Ex Parte Luo et al

Board of Patent Appeals and Interferences

May 26, 2006

10334513 (B.P.A.I. May. 26, 2006)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte SHUIYUAN LUO and ALAN L. BILLINGS
_____________
Appeal No. 2006-1701
Application No. 10/334,513
______________
ON BRIEF
_______________
Before KIMLIN, GARRIS and FRANKLIN, Administrative Patent Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-5.
Claim 1 is illustrative:
1. An industrial fabric for use in papermaking and
papermaking related processes comprising a plurality of
uncoated functional monofilaments having a grooved-shaped
cross-section and having reduced air permeability compared
with a fabric formed of monofilaments having a circular
cross-section.
The examiner relies upon the reference in the rejection of
the appealed claims:
Dugan et al. (Dugan) 6,093,491 Jul. 25, 2000
Appeal No. 2006-1701
Application No. 10/334,513
2
Appellants’ claimed invention is directed to an industrial
fabric that is used for papermaking and papermaking related
processes. The fabric comprises a plurality of uncoated
functional monofilaments having a grooved-shaped cross-section.
The fabric has reduced air permeability compared with a fabric
formed of monofilaments having a circular cross-section.
Appealed claims 1-5 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Dugan.
Appellants do not present separate arguments for any
particular claim on appeal. Accordingly, all the appealed claims
stand or fall together with claim 1.
We have thoroughly reviewed each of appellants’ arguments
for patentability. However, we are in complete agreement with
the examiner that Dugan provides a description of the claimed
subject matter within the meaning of Section 102. Accordingly,
we will sustain the examiner’s rejection for essentially those
reasons expressed in the answer.
Appellants do not dispute the examiner’s factual
determination that Dugan, like appellants, describes and
exemplifies a fabric comprising a plurality of uncoated
functional monofilaments having a groove-shaped cross-section.
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Application No. 10/334,513
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Appellants contend, however, that Dugan does not describe the
claimed invention because the fabric of Dugan is not disclosed as
being for use in papermaking and papermaking processes, Examples
1-8 of Dugan are comparative examples that are not the patentee’s
invention, and Dugan does not describe that the comparative
examples have reduced air permeability. We agree with the
examiner that these arguments are not persuasive.
The claimed recitation of intended use, “for use in
papermaking and papermaking related processes,” does not serve to
structurally distinguish the claimed fabric from the comparative
fabrics of Dugan. As pointed out by the examiner, the present
specification fails to describe any physical characteristics of
fabrics within the scope of the appealed claims that are not
possessed by the comparative fabrics of Dugan. Significantly,
appellants have not established on this record that the
comparative fabrics described by Dugan cannot be used in the
broadly claimed class of “papermaking related processes.”
Appellants’ argument that Dugan is directed to using fibers
having a hydrophilic surface modification, or coating, is also
without merit. It is not necessary for a finding of anticipation
under Section 102 that the description of the claimed invention
Appeal No. 2006-1701
Application No. 10/334,513
4
in a patent reference be part of the disclosed invention. It is
sufficient that the claimed invention is described in any
respect, including embodiments of the prior art that are not
preferred.
As for the claim recitation regarding reduced air
permeability, it is well settled that when a claimed product
reasonably appears to be substantially the same as a product
disclosed by the prior art, the burden is on the applicant to
prove that the prior art product does not necessarily or
inherently possess characteristics attributed to the claimed
product. In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1658
(Fed. Cir. 1990); In re Best, 562 F.2d 1252, 1255, 195 USPQ 430,
433 (CCPA 1977). In the present case, since the comparative
fabrics of Dugan admittedly are made from a plurality of uncoated
monofilaments having a grooved-shaped cross-section, it is
reasonable to conclude that the fabric has reduced air
permeability compared with the fabric formed of monofilaments
having a circular cross-section. Hence, it is clear that we do
not subscribe to appellants’ argument that “there is nothing in
Dugan to even suggest that the fabric comprised of grooved fibers
would have reduced air permeability as compared to a fabric
Appeal No. 2006-1701
Application No. 10/334,513
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formed of fibers having a circular cross-section” (page 9 of
reply brief, second paragraph). We find clear suggestion from
Dugan’s comparative fabrics being made, like appellants’, from
synthetic, uncoated monofilaments having a grooved-shaped cross-
section. Appellants have advanced no rationale why the
comparative fabrics of Dugan would not have the claimed reduced
air permeability.
In conclusion, based on the foregoing, the examiner’s
decision rejecting the appealed claims is affirmed.
Appeal No. 2006-1701
Application No. 10/334,513
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
BRADLEY R. GARRIS ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
BEVERLY A. FRANKLIN )
Administrative Patent Judge )
ECK:hh
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Application No. 10/334,513
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