Nathaniel Kolmes et al.

Patent Trials and Appeals Board

Jul 22, 2019

11439273 - (D) (P.T.A.B. Jul. 22, 2019)

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.
11/439,273 05/24/2006 Nathaniel Kolmes 290943US23 4175
22850 7590 07/22/2019
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
WORRELL JR, LARRY D
ART UNIT PAPER NUMBER
3732
NOTIFICATION DATE DELIVERY MODE
07/22/2019 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):
OBLONPAT@OBLON.COM
iahmadi@oblon.com
patentdocket@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte NATHANIEL KOLMES, FRED ELTON DRIVER, and
WALTER GORDON SCHULEIN
____________

Appeal 2017-010653
Application 11/439,2731
Technology Center 3700
____________

Before LINDA E. HORNER, STEFAN STAICOVICI, and
ANNETTE R. REIMERS, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE.
Nathaniel Kolmes et al. (“Appellants”) appeal under 35 U.S.C.
§ 134(a) from the Examiner’s decision in the Final Office Action (dated
May 11, 2016, hereinafter “Final Act.”) rejecting claims 1–5, 12, 19, and
20.2

1 Nathaniel Kolmes and Supreme Elastic Corporation are identified as the
real parties in interest in Appellants’ Appeal Brief (filed Jan. 31, 2017,
hereinafter “Appeal Br.”). Appeal Br. 1.
2 Claims 6–11 and 13–18 are canceled. Appellants’ Amendment, filed
Apr. 7, 2016, at 2.
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Appellants’ representative presented oral argument on July 3, 2019.
We have jurisdiction over this appeal under 35 U.S.C. § 6(b).

SUMMARY OF DECISION
We REVERSE.

INVENTION
Appellants’ invention relates to a “lightweight protective fabric that is
cut, slash and/or abrasion resistant, and garments made therefrom.” Spec. 1,
ll. 8–9.
Claims 1, 19, and 20 are independent. Claim 1 is illustrative of the
claimed invention and reads as follows:
1. A cut, slash and/or abrasion resistant garment made
from one or more shaped knit fabric panels, wherein the
one or more shaped knit fabric panels comprise:
at least one cut, slash and/or abrasion resistant yarn,
wherein the shaped knit fabric panel is prepared by shaped
knitting and has a cut resistance of at least 500 (as
measured by ASTM-F1790-04) and a fabric weight of no
more than 27.9 ounces/square yard (OPSY),
wherein the shaped knit fabric panel contains no
fiberglass containing yarn;
wherein the garment is a member selected from the
group consisting of shirts, sweaters, vests,
undergarments, pants, jumpsuits, dickeys, and head
coverings.

REJECTION
The Examiner rejects claims 1–5, 12, 19, and 20 under 35 U.S.C.
§ 103(a) as being unpatentable over Kolmes et al. (US 5,644,907, iss. July 8,
Appeal 2017-010653
Application 11/439,273

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1997, hereinafter “Kolmes”) and Dunbar et al. (US 5,119,512, iss. June 9,
1992, hereinafter “Dunbar”).

ANALYSIS
Independent claim 1 requires, inter alia, a “shaped knit fabric panel”
having “a cut resistance of at least 500 (as measured by ASTM-F1790-04)
and a fabric weight of no more than 27.9 ounces/square yard (OPSY).”
Appeal Br. 27 (Claims App.). Similarly, each of independent claims 19 and
20 requires “a cut resistance of from 500 to 6200 (as measured by ASTM-
F1790-04) and a fabric weight of from 7 to 27.9 ounces/square yard
(OPSY).” Id. at 28.
The Examiner finds that Kolmes discloses most of the limitations of
independent claim 1 including, inter alia, a “cut, slash and/or abrasion
resistant garment made from one or more shaped knit fabric panels . . .
compris[ing] at least one cut, slash and /or abrasion resistant yarn” that
“does not contain fiberglass and the resulting knitted panel does not contain
fiberglass.” Final Act. 3–4 (citing Kolmes, Fig. 1). However, the Examiner
finds that Kolmes “does not expressly teach the fabric weight of no more
than 27.9 ounces/square yard.” Id. at 4. Nonetheless, the Examiner finds
that Dunbar discloses “a knitted garment with a fabric weight of less than
27.9 ounces/square yard, for example 13.8 OPSY.” Id.; see also Dunbar,
col. 14, ll. 17–19. Thus, the Examiner concludes that
It would have been obvious at the time the invention was made
to provide the composite protective yarn of Kolmes . . . as a
knitted fabric with a fabric weight of no more than 27.9
ounces/square yard as shown by Dunbar . . . in order to have a
light weight garment with exceptional protection as indicated
by both Kolmes . . . and Dunbar.
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Final Act. 4. The Examiner further finds that the claimed “cut resistance of
at least 500” “is considered inherent” because the claimed material and
fabric weight are disclosed by the combined teachings of Kolmes and
Dunbar. Id.
Appellants argue that the shaped knit panels of the claimed invention
“have a cut resistance of at least 500 (as measured by ASTM-Fl 790-04),
and have a fabric weight of no more than 27.9 OPSY,” whereas the
conventionally knit panels of Kolmes and Dunbar, and the resulting
garments, do not possess such properties. Appeal Br. 15; see also Reply
Brief (filed Aug. 15, 2017, hereinafter “Reply Br.”) 3–4. Appellants note
that Dunbar’s panels are made from ECPE3 fibers, have a fabric weight of
no more than 27.9 OPSY, and exhibit a cutting resistance of 135 grams of
force. Appeal Br. 6–7 (citing Dunbar, col. 14, l. 36–15, l. 9). Thus,
Appellants contend that the Examiner’s position “that a garment made from
ECPE fiber . . . inherently or necessarily would have a cutting resistance of
at least 500 grams of force per cut” is erroneous and “can be no more than
speculation.” Id. at 8, 23 (emphasis added), 24; see also Reply Br. 8.
The Examiner responds that, “Dunbar is cited for a desired fabric
weight and not for the specific yarn material.” See Examiner Answer (dated
June 26, 2017, hereinafter “Ans.”) 8. According to the Examiner, the
claimed yarn material “is found in the primary reference of Kolmes.” Id.
(citing Spec. 5, l. 10).

3 “ECPE” stands for extended-chain polyethylene, which is also known as
ultra high molecular weight polyethylene. See Dunbar, col. 3, ll. 12–15, col.
5, ll. 39–40.
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We agree with the Examiner’s response that the rejection employs the
fiber material of Kolmes, which Appellants’ Specification states “may be
used to practice . . . [the claimed] invention.” See Spec. 5, l. 10; see also
Spec. 5, ll. 6–8, 10 (“Suitable composite yarns which may be formed into
fabric [panels] . . . include, but are not limited to, those as described in . . .
[Kolmes,] U.S. Patent No. 5,644,907.”). However, even though we
appreciate the Examiner’s modification of Kolmes’s fabric to have Dunbar’s
weight of 13.8 OPSY (“no more than 27.9 OSPY”) (see Final Act. 4), we
note that the mere fact that known elements can be combined is not, in itself,
a reason to combine them. Rather, an obviousness rejection further must
explain the reasoning by which those findings support the Examiner’s
conclusion of obviousness. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007). In this case, the rejection fails to meet this required standard.
More specifically, we note that the fabric weight of 13.8 OPSY (i.e.,
“no more than 27.9 . . . OPSY”) of Dunbar’s fabric is based on employing
ECPE fibers, whereas Kolmes discloses a fabric using a composite yarn
having a first strand of a “filament grade 304 stainless steel” wire and a
second strand of a “polyethylene fiber.” See Dunbar, col. 14, ll. 11–12,
col. 15, l. 4, Kolmes, col. 2, ll. 28–32 (emphasis omitted). We further note
that a person of ordinary skill in the art of fabrics would readily
acknowledge that fabric weight measures the mass of a fabric over a given
surface area, and, thus, it depends on the density of the yarn/fiber material of
the fabric. See In re Jacoby, 309 F.2d 513, 516 (CCPA 1962) (An artisan
must be presumed to know something about the art apart from what the
references disclose). As such, because the density of stainless steel is about
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eight times that of polyethylene,4 the same skilled artisan would readily
understand that the resulting weight of Kolmes’s knitted fabric would
likewise be larger than that of Dunbar’s fabric. The Examiner does not
adequately explain how a person of ordinary skill in the art of knitting
fabrics would knit Kolmes’s stainless steel/polyethylene yarn to obtain a
fabric having Dunbar’s weight of 13.8 OPSY (“no more than 27.9 OSPY”).
In other words, the Examiner does not adequately explain how Kolmes’s
fabric, which employs stainless steel fibers that have a density of about eight
times that of Dunbar’s ECPE fibers, can be knitted by a skilled artisan to
obtain a fabric having Dunbar’s fabric weight of 13.8 OPSY (“no more than
27.9 OSPY”).
Furthermore, we appreciate that because Kolmes’s yarn employs
stainless steel fibers as part of a stainless steel/polyethylene composite yarn,
the resulting fabric of Kolmes, as modified by Dunbar, may have a fabric
weight larger than Dunbar’s weight of 13.8 OPSY and less than the claimed
27.9 OSPY. However, without more information, such as the ratio of
stainless steel fibers to polyethylene fibers, such a position would require
speculation on the Examiner’s part.
As such, for the foregoing reasons, the Examiner has not established a
factual basis to show how a skilled artisan would knit Kolmes’s stainless
steel/polyethylene yarn to provide a fabric having Dunbar’s weight of 13.8
OPSY (“no more than 27.9 OSPY”). Therefore, the Examiner’s legal

4 See e.g., http://www.psyclops.com/tools/technotes/materials/density.html
(stainless steel density=7.81 g/cm3; austenitic stainless steel density=8.0
g/cm3; polyethylene density =0.95 g/cm3; ultra high molecular weight
polyethylene density=0.93 g/cm3) (last visited on July 3, 2019).
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conclusion of obviousness is not supported by sufficient factual evidence,
and thus, cannot stand. See In re Warner, 379 F.2d 1011, 1017 (CCPA
1967) (holding that “[t]he legal conclusion of obviousness must be
supported by facts. Where the legal conclusion is not supported by facts it
cannot stand.”). We, thus, do not agree with the Examiner that the claimed
fabric weight is disclosed by the combined teachings of Kolmes and Dunbar.
See Final Act. 4.
Accordingly, we do not sustain the rejection under 35 U.S.C. § 103(a)
of independent claim 1, and its respective dependent claims 2–5 and 12, as
unpatentable over Kolmes and Dunbar. For the same reasons discussed
supra, we also do not sustain the rejection of independent claims 19 and 20
over the combined teachings of Kolmes and Dunbar.

SUMMARY
The Examiner’s decision to reject claims 1–5, 12, 19, and 20 under
35 U.S.C. § 103(a) as unpatentable over Kolmes and Dunbar is reversed.

REVERSED