Patagonia, Inc.

Patent Trials and Appeals Board

May 3, 2021

2020003793 (P.T.A.B. May. 3, 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.
14/446,116 07/29/2014 Kevin Dee PATA-1-2011 9948
25315 7590 05/03/2021
LOWE GRAHAM JONES, PLLC
701 FIFTH AVENUE
SUITE 4800
SEATTLE, WA 98104
EXAMINER
SPATZ, ABBY M
ART UNIT PAPER NUMBER
3732
NOTIFICATION DATE DELIVERY MODE
05/03/2021 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):
docketing-patent@lowegrahamjones.com
patentdocketing@lowegrahamjones.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KEVIN DEE, TETSUYA O’HARA, and RANDALL HARWARD
____________

Appeal 2020-003793
Application 14/446,116
Technology Center 3700
____________

Before STEFAN STAICOVICI, EDWARD A. BROWN, and
BRETT C. MARTIN, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE.
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision in the Final Office Action (dated Aug. 21, 2019, hereinafter “Final
Act.”) rejecting claims 13–20, 35, and 37–39. We have jurisdiction over this
appeal under 35 U.S.C. § 6(b).

SUMMARY OF DECISION
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Patagonia, Inc. is identified as the real party in interest in
Appellant’s Appeal Brief (filed Nov. 21, 2019, hereinafter “Appeal Br.”).
Appeal Br. 1.
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INVENTION
Appellant’s invention relates “to stabilizing insulating spun yarn for
application in cold weather garments.” Spec., para. 1.
Claim 13, the sole independent claim, is representative of the claimed
invention and reads as follows:
13. An insulating garment, the garment including:
an inner layer;
an outer layer;
a first coupling line;
a second coupling line;
an insulating layer disposed intermediate the inner
layer and the outer layer, the insulating layer consisting:
a first bundle structure;
a second bundle structure; and
a plurality of other bundle structures,
wherein each of the first and the second
bundle structures comprises a plurality of yarn strands,
each yarn strand includes a core yarn having a
longitudinal axis and a plurality of at least one of tendrils
and spirals around the core yarn, each of the first and
second bundle structures having a longitudinal axis;
wherein the first bundle structure is disposed
laterally adjacent the second bundle structure, the first
and second bundle structures not being completely
isolated one from the other such that the at least one of
the tendrils and the spirals of both of the first and second
the bundle structures at least partially fill the space
between the plurality of yarn strands of the first and
second bundle structures and provide loft and insulation,
the bundle structures being disposed intermediate the
inner layer and the outer layer; and
the first and the second coupling lines are
each transverse to each of the first and the second bundle
structures’ longitudinal axis, each of the first and second
coupling lines securing at least one of the first and
second bundle structures, wherein
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the first and the second coupling lines are
separated by a predetermined distance;
wherein each of the plurality of other bundle
structures have a plurality of yarn strands, each yarn
strand of the other bundle structures including a core yarn
having a longitudinal axis and a plurality of at least one
of tendrils and spirals around the core yarn of each of the
plurality of other bundle structures, and each of the core
yarns of each of the first bundle structure, the second
bundle structure, and the plurality of other bundle
structures is disposed along a path that is spatially
discontiguous in at least two dimensions relative to each
path along which each of the core yarns of each other one
of the first bundle structure, the second bundle structure,
and the plurality of other bundle structures is disposed
between the inner layer and the outer layer, with each of
the first bundle structure, the second bundle structure,
and the plurality of other bundle structures held side by
side by the coupling lines.

REJECTIONS

I. The Examiner rejects claims 13–20, 35, and 37–39 under 35
U.S.C. § 112(b) as being indefinite.
II. The Examiner rejects claims 13–20, 35, and 37–39 under 35
U.S.C. § 112(a) as failing to comply with the written
description requirement.2,3

2 The Examiner also objected under 35 U.S.C. § 132(a) to an amendment to
the Specification filed on May 10, 2019 on the ground that the amendment
introduced new matter into the original disclosure. The Examiner’s rejection
under 35 U.S.C. § 112(a) for failure to comply with the written description
requirement is related to the objection made by the Examiner to Appellant’s
May 10, 2019, amendment. See Final Act. 3–4.
3As the Examiner’s objection to the Drawings does not refer to the inclusion
of new matter (see Final Act. 2), the objection is a petitionable matter. See
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III. The Examiner rejects claims 13, 14, 16–18, 20, 35, and 37–39
under 35 U.S.C. § 103 as being unpatentable over Sternlieb4
and Ozawa.5,6
IV. The Examiner rejects claim 15 under 35 U.S.C. § 103 as being
unpatentable over Sternlieb, Ozawa, and Reuben. 7
V. The Examiner rejects claim 19 under 35 U.S.C. § 103 as being
unpatentable over Sternlieb, Ozawa, and Pedersen.8
VI. The Examiner rejects claims 13–18, 20, 35, 38, and 39 under 35
U.S.C. § 103 as being unpatentable over Ozawa and Reuben.

ANALYSIS
Rejection I
Independent claim 13 recites, inter alia, that
each of the core yarns of each of the first bundle structure, the
second bundle structure, and the plurality of other bundle
structures is disposed along a path that is spatially
discontiguous in at least two dimensions relative to each path
along which each of the core yarns of each other one of the first
bundle structure, the second bundle structure, and the plurality
of other bundle structures is disposed between the inner layer
and the outer layer.

