Ex parte ZINS et al.

Board of Patent Appeals and Interferences

Nov 30, 1999

08228086 (B.P.A.I. Nov. 30, 1999)

Application for patent filed April 15, 1994. 1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written
for publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte HOWARD M. ZINS
and DAVID C. HOLLAND
____________
Appeal No. 1996-3195
Application No. 08/228,0861
____________
ON BRIEF
____________
Before JOHN D. SMITH, WARREN, and KRATZ, Administrative Patent
Judges.
KRATZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 27, which are all of the claims
pending in this application.
BACKGROUND
The appellants’ invention relates to an ultrasonically
bonded seam that is impervious to liquids, method of
Appeal No. 1996-3195 Page 2
Application No. 08/228,086
preparation thereof, and a fabric that is impervious to
liquids. The seam comprises a laminate sheet of a polyester
fabric with a polyurethane coating on one side thereof. An
understanding of the invention can be derived from a reading
of exemplary claims 1, 8, 15, and 27 which are reproduced
below.
1. A stitchless seam that is impervious to liquids, the
seam comprising:
a laminate sheet constructed solely of a polyester fabric
on one side of the sheet and a polyurethane coating over the
polyester fabric on a second side of the sheet, the sheet
having at least one pair of opposite edges;
the sheet being formed in a tube configuration with the
polyester fabric extending around an interior of the tube and
the polyurethane coating extending over an exterior of the
tube;
the pair of opposite edges being folded back into the
tube interior where the edges are aligned adjacent each other
in the interior of the tube and the polyurethane coating on
each of the opposite edges being in mutual contact, and
wherein the polyurethane coating on each of the opposite edges
has been ultrasonically welded securing the edges together and
forming a seam along the tube of laminate sheet that both
joins the opposite edges of the sheet together and seals the
join of the edges solely by the ultrasonically welded
polyurethane coating.
8. A method of forming a stitchless seam that is
impervious to liquids, the method comprising:
constructing a laminate sheet from a piece of polyester
fabric, the fabric having a configuration with at least one
pair of opposite edges, and covering over one side of the
Appeal No. 1996-3195 Page 3
Application No. 08/228,086
piece of fabric with a polyurethane coating thereby
constructing the laminate sheet solely of the polyester fabric
on one side of the sheet and solely of the polyurethane
coating on a second side of the sheet;
forming the sheet in a tube configuration so that the
polyester fabric extends around an interior of the tube and
the polyurethane coating extends over an exterior of the tube;
folding the opposite edges of the polyester fabric back
so that the polyester fabric at the opposite edges is folded
back over itself and so that the pair of edges are aligned and
extending into the tube interior and the polyurethane coating
on each of the edges is in mutual contact; and
subjecting the contacting polyurethane coating of each of
the opposite edges to ultrasonic energy thereby securing the
opposite edges together and forming a seam along the laminate
tube that both securely joins the opposite edges of the sheet
together and seals the join of the edges solely by the
ultrasonically welded polyurethane coating in mutual contact
at the opposite edges.
15. A stitchless seam that is impervious to liquid, the
seam comprising:
a pair of adjacent pieces of a polyester fabric, each
piece of fabric having opposite interior and exterior surfaces
and each piece of fabric having an edge that is folded back so
that the edge extends out from the interior surface of the
piece of fabric;
a polyurethane coating on the exterior surface of each
piece of fabric, the polyurethane coating on the exterior
surfaces of the folded back edges being in mutual contact, and
the mutually contacting polyurethane coating being
ultrasonically welded thereby securing the folded back edges
together forming a seam in the pieces of fabric that both
joins the edges of the two pieces of fabric together and seals
the join of the edges solely by the ultrasonically welded
polyurethane coating.
Appeal No. 1996-3195 Page 4
Application No. 08/228,086
27. An autoclavable fabric that is impervious to liquids,
the fabric comprising:
a sheet of polyester fabric;
a layer of thermoplastic polyurethane; and
a layer of thermosetting polyurethane, the
thermosetting polyurethane layer being substantially less
tacky than the thermoplastic polyurethane layer when
autoclaved, the thermoplastic polyurethane layer being
positioned between the fabric and the thermosetting
polyurethane layer, thereby encapsulating the thermoplastic
polyurethane layer and preventing the thermoplastic
polyurethane layer from sticking to itself during autoclaving.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Pounder et al. (Pounder) 3,483,073 Dec.
09, 1969
Kerr et al. (Kerr) 5,298,303 Mar. 29,
1994
Claims 1-27 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Kerr in view of Pounder.
OPINION
Upon careful consideration of the opposing arguments
presented on appeal, we concur with appellants that the
applied prior art fails to establish a prima facie case of
obviousness of the claimed subject matter. Accordingly, we
will not sustain the examiner's rejection.
Appeal No. 1996-3195 Page 5
Application No. 08/228,086
In order for a prima facie case of obviousness of
appellants’ claimed invention to be established, the prior art
must be such that it would have provided one of ordinary skill
in the art with both a suggestion to carry out appellants’
