Ex Parte NaumannDownload PDFPatent Trial and Appeal BoardJun 27, 201712375596 (P.T.A.B. Jun. 27, 2017) Copy Citation 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. 12/375,596 08/14/2009 Harry Naumann 09-013 9153 24124 7590 06/29/2017 ROHAN MATHFRS EXAMINER PO BOX 449 PIERCE, JEREMY R PORTLAND, ME 04112-0449 ART UNIT PAPER NUMBER 1789 NOTIFICATION DATE DELIVERY MODE 06/29/2017 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): peter @ bohanmathers .com PMM@BOHANMATHERS.COM jj oyce @ bohanmathers. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HARRY NAUMANN1 Appeal 2016-005850 Application 12/375,596 Technology Center 1700 Before CHUNG K. PAK, CATHERINE Q. TIMM, and MONTE T. SQUIRE, Administrative Patent Judges. SQUIRE, Administrative Patent Judge. DECISION ON APPEAL2 Appellant appeals the Examiner’s decision finally rejecting claims 16, 17, 19, 20, 22—25, and 27—31, which constitute all the claims pending in this application. 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Appellant identifies “BNP Brinkmann GmbH & Co., KG” as the real party in interest. App. Br. 3. 2 In our Decision, we refer to the English translation of the Specification filed August 14, 2009 (“Spec.”); the Final Office Action appealed from, dated June 15, 2015 (“Final Act.”); the Appeal Brief dated November 3, 2015 (“App. Br.”); and the Examiner’s Answer to the Appeal Brief dated April 1, 2016 (“Ans.”). Appeal 2016-005850 Application 12/375,596 The Claimed Invention Appellant’s disclosure relates to a textile sealing membrane that serves to seal out liquids. Spec. 12. Claim 16 is illustrative of the claimed subject matter on appeal and is reproduced below from the Claims Appendix to the Appeal Brief (App. Br. 10) (key disputed claim language italicized and bolded): 16. A sealing membrane for sealing liquids, the membrane comprising: a textile sealing layer consisting of fibers, wherein at least a portion of the fibers are moisture absorbing fibers that are swellable and which, when swollen, provide a swell pressure that serves to create a seal that prevents the passage of liquids through the textile sealing layer, and wherein a portion of the textile sealing layer is constructed of fusion fibers, at least a portion of which is thermally fused. The Examiner relies on the following prior art references as evidence in rejecting the claims on appeal: The References Scheubel Stevenson et al., (hereinafter “Stevenson”) Beutler et al., (hereinafter “Beutler”) US 5,575,112 US 5,877,096 EP1396573 Al Nov. 19, 1996 Mar. 2, 1999 Mar. 10, 2004 2 Appeal 2016-005850 Application 12/375,596 The Rejections On appeal, the Examiner maintains the following rejections: 1. Claim 31 is rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Beutler3 (“Rejection 1”). Final Act. 3; Ans. 2. 2. Claims 16, 17, 19, 20, 22—25, and 27—29 are rejected under pre- AIA 35 U.S.C. § 103(a) as being unpatentable over Beutler in view of Stevenson (“Rejection 2”). Final Act. 4; Ans. 3. 3. Claim 30 is rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Beutler in view of Stevenson as applied to claim 16 above, and further in view of Scheubel (“Rejection 3”). Final Act. 6; Ans. 5. OPINION Having considered the respective positions advanced by the Examiner and Appellant in light of this appeal record, we affirm the Examiner’s rejections for the reasons set forth in the Answer to the Appeal Brief and Final Office Action appealed from, which we adopt as our own. We highlight and address specific findings and arguments for emphasis. Rejection 2 In response to the Examiner’s Rejection 2, Appellant presents substantive argument for the patentability of independent claim 16 only. App. Br. 9. We, therefore, select claim 16 as representative and the 3 With respect to the Beutler reference, the Examiner’s rejections each refers to the English translation of the reference provided with the Office Action dated May 15, 2014. 3 Appeal 2016-005850 Application 12/375,596 remaining claims on appeal stand or fall with claim 16. 