Ex Parte Takata

Patent Trial and Appeal Board

Nov 22, 2016

11792718 (P.T.A.B. Nov. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111792,718 06/11/2007
23850 7590 11/22/2016
KRATZ, QUINTOS & HANSON, LLP
1420 K Street, N.W.
4th Floor
WASHINGTON, DC 20005
FIRST NAMED INVENTOR
Teruyoshi Takata
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.
070319NAT 4583
EXAMINER
HADEN, SALLY CLINE
ART UNIT PAPER NUMBER
3765
MAILDATE DELIVERY MODE
11/22/2016 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)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TERUYOSHI TAKATA
Appeal2014-008153
Application 11/792,718
Technology Center 3700
Before ANNETTE R. REIMERS, THOMAS F. SMEGAL, and
ERIC C. JESCHKE, Administrative Patent Judges.
JESCHKE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Teruyoshi Takata ("Appellant") seeks review under 35 U.S.C.
§ 134(a) of the Examiner's decision, as set forth in the Final Office Action
dated October 22, 2013 ("Final Act."), rejecting claims 1-9 and 11-16. 1 We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellant identifies SHOWA GLOVE CO. ofHimeji-shi, Japan as
the real party in interest. Appeal Br. 3.
Appeal2014-008153
Application 11/792,718
The disclosed subject matter "relates to a cut-resistant glove."
Spec. 1. Claim 1, the sole independent claim, is reproduced below:
1. A cut-resistant glove which is formed of a
composite yam comprising a core and a covering
layer formed by wrapping a covering fiber around
the core, the core being composed of a metal thin
wire having a thickness of 10 to 70 µm and an
attending yam comprising 100 to 1000 non-
processed resin filaments, having 50 to 600 denier,
wherein the glove is plated with a synthetic
fiber or a natural fiber in such a manner that the
plated fiber is set in the inside of the glove, and
wherein the surface of the glove is coated
with a rubber compound solution or a resin
compound solution.
REJECTIONS
1. Claim 16 stands rejected under 35 U.S.C. § 112, second
paragraph, as failing to particularly point out and distinctly claim the subject
matter regarded as the invention. 2
2. Claims 1-8 and 11-16 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Bettcher (US 5,070,540, issued Dec. 10, 1991),
2 The Examiner rejected claims 11 and 12 under 35 U.S.C. § 112,
second paragraph, as failing to particularly point out and distinctly claim the
subject matter regarded as the invention. See Final Act. 4. In the Answer,
the Examiner withdraws this rejection as to claim 12. See Ans. 2. Claim 11
was rejected as depending from a canceled claim. See Final Act. 4. In an
Advisory Action dated April 9, 2014, the Examiner entered amendments
(dated March 21, 2014) that address the issue regarding claim 11.
2
Appeal2014-008153
Application 11/792,718
Andrews (US 5,965,223, issued Oct. 12, 1999), and Knudsen (US
2004/0069132 Al, published Apr. 15, 2004). 3
3. Claim 9 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Bettcher, Andrews, Knudsen, and Olinger (US 6,880,320
B2, issued Apr. 19, 2005).
DISCUSSION
Rejection 1 - The rejection of claim 16 under
35 US.C. § 112, second paragraph
The Examiner rejected claim 16, stating that the following phrases
lack sufficient antecedent basis: "the number"; "the wrapping turns"; and
"the length." Final Act. 4.
Appellant argues that "these terms have inherent antecedent basis in
the recitation of the base claim, and therefore there is no need for additional
antecedent basis." Appeal Br. 7 (citing MPEP § 2173.05(e)). After
highlighting the claim;s recitation of "a covering layer formed by wrapping
a covering fiber around the core," Appellant argues that "the process of
wrapping a covering fiber would inherently produce wrapping turns, and that
these turns could be counted, so there would inherently be a measurable
'number of the wrapping turns."' Id. at 8. Appellant argues that the recited
"turns per one meter of the length of the core" is "an intrinsic unit having
inherent antecedent basis, since there are inherently wrapping turns." Id.
3 The Examiner does not list claims 11 and 12 in the header for
Rejection 2 (Final Act. 4) but does discuss those claims in the body of
Rejection 2 (see id. at 4---6 (claim 12), 7 (claim 11)). As such, we consider
the failure to include claims 11 and 12 in the header for Rejection 2 as a
typographical error.
3
Appeal2014-008153
Application 11/792,718
The Examiner "disagrees ... that the number of the wrapping turns is
an inherent feature of the covering fiber" and states, "nor is the length an
inherent feature of the core." Ans. 2.
For the reasons argued by Appellant (Appeal Br. 7-8), we do not
sustain the rejection of claim 16 under 35 U.S.C. § 112, second paragraph.
Rejection 2- The rejection of claims 1---8 and
13-16 under 35 US.C. § 103(a)
For this Rejection, Appellant argues the patentability of independent
claim 1 and does not separately argue claims 2-8 and 11-16, which depend
from claim 1. Appeal Br. 9-14. Thus, we address only claim 1, with claims
2-8 and 11-16 standing or falling with claim 1. See 3 7 C.F .R. § 41.3 7
(c)(l)(iv) (2013). The Examiner rejected claim 1 as unpatentable over
Bettcher, Andrews, and Knudsen. See Final Act. 4---6.
Appellant argues that "there are unexpected results commensurate in
scone with" claim 1. as evidenced bv "the Examnles in the snecification and _._ / el _._ _._
in the Declaration under 37 CPR 1.132 filed on June 19, 2013 (the
Declaration by Teroyushi TAKATA signed May 1, 2013) demonstrating the
unexpected results." Appeal Br. 10. 4
First, as to the Examples in the Specification, Appellant argues that
"one of the effects of the present invention is that in the glove of the present
invention, the rubber or the resin compound solution recited in the last
clause of claim 1 does not strike through the surface of the knitted glove."
Appeal Br. 10. Appellant argues that "Examples 1 to 12 of the
[S]pecification represent cases where the knitted glove fitted on a glove
4 We will refer to this declaration as the "Takata Declaration."
4
Appeal2014-008153
Application 11/792,718
mold is immersed in a coagulant prior to immersion in a rubber or resin
compound solution, and the obtained glove has a contact of the wooly nylon
with the skin of a hand." Id. at 10-11 (citing various passages from the
Specification). Appellant contends that "Examples 13 to 16 represent cases
where the knitted glove fitted on a glove is heated prior to immersion, then
immersed in a rubber or resin compound solution containing a heat
sensitizer, and the obtained gloves have good touch and strong feeling and
excellent sweat absorption property." Id. at 11 (internal citation omitted)
(citing various passages from the Specification). Appellant continues that
"Example 19 represents a case where the knitted glove is subjected to oil
repellant treatment prior to immersion, and the obtained glove has a contact
of the FTY in the inside with the skin of a hand."5 Id. (citing Spec. 45, 11.
2-3). According to Appellant, these "effects could not be provided if the
rubber or the resin compound solution struck through the surface of the
knitted glove." Id. Appellant "submits that these effects of the present
invention are commensurate in scope with the claims and represent an
unexpected effect over the prior art." Id.
The Examiner responds that the feature of the "rubber or resin
compound solution ... not strik[ing] through the surface of the claimed
knitted glove ... is not claimed and therefore has not been considered."
Ans. 2-3.
Appellant replies that "there is no requirement that the unexpected
result explicitly be 'claimed,' that is, recited in the claim" and that "[ t ]he
relevant requirement, as stated in MPEP 716.02( d), is for 'unexpected results
5 "FTY" refers to "false twist yam." See Spec. 24, 11. 2-3.
5
Appeal2014-008153
Application 11/792,718
commensurate in scope with the claimed invention."' Reply Br. 3--4.
According to Appellant, "the unexpected result of the invention is supported
by the disclosure in the specification, and the result is commensurate in
scope with the claims." Id. at 4.
We are not apprised of error in the rejection of claim 1 based on this
argument. Claim 1 recites that "the surface of the glove is coated with a
rubber compound solution or a resin compound solution." Appeal Br. 18
(Claims App.) (emphasis added). Here, we agree with the Examiner that the
relied-upon feature-the "rubber compound solution" or "resin compound
solution" not penetrating through the inner "synthetic fiber" or "natural
fiber" plating-is not recited and does not necessarily flow from claim 1. In
other words, a glove could satisfy the limitation that "the surface of the
glove is coated with a rubber compound solution or a resin compound
solution" and also have the "rubber compound solution" or "resin compound
solution" penetrate through the inner "synthetic fiber" or "natural fiber"
plating. Thus, here, the allegedly unexpected results are not commensurate
in scope with claim 1. See In re Grasselli, 713 F.2d 731, 743 (Fed. Cir.
1983) (determining that results from experiments using only sodium could
not provide evidence to rebut a prima facie case of obviousness where the
claim was broader than compounds with just sodium).
Moreover, even if the relied-upon feature-again, the "rubber
compound solution" or "resin compound solution" not penetrating through
the inner "synthetic fiber" or "natural fiber" plating-were assumed to either
be recited in or necessarily flow from claim 1 (and not be in the prior art),
Appellant has not provided objective evidence-rather than attorney
argument-showing that the results of this feature (underlined in Appellant's
6
Appeal2014-008153
Application 11/792,718
arguments above) were unexpected. See In re Mayne, 104 F.3d 1339, 1343
(Fed. Cir. 1997) ("With a factual foundation for its prima facie case of
obviousness shown, the burden shifts to applicants to demonstrate that their
claimed [invention] possess an unexpected property over the prior art."); In
re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (stating that unsupported
attorney argument as to unexpected results is entitled to little weight); see
also In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) ("It is well settled
that unexpected results must be established by factual evidence.").
