Mark Levine et al.Download PDFPatent Trials and Appeals BoardFeb 19, 20212020000977 (P.T.A.B. Feb. 19, 2021) Copy Citation 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. Appeal 2020-000977 Application 13/400,954 2 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 Appeal 2020-000977 Application 13/400,954 3 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 Appeal 2020-000977 Application 13/400,954 4 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. Appeal 2020-000977 Application 13/400,954 5 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 Appeal 2020-000977 Application 13/400,954 6 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 Appeal 2020-000977 Application 13/400,954 7 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. Appeal 2020-000977 Application 13/400,954 8 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 Appeal 2020-000977 Application 13/400,954 9 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 Copy with citationCopy as parenthetical citation