MPEP §§ 1002 and 1201 (9th Ed., Rev. 10, June 2020). As such, the
objection is not within the jurisdiction of the Board. In re Mindick, 371 F.2d
892, 894 (CCPA 1967).
4 Sternlieb, US 4,858,547, issued Aug.22, 1989.
5 Ozawa et al., US 2013/0136892 Al, published May 30, 2013.
6 Appellant also relies on a declaration filed under 37 C.F.R § 1.132 on
January 8, 2019, by Kristo Torgersen (hereinafter “Torgersen Declaration”
or “Torgersen Decl.”).
7 Reuben, US 5,799,600, issued Sept. 1, 1998.
8 Pedersen et al., US 5,299,333, issued Apr. 5, 1994.
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See Appeal Br. 59 (Claims App.) (emphasis added). The Examiner finds
that the above limitation is indefinite because “it is unclear what path the
applicant is referring to or how the path is defined,” that is, whether the
recited path is “an abstract path or a structural path.” Final Act. 7.
According to the Examiner, the recitation of “a path” can be construed by a
skilled artisan to refer to “each core yarn of each bundle . . . disposed along
. . . one path” or to “a separate path for each core yarn of each bundle.” Id.
at 7–8. The Examiner explains that “it’s unclear how the placement of the
paths limits the placement of the core yarns” because “two core yarns could
extend along 2 different discontiguous paths as claimed and diverge from the
paths to cross each other.” Id. at 8. Thus, according to the Examiner, the
disputed limitation can be construed to mean either that “each core yarn of
each bundle structure is disposed along a separate path from each other core
yarn of each [other] bundle structure such that none of the core yarns cross”
or “that each bundle of core yarns is separated from all other bundles of core
yarns.” Id. Nonetheless, the Examiner concludes to construe this limitation
“to mean the core yarns of each individual bundle are at least partially
separated from the core yarns of all other bundles.” Id.
In response, Appellant contends that interpreting claim 13 “as
referencing a common path shared by all of the core yarns of all
the bundle structures . . . [is] not a reasonable interpretation” because “such
a common path would preclude the recited subject matter regarding spatial
discontiguity in at least two dimensions.” Appeal Br. 53. Rather, according
to Appellant, “independent claim 13 recites spatial discontiguity relative to
paths of each of the core yarns of different bundle structures, not spatial
discontiguity relative to paths of each of the core yarns of the same bundle
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structure.” Id. at 49 (emphasis added). Thus, according to Appellant, the
Examiner’s construction of the disputed limitation “to mean the core yarns
of each individual bundle are at least partially separated from the core yarns
of all other bundles” is not reasonable. Id. at 56.
The Examiner responds that it is not clear from independent claim 13
that the claim language “each other one of the first bundle structure, the
second bundle structure, and the plurality of other bundle structures is
disposed” means that the core yarns of one bundle are only discontiguous
with core yarns of other bundles.” Examiner’s Answer (dated Mar. 5, 2020,
hereinafter “Ans.”) 22. The reason according to the Examiner is that “it is
not clear what the appellant means by ‘a path’, the specification does not
discuss ‘a path’ and furthermore, it is unclear how the placement of the path
or paths limits the placement of the core yarns.” Id. The Examiner explains
that because “two core yarns could extend along 2 different discontiguous
paths as claimed and diverge from the paths to cross each other,” the
language of claim 13 “doesn't necessarily prohibit core yarns from different
bundles from crossing each other.” Id. at 22–23.
We recognize that the definiteness of claim language must be
analyzed, not in a vacuum, but always in light of the teachings of the
particular application disclosure as it would be interpreted by one possessing
the ordinary level of skill in the pertinent art. In re Moore, 439 F.2d 1232,
1235 (CCPA 1971). Here, Appellant’s Specification describes bundle yarn
230 as including multiple yarn strands 220, wherein each yarn strand has a
yarn core 222 and a plurality of tendrils/spirals 224. Spec., paras. 44, 45,
Figs. 2A, 2B. The Specification further describes positioning bundles 330,
having multiple yarn strands, into bundle channels 380, wherein the
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longitudinal axis of bundles 330 corresponds to the longitudinal axis of its
respective yarn strands. Spec., para. 52, Fig. 3C. Appellant’s Figure 6
clearly illustrates a plurality of bundle structures located in respective bundle
channels, wherein each bundle structure includes a plurality of yarn strands.
See also Spec., para. 77. As such, in light of Appellant’s Specification and
Drawings, a skilled artisan would understand that the term “path,” as
employed in independent claim 13, refers to the orientation of the core yarn,
that is, the route or direction along which the core yarn is disposed, and not
a physical or structural feature. Such a construction is also consistent with
an ordinary and customary meaning of the term “path,” which is a “route or
course along which something travels or moves.”9
Accordingly, we agree with Appellant that the plain language of
independent claim 13, when read in light of Appellant’s disclosure, requires
that the path, that is, an orientation, of each core yarn of each bundle
structure to be “spatially discontiguous in at least two dimensions” relative
to each path, i.e., orientation, of each core yarn of each other bundle
structure. Reply Brief (filed Apr. 21, 2020, hereinafter “Reply Br.”) 8.
Stated differently, it is clear that each of the core yarns of each bundle
structure in independent claim 13 is oriented, i.e., disposed along a path,
such that it is “spatially discontiguous in at least two dimensions” with
respect to the orientation, i.e., path, of the core yarns of each other bundle
structure. Put simply, “the core yarns of each bundle structure do not
overlap the core yarns of the other bundle structures.” See Torgersen Decl.,
para. 8.

9 See The Free Dictionary, https://www.thefreedictionary.com/path (last
visited April 15, 2020).
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As such, for the foregoing reasons, the Examiner’s construction that
“the core yarns of each individual bundle are at least partially separated
from the core yarns of all other bundles” is not reasonable in light of
Appellant’s Specification and Drawings, and the plain language of claim 13.
See Final Act. 8 (emphasis added). Core yarns that are “at least partially
separated” would preclude the recited subject matter regarding spatial
“discontiguity in at least two dimensions” because of partial overlapping of
the core yarns of different bundles.
In addition, we note that by not specifying the exact path along which
the core yarns extend, independent of claim 13 is merely broad, not
indefinite. See In re Johnson, 558 F.2d 1008, 1016 n.17 (CCPA 1977)
(breadth is not indefiniteness). That is to say, it is clear that the claim
requires core yarns of each bundle structure to not overlap the core yarns of
other bundle structures, that is, to be “spatially discontiguous in at least two
dimensions;” no further detail is necessary to know the metes and bounds of
the claim.
In conclusion, for the foregoing reasons, we do not sustain the
rejection under 35 U.S.C. § 112(b) of claims 13–20, 35, and 37–39 as being
indefinite.

Rejection II
The Examiner finds that Appellant’s Specification and Drawings “do
not . . . [support] each core yarn of each bundle structure extending along
separate paths that are spatially discontiguous in at least two dimensions
relative to each of the core yarns of each other one of the bundle structures,”
as called for by independent claim 13. See Final Act. 5. According to the
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Examiner, such support is lacking because the “originally filed specification
and drawings do not discuss or point out [such] a path.” Id. The Examiner
is not persuaded by Appellant’s reference to Figures 3C, 6, 7, 9A, and 9b as
support for the disputed limitation because claim 13 does not recite “that
none of the core yarns of the bundle structures overlap any core yarns of
other bundle structures.” Id.
In response, Appellant argues that “because the longitudinal axis of a
bundle structure is defined by a path through the centroid of each of the
cross sections of the bundle structure from one end to the other,” all core
yarns within a bundle extend along the same path. Appeal Br. 54 (citing
Spec., para. 52) (“The longitudinal axis of bundle 330 . . . is also the
longitudinal axis of the strands of yarn that are included in bundle 330.”).
Thus, Appellant contends that because “each of the core yarns of the bundle
structure are disposed along the path of the longitudinal axis of the bundle
structure,” “the longitudinal axis of each bundle structure is spatially
discontiguous in at least two dimensions relative to each longitudinal axis of
each other bundle structure.” Id. at 55 (citing Spec., Figs. 10A, 10B); Reply
Br. 8. Accordingly, Appellant asserts that the original disclosure supports
that “a path of each core yarn of each bundle structure is spatially
discontiguous in at least two dimensions relative to each path of each core
yarn of each other bundle structure.” Reply Br. 8 (emphasis added).
The purpose of the written description requirement in 35 U.S.C.
§ 112, first paragraph, is to “clearly allow persons of ordinary skill in the art
to recognize that [the inventor] invented what is claimed.” Ariad Pharm.,
Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (citing Vas-
Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1562–63 (Fed. Cir. 1991)). “[T]he
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test for sufficiency is whether the disclosure of the application relied upon
reasonably conveys to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date.” Id. This test
“requires an objective inquiry into the four corners of the specification from
the perspective of a person of ordinary skill in the art.” Id.
We are not persuaded by Appellant’s arguments because the original
disclosure does not support that the claimed “path” is the respective
longitudinal axis of bundle structures. As discussed supra, the term “path,”
as employed in independent claim 13, refers to the orientation of the core
yarn, that is, the route or direction along which the core yarn is disposed,
and not the longitudinal axis of the bundle structure. Just because the
longitudinal axis of a yarn strand corresponds to the longitudinal axis of a
bundle structure does not mean that the “path” of each yarn core is the same
as the longitudinal axis of the bundle structure. For example, in Appellant’s
Figure 6 the “path” of each yarn strand forming a bundle (the sinusoidal
lines located within a pair of adjacent tacks) is not illustrated as being the
same as the longitudinal axis of the bundle.
Hence, although the original disclosure may support that “the
longitudinal axis of each bundle structure is spatially discontiguous in at
least two dimensions relative to each longitudinal axis of each other bundle
structure,” this does not mean that the “path” of each yarn core exhibits the
same relationship. In other words, independent claim 13 recites spatial
discontiguity relative to “paths” of each of the core yarns of different bundle
structures, not spatial discontiguity relative to the longitudinal axes of
different bundle structures.
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In conclusion, for the foregoing reasons, we find that Appellant’s
original disclosure does not reasonably convey to an artisan that the inventor
had possession of the claimed subject matter. Accordingly, we sustain the
rejection under 35 U.S.C. § 112(a) of claims 13–20, 35, and 37–39 as failing
to comply with the written description requirement.
As noted above, the Examiner also objected under 35 U.S.C. § 132(a)
to an amendment to the Specification filed on May 10, 2019, on the grounds
that the amendment introduced new matter into the original disclosure.
Final Act. 3–4. Ordinarily, an objection is reviewable by petition under 37
C.F.R. § 1.181 and a rejection is appealable to the Patent Trial and Appeal
Board. When the issue of new matter presented is the subject of both an
objection and a rejection, the issue is appealable. MPEP § 2163.06 (II) (“If
both the claims and specification contain new matter either directly or
indirectly, and there has been both a rejection and objection by the examiner,
the issue becomes appealable and should not be decided by petition.”). To
the extent that the objection to the Specification in the Final Office Action
turns on the same issues as the rejection under 35 U.S.C. § 112(a) our
decision with respect to the rejection is dispositive as to the corresponding
objection.

