Ex Parte Martz

Board of Patent Appeals and Interferences

Jun 30, 2008

10830176 (B.P.A.I. Jun. 30, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JOEL D. MARTZ
______________

Appeal 2008-3416
Application 10/830,176
Technology Center 1700
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Decided: June 30, 2008
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Before BRADLEY R. GARRIS, CHARLES F. WARREN, and
JEFFREY T. SMITH, 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 through 13 in the Office Action mailed
March 23, 2006. 35 U.S.C. §§ 6 and 134(a) (2002); 37 C.F.R. § 41.31(a)
(2006).
We affirm the decision of the Primary Examiner.

Appeal 2008-3416
Application 10/830,176
Claim 1 illustrates Appellant’s invention of a film coated microporous
membrane, and is representative of the claims on appeal:
1. A coated microporous membrane comprising a microporous
membrane with a coating of breathable material which augments a liquid
penetration resistance of the membrane while maintaining transport of
moisture vapor, wherein the coating is a film.
The Examiner relies upon the evidence in this reference (Ans. 2):
von Fragstein 6,074,738 Jun. 13, 2000
Appellant requests review of the ground of rejection of the claims
1 through 13 under 35 U.S.C. § 103(a) over von Fragstein advanced on
appeal. Br. 5; Ans. 3.
Appellant argues the claims as a group. Br. 6-7. Thus, we decide this
appeal based on claim 1 as representative of Appellant’s groupings of claims
and on other claims to the extent reflected in arguments in the Brief. 37
C.F.R. § 41.37(c)(1)(vii) (2006).
The principal issue in this appeal is whether the Examiner has carried
the burden of establishing a prima facie case of obviousness which, of
course, turns on the issues addressed below.
The issues require that we first interpret the language of claim 1 by
giving the terms thereof the broadest reasonable interpretation in their
ordinary usage in context as they would be understood by one of ordinary
skill in the art, in light of the written description in the Specification unless
another meaning is intended by Appellant as established therein, and without
reading into the claim any disclosed limitation or particular embodiment.
See, e.g., 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). The open-ended, transitional term “comprising” opens the claim
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Application 10/830,176
to include additional material. See, e.g., Exxon Chem. Pats., Inc. v. Lubrizol
Corp., 64 F.3d 1553, 1555 (Fed. Cir. 1995) (“The claimed composition is
defined as comprising - meaning containing at least - five specific
ingredients.”); In re Baxter, 656 F.2d 679, 686 (CCPA 1981) (“As long as
one of the monomers in the reaction is propylene, any other monomer may
be present, because the term ‘comprises’ permits the inclusion of other steps,
elements, or materials.”).
The plain language of claim 1 specifies any coated microporous
membrane comprising at least any microporous membrane coated to any
extent with any material in the form of a film which is breathable at least to
the extent it provides liquid penetration resistance while transporting
moisture vapor. We do not find a specific definition of the term “film” in
the Specification. Thus, we determine this term has its ordinary meaning to
those of ordinary skill in this art of a “thin continuous sheet of a substance”
without limitation on the film material.1 The film can be formed from,
among other things, any kind of urethane polymer (claim 2) and can be
coated on any manner of microporous membrane, such as, among other
things, any manner of polytetrafluoroethylene (PTFE) (claims 3 and 4), to
any extent (claim 12). Indeed, we find no basis in the claim language or in
the disclosure in the Specification on which to read into the claim term
“film” the particular characteristics disclosed with respect to particular
embodiments in the Specification as Appellant contends. Br., e.g., 7:18-21.
See, e.g., In re Zletz, 893 F.2d 319, 321-22 (Fed. Cir. 1989).
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Application 10/830,176
We find von Fragstein would have disclosed to one of ordinary skill in
this art a flexible water resistant composite in which layer (b) of air-
impermeable, liquid water resistant, water-vapor molecule permeable
polymer is coated as a film on layer (a) of liquid water-resistant, water-vapor
permeable microporous polymer. von Fragstein, e.g., Abstract, and col. 2, l.
21, to col. 6, l. 67. von Fragstein would have evinced that expanded
polytetrafluoroethylene (ePTFE) and polyurethanes have been used
separately to provide water impermeable, water-vapor permeable coatings
for textiles. von Fragstein col. 1, ll. 16-30. von Fragstein would have
evinced that it was known in the prior art that air-impermeable, water vapor
permeable, monolithic coatings of polyetherpolyurethane on microporous
structures are films and should be applied in a manner to provide adequate
impermeable and permeable properties. von Fragstein col. 1, ll. 31-45.
von Fragstein would have disclosed that microporous polymer film
layer (a) can be, among other things, porous ePTFE film. von Fragstein,
e.g., col. 2, ll. 49-51. von Fragstein would have disclosed that microporous
polymer layer (a) can be rendered oleophobic before or after polymer film
layer (b) is coated thereon. von Fragstein, e.g., col. 2, ll. 56-65, col. 3,
ll. 54-67, and col. 5, ll. 59-61. “The layer thicknesses, densities and pore
sizes of the ePTFE layers used can vary, depending on the application.” von
Fragstein col. 6, ll. 43-44.
von Fragstein would have disclosed that polymer film layer (b) can be
a polyurethane which is very thin and serves as a support and barrier layer,

