14377636 - (D) (P.T.A.B. Jun. 1, 2020)

PHP FIBERS GMBH

Patent Trials and Appeals BoardJun 1, 2020

14377636 - (D) (P.T.A.B. Jun. 1, 2020)

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. 14/377,636 08/08/2014 Marianne Bongartz 162499 7863 25944 7590 06/01/2020 OLIFF PLC P.O. BOX 320850 ALEXANDRIA, VA 22320-4850 EXAMINER WIECZOREK, MICHAEL P ART UNIT PAPER NUMBER 1712 NOTIFICATION DATE DELIVERY MODE 06/01/2020 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): OfficeAction25944@oliff.com jarmstrong@oliff.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MARIANNE BONGARTZ, ANDREAS FLACHENECKER, CHRISTIAN VIETH, JOACHIM CZIOLLEK, and ALEXANDER THIENEL Appeal 2019–004143 Application 14/377,636 Technology Center 1700 Before ROMULO H. DELMENDO, BEVERLY A. FRANKLIN, and GEORGE C. BEST, Administrative Patent Judges. FRANKLIN, 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 1–6, 8, 9, 16, and 18. We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing was held on April 1, 2020. We REVERSE. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as PHP FIBERS GMBH. Appeal Br. 1. Appeal 2019-004143 Application 14/377,636 2 CLAIMED SUBJECT MATTER Claim 1 is illustrative of Appellant’s subject matter on appeal and is set forth below: 1. A method for producing a ribbon yarn comprising: spreading a yarn made of multifilament such that not more than five filaments overlie one another, wherein the multifilament are based on polyamide and/or polyester, and the individual filaments forming the multifilament yarn are aligned parallel and are side-by-side, fixing the yarn by forming a matrix comprising one or more fixing agents, wherein at least one of the one or more fixing agents are selected from a group consisting of copolyamides, copolyesters, silicones, a copolyamide in aqueous suspension or as an ethanol/aqueous solution, and mixtures or blends thereof, and wherein an amount of the applied one or more fixing agents is in a range of from 0.1 wt.% to 30 wt.% relative to the weight of the multifilament yarn, and optionally winding the fixed yarn, wherein the ribbon yam is suitable for forming an airbag. Appeal 2019-004143 Application 14/377,636 3 REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Sasaki et al. US 4,874,658 Oct. 17, 1989 Dyksterhouse et al. US 4,894,105 Jan. 16, 1990 Chen US 5,002,823 Mar. 26, 1991 Moriwaki et al. US 5,989,660 Nov. 23, 1999 Beraud et al. US 2012/0015135 A1 Jan. 19, 2012 REJECTIONS 1. Claims 1, 2, 5, 16, and 18 are rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Sasaki in view of Moriwaki. 2. Claims 3 and 4 are rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Sasaki in view of Moriwaki as applied to claim 1 above, and further in view of Beraud and Dyksterhouse. 3. Claim 6 is rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Sasaki in view of Moriwaki as applied to claim 1 above, and further in view of Chen. 4. Claims 8 and 9 are rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Sasaki in view of Moriwaki as applied to claim 1 above, and further in view of Beraud. OPINION We review the appealed rejections for error based upon the issues identified by Appellant and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential), (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”)). After considering the Appeal 2019-004143 Application 14/377,636 4 evidence presented in this Appeal (including the Examiner’s Answer, the Appeal Brief, and the Reply Brief), we are persuaded that Appellant identifies reversible error. Thus, we reverse the Examiner’s rejections. The dispositive issue in this case is whether Sasaki suggests the claimed amount of fixing agent of from 0.1 wt.% to 30 wt.% relative to the weight of the multifilament yarn (as recited in each of independent claims 1 and 18). We are persuaded by Appellant’s arguments on this issue for the reasons set forth on pages 5–7 of the Appeal Brief. Therein, Appellant explains how Sasaki does not disclose the claimed amount. Appellant also persuasively explains that modifying Sasaki as proposed by the Examiner, in an effort to meet the claimed amount, is contrary to Sasaki’s principle of operation. Appeal Br. 7–8, Reply Br. 2–5. “If the proposed modification or combination of the prior art would change the principle of operation of the prior art invention being modified, then the teachings of the references are not sufficient to render the claims prima facie obvious.” In re Ratti, 270 F.2d 810, 813 (CCPA 1959). We also agree with Appellant’s argument that the Examiner’s position that the amount of fixing agent is an obvious discoverable design, via routine optimization, is not well-founded. As Appellant submits (Appeal Br. 8–9; Reply Br. 5–7), optimization still would not have led one of ordinary skill in the art to the ranges recited in claims 1 and 18 because throughout Sasaki, Sasaki's sheet is described as a replacement for steel sheets, and one skilled in the art would have optimized within the range described in Sasaki to ensure that a high mechanical strength sheet for use in place of steel, as required by Sasaki, is achieved. In view of the above, we reverse Rejections 1–4. Appeal 2019-004143 Application 14/377,636 5 CONCLUSION We reverse the Examiner’s decision. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 5, 16, 18 103(a) Sasaki, Moriwaki 1, 2, 5, 16, 18 3, 4 103(a) Beraud, Dyksterhouse 3, 4 6 103(a) Sasaki, Moriwaki, Chen 6 8, 9 103(a) Sasaki, Moriwaki, Beraud 8, 9 Overall Outcome 1–6, 8, 9, 16, 18 REVERSED