Ex Parte Schulein et al

Patent Trial and Appeal Board

Feb 21, 2014

11778340 (P.T.A.B. Feb. 21, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte WALTER GORDON SCHULEIN,
NATHANIEL H. KOLMES, and FRED ELTON DRIVER
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Appeal 2012-003468
Application 11/778,340
Technology Center 3700
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Before STEFAN STAICOVICI, PATRICK R. SCANLON, and
BART A. GERSTENBLITH, Administrative Patent Judges.

SCANLON, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
rejection of claims 1-6, 9, 14, and 15 under 35 U.S.C. § 103(a) as being
unpatentable over Kolmes (US 6,341,483 B1, iss. Jan. 29, 2002) and Mellon
(US 5,784,720, iss. Jul. 28, 1998). Claims 7, 8, and 10-13 are cancelled. An
oral hearing was conducted on February 6, 2014. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
THE INVENTION
Appellants’ invention relates to garments made from “a lightweight
protective fabric that is cut, slash and/or abrasion resistant.” Spec. 1, ll. 8-9.
Claim 1, reproduced below, is the sole independent claim and representative
of the claimed subject matter.
1. A shaped knit garment, comprising:
one or more fabric panels prepared from at
least one cut, slash and/or abrasion resistant yarn
and prepared by shaped knitting, wherein the
shaped knit garment has a cut resistance of at least
1500 (as measured by ASTM-F1790-2005),
wherein the one or more fabric panels are made by
shaped knitting and form an entirety of the
garment body and arms, wherein the garment has
cuffs at an end of each arm, wherein each cuff has
a loop affixed to the inside of the cuff through
which a wearer’s thumb is placed to hold the cuff
in position, wherein the garment is a jacket or a
sweater, and wherein the garment contains no
metal grommets.

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ANALYSIS
The Examiner finds that Kolmes discloses composite yarns used to
make various protective garments, such as cut and puncture resistant gloves,
aprons, and glove liners. Ans. 5. The Examiner determines that the shaped
knitting limitations of claim 1 are product-by-process claim limitations that
shift the burden to Appellant “to provide evidence of a materially different
result from the shaped knitting of a garment claimed to that of the garment
knitting disclosed [in Kolmes].” Ans. 6-7. Regarding the recitation of a
loop affixed to the inside of a cuff, the Examiner finds that Mellon discloses
“a cuff 16, with each cuff 16 having a loop 30 ‘affixed’ through stitching 32
to the inside of the cuff 16.” Ans. 11 (citing Mellon, figs. 2-4). The
Examiner concludes it would have been obvious to modify Kolmes by
adding the cuff structure of Mellon to ensure “proper location of the cuff for
covering the user’s wrist when wearing a long sleeved garment.” Ans. 9-10;
see also Ans. 12.
Appellants present several arguments against the Examiner’s
proposed combination.1 First, Appellants argue that Kolmes “is entirely
silent on shaped knitting or shaped knit garments” and the Shima knitting
machines mentioned in Kolmes are incapable of shaped knitting. App. Br.
4; Reply Br. 3. Appellants also assert that, in contrast to Kolmes, “the
machines used in the present invention are shaped knitting machines.” App.
Br. 5.

