Ex Parte South

Patent Trial and Appeal Board

Jul 28, 2016

11399926 (P.T.A.B. Jul. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111399,926 0410712006
26683 7590 07/29/2016
GA TES CORPORATION
IP LAW DEPT. 10-A3
1551 WEWATTA STREET
DENVER, CO 80202
FIRST NAMED INVENTOR
Bobbie E. South
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
B05-033A 2078
EXAMINER
LIU,HENRYY
ART UNIT PAPER NUMBER
3654
MAILDATE DELIVERY MODE
07/29/2016 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)
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BOBBIE E. SOUTH
Appeal2014-006417
Application 11/399,926
Technology Center 3600
Before ANNETTE R. REIMERS, MARK A. GEIER, and
PAUL J. KORNICZKY, Administrative Patent Judges.
KORNICZKY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellant, Bobbie E. South, 1 appeals under 35 U.S.C. § 134 from the
Examiner's decision rejecting claims 1 and 4--26.2 We have jurisdiction
under 35 U.S.C. § 6(b ).
We REVERSE.
Appellant identifies the real party in interest as Gates Corporation.
Appeal Br. 3.
2 Claims 2-3 are cancelled. Appeal Br. 5.
Appeal2014-006417
Application 11/399,926
THE CLAIMED SUBJECT MATTER
The claims are directed to a power transmission belt. Spec. 1 :5.
Claims 1, 19, and 25 are independent. Appeal Br. 23-26, Claims App.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A belt comprising:
a body and tensile members running in a longitudinal
direction, the body having a pulley engaging region having a
molded profile;
the molded profile consisting of a surface layer around the
profile, a main body portion comprising a first vulcanized
elastomeric material, and a subsurface layer in between the
surface layer and the main body portion;
the subsurface layer consisting of a second vulcanized
elastomeric material having a friction modifying agent;
said first elastomeric material free of said friction
modifying agent; and
wherein the surface layer comprises a fibrous nonwoven
fabric material co-mingled with the second elastomeric material;
and
wherein the friction modifying agent is a particulate solid
or a non-blooming liquid.
REFERENCES
In rejecting the claims on appeal, the Examiner relied upon the
following prior art:
Terhune
Richmond
Lofgren
Teves
Edwards
Nonnast
us 3,343,425
us 4,096,764
US 6,461,264 Bl
US 2003/0139242 Al
US 2004/0009839 Al
US 2004/0048708 Al
2
Sept. 26, 1967
June 27, 1978
Oct. 8, 2002
July 24, 2003
Jan. 15,2004
Mar. 11, 2004
Appeal2014-006417
Application 11/399,926
REJECTIONS3
The Examiner made the following rejections:
1. Claims 1, 4, 5, and 7-18 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Richmond and Edwards.
2. Claim 6 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Richmond, Edwards, and Lofgren.
3. Claims 19-23 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Edwards and Terhune.
4. Claim 24 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Edwards, Terhune, and Teves.
5. Claims 25 and 26 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Richmond, Edwards, and Nonnast.
Appellants seek our review of these rejections.
OPINION
Rejections 1, 2, and 5: Claims 1, 4--18, 25, and 26
Independent claims 1 and 25 both recite "the surface layer comprises
a fibrous nonwoven fabric material co-mingled with the second elastomeric
material." Appeal Br. 23, 26, Claims App. The Examiner finds that
Richmond discloses this limitation, stating "the elastic layer 22 and the
fabric layer 21 have cooperating portions and are thus co-mingled." Final
Act. 3, 15 (citing to Richmond 4:10-38, 5:45-50). The Examiner also
explains that the
3 Appellant presents additional evidence in the Declaration of Bobbie E.
South (hereinafter the "South Declaration") filed on June 19, 2013. See
Appeal Br. 27, Evidence App.
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Appeal2014-006417
Application 11/399,926
ordinary definition of "co-mingled" includes "mixed or mingled
together." Cooperating portions can be considered comingled,
and thus contacting portions could also be considered "co-
mingled." Also, when a belt is cured ([Richmond] Col. 4, lines
10-38) with a fabric cover and an elastomer body, the elastomer
migrates into the fabric of the cover. Further, [Appellant] has not
claimed that the co-mingling takes place in the "pulley engaging
region."
Ans. 18-19 (emphasis added).
Appellant argues that Richmond does teach or suggest "co-mingling
of elastomer and non-woven fabric." Appeal Br. 11, 13-15. Appellant
"suggests no significant difference in definitions [of co-mingle] exists, just a
difference in opinion whether comingling occurs or not."4 Id. at 14.
Appellant explains:
The rejection thus presumes that "cooperating portions can be
considered comingled" (OA mailed 5/8/2012 at p. 17 lines 1--4).
