Mark Levine et al.

Patent Trials and Appeals Board

Feb 19, 2021

2020000977 (P.T.A.B. Feb. 19, 2021)

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.
13/400,954 02/21/2012 Mark Levine 127506-01103 7404
141216 7590 02/19/2021
McCarter & English, LLP / Albany International
Worldwide Plaza, 825 Eighth Ave.,
31st Floor
New York, NY 10019
EXAMINER
PIZIALI, ANDREW T
ART UNIT PAPER NUMBER
1789
NOTIFICATION DATE DELIVERY MODE
02/19/2021 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
NYdocket@mccarter.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK LEVINE, JOSEPH G. O'CONNOR,
FRANK DITARANTO, CRAYTON GREGORY TONEY, and
SHUIYUAN LUO
Appeal 2020-000977
Application 13/400,954
Technology Center 1700
Before CATHERINE Q. TIMM, JEFFREY T. SMITH, and
SHELDON M. McGEE, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–4, 7–12, 14–21, 24–29, 31–36, and
38.2 We have jurisdiction under 35 U.S.C. § 6(b).

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies the real party in interest as Albany International Corp. Appeal Br.
3.
2 Claims 47–50 were canceled by the entry of the After-Final Amendment
dated November 20, 2018. Advisory Act. 1. This rendered the rejection of
those claims moot.
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We AFFIRM.
CLAIMED SUBJECT MATTER
The claims are directed to a conductive engineered fabric (see, e.g.,
claim 1) and the filament used to make the fabric (see, e.g., claim 21). All
the claims require a load-bearing oriented polymeric filament. Claims 1 and
21. It is the meaning of “load-bearing oriented” that is a central question in
this appeal. Claim 1, reproduced below with the language at issue italicized,
is illustrative of the claimed subject matter:
1. A conductive engineered fabric used in making
nonwoven textiles in the airlaid, meltblown or spunbonding
processes comprising
a plurality of load-bearing oriented polymeric filaments
having one or more C-shaped grooves with a cross section of
continuous curvature throughout a circumference thereof,
formed therein with a mouth open at a surface of the polymeric
filaments through a waist, the waist being located between the
mouth and a central portion of the C-shaped groove and having
a width less than the width of the mouth and central portion, the
waist and the mouth being joined to each other by a convex
portion of continuous curvature, and the radial distance between
a center of the polymeric filament and a widest point of the C-
shaped groove is less than the radial distance between the center
of the polymeric filament and the waist, and
wherein each filament includes electrically conductive
polymer material incorporated as either a blend or a coating that
substantially fills the C-shaped grooves and is mechanically
retained in place by the C-shaped grooves, said conductive
fabric having static dissipation properties comparable to metal-
based fabrics whilst being resistant to dents and creases and
wherein the one or more C-shaped grooves allow for continued
exposure of the conductive polymer to the filament surface as

