Ex Parte Taylor

Board of Patent Appeals and Interferences

Mar 30, 2011

11072683 (B.P.A.I. Mar. 30, 2011)

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.
11/072,683 03/04/2005 David Stirling Taylor 1347/85104 1216
22242 7590 03/30/2011
FITCH EVEN TABIN & FLANNERY
120 SOUTH LASALLE STREET
SUITE 1600
CHICAGO, IL 60603-3406
EXAMINER
PIZIALI, ANDREW T
ART UNIT PAPER NUMBER
1798
MAIL DATE DELIVERY MODE
03/30/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte DAVID STIRLING TAYLOR
________________

Appeal 2009-011600
Application 11/072,683
Technology Center 1700
________________

Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
JEFFREY T. SMITH, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-011600
Application 11/072,683

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STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1-3, 6, 24-27, 29, 30, 32-35, 39, 42-47, and 49-52.
We have jurisdiction under 35 U.S.C. § 6(b).1
The Invention
Appellant’s invention is directed to a flexible material which includes
small separate and spaced blocks of foam adhesively affixed to a stretchable
or elastic fabric and a method of manufacturing such a material.
Representative independent claim 1 is reproduced below:
1. A flexible material comprising:
a four way stretchable fabric substrate; and
a plurality of spaced separate resilient foam elements
comprising polyethylene, the foam elements adhesively affixed
to the fabric substrate with a polyethylene or ethyl vinyl acetate
thermoplastic hot melt adhesive, the foam elements having a
surface which interfaces with the fabric and which surface has
an area not greater than 1 square inch, the adhesive comprising
a thermoplastic adhesive having a melting point of at least
about 250° F, wherein the flexible material may be washed in
water having a temperature of up to 140°F for up to about 15
minutes and then dried at a temperature of from about 140°F to
about 200°F for up to about 40 minutes without detachment of
foam elements from the fabric substrate after up to 50 washing
and drying cycles.
The Examiner relied on the following references in rejecting the
appealed subject matter:

1 In rendering this decision we have considered the Appellant’s briefs filed
November 3, 2008, and March 11, 2009. We have also considered the
Examiner’s position as set forth in the Examiner’s Answer dated January 16,
2009, and the office action mailed April 11, 2008.
Appeal 2009-011600
Application 11/072,683

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Wright, Jr. US 3,911,185 Oct. 7, 1975
Kamat US 4,415,622 Nov. 15, 1983
Lassiter US 4,734,306 Mar. 29, 1988
Sugahara et al. US 5,780,147 Jul. 14, 1998
Taylor US 6,743,325 B1 Jun. 1, 2004
SARNA XIRO GMBH, EC Safety Data Sheet 1 (2001).
Wikipedia.com, Spandex, Dec. 1, 2008,
http://en.wikipedia.org/wiki/Spandex.
Appellant seeks review of the following rejections of claims 1-3, 6,
24-27, 29, 30, 32-35, 39, 42-47, and 49-52:2
I. Claims 1-3, 6, 24, 26, 27, 29, 30, 32-35, 39, 42-47, and 49-52
stand rejected under 35 U.S.C. § 103(a) as unpatentable over the
combined teachings of Taylor, Kamat and Sarna Xiro.
II. Claim 25 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over the combined teachings of Taylor, Kamat, Sarna
Xiro further in view of Lassiter.
III. Claims 1-3, 6, 24, 26, 27, 29, 30, 32-35, 39, 42-47, and 49-52
stand rejected under 35 U.S.C. § 103(a) as unpatentable over the
combined teachings of Taylor, Kamat and Wright or Sugahara.
IV. Claim 25 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over the combined teachings of Taylor, Kamat and
Wright or Sugahara further in view of Lassiter

OPINION
The dispositive issue for the rejection on appeal is the following:

2 The Examiner has withdrawn all of the rejections that rely upon the
Appellant’s Disclosure. (Ans. 2)
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Application 11/072,683

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Did the Examiner err in determining that the cited prior art provides
motivation for forming a flexible material comprising a polyethylene plastic
adhesive having a melting point of at least about 250°F that is capable of
withstanding the washing conditions required by the subject matter of
independent claims 1, 24, 44, and 52?
After thorough review of the respective positions provided by
Appellant and the Examiner, we agree with Appellant that the Examiner has
identified insufficient evidence to establish that a person of ordinary skill in
the art would have a reasonable basis for selecting a polyethylene plastic
adhesive having a melting point of at least about 250°F for utilization in the
fabric material of Taylor.
The Examiner found that Taylor describes a flexible material
comprising a four way stretchable fabric comprising a hot melt adhesive.
The Examiner recognizes that Taylor does not describe the properties of the
hot melt adhesive. (Ans. 4). The Examiner relies upon Kamat for providing
a basis to include the hot melt adhesive required by the claimed invention.
(Id.). The Examiner asserts that Kamat describes a fabric that is bound
together utilizing an adhesive that meets the claimed invention because
Example 1 exemplifies an adhesive that is fused at 285°F and is capable of
being washed. (Id. at 4, 7; Kamat, cols. 5-6). Alternatively, the Examiner
asserts that if it is determined that Kamat fails to specifically disclose a hot
melt adhesive that has the properties required by the claimed invention, the
additionally cited references, Sarna Xiro, Wright and Sugahara, describe
Appeal 2009-011600
Application 11/072,683

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known adhesives that fall within the scope of the claimed invention.3 (Ans.
5, 8). The Examiner subsequently concludes that it would have been
obvious based on the teachings of these references to practice the invention
of Taylor utilizing an adhesive that falls within the scope of the independent
claims. (Id.).
Appellant argues, and we agree, that the Examiner has not provided
an adequate explanation for forming a flexible material utilizing a hot melt
adhesive that falls within the scope of the claimed invention absent reliance
upon Appellant’s own disclosure. (App Br. 18, Reply Br. 2). Appellant
correctly argues that the Taylor reference does not provide a “need” to select
a hot melt adhesive as required by the claimed invention. (Reply Br. 2).
That is, Taylor does not provide a description of the characteristics of the hot
melt adhesive or the washing conditions that the flexible fabric must be able
to withstand.
The Examiner’s responses to Appellant’s arguments and declarations
have been fully considered but are not persuasive. The Examiner has failed
to identify a deficiency in the adhesive specified by the Taylor reference that
would have led a person of ordinary skill in the art to select the adhesive
required by the subject matter of the independent claims. While it is
recognized that Kamat describes a fabric that is bound together utilizing an
adhesive there is no indication in Kamat that the adhesive would have been
suitable for use in a four way stretchable fabric as in Taylor and be able to
withstand the washing conditions of the claimed invention. The test for
obviousness is what the combined teachings of the references would have

3 The Examiner relies upon the Lassiter reference to address the subject
matter of pending claim 25. A discussion of this reference is unnecessary
for the disposition of the present case.
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Application 11/072,683

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suggested to one of ordinary skill in the art. In re Keller, 642 F.2d 413, 425
(CCPA 1981). The mere fact that a prior art reference could be modified in
the manner proposed by the Examiner does not make such modification
obvious unless the prior art suggests the desirability of doing so. In re
Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984).
“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)
(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
For the foregoing reasons we reverse the Examiner’s stated rejections.

DECISION
The 35 U.S.C. § 103 rejections of claims 1-3, 6, 24-27, 29, 30, 32-35,
39, 42-47, and 49-52 are reversed.

REVERSED

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