Ex Parte Vogt et al

Board of Patent Appeals and Interferences

Sep 24, 2007

10307027 (B.P.A.I. Sep. 24, 2007)

The opinion in support of the decision being entered today
is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KIRKLAND W. VOGT, JASON L. KREIDER,
and ROBERT J. GOULET
____________

Appeal 2007-3387
Application 10/307,027
Technology Center 1700
____________

Decided: September 24, 2007
____________

Before BRADLEY R. GARRIS, CHUNG K. PAK,
and LINDA M. GAUDETTE, Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner's refusal to allow claims 1 through 3, 5, 7 through 9, and 11.
Claims 6 and 12, the other claims pending in the above-identified
application, stand withdrawn from consideration as being directed to a non-
elected invention. We have jurisdiction pursuant to 35 U.S.C. § 6.

Appeal 2007-3387
Application 10/307,027

STATEMENT OF THE CASE
The subject matter on appeal is directed to a fabric topically coated
with at least one silver-ion containing compound, at least one halide-
containing compound, and at least one polyurethane binder material (claim
1). The halide-containing compound is said to be useful for discoloration
reduction (Specification 9 and 12). Further details of the appealed subject
matter are recited in representative claim 11 reproduced below:
1. A fabric substrate having a surface, a portion of which is coated with a
finish, wherein said finish comprises at least one silver-ion containing
compound selected from the group consisting of silver-zirconium phosphate,
silver zeolite, silver glass, and any mixtures thereof, at least one
polyurethane binder material, and at least one halide-containing compound,
wherein said halide-containing compound is present in an amount measured
as a molar ratio between the amount of halide ions present and the amount of
silver ions present, wherein said range is from 5:1 to 1:10, and wherein said
finish is substantially free from alkali metal ions.

As evidence of unpatentability of the claimed subject matter, the
Examiner has relied upon the following reference:
Konagaya US 6,013,275 Jan. 11, 2000
The Examiner has rejected claims 1 through 3, 5, 7 through 9, and 11
under 35 U.S.C. § 102(b) as anticipated by or, in the alternative, under
35 U.S.C. § 103(a) as unpatentable over the disclosure of Konagaya.

1 The Appellants have not supplied any substantive arguments for the
separate patentability of any specific claims. See the Appeal Brief dated
September 6, 2006 (Br.) and the Reply Brief dated September 20, 2006 in
their entirety. Therefore, for purposes of this appeal, we focus our
discussion on independent claim 1 pursuant to 37 C.F.R. § 41.37(c)(1)(vii)
(2004).
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Appeal 2007-3387
Application 10/307,027

The Appellants appeal from the Examiner’s decision rejecting the
claims on appeal under 35 U.S.C. §§ 102(b) and 103(a).
ISSUES
1. Does Konagaya unequivocally teach each and every limitation
of the claimed invention without need for picking, choosing, and combining
various disclosures therein within the meaning of 35 U.S.C. § 102(b)?
2. Would Konagaya have suggested including in its antibacterial
composition freed of alkali metal halides at least one polyurethane binder
material prior to applying them on a fabric substrate within the meaning of
35 U.S.C. § 103(a)?
PRINCIPLES OF LAW, FACTUAL FINDINGS, and ANALYSES
ANTICIPATION
To establish anticipation under 35 U.S.C. § 102(b), a single prior art
reference must unequivocally disclose the claimed invention without any
need for picking, choosing, and combining various disclosures therein. In re
Arkley, 455 F. 2d 586, 587, 172 USPQ 524, 526 (CCPA 1972).
As explained in the discussion of the Examiner’s § 103 rejection
below, we determine that some picking, choosing, and combining various
disclosures of Konagaya is necessary to arrive at the claimed subject matter.
Although such picking, choosing, and combining may be entirely proper in
making a § 103(a) rejection, it has no place in the making of a § 102(b)
rejection. Arkley, 455 F.2d at 587, 172 USPQ at 526.
Accordingly, we are constrained to reverse the Examiner’s decision
rejecting the claims on appeal under 35 U.S.C. § 102(b).
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Appeal 2007-3387
Application 10/307,027

