Ex Parte Zhu

Board of Patent Appeals and Interferences

Aug 10, 2009

10803384 (B.P.A.I. Aug. 10, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte REIYAO ZHU
____________

Appeal 2009-001958
Application 10/803,384
Technology Center 1700
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Decided: August 10, 2009
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Before BEVERLY A. FRANKLIN, LINDA M. GAUDETTE, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1, 3-11, and 13-19. We have jurisdiction under 35
U.S.C. § 6(b).
STATEMENT OF THE CASE
Claims 1, 11, and 19 are representative of the subject matter on appeal
and are set forth below:
Appeal 2009-001958
Application 10/803,384

1. A yarn suitable to provide arc and flame protection comprising:

(a) 45 to 60 weight percent modacrylic fiber,

(b) 15 to 35 weight percent cotton fiber and

(c) 5 to 30 weight percent aramid fiber,

said percentages on the basis of components (a), (b) and (c).

11. A fabric suitable to provide an arc and thermal protection
comprising:

(a) 45 to 60 weight percent modacrylic fiber,

(b) 15 to 35 weight percent cotton fiber and

(c) 5 to 30 weight percent aramid fiber,

said percentages on the basis of components (a), (b) and (c).

19. A garment suitable to provide arc and thermal protection:

(a) 45 to 60 weight percent modacrylic fiber,

(b) 15 to 35 weight percent cotton fiber and

(c) 5 to 30 weight percent aramid fiber,

said percentages on the basis of components (a) (b) and (c).

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Nelson 4,025,491 May 24, 1977
Smith (hereafter Smith ‘906) 4,865,906 Sep. 12, 1989
Smith (hereafter Smith ‘111) 4,970,111 Nov. 13, 1990
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Gadoury 5,824,614 Oct. 20, 1998
Campbell 6,787,228 B2 Sep. 07, 2004

SUMMARY OF THE DECISION
We affirm.
THE REJECTIONS

1. Claims 1, 11, 13, 14, and 19 are rejected under 35 U.S.C. 103(a) as
being unpatentable over Campbell in view Nelson.
2. Claims 3-5 and 15-17 are rejected under 35 U.S.C. 103(a) as being
unpatentable over Campbell in view of Nelson as applied to claims 1, 11,
13, 14, and 19 above, and further in view Smith ‘906.
3. Claims 6-8 are rejected under 35 U.S.C. 103(a) as being unpatentable
over Campbell in view of Nelson in view of Smith ‘906 as applied to claims
3-5 and 15-17 above, and further in view of Gadoury.
4. Claims 9, 10, and 18 are rejected under 35 U.S.C. 103(a) as being
unpatentable over Campbell in view Nelson as applied to claims 1, 11,
13, 14, and 19 above, and further in view of Gadoury.
The Examiner has withdrawn the last 2 rejections listed on page 3 of
the Brief. Ans. 2-3.

ISSUE

Has Appellant shown that the Examiner reversibly erred in rejecting
the claims by successfully rebutting the Examiner’s prima facie case by
convincingly arguing that the applied art teaches away from a yarn
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Application 10/803,384

comprising (a) 45 to 60 weight percent modacrylic fiber, (b) 15 to 35 weight
percent cotton fiber and (c) 5 to 30 weight percent aramid fiber?

FINDINGS OF FACT
The Examiner finds that Campbell discloses yarn comprising at least
about 70 weight percent modacrylic fibers and at least about 3 weight
percent aramid fibers. Campbell, col. 4, ll. 9-56; Ans. 4.
Campbell teaches that the amount of modacrylic fibers and aramid
fibers achieve recognized results. Campbell, col. 3, ll. 17-41.
Nelson teaches that cotton fibers achieve recognized results such as
providing a textile with certain aesthetic properties. Nelson, col. 1, ll. 62-66;
col. 4, l. 61- col. 5, l. 2.