1 Appellants argue claims 1-6, 9, 14, and 15 as a group. App. Br. 4-11. We
take independent claim 1 as representative pursuant to 37 C.F.R.
§ 41.37(c)(1)(vii)(2011), and claims 2-6, 9, 14, and 15 stand or fall with
claim 1.
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Appellants, however, do not claim using a particular type of machine
to make a shaped knit garment. Rather, claim 1 calls for a shaped knit
garment comprising one or more fabric panels “prepared by shaped knitting”
and “wherein the one or more fabric panels are made by shaped knitting.”
Furthermore, this line of argument by Appellants does not address the
Examiner’s finding (noted supra) that claim 1 is a product-by-process claim.
The claim 1 limitations “prepared by shaped knitting” and “wherein the one
or more fabric panels are made by shaped knitting” define the claimed
garment in terms of a process of making the garment rather than the garment
itself. We thus agree with the Examiner that these limitations are process
limitations and claim 1 is a product-by-process claim. The patentability of
product-by-process claims is not dependent on process limitations. See In re
Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985) (“even though product-by-
process claims are limited by and defined by the process, determination of
patentability is based on the product itself”); see also Manual of Patent
Examining Procedure (MPEP) § 2113 (8th ed., Rev. 9, Aug. 2012).
Appellants do not challenge the Examiner’s product-by-process reasoning
and fail to establish an unobvious difference between the claimed and prior
art garments. Accordingly, Appellants’ arguments do not apprise us of error
in the Examiner’s position with respect to the shaped knitting limitations.
Next, Appellants argue that Mellon fails to cure the deficiencies of
Kolmes relating to shaped knitting. App. Br. 5. This argument is not
persuasive, however, because we find no deficiency in the Examiner’s
findings regarding the shaped knitting limitations, as discussed supra.
Appellants also argue that Mellon discloses a hole through a cuff for
the wearer’s thumb, not a loop affixed to the inside of a cuff as claimed. Id.
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at 5-6. Appellants add that Mellon’s “loop 30” “cannot correspond to the
present invention loop, as the thumb of the wearer of the Mellon garment
does not actually go through the loop,” is not affixed to the inside of the
cuff, and “is not an actual loop but is the fabric itself seen in cross section.”
Reply Br. 3.
In arguing that the wearer’s thumb does not go through “loop 30” and
“loop 30” “is the fabric itself seen in cross section,” Appellants apparently
believe that the Examiner is referring to the folded over, double layer of
fabric defining side wall 18 of Mellon’s thumb sheath 30 (shown in cross
section in Figure 3 of Mellon) as “loop 30.” The Examiner’s position,
however, appears to be that the entirety of Mellon’s thumb sheath 30, given
its tubular configuration, defines a “loop.” Considering this interpretation of
Mellon’s disclosure, we agree with the Examiner that thumb sheath 30 is a
“loop” through which a wearer’s thumb extends for the following reasons.
Mellon discloses a cuff construction for a long sleeve garment.
Mellon, col. 3, ll. 14-16. Cuff 10 comprises tubular member 16 having hole
26 through which the wearer’s thumb extends. Id. at col. 3, ll. 22-31.
Thumb sheath 30 is secured to tubular member 16 around hole 26 by
stitching 32. Id. at col. 3, ll. 34-40; fig. 3. Claim terms are generally given
their ordinary and customary meaning, which is the meaning the words
would have to a person of ordinary skill in the relevant art at the time of
invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005)
(en banc). The term “loop” is neither ambiguous nor highly technical. More
importantly, Appellants do not point to a lexicographic definition or other
disclosure in their Specification that would suggest a meaning other than its
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ordinary meaning would apply2. In the absence of any special definition, we
agree with the Examiner that thumb sheath 30 defines a loop by virtue of its
tubular configuration, which defines a closed, curvilinear shape through
which a user’s thumb may pass.
Furthermore, we disagree with Appellants’ contention that thumb
sheath 30 is not affixed to the inside of cuff 10. As shown in Figures 3 and 4
of Mellon, tubular member 16, which forms the primary portion of cuff 10,
has side wall 18 constructed as a double layer of fabric. Figures 3 and 4
show both layers folded inward around hole 26 with thumb sheath 30
stitched to both the inner and outer layers at the inwardly folded portions.
As such, stitching 32 (i.e., the point of attachment of thumb sheath 30 to
tubular member 16) is shown to be located inside of the generally cylindrical
interior of cuff 10. Appellants’ claims require the loop be affixed inside the
cuff, but do not require that the loop is located entirely inside the cuff.
Therefore, the fact that the majority of sheath 30 extends outside of cuff 10
is not relevant. For these reasons, Appellants’ argument that “loop 30” is
not affixed to the inside of cuff 10 is not persuasive.
Appellants argue next that combining Kolmes and Mellon would not
result in the claimed invention because “[k]nitting a hole into the fabric
using a glove knitting machine is not possible.” App. Br. 6. Appellants also
repeat their prior argument that glove knitting machines are incapable of
shaped knitting. Id. (glove machines produce a garment that is not “a shaped
knit garment made using shaped knitting”).