claimed process and a reasonable expectation of success in
doing so. See In re Dow Chemical Co., 837 F.2d 469, 473, 5
USPQ2d 1529, 1531 (Fed. Cir. 1988). “Both the suggestion and
the expectation of success must be founded in the prior art,
not in the applicant’s disclosure.” Id. The mere possibility
that the prior art could be modified such that appellants’
process is carried out is not a
sufficient basis for a prima facie case of obviousness. See
In re Brouwer, 77 F.3d 422, 425, 37 USPQ2d 1663, 1666 (Fed.
Cir. 1996); In re Ochiai, 71 F.3d 1565, 1570, 37 USPQ2d 1127,
1131 (Fed. Cir. 1995).
A fundamental flaw in the stated rejection is that the
examiner has not convincingly explained how one of ordinary
skill in the art would have arrived at the claimed invention
from the teachings of the references. In this regard, claims
1 and 8 and the claims depending therefrom require a fabric
seam or method of forming the seam wherein an ultrasonic weld
Appeal No. 1996-3195 Page 6
Application No. 08/228,086
is applied to inwardly folded back opposite edges of a tube-
shaped, one-sided polyurethane coated polyester fabric sheet
with the polyurethane coating of each edge being in mutual
contact as the sole mechanism for securing the opposite edges
together. Claim 15 and the claims depending therefrom require
a fabric seam wherein an ultrasonic weld is applied to folded
back edges of adjacent pieces of one-sided polyurethane coated
polyester fabric sheet material with the polyurethane coatings
in mutual contact as the sole mechanism for securing the
pieces together.
Kerr discloses the multi-layer coating of a fabric
substrate (figure 1) to provide a fabric structure useful in a
fuel cell or rotary flap peening device. Kerr teaches that a
variety of substrate materials may be used including polyester
fibers and the coatings may comprise various polymers
including polyurethanes (columns 2-10). Kerr does not
disclose seam formation including formation of an
ultrasonically welded seam. Pounder discloses joined sheets of
cross-linked polyurethanes and/or polyurethane coated fabrics
using ultrasonically formed seams. Pounder teaches that the
separate sheets to be joined are assembled in abutting or
Appeal No. 1996-3195 Page 7
Application No. 08/228,086
overlapping relationship. Pounder does not teach joining
folded back edges as claimed. According to the examiner, it
would have been obvious to one of ordinary skill in the art to
fold the composite fabrics as claimed so that the polyurethane
layers may contact each other (answer, page 5). However, the
examiner has not pointed to any prior art teaching or
convincing line of reasoning to substantiate this proposition.
In this regard, even with regard to claim 15, we note that
Pounder clearly teaches a seam for joining separate sheets
that does not involve folding and which differs from that
claimed herein. Accordingly, even if we agreed that the
teachings of Kerr and Pounder are combinable as urged by the
examiner, the examiner has not adequately explained where the
motivation or suggestion for modifying Kerr's fabric structure
or method of coating a fabric substrate to employ an
ultrasonic weld to folded back edges of polyurethane coated
polyester fabric sheet(s) is found in the combined applied
references' teachings.
Likewise, the examiner has not explained how the combined
references' teachings would have suggested the specific
positioning of a polyester fabric, thermoplastic polyurethane
Appeal No. 1996-3195 Page 8
Application No. 08/228,086
coating, and thermosetting polyurethane coating as recited in
claim 27. From our perspective, the assertions of the
examiner regarding the fabric structure arrangement(s) that
would have been obvious from the teachings of Kerr (answer,
pages 4 and 5) appear to be based on conjecture. In this
regard, the examiner has not specifically identified which
portions of the disclosure of Kerr would have rendered the
specifically claimed fabric arrangement of claim 27 obvious to
one of ordinary skill in the art.
The determination of obviousness must be based on facts,
and not on unsupported generalities. See In re Freed, 425
F.2d 785, 787, 165 USPQ 570, 571 (CCPA 1970). Moreover, there
must be some basis in the references for concluding that the
claimed subject matter would have been obvious. Simplicity
and hindsight are not proper criteria for resolving the issue
of obviousness. See In re Horn, 203 USPQ 969, 971 (CCPA
1979). In our view, the motivation for the examiner's stated
rejection appears to come solely from the description of
appellants’ invention in their specification. Thus, the
record indicates that the examiner used impermissible
hindsight when rejecting the claims. See W.L. Gore &
Appeal No. 1996-3195 Page 9
Application No. 08/228,086
Associates v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ
303, 312-13 (Fed. Cir. 1983), cert. denied, 469 U.S. 851
(1984); In re Rothermel, 276 F.2d 393, 396, 125 USPQ 328, 331
(CCPA 1960). Accordingly, we reverse the examiner’s
rejection.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1-27 under 35 U.S.C. § 103 as being unpatentable over
Kerr in view of Pounder is reversed.
Appeal No. 1996-3195 Page 10
Application No. 08/228,086
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED
JOHN D. SMITH )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES F. WARREN ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
PETER F. KRATZ )
Administrative Patent Judge )
tdl
Appeal No. 1996-3195 Page 11
Application No. 08/228,086
HOWELL & HAFERKAMP, L.C.
7733 Forsyth Blvd., Suite 1400
St. Louis, MO 63105
APPEAL NO. - 1996-3193
APPLICATION NO. 08/228,086
APJ KRATZ
APJ WARREN
APJ JOHN SMITH
DECISION: REVERSED
Prepared By: TINA
DRAFT TYPED: 12 Oct 00
FINAL TYPED: