Ex Parte McDougall et al

Board of Patent Appeals and Interferences

Aug 28, 2007

10688033 (B.P.A.I. Aug. 28, 2007)

The opinion in support of the decision being entered
today is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WILLIAM B.S. McDOUGALL and NORMAND A. COTE
____________

Appeal 2007-1220
Application 10/688,033
Technology Center 3600
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Decided: August 28, 2007
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Before TONI R. SCHEINER, LORA M. GREEN, and NANCY J. LINCK,
Administrative Patent Judges.
LINCK, Administrative Patent Judge.

DECISION ON APPEAL
This is a 35 U.S.C. § 134 appeal in the above-referenced case.1
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

1 The application was filed October 15, 2003. The real party in interest is
Velcro Industries B.V., Curacao, Netherlands Antilles.
Appeal 2007-1220
Application 10/688,033

STATEMENT OF THE CASE
The field of the invention is “woven touch fastener products,” i.e.,
Velcro® fasteners. (Specification (“Spec.”) 1.) The Specification discloses
that “[s]ome of the earliest versions of touch fastener products were woven”
and are “known for their strength and longevity.” (Id.) However, they also
“can be stiffer and thicker than . . . molded and non-woven counterparts of
lesser fastening strength and/or longevity.” (Id.) Further, according to the
Specification, “continued improvements in woven touch fasteners are
sought, particularly improvements that make such fasteners more appealing
for applications where high closure strength and cycle life [are] required, but
where stiffness and thickness are particularly disadvantageous.” (Id.)
Appellants address this described need by providing a structure such
as that depicted in Specification Figure 4, which is an enlarged view of a
hook fastener component, looking in the warp direction:

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Application 10/688,033

In Figure 4, “Tg1” is the thickness of the base and “H” is the hook height.
(Br. 2-3; Spec. 6.)
The claimed subject matter is reflected in independent claims 24 and
40. The disputed claim language has been italicized. These claims read:
24. A woven hook fastener product including a fabric
base having ground yarns comprising interwoven warp yarns
and filling yarns extending respectively in warp and filling
directions, and hook filaments interwoven with the fabric
base and forming hooks extending from one side of the fabric
base for engagement with loops, each hook being formed by
a severed hook filament loop extending out of the fabric
base,
wherein the hook filaments extend from a near side of
the fabric base to a mean hook height of less than about 6.0
times a nominal diameter of the hook filaments.
40. A woven hook fastener product including a fabric
base having ground yarns comprising interwoven warp yarns
and filling yarns extending respectively in warp and
filling directions, and hook filaments interwoven with the
fabric base and forming hooks extending from one side of the
fabric base for engagement with loops,
wherein the fabric base has an overall thickness,
exclusive of the hook filaments, that is less than the nominal
hook filament diameter.
The Examiner has entered the following grounds of rejection:
1. Claims 24-34, 36, 40-46 and 48 stand rejected under 35 U.S.C.
§ 103(a) as obvious over Higachinaka, U.S. 5,515,583.
2. Claims 35 and 47 stand rejected under 35 U.S.C. § 103(a) as
obvious over Higachinaka in view of Reither, U.S. 6,136,437.
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Application 10/688,033

3. Claims 37 and 382 stand rejected under 35 U.S.C. § 103(a) as
obvious over Higachinaka in view of Suzuki et al., U.S. 5,294,469
("Suzuki").
4. Claims 39 and 49 stand rejected under 35 U.S.C. § 103(a) as
obvious over Higashinaka in view of Love III, et al., U.S. 2005/0282542
("Love").3

OBVIOUSNESS UNDER § 103(a)
Rejection 1: Higashinaka
CLAIM 24: THE RATIO OF HOOK FILAMENT HEIGHT TO DIAMETER
Appellants contend Higashinaka does not disclose the claim 24
limitation “wherein the hook filaments extend from a near side of the fabric
base to a mean hook height of less than about 6.0 times a nominal diameter
of the hook filaments.” (Br. 4.) While admitting Higashinaka “do include
broad ranges” and “values could be pulled to derive ratios” of hook height to
filament diameter within the range recited in claim 24, Appellants contend
such a disclosure is “insufficient to find Appellants’ specific claimed range
obvious.” (Br. 4.)
The Examiner contends Higashinaka, while not disclosing a
“preferred embodiment where the mean hook height is less than about 6.0

2 Appellants identify this claim as claim 48. (Br. 3.) The Examiner corrects
Appellants’ statement of the Grounds of Rejection by identifying claim 38
rather than 48. (Answer 2.)
3 The Examiner has also objected to claims 28, 30-32, 34 and 43-46 as
containing parenthetical metric conversions of units. This issue is
petitionable under 37 C.F.R. §1.181 and thus not before us.

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Appeal 2007-1220
Application 10/688,033

times a nominal diameter of the hook filaments,” discloses a range for this
ratio that would have rendered Appellants’ claimed invention obvious.
(Answer 3-4.)
With respect to claim 24, we frame the § 103(a) issue: Would the
skilled artisan have been motivated to make Appellants’ claimed product,
with the ratio of hook filament height to diameter limited to “less than about
6.0” in view of Higashinaka’s disclosed ranges that encompass those of
claim 24?
CLAIM 40: BASE THICKNESS LESS THAN HOOK FILAMENT DIAMETER
Appellants contend Higashinaka does not disclose the limitation of
claim 40 “wherein the fabric base has an overall thickness, exclusive of the
hook filaments, that is less than the nominal hook filament diameter.”
Appellants further contend “it would be improper and a non sequitur to
compare the lower limit on the preferred range of base thickness (0.3) to the
upper range of hook filament diameter (0.4) and conclude that Higashinaka
discloses a hook product with a base thickness less than the hook filament
diameter.” (Br. 6.)
The Examiner contends Higashinaka’s disclosed ranges encompass
values that meet Appellants’ claimed relationship between their base
thickness and hook filament diameter and that “Higashinaka never excludes
the possibility of having the highest value of the hook filament diameter
being used with a low value of the base thickness.” (Answer 11-12.)
The § 103 issue with respect to claim 40 in view of Higashinaka is,
would the skilled artisan have been motivated to make Appellants’ claimed
product, with a base thickness less than that of the hook filament diameter in
view of Higashinaka’s disclosed ranges that encompass those of claim 40?
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Appeal 2007-1220
Application 10/688,033

Findings of Fact Relating to Obviousness in view of Higashinaka
1. Higashinaka teaches a hook-like fastener height range of 1.3 to 3.8
mm (col. 6, ll. 8-10).
2. Appellants’ preferred range for “mean loop height” is less than
about 3.81 mm (Spec. 2, l.9) and, based on the absence of any additional
teachings for hook height and Appellants’ drawings, Appellants’ preferable
hook height range is also less than about 3.81 mm (see Spec. passim and Fig.
5).
3. Higashinaka teaches a hook-like fastener diameter range of 0.1 to
0.4 mm (col. 6, ll. 57-59).
4. Appellants’ preferred range for their hook filament diameter is
0.165 to 0.229 mm (Spec. 3, ll. 21-22).
5. Higashinaka teaches a woven base fabric with a thickness range of
0.3 to 3.0 mm (col. 5, ll. 21-22).
6. Appellants’ preferred range of fabric base thicknesses is “less than
about” 0.254 mm (Spec. 3, ll. 11-12).
7. Thus, Appellants’ preferred ranges for their hook filament height
and diameter and their base thickness either overlap with or are very close to
those disclosed by Higashinaka.
8. Further, as Appellants admit, combinations of Higashinaka ranges
yield the claimed relative values of claim 24 (hook filament height to
diameter “less than about 6.0”) and of claim 40 (base thickness “less than”
hook filament diameter). (See, e.g., 1.3 mm/0.4 mm < 6.0 (FFs 1, 3)
and 0.3 mm < 0.4 mm (FFs 3, 5); Br. 4 (admitting “values could be pulled to
derive ratios within the claimed ranges”).)
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Application 10/688,033

9. Contrary to Appellants’ suggestion (Br. 4), Higashinaka does not
suggest that a diameter of 0.4 is “undesirable” but rather that filaments
“having a diameter of more than 4.0 mm are too thick to be cut” (col. 6. ll.
63-64).
10. In fact, again as Appellants admit, even Higashinaka’s working
examples disclose a ratio of hook height to diameter very close to that of
claim 24, i.e., 6.5 compared to 6.0. (See Appellants’ table, Br. 5.)
11. One skilled in the art would have been motivated by
Higashinaka’s teachings to vary such result-effective variables to obtain
woven hook fastener products having needed characteristics, e.g., strength
and flexibility, for given applications sought in the market and would have
had a reasonable expectation of success in doing so.

