Young-Hwa Kim et al.

Patent Trials and Appeals Board

Oct 15, 2019

12364962 - (D) (P.T.A.B. Oct. 15, 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.
12/364,962 02/03/2009 Young-Hwa Kim 1126-003US03 5041
28863 7590 10/15/2019
SHUMAKER & SIEFFERT, P. A.
1625 RADIO DRIVE
SUITE 100
WOODBURY, MN 55125
EXAMINER
PIZIALI, ANDREW T
ART UNIT PAPER NUMBER
1789
NOTIFICATION DATE DELIVERY MODE
10/15/2019 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):
pairdocketing@ssiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte YOUNG-HWA KIM, HONG JI,
NICOLE DAWN RENNEBERG, and
SEONG-GI BAEK
____________________
Appeal 2018-008115
Application 12/364,962
Technology Center 1700
____________________

Before CHRISTOPHER C. KENNEDY, AVELYN M. ROSS, and
DEBRA L. DENNETT, Administrative Patent Judges.

DENNETT, Administrative Patent Judge.

DECISION ON APPEAL1
STATEMENT OF THE CASE
Appellant2 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 9–11, 13, 14, 16, 21–24, 26–35, and 37–50. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 In our Decision, we refer to the Specification (“Spec.”) of Application
12/364,962 (the “’962 Application”); the Final Office Action dated May 31,
2017 (“Final Act.”); the Appeal Brief filed February 28, 2018 (“Appeal
Br.”); the Examiner’s Answer dated June 7, 2018 (“Ans.”); and the Reply
Brief filed August 7, 2018 (“Reply Br.”).
2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. 1.42. Appellant identifies the real party in interest as Higher
Dimension Materials, Inc. Appeal Br. 3.
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The invention relates to a fabric primarily useful to afford excellent
defense and protection against penetration forces including cutting, shearing,
and slashing forces. Spec. ¶ 2. Claim 9, reproduced below from the Claims
Appendix of the Appeal Brief, illustrates the claimed subject matter:
9. A composite fabric assembly comprising:
a woven, non-woven, or knitted fabric substrate; and
a plurality of non-overlapping guard plates separated by gaps
between directly adjacent guard plates on a surface of the woven
fabric substrate, the guard plates comprising a cured non-Newtonian-
solid polymer resin partially penetrating into the surface of the woven
fabric substrate to a depth less than a thickness of the fabric substrate
to provide a mechanical bond between the fabric substrate and the
guard plates, wherein the fabric substrate and the plurality of guard
plates are configured to allow for air flow through the composite
fabric article, wherein the guard plates protrude out of the surface of
the fabric substrate to define a thickness greater than or equal to 5
mils and less than 1 millimeter.
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Fassina US 4,173,199 Nov. 6, 1979
Pope US 4,319,944 Mar. 16, 1982
Hanamori3 JP 08–120574 May 14, 1996

3 The Examiner cites to an English translation of the Japanese publication, to
which Appellant did not object.
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REJECTION4
The Examiner maintains the rejection of claims 9–11, 13, 14, 16, 21–
24, 26–35, and 37–50 under 35 U.S.C. § 103(a) as unpatentable over
Hanamori further in view of Pope and/or Fassina. Ans. 3–10.
OPINION
Appellant argues the claims in groups, which we adopt for the
purposes of this Opinion. See Appeal Br. 19–26.
Group 11 – Rejection of claims 9–11, 13, 14, 16, 21, 39, and 45–50
over Hanamori in view of Pope or Fassina5
Appellant argues independent claim 9 and its dependent claims—with
the exception of claim 43—as Group 11. See Appeal Br. (Claims App.) 19,
22–24. We select claim 9 as representative of the group. 37 C.F.R.
§ 41.37(c)(1)(iv). The remaining claims in Group 11 will stand or fall with
claim 9.
Regarding claim 9, the Examiner finds that Hanamori teaches all of
the limitations except for “the guard plates comprising a cured non-
Newtonian-solid polymer resin partially penetrating into the surface of the
woven fabric substrate to a depth less than a thickness of the fabric substrate
to provide a mechanical bond between the fabric substrate and the guard
plates.” Final Act. 8. The Examiner finds that either Pope or Fassina teach
the missing limitation. Id. at 9.

