Ex Parte Tolan et al

Board of Patent Appeals and Interferences

Jul 29, 2011

10688032 (B.P.A.I. Jul. 29, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte NANCY J. TOLAN, MARK A. CLARNER, WILLIAM B. S.
MC DOUGALL, NORMAND A. COTE, HOWARD A. KINGSFORD,
PAUL R. ERICKSON and CLINTON DOWD
____________

Appeal 2009-012137
Application 10/688,032
Technology Center 3600
____________

Before JOHN C. KERINS, KEN B. BARRETT and
MICHAEL C. ASTORINO, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-012137
Application 10/688,032

2
The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s 1
decision finally rejecting claims 1-3, 5-20, 22-37, 39-53 and 55-57.1 More 2
specifically the Examiner rejects: 3
claims 1-3, 7-20, 24-37 and 39-53 under 35 U.S.C. § 103(a) as 4
unpatentable over Kingsford (US 6,851,161 B2, issued Feb. 8, 2005), 5
Provost (US 4,984,339, issued Jan. 15, 1991) and Kennedy (US 6
6,248,419 B1, issued Jun. 19, 2001)2; and 7
claims 5, 6, 22, 23, 39, 40 and 55-57 under § 103(a) as 8
unpatentable over Kingsford, Provost and Kennedy. 9
Claims 4, 21, 38 and 54 have been cancelled. Claims 1, 19 and 37 are 10
independent claims. We have jurisdiction over the appeal under 35 U.S.C. 11

1 In the Reply Brief at page 2 the Status of the Claims section identifies
claim 54 as both a pending and a cancelled claim. Since claim 54 is not
identified in the Claims Appendix and was cancelled in the Appellants’
Amendment in Reply to Office Action of January 10, 2006, filed May 15,
2006, we treat claim 54 as a cancelled claim.
2 The Examiner’s Answer at page 3 includes Kennedy in the preamble of
the rejection of claims 1-3, 7-20, 24-37 and 39-53. This is a typographical
error. The body of the rejection of claims 1-3, 7-20, 24-37 and 39-53 lacks a
reference to Kennedy as evidence. Ans. 3-6. The Examiner clearly notes
that claims 1-3, 7-20, 24-37 and 39-53 are rejected under § 103(a) as being
unpatentable over Kingsford and Provost, not Kennedy. Ans. 8.
Additionally, the preamble of the subsequent rejection states that dependent
“[c]laims 5, 6, 22, 23, 39, 40 and 55-57 are rejected under § 103(a) as being
unpatentable over Kingsford et al. in view of Provost et al. as applied to
claim 1, 19 and 37 above, and further in view of Kennedy et al.” Ans. 7.
The phrase “further in view of Kennedy” suggests that Kennedy was not
used as evidence in the former rejection. The Examiner’s Answer at page 10
also notes that Kennedy is used to reject claims 5, 6, 22, 23, 39, 40 and 55-
57 but not the former set of claims. We treat the reference to Kennedy
regarding the rejection of claims 1-3, 7-20, 24-37 and 39-53 as a
typographical error and as such we exclude Kennedy as evidence for those
claims.
Appeal 2009-012137
Application 10/688,032

3
§ 6(b). The Appellants’ representative presented oral argument, via 1
videoconference, in this appeal on July 13, 2011.3 2
We REVERSE. 3
Claim 1 is illustrative of the claims on appeal: 4
1. A releasable touch fastener comprising 5
a loop component having a sheet-form loop 6
base and an array of female fastener elements 7
extending from the loop base; and 8
a hook component having a sheet-form hook 9
base and an array of male fastener elements 10
extending from the base and configured to 11
releasably engage the female fastener elements of 12
the loop component; 13
wherein the touch fastener has an Engaged 14
Thickness of less than about 0.11 inch, and 15
wherein the hook and loop components are 16
so configured to provide a Final Peel Resistance of 17
at least 0.3 pound per inch of closure width.4 18
Claim 19 recites a releasable touch fastener including “wherein the 19
touch fastener has an Engaged Thickness of less than about 0.11 inch, and 20

3 We note that the transcript of the oral argument is incomplete. The
untranscribed material does not affect the outcome of this decision.
4 The Specification at page 23 provides that “‘Engaged Thickness’ is a
measurement of the overall thickness of the engaged closure, prepared
according to paragraphs 6.1 through 8.23 of ASTM D5170-98, and then
engaged according to paragraph 8.24 of ASTM D5170-98, except that the
roller is pushed across the closure in only one direction, for one pass,
constituting one-half of a cycle. Engaged Thickness is then measured with
the closure in an unloaded state, such as by optical measurement viewing the
closure from its longer edge. Thus, the thickness measurement is made
following initial engagement under static load of one-half pound per square
inch for two seconds and one rolling load of 11 pounds per inch of closure
width.”
Appeal 2009-012137
Application 10/688,032