OBVIOUSNESS
Under 35 U.S.C. § 103, the factual inquiry into obviousness requires a
determination of: (1) the scope and content of the prior art; (2) the
differences between the claimed subject matter and the prior art; (3) the level
of ordinary skill in the art; and (4) secondary consideration (e.g., unexpected
results). Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18,
148 USPQ 459, 467 (1966). “[A]nalysis [of whether the subject matter of a
claim would be obvious] need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ.” KSR Int’l v. Teleflex, Inc., 127 S. Ct. 1727, 1741,
82 USPQ2d 1385, 1396 (2007) quoting In re Kahn, 441 F.3d 977, 988,
78 USPQ2d 1329, 1336 (Fed. Cir. 2006); see also DyStar Textilfarben
GmBH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1361,
80 USPQ2d 1641, 1645 (Fed. Cir. 2006)(“The motivation need not be found
in the references sought to be combined, but may be found in any number of
sources, including common knowledge, the prior art as a whole, or the
nature of the problem itself.”); In re Bozek, 416 F.2d 1385, 1390, 163 USPQ
545, 549 (CCPA 1969)(“Having established that this knowledge was in the
art, the examiner could then properly rely, as put forth by the solicitor, on a
conclusion of obviousness ‘from common knowledge and common sense of
the person of ordinary skill in the art without any specific hint or suggestion
in a particular reference.’”).
Here, we find that Konagaya teaches an antibacterial composition
comprising an inorganic and/or organic antibacterial agent and a hydrophilic
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Appeal 2007-3387
Application 10/307,027

substance (col. 3, ll. 28-30). We find that Konagaya exemplifies, inter alia,
silver ion supported on an inorganic substance such as silica, glass, zeolite,
and zirconium phosphate (col. 5, ll. 8-15). We find that Konagaya teaches
(col. 8, ll. 51-58) that:
The hydrophilic substance is an organic compound or a high
molecular compound containing at least one of a hydroxyl
group, amino group, amide group, carboxyl group or alkali
metal salts thereof, sulfonic acid group or alkali metal salts
thereof, quaternary ammonium salt group and amine salt group,
or an organic compound or a high molecular compound
containing at least one polyether chain and polyamine chain.
In other words, we find that Konagaya teaches an antibacterial composition
with or without alkali metal ions. To this antibacterial composition, as
correctly found by the Examiner at page 3 and 4 of the Answer, Konagaya
further teaches that to improve heat resistance which affects the coloring
degree, gel occurrence and the like, an additional component, such as
magnesium chloride and the like, can be included (see Konagaya, col. 7, ll.
54-67). The Appellants have not specifically challenged the Examiner’s
determination that the claimed ratio of a halide-containing compound to
silver ion encompasses the amounts of the halide compound and silver ion
taught by Konagaya (compare Answer 4 with Br. and Reply Br. in their
entirety). Moreover, we find that the determination of optimum amounts of
a halide-containing compound and silver ion corresponding to the claimed
range of ratios are well within the ambit of one of ordinary skill in the art
since they are known result effective variables, i.e., the amounts used are
dependent on the desired degree of antibacterial and heat resistance
protection sought by one of ordinary skill in the art. In re Boesch, 617 F.2d
272, 276, 205 USPQ 215, 219 (CCPA 1980).
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Appeal 2007-3387
Application 10/307,027

The dispositive question is, therefore, whether Konagaya teaches or
would have suggested including at least one polyurethane resin binder
material in its antibacterial composition prior to applying the composition on
a fabric substrate within the meaning of 35 U.S.C. § 103(a)? On this record,
we answer this question in the affirmative.
As is apparent from col. 13, ll. 15-23, of Konagaya, its antibacterial
composition can be mixed with, inter alia, a tetrasilane zirconium alkoxide
polyurethane resin emulsion before the composition is applied to a fabric
substrate. Nowhere does the Specification indicate that the claimed at least
one polyurethane binder excludes the tetrasilane zirconium alkoxide
polyurethane resin emulsion taught by Konagaya.
Thus, given the above teachings, we concur with the Examiner that
one of ordinary skill in the art would have been led to apply, inter alia, the
claimed compositions on a fabric substrate within the meaning of 35 U.S.C.
§ 103(a).

ORDER
In view of the forgoing, the decision of the Examiner is affirmed.
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

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LEGAL DEPARTMENT (M-495)
P.O. BOX 1926
SPARTANBURG, SC 29304
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