Ex Parte Taylor

Patent Trial and Appeal Board

Feb 27, 2014

11926472 (P.T.A.B. Feb. 27, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/926,472 10/29/2007 David Stirling Taylor 1347-91125-US 4551
22242 7590 02/27/2014
FITCH EVEN TABIN & FLANNERY, LLP
120 SOUTH LASALLE STREET
SUITE 1600
CHICAGO, IL 60603-3406
EXAMINER
CHOI, PETER Y
ART UNIT PAPER NUMBER
1786
MAIL DATE DELIVERY MODE
02/27/2014 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 DAVID STIRLING TAYLOR
____________

Appeal 2012-009957
Application 11/926,472
Technology Center 1700
____________

Before CHUNG K. PAK, CHARLES F. WARREN, and
DONNA M. PRAISS, Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal1 under 35 U.S.C. § 134(a) from the Examiner’s
decision2 finally rejecting claims 1 through 8 and 15 through 19. A hearing was
held on January 16, 2014. We have jurisdiction under 35 U.S.C. § 6(b).
STATEMENT OF THE CASE
The subject matter on appeal is directed to a protective material and a
protective wear (garment) employing such protective material. (See Spec. 1,
¶¶ [0001] and [0002].) The protective material is identified as including a

1 Appeal Brief filed March 12, 2012 (“Br.”) at 3.
2 Final Office Action mailed August 5, 2011.
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Application 11/926,472

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protective padding used for protecting “the human body during sports, or other
physical activity which exposes the body to impact injuries.” (See id. at 1,
¶ [0001].) Figure 1 illustrating such protective padding is reproduced below:

