Ex Parte Ouvry

Patent Trial and Appeal Board

Jul 26, 2013

10239130 (P.T.A.B. Jul. 26, 2013)

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

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Application 10/239,130

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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.
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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.
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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.
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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.
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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.
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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).
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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.
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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.
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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

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