4
wherein the male and female fastener elements are so configured to provide 1
an Initial Peel Resistance of at least 0.5 pounds per inch of closure width.” 2
Claim 37 recites a releasable touch fastener including “wherein the 3
touch fastener has an Engaged Thickness of less than about 0.11 inch, and 4
wherein the male and female fastener elements are so configured to provide 5
an Initial Shear Resistance of at least 10 pounds per square inch.” 6
Kingsford describes “reclosable closure 10 consists of two 7
longitudinally continuous strips 12 and 14 which, when facially engaged, are 8
held together by hook and loop fastening principles. The inner side of strip 9
12 has two fields of hook-engageable loops 16, separated by a female seal 10
profile portion 20.” Kingsford, col. 3, ll. 41-47. Kingsford also describes, 11
“[t]he width of the closure strips in many applications is 0.5 inch or more, 12
with an overall engaged thickness of less than about 0.04 inch.” Kingsford, 13
col. 3, ll. 63-65 (italics added). Kingsford is silent concerning the fastening 14
strength specific to Final Peel Resistance, an Initial Peel Resistance or Initial 15
Shear Resistance of the reclosable closure 10. 16
Provost discloses a hook and loop fastener where the hook height is 17
0.050 inches ± 0.002 inches. Provost, Abstract and col. 5, l. 8. Provost also 18
discloses fastening strength properties of the hook portion in Table III, 19
which includes peel and shear resistance. Provost, col. 8, ll. 5-28. However 20
Table III does not specify whether the peel resistance refers to initial or final 21
peel resistance or whether the shear resistance refers to initial or final shear 22
resistance. 23
The Appellants admit all of the recited claimed elements were 24
individually known in the art however Appellants argue that the combination 25
of elements was not obvious. Reply Br. 3. The Appellants contend the 26
Appeal 2009-012137
Application 10/688,032

5
combined teachings of Kingsford and Provost do not result in the claimed 1
fastening strength, which includes both the claimed engaged thickness and 2
one of the claimed Final Peel Resistance, Initial Peel Resistance or Initial 3
Shear Resistance as recited in claims 1, 19 and 37 respectively. See App. 4
Br. 5. In other words, the fastening strength of the engagement of specific 5
hooks to specific loops is largely dependent on the structural features of the 6
specific hooks and specific loops. 7
Regarding claim 1, the Examiner finds Provost teaches a Final Peel 8
Resistance of at least 0.3 pounds per inch of closure width. Ans. 4. The 9
Examiner then concludes it would have been obvious to have a releasable 10
touch fastener providing a final peel resistance at least 0.3 pounds per inch 11
of closure width as taught by Provost in the fastener disclosed by Kingsford, 12
since it is well known in the art and helps retain tension necessary to create a 13
better seal for closure. Id. The Examiner supports this conclusion with a 14
finding that Provost discloses the required engaged thickness of less than 15
about 0.11 inches because “there is 0.060 inches left to meet this limitation 16
and Figure 24, although not to scale, illustrates that the height of the loop 17
fastener is meant to be smaller than the height of the hook fastener and 18
therefore the limitation can be met.” Ans. 9. 19
The Appellants point out that Provost’s drawings, specifically Figure 20
24, are not scaled. Reply Br. 4. As such, the Appellants correctly contend 21
that the Examiner is relying on improper findings to determine the thickness 22
of Provost’s loops; since the thickness of Provost’s loops cannot be 23
determined, Provost’s teachings specific to peel resistance and shear 24
resistance cannot be relied upon for the purposes of combining fastening 25
properties of Provost with those of Kingsford. See Reply Br. 3-4. 26
Appeal 2009-012137
Application 10/688,032

6
For the reasons provided above we do not sustain the rejection of 1
independent claims 1-3, 7-20, 24-37 and 39-53 under 35 U.S.C. § 103(a) as 2
unpatentable over Kingsford and Provost. 3
Turning to the rejection of claims 5, 6, 22, 23, 39, 40 and 55-57 under 4
§ 103(a), the Examiner finds that Kennedy discloses a fabric backing 25 at 5
the side of the hook base for adding strength to the base and providing a 6
substantial modification of the base of the hook component. Ans 7; 7
Kennedy, col. 6, ll. 3-8. The Examiner does not point out how the teachings 8
of Kennedy might remedy the deficiency of the combined teachings of 9
Kingsford and Provost as pointed out in connection with the rejections of 10
independent claims 1, 19 and 37. Since the Examiner’s conclusion of 11
obviousness lacks rational underpinning, we do not sustain the Examiner’s 12
final decision rejecting claims 5, 6, 22, 23, 39, 40 and 55-57 under § 103(a) 13
as being unpatentable over Kingsford, Provost and Kennedy. 14
15
DECISION 16
We REVERSE the Examiner’s decision rejecting claims 1-3, 5-20, 17
22-37, 39-53 and 55-57. 18
19
REVERSED 20
21
Klh 22