The protective padding is characterized as having an array or a plurality of resilient
multilayered elements made of resilient foams, such as resilient closed-cell
polyethylene foams forming layers having different densities and compressibilities,
bonded to a stretchable or elastic fabric substrate (6). (See Spec. 2-5 and 9-10,
¶¶ [0005] to [0010] and [0017].) “Suitable fabrics include knitted nylon and
polyester fabrics and more particularly those materials comprising elastane[,]”
which is readily stretched “50% to 200% without tearing when tensioned under
normal wearing conditions.” (See id. at 5 and 10, ¶¶ [0010] and [0018].) Such
fabrics are available from Intera Company, Limited or Darlington Company. (See
id. at 10, ¶ [0018].)
The resilient multilayered elements may be of different sizes and shapes,
including hexagonal blocks (1) in the form of laminate. (See id. at 5 and 9,
¶¶ [0009] and [0017].) The first layer (e.g., layer 20) of each block (1) has a first
compressibility (compressive strength) of from about 110 kPa to about 210 kPa at
deflection of 50% and a first density of from about 30 to about 50 kg/m3. (See id.
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at 3 and 9, ¶¶ [0006] and [0017].) The second layer (e.g., layer 22) of each block
(1) is “harder than the first layer and has a second compressibility (compressive
strength) of from about 400 kPa to about 700 kPa at deflection of 50% . . . and a
second density of from about 90 to about 200 kg/m3[.]” (See id. at 3 and 9, ¶¶
[0006] and [0017].) The thickness of the block should be between about 5 to 25
mm. (See id. at 4, ¶ [0006].) The arrangement of the array of multilayered
elements or blocks (1) is such that the distance or gap between the elements or
blocks is from about 1 mm to 6 mm. (See id.) When at least two of the elements
or blocks are impacted with a force which compresses them, at least two sides of
the elements or blocks will touch each other and coalesce due to their above-
mentioned thicknesses, compressibility and density characteristics, and spaced
arrangement. (See id. at 5, ¶ [0009].)
Details of the appealed subject matter are recited in claims 1, 15, and 18
reproduced below from the Claims Appendix of the Appeal Brief:
1. An article of protective material comprising:
an array of a plurality of multilayered resilient elements having
a planar top and bottom surface, the plurality of elements 5 mm to 20
mm thick and spaced at intervals of 1 mm to 6 mm from each other,
the elements having a first layer having a compressibility of at least
110 kPa at 50% deflection and a density of at least 30 kg/m3 and a
second layer having a compressibility of at least 400 kPa at 50%
deflection and a density of at least 90 kg/m3, the first and second
layers having a different density and compressibility, the first layer
having a density which is less than the density of the second layer, the
second layer having a compressibility less than the first layer, the
thickness of the elements, the distance of the elements from each
other, [and] the relative compressibilities and densities of the layers
making at least two of the elements effective to coalesce with each
other such that the elements will have a continuous outer surface of
the second layer in an impact area when laid on a planar surface and
impacted with a force; and
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a first resilient fabric substrate having the plurality of resilient
elements affixed thereon in spaced apart relationship to one another,
the resilient fabric having a stretchability of at least 50% without
tearing, the first fabric substrate with the plurality of resilient elements
providing the article of protective material, which protective material
is configured for incorporation into a garment such that the second
layers face away from a wearer of the garment so that the second
layers receive impacts and the elements to coalesce upon impact.
15. A protective garment comprising:
a first resilient stretchable fabric to be worn toward the body of a user;
an array of multilayered resilient foam elements having a planar top
and bottom surface which are polygonal in cross section, the elements 5 mm
to 20 mm thick and spaced at intervals of 1 mm to 6 mm from each other,
the elements having a first foam layer having a compressibility in the range
of about 110 to about 210 kPa at 50% deflection and a density of about 30 to
about 50 kg/m3 and a second foam layer having a compressibility of about
400 to about 700 kPa at 50% deflection and a density of about 90 to about
200 kg/m3, the first foam layer adapted to be worn closer to a body of a user
than the second foam layer, the thickness of the elements, the distance of the
elements from each other, [and] the relative compressibilities and densities
of the foam layers making the elements effective to permit at least two of the
elements to coalesce with each other such that the elements will have a
continuous outer surface of the second layer in an impact area when laid on
a planar surface and impacted with a force which makes at least two of the
elements compress at least 10%; and
a second resilient stretchable fabric bonded to the second foam layer
to be worn away from the body of the user, the second resilient stretchable
fabric having a stretchability of at least 50% without tearing.
18. An article of protective clothing which includes protective
material, the protective material comprising:
a plurality of multilayered resilient foam elements which are
polygonal in cross section sandwiched between a first and second layer of
stretchable fabric, the multilayered elements comprising a compressible
foam layer configured to face toward and adjacent to a wearer of the
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clothing and a less compressible layer which faces away from the wearer of
the clothing, the elements having a planar top and bottom surface, the
elements 5 mm to 20 mm thick and spaced at intervals of 1 mm to 6 mm
from each other, the elements having a compressible layer having a
compressibility of about 110 kPa to about 210 kPa at 50% deflection and a
density of about 30 kg/m3to about 50 kg/m3 and a less compressible layer
having a compressibility of about 400 kPa to about 700 kPa at 50%
deflection and a density of about 90 kg/m3 to about 200 kg/m3, the thickness
of the elements, the distance of the elements from each other, [and] the
relative compressibilities and densities of the layers making the elements
effective to coalesce with each other such that the elements will have a
continuous outer surface of the less compressible layer in an impact area
when laid on a planar surface and impacted with a force which makes at
least two of the elements compress at least 10%, the plurality of resilient
elements affixed to at least one of the fabric substrates in spaced apart
relationship to one another, the resilient fabric layers being four way stretch
fabric having a stretchability of at least 50% without tearing, and adjacent
resiliently compressible elements in spaced apart relation from each other
with the fabric layers not bonded to each other in spaces between the
elements.
(See App. Br. 25-28 (emphasis added).)
Appellant seeks review of the Examiner’s decision rejecting claims 1
through 8 and 15-19 under 35 U.S.C. §103(a) as unpatentable over Taylor3 in view
of Hurley.4 (See App. Br. 12.)