Rejection III
The Examiner finds Sternlieb discloses most of the limitations of
independent claim 13 including, inter alia, an insulating layer located
between inner layer 18 and outer layer 16, wherein the insulating layer
includes first structure C having a core yarn, second core structure D having
a core yarn, and a plurality of other structures 22 (not C or D). See Final
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Act. 9, 17 (Examiner’s annotated Figures 3 and 4 of Sternlieb). The
Examiner further finds that
the core yarns of the first structure, second structure and
plurality of other structures are disposed along a path that is
spatially discontiguous in at least two dimensions relative to
each path along which each of the core yarns of each other one
of the first structure, the second structure, and the plurality of
other structures is disposed.
Id. at 9–10 (citing Sternlieb, Figs. 2, 4). The Examiner further finds that
Sternlieb fails to disclose “bundle structures,” as called for by independent
claim 13, and relies on Ozawa’s bundle structure 8 (in A2 (first structure),
B2 (second structure), and C2/D2 (plurality of other structures)) having a
plurality of yarn strands, wherein each strand includes a core yarn 42 and a
plurality of tendrils/spirals 41. See id. at 10–11, 16 (Examiner’s annotated
Figure 1 of Ozawa); see also Ozawa, Fig. 2. Thus, the Examiner concludes
that it would have been obvious for a skilled artisan to have replaced
Sternlieb’s first and second structures C, D with Ozawa’s first and second
bundle structures 8 having a plurality of yarn strands (core yarn 42 and a
plurality of tendrils/spirals 41) “in order to increase warmth and insulation of
the invention.” Id. at 11.
Appellant argues that a person of ordinary skill in the art would not
have expected that modifying Sternlieb insulation layer 20 with a single
layer of Ozawa’s core yarns 12 would provide sufficient insulation for cold
weather activities. Appeal Br. 17 (citing Torgersen Decl., para. 21).
In response, the Examiner notes that Appellant’s “claim 13 does not
require a single layer of core yarns.” Ans. 13. According to the Examiner,
because Sternlieb discloses “a desire to increase insulation properties by way
of intermediate layer 20,” a skilled artisan “would recognize that increased
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insulation in a bed spread as provided by the Sternlieb/Ozawa . . .
[combination] is beneficial because it increases warmth to the user.” Id.
(citing Sternlieb, col. 2, ll. 21–24 (disclosing a bed spread), col. 3, ll. 65–67,
col. 4, ll. 1–6).
Patentability determinations “should be based on evidence rather than
on mere speculation or conjecture.” Alza Corp. v. Mylan Laboratories, Inc.,
464 F. 3d 1286, 1290 (Fed. Cir. 2006). In this case, the Examiner does not
provide any support for the allegation that modifying Sternlieb’s yarn
strands C, D, 22 of insulation (intermediate) layer 20 to include Ozawa’s
bundle structure 8 would “increase warmth and insulation.” See Final Act.
11. Appellant is correct that a skilled artisan would readily expect that
Ozawa’s bundle structure provides for improved insulation because of its
stacked layer design. See Torgersen Decl., para. 18 (citing Ozawa, para. 32,
Figs. 2, 3). However, the Examiner’s modification replaces Sternlieb’s
separated yarn strands C, D, 22 of insulation (intermediate) layer 20 with
Ozawa’s bundle structures 8. Hence, Appellant is correct that the resulting
insulation layer of Sternlieb, as modified by Ozawa, will include gaps
between bundle structures 8, without the multiple stacked layers of Ozawa,
and, thus, a skilled artisan would have expected a high level of heat
conductivity, i.e., reduced insulation properties, due to existing gaps. See
Torgersen Decl., para. 21; see also Sternlieb, Fig. 2. Accordingly, the
Examiner’s articulated reasoning to combine the teachings of Sternlieb and
Ozawa, namely, to “increase warmth and insulation” is not supported by a
preponderance of the evidence of the record before us.
Furthermore, we appreciate the Examiner’s position that independent
claim 13 does not require a single layer of core yarns. See Ans. 13.
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However, as discussed supra in Rejection I, we construe independent claim
13 to require that yarns of each bundle structure do not overlap the core
yarns of other bundle structures, that is, to be “spatially discontiguous in at
least two dimensions.” In contrast, Sternlieb discloses intermediate
(insulating) layer 20 as including yarn strands 22 that “partially overlap each
other,” i.e., are “substantially parallel.” See Sternlieb, col. 3, ll. 33–39, Fig.
2 (illustrates overlapping of yarn strands 22a, 22b). As noted above, the
Examiner’s rejection modifies Sternlieb’s insulation (intermediate) layer 20
to replace yarn strands C, D, 22 with Ozawa’s bundle structures 8, and, thus,
the resulting combination will include an insulation layer 20 having a
plurality of Ozawa’s bundle structures 8 that are “substantially parallel,” that
is, which partially overlap. The Examiner has not adequately explained why
a person of ordinary skill in the art would have further modified Sternlieb’s
insulation (intermediate) layer 20 with Ozawa’s bundle structure 8 such that
the core yarns of the resulting bundle structures do not overlap, as required
by independent claim 13.
In conclusion, for the foregoing reasons, we do not sustain the
rejection under 35 U.S.C. § 103 of independent claim 13, and its dependent
claims 14, 16–18, 20, 35, and 37–39 as unpatentable over Sternlieb and
Ozawa.10 See Appeal Br. 25–35 (discussing the rejection of dependent
claims 18, 20, 38, and 39).