4 In the Answer, the Examiner withdrew the rejections of all pending claims
as anticipated by Hanamori or rendered obvious by Hanamori in view of
Shaw. Ans. 2.
5 The Examiner withdrew the rejection of these claims over Hanamori in
view of Shaw. Ans. 2.
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With regard to Pope, the Examiner finds that “Pope discloses that it is
known in the art to ‘at least partially embed’ a fabric into a polymer to
obtain a permanent ‘mechanical bond’ between the fabric substrate and the
polymer.” Id. at 10 (citing the entirety of Pope, including col. 1, ll. 7–17).
The Examiner concludes that it would have been obvious to one of ordinary
skill in the art at the time of the invention to embed partially the fabric
substrate of Hanamori into the polymer guard plates, motivated by a desire
to obtain an improved mechanical bond between the fabric substrate and the
polymer. Id.
Appellant argues that the cited portion of Pope (presumably, column
1, lines 7–17) is directed towards reinforcing a thermoplastic body with a
fabric strip, not to obtaining an improved mechanical bond between the
fabric strips and the cured polymer. Appeal Br. 23. Appellant contends that
nothing in Pope prevents fibers from being surrounded totally by polymer to
the extent that polymer extends to the opposite side of the fabric. Id.
Appellant argues that Pope explicitly describes fibers surrounded by
polymer, which is not within the scope of claim 9. Id.
Appellant contends that the Examiner fails to show that one of
ordinary skill in the art would have recognized that there was a problem with
bonding between resin and cloth in Hanamori, thus the artisan would not
have been motivated to look for techniques to “improve” the bond. Reply
Br. 4–5.
Claim 9 recites that the cured “polymer resin partially penetrat[es]
into the surface of the woven fabric substrate to a depth less than a thickness
of the fabric substrate to provide a mechanical bond between the fabric
substrate and the guard plates.” Appeal Br. 28 (Claims App.). The broadest
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reasonable interpretation of the limitation is that the polymer resin does not
fully penetrate the thickness of the fabric. See In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (During prosecution, an
application’s claims are given their broadest reasonable scope consistent
with the specification.). Pope discloses at least partially embedding the
fabric into the polymer, thus encompasses both partial and complete
penetration. See Pope, col. 1, ll. 7–17. Pope further discloses cooling of the
polymer (in the form of nodules) will mechanically interlock with fibers of
the fabric, resulting in a strong mechanical bond between fabric and
polymer. Pope col. 2, ll. 11–17.
For purposes of § 103, a reference is prior art for all that it discloses.
Symbol Techs., Inc. v. Opticon, Inc., 935 F.2d 1569, 1578 (Fed. Cir. 1991);
see also In re Fritch, 972 F.2d 1260, 1264 (Fed. Cir. 1992) (explaining that
“[i]t is well settled that a prior art reference is relevant for all that it teaches
to those of ordinary skill in the art”)). We consider the prior art for all that it
teaches and suggests. Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804,
807 (Fed. Cir. 1989) (“[I]n a section 103 inquiry, the fact that a specific
[embodiment] is taught to be preferred is not controlling, since all
disclosures of the prior art, including unpreferred embodiments, must be
considered.”). That Pope expressly discloses an embodiment wherein a fiber
is completely surrounded by polymer does not negate the reference’s
teaching of “at least partial[] embedd[ing].”
The Examiner’s proposed motivation to combine the teaching of Pope
with that of Hanamori (a desire to obtain an improved mechanical bond
between the fabric substrate and the polymer) is supported by the
Examiner’s finding that Hanamori’s invention is a protective composite
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fabric intended to defend against highly dangerous weapons and tools, and
making a permanent mechanical bond is desirable to present the resin guard
plates from detaching from the fabric substrate during use. See Ans. 13.
Pope discloses forming a “strong mechanical bond between the fabric and
the polymer.” “As long as some motivation or suggestion to combine the
references is provided by the prior art taken as a whole, the law does not
require that the references be combined for the reasons contemplated by the
inventors.” In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992). The
Examiner’s explanation of the reasons a person of ordinary skill in the art
would have had to combine the prior art teachings is sufficient when an
allowance is made for “the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007); see also Cross Med. Prods., Inc. v. Medtronic
Sofamor Danek, Inc., 424 F.3d 1293, 1323 (Fed. Cir. 2005) (“One of
ordinary skill in the art need not see the identical problem addressed in a
prior art reference to be motivated to apply its teachings.”).
For the reasons provided above, claim 9 is obvious over Hanamori in
