Ex Parte Stuebiger

Patent Trial and Appeal Board

May 24, 2018

12677143 (P.T.A.B. May. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/677,143 05/05/2010
28596 7590 05/25/2018
W. L. GORE & ASSOCIATES, INC.
551 PAPER MILL ROAD
P. 0. BOX 9206
NEWARK, DE 19714-9206
FIRST NAMED INVENTOR
Werner Stuebiger
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.
FA/311 8102
EXAMINER
PIZIALI, ANDREW T
ART UNIT PAPER NUMBER
1789
MAILDATE DELIVERY MODE
05/25/2018 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 WERNER STUEBIGER
Appeal2017-000168
Application 12/677,143
Technology Center 1700
Before MICHAEL P. COLAIANNI, CHRISTOPHER L. OGDEN, and
MICHAEL G. McMANUS, Administrative Patent Judges.
OGDEN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant 1 appeals under 35 U.S.C. § 134(a) from the Examiner's
final decision rejecting claims 1-7, 9, 10, 12-15, 17, 19, 21-51, and 57-78
in the above-identified application. 2 We have authority pursuant to
35 U.S.C. § 6(b ).
We AFFIRM.
1 According to Appellant, the real party in interest is W.L. Gore & Associates
GmbH. Appeal Brief 2, June 3, 2016 (hereinafter Appeal Br.).
2 The appeal record includes the following: Final Office Action, Jan. 19,
2016 [hereinafter Final Action]; Appeal Br.; Examiner's Answer, July 27,
2016 [hereinafter Answer]; Reply Brief, Sept. 26, 2016 [hereinafter Reply
Br.].
Appeal2017-000168
Application 12/677,143
BACKGROUND
Appellant's invention relates to "an improved fabric made of
multifilament yams with a high air-permeability and with reduced water
absorption." Spec. 1:5---6. 3 An example is Figure 3, reproduced below:
FIG 3
YO
In Appellant's Figure 3, fabric 10 consists of woven yams 20, each of which
is a bundle of fibers (50). Id. at 10:32-34, 13:4--5. Interstices 30 form the
spaces between yams 20. Id. at 11:1, 13:5-6.
3 International Application No. PCT/EP2008/007333 (filed Mar. 9, 2010,
published Mar. 19, 2009 as WO 2009/033626 Al) [hereinafter Spec.].
2
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Application 12/677,143
Figure 4, reproduced below, depicts yam 20 in greater detail:
FIG 4
Appellant's Figure 4 depicts a cross-section of yam 20, showing fibers 50.
Id. at 14:6-7. Between fibers 50 are voids 60, which are filled with a
polymer material (70). The figure shows an embodiment in which outer
surface 22 of yam 20 is devoid of polymer. Id. at 14:8-11. In another
embodiment, a thin skin of polymer material 70 may at least partially cover
outer surface 22. Id. at 14:11-12.
Claim 1, which is representative of the invention, reads as follows:
1. A fabric comprising:
a. yams with interstices between the yams,
b. said interstices between said yams having an
average width greater than 100 µm,
c. said yams being comprised of multiple fibers,
d. at least one of said yams having voids between
said fibers,
e. wherein the voids are completely filled with a
polymer material and the interstices between the
yams remain open, wherein the polymer material
is located only within the voids of the yarns,
wherein said fabric has an air permeability of at
3
Appeal2017-000168
Application 12/677,143
least 300 l/m2/sec, and wherein said fabric has a
water absorption rate less than 50%.
Br. 12 (emphasis of key phrases added). Claim 41, also independent,
includes substantially the same structure and adds a water vapor permeable
barrier layer. See id. at 16.
The Examiner rejects claims 1-7, 9, 10, 12-15, 17, 19, 21-51, and 57-
78 under 35 U.S.C. § 103(a) as being unpatentable over Caldwell4 in view of
Schwarz. 5 Final Action 2-6.
Appellant argues the claims as a group. See Appeal Br. 3-13.
Therefore, consistent with 3 7 C.F.R. § 41.3 7 ( c )( 1 )(iv), we limit our
discussion to independent claim 1. Claims 2-7, 9, 10, 12-15, 17, 19, 21-51,
and 57-78 fall with claim 1.
DISCUSSION
The Examiner finds that Caldwell explicitly discloses all the
limitations of claim 1 except for the recited average interstice width between
the yams, and the recited claimed air permeability and water absorption rate.
See Final Action 2--4. The Examiner finds that Schwarz teaches the recited
average interstice width, id. at 3, and that the recited claimed air
permeability and water absorption rate are inherent within the Caldwell
disclosure, id. at 3--4. The Examiner determines that it would have been
obvious to combine the average interstice width of Schwarz with the
structure of Caldwell to ensure the desired air permeability. Id. at 3.
4 Caldwell, US 5,418,051 (issued May 23, 1995).
5 Schwarz et al., WO 01/66851 Al (published Sept. 13, 2001) [hereinafter
Schwarz].
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Appeal2017-000168
Application 12/677,143
The Examiner interprets the limitation "wherein the polymer material
is located only within the voids of the yams" to be met even if there is a
layer of polymer material coating the fiber surfaces in Caldwell, because the
claim uses open ("comprising") claim language. Id. at 7. Nevertheless, the
Examiner finds that Caldwell teaches many embodiments, including the use
of an amount of polymer "insufficient to even partially fill any of the
interstices." Answer 10 (citing Caldwell 11: 14--48).
In the Answer, the Examiner alternatively finds that "the method of
making the silicone impregnated fabric of Caldwell is substantially identical
to the method disclosed in the current application," and that both Caldwell