37 C.F.R. § 41.37(c)(l)(iv). The Examiner determines that the combination of Beutler and Stevenson suggests a textile structure satisfying all of the limitations of claim 16 and would have rendered claim 16 obvious. Ans. 3^4. The Examiner finds that Beutler teaches the majority of the limitations of claim 16, but that the reference does not teach that a portion of the textile sealing layer is constructed of fusion fibers, at least a portion of which is thermally fused. Ans. 3^4 (citing Beutler || 1, 27, 29, 50, 55). The Examiner, however, relies on Stevenson for teaching this limitation. Id. at 4. In particular, the Examiner finds that Stevenson relates to geocomposite materials comprising a nonwoven fabric textile structure and teaches that fusible fibers can be included in the nonwoven fabric structure and that, upon melting to thermally fuse the fibers, provide the fabric with improved resistance to sagging. Id. at 4 (citing Stevenson, Abstract, col. 3,11. 29-67). Based on the above findings, the Examiner concludes that it would have been obvious to a person having ordinary skill in the art at the time of the invention to have provided the textile sealing layer of Beutler with fusible fibers, at least a portion of which are fused, in order to provide a fabric with improved resistance to sagging, as taught to be well-known by Stevenson. Ans. 4. The Examiner further concludes that it would have been obvious to a person having ordinary skill in the art to have provided the moisture absorbing fibers of Beutler in combination with the fusible fibers of Stevenson to the exclusion of other materials because Beutler discloses that 4 Appeal 2016-005850 Application 12/375,596 the presence of other materials, such as superabsorbents, are optional and not mandated in the textile structure. Id. at 4. Appellant argues that the Examiner’s rejection of claim 16 should be reversed because it is based on an improper interpretation of the term “moisture-absorbing fibers” and that Beutler does not disclose a “textile sealing layer consisting of fibers, those fibers including moisture-absorbing fibers that are swellable,” as recited in the claim. App. Br. 7—9. In particular, Appellant contends that the Examiner misinterprets the term “moisture-absorbing fibers that are swellable” to include Beutler’s non moisture-absorbing fibers that are coated with a swellable material. Id. at 7. Appellant further contends that paragraph 6 of the Specification defines the term “moisture-absorbing fibers” to mean “swelling fibers that enable a high absorption of water, thus resulting in intense swelling to thereby create a high swell pressure” and discloses “lyocell fibers” as a well- known example of moisture-absorbing or swellable fibers. App. Br. 7. Relying on the Affidavit of Frank Heimbecher,4 Appellant argues that a person of ordinary skill in the art would have understood that a coated fiber does not have the same inherent properties or characteristics as an uncoated fiber. App. Br. 7, 8. In particular, Appellant contends that there are inherent differences between an uncoated swellable fiber and a fiber coated with a swellable material and an uncoated swellable fiber provides certain advantages over a fiber that is coated. Id. at 8. 4 Affidavit of Frank Heimbecher (“Heimbecher Aff”) dated February 25, 2015. 5 Appeal 2016-005850 Application 12/375,596 We do not find Appellant’s arguments persuasive of reversible error in the Examiner’s rejection. On the record before us, we find that a preponderance of the evidence and sound technical reasoning support the Examiner’s analysis and determination that the combination of Beutler and Stevenson suggests all of the limitations of claim 16, including “moisture absorbing fibers that are swellable,” and would have rendered the claim obvious. Beutler || 1, 27, 29, 50, 55; Stevenson, Abstract, col. 3,11. 29-67. We also determine that the Examiner properly construed the term “moisture-absorbing fibers that are swellable” to include fibers coated with a moisture-absorbing swellable material, i.e., coated fibers, and the construction constitutes the broadest reasonable interpretation in light of the Specification and the language of the claims. In re Am. Acad. Of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). As the Examiner explains (Ans. 6), claim 16 recites “a textile sealing layer consisting of fibers, wherein at least a portion of the fibers are moisture-absorbing fibers that are swellable.” App. Br. 10 (Claims App’x). The claim does not preclude the fibers from being coated fibers. The claim merely requires that (a) the textile sealing layer consist of fibers and (b) a portion of the fibers are moisture-absorbing