3 U.S. Patent 6,743,325 B1 issued to Taylor on June 1, 2004 (“Taylor”).
4 U.S. Patent 6,054,005 issued to Hurley et al. on April 25, 2000 (“Hurley”).
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RELEVANT FACTS, PRINCIPLES OF LAW, ISSUES,
ANALYSES, AND CONCLUSIONS5
We have fully considered the arguments advanced by Appellant, but are not
persuaded of reversible error in the Examiner’s obviousness determination.
Accordingly, we sustain the Examiner’s rejection based on the findings of fact,
conclusions of law, and rebuttals to arguments expressed in the Answer. We add
the following discussion for emphasis.
The Examiner found, and Appellant does not dispute, that Taylor teaches a
protective garment that employs a protective material (multilayered foam
padding)6 comprising an array of a plurality of resilient elements in the form of
blocks, such as hexagonal blocks, bonded to resilient fabric substrates having the
properties recited in the claims on appeal (those knitted nylon or polyester fabrics
containing elastane sandwiching the elements or blocks). (Compare Ans. 5 and 10
with App. Br. 12-24; see also Taylor, col. 1, ll. 16-28, col. 2, ll. 5-36 and 57-62,
and col. 3, ll. 10-32.) The Examiner also found, and Appellant does not dispute,
that Taylor teaches that the plurality of resilient elements or blocks are defined by
a planar top and bottom surface, are spaced at intervals of 2 mm, have a thickness
of 12 mm, and can be formed with foam layers having different densities in the
form of laminate. (Compare Ans. 5 and 6 with App. Br. 12-24; see also Taylor,
col. 2, ll. 51-67.)

5 For purposes of this appeal, we limit our discussion to those claims specifically
and substantively argued by Appellant in the Appeal Brief consistent with the
requirements of 37 C.F.R. § 41.37(c)(1)(vii).

6 It is interesting to note that Taylor’s padding material, like Hurley’s padding
material, is also useful for packaging. (Compare Taylor, col. 3, ll. 53-54 with
Hurley, abstract and col. 1, ll. 24-29.)
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As acknowledged by the Examiner, Taylor does not mention the specific
densities of the layers of the multilayered elements or blocks (and their
corresponding compressibilities) as required by the claims on appeal.
Nevertheless, the Examiner found that Hurley teaches the advantage of employing
such densities and compressibilities for the first and second layers of a
multilayered foam structure employing the same or similar types of polymers
discussed in Taylor suitable for athletic gear (e.g., padding) or protective wear
(apparel). (Ans. 6-7 and 16-20; see also Hurley, abstract, and col. 9, ll. 20-27.)
Appellant does not dispute the Examiner’s finding that the densities and
compressibilities for the first and second (core) layers of the multilayered foam
structure taught by Hurley encompass those densities and compressibilities of the
first and second layers of the multilayered elements or blocks recited in the claims
on appeal.7 (Compare Ans. 6-7 with App. Br. 12-24 and Reply Br. 1-14.)
Although the multilayered foam structure taught by Hurley is not spaced apart as
argued by Appellant, Taylor teaches the advantage of using a multilayered foam
structure in the form of spaced apart multilayered foam elements or blocks.
(Compare Ans. 6-7 with App. Br. 18-22 and Reply Br. 2-13; see also Taylor, col.
2, ll. 45-50.)
Given the advantages of utilizing such densities and compressibilities of the
first and core (second) layers of a multilayered foam structure and such spaced
apart arrangement for the multilayered foam structure for the padding purpose, we
concur with the Examiner that one of ordinary skill in the art would have been led