However, RICHMOND describes only the tension section (i.e.
backside) as having so-called "cooperating portions" (see
RICHMOND at col. 4 lines 35-37). The claim calls for
comingling in the ''pulley engaging region, " (i.e. the angled
sides) not in the tension section. Moreover, RICHMOND's
"cooperating portions which define the only structure" (Id.) have
nothing to do with co-mingling, but rather merely refer to the
laminated structure located at the back side of the belt in the
tension layer 23. (see also South Deel. at i-f 10.)
Moreover, expert evidence is presented that
RICHMOND's skim layer will not penetrate significantly
4 A dictionary states that "commingle" means "to blend thoroughly into
a harmonious whole." Merriam-Webster Dictionary, http://www.merriam-
webster.com/dictionary/commingle (July 22, 2016). Another dictionary
states "commingle" means "mix; blend." Oxford Dictionaries,
http://www.oxforddictionaries.com/us/definition/american_english/comming
le (July 22, 2016).
4
Appeal2014-006417
Application 11/399,926
enough into the fabric to be considered co-mingled by one of
ordinary skill in the art. (see South Deel. at i-fi-17-9 and 14).5
Appeal Br. at 14.
The Specification also explains the manufacture of the elastomeric
material and the nonwoven fabric material:
Application of pressure prior to curing infuses the elastomeric
subsurface material into the optional nonwoven material while
forming the profile. The elastomeric material then occupies the
interstices between the individual fibers comprising the
nonwoven material. This results in a region 15 of nonwoven
material wherein the nonwoven materials are co-mingled and
interpenetrated with the elastomeric material.
Spec. 14:4--9 (emphasis added). Thus, the Specification explains that the
elastomeric material "interpenetrates" the "interstices between the individual
fibers of the non woven fabric material." Id.
We find that Appellant's arguments are persuasive, and the Examiner
erred in the construction of the term "co-mingled" recited in claims 1 and
25. In light of the disclosure in the Specification, a person of ordinary skill
in the art would not understand that Richmond's two laminated layers (i.e.,
elastic layer 22 and fabric layer 21) are co-mingled. The Examiner has not
shown that elastic layer 22 "interpenetrates," or is "mixed" or "blended,"
into non-woven fabric layer 21. We also agree with Appellant that
"'contacting' of two laminated layers [in Richmond] is not equivalent to
'comingling' of two materials." Reply Br. 2 (emphasis omitted). The
Examiner does not rely on the other prior art to remedy the deficiencies of
5 The Examiner does not rebut paragraphs 7-9 and 14 of the South
Declaration.
5
Appeal2014-006417
Application 11/399,926
Richmond. Thus, we do not sustain the rejection of independent claims 1
and 25.
For the reasons above, the rejections of independent claims 1 and
25 under 35 U.S.C. § 103(a) in view of Richmond, Edwards, and Nonnast
are reversed. The rejections of claims 4--18 and 26, which depend from
independent claims 1 and 25, are also reversed.
Rejections 3, 4: Claims 19-24
The Examiner finds that Edwards discloses all of the limitations of
independent claim 19, except for "laying up a third elastomeric layer directly
on the second layer and whereby said third elastomer layer forms a sub-
surface layer comprising said friction modifying agent along said profile
between the nonwoven fabric material and the second elastomeric layer"
which is disclosed by Terhune. Final Act. 11-13. The Examiner's sole
reason for applying Terhune's teachings to Edwards is that it "would have
been obvious to one of ordinary skill in the art to modify the manufacturing
method in EDWARDS with the third outer elastomeric layer in TERHUNE
to create a belt which has rubber layers which are better suited for their
purposes." Id. at 12.
We agree with Appellant that the "motivation cited in the FOA, 'to
create a belt which has rubber layers which are better suited for their
purposes,' (FOA at p. 12, 4th para.) is purely conclusory and without
evidentiary support or appropriate rationale." Appeal Br. 19. The
Examiner, for example, does not explain the "purposes" of the references,
and how the proposed modification of Edwards and Terhune would achieve
the purported purposes.
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Appeal2014-006417
Application 11/399,926
For the reasons above, the rejections of independent claims 19 under
35 U.S.C. § 103(a) in view of Edwards and Terhune are reversed. The
rejections of claims 20-24, which depend from independent claim 19, are
also reversed.
DECISION
The Examiner's rejections of claims 1 and 4--26 are REVERSED.
REVERSED
7