and swellable fibers. The moisture—absorbing and swellable fibers, as recited in the claim, embrace the moisture-absorbing and swellable finished fibers (coated fibers) taught by Beutler. As the Examiner determines (Ans. 3, 4, 6, 7), the coated fiber Beutler discloses satisfies each of these requirements. See Beutler || 1, 27, 50, 51. In particular, as the Examiner finds (Ans. 3), Beutler discloses a textile structure made of coated fibers that have portions capable of 6 Appeal 2016-005850 Application 12/375,596 absorbing moisture and swelling when contacted with water. Beutler || 1, 27. The Examiner’s interpretation of the claim language to include coated fibers is also consistent with the Specification. In particular, as the Examiner finds (Ans. 7), the definition of the term “moisture-absorbing fibers” at paragraph 6 of the Specification does not preclude coated fibers and is actually consistent with the Examiner’s findings and interpretation of the claim. That is, the fibers “enable a high absorption of water, thus resulting in intense swelling to thereby create a high swell pressure.” Spec. 1 6. Appellant’s argument regarding “lyocell fibers” (App. Br. 7) is not persuasive of reversible error because the Specification discloses lyocell fibers only as an example of a moisture-absorbing fiber. Neither the plain language of the claims nor the definition in the Specification limits the recited fibers to the lyocell fibers exemplified in the Specification. Construing claim terms consistent with the Specification does not mean that limitations or embodiments from the Specification are to be read into the claims. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993); see also Loctite Corp. v. Ultraseal Ltd., 781 F.2d 861, 867 (Fed. Cir. 1985) (“Generally, particular limitations or embodiments appearing in the specification will not be read into the claims.”) We do not find the Heimbecher Affidavit persuasive because it rests mainly on arguments and is unsupported by sufficient evidence in the record. See Heimbecher Aff. || 20-34; see also In re Am. Acad, of Sci. Tech. Ctr., 367 F.3d at 1368 (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants 7 Appeal 2016-005850 Application 12/375,596 discounting the opinions expressed in the declarations.” (citations omitted)); In re Etter, 756 F.2d 852, 860 (Fed. Cir. 1985) (en banc) (opinion affidavit asserting the reference disclosed obsolete technology was correctly characterized by the board “as merely representing opinion[] unsupported by facts and thus entitled to little or no weight” (citations omitted)); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (“Lack of factual support for expert opinion going to factual determinations, however, may render the testimony of little probative value in a validity determination.”). In particular, the affidavit does not provide any experimental results or cite to any verifiable sources as the bases for Heimbecher’s opinions and disagreement with the Examiner’s analysis and factual findings. Moreover, as the Examiner correctly points out (Ans. 8), the affidavit also focuses on alleged advantages and properties of uncoated fibers related to homogeneity, delamination, and drapability—none of which are recited in or required by the claims to exclude the coated fibers taught by Beutler from the claims. Van Geuns, 988 F.2d at 1184. Accordingly, we affirm the Examiner’s rejection of claims 16, 17, 19, 20, 22—25, and 27—29 under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over the combination of Beutler and Stevenson. Rejections 1 and 3 Appellant does not present any additional substantive arguments in response to the Examiner’s Rejections 1 and 3, stated above. Rather, Appellant apparently intends to rely on the same arguments presented above in response to the Examiner’s Rejection 2 regarding the Beutler reference. 8 Appeal 2016-005850 Application 12/375,596 Accordingly, based on the findings and technical reasoning provided by the Examiner and for the same reasons discussed above for affirming Rejection 2, we affirm the Examiner’s Rejections 1 and 3. DECISION/ORDER The Examiner’s rejections of claims 16, 17, 19, 20, 22—25, and 27—31 are affirmed. It is ordered that the Examiner’s decision 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). AFFIRMED 9 Copy with citationCopy as parenthetical citation