Second, Appellant summarizes the Takata Declaration, which
discusses (1) a "Glove A," which, according to Appellant "[ wa ]s prepared,
based on the glove of [Bettcher], modified to use a first filament bundle as in
Knudsen" and (2) a "Glove B," which, according to Appellant, was "the
glove of Example 12 on page 35 of the present [S]pecification." Appeal Br.
11, 12. Appellant argues that, "as evidenced in the [Takata] Declaration, the
obtained Glove A is much tougher and coarser than Glove B." Id. at 12; see
also Takata Dec. 3 ("The thus obtain[ e ]d glove A is much tougher and
coarser as compared with the glove B of the present invention (Example
12 ). "), 3--4 (stating that "even if the fiber strand of [Bettcher] is displaced
with the first filament bundle of [Knudsen], the glove excellent in
workability (softness) and touch feeling intended by the present invention
cannot be provided"). Appellant contends that "a glove having the
limitations of claim 1 of the present invention is clearly superior to the prior
art, and moreover, even when a combination of Bettcher and Knudsen is
prepared not meeting all of the limitations of claim 1, the result is clearly
inferior to the present invention." Id. at 14.
7
Appeal2014-008153
Application 11/792,718
We are not apprised of error based on this argument. As noted by the
Examiner, the Takata Declaration "is drawn to one example of what
materials could be used for the glove and is not commensurate with the
scope of the claims, which recites variable ranges for materials such as the
range of thickness of the core, the number of attending yams, and the denier
of the filaments." Ans. 3. Indeed, the discussion of Example 12 in the
Specification identifies specific materials for the recited "composite yam"
and specific materials-namely "polyurethane fiber with 40D" and "wooly-
processed nylon fibers with 70D/24F"-for the recited "plated fiber ... set
in the inside of the glove." See Spec. 35-36. Thus, the allegedly
unexpected results are not commensurate in scope with claim 1. See
Grasselli, 713 F.2d at 743.
Further, although the Takata Declaration does state the alleged
superiority of Glove B over Glove A, the Declaration does not provide
objective evidence as to why these results would have been unexpected.
See, e.g., Mayne, 104 F.3d at 1343 ("An applicant may make this showing
with evidence that the claimed invention exhibits some superior property or
advantage that a person of ordinary skill in the relevant art would find
surprising or unexpected."). Instead, Appellant provides only attorney
argument that these results would have been unexpected. See, e.g., Appeal
Br. 14 ("The effect described is therefore an unexpected, advantageous
result commensurate in scope with claim 1 .... "). This does not suffice to
demonstrate unexpected results. See Geisler, 116 F.3d at 1470.
Contrary to Appellant's position, after the Examiner set forth a prima
facie case of obviousness (which Appellant has not contested), the burden of
production resided with Appellant to show the results were unexpected. See
8
Appeal2014-008153
Application 11/792,718
Mayne, 104 F.3d at 1343. The Examiner did not need to show that the
results were expected. Cf Appeal Br. 13 (discussing Final Act. 3 and
arguing that "the Examiner does not appear to have provided any citation of
the references or the prior art indicating that the effects would have been
expected").
For these reasons, we sustain the rejection of independent claim 1.
Claims 2-8 and 13-16 fall with claim 1.
Rejection 3 -The rejection of claim 9 under 35 USC§ 103(a)
The Examiner rejected claim 9 as unpatentable over Bettcher,
Andrews, Knudsen, and Olinger. See Final Act. 8.
Noting that claim 9 depends from claim 1, Appellant first relies on the
arguments set forth above regarding claim 1 (see supra Rejection 2). Appeal
Br. 15. Appellant also "submits that the effects of the present invention are
unexpected over the Olinger reference." Id. According to Appellant,
"[t]here is nothing in [the relied-upon] disclosure [in Olinger] that would
predict the demonstrated effect of the present invention." Id. at 16.
We are not apprised of error in the rejection of claim 9. First, for the
same reasons discussed above, Appellant has not demonstrated error in the
rejection of claim 1, from which claim 9 depends. Second, as also discussed
above, the Examiner does not (and need not) rely on Olinger to address the
allegedly unexpected results argued with regard to claim 1. Thus, we sustain
the rejection of claim 9.
9
Appeal2014-008153
Application 11/792,718
DECISION
We REVERSE the decision to reject claim 16 under 35 U.S.C. § 112,
second paragraph, and AFFIRM the decision to reject claims 1-9 and 11-16
under 35 U.S.C. § 103(a). 6
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
6 See 37 C.F.R. § 41.50(a)(l) ("The affirmance of the rejection of a
claim on any of the grounds specified constitutes a general affirmance of the
decision of the examiner on that claim, except as to any ground specifically
reversed.").
10