Ex Parte Maini

Board of Patent Appeals and Interferences

Feb 17, 2010

10903206 (B.P.A.I. Feb. 17, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SURINDER MEHTA MAINI
____________

Appeal 2009-006375
Application 10/903,206
Technology Center 1700
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Decided: February 17, 2010
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Before BEVERLY A. FRANKLIN, LINDA M. GAUDETTE, and
KAREN M. HASTINGS, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134 from the Examiner's
rejection of claims 8 and 22-36. We have jurisdiction under 35 U.S.C.
§ 6(b).

Appeal 2009-006375
Application 10/903,206

STATEMENT OF THE CASE
Claim 8 is representative of the subject matter on appeal and is set
forth below:
8. A protective garment comprising an outer shell, a moisture
barrier, and an inner liner, said outer shell comprised of a woven fabric
having a limiting oxygen index of greater than 21 and made using a yarn
comprised of a co-mingled bundle of 10 to 90 wt % of a first continuous
filament component and 90 to 10 wt % of a second continuous filament
component, the two continuous filament components having different
shrinkage characteristics when exposed to elevated temperature,

said yarn having a random entangled loop structure wherein the
weight per unit length of the yarn is 3 to 25 percent higher than a continuous
filament yarn having the same composition but no entanglement or loops.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Behnke 4,120,914 Oct. 17, 1978
Aldridge 5,685,015 Nov. 11, 1997
Gurian 5,856,005 Jan. 05, 1999

THE REJECTION(S)
Claims 8 and 22 - 36 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Aldridge in view of Behnke and further in view of
Gurian.
ISSUE
Has Appellant identified error in the Examiner’s determination of
obviousness by showing that there is insufficient motivation to combine
Gurian with Aldridge in view of Behnke, with no reasonable expectation of
success in so doing, based upon non-analogous art?
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We answer this question in the negative.
PRINCIPLES OF LAW
“A reference is reasonably pertinent if, even though it may be in a
different field from that of the inventor’s endeavor, it is one which, because
of the matter with which it deals, logically would have commended itself to
an inventor’s attention in considering his problem.” In re Clay, 966 F.2d
656, 659 (Fed. Cir. 1992). In other words, “familiar items may have obvious
uses beyond their primary purposes.” KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 420-21 (2007).
“Under the correct analysis, any need or problem known in the field
of endeavor at the time of invention and addressed by the patent [or
application at issue] can provide a reason for combining the elements in the
manner claimed.” KSR, 550 U.S. at 420. Thus a reference in a field
different from that of applicant’s endeavor may be reasonably pertinent if it
is one which, because of the matter with which it deals, logically would have
commended itself to an inventor’s attention in considering his or her
invention as a whole.
FINDINGS OF FACT
Gurian is directed to a permanently anti-microbial and flame-retardant
yarn and fabric made therefrom. Gurian teaches a woven fabric comprising
yarns having a boucle-like sheath formed by a plurality of substantially
randomly extending permanently flame-retardant filaments and anti-
microbial filaments. Gurian, cols. 3-4, Figure 1. Gurian teaches that the
looped yarn structure creates yarns that are highly abrasive and piling
resistant and can be customized to create or mimic almost any tactile
property that is desired. Gurian, col. 4, ll. 45 - 55. Gurian
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teaches that the fabric has the ability to pass both flame-retardancy and anti-
microbial tests. Gurian, col. 5, ll. 1-10.
ANALYSIS
As an initial matter, we confine our discussion to appealed claim 8,
which contains claim limitations representative of the arguments made by
Appellants, pursuant to 37 C.F.R. § 41.37(c)(1)(vii).
The Examiner relies upon Aldridge for teaching various layers of the
claimed garment. The Examiner recognizes that Aldridge fails to teach a
blend of KEVLAR® and NOMEX® for the yarn as recited in claims 8, 28,
and 36, and also does not teach a plain weave as recited in claims 26 and 32.
The Examiner offers Behnke for curing these deficiencies of Aldridge. Ans.
3-5. The Examiner recognizes that Aldridge in view of Behnke fails to teach
that the yarn has a random entangled loop structure. The Examiner relies
upon Gurian for curing this deficiency. The Examiner equates the boucle-
like yarn structure disclosed in Gurian to the random entangled loop
structure as recited in independent claims 8 and 28. The Examiner notes that
Gurian teaches that the yarns include flame-retardant polyester filaments and
other flame-retardant filaments with a desired amount of flame retardancy.
Ans. 5-6.
Appellant asserts that there is no motivation to combine Gurian with
Aldridge and Behnke because Gurian is not directed to a field, such as fire-
fighting, where fire-fighters wearing turnout coats made of the inventive
fabric enter burning buildings. Appellant argues that fire-fighters would not
use the hospital drape that passed a fire retardancy test of Gurian. Br. 4.
Appellant also argues that there is no reasonable expectation of
success in making the combination. Similarly, Appellant argues that Gurian
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is directed to a field entirely different from that of the fire-fighting field to
which the subject application is directed. Appellant states that in its
Background, Gurian is directed to fabric for uses such as hospital drapes and
shower curtains. Br. 4.
Appellant also note that Gurian discloses that microbial fibers form
the sheath (and therefore the loops) in the yarns, whereas the flame-retardant
fibers are at the core. Appellants note that the Examiner had countered that
Gurian discloses at column 3, lines 60-69 that flame-retardant fibers can be
present in both the sheath and core. Appellant states that this does not negate
Appellant’s point that, in Gurian, it is only the antimicrobial fibers that form
the loops and are most needed in the sheath (which form the loops).
Appellant argues that the fact the loops are made even partly of a non flame-
retardant fiber is a further indication that the fabrics of Gurian are not
acceptable for use in his invention. Br. 4-5.
We are not convinced by the above-mentioned arguments for the
following reasons. Gurian does not have to be specifically directed to
fabrics for fire-fighter garments in order to be analogous art. See In re Clay,
966 F.2d at 659; KSR, 550 U.S. at 420-21. In the instant case, as pointed out
by the Examiner, Gurian is directed to fabric having the ability to pass
flame-retardancy tests. Gurian, col. 5, ll. 1-10. Ans. 5. This matter
logically would have commended itself to an inventor’s attention in making
a fire-protective garment.
With respect to the argument that Gurian makes loops that include
non flame-retardant fiber, we find this unconvincing, because, as pointed out
by the Examiner, Gurian teaches that the looped yarn structure creates yarns
that are highly abrasive and piling resistant and can be customized to create
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or mimic almost any tactile property desired, which would be desirable in
making a protective garment. Gurian, col. 4, ll. 45-55. Ans. 5-6. The fact
that the loop structure of Gurian can include non flame retardant material
does not diminish this teaching of Gurian, and does not make Gurian non-
analogous art. In re Clay, 966 F.2d at 659; KSR, 550 U.S. at 420-21.
In view of the above, Appellant’s arguments have not identified error
in the Examiner’s determination.

CONCLUSIONS OF LAW
Appellants have not identified error in the Examiner’s determination
of obviousness by showing that there is insufficient motivation to combine
Gurian with Aldridge in view of Behnke, with no reasonable expectation of
success in so doing, based upon non-analogous art.
DECISION
We affirm the obviousness rejection.

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)(iv).
AFFIRMED

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