view of Pope. Dependent claims 10, 11, 13, 14, 16, 21, 39, and 45–50 are
obvious over Hanamori in view of Pope pursuant to 37 C.F.R.
§ 41.37(c)(1)(iv).
Turning to Fassina, the Examiner finds that the reference “discloses
that it is known in the art to partially penetrate a fabric substrate, to a depth
less than a thickness of the fabric substrate, with cured polymer resin.” Final
Act. 10. The Examiner finds that Fassina teaches that the greater the
penetration, the greater the reinforcement and springiness of the fabric, with
a penetration of 10 to 33% being preferred. Id. The Examiner determines:
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[I]t would have been obvious to one of ordinary skill in the art
at the time of the invention to partially penetrate (10 to 33%)
the fabric substrate of Hanamori, motivated by a desire to
provide greater reinforcement and because it is within the
general skill of a worker in the art to select a penetration
amount on the basis of its suitability and desired characteristics.
Id.
Appellant argues that any modification to the article of Hanamori in
view of Fassina would not result in cured polymer guard plates protruding
out of the surface of the fabric substrate. Reply Br. 7. However, in making
this argument, Appellant argues the references individually. “Non-
obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references.” In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
The Examiner’s rejection relies on the combination of Hanamori with
Fassina, with Hanamori teaching guard plates protrude out of the surface of
the fabric substrate. See Ans. 3.
Appellant argues that the Examiner fails to establish why one skilled
in the art would find it desirable to reinforce the fabric substrate described
by Hanamori. Appeal Br. 23. According to Appellant, one of ordinary skill
in the art would not have determined that there was a problem with
Hanamori such that he would seek a technique for providing a permanent
bond between the resin and cloth. Reply Br. 7.
However, a prior art reference need not identify a problem in order for
a skilled artisan to be motivated to improve it. Fassina discloses that the
reinforcing material does not penetrate substantially through to the other
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face, resulting in the cured polymer firming adhering to and reinforcing the
fabric. Fassina, col. 1, ll. 11–27. As our reviewing court explains:
We have repeatedly held that an implicit motivation to combine
exists not only when a suggestion may be gleaned from the
prior art as a whole, but when the “improvement” is
technology-independent and the combination of references
results in a product or process that is more desirable, for
example because it is stronger, cheaper, cleaner, faster, lighter,
smaller, more durable, or more efficient. Because the desire to
enhance commercial opportunities by improving a product or
process is universal—and even common-sensical—we have
held that there exists in these situations a motivation to combine
prior art references even absent any hint of suggestion in the
references themselves.
Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464
F.3d 1356, 1368 (Fed. Cir. 2006). “[I]if a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize
that it would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill.” KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). “Evidence of a motivation to
combine prior art references ‘may flow from the prior art references
themselves, the knowledge of one of ordinary skill in the art, or, in some
cases, from the nature of the problem to be solved.” Medichem, S.A. v.
Rolabo, S.L., 437 F.3d 1157, 1164 (Fed. Cir. 2006) (quoting Brown &
Williamson Tobacco Corp. v. Philip Morris Inc., 229 F.3d 1120, 1125 (Fed.
Cir. 2000)).
For the reasons provided above, claim 9 is obvious over Hanamori in
view of Fassina, and dependent claims 10, 11, 13, 14, 16, 21, 39, and 45–50
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are obvious over the combined references as well, pursuant to 37 C.F.R.
§ 41.37(c)(1)(iv).
Group 12– Rejection of claim 43 over Hanamori in view of Pope or
Fassina
Claim 43 depends from claim 9 and further recites: “wherein the
guard plates protrude out of the surface of the fabric substrate to define a
thickness greater than or equal to 5 mils and less than 20 mils.” Appeal Br.
34 (Claims App.).
The Examiner finds “Hanamori discloses that the resin thickness is
preferably 0.1 to 10 mm (about 4 to 394 mils).” Final Act. 7 (citing
Hanamori ¶ 15). The Examiner finds that Hanamori illustrates resin on the
fabric surface, and discloses that resin bonds “onto the surface of the fabric.”
Ans. 5 (citing Hanamori Fig. 3, ¶ 15 [correctly ¶ 16]).
Appellant argues that the portion of Hanamori cited by the Examiner
is unclear on what thickness of the resin is referenced. Appeal Br. 24. In
other words, Appellant contends that the Examiner fails to establish that
Hanamori is referring to the thickness of the cured resin protruding out of
the surface of the alleged fabric substrate, thus fails to establish that