10 As we have determined that the Examiner failed to articulate a reason with
a rational underpinning to support the combination of the teachings of
Sternlieb and Ozawa in the manner claimed, we do not need to reach the
evidence of secondary considerations of non-obviousness submitted by the
Appellant, as applied to this rejection.

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Rejections IV and V
The Examiner’s use of the Reuben and Pedersen disclosures does not
remedy the deficiency of the Sternlieb and Ozawa combination discussed
above in Rejection III. See Final Act. 20–24; see also Appeal Br. 26–30.
Therefore, for the same reasons discussed supra, we also do not sustain the
rejections under 35 U.S.C. § 103 of claim 15 as unpatentable over Sternlieb,
Ozawa, and Reuben and of claim 19 as unpatentable over Sternlieb, Ozawa,
and Pedersen.

Rejection VI
Claim 13
The Examiner finds Ozawa discloses most of the limitations of
independent claim 13 including, inter alia, an insulating layer 8 located
between inner layer 2b and outer layer 2a, wherein the insulating layer
includes first bundle structure (fiber wads 8 in A) and second bundle
structure (fiber wads 8 in B), disposed laterally adjacent to each other along
longitudinal axes C and D, respectively. See Final Act. 25, 32 (see below
Examiner’s annotated Figure 1 of Ozawa) (citing Ozawa, paras. 45, 46, 59,
Figs. 1, 2). The Examiner further finds that each bundle structure includes a
plurality of yarn strands, i.e., fiber wads 8, wherein each yarn strand has a
core yarn 42 and a plurality of tendrils/spirals 41. Id. at 25 (citing Ozawa,
paras. 31, 49, 58, Fig. 10). For a better understanding of the Examiner’s
findings, we reproduce below the Examiner’s annotated Figure 1 of Ozawa:
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The Examiner’s annotated Figure 1 of Ozawa illustrates garment 1
including first coupling line 6, second coupling line C, transverse stitching
7a, 7b, 7c, first bundle structure A, second bundle structure, a plurality of
other bundle structures H, H1, and longitudinal axes D, E of bundle
structures. Id. at 32. The Examiner further finds that because the core yarns
of first, second, and other bundles A, B, H/H1 are separated by stitching 7a,
7b, 7c and coupling line 6, C, Ozawa discloses the claimed spatially
discontiguous relationship of claim 13. See id. at 26. However, the
Examiner finds that Ozawa does not disclose that the bundle structures are
not “completely isolated” to allow the tendrils/spirals of the yarn strands of
the bundle structures to partially fill the space between the bundle structures.
Id. Nonetheless, the Examiner finds that Reuben discloses tack stitching 15
between two bundle structures a, b. Id. at 26–27 (citing col. 2, ll. 53–67, col.
3, ll. 1–7, Figs. 1, 2). Thus, the Examiner concludes that it would have been
obvious for a person of ordinary skill
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to have made stitching 7a-7c of Ozawa tack stitching as taught
by Reuben so that the first and second bundle structures are not
being completely isolated one from the other such that the at
least one of the tendrils and the spirals of both of the first and
second the bundle structures at least partially fill the space
between the plurality of yarn strands of the first and second
bundle structures in order to eliminate cold spots and increase
flexibility and pliability of the garment.
Id. at 27 (citing Reuben, Abstract).
Appellant argues that Ozawa fails to teach that “each of the core yarns
of each of the first bundle structure, the second bundle structure, and the
plurality of other bundle structures is disposed along a path that is spatially
discontiguous in at least two dimensions,” as called for by independent
claim 13. Appeal Br. 23. According to Appellant, the core yarns of
Ozawa’s bundles are not “disposed along a path that is spatially
discontiguous in at least two dimensions,” as required by claim 13, because
“each fiber wad 8 of Ozawa is laterally adjacent other fiber wads 8 and is
also stacked above or below other fiber wads 8.” Id. In particular,
Appellant asserts that “the path of the core yarns 12a, 12b of each fiber wad
8 of Ozawa is spatially contiguous with the paths of each of the core yarns
12a, 12b of all of the fiber wads 8 above and below it when viewed along the
vertical dimension.” Id. at 24 (emphasis added). Appellant further asserts
that “[t]he path of the core yarns 12a, 12b of each fiber wad 8 of Ozawa is
spatially contiguous with the paths of each of the core yarns 12a, 12b of all
of the fiber wads 8 to the left and right of it when viewed along the lateral
dimension” parallel to stitching lines 7a–7c. Id. (emphasis added); see also
Torgersen Decl., paras. 17, 19.
We are not persuaded by Appellant’s arguments because such
arguments are not commensurate with the Examiner’s rejection. In
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particular, we agree with the Examiner that Appellant is incorrectly
“construing that A includes multiple bundle structures and B includes
multiple bundle[] structures,” wherein such . . . bundle structures are above
and below each other.” Ans. 12. In contrast to Appellant’s position, we
understand the Examiner’s construction of Ozawa to include first bundle
structure A, second bundle structure B, and a plurality of other bundle
structures H, H1, wherein each bundle structure includes top fiber wads 8
(yarn strands) extending along longitudinal axis D, E in each of the
respective bundle structures. See Ans. 11; see also Ozawa, Figs. 1, 2. We
further understand that each fiber wad 8 (yarn strand) in each bundle
structure A, B, H/H1 has a core yarn 42 and a plurality of tendrils/spirals 41.
See Ans. 11; see also Ozawa, Fig. 10. As such, because each bundle
structure A, B, H/H1 includes only top fiber wads 8 (yarn strands) extending
along longitudinal axis D, E, the path of Ozawa’s core yarns 42 is spatially
discontiguous along both the vertical (top to bottom in Ozawa’s Figure 2)
and the lateral (parallel to stitching 7a–7c in Ozawa’s Figure 1) dimensions.
See Ozawa, Figs. 1, 2. In other words, because each bundle structure A, B,
H/H1 includes only top fiber wads 8 (yarn strands) extending along
longitudinal axis D, E, Ozawa’s core yarns 42 cannot be spatially contiguous
along the vertical dimension, as Appellant asserts. See Ozawa, Fig. 2.
Furthermore, as top fiber wads 8 (yarn strands) of bundle structures A, B,
and H/H1 extend parallel along longitudinal axis D, E between seam lines 4,
5, and bundle structures A, B, and H/H1 are separated by stitching 7a–7c,
Ozawa’s core yarns 42 of bundle structures A, B, and H/H1 cannot be
spatially contiguous along the lateral dimension as well. See id., paras. 45,
49, Figs. 1, 2.
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Referring to the Torgersen Declaration, Appellant further argues that
“the claimed invention is non-obvious over Ozawa and Reuben because the
novel aspects of the claimed invention (a) met long-felt but unsolved needs,
(b) received industry praise, and (c) achieved commercial success.” Appeal
Br. 25.
When evidence in rebuttal of obviousness is presented, it is our duty
to consider all evidence anew. See, e.g., In re Eli Lilly and Co., 902 F.2d
943, 945 (Fed. Cir. 1990). We are also mindful that objective evidence of
non-obviousness in any given case may be entitled to more or less weight
depending on its nature and its relationship with the merits of the invention.
See Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538–39 (Fed. Cir.
1983). Accordingly, we consider anew the issue of obviousness under
35 U.S.C. § 103, carefully evaluating and weighing both the evidence relied
upon by the Examiner and the objective evidence of non-obviousness
provided by Appellant.
In this case, the secondary considerations of (a) long-felt but unsolved
needs, (b) industry praise, and (c) commercial success are the result of the
novel aspects of the claimed invention, which the Torgersen Declaration
describes as an
insulating layer consisting of the rows of bundle structures that
have yarn strands that each include a core yarn and multiple
tendrils or spirals around the core yarn, with each of the core
yarns of each of the bundle structures in the insulating layer
disposed along a path that is spatially discontiguous in at least
two dimensions relative to each path along which each of the
core yarns of each other bundle structure in the insulating layer
is disposed.
Torgersen Decl., para. 13. In particular, the Torgersen Declaration states
that the novel aspects of the claimed insulating layer noted above solved
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a long-felt need (see Torgersen Decl., paras. 2–5; Appeal Br. 15–18),
resulted in industry praise (see Torgersen Decl., paras. 9–12; Appeal Br. 18–
20), and commercial success (see Torgersen Decl., para. 14; Appeal Br. 20–
22).
We appreciate that “when secondary considerations are present,
though they are not always dispositive, it is error not to consider them.” In
re Huai–Hung Kao, 639 F.3d 1057, 1067 (Fed. Cir. 2011). “For objective
evidence of secondary considerations to be accorded substantial weight, its
proponent must establish a nexus between the evidence and the merits of the
claimed invention.” Kao, 639 F.3d at 1068 (emphasis and internal quotation
marks omitted) (quoting Wyers v. Master Lock Co., 616 F.3d 1231, 1246
(Fed. Cir. 2010)). However, “[a] nexus may not exist where, for example,
the merits of the claimed invention were ‘readily available in the prior art.’”
Classco, Inc. v. Apple, Inc., 838 F.3d 1214, 1220 (Fed. Cir. 2016) (quoting
Richdel, Inc. v. Sunspool Corp., 714 F.2d 1573, 1580 (Fed. Cir. 1983)).
Here, as discussed supra, Ozawa discloses the claimed novel features of an
insulating layer including bundle structures A, B, H/H1 having fiber wads 8
(yarns strands) extending along longitudinal axis D, E, wherein each fiber
wad 8 (yarn strand) includes a core yarn 42 and a plurality of tendrils/spirals
41. Also discussed above is Ozawa’s disclosure of the path of core yarns 42
of first bundle structure A being spatially discontiguous along vertical and
lateral dimensions, i.e., in at least two dimensions, with the path of core
yarns 42 of other bundle structure B, H/H1. Hence, because Ozawa
discloses the novel features of the claimed insulating layer, we agree with
the Examiner that “Appellant’s declaration does not provide sufficient proof
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that a nexus exists between the merits of the claimed invention and the
evidence of secondary consideration.” Ans. 6.
In conclusion, after reviewing all of the evidence before us, including
the totality of Appellant’s evidence, on balance, the evidence of obviousness
discussed above outweighs the evidence of nonobviousness submitted by
Appellant and, accordingly, the subject matter of claim 13 would have been
obvious to a skilled artisan within the meaning of 35 U.S.C. § 103(a) at the
time Appellant’s invention was made. Therefore, we sustain the rejection
under 35 U.S.C. § 103 of claim 13 as unpatentable over Ozawa and Reuben.