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the monofilament wears so that the filament retains its
conductivity.
Appeal Br. 20 (Claims Appendix) (emphasis added).
REFERENCES
The Examiner relies on the following prior art:
Name Reference Date
Kuhn US 4,803,096 Feb. 7, 1989
Hogle US 5,277,976 Jan. 11, 1994
Rohrbach US 5,744,236 Apr. 28, 1998
Isido US 6,351,925 B2 Mar. 5, 2002
Takagi US 6,432,850 B1 Aug. 13, 2002
REJECTIONS
The Examiner rejects claims 1–4, 7–12, 14–21, 24–29, 31–36, and 38
under 35 U.S.C. § 112(b) or 35 U.S.C. § 112, second paragraph, as
indefinite. Final Act. 3; Ans. 3.
The Examiner further rejects claims 1–4, 7, 8, 11, 12, 14–19, 21, 24,
25, 28, 29, 31–33, 35, 36, and 38 under 35 U.S.C. § 103(a) as obvious over
Takagi and Hogle alone or in various combinations with Rohrbach and
Isido. Ans. 4–15. The Examiner adds Kuhn to reject claims 9, 10, 20, 26, 27,
and 34. Id.
OPINION
Indefiniteness
Before we dive into the merits of the indefiniteness rejection, we must
answer a threshold question relating to whether we are permitted to consider
evidence presented for the first time in the Appeal Brief. To support their
claim interpretation, Appellant cites six new references: (1) a definition from
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The Free Dictionary, (2) an online tutorial on fiber orientation published by
an Australian University, (3) an overview on nonwovens by ScienceDirect,
and three patents, which we label references (4)–(6). Appeal Br. 6–9.
We agree with the Examiner that references (2)–(6) are not properly
before us. Ans. 16.
First, references (2)–(6) are not of record. After the final rejection,
entry of new evidence is not a matter of right. See MPEP § 1205.02 (stating
that “evidence submitted under 37 C.F.R. § 1.116 or 37 C.F.R. § 41.33 will
not be entered as part of the record for the appeal unless entered by the
examiner.”). The Examiner expressly states that references (2)–(6) are not
entered. Ans. 16. Appellant provides us no persuasive evidence to the
contrary.
Second, only dictionaries are exempted. The rules are very clear on
this. See 37 C.F.R. § 41.30 (“Evidence does not include dictionaries, which
may be cited before the Board.”) and MPEP § 1204.04 (reproducing 37
C.F.R. § 41.30 definitions of “Evidence” and “Record” and discussing
dictionaries as an exception, specifically).
Third, we do not consider the non-dictionary references because, not
only has the Examiner not entered them, but the Examiner refused to discuss
them, and the Examiner’s non-entry and refusal are matters of examination
discretion that are petitionable, not appealable. MPEP § 1204.04.
Our review “is properly based on the record of all entered and
indicated considered documents in the file.” MPEP §1204.04. And we will
so limit it.
We now turn to the merits of the indefiniteness rejection.
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The Examiner determines the modifier “load-bearing oriented” in the
phrase “load-bearing oriented polymeric filaments” is indefinite because it is
not clear what load a polymeric filament must bear to be “load-bearing” and
“it is not clear if/how an oriented load-bearing polymeric filament is
different from a load-bearing non-oriented polymeric filament.” Final Act. 3;
see also Ans. 16.
Appellant responds by first arguing that “oriented” is definite and by
secondly arguing that “load-bearing” is definite. Appeal Br. 6–11. These
bifurcated arguments don’t address the central question of whether the
combination is definite. We agree with the Examiner that the combination of
terms leads to indefiniteness.
There is no dispute here that “oriented polymeric filaments,” without
the “load-bearing” qualifier is definite. See Ans. 16 (agreeing with Appellant
that an “oriented” filament refers to a filament with crystals oriented in the
length-wise direction); Spec. 3:25–32 (discussing the use of “polymeric
materials that can be oriented to achieve physical properties needed to form
durable fabric structures.”).
Nor is there any dispute that The Free Dictionary defines “load-
bearing” as “bearing the weight that is carried by a structure” or “capable of
bearing a structural load.” Appeal Br. 9; Evid. Appendix B(1). But just how
“load-bearing” defines something more than a polymeric filament that is
strengthened by orientation is unclear. Appellant’s own Specification uses
“load-bearing filaments 10” to refer to filaments made with “polymeric
materials that can be oriented to achieve physical properties needed to form
durable fabric structures.” Spec. 3:25–32. And so how the term “load-
bearing” further limits the oriented filament structure is unclear. Thus, the
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Examiner’s resort to questioning how much load a polymeric filament must
be able to bear to be “load-bearing” is a reasonable question and goes to the
heart of why the phrase “load-bearing oriented” is indefinite.
In responding to the Examiner’s prior art rejection, Appellant argues
Hogle’s filaments, which are oriented, have too fine a denier to be “load-
bearing.” Appeal Br. 14. But it is not clear what denier a filament must have
to enable it to bear weight to the extent it becomes “load-bearing” versus not
“load-bearing.”
Appellant acknowledges that Hogle’s filaments are oriented but
contends Hogle does not disclose them as “load-bearing oriented.” Reply
Br. 13. Yet Appellant in the next breath contends that “[a]ccording to the
line of argument presented by the Examiner here, ‘oriented’ filaments and
‘load-bearing oriented’ filaments are synonymous with one another” but that
“[i]f this were indeed the case, then the Examiner's befuddlement as to the
meaning of ‘load-bearing’ as played out in his Section 112 junket would be
rendered moot.” Id. It is not rendered moot. In fact, Appellant’s argument
illustrates the confusion caused by the language. Appellant cannot have it
both ways. Either the language is an extra limitation or it is not. And because
we presume every word in the claims adds meaning, it is unclear what extra
meaning “load-bearing” brings to the table.
We sustain the Examiner’s indefiniteness rejection.
Obviousness
As to the Examiner’s obviousness rejections, each of them turns on
the meaning of “load-bearing oriented polymeric filaments.” Because that
language is indefinite, we do not reach the obviousness rejections. To review
a rejection for obviousness, “it is essential to know what the claims do in
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fact cover.” In re Steele, 305 F.2d 859, 862 (CCPA 1962). Here, because the
claims are indefinite, we do not know what they cover. Thus, we
procedurally reverse the obviousness rejections because we would need to
rely on speculative assumptions to decide them. We do not reach the merits
of the obviousness rejections.
CONCLUSION
The Examiner’s decision to reject claims 1–4, 7–12, 14–21, 24–29,
31–36, and 38 is AFFIRMED.

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DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4, 7–12, 14–
21, 24–29, 31–
36, 38
112 Indefiniteness 1–4, 7–12, 14–
21, 24–29, 31–
36, 38

1–4, 7, 8, 11,
12, 14–19, 21,
24, 25, 28, 29,
31–33, 35, 36,
38
103(a) Takagi, Hogle 1–4, 7, 8, 11,
12, 14–19, 21,
24, 25, 28, 29,
31–33, 35, 36,
38
9, 10, 20, 26,
27, 34
103(a) Takagi, Hogle, Kuhn 9, 10, 20, 26,
27, 34
1–4, 7, 8, 11,
12, 14–19, 21,
24, 25, 28, 29,
31–33, 35, 36,
38
103(a) Takagi, Hogle,
Rohrbach
1–4, 7, 8, 11,
12, 14–19, 21,
24, 25, 28, 29,
31–33, 35, 36,
38
9, 10, 20, 26,
27, 34
103(a) Takagi, Hogle,
Rohrbach, Kuhn
9, 10, 20, 26,
27, 34
1–4, 7, 8, 11,
12, 14–19, 21,
24, 25, 28, 29,
31–33, 35, 36,
38
103(a) Takagi, Hogle, Isido 1–4, 7, 8, 11,
12, 14–19, 21,
24, 25, 28, 29,
31–33, 35, 36,
38
9, 10, 20, 26,
27, 34
103(a) Takagi, Hogle, Isido,
Kuhn
9, 10, 20, 26,
27, 34
1–4, 7, 8, 11,
12, 14–19, 21,
24, 25, 28, 29,
31–33, 35, 36,
38
103(a) Takagi, Hogle, Isido,
Rohrbach
1–4, 7, 8, 11,
12, 14–19, 21,
24, 25, 28, 29,
31–33, 35, 36,
38
9, 10, 20, 26,
27, 34
103(a) Takagi, Hogle, Isido,
Rohrbach, Kuhn
9, 10, 20, 26,
27, 34
Overall
Outcome
1–4, 7–12, 14–
21, 24–29, 31–
36, 38

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RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED