appeal:
1. A spunbond fabric having excellent softness and strength, made
from the spunbond process, including:
(a) extruding filaments consisting of an ultra low viscosity
polypropylene polymeric resin having a melt flow rate in grams/10 minutes
at 230 degrees Centigrade between 350 MFR and 750 MFR from a
spinneret;
(b) drawing said filament through a drawing unit;
(c) generating a filament speed above 4,000 meters per minute; and
(d) creating a fabric consisting [sic] one or more layers of filaments
extruded using the same melt flow rate resins between 350 and 750.
The Examiner relies upon the evidence in these references (Ans.
2-3):1
Morini US 5,476,911 Dec. 19, 1995
Lu US 5,688,468 Nov. 18, 1997
Ofosu US 6,268,302 B1 Jul. 31, 2001
Bansal US 6,548,431 B1 Apr. 15, 2003
Bailey WO 96/29460 A1 Sep. 26, 1996
Appellant relies on the following reference (App. Br. 9):
Eaton2 US 5,173,356 Dec. 22, 1992
Appellant requests review of the following grounds of rejection
advanced on appeal by the Examiner (App. Br. 4-5):
claim 1 under 35 U.S.C. § 102(b) or, in the alternative, under 35 U.S.C.
§ 103(a) over Morini (Ans. 3);

1 We consider these documents: Appeal Brief filed December 13 2005;
Examiner’s Answer mailed February 23, 2006; Reply Brief filed April 20,
2006; Supplemental Examiner’s Answer mailed July 20, 2007;
Supplemental Reply Brief filed September 19, 2007.
2 This document has not been made of record.
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claim 3 under 35 U.S.C. § 102(e) or, in the alternative, under 35 U.S.C.
§ 103(a) over Bansal (Ans. 5);
claim 5 under 35 U.S.C. § 103(a) over Lu in view of Ofosu (Ans. 6);
claim 7 under 35 U.S.C. § 102(b) or, in the alternative, under 35 U.S.C.
§ 103(a) over Bailey (Ans. 4); and
claim 8 under 35 U.S.C. § 103(a) over Bailey (Ans. 7).
Issues
The issues in this appeal are whether Appellant has shown that the
evidence in Morini, Bansal, and Bailey do not support the Examiner’s
findings of prima facie anticipation and conclusions of prima facie
obviousness with respect to the claimed spunbond fabric encompassed by
claim 1, 3, and 7, respectively, and whether Appellant has shown that the
evidence in the combined teachings of Lu and Ofosu and in Bailey do not
support the Examiner’s conclusions of prima facie obviousness with respect
to the claimed spunbond fabric encompassed by claim 5 and 8, respectively.
Claim Interpretation
The plain language of independent claims 1, 3, 5, and 7, couched in
product-by-process language, specify a spunbond fabric characterized by the
properties imparted thereto by any spunbond process which includes at least
the steps of extruding filaments consisting of a specified resin from any
spinneret, drawing the filaments through any drawing unit, and forming a
fabric of one or more layers therewith. In claims 1, 3, and 5, the process
includes the additional step of “generating a filament speed above
4,000 meters per minute.” The specified resins consist of: claim 1, “an ultra
low viscosity polypropylene polymeric resin having a melt flow rate
[(MFR)] in grams/10 minutes at 230 degrees Centigrade between 350 MFR
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Application 09/778,454
and 750 MFR;” claim 3, “polyethylene terephthalate resins with IV (intrinsic
viscosity) of less than 0.55;” claim 5, “polyamide (PA6 nylon 6) of a R.V.
(relative viscosity) below 2.2;” and claim 7, “polypropylene resin having a
mass flow rate MFR between 250 and 750 grams/10 minutes at 230 degrees
Centigrade.” Dependent claim 8 further limits claim 7 by specifying “a
multiple layer fabric consisting of layers of said filaments of the same
resins.” See, e.g., In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985), and
cases cited therein (“even though product-by-process claims are limited by
and defined by the process, determination of patentability is based on the
product itself”); In re Bridgeford, 357 F.2d 679, 680-83 (CCPA 1966); see
also, e.g., In re ICON Health and Fitness, Inc.,
496 F.3d 1374, 1378-79 (Fed. Cir. 2007); In re Am. Acad. of Sci. Tech Ctr.,
367 F.3d 1359, 1364 (Fed. Cir. 2004), and cases cited therein; In re Morris,
127 F.3d 1048, 1054-55 (Fed. Cir. 1997).
Opinion
We considered the totality of the record in light of Appellant’s
arguments with respect to claims 1, 3, 5, 7, and 8 and the grounds of
rejection advanced on Appeal. See, e.g., In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (“‘On appeal to the Board, an applicant can overcome a
rejection by showing insufficient evidence of prima facie obviousness or by
rebutting the prima facie case with evidence of secondary indicia of
nonobviousness.’”) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir.
1998)); In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (“After evidence
or argument is submitted by the applicant in response, patentability is
determined on the totality of the record, by a preponderance of evidence
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Application 09/778,454
with due consideration to persuasiveness of argument.”) (citing, inter alia, In
re Spada, 911 F.2d 705, 707 n.3 (Fed. Cir. 1990)).
Claim 1: § 102(b) or § 103(a) over Morini
We are of the opinion Appellant has shown that the evidence in
Morini does not support the Examiner’s finding of prima facie anticipation
and conclusion of prima facie obviousness with respect to appealed claim 1.
We find Morini would have disclosed to one of ordinary skill in this
art specific crystalline propylene polymers made by certain catalysts having,
among other things, an MFR ranging from 600 to 1000 g/10 min., wherein
polymers having an MFR ranging from 1000 to 2000 g/10 min. exhibit
different properties. Morini, e.g., abstract and col. 3, ll. 18-29. Morini
evinces it was known in the prior art to use crystalline propylene polymers
having MFR values in the range of 300 to 1500 g/10 min. in melt blown or
spun-bonded processes to prepare nonwoven fabrics. Morini col. 1,
ll. 11-21. Morini discloses that “at high MFR values (ranging from 1000 to
2000 dl/g), the polymers of the present invention . . . have a consistently
narrower MWD[, that is, molecular weight distribution,] . . . [which] is
desirable for certain applications, such as the production of fibers with fast
spinning processes.” Morini col. 3, ll. 18-27. Morini teaches the disclosed
crystalline propylene polymers can be spun into fibers for nonwoven webs
by melt-blown processes and by spun-bonded processes, wherein the webs
and fabrics produced by the spun-bonded processes “have superior tensile
strength and softness over webs and fabrics produced from fibers obtained
[sic] polymer produced by thermal degradation process or by known
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Application 09/778,454
polymerization processes using known catalysts.” Morini col. 11, l. 62 to
col. 12, l. 8.
Appellant submits Morini does not contain evidence describing a
fabric within claim 1 because the “fast spinning processes” are not identified
as spunbonded processes using the polypropylene polymeric resin and
filament speeds of 4,000 meters as claimed. App. Br., e.g., 6-7; Reply Br.,
e.g., 2-3. Appellant points out that Morini does not define the term “fast”
and that filament speeds affect the diameter and thus the denier and softness
of the filament. Reply Br., e.g., 2; Supp. Reply Br., e.g., 4-5. The Examiner
submits “[a]lthough spinning rate can be used to influence filament
properties such as diameter, the spinning rate does not necessarily result in
filaments patentably distinct from filaments spun at a lower rate,” and “the
filament is the result of many processing variables including extrusion hole
size, amount of drawing, and spinning rate.” Supp. Ans. 2-3.
We agree with Appellant that as a matter of fact, Morini does not
define the term “fast” with respect to any particular spinning process, and
indeed, we find that Morini uses this term with respect to crystalline
propylene polymers with MFR values ranging from 1000 to 2000 dl/g.
Furthermore, the Examiner’s position with respect to the effect of filament
speeds as well as other process factors which can affect the filament is mere
speculation with respect to the claimed fabrics and Morini’s disclosure as,
indeed, the Examiner does not support the position with evidence found in
Morini or elsewhere in the record.
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Accordingly, the Examiner has not established a prima facie case of
anticipation or of obviousness based on the evidence in Morini as Appellant
points out, and thus, we reverse the ground of rejection of claim 1.
Claim 3: § 102(e) or § 103(a) over Bansal
We are of the opinion Appellant has not shown that the evidence in
Bansal does not support the Examiner’s finding of prima facie anticipation
and conclusion of prima facie obviousness with respect to appealed claim 3.
“Appellant concedes that [Bansal] shows a product manufactured as a
spunbond with filament speeds above 4,000 meters per minute and with
resins having an intrinsic viscosity of less than .55 from a spinneret.” App.
