Ex Parte OuvryDownload PDFPatent Trial and Appeal BoardJul 26, 201310239130 (P.T.A.B. Jul. 26, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 10/239,130 09/19/2002 Ludovic Ouvry ROHR-402XX 2306 207 7590 07/26/2013 PRETI FLAHERTY BELIVEAU & PACHIOS LLP TEN POST OFFICE SQUARE BOSTON, MA 02109 EXAMINER BUTLER, PATRICK NEAL ART UNIT PAPER NUMBER 1742 MAIL DATE DELIVERY MODE 07/26/2013 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 AND TRIAL APPEAL BOARD ____________ Ex parte LUDOVIC OUVRY ____________ Appeal 2012-000240 Application 10/239,130 Technology Center 1700 ____________ Before CATHERINE Q. TIMM, JEFFREY T. SMITH, and KAREN M. HASTINGS, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-000240 Application 10/239,130 2 STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134 from a final rejection of claims 1 through 4, 6 16, 17, 23 through 30 and 32. 1 We have jurisdiction under 35 U.S.C. § 6. Appellant’s invention is directed to a method of manufacturing of absorbent protective clothing. App. Br. 6-7. Claim 1 is illustrative of the subject matter on appeal and is reproduced below: 1. A method of manufacturing a piece of adsorbent protective clothing as a filter comprising activated carbon fibers having adsorbent properties, the method being characterized in that it comprises the steps consisting in: - using a textile manufacturing method to make a seamless preform of the piece of clothing to be manufactured out of a coherent fabric of carbon precursor fibers, the seamless preform being in an as worn condition and having a body conforming shape corresponding to a final shape of the piece of clothing and a closed continuous inner surface defining a passage through which to accommodate a body portion, the carbon precursor fibers being cellulose fibers, wherein the seamless preform is made of a coherent cellulose fiber fabric; and - subsequently performing carbonization and activation treatment on the seamless preform resulting in shrinkage of an 1 Appellant presents arguments concerning the Examiner’s restriction requirement of claims 31 and 33 in the Non-Final Office Action entered December 9, 2009. App. Br. 50-52, 56-57. The propriety of a restriction requirement is reviewable by petition to the Technology Center Director. See 37 C.F.R. § 1.144; MPEP §§ 818.03(c), 1002.02(c)(2), and 1201. Petitionable issues are not subject to review by the Board. See In re Berger, 279 F.3d 975, 984-85 (Fed. Cir. 2002). Accordingly, we provide no opinion concerning the propriety of the restriction requirement. Thus, claims 31 and 33 are not before us on appeal. Appeal 2012-000240 Application 10/239,130 3 entirety of the seamless preform and further so as to obtain directly the desired shaped piece of clothing made of activated carbon fibers, wherein the carbonization and activation treatment comprises: - a step of impregnating the seamless preform with a composition containing at least one ingredient having a function of promoting cellulose decomposition; and - heat-treatment at a temperature lying in the range of from 350°C to 500°C so that the filter piece of activated carbon fibers is obtained directly; - the seamless preform being dimensioned so as to take account of the shrinkage of the entirety of the seamless preform during the carbonization and activation treatment. The Examiner relied on the following references in rejecting the appealed subject matter: Imboden US 4,000,630 Jan. 4, 1977 Nishino US 4,409,125 Oct. 11, 1983 Stuetz US 4,460,708 July 17, 1984 McGarry US 5,799,333 Sept. 1, 1998 Appellant, App. Br. 8, requests review of the following rejections from the Examiner’s final office action: 1. Claims 1-4, 6, 16, 17, and 23-29 stand rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. 2. Claims 1-4, 6, 16, 17, 23-29, and 32 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Nishino, Stuetz and Imboden. Appeal 2012-000240 Application 10/239,130 4 3. Claims 23-26 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Nishino, Stuetz, Imboden and McGarry. 4. Claim 30 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Stuetz and Imboden. OPINION I. WRITTEN DESCRIPTION UNDER § 112, 1ST PARAGRAPH The dispositive issue for this rejection is: Did the Examiner err in determining that the Appellant’s Specification fails to provide written descriptive support for the limitation “seamless” as required by the subject matter of independent claim 1? 