7 We note that Hurley also implies that these multilayered foam structures, which
include a flexible or stiff core (second layer) of high density material and one or
more layers of relatively low density polymer foam covering the core, result in less
damage to the thing or person protected upon being subjected to an impact. (See
col. 1, ll. 54-62.)
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to employ the densities and compressibilities for the first and second layers recited
in the claims on appeal suggested by Hurley as the different densities and
compressibilities of the first and second layers of the multilayered spaced apart
foam elements or blocks of Taylor’s protective padding material suitable for
protective wear, with a reasonable expectation of successfully enhancing or
rendering the structures and properties of Taylor’s multilayered spaced apart foam
elements or blocks suitable for the padding purposes.
Appellant contends that the collective teachings of Taylor and Hurley would
not have suggested a functional limitation relating to coalescing at least two
elements or blocks with each other to form a continuous outer surface of the
second layer upon the elements or blocks being impacted with a force as recited in
claims 1, 15, and 18. (App. Br. 14-16.) However, as is apparent from claims 1,
15, and 18, such functional limitation is used to define the thickness of the
elements, the distance of the elements from each other, and the relative
compressibilities and densities of the layers of the elements, which are suggested
by Taylor and Hurley as indicated supra and in the Answer. On this record,
Appellant has not argued that Taylor and Hurley would not have suggested the
thickness of the elements, distance of the elements from each other, and relative
compressibilities and densities of the layers of the elements required by the claims
on appeal. (See App. Br. 12-24 and Reply Br. 1-14.)
In any event, as also found by the Examiner at pages 7 and 20 of the
Answer, Taylor and Hurley, by teaching and/or suggesting the thickness of the
elements, the distance of the elements from each other, and the relative
compressibilities and densities of the layers of the elements recited in the claims on
appeal and disclosed in Appellant’s Specification, would have necessarily
suggested their attendant or inherent functional properties. See also In re Kubin,
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561 F.3d 1351, 1357 (Fed. Cir. 2009) (“Even if no prior art of record explicitly
discusses the [limitation], [applicants’] application itself instructs that [the
limitation] is not an additional requirement imposed by the claims on the [claimed
invention], but rather a property necessarily present in [the claimed invention]”);
Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985) (“The fact that appellant has
recognized another advantage which would flow naturally from following the
suggestion of the prior art cannot be the basis for patentability when the differences
would otherwise be obvious.”).
Appellant also relies upon the Rule 132 Declaration of record executed by
Taylor (the inventor named in the above-identified application) on March 23, 2011
(“Taylor Declaration”) to show that the claimed subject matter provides “new and
unexpected” results. (App. Br. 15-20.) “It is well settled that unexpected results
must be established by factual evidence.” In re De Blauwe, 736 F.2d 699, 705
(Fed. Cir. 1984). However, as found by the Examiner at pages 22 through 24 of
the Answer, Appellant has not carried the burden of showing that the claimed
subject matter imparts new and unexpected results. In re Klosak, 455 F.2d 1077,
1080 (CCPA 1972) (explaining that the burden of showing unexpected results rests
with a party who asserts them); In re Heyna, 360 F.2d 222, 228 (CCPA 1966) (“It
was incumbent upon appellants to submit clear and convincing evidence to support
their allegation of unexpected . . . property.”); see also McClain v. Ortmayer, 141
U.S. 419, 429 (1891) (conclusive evidence needed to establish new function). On
this record, Appellant has not demonstrated that one of ordinary skill in the art
would not have reasonably expected that the spaced apart compressible foam
blocks suggested by Taylor and Hurley would expand sideway and touch nearby
blocks upon being compressed with a force.
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Appellant also relies upon paragraph 7 of the Taylor Declaration to show
that one of ordinary skill in the art would not have been led to employ the densities
and compressibilities for the first and second foam layers suggested by Hurley for
the first and second foam layers of the multilayered spaced apart foam elements or
blocks of the protective padding material taught by Taylor. (See e.g., App. Br. 23.)
However, the Examiner correctly found that the Taylor Declaration is not reliable
in that it fails take into account all of the teachings of Taylor and Hurley discussed
supra and the Answer.
Accordingly, having carefully and fully considered all of the evidence of
record relied upon by the Examiner and Appellant, we determine that the
preponderance of evidence weighs most heavily in favor of obviousness of the
claimed subject matter within the meaning of 35 U.S.C. § 103(a). Velander v.
Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (“In giving more weight to prior
publications than to subsequent conclusory statements by experts, the Board acted
well within [its] discretion.”).
In sum, for the reasons expressed in the Answer and above, we affirm the
Examiner’s decision to reject claims 1 through 8 and 15-19 under 35 U.S.C.
§ 103(a).
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(1).

AFFIRMED
bar