Br. 7. Appellant submits Bansal does not anticipate as it teaches away from
filaments extruded from a single resin in teaching the use of “two separate
polymers to create a single filament,” which teachings also negate a
conclusion of obviousness. App. Br. 7-8. In this respect, Appellant points
to several disclosures in Bansal, and further argues that these disclosures
constitute a teaching away from obviousness as well. Reply Br. 7-8, citing
Bansal col. 2, ll. 38-41, col. 3, ll. 7-15, col. 11, ll. 38-59, col. 12, ll. 14-24,
claim 12, and claim 13; see also Supp. Reply Br. 6-8. The Examiner points
out that Bansal discloses the filaments can consist of a single component.
Supp. Ans. 3, citing Bansal col. 12, ll. 55-65, and Example 1.
We find Bansal would have disclosed to one of ordinary skill in this
art, among other things, that the filaments can consist of a single component,
that is, extruded from a single resin, as the Examiner points out: “fibers can
be produced as single component fibers, as multiple component fibers, or as
some combination thereof.” Bansal col. 12, ll. 60-62. Bansal provides an
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Application 09/778,454
illustrative example of a single component fiber in Example 1 which is made
from polyethylene terephthalate, that comports with the description of the
disclosed invention. Bansal, e.g., col. 2, ll. 12-36, and col. 15, ll. 1-16.
Bansal does disclose preferences for multicomponent filaments as Appellant
points out. Bansal, e.g., col. 2, ll. 38-41, col. 3,
ll. 7-15, col. 11, ll. 38-59, col. 12, ll. 14-24, claim 12, and claim 13.
Appellant’s argument that Bansal “teaches away” from the claimed
fabric is not an argument that addresses the issue of anticipation. See, e.g.,
Celeritas Technologies Ltd. V. Rockwell Int’l Corp., 150 F.3d 1354, 1361
(Fed. Cir. 1998) (“[T]he question whether a reference ‘teaches away’ from
the invention is inapplicable to an anticipation analysis.”). We further fail to
find in Bansal any teaching which leads away from selecting a single resin
filament merely on the disclosed preference for certain multicomponent
filaments. This is because Bansal’s disclosure of multicomponent filaments
“does not criticize, discredit, or otherwise discourage” preparing single resin
filaments as disclosed therein. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir.
2004).
Accordingly, we have again evaluated all of the evidence of
anticipation and of obviousness found in Bansal with Appellant’s
countervailing evidence of and argument for non-anticipation and
nonobviousness, and based thereon we conclude, by a preponderance of the
evidence and weight of argument, that the claimed invention encompassed
by appealed claim 3 would have been anticipated as a matter of fact under 35
U.S.C. § 102(e), and would have been obvious as a matter of law under 35
U.S.C. § 103(a).
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Claim 5: § 103(a) over Lu and Ofosu
We are of the opinion Appellant has shown that the evidence in the
combined teachings of Lu and Ofosu does not support the Examiner’s
conclusion of prima facie obviousness with respect to appealed claim 5.
We find Lu would have evinced that it was conventional in the prior
art to use thermoplastic polymers such as, among other things, “nylon,” in
melt spinning processes to form nonwoven fabrics, wherein “[t]he filaments
of the web are . . . joined to each other through conventional techniques.”
Lu col. 1, ll. 39-57. Ofosu would have disclosed to one of ordinary skill in
this art that a spunbonded nonwoven fabric with strength and softness can be
prepared with a “polyolefin polymer” that has a “viscosity . . . measured at
180ºC. and must be at least 2.5x103 dynes.sec/cm2.” Ofosu abstract and col.
5, ll. 38-50.
The Examiner contends “[i]t is known in the art that nylon including
nylon 6 is conventionally melt spun,” and “Ofosu notes that it is believed
that small fibers made from lower viscosity polymers enable more polymer
to flow at the bond points during bonding, thus ensuring a strong bond, yet
the web retains the advantage of softness which smaller fibers provide.”
Ans. 6, citing Lu col. 1, ll. 39-42, and Ofosu col. 5, ll. 50-60. The Examiner
concludes one of ordinary skill in this art would have used “a low viscosity
polymer as suggested by Ofosu in the nylon 6 spunbonded fabric of Lu
motivated by the desire to ensure a strongly bonded soft nonwoven
material.” Ans. 6.
Appellant submits that Lu does not teach the use of an ultra-low
viscosity polyamide PA6 nylon 6 resin and Ofosu also does not suggest an
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ultra-low viscosity polyamide PA6 nylon 6 resin, arguing that the Examiner
relied on hindsight to combine Lu and Ofosu. Reply Br. 8-10, citing inter
alia In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992)
We agree with Appellant. Indeed, even in light of the Examiner’s
position, we do not find in Ofosu any suggestion to extend the teachings
therein with respect to the viscosity of a polyolefin polymer to Lu’s “nylon”
leading to the claimed PA6 nylon 6 resin which, on this record, is only
disclosed in Appellant’s Specification.