and Appellant use substantially identical materials and weights. Id. at 11-
12. Thus, the Examiner finds that Caldwell inherently discloses the
limitations of claim 1. See id. at 12. In the Reply Brief, Appellant does not
contest this rationale. See Reply Br. 2---6.
Appellant argues that the Examiner incorrectly interprets claim 1 to
permit polymer material to be located outside the voids of the yams, because
this interpretation improperly ignores the word "only," which must have
meaning in the claim. Appeal Br. 9-11. Appellant argues that Caldwell
does not disclose that the fabric has polymer material only within the voids
of the yams, as required by the claims. Id. at 5. Rather, according to
Appellant, Caldwell discloses that the polymer at least partially surrounds
the fibers, and thus, there would be polymer on the surfaces of the yam
fibers. Id. at 6 (citing Caldwell 10:46-49, 32:53-57); see also id. at 7 (citing
Caldwell 9:60---62, 12:43--45). Moreover, Appellant argues that Caldwell
does not disclose that the yams are "completely filled" with the polymer
5
Appeal2017-000168
Application 12/677,143
material, merely that there is polymer enveloping or surrounding the
exposed surface portions of the fibers. Id. at 7-9.
"[T]he claim-construction inquiry ... begins and ends in all cases
with the actual words of the claim." Homeland Housewares, LLC v.
Whirlpool Corp., 865 F.3d 1372, 1375 (Fed. Cir. 2017) (quoting Renishaw
PLC v. Marposs Societa 'per Azioni, 158 F.3d 1243, 1248 (Fed. Cir. 1998)).
While we give claims their broadest reasonable interpretation, that "does not
include giving claims a legally incorrect interpretation." In re Skvorecz, 580
F.3d 1262, 1267 (Fed. Cir. 2009). Thus, we agree with Appellant that the
Examiner erred in adopting an interpretation that fails to give meaning to the
term "only" in claim 1. By its plain meaning, claim 1 requires that the only
polymer material within the claimed fabric is within the voids of the yams. 6
However, the Examiner's error is harmless: the Examiner's
alternative basis for rejection does not rely upon the erroneous interpretation
of claim 1. Where "the claimed and prior art products ... are produced by
identical or substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily or inherently
possess the characteristics of his claimed product." In re Best, 562 F.2d
6 Claim 9 (which depends from claim 1) recites, "the at least one of said
yams has an outer surface and at least the fibers within the outer surface are
embedded in the polymer material." Appeal Br. 13. Claim 10 (which
depends from claim 9) recites, "the outer surface of said yams is at least
partially free of polymer material." Id. Claims 57 (depending from claim
1 ), 58 (depending from claim 41 ), and 62 (depending from claim 41) include
similar limitations. See id. at 17-18. Because we affirm the Examiner's
rejection under 35 U.S.C. § 103(a), we need not address whether or not
claims 9, 10, 57, 58, and 62 are proper dependent claims under 35 U.S.C.
§ 112, paragraphs 2 and/or 4.
6
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Application 12/677,143
1252, 1255 (CCPA 1977). The Examiner has reasonably shown that
Caldwell discloses substantially the same process for making the prior art
fabric as Appellant discloses in the Specification for making the claimed
fabric. See Answer 11-12. This inherency rationale is equally reasonable
regardless of whether or not claim 1 permits the presence of at least some
polymer material outside the voids of the yams.
Thus, the Examiner has made a prima facie case of obviousness based
on inherency, and the burden shifted to Appellant "to prove that the prior art
products do not necessarily or inherently possess the characteristics of his
claimed product." Best, 562 F.2d at 1255 ("[The rule's] fairness is evidenced
by the PTO' s inability to manufacture products or to obtain and compare
prior art products."). However, Appellant has not contested the inherency
findings that the Examiner made in the Answer, or otherwise directed our
attention to any reversible error in the Examiner's ground for rejection on
that basis.
While Appellant argues that Caldwell does not teach any embodiment
in which the polymer material is absent within the interstices, see Reply Br.
2-3, this argument does not address the Examiner's inherency rationale.
Moreover, while Appellant points to embodiments in Caldwell that would
not fall within the scope of the claims, Appellant does not persuasively rebut
the Examiner's finding that in at least one embodiment, the amount of
polymer in Caldwell's fabric would be "insufficient to even partially fill any
of the interstices." Answer 10 (citing Caldwell 12:14--48, 31:51---67). The
Examiner's finding is supported by Caldwell's teaching that one may vary
the amount of polymer impregnant such that it is "insufficient even to coat or
substantially completely envelope individual fibers of the web," Caldwell
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Application 12/677,143
31: 62----67, and that a process for making the fabric leaves "at least some of
the interstices and/or open cells ... preferably substantially free of[] silicone
polymer impregnant," id. at 12:43--47.
For the above reasons, we affirm the Examiner's rejection.
DECISION
The Examiner's decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended. See 37 C.F.R. § 1.136(a)(l)(iv) (2016).
AFFIRMED
8