1 See, e.g., film, Hawley’s Condensed Chemical Dictionary 496 (13th ed.,
Richard J. Lewis, Sr., revisor, New York, Van Nostrand Reinhold Company,
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Application 10/830,176
and can be applied by several methods. von Fragstein col. 5, ll. 30-64. An
example of polyurethane is Hypol® 2000 which can be applied pre-
crosslinked or can be crosslinked after application. von Fragstein col. 5,
ll. 64-67.
von Fragstein would have illustrated in Example 1 a film composite
with ePTFE film coated with Hypol® 2000 prepolymer and a curing agent
which form a polyurethane film upon curing, wherein the ePTFE film was
not rendered oleophobic. The two film layer composite had a higher
moisture vapor transmission rate (MVTR) than a similar two film layer
composite in which the ePTFE film was rendered oleophobic. von Fragstein
col. 8, ll. 6-44. The use of another polyurethane prepolymer to provide a
polyurethane film layer is illustrated in Examples 3 and 11.
von Fragstein col. 9, ll. 11-32, and col. 11, ll. 18-42. In Example 11, the
polyurethane film layer “was applied and partially penetrated into the
microporous structure of the film using a roll coating device.”
von Fragstein col. 11, ll. 22-26.
We determine von Fragstein, the scope of which we determined
above, provides sufficient evidence supporting the Examiner’s case that the
claimed coated microporous membranes encompassed by claim 1, as we
interpreted this claim above, would have been prima facie obviousness to
one of ordinary skill in the film composite arts familiar with permeable and
impermeable film layers for such composites and the uses for such
composites. Ans. 3. We are reinforced in our view by the disclosure of the
same microporous membrane ePTFE film layer materials and urethane film

