Ex Parte May

Board of Patent Appeals and Interferences

Apr 28, 2006

09166625 (B.P.A.I. Apr. 28, 2006)

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and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE

________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte DAVID C. MAY
________________

Appeal No. 2006-1309
Application No. 09/166,625
________________

ON BRIEF
________________

Before KIMLIN, WARREN, and WALTZ, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 1,
3-10 and 12-17. Claim 1 is illustrative:
1. A drop cloth for covering a surface, comprising:

a first layer having a non-woven fabric material, said
non-woven fabric material including natural fibers; and

a second layer attached to said first layer, said second
layer having a liquid impervious plastic material;

wherein said first layer has a thickness;

wherein said thickness is in the range of 1 to 2 mils.
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Application No. 09/166,625

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The examiner relies upon the following references as
evidence of obviousness:
Mobley 5,227,409 July 13, 1993
Garland 5,266,390 Nov. 30, 1993
Reaves 5,368,912 Nov. 29, 1994
Wilson 5,443,885 Aug. 22, 1995
Trosper et al. 5,761,853 June 9, 1998
(Trosper)

Appellant’s claimed invention is directed to a drop cloth
for covering a surface during procedures that spill or splatter
material, such as painting. The drop cloth comprises a first
layer of non-woven fabric which includes natural fibers or
rayon, and a second layer comprising a liquid impervious plastic
material, such as polyethylene. The thickness of the first
layer is in the range of 1 to 2 mils.
The appealed claims stand rejected under 35 U.S.C. § 103(a)
as follows:
(a) claims 1, 3, 7, 8, 10, 15, and 16 over Garland in view
of Reaves and Trosper;
(b) claims 6 and 14 over the stated combination of
references;
(c) claims 4, 5, 12, and 13 over the stated combination of
references; and
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(d) claims 9 and 17 over the stated combination of
references further in view of Wilson and Mobley.
Appellant submits at page 3 of the principal brief that
claims 1 and 9 stand or fall together, as do claims 10 and 17.
We have thoroughly reviewed each of appellant’s arguments
for patentability. However, we are in complete agreement with
the examiner that the claimed subject matter would have been
obvious to one of ordinary skill in the art within the meaning
of § 103 in view of the applied prior art. Accordingly, we will
sustain the examiner’s rejections for essentially those reasons
expressed in the Answer, and we add the following primarily for
emphasis.
Garland, like appellant, discloses a drop cloth comprising
a first layer of non-woven fabric material and a second layer
having a liquid impervious plastic material. Garland does not
disclose that his drop cloth includes natural fibers or rayon in
the non-woven fabric; Garland uses spun bonded polypropylene.
However, as pointed out by the examiner, Garland, as well as
Reaves and Trosper, evidences that it was known in the art to
employ natural fibers, such as cotton, in the absorbent layer of
a drop cloth. Also, appellant’s specification discloses that
“drop cloths have been made from sheets of cotton, cotton
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Application No. 09/166,625

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blended fabrics, . . .” (page 1, fourth paragraph).
Accordingly, we are convinced that the examiner has properly
concluded that it would have been obvious for one of ordinary
skill in the art to include natural fibers or rayon in the
polypropylene layer of Garland, or to completely substitute
natural fibers or rayon for the polypropylene of Garland in the
non-woven fabric layer. It must be emphasized that the claims
on appeal are sufficiently broad to encompass a non-woven fabric
layer including small amounts of natural fibers or rayon and a
predominant amount of other fabric material, such as the
polypropylene of Garland. Hence, adding only minor amounts of
natural fiber or rayon to the polypropylene layer of Garland
would meet the requirements of appellant’s first layer of non-
woven fabric material. We note that appellant’s specification
attaches no criticality to the particular natural fiber used.
A main argument advanced by appellant is that Garland does
not teach a thickness for the non-woven fabric layer in the
claimed range of 1 to 2 mils. Garland describes the thickness
of the non-woven layer as in the range of 0.005 to 0.002 mils.
However, the examiner has submitted extensive calculations to
demonstrate that the disclosed thickness of Garland’s non-woven
layer is an obvious error, and that the non-woven layer of
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Application No. 09/166,625

