Ex Parte Schuette et alDownload PDFPatent Trial and Appeal BoardFeb 27, 201310950228 (P.T.A.B. Feb. 27, 2013) 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. 10/950,228 09/24/2004 Robert L. Schuette 5718 4664 25280 7590 02/27/2013 Legal Department (M-495) P.O. Box 1926 Spartanburg, SC 29304 EXAMINER CHOI, PETER Y ART UNIT PAPER NUMBER 1786 MAIL DATE DELIVERY MODE 02/27/2013 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 TRIAL AND APPEAL BOARD ____________ Ex parte ROBERT L. SCHUETTE, JASON KREIDER, ROBERT J. GOULET, K. MARK WIENCEK, RAYMOND C. STURM, and T. ANDREW CANADA ____________ Appeal 2011-004470 Application 10/950,228 Technology Center 1700 ____________ Before PETER F. KRATZ, BEVERLY A. FRANKLIN, and MARK NAGUMO, Administrative Patent Judges. Opinion for the Board by FRANKLIN, Administrative Patent Judge. NAGUMO, Administrative Patent Judge, concurs in the judgment. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134 from the Examiner's rejection of claims 39-43. We have jurisdiction under 35 U.S.C. § 6. STATEMENT OF THE CASE Claim 39 is representative of the subject matter on appeal and is set forth below: Appeal 2011-004470 Application 10/950,228 2 39. An article comprising: (a) a knit garment having a skin-contact surface; and (b) a finish, wherein the finish comprises a silver zirconium phosphate ion exchange compound and a polyurethane binder material. and wherein the silver zirconium phosphate ion exchange compound is present in the finish in an amount that is at least 35% more by weight than the amount of the polyurethane binder material; and wherein at least a portion of the skin-contact surface of the knit garment is coated with the finish; and wherein the coated knit garment exhibits wash durable antimicrobial characteristics, as evidenced by a zone of inhibition against Gram positive and Gram negative microbes of at least 5 mm after 5 home wash cycles according to AATCC Test Method 130-1995. The prior art relied upon by the Examiner in rejecting the claims on appeal is: Green WO 01/94687 A2 Dec. 13, 2001 Konagaya 6,013,275 Jan. 11, 2000 Rock 6,194,332 B1 Feb. 27, 2001 THE REJECTIONS 1. Claims 39 -41 are rejected under 35 U.S.C. §103(a) as being unpatentable over Green in view of Konagaya. Appeal 2011-004470 Application 10/950,228 3 2. Claims 42 and 43 are rejected under 35 U.S.C. §103(a) as being unpatentable over Green in view of Konagaya, as applied to claims 39-41 above, and further in view of Rock. ISSUE Did the Examiner err in determining that there would have been a reasonable expectation of success in substituting the binder resin of Green with the polyurethane binder resin of Konagaya for making Appellants’ claimed antimicrobial article? We answer this question in the negative and AFFIRM. ANALYSIS As an initial matter, Appellants have not presented separate arguments for all of the rejected claims. Rather, Appellants’ arguments are principally directed to independent claim 1. Any claim not separately argued will stand or fall with its respective independent claim. See 37 C.F.R. § 41.37(c)(1)(vii). We essentially adopt the Examiner’s findings pertinent to the issues raised by Appellants. We therefore incorporate the Examiner’s position as set forth in the Answer. We add the following for emphasis only. It is the Examiner’s position that Green teaches an article comprising a knit garment including a silver zirconium phosphate ion exchange compound and a binder material. The Examiner recognizes that Green’s binder is not a polyurethane binder material. The Examiner states that Green teaches that the binder may be selected from resins and thermoplastics, Appeal 2011-004470 Application 10/950,228 4 including melamine resins and polyvinyl chloride-containing polymers (Id., page 14 lines 5-16) or acrylics (Id., page 15 line 8 to page 16 line 13). Ans. 5. The Examiner then relies upon Konagaya and states: Additionally, Konagaya teaches a substantially similar antibacterial composition suitable for use on fibers and fabrics, wherein the composition comprises an inorganic antibacterial agent such as a silver zirconium phosphate, and a resin, wherein the resin comprises a thermoplastic resin such as polyvinyl chloride, acrylic resin, melamine resin, or polyurethane resin (Konagaya, column 1 lines 10-28, column 3 lines 17-45, column 5 lines 2-29, column 7 line 54 to column 8 line 2, column 10 lines 9-67, column 13 lines 1-48). Konagaya teaches that the antibacterial composition can be coated onto the surface of fibers or sheets. It would have been obvious to one of ordinary skill in the antibacterial fabric art at the time the invention was made to form the antibacterial fabric of the prior art, wherein the binder resin comprises a polyurethane binder resin, as taught by Konagaya, motivated by the desire of forming a conventional antibacterial fabric with a binder resin known in the art as being functionally equivalent to the binder resins taught by Green, and predictably suitable for use in antibacterial fabrics comprising a silver antibacterial composition. Ans. 5-6. The Examiner further explains that one of ordinary skill would have been technologically capable of making the substitution, as each of the binder resins are substantially similar and suitable for the same purpose, and the resulting substitution would have predictably resulted in a silver zirconium phosphate antimicrobial composition adhered to the surface of a yarn or fabrics. Ans. 12. Appeal 2011-004470 Application 10/950,228 5 Appellants argue that one would not look to the teachings of Konagaya for an improved binder material for the reasons expressed on page 6 of the Brief and on page 2 of the Reply Brief, which we do not repeat herein. However, Appellants do not convincingly explain why the Examiner’s position that the binder of Konagaya would not be predictably suitable for use in the fabric of Green in view of the fact-findings made by the Examiner. For example, Appellants refer to the disclosure on page 12 of Green (Br. 6), but do not explain why there would not have been a reasonable expectation of success that the polyurethane binder resin of Konagaya would not satisfy the criteria for selection of a binder set out in Green in view of the Examiner’s fact-findings. As such, Appellants do not furnish convincing reasons substantiated by the evidence to establish that the combination of Green in view of Konagaya lacks the requisite predictability. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (The question to be asked is “whether the improvement is more than the predictable use of prior art elements according to their established functions.”). With regard to the additional arguments pertaining to whether the applied art teaches treating the skin-contact surface of a fabric, or the ratio of silver to binder, or that Rock teaches away from the claimed invention, we incorporate the Examiner’s position and response to these arguments as our own, and are not convinced of error for the reasons provided by the Examiner. In view of the above, we affirm the rejections. CONCLUSIONS OF LAW AND DECISION Appeal 2011-004470 Application 10/950,228 6 Each rejection 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)(1). AFFIRMED Appeal 2011-004470 Application 10/950,228 7 NAGUMO, Administrative Patent Judge, concurs in the judgment that harmful error has not been shown in the Examiner’s rejections. tc Copy with citationCopy as parenthetical citation