Discussion of the § 103(a) Issue
Based on our findings and those of the Examiner, the subject matter of
Appellants’ claims 24 and 40 would have been obvious to one of ordinary
skill in the relevant art. (FFs 1-11.) Appellants’ preferred ranges for their
hook filament height and diameter and their base thickness either overlap
with or are very close to those disclosed by Higashinaka (FF 7). Given such
a situation, the skilled artisan would have known to try various combinations
to optimize Higashinaka’s products and/or to respond to market forces.
“When there is a design need or market pressure to solve a problem
and there are a finite number of identified, predictable solutions, a person of
ordinary skill has good reason to pursue the known options within his or her
technical grasp.” KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1742, 82
USPQ2d 1385, 1397 (2007). “Granting patent protection to advances that
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Application 10/688,033

would occur in the ordinary course without real innovation retards progress
and may, in the case of patents combining previously known elements,
deprive prior inventions of their value or utility.” Id. at 1741, 82 USPQ2d at
1396.
In this case, products are developed in response to “market pressure,”
as noted by Appellants in their “Background” section. (See Spec. 1.) Thus,
advances would have been expected to occur “in the ordinary course without
real innovation.” Given such a situation, claims 24 and 40 would have been
obvious to one of ordinary skill in the relevant art. (FFs 1-11.)
The Rejection of Claims 35, 37-39, 47, and 49
Claims 35 and 47 stand rejected under 35 U.S.C. § 103(a) as obvious
over Higashinaka and Reither. These claims each require a “tenacity of at
least 4.0 grams per denier.” Claims 37 and 38 stand rejected under 35
U.S.C. § 103(a) as obvious over Higachinaka and Suzuki. Claims 37 and 38
require a “Gurley stiffness” of “less than 500 mg” and “less than about 200
mg” respectively. Claims 39 and 49 stand rejected under 35 U.S.C. § 103(a)
as obvious over Higashinaka and Love. These claims each require a “greige
basis weight of less than about 300 grams per square meter.”
Appellants do not dispute the Examiner’s findings that these
additional limitations are disclosed in Reither, Suzuki, and Love,
respectively. Instead they argue (1) these claims are “non-obvious at least as
depending from non-obvious base claims 24 and 40” (Br. 7-8). Appellants’
argument based on the patentability of claims 24 and 40 is addressed above
(see supra pp. 3-8).

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Appeal 2007-1220
Application 10/688,033

Appellants further argue
the Examiner fails to address the interrelationship of these
features with other features of the claimed combinations, or
how someone of ordinary skill would have known how to
arrive at the claimed invention from the disclosure of these
references. For example, the Examiner does not address how
to alter Higachinaka's fabric to achieve Love's low basis
weight, or Suzuki's low Gurley stiffness, while meeting other
limitations of the base claim.
(Br. 8.)
The Examiner responds: “The test for obviousness is not whether the
features of one reference may be bodily incorporated into the other to
produce the claimed subject matter but simply what the combination of
references makes obvious to one of ordinary skill in the pertinent art.” In re
Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549-50 (CCPA 1969),
(paraphrased in Answer 13).
We agree with the Examiner that the “test for obviousness” does not
require physical incorporation of one reference into another and reject
Appellants’ suggestion to the contrary. In this case, the secondary
references would have suggested desirable physical properties to be
considered in optimizing the teachings of Higashinaka, if, in fact,
Appellants’ broadly claimed ranges are not already met by the Higashinaka
teachings. See In re Napier, 55 F.3d 610, 613, 34 USPQ2d 1782, 1784 (Fed.
Cir. 1995) (“inherent teaching of a prior art reference, a question of fact,
arises both in the context of anticipation and obviousness”). Thus, we find
the skilled artisan would have been motivated to combine the teachings of
the cited references with a reasonable likelihood of success. These findings
lead us to conclude the subject matter of claims 35, 37-39, 47, and 49 would
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have been obvious to one of ordinary skill in the art at the time the invention
was made.

CONCLUSION
We affirm the Examiner’s § 103 rejections of claims 24, 35, 37-40,
47, and 49 based on the analysis above. Pursuant to § 1.37(c)(1)(vii)(2006),
we also affirm the § 103 rejection of claims 25-34, 36, 41-46, and 48, as
these claims were not argued separately.
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)(2006).

AFFIRMED

Ssc

FISH & RICHARDSON PC
P.O. BOX 1022
MINNEAPOLIS MN 55440-1022

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