2 A common dictionary definition of the term loop is “[s]omething
having a shape, order, or path of motion that is circular or curved over on
itself.” The American Heritage College Dictionary (4th Ed. 2010).
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Even if Appellants’ assertions about the limitations of glove knitting
machines are correct,3 these arguments are not persuasive because they place
too much emphasis on Kolmes’ reference to Shima knitting machines.
Kolmes states “[i]n an alternative embodiment, the combined yarn may be
used alone to fabricate a cut resistant garment. A glove was knitted on a
Shima knitting machine using a yarn constructed according to the present
invention.” Kolmes, col. 11, ll. 1-4. As such, Kolmes describes using a
Shima knitting machine in a single embodiment and does not disclose that
such machines necessarily must be used in all applications of the yarn. In
addition, while this particular embodiment relates to a glove (which logically
suggests use of a glove knitting machine), Kolmes’ yarn is not limited to
glove applications. See Kolmes, col. 1, ll. 17-20 (“The present invention
relates to composite yarns useful in the manufacture of various types of
protective garments such as cut and puncture resistant gloves, aprons, and
glove liners.”) (emphases added). A person of ordinary skill in the art would
consider using equipment other than glove knitting machines to knit aprons
and other non-glove garments.
Lastly, Appellants point to the Declaration Under 37 C.F.R. § 1.132 of
Nathaniel Kolmes, filed September 23, 2009 (“Kolmes Declaration”), as
providing evidence of commercial success achieved by the invention. App.
Br. 7-10. This evidence, however, is lacking in at least two respects. First,
there is no indication of whether the stated sales figures represent a
substantial quantity in the relevant market. “[E]vidence related solely to the

3 We note that no evidence in support of these assertions is provided.
“Attorney’s argument in a brief cannot take the place of evidence.” In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974).
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number of units sold provides a very weak showing of commercial success,
if any.” In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996); see In re Baxter
Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) (“information solely on
numbers of units sold is insufficient to establish commercial success”).
Second, the Kolmes Declaration does not provide sufficient factual evidence
demonstrating a nexus between the sales and the claimed invention. The
statements that the sales result from “the design of the garment of the present
invention, providing comfort, high level of cut, slash and abrasion
resistance, and the inclusion of the thumb loops in the cuffs to hold the cuff
in place over the wearer’s wrist, thus protecting against potentially life-
threatening cuts to major blood vessels” (Kolmes Decl., para. 11) and the
“sales were not directly caused by a marketing effort, but were the result of
providing a product in response to a need expressed by the glass industry”
(Kolmes Decl., para. 13) merely represent the declarant’s opinion as to the
purchasers’ reasons for buying Appellants’ garments. Such opinion does not
provide a sufficient factual basis to establish the required nexus. See In re
Huang, 100 F.3d at 140.
Accordingly, having fully considered and weighed the evidence
presented, we conclude that, on balance, the Examiner’s evidence of
obviousness outweighs the evidence of non-obviousness provided by
Appellants.
In view of the above, we sustain the rejection of claims 1-6, 9, 14, and
15 under 35 U.S.C. § 103(a) as unpatentable over Kolmes and Mellon.
DECISION
We affirm the Examiner’s decision rejecting claims 1-6, 9, 14, and 15.
No time period for taking any subsequent action in connection with
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this appeal may be extended under 37 C.F.R. § 1.136 (a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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