Ex Parte Tran

Board of Patent Appeals and Interferences

Oct 21, 2010

11064262 (B.P.A.I. Oct. 21, 2010)

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.
11/064,262 02/23/2005 Bao Tran AFL-005 9645
31688 7590 10/21/2010
TRAN & ASSOCIATES
P.O. Box 68
Saratoga, CA 95071-0068
EXAMINER
KHAN, AMINA S
ART UNIT PAPER NUMBER
1764
MAIL DATE DELIVERY MODE
10/21/2010 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 BAO TRAN
________________

Appeal 2009-015050
Application 11/064,262
Technology Center 1700
________________

Before TERRY J. OWENS, JEFFREY T. SMITH, and
KAREN M. HASTINGS, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-015050
Application 11/064,262

2
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-20, which are all of the pending claims. We have
jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellant claims a wash durable article and a method for making
it. Claims 1 and 17 are illustrative:
1. A wash durable material, comprising:
a substrate having strands with void spaces inside the
strands; and
nano-particles inside the strands filling at least a part of
the void spaces with one or more projections from the void
spaces through the strands on the substrate.
17. A method for fabricating a wash durable material,
comprising:
forming a substrate having strands with void spaces in
the strands;
filling at least a part of the void spaces with nano-
particles; and
forming projections from the void spaces through the
substrate.
The References
Soane 6,607,994 B2 Aug. 19, 2003
Kaylor 2004/0078219 A1 Apr. 22, 2004
The Rejections
The claims stand rejected as follows: claims 1-5 and 17-20 under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
Appeal 2009-015050
Application 11/064,262

3
description requirement; claims 1-3 and 8-19 under 35 U.S.C. § 103 over
Soane; and claims 1-7 and 10-20 under 35 U.S.C. § 103 over Kaylor.
OPINION
We reverse the rejection under 35 U.S.C. § 112, first paragraph, and
the rejection under 35 U.S.C. § 103 over Kaylor, and affirm the rejection
under 35 U.S.C. § 103 over Soane.
Rejection under 35 U.S.C. § 112, first paragraph
Issue
Has the Appellant indicated reversible error in the Examiner’s
determination that the Appellant’s Specification fails to provide written
descriptive support for “through the strands” and “inside the strands” in
claim 1 and “through the substrate” in claim 17?2
Analysis
For an applicant to comply with the 35 U.S.C. § 112, first paragraph,
written description requirement, the applicant’s specification must “convey
with reasonable clarity to those skilled in the art that, as of the filing date
sought, he or she was in possession of the invention.” Carnegie Mellon U.
v. Hoffmann-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008), (quoting
Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991)).
Regarding the phrases “through the strands” in claim 1 and “through
the substrate” in claim 17, the Examiner argues that “[t]he terminology
‘through’ by definition requires that a nanoparticles [sic] travels in one part

2 The Examiner states that claim 17 recites “through the strands” (Ans. 3),
but the phrase in that claim actually is “through the substrate”. The
Appellant states that “[c]laims 1 and 17 recite ‘through the strand’” (Br. 3),
but that phrase is not in either claim.
Appeal 2009-015050
Application 11/064,262

4
of the fiber and out the other, this movement ‘through’ is not illustrated by
Figure 1 and is therefore not supported by the specification” (Ans. 7).
“[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.” In re Translogic
Tech. Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007), (quoting In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000)). The Appellant argues, in reliance upon
Figure 1, that “one skilled in the art upon reading the specification would
have understood that ‘through’ means that the particles embedded in the
strand would project ‘through’ the strand to provide the property of
anchoring the nano particles in the strand while providing the projection that
provides the dirt repelling properties, among others” (Reply Br. 2).
The Appellant’s Specification states that “[t]he nanosize particles
form projections on the outside or sheath of the smaller fibers 10 and the
single fiber. The available void spaces in the fibers and between strands of
smaller fibers are filled with nanoporous material” (Spec. 6:27-29). The
projections are shown in the Appellant’s Figure 1. Thus, the Appellant’s
Specification indicates that the Appellant uses the term “through” according
to its following ordinary meaning: “used as a function word to indicate
passage from one end or boundary to another ”3, and that the Appellant had possession of nanoparticle
projections “through the strands” and “through the substrate” (where the
substrate is formed from strands with void spaces in the strands) according
to that meaning of “through”.
With respect to claim 1 the Examiner argues that the Appellant’s
Specification does not provide written descriptive support for “inside the

3 WEBSTER’S NEW COLLEGIATE DICTIONARY 2117 (G. & C. Merriam 1973).
Appeal 2009-015050
Application 11/064,262

5
strands” (Ans. 4). The Examiner argues that “[t]he term ‘inside’ by
definition requires that a nanoparticles [sic] is completely contained in the
inner part of the fiber and does not project out from the fiber” (Ans. 7).
The Appellant argues that “Webster[’s] dictionary defines ‘inside’ as
an interior or internal part or place and does not require that it is completely
inside” (Reply Br. 2).
The relevant dictionary meaning of “inside” is “in or into the
interior”.4 “[I]nto the interior” does not require complete containment. The
Appellant’s Figure 1 shows void spaces extending into the interior of the
strands. Hence, the Appellant’s Specification shows that the Appellant was
in possession of void spaces “inside the strands”.
Conclusion of Law
The Appellant has indicated reversible error in the Examiner’s
determination that the Appellant’s Specification fails to provide written
descriptive support for “through the strands” and “inside the strands” in
claim 1 and “through the substrate” in claim 17.
Rejection over Soane
Issue
Has the Appellant indicated reversible error in the Examiner’s
determination that Soane would have rendered prima facie obvious, to one
of ordinary skill in the art, 1) a substrate having strands with void spaces in
the strands, or 2) nanoparticles filling at least a part of the void spaces and
projecting from the void spaces through the substrate?

4 WEBSTER’S , supra note 3, at 597.
Appeal 2009-015050
Application 11/064,262

6
Findings of Fact
Soane discloses textiles or other webs treated with textile-reactive
nanoparticles which are nanoparticles contained within a polymeric
encapsulator having functional groups that form a strong chemical bond with
the textile or other web fibers to improve retention of the nanoparticles
within the textiles or other webs (abstract; col. 1, l. 51 – col. 2, l. 6; col. 2,
ll. 49-52; col. 3, ll. 34-39). “The size of the textile-reactive nanoparticles
will primarily be chosen for the best penetration into the particular fiber to
be treated” (col. 6, ll. 65-67).5
Analysis
The Appellant argues that “Soane fails to show a substrate having
strands with void spaces in the strands and between the strands” (Br. 4).
The Appellant’s claim 1 requires “void spaces inside the strands” and
claim 17 requires “void spaces in the strands”. The Appellant’s
Specification states that the strands can be porous or nonporous and that
void volumes can exist between the strands (Spec. 6:2-8). Soane’s webs,
which include “fibers and/or filaments; woven, knitted, stitch-bonded, and
nonwoven fabrics derived from natural, man made and/or synthetic fibers
and blends of such fibers; cellulose-based papers; and the like” (col. 10,
ll. 15-19), are made of the same types of materials as the Appellant’s
substrate (“The substrate includes fibers, woven and non-woven fabrics
derived from natural or synthetic fibers or blends of such fibers, as well as
cellulose-based papers, and the like” (Spec. 6:15-16)). Thus, it appears that

5 Soane refers to “fibers, filaments or structural components or elements” of
the textile or other web as “fibers” (col. 2, ll. 2-4).
Appeal 2009-015050
Application 11/064,262