Claims 14–17, 20, and 35
Appellant relies on the arguments discussed supra in the rejection of
independent claim 13 from which these claims depend. See Appeal Br. 35.
Therefore, for the same reasons discussed above, we likewise sustain the
rejection under 35 U.S.C. § 103 of claims 14–17, 20, and 35 as unpatentable
over Ozawa and Reuben.11
Claim 18
Claim 18 depends from claim 13 and adds the limitation “wherein
each of the plurality of yarn strands of each the first and second bundle
structures includes at least 30 yarn strands.” Appeal Br. 60 (Claims App.).
The Examiner finds that the combined teachings of Ozawa and
Reuben fail to disclose that “each of the plurality of yarn strands of each [of]

11 Although Appellant’s Appeal Brief discusses the rejection of dependent
claim 20 under a separate heading (see Appeal Br. 30–31), the arguments
refer to Rejection III based upon the combined teachings of Sternlieb and
Ozawa. Such arguments are moot in light of our reversal of Rejection III
discussed supra.
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the first and second bundle structures includes at least 30 yarn strands.”
Final Act. 29. However, the Examiner finds that Ozawa discloses a yarn
length ranging from “several tens of centimeters to several hundreds of
thousands of meters or more which can be folded or cut to a predetermined
length to create the bundles.” Id. (citing Ozawa, para. 45). Thus, in a first
instance, the Examiner takes the position that “it has been held that where
the general conditions of a claim are disclosed in the prior art ([y]arn length
of Ozawa), discovering the optimum or workable ranges involves only
routine skill in the art.” Id. In a second instance, the Examiner determines
that it would have been obvious for a person of ordinary skill in the art to
provide at least 30 yarn strands to each of Ozawa’s first and second bundle
structures (A, B), as modified by Reuben, “in order to provide desired heat
properties, loft and filling for the garment.” Id.
Appellant argues that “[t]he lengths of the yarns taught by Ozawa is
untethered from the number of yarns in a fiber wad 8 of Ozawa” because
“[f]olding or cutting a yarn to a predetermined length does not change the
number of yarns in the fiber wad 8.” Appeal Br. 26. Furthermore,
Appellant notes that “[t]he record is devoid of any evidence showing that
‘desired heat properties, loft and filling for the garment’ would or even could
be achieved by increasing the number of core yarns 12a, 12b in each fiber
wad 8 of Ozawa from two to at least 30.” Id.
We note that the Examiner’s rejection is not “increasing the number
of core yarns 12a, 12b in each fiber wad 8 of Ozawa from two to at least
30,” but rather modifies the number of fiber wads 8, which includes core
yarn 42 and tendrils/spirals 41, in Ozawa’s bundle structures A, B, and
H/H1, as modified by Reuben. See Appeal Br. 26; Ans. 13. Nonetheless,
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the lack of an express disclosure of a particular claim element does not
defeat a rejection under 35 U.S.C. § 103(a), and such a requirement would
essentially defeat the purpose of 35 U.S.C. § 103(a). We must attribute skill
to the hypothetical person described in 35 U.S.C. § 103(a). In re Sovish, 769
F.2d 738, 742 (Fed. Cir. 1985). The fact that some judgment and
mechanical skill may be required to select the appropriate number of yarn
strands, i.e., fiber wads 8, in each of Ozawa’s bundle structures A, B, and
H/H1, as modified by Reuben, to arrive at the recited combination does not
necessarily mean that such combination constitutes a nonobvious invention.
Graham v. John Deere Co. of Kansas City, 383 US 1, 10–12 (1966)
(discussing Hotchkiss v. Greenwood, 11 How. 248 (1851)). A skilled artisan
in the art of insulating garments would know that the insulation, loft, and
filling properties of Ozawa’s garment, as modified by Reuben, depend on
the number of fiber wads 8. 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 reference discloses.). A person of ordinary skill in the art
would readily acknowledge that too few number of yarn strands, i.e., fiber
wads 8, in each of Ozawa’s bundle structures A, B, and H/H1, as modified
by Reuben, would result in gaps between the fiber wads, and, thus result in
“cold spots.” See, e.g., Pederson, col. 1, ll. 61–63; Reuben, col. 1, ll. 23–25.
For example, Appellant recognizes that when too few number of yarn
strands are used, such as Sternlieb’s strands 22, the resulting gaps between
the strands exhibit high heat conductivity, and, thus, lower insulation
properties. See Torgersen Decl., para. 16; see also Sternlieb, Fig. 2.
Furthermore, the Examiner is correct that for filling a sized garment,
as the length of Ozawa’s fiber wad 8 increases, the resulting number of fiber
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wads also increases. See Ans. 13 (“[I]f there is 50 cm of yarn folded over
itself to extend along a certain length and the yarn is cut to form a bundle of
yarns, there will be fewer yarns than if there is 1000 cm of yarn folded over
itself to extend along the same length.”); see also Ozawa, para. 49 (“[T]he
long-fiber wad 8 may be cut to a predetermined length.”). Therefore, as
Ozawa discloses varying the length of long-fiber wads 8 and cutting the
long-fiber wads to a predetermined length, to fill a sized garment, Ozawa
implicitly discloses “varying the number of yarns per bundle to suit the
article being filled.” Id. Accordingly, we consider the number of yarn
strands of claim 18, that is, “at least 30 yarn strands,” to be the product of
routine optimization rather than innovation. See, e.g., In re Applied
Materials, Inc., 692 F. 3d 1289, 1294–98 (Fed. Cir. 2012). Therefore, for
the foregoing reasons, we sustain the rejection under 35 U.S.C. § 103 of
claim 18 as unpatentable over Ozawa and Reuben.