2 We answer in the negative and AFFIRM for the reasons presented by the Examiner and add the following for emphasis. The Examiner found that the limitation “seamless” inserted via amendment to independent claim 1 is not supported by the noted sections of the Specification because the term “knitting” does not indicate the construction is seamed or seamless. Ans. 4, 10-11. “Appellant submits that the specification as originally filed provides ample, inherent support for the term limitation “seamless,” as understood by a person of ordinary skill in the art.” App. Br. 11. In support of this position, Appellant presented a Declaration under 37 C.F.R § 1.132 by 2 Appellant has not argued the additional limitations of dependent claims 2- 4, 6, 16, 17, and 23-29. Thus, we will limit our discussion in this rejection to independent claim 1. Dependent claims 2-4, 6, 16, 17, and 23-29 stand or fall with independent claim 1. Appeal 2012-000240 Application 10/239,130 5 Bertram Kurt Böhringer submitted on June 2, 2008 (referred to as Declaration II by Appellant and hereinafter)3. We are unpersuaded by Appellant’s arguments and agree with the Examiner’s determination that the disputed claim limitation lacks descriptive support. The test for compliance with the written description requirement is “whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). “[T]he test requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art. Based on that inquiry, the specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed.” Id. We do not agree that the Specification provides support for the disputed limitation. As noted by the Examiner (Ans. 13), Appellant’s reliance on the noted sections of the Specification appear to show that the making of seamless clothing would have been obvious to a skilled artisan. A description that renders obvious a claimed invention is not sufficient to satisfy the written description requirement for that invention. Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1567 (Fed. Cir. 1997); Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). Accordingly, we affirm the Examiner’s rejection of claims 1-4, 6, 16, 17, and 23-29 under 35 U.S.C. § 112, first paragraph as lacking descriptive 3 Declaration II by Bertram Kurt Böhringer was filed on June 2, 2008 and considered by the Examiner in the Office Action entered September 3, 2008. Appeal 2012-000240 Application 10/239,130 6 support in the original Specification for the reasons given above and presented by the Examiner. II. PRIOR ART REJECTIONS The dispositive issue for Rejection 2 is: Did the Examiner err in determining that the combination of Nishino, Stuetz and Imboden would have led one skilled in the art to a method of manufacturing a piece of absorbent protective clothing comprising the steps of making a preform of the piece of clothing and subsequently subjecting the preform to carbonization and activation treatments as required the subject matter of independent claims 1 and 32?4 We answer this question in the negative and AFFIRM for the reasons presented by the Examiner and add the following. The Examiner found that Nishino discloses a method of carbonizing and activating a natural or synthetic cotton cellulose fiber structure, such as a fabric, by impregnating the fiber structure with a composition containing at least one ingredient having a function of promoting cellulose decomposition and heat treating the impregnated fiber structure at a temperature of 400- 750 oC to directly carbonize and activate the fibers of the fabric. Ans. 4-5; Nishino col. 1, ll. 62-68; col. 2, ll. 16-45. The Examiner also found that Nishino does not teach making a seamless clothing preform dimensioned to account for the shrinkage of the entirety of the seamless preform during the carbonization and activation treatment. Ans. 5. The Examiner relied on Stuetz as teaching as known to dimension a fiber structure, such as a fabric, 4 We limit our initial discussion for this rejection to independent claim 1. Claims argued separately will be addressed separately. Appeal 2012-000240 Application 10/239,130 7 to account for shrinkage during the carbonization and activation treatment of the fiber structure. Id. at 6; Stuetz col. 1, ll. 49-52; col. 2, ll. 20-31; col. 8, ll. 10-18, 30-68. The Examiner further relied on Imboden as teaching that it is well known to make seamless one-piece clothing garments. Ans. 6; Imboden col. 1, ll. 5-16. The Examiner concluded that it would have been obvious to a skilled artisan to modify the process of Nishino to incorporate the step of making a seamless clothing preform, as taught by Stuetz and Imboden, prior to heat treating the fibers as claimed to make a lightweight protective clothing that achieves better fit and enables size variation. Ans. 6-7. Appellant argues that the cited references disclose first subjecting the fabric or thread to the heat treatment and then subsequently making the piece of clothing. App. Br. 23. With particular reference to Stuetz, Appellant argues that the Examiner expands Stuetz’s fabric to meet a seamless preform clothing but that Stuetz also makes the piece of clothing after the heat treatment. Id. at 21-23. We are unpersuaded by Appellant’s arguments and agree with the Examiner’s determination of obviousness. Ans. 4-7; 16-17. Moreover, Nishino expressly discloses that the carbonization and activation treatments can be performed on either fibers or fiber structures such as fabrics. Nishino col. 2, ll. 13-15. Appellant has not adequately explained why one skilled in the art would not have been capable of adapting the method of Nishino to treat other fiber structures such as shaped preforms based on Nishino’s disclosure. See In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985) (skill is presumed on the part of one of ordinary skill in the art); In re Bozek, 416 F.2d 1385, 1390 (CCPA 1969). Appeal 2012-000240 Application 10/239,130 8 Appellant additionally argues that Stuetz does not disclose dimensioning a seamless preform to account for shrinkage during the heat treatment. App. Br. 23. According to Appellant, Stuetz indicates no need to dimension the fabric before processing. Id. at 24. We are also unpersuaded by these arguments. Stuetz recognizes that heat treating a fiber structure results in some degree of shrinkage of the fiber structure. Ans. 6; Stuetz col. 8, ll. 10-18. From this disclosure, one skilled in the art would understand that one must account for shrinkage of the material when making a piece of clothing to be subsequently exposed to heat treatment. Appellant argues that a Declaration under 37 C.F.R § 1.132 by Bertram Kurt Böhringer submitted on April 23, 2007 (referred to as Declaration I by Appellant and hereinafter)5 provides evidence of (a) commercial success of making a clothing preform prior to the heat treatments (App. Br. 37-38), (b) long felt need of overcoming various prior art drawbacks (id. at 38-40) and (c) unexpected results such as accounting for the shrinkage of the material to simplify construction of the preform (id. at 41-47). We are unpersuaded by Appellant’s evidence and arguments and agree with the Examiner’s reasoning that the showing is insufficient to overcome a prima facie case of obviousness. Ans. 20-22. Moreover, Declaration I does not specifically address the allegations of commercial success, long felt need and unexpected results nor does Appellant direct us to sections of Declaration I that support such allegations. See Declaration I 5 Declaration I by Bertram Kurt Böhringer was filed on April 23, 2007 and considered by the Examiner in the Office Action entered July 13, 2007. Appeal 2012-000240 Application 10/239,130 9 generally. Appellant has the burden of analyzing and explaining data. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972); Ex parte Ishizaka, 24 USPQ2d 1621, 1624 (BPAI 1992). Thus, Appellant has not met the burden of showing how the rebuttal evidence supports such allegations. Therefore, we are unpersuaded by Appellant’s evidence. Accordingly, we affirm the Examiner’s rejection of claims 1-4, 6, 16, 17 and 23-29 under 35 U.S.C. § 103 as unpatentable over Nishino, Stuetz and Imboden for the reasons given above and presented by the Examiner. In arguing independent claim 32, Appellant relies on substantially the same arguments with respect to independent claim 1. App. Br. 52-54. Accordingly, we also affirm the Examiner’s rejection of claim 32under 35 U.S.C. § 103 as unpatentable over Nishino, Stuetz and Imboden for the reasons given above and presented by the Examiner. The Examiner separately rejected dependent claims 23-26 under 35 U.S.C. § 103 as unpatentable over Nishino, Stuetz, Imboden and McGarry. (Rejection 3) (Ans. 7-8) and independent claim 30 under 35 U.S.C. § 103 as unpatentable over Stuetz and Imboden (Rejection 4) (id. at 8-9). In addressing these separate rejections, Appellant again relies primarily on the arguments presented when discussing independent claim 1. App. Br. 54-58. Accordingly, we affirm these rejections as well for the reasons given above and presented by the Examiner. ORDER The rejection of claims 1-4, 6, 16, 17, and 23-29 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement is affirmed. Appeal 2012-000240 Application 10/239,130 10 The rejection of claims 1-4, 6, 16, 17, 23-29, and 32 under 35 U.S.C. § 103(a) as unpatentable over Nishino, Stuetz and Imboden is affirmed. The rejection of claims 23-26 under 35 U.S.C. § 103(a) as unpatentable over Nishino, Stuetz, Imboden and McGarry is affirmed. The rejection of claim 30 under 35 U.S.C. § 103(a) as unpatentable over Stuetz and Imboden is affirmed. TIME PERIOD 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). AFFIRMED bar Copy with citationCopy as parenthetical citation