7
like the Appellant’s substrate, Soane’s substrate has strands with void spaces
inside or in the strands.
The Appellant argues that “Soane fails to show nano-particles filling
at least a part of the void spaces and forming one or more projections on the
substrate” (Br. 4).
Soane’s disclosure that the nanoparticles penetrate into the fiber
(col. 6, ll. 65-67) indicates that the nanoparticles fill at least a part of the
fiber’s void spaces. Also, because Soane’s nanoparticles are applied to the
webs “by methods known in the art such as soaking, spraying, dipping,
fluid-flow, padding, and the like” (col. 10, ll. 55-56), which are the same
methods used by the Appellant (“The nano-particles can be applied to the
substrate containing the strands 10 by soaking, spin casting, dipping, fluid-
flow, padding, or spraying a solution containing the nano-particles on the
substrate” (Spec. 7:22-24)), it appears that like the Appellant’s
nanoparticles, Soane’s nanoparticles fill at least part of the void spaces in
strands and form one or more projections from the void spaces through the
strands. “[W]hen the PTO shows sound basis for believing that the products
of the applicant and the prior art are the same, the applicant has the burden
of showing that they are not.” In re Spada, 911 F.2d 705, 708 (Fed. Cir.
1990). The Appellant has not carried that burden.
Conclusion of Law
The Appellant has not indicated reversible error in the Examiner’s
determination that Soane would have rendered prima facie obvious, to one
of ordinary skill in the art, 1) a substrate having strands with void spaces in
the strands, and 2) nanoparticles filling at least a part of the void spaces and
projecting from the void spaces through the substrate.
Appeal 2009-015050
Application 11/064,262

8
Rejection over Kaylor
Issue
Has the Appellant indicated reversible error in the Examiner’s
determination that Kaylor would have rendered prima facie obvious, to one
of ordinary skill in the art, nanoparticles filling at least a part of the void
spaces in a substrate’s strands and projecting from the void spaces through
the strands?
Findings of Fact
Kaylor discloses “an integrated health care system employing
biosensors capable of generating signals relating to the health of the user that
can be processed and transmitted as needed to various destinations, wherein
the user or representative of the user maintains a degree of control over the
data transmitted for protection of the user’s privacy or other considerations”
(¶ 0005). A biosensor can be placed inside or on an absorbent article such as
a diaper (¶¶ 0036, 0117, 0240) and “can be incorporated into an article of
clothing or disposable article” (¶ 0039). Kaylor discloses the use of
nanosensors to detect bacteria or tumor cells (¶ 0216) and the use of
metallized nanospheres for detecting biological analytes (¶ 0221).
Analysis
The Appellant argues that “Kaylor fails to show each of the recited a
substrate having strands with void spaces in the strands and between the
strands; and nano-particles filling at least a part of the void spaces and
forming one or more projections on the substrate” (Br. 8).
The Examiner argues that “Kaylor et al. teach nanosensors, such as
metallized nanospheres, attached to fabrics for monitoring patients and
Appeal 2009-015050
Application 11/064,262

9
providing data to health care providers (paragraphs 0216, 0221, 0033, 0034,
0036, 0039, 0028, 0058 and 0029)” (Ans. 5).
Kaylor discloses that a biosensor can be incorporated into an article of
clothing or a disposable article such as a diaper (¶¶ 0036, 0039, 0117, 0240).
The Examiner, however, has not pointed out where Kaylor discloses that the
biosensor incorporated into an article of clothing or a fabric can comprise
nanoparticles, let alone nanoparticles filling void spaces in strands and
projecting from them. The Examiner assumes that Kaylor’s fabrics are
treated with nanoparticles and argues that such treated fabrics inherently
would have the same properties as those of the Appellant (Ans. 6, 10). The
Examiner, however, has not established that Kaylor discloses, or would have
rendered prima facie obvious, to one of ordinary skill in the art, treating
fabrics with nanoparticles, let alone treating the fabrics in such a way that
the nanoparticles fill void spaces within strands and project from the void
spaces through the strands.
Conclusion of Law
The Appellant has indicated reversible error in the Examiner’s
determination that Kaylor would have rendered prima facie obvious, to one
of ordinary skill in the art, nanoparticles filling at least a part of the void
spaces in a substrate’s strands and projecting from the void spaces through
the strands.
DECISION/ORDER
The rejections of claims 1-5 and 17-20 under 35 U.S.C. § 112, first
paragraph, written description requirement, and claims 1-7 and 10-20 under
35 U.S.C. § 103 over Kaylor are reversed. The rejection of claims 1-3
and 8-19 under 35 U.S.C. § 103 over Soane is affirmed.
Appeal 2009-015050
Application 11/064,262

10
It is ordered that the Examiner’s decision is affirmed-in-part.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART

bar

TRAN & ASSOCIATES
P.O. BOX 68
SARATOGA, CA 95071-0068