1997).
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Application 10/830,176
layer materials by von Fragstein as claimed by Appellant in claims 3 and 4
and claim 2, respectively. Indeed, the film composites illustrated in von
Fragstein Examples 1, 3, and 11 reasonably appear to be identical to the
claimed film composites encompassed at least by claims 1 through 4 and 12
as we interpreted these claims above. We point out in this respect that it is
well settled that “anticipation is the ultimate of obviousness.” See In re
Baxter Travenol Labs., 952 F.2d 388, 392 (Fed Cir. 1991), citing In re
Fracalossi, 681 F.2d 792, 794 (CCPA 1982).
We reach this determination even though we recognize that von
Fragstein does not disclose properties for the film composites disclosed and
illustrated therein that are specified in claims 8 through 11. However, the
description of the claimed coated microporous membrane by properties not
disclosed by von Fragstein does not patentably distinguish the claimed
coated microporous membranes encompassed by the claims over the
identical and substantially identical coated microporous membranes of the
reference in view of the disclosure of the identical PTFE and polyurethane
materials by Appellant and by von Fragstein. See, e.g., In re Skoner,
517 F.2d 947, 950-51 (CCPA 1975) (“Appellants have chosen to describe
their invention in terms of certain physical characteristics . . . . Merely
choosing to describe their invention in this manner does not render
patentable their method which is clearly obvious in view of [the reference].”
(citation omitted)). With respect to the embodiments of von Fragstein
Examples 1, 3, and 11 which reasonably appear to be identical to the
claimed coated microporous membranes, it is well settled that Appellant’s
discovery of a new property of a product does not render the old product
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Application 10/830,176
again patentable simply because those practicing the product may not have
appreciated the property. See, e.g., In re Spada, 911 F.2d 705, 707 (Fed.
Cir. 1990); Titanium Metals Corp. v. Banner, 778 F.2d 775, 782-83 (Fed.
Cir. 1985).
In this respect, we are of the opinion that one of ordinary skill in the
art would have recognized that, as evinced and disclosed by von Fragstein,
the thickness, density, and pore size of the microporous membrane ePTFE
film and the properties and thickness of the polyurethane film as well as
other materials used in the composite, would affect the properties of the
composite, as the Examiner points out. Ans. 3-4. Indeed, von Fragstein
illustrates this point in Example 1 by the difference in MVTR between a
composite rendered oleophobic and a composite not treated in this respect.
Thus, we agree with the Examiner that this person would have adjusted film
characteristics to obtain the desired impermeable and permeable properties,
including the dimensions encompassed by claims 5 through 7 and 13. See,
e.g., In re Aller, 220 F.2d 454, 456-58 (CCPA 1955) (it is not inventive to
discover by routine experimentation optimum or workable ranges for general
conditions disclosed in the prior art).
Accordingly, on this record, we determine that, prima facie, the
claimed coated microporous membranes encompassed by the claims
reasonably appear to be identical or substantially identical to the coated
microporous membranes disclosed in von Fragstein, even though the
claimed film characteristics and microporous membrane properties are not
disclosed per se by the reference. Thus, the burden shifts to Appellant to
establish by effective argument and/or objective evidence that the claimed
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Application 10/830,176
products patentably distinguish over the disclosure of von Fragstein even
though the ground of rejection is under § 103(a). See, e.g., Spada, 911 F.2d
at 708-09 (“The Board held that the compositions claimed by Spada ‘appear
to be identical’ to those described by Smith. While Spada criticizes the
usage of the word ‘appear’ we think that it was reasonable for the PTO to
infer that the polymerization by both Smith and Spada of identical
monomers, employing the same or similar polymerization techniques, would
produce polymers having the identical composition.”); In re Best, 562 F.2d
1252, 1255-56 (CCPA 1977) (“Where, as here, the claimed and prior art
products are identical or substantially identical, or are produced by identical
or substantially identical processes, the PTO can require an applicant to
prove that the prior art products do not necessarily or inherently possess the
characteristics of his claimed product. See In re Ludtke, [441 F.2d 660
(CCPA 1971)]. Whether the rejection is based on “inherency” under
35 U.S.C. § 102, on “prima facie obviousness” under 35 U.S.C. § 103,
jointly or alternatively, the burden of proof is the same, and its fairness is
evidenced by the PTO’s inability to manufacture products or to obtain and
compare prior art products. (footnote and citation omitted)); Skoner,
517 F.2d at 950-51.
Upon reconsideration of the record as a whole in light of Appellant’s
contentions, we are of the opinion that Appellant has not successfully
rebutted the prima facie case. We have again considered Appellant’s
contentions with respect to the term “film” (Br., e.g., 6-13) but remain of the
opinion expressed in our interpretation of the claims above. Indeed, on this
record, we find no difference in the use of this term by Appellant and by von
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Application 10/830,176
Fragstein. In this respect, and contrary to Appellant’s contention (Br. 12),
the oleophobic polymer coating applied by von Fragstein provides a film
layer to microporous film layer (a), with the resulting composite containing
a polyurethane film layer (b) encompassed by the appealed claims because
of the transitional term “comprising.” In any event, von Fragstein describes
a composite without the oleophobic coating in Example 11. We further find
in the record no evidence to support Appellant’s contentions that there is a
difference between the structure of the composite films formed by von
Fragstein’s methods and by Appellant’s methods, and that the claimed film
forming materials are not disclosed in von Fragstein. Br. 13-14. Indeed,
Appellant has not established as a matter of fact any difference(s) in the
materials claimed and disclosed in the Specification and disclosed in von
Fragstein, or in the composite structures resulting from the coating of a
polyurethane film onto microporous ePTFE as described in the Specification
and in von Fragstein.
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of obviousness found in von
Fragstein with Appellant’s countervailing evidence of and argument for
nonobviousness and conclude that the claimed invention encompassed by
appealed claims 1 through 13 would have been obvious as a matter of law
under 35 U.S.C. § 103(a).
The Primary Examiner’s decision is affirmed.

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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)(iv).
AFFIRMED

tf/ls

DAVID M. WARREN
655 OAKLAND AVE.
CEDARHURST, NY 11516
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