Hanamori discloses the claimed subject matter. Id. Appellant contends that
Hanamori could be referring to the thickness of the article in the area of the
resin, where the thickness is the overall thickness of the article at that point
(i.e., the combined thickness of the resin plus the substrate in the area of the
resin).
Hanamori states: “[t]he thickness of resins is preferably 0.1–10 mm.”
Hanamori ¶ 15. In light of this clear statement, Appellant’s argument that
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Hanamori might be referring to the overall thickness of the resin plus fabric
substrate is unpersuasive of reversible error by the Examiner.
Claim 43 is obvious over Hanamori in view of Pope or Fassina.
Group 13– Rejection of claims 22–24, 26–32, 41, and 42 over
Hanamori in view of Pope or Fassina
Appellant argues independent claim 22 and its dependent claims—
with the exception of claim 44—as Group 13. See App. Br. 24–25. We
select claim 22 as representative of the group. 37 C.F.R. § 41.37(c)(1)(iv).
The remaining claims in Group 13 will stand or fall with claim 22.
Claim 22 differs from claim 9 in reciting both a first and second fabric
substrate, and a first and second plurality of non-overlapping guard plates on
the top surface of the respective fabric substrate, wherein the first and
second fabric substrates are stacked on each other. Appeal Br. 28, 30
(Claims App.).
The Examiner finds that Hanamori discloses that multiple layers of
the inventive fabric may be stacked. Final Act. 6 (citing Hanamori ¶ 17).
Appellant contends that the Examiner fails to establish the cited
references disclose each limitation of claim 22 “[f]or at least those
deficiencies identified with regard to claim 9.” Appeal Br. 25; Reply Br. 11.
Because we find claim 9 obvious over the cited references for the
reasons provided above, we also find claim 22 and its dependent claims
obvious.
Group 14– Rejection of claim 44 over Hanamori in view of Pope or
Fassina
Claim 44 depends from claim 22 and, similar to claim 43, recites the
pluralities of guard plates protrude out of the top surfaces to define a
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thickness greater than or equal to 5 mils and less than 20 mils. Appeal Br.
34 (Claims App.).
As with claim 43, the Examiner finds that Hanamori discloses the
resin thickness of preferably 0.1 to 10 mm (about 4 to 394 mils). Final Act.
7; Ans. 18.
Appellant makes the same argument for patentability as was made
with respect to claim 43. See Appeal Br. 24–26. We affirm the rejection of
claim 44 over Hanamori in view of Pope or Fassina for the reasons given
above regarding claim 43.
Group 15– Rejection of claims 33–35, 37, 38, and 40 over Hanamori
in view of Pope or Fassina
Appellant argues independent claim 33 and its dependent claims as
Group 15. See Appeal Br. 26. We select claim 33 as representative of the
group. 37 C.F.R. § 41.37(c)(1)(iv). The remaining claims in Group 15 will
stand or fall with claim 33.
Claim 33, which is similar to claim 9, is reproduced below from the
Claims Appendix of the Appeal Brief:
33. A fabric assembly comprising:
a woven, non-woven, or knitted fabric substrate including
a top surface; and
a plurality of non-overlapping guard plates comprising a
cured non-Newtonian-solid polymer resin on the top surface of
the fabric substrate, wherein the plurality of guard plates are
separated by gaps between directly adjacent guard plates on the
top surface of the fabric substrate and partially penetrate into
the top surface of the fabric substrate to a depth less than a
thickness of the fabric substrate to provide a mechanical bond
between the fabric substrate and the plurality of guard plates,
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wherein the plurality of guard plates are arranged such
that substantially no straight line is formed in the gaps between
the plurality of guard plates, and
wherein the guard plates protrude out of the surface of
the fabric substrate to define a thickness greater than or equal to
5 mils and less than 1 millimeter.
The Examiner finds, inter alia, Hanamori’s Figure 2 teaches that the
plurality of guard plates are arranged such that substantially no straight line
is formed in the gaps between the plurality of guard plates. Final Act. 6.
Appellant argues that claim 33 is patentable over the cited references
“[f]or at least those deficiencies identif[ied] with regard to claim 9.” Appeal
Br. 26; Reply Br. 13.
Because we agree with the Examiner that claim 9 is obvious over the
cited references, we likewise find claim 33 obvious over the references for
the reasons provided with respect to claim 9. Pursuant to 37 C.F.R.
§ 41.37(c)(1)(iv), claims 34, 35, 37, 38, and 40 are also obvious over the
cited references.
CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C § Basis Affirmed Reversed
9–11, 13, 14,
16, 21–24,
2–35, and
37–50
103(a) Hanamori, Pope
or Fassina
9–11, 13,
14, 16, 21–
24, 2–35,
and 37–50

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TIME PERIOD FOR 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