Ex Parte Morin et alDownload PDFPatent Trial and Appeal BoardAug 28, 201814470256 (P.T.A.B. Aug. 28, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/470,256 08/27/2014 99722 7590 J.M. Robertson, LLC P.O. Box 131404 Birmingham, AL 35213 08/28/2018 FIRST NAMED INVENTOR Brian G. Morin 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 2029B 9814 EXAMINER CHOI, PETER Y ART UNIT PAPER NUMBER 1786 MAIL DATE DELIVERY MODE 08/28/2018 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 PATENT TRIAL AND APPEAL BOARD Ex parte BRIAN G. MORIN, DANIEL T. MCBRIDE, and LOREN W. CHAMBERS Appeal2017-008625 Application 14/470,256 Technology Center 1700 Before JEFFREY B. ROBERTSON, DONNA M. PRAISS, and JANEE. INGLESE, Administrative Patent Judges. INGLESE, Administrative Patent Judge. DECISION ON APPEAL Appellant1 requests our review under 35 U.S.C. § 134(a) of the Examiner's decision to finally reject claim 322. We have jurisdiction over this appeal under 35 U.S.C. § 6(b ). We REVERSE. 1 Appellant is the Applicant, Contee, Inc., which, according to the Appeal Brief, is the real party in interest. Appeal Brief filed October 24, 2016 ("App. Br."), 1. 2 Final Office Action entered November 25, 2015 ("Final Act."). Appeal2017-008625 Application 14/470,256 STATEMENT OF THE CASE Appellant claims a cleanroom wiper. Claim 32 illustrates the subject matter on appeal and is reproduced below: 32. A cleanroom wiper comprising a knitted polyester textile fabric, the fabric having a coating comprising a surfactant residue in combination with at least one cellulose ether; and wherein said cleanroom wiper, after laundering, exhibits a particle release count of particles greater than 0.5 microns of 30 million particles per square meter or less as measured by Biaxial Shake Test IEST-RP-CP-CC004.2, wherein said cleanroom wiper has a particle attraction coefficient of at least 100% for carbon black particles, wherein said coating has a weight of between about 0.1 % and about 6% relative to the weight of said wiper. App. Br. 7 (Claims Appendix) (spacing added). The Examiner sets forth the following rejections in the Final Office Action, and maintains the rejections in the Examiner's Answer entered January 3, 2017 ("Ans."): I. Claim 32 under 35 U.S.C. § 103(a) as unpatentable over Daiber et al. (US 5,229,181, issued July 20, 1993) ("Daiber") in view of Hotchkiss et al. (US 4,587,154, issued May 6, 1986) ("Hotchkiss"); and II. Claim 32 under 35 U.S.C. § 103(a) as unpatentable over Daiber in view of Hotchkiss and Oathout (US 5,320,900, issued June 14, 1994). DISCUSSION Upon consideration of the evidence relied upon in this appeal and each of Appellant's contentions, we reverse the Examiner's rejections of claim 32 under 35 U.S.C. § 103(a) for the reasons set forth in the Appeal 2 Appeal2017-008625 Application 14/470,256 Brief and below. Claim 32 recites, inter alia, a cleanroom wiper comprising a knitted polyester textile fabric having a coating comprising a surfactant residue in combination with at least one cellulose ether. The Examiner finds that Daiber discloses a cleanroom wiper comprising a knitted polyester textile substrate, but "does not appear to teach the claimed coating on the textile substrate." Final Act. 2 ( citing Daiber Abstract; col. 1, 1. 5---col. 3, 1. 44; col. 5, 1. I-col. 6, 1. 27). The Examiner relies on Hotchkiss to address this feature missing from Daiber' s disclosures, and finds that Hotchkiss discloses an oleophilic polyester fabric web having "oil and grease absorbency properties." Final Act. 2-3 ( citing Hotchkiss Abstract). The Examiner finds that Hotchkiss discloses treating the fabric web with a composition comprising a carboxymethyl cellulose derivative and a wetting agent ( such as dioctyl sodium sulfosuccinate) to reduce the oleophilic nature of the web. Final Act. 2-3 ( citing Hotchkiss Abstract; col. 1, 1. 61---col. 2, 1. 9; col. 4, 11. 1-32). The Examiner further finds that Hotchkiss discloses that this treatment allows the web to retain a high degree of its oil and grease absorbency properties, while enabling it to readily release the oils and grease when rinsed and rung out. Final Act. 3 ( citing Hotchkiss Abstract; col. 4, 11. 1-32). Hotchkiss discloses that "[a]s such, it is highly useful for applications such as food service wipers where it will be used to absorb oil or grease materials, rinsed and wrung out, and reused." Col. 2, 11. 4--7. The Examiner concludes that it would have been obvious to one of ordinary skill in the art at the time of Appellant's invention to treat Daiber' s wiper with the composition disclosed in Hotchkiss to "predictably 3 Appeal2017-008625 Application 14/470,256 improve[]" the "oil and grease absorbency properties" of Daiber' s wiper, while "provid[ing] for a more versatile wiper" that readily releases the oils and grease upon rinsing and wringing out. Final Act. 3--4; Ans. 6-7. However, the Examiner does not provide objective evidence or sound technical reasoning to support the assertion that treating Daiber's knitted polyester wiper with the composition disclosed in Hotchkiss would "predictably improve[]" the "oil and grease absorbency properties" of Daiber' s wiper, in view of Hotchkiss' disclosure that treating a polyester fabric web with the composition reduces the oleophilic nature of the web (Hotchkiss Abstract). Nor does the Examiner articulate reasoning having rational underpinning as to why one of ordinary skill in the art seeking to produce a clean room wiper as disclosed in Daiber would have found it useful or desirable to be able to rinse and wring out the wiper to release absorbed oil and grease. As Appellant points out (App. Br. 4), easy discharge of absorbed oil and grease may be desirable in a wiper used in the food service industry as disclosed in Hotchkiss, but the Examiner does not establish that one of ordinary skill in the art would have found this property desirable for a wiper used in a clean room as disclosed in Daiber. KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398,418 (2007) ("[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.") Accordingly, the Examiner fails to establish that the combined disclosures of Daiber and Hotchkiss would have suggested a cleanroom wiper comprising a knitted polyester textile fabric having a coating comprising a surfactant residue in combination with at least one cellulose 4 Appeal2017-008625 Application 14/470,256 ether, as recited in claim 32. It follows that the Examiner fails to establish a prima facie case of obviousness of the subject matter recited in claim 32 within the meaning of 35 U.S.C. § 103(a). In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) ("[T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability"). Because the Examiner does not rely on Oathout for any disclosure that cures the deficiencies of the combination of Daiber and Hotchkiss, we likewise do not sustain the Examiner's rejection of claim 32 over Daiber, Hotchkiss, and Oathout. We accordingly do not sustain the Examiner's rejections of claim 32 under 35 U.S.C. § 103(a). DECISION We reverse the Examiner's rejections of claim 32 under 35 U.S.C. § 103(a). REVERSED 5 Copy with citationCopy as parenthetical citation