Ex Parte TaylorDownload PDFPatent Trial and Appeal BoardApr 21, 201411926472 (P.T.A.B. Apr. 21, 2014) Copy Citation 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. 11/926,472 10/29/2007 David Stirling Taylor 1347-91125-US 4551 22242 7590 04/22/2014 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 04/22/2014 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 REQUEST FOR REHEARING Pursuant to 37 C.F.R. § 41.52(a)(1), Appellant requests rehearing of our Decision of February 27, 2014 (“Decision”), wherein we sustained the Examiner’s rejection of claims 1 through 8 and 15 through 19 under 35 U.S.C. § 103(a) as unpatentable over the combined teachings of Taylor and Hurley. (See Request for Rehearing filed November 25, 2013 (“Req.”) at 1.) Appellant contends that: I. The Board erroneously stated "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 Appeal 2012-009957 Application 11/926,472 2 densities of the layers of the elements required by the claims on appeal. (See App. Br. 12-24 and Reply Br. 1-14)." See page 8 of the Board's Opinion. II. By erroneously concluding "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 as suggested by Taylor and Hurley would expand sideway and touch nearby blocks upon being compressed with a force." The Board erroneously imposed that "burden of demonstration" when it should not have existed at the outset of the Board's analysis. III. The Board erroneously ignored or dismissed as inherent in the reference, Appellant's functional limitations in the claims by suggesting they were inherent in the art and would naturally provide the claimed invention, even though the functional recitations in the claims are tied to structure which also is in the claims. [(Req. 1-2.) (Footnote omitted.)] We are not persuaded by Appellant’s contentions. First, we did not reversibly err in stating that “Appellant has not argued that Taylor and Hurley would not have suggested the [specific] thickness of the elements, [specific] distance of the elements from each other, and the [specific] relative compressibilities and densities of the layers of the elements required by the claims on appeal” at page 8 of the Decision. (Req. 1.) As is apparent from the record, there was no 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 [within the spacing intervals of 1 mm to 6mm recited in claims 1, 15, and 18], have a thickness of 12 mm [within the thickness of 5 mm to 20 mm recited in claims 1, 15, and 18], and can be formed with foam layers having different densities in the form of Appeal 2012-009957 Application 11/926,472 3 laminate. (Compare Ans. 5 and 6 with App. Br. 12-24; see also Taylor, col. 2, ll. 51-67.)” (Decision 6.) Nor is there any dispute in our finding that: 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, 11. 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. (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, 11.45-50.) [(Decision 7.) (Emphasis added.)] Rather than focusing on the specific thickness of the elements, specific distance of the elements from each other, and/or specific relative compressibilities and densities of the layers of the elements recited in the claims on appeal, Appellant focused on the subsequent functional limitation “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 Appeal 2012-009957 Application 11/926,472 4 the second layer in an impact area when laid on a planar surface and impacted with a force” recited in the claims on appeal as explained at page 8 of the Decision. (See also Req. 3 quoting or paraphrasing such functional limitation.) However, we explained that: [A]s 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. [(Decision 8.)] The suggestion by Taylor and Hurley referred to above is provided at the preceding paragraph at pages 7 and 8 of the Decision, which is provided below for convenience: 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 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. Thus, when the statement referred to by Appellant is not taken out of context, it highlights the fact that Appellant did not argue that the functional limitation in question requires a thickness of the elements, a distance of the elements from each other, and/or relative compressibilities and densities of Appeal 2012-009957 Application 11/926,472 5 the layers different from those suggested by Taylor and Hurley discussed supra. Even if our statement referred by Appellant contains error, Appellant still has not established that such error is reversible error (not harmless error). As indicated supra, we also determined that the collective teachings of Taylor and Hurley would have suggested the thickness of the elements, distance of the elements from each other and relative compressibilities and densities of the layers recited in the claims on appeal for the reasons set forth at pages 5 through 8 of the Decision. In particular, we stated that: [A]s 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. [(Decision 8.)] Appellant also questions the Examiner’s alternative position regarding the above functional limitation discussed at pages 8 and 9 of the Decision. (Req. 2, 8, and 9.) Specifically, Appellant disagrees with our determination at pages 8 and 9 of the Decision, which is provided below: 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, 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 Appeal 2012-009957 Application 11/926,472 6 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 has not shown any reversible error in the Examiner’s alternative position discussed at pages 8 and 9 of the Decision. In particular, Appellant has not shown that our reliance on In re Kubin and Ex parte Obiaya at pages 8 and 9 of the Decision was misplaced. Even were we to agree with Appellant that such alternative position contains reversible error, Appellant still has not identified any reversible error in the Decision. In other words, Appellant has not identified any reversible error in our determination that Taylor and Hurley would 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 defined by such functional limitation in question as indicated supra. Finally, notwithstanding Appellant’s argument to the contrary, we find no reversible error in placing the burden of showing unexpected results on Appellant. See In re Klosak and In re Heyna cited at page 9 of the Decision. This showing, according to In re De Blauwe cited at page 9 of the Decision, must be established by factual evidence, not by conclusory statements. The inventor’s conclusory statements in the Declaration of record cannot take the place of objective evidence. See, e.g., In re De Blauwe, 736 F.2d at 705. Indeed, the Declaration of record relied upon by Appellant acknowledges that “[t]his was a new and unexpected result to me, and in my opinion, would have been a new and unexpected result for any Appeal 2012-009957 Application 11/926,472 7 person of ordinary skill in making impact protective clothing at the time I developed the products which are described in this instant patent application.” (Taylor Decl. ¶ 4; see also Req. 7.) Even were we to assume that the burden was incorrectly placed on Appellant to show that the characteristics of the compressible foam blocks relied upon are unexpected by one of ordinary skill in the art, we do not find any reversible error in the Decision. On this record, Appellant has not shown that we reversibly erred in giving more weight to the teachings of Taylor and Hurley than the opinions in the Declaration of record. (Req. 4- 8.) See also Velander v. Garner cited at page 10 of the Decision for the proposition that “[i]n giving more weight to [the teachings of] prior publications than to subsequent conclusory statements by experts, the Board acted well within [its] discretion.” In particular, Appellant has not shown that the inventor’s opinion on unexpected results in the Declaration of record outweighs the advantage (“enhancing … the structures and properties of Taylor’s multilayered spaced apart foam elements or blocks…for the padding purposes”) suggested by Taylor and Hurley discussed at pages 7 and 8 of the Decision. Accordingly, based on the foregoing, we have granted Appellant’s request for rehearing to the extent that we have reconsidered our Decision, but we deny Appellants’ request to make any changes therein. DENIED tc Copy with citationCopy as parenthetical citation