Accordingly, in the absence of a prima facie case of obviousness, we
reverse the ground of rejection of claim 5.
Claim 7: § 102(b) or § 103(a) over Bailey
Claim 5: § 103(a) over Bailey
We are of the opinion Appellant has not shown that the evidence in
Bailey does not support the Examiner’s finding of prima facie anticipation
and conclusion of prima facie obviousness with respect to appealed claim 7,
and the Examiner’s conclusion of prima facie obviousness with respect to
appealed claim 8.
With respect to claim 7, Appellant takes the position that Bailey’s
disclosure of the most preferred MFR range for linear low density
polyethylene resin is above 60 grams per 10 minutes at 190ºC. App. Br. 9,
citing Bailey 11:9-10; see also Reply Br. 4-5; Supp. Reply Br. 11-12.
Appellant argues that Bailey’s product differs from the product claimed in
claim 7 because Bailey incorporates Eaton which discloses that the MFR
should not exceed 80 g/10 min., thus limiting Bailey’s disclosure to an MFR
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of 80 g/10 min. as an upper limit of the MFR range. App. Br. 9-10, citing
Eaton col. 8, ll. 41-48; see also Reply Br. 4-5; Supp. Reply Br. 11-12.
In response to the Examiner’s position in the Supplemental
Examiner’s Answer, Appellant submits:
By incorporating [Eaton] by reference, Bailey also incorporated
all of the limitations and elements of that patent, including the
limitation that the non-woven fabric described in said patent has
an MFR that does not exceed 80 g/10 min. Cleary, [Bailey] is
limited by the limitation of [Eaton], which Bailey has
incorporated by reference. Whether the Bailey invention’s
MFR would or would not increase at the temperature claimed
by Appellant is irrelevant. The Bailey reference is bound by the
limitation stated within [Eaton] where Bailey incorporated
those limitations by reference.
Supp. Reply Br. 12.
Appellant maintains this position with respect to claim 8. Appellant
takes the further position with respect to claim 8, that based on the novel and
unknown properties of the claimed spunbond fabric based on the specified
polyethylene resin with the particular MFR in claim 7 on which claim 8
depends, it would not have obvious to one of ordinary skill in the art to
choose filaments based on the claimed polyethylene resin invented by
Appellant for the reason that such filaments were “unknown but for
Applicant’s disclosure in the application.” Reply Br. 11-12, citing In re
Ochiai, 71 F.3d 1565, 1570 (Fed. Cir. 1995); see also Supp. Reply Br.
12-13.
The difficulty with Appellant’s positions is that Appellant has not
established that Bailey does not support the Examiner’s position. As a
matter of fact, we find no disclosure in either Bailey or Eaton supporting
Appellant’s contention that Eaton’s disclosure acts as a limitation on
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Bailey’s disclosure, and Appellant points to no such disclosure. Indeed, we
know of no authority holding that the disclosure of a patent document is
limited by the disclosure of any patent document incorporated therein in the
absence of express language to that effect, and Appellant cites no such
authority. Appellant’s view of Bailey’s disclosure also does not support
their position that the claimed polyethylene resin filaments were unknown in
the art prior to the claimed invention, and Ochiai does not apply if prior art
places one of ordinary skill in the art in possession of the claimed invention.
Cf. Ochiai, 71 F.3d at 1568-70.
Accordingly, we have again evaluated all of the evidence of
anticipation and of obviousness found in Bailey with Appellant’s
countervailing evidence of and argument for non-anticipation and
nonobviousness, and based thereon we conclude, by a preponderance of the
evidence and weight of argument, that the claimed invention encompassed
by appealed claim 7 would have been anticipated as a matter of fact under 35
U.S.C. § 102(b), and claims 7 and 8 would have been obvious as a matter of
law under 35 U.S.C. § 103(a).
Summary
We have affirmed the grounds of rejection of claims 3, 7, and 8, and
we have reversed the grounds of rejection of claims 1 and 5.
The Primary Examiner’s decision is affirmed-in-part.

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(v).
AFFIRMED-IN-PART

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MALIN HALEY DIMAGGIO BOWEN & LHOTA, P.A.
1936 S ANDREWS AVENUE
FORT LAUDERDALE, FL 33316
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