PRINCIPLES OF LAW
A particular parameter must first be recognized as a result-effective
variable, i.e., a variable which achieves a recognized result, before the
determination of the optimum or workable ranges of said variable might be
characterized as routine experimentation. In re Antonie, 559 F.2d 618, 620
(CCPA 1977); In re Boesch, 617 F.2d 272, 276 (CCPA 1980) (“[D]iscovery
of an optimum value of a result effective variable . . . is ordinarily within the
skill of the art.”); see also In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir.
2003) (“The normal desire of scientists or artisans to improve upon what is
already generally known provides the motivation to determine where in a
disclosed set of percentage ranges is the optimum combination of
percentages.”).
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Once an Examiner establishes a prima face case of obviousness, the
burden of going forward shifts to the Applicant. In re Dillon, 919 F.2d 688,
694 (Fed. Cir. 1990). A prima facie case of obviousness may be rebutted by
showing that the art, in any material respect, teaches away from the claimed
invention. In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997). Applicant
can rebut a presumption of obviousness based on a claimed invention that
falls within a prior art range by showing “(1) [t]hat the prior art taught away
from the claimed invention, . . . or (2) that there are new and unexpected
results relative to the prior art.” Iron Grip Barbell Co., Inc. v. USA Sports,
Inc., 392 F.3d 1317, 1322 (Fed. Cir. 2004).
ANALYSIS
As a preliminary matter, we confine our discussion to independent
claims 1, 11, and 19, which contain limitations representative of the
arguments made by Appellant pursuant to 37 C.F.R. §41.37(c)(1)(vii). As
such, we need only address the references of Campbell and Nelson (the
dependent claims stand or fall with the independent claims and references
applied against these dependent claims need not be addressed in making our
determination herein based upon Appellant’s arguments).
The Examiner finds that Campbell discloses yarn comprising at least
about 70 weight percent modacrylic fibers1 and at least about 3 weight

1 On page 8 of the Answer, the Examiner alters this finding by calculating
that Campbell teaches 42% to 97% by weight modacrylic fibers. Appellant
argues that there is no teaching in Campbell to support this position made by
the Examiner. We agree with Appellant that Campbell discloses a fabric
comprising at least about 70% modacrylic fibers, wherein the modacrylic
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percent aramid fibers. Campbell, col. 4, ll. 9-56; Ans. 4. The Examiner
states that “about 70% is considered to read on 60%”.2 Ans. 4.
The Examiner alternatively states that if it is shown that about 70%
does not read on 60%, the amount of modacrylic fibers, aramid fibers, and
cotton fibers are result effective variables and therefore obvious design
expedients.3 Ans. 4-5.
Because Appellant does not specifically address the Examiner’s
statement that “about 70% is considered to read on 60%”, and in view of the
Examiner’s supported position, discussed supra, that the amount of
modacrylic fiber, aramid fibers, and cotton fibers are obvious design
expedients, we support the Examiner’s prima facie case of obviousness.
fibers contain at least about 50% acrylonitrile. We refer to Appellant’s logic
as set forth on page 3 of the Reply Brief in support thereof.

2 Appellants do not directly address this statement made by the Examiner.
Rather, Appellant focuses on a “teaching away” position.
3 The Examiner points out that Campbell teaches that modacrylic fibers are
present for flame resistance (col. 3, ll. 18-23), and aramid fibers are present
for tensile strength (col. 3, ll. 25-40). The Examiner also finds that Nelson
teaches that it is known in the flame resistant fabric art to blend synthetic
fibers with cotton in an amount from 15 to 65 weight percent, to provide the
fabric with the desired aesthetic hand properties, moisture absorption
properties, and to minimize static electricity. Ans. 4-5. Hence, the cited art
does recognize that amounts of modacrylic fibers, aramid fibers and cotton
fibers achieve a recognized result. As such, we agree with the Examiner that
determination of the optimum or workable ranges of these variables can be
characterized as routine experimentation. In re Antonie, 559 F.2d at 620 ; In
re Boesch, 617 F.2d at 276; In re Peterson, 315 F.3d at 1330.

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A prima facie case of obviousness may be rebutted by showing that
the art, in any material respect, teaches away from the claimed invention. In
re Geisler, 116 F.3d at 1471. Applicant can rebut a presumption of
obviousness based on a claimed invention that falls within a prior art range
by showing “(1) [t]hat the prior art taught away from the claimed invention,
. . . or (2) that there are new and unexpected results relative to the prior art.”
Iron Grip Barbell Co., Inc., 392 F.3d at 1322.
On page 5 of the Brief, Appellant states that he has accepted a burden
of proof which is that one of ordinary skill in the art would not employ 60%
acrylonitrile fibers from the teaching of Campbell of “about 70%”. On page
6 of the Brief, Appellant explains that he does not need to show “unexpected
results” to rebut a prima facie case. We understand these statements to mean
that Appellant has chosen to rebut the prima facie case by arguing that the
applied art teaches away from his claimed invention, and has chosen not to
provide a showing of unexpected results, which is an acceptable approach.
Id.
On page 4 of the Brief, Appellant argues that Campbell teaches a
lower limit of “about 70%” for the amount of modacrylic fiber. Appellant
argues that one skilled in the art would not employ Appellant’s claimed
amount of 60% modacrylic fibers in view of this teaching of a lower limit of
“about 70%” as taught by Campbell. Br. 5. In other words, Appellant
argues that Campbell teaches away from the claimed amount of modacrylic
fibers of from “45% to 60%”. Appellant discusses various excerpts from
Campbell in support of a teaching of a lower limit of “about 70%”, and we
refer to Appellant’s discussion in his Brief in this regard. Br. 6-7. Appellant
argues that one of ordinary skill in the art “[w]ould not pursue a route to
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obtain less and less acceptable results”, yet the Examiner’s position is
predicated on lowering the acrylonitrile content to an amount below the
teachings of Campbell. Br. 7.
Appellant also argues that Campbell’s invention must meet certain
standards (specified in Campbell) for flame resistance and arc thermal
performance exposure, yet the Examiner’s rejection proposes changing the
amount of acrylonitrile and adding cotton fibers to the product of Campbell.
Br. 7-8.
In response to the above-mentioned arguments, the Examiner states:
[T[he applied prior art clearly discloses that there are benefits to be
derived from reducing the weight percent of modacrylic fibers. A
reduced weight percent of modacrylic fibers, and thus an increase in
the weight percent of aramid fibers and/or cotton fibers, would result
in higher strength, higher energy absorption, improved aesthetic hand
properties, improved moisture absorption properties, and/or minimal
static electricity. Campbell falls far short of the kind of teaching that
would discourage one of ordinary skill in the art from fabricating a
yarn comprising 60 weight percent modacrylic fibers.
Ans. 9-10.
Hence, on the one hand, Campbell’s invention is directed to a fabric
designed to meet certain standards (described in column 2, line 9 through
column 3, line 9), and that at least about 70% modacrylic fibers and at least
about 3% aramid fibers are required in order to meet these standards (col. 4,
ll. 57-65).
On the other hand, Campbell teaches that the amount of modacrylic
fibers and aramid fibers achieve recognized results (e.g., col. 3, ll. 17-41).
Nelson teaches that cotton fibers achieve recognized results such as
providing a textile with certain aesthetic properties. Nelson, col. 1, ll. 62-66;
col. 4, l. 61- col. 5, l. 2.
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In view of the above, we agree with the Examiner’s response,
discussed supra, because one skilled in the art would not be dissuaded from
selecting an amount of modacrylic fibers below “about 70%”, when
recognizing the results to be obtained from doing so, as taught by Campbell.
Although Campbell’s fabric must meet certain standards as argued by
Appellant, Campbell’s teachings are broader than the particular application
because Campbell teaches that there are recognized results associated with
the use of acrylonitrile fibers and aramid fibers, as pointed out by the
Examiner. As such, we agree with the Examiner’s reference to In re
Geisler, 116 F.3d at 1471. Ans. 10.
With respect to the reference of Nelson, on pages 7-9, Appellant
argues that the Examiner’s position ignores a “direct disclosure of Nelson”
regarding its purpose of adding a high concentration of fire retardants.
Appellant argues that therefore one would not turn to the teachings of
Nelson (directed to adding fire retardants to polyester) for a teaching of
adding cotton to the product of Campbell. Br. 9.
We agree with the Examiner’s response made on page 11 of the
Answer. In other words, Nelson teaches that cotton fibers achieve
recognized results. Nelson, col. 1, ll. 62-66; col. 4, l. 61 - col. 5, l. 2.
Appellant has not convinced us that these recognized results are known only
to occur when cotton fibers are blended with polyesters having very high
concentration of flame retardants.
In view of the above, we affirm each of the rejections.
CONCLUSIONS OF LAW
Appellant has not shown that the Examiner reversibly erred in
rejecting the claims because Appellant did not successfully rebut the
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Examiner’s prima facie case and because Appellant did not convincingly
argue that the applied art teaches away from a yarn comprising (a) 45 to 60
weight percent modacrylic fiber, (b) 15 to 35 weight percent cotton fiber and
(c) 5 to 30 weight percent aramid fiber.

DECISION
Each of the rejections 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)(1)(v)(2008).

AFFIRMED

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