10901995 (B.P.A.I. May. 15, 2012)

Ex Parte Manne

Board of Patent Appeals and InterferencesMay 15, 2012

10901995 (B.P.A.I. May. 15, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 10/901,995 07/30/2004 Liora G. Manne 6246 1802 6858 7590 05/16/2012 BREINER & BREINER, L.L.C. 115 NORTH HENRY STREET ALEXANDRIA, VA 22314 EXAMINER STEELE, JENNIFER A ART UNIT PAPER NUMBER 1798 MAIL DATE DELIVERY MODE 05/16/2012 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE _________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte LIORA G. MANNE __________ Appeal 2010-005374 Application 10/901,995 Technology Center 1700 ___________ Before BRADLEY R. GARRIS, ADRIENE LEPIANE HANLON, and TERRY J. OWENS, Administrative Patent Judges. HANLON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-005374 Application 10/901,995 2 A. STATEMENT OF THE CASE This is a decision on appeal under 35 U.S.C. § 134 from an Examiner’s decision rejecting claims 12-20, which are all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. The subject matter on appeal is directed to an encapsulated fabric material wherein the fabric comprises “blended and mixed fabric swatches” (claim 12) or “tufts of fiber” (claims 16, 17). Claim 12, reproduced below, is illustrative. 12. An encapsulated fabric material comprising: a first sheet of plastic having an adhesive applied thereto; fabric comprising blended and mixed fabric swatches affixed to said first sheet of plastic; and a second sheet of plastic affixed to said fabric, wherein said first sheet of plastic, said fabric and said second sheet of plastic are sealed by heat pressing so that said fabric is between said first sheet of plastic and said second sheet of plastic to form said encapsulated fabric material. App. Br., Claims Appendix.1 The following rejections are before us on appeal:2 (1) the rejection of claims 12-20 under 35 U.S.C. § 103(a) as unpatentable over Hyman3; and 1 Appeal Brief dated September 14, 2009. 2 The Examiner indicates that the § 103(a) rejection of claim 17 as unpatentable over Lion (US 6,224,707) has been withdrawn. Examiner’s Answer dated December 9, 2009 (“Ans.”), at 2. 3 US 2003/0035917 A1 published February 20, 2003. Appeal 2010-005374 Application 10/901,995 3 (2) the rejection of claims 12-14 under 35 U.S.C. § 103(a) as unpatentable over the combination of Salkill,4 Bartholomew,5 and Brother.6, 7 For the reasons set forth in the Examiner’s Answer dated December 9, 2009, we affirm both of these rejections. We add the following for emphasis. B. DISCUSSION The Examiner found that Hyman discloses each of the limitations recited in the claims on appeal and concluded that the teachings of Hyman would have led one of ordinary skill in the art to an encapsulated fabric material as recited in the claims on appeal. Ans. 4-6, 9-11. The Appellant does not present any substantive arguments alleging error in the Examiner’s factual findings. Instead, the Appellant generally contends that the Examiner’s “random citation” to thirteen paragraphs and three figures in the large disclosure of Hyman “followed by the conclusory statement that applicant’s claimed invention is obvious does not, as a matter of law, establish a prima facie case of obviousness.” App. Br. 12-13. The fact that the Examiner relied on select portions of a large disclosure does not by itself demonstrate reversible error. There is no dispute on this record 4 Emma Salkill: How to make a laminated cloth bookmark, http://www.essortment.com/hobbies/makelaminatedc_snsg.htm (last visited Dec. 5, 2008). 5 Kitty Bartholomew: Laminating cotton, http://www.hgtv.com/dc-fabrics-tips- hints/laminating-cotton/index.html (last visited Dec. 6, 2008). 6 Micro Parts & Supplies, Inc., Brother® Laminator Supplies & Accessories for Models LX-1200 LX-900 LX-570, http://www.mpsupplies.com/brotherlaminatorsupplies.html (last visited Dec. 7, 2008). 7 The Examiner indicates that claims 15 and 16 are not included in this ground of rejection. Ans. 2. Appeal 2010-005374 Application 10/901,995 4 that Hyman discloses an embodiment wherein a medium is bonded between two plastic sheets. See Hyman Figs. 24, 26. The Examiner merely relied on several alternatives disclosed in Hyman (e.g., type of medium, type of bonding agent) in concluding that the claimed encapsulated fabric material would have been obvious to one of ordinary skill in the art. See In re Fout, 675 F.2d 297, 301 (CCPA 1982) (“Express suggestion to substitute one equivalent for another need not be present to render such substitution obvious.”); see also Merck & Co. Inc. v. Biocraft Labs. Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (prior art disclosure of a multitude of effective combinations does not render any particular formulation less obvious). That is, the Examiner combined the elements of Hyman in the manner disclosed and concluded that the combination would yield no more than predictable results. Ans. 9-11; KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”). Significantly, the Appellant has failed to establish otherwise. As for the dependent claims, the Appellant generally contends that Hyman does not disclose or suggest limitations recited in claims 15 and 16. App. Br. 19. However, this general contention does not rise to the level of a separate argument for patentability under 37 C.F.R. § 41.37(c)(1)(vii) (2011). See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (Rule 41.37 “require[s] more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art”). Appeal 2010-005374 Application 10/901,995 5 Finally, the Appellant argues that none of Salkill, Bartholomew, or Brother discloses a fabric comprising “blended and mixed fabric swatches” as recited in claim 12. App. Br. 23; Reply Br. 7.8 Salkill does not expressly describe a fabric as recited in claim 12. However, the Examiner found that Salkill teaches laminating any type of fabric between two plastic sheets. Ans. 7, 16. There is no dispute on this record that the fabric recited in claim 12 was known at the time of the Appellant’s invention. See Spec., para. [00013]; Amendment dated Nov. 28, 2007. Thus, the Examiner had a reasonable basis to conclude that laminating the fabric recited in claim 12 between two plastic sheets would have been obvious to one of ordinary skill in the art. Ans. 16. The Appellant has failed to establish otherwise. For the reasons set forth above and in the Examiner’s Answer, the § 103(a) rejections on appeal are affirmed. C. DECISION The decision of the Examiner is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a) (2011). AFFIRMED ssl 8 Reply Brief dated February 12, 2010.