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Claims 38 and 39
Claims 38 depends from claim 13 and adds the limitation “wherein at
least one of the tendrils and the spirals have a length that is greater than a
separation between the first bundle structure and the second bundle
structure.” Appeal Br. 61 (Claims App.). Claim 39 similarly depends from
claim 13 and adds the limitation “wherein at least one of the tendrils and the
spirals extend completely across a separation between the first bundle
structure and the second bundle structure.” Id. at 62.
The Examiner determines that it would have been obvious for a
person of ordinary skill in the art to further modify the insulation layer of
Ozawa, as modified by Reuben, to have the features of claims 38 and 39
noted above, “in order to avoid cold spots and provide even insulation and
padding.” Final Act. 30–31.
Appellant argues that “Ozawa does not teach that the effect yarns 11
have a length that is greater than the separation between two fiber wads 8
that are in the same non-stacked layer.” Appeal Br. 33. Similarly, in
regards to claim 39, Appellant argues that “Ozawa does not teach that the
effect yarns 11 extend between fiber wads 8 that are in the same non-stacked
layer.” Id. at 34. According to Appellant, because the art of record fails to
suggest the Examiner’s modification, the rejection is based on impermissible
hindsight. Id. at 33, 35.
We are not persuaded by Appellant’s argument that the Examiner’s
determination of obviousness is based on impermissible hindsight
reconstruction. The Examiner has provided an adequate reasoning with
rational underpinning (“to avoid cold spots and provide even insulation and
padding”). See Ans. 18, 19; In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)
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(“[R]ejections on obviousness grounds [require] some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness”) (cited with approval in KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007)). Moreover, the Examiner is correct that it is known in
the art of record, as per Reuben and Pederson, that “providing even
insulation thereby avoiding cold spots is beneficial.” Ans. 18 (citing
Reuben, Abstr.; Pederson, col. 4, ll. 37–41. Although Appellant asserts that
the Examiner has failed to point to evidence showing the reasoning to
further modify the insulation layer of Ozawa, as modified by Reuben, to
have the features of claims 38 and 39, Appellant does not adequately
challenge the truth of the finding. See In re Fox, 471 F.2d 1405, 1406-07
(CCPA 1973) (affirming rejection under 35 U.S.C. § 103 without citation of
any prior art based on facts that were unchallenged by the appellant).
Therefore, we are not persuaded that the Examiner relied on impermissible
hindsight, as Appellant asserts, rather than the knowledge of those skilled in
the art at the time of the invention.
In conclusion, for the foregoing reasons, we sustain the rejection
under 35 U.S.C. § 103 of claims 38 and 39 as unpatentable over Ozawa and
Reuben.12

12 Appellant’s arguments regarding the rejection of claims 38 and 39 based
upon the combined teachings of Sternlieb and Ozawa are moot in light of
our reversal of Rejection III discussed supra.
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CONCLUSION

Claim(s)
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
13–20, 35,
37–39
112(b) Indefiniteness 13–20, 35,
37–39
13–20, 35,
37–39
112(a) Written description 13–20, 35,
37–39

13, 14,
16–18, 20,
35, 37–39
103 Sternlieb, Ozawa 13, 14,
16–18, 20,
35, 37–39
15 103 Sternlieb, Ozawa,
Reuben
15
19 103 Sternlieb, Ozawa,
Pedersen
19
13–18, 20,
35, 38, 39
103 Ozawa, Reuben 13–18, 20,
35, 38, 39

Overall
Outcome
13–20, 35,
37–39

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