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Garland actually “has a thickness of 0.0005 - 0.002 inches or
0.5 - 2 mils” (page 11 of Answer, first paragraph). In
response, appellant has not refuted the examiner’s calculations
by pointing to any error therein but has simply offered a bald
challenge to the calculations (see page 2 of Reply Brief, second
paragraph). Accordingly, we will accept the examiner’s
calculations as reasonable. Furthermore, it should be quite
clear that a layer of a drop cloth cannot realistically have a
thickness of 0.0005 mils, which is on the order of microns. In
addition, it is well settled that where patentability is
predicated upon a change in a condition of a prior art
composition, such as a change in size, concentration or the
like, the burden is on the applicant to establish with objective
evidence that the change is critical, i.e., it leads to a new,
unexpected result. In re Woodruff, 919 F.2d 1575, 1578,
16 USPQ2d 1934, 1936 (Fed. Cir. 1990); In re Aller, 220 F.2d
454, 456, 105 USPQ 233, 235 (CCPA 1955). In the present case,
appellant has not attached any criticality to the claimed
thickness, and the disclosed preference for the claimed
thickness would seem to allay any suggestion of criticality (see
page 10 of specification, second paragraph).
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Application No. 09/166,625

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Concerning the oriented fibers of claim 4 and the randomly
oriented fibers of claim 5, we agree with the examiner that it
would have been obvious for one of ordinary skill in the art to
select either one of these two possible orientations contingent
upon the particular physical properties of the layer desired.
We concur with the examiner that since Garland does not require
either orientation for the non-woven fibers, it is reasonable to
presume that the reference would have suggested the use of
either well-known orientation to one of ordinary skill in the
art. Appellant’s specification teaches no criticality for
either orientation.
Regarding the claim 6 requirement that the synthetic fibers
of the non-woven material are fused together, appellant has not
properly challenged the examiner’s official notice that “it is
well known in the art to employ a blend of synthetic
thermoplastic fibers and cellulosic fibers to produce a strong
nonwoven fabric being bonded by said thermoplastic fibers and to
enhance the ability of the nonwoven [fabric] to bond to other
thermoplastic materials” (page 6 of Answer, second paragraph).
Appellant again only offers a bald challenge to the examiner’s
finding without presenting the requisite information or argument
that creates, on its face, a reasonable doubt regarding the
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validity of the examiner’s finding. In re Boon, 439 F.2d 724,
727, 169 USPQ 231, 234 (CCPA 1971). Indeed, rather than
asserting that it is novel to fuse synthetic fibers in a non-
woven fabric material, or presenting reasons why it would have
been unobvious to do so in the non-woven fabric material of
Garland, appellant’s specification expressly discloses that
“[t]he non-woven top layer 16 can include individual fiber
filaments which may be heat fused together by using known
manufacturing techniques which relate to the temperature and
pressure of the process” (page 11 of specification, second
paragraph).
For the remaining separately argued claims, we adopt the
reasoning set forth in the Examiner’s Answer. We note that, for
the most part, appellant’s arguments are based on the claimed
features discussed above.
As a final point, we note that appellant bases no argument
upon objective evidence of nonobviousness, such as unexpected
results, which would serve to rebut the prima facie case of
obviousness established by the examiner.
In conclusion, based on the foregoing and the reasons well-
stated by the examiner, the examiner’s decision rejecting the
appealed claims is affirmed.
Appeal No. 2006-1309
Application No. 09/166,625

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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)(1)(iv) (effective Sep. 13, 2004; 69 Fed. Reg. 49960
(Aug. 12, 2004); 1286 Off. Gaz. Pat. Office 21 (Sep. 7, 2004)).
AFFIRMED

EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
)
CHARLES F. WARREN ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
)
THOMAS A. WALTZ )
Administrative Patent Judge )

ECK:clm

Appeal No. 2006-1309
Application No. 09/166,625

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