ACME MILLS COMPANY

Patent Trials and Appeals Board

Feb 1, 2022

2020006132 (P.T.A.B. Feb. 1, 2022)

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. 14/895,828 12/03/2015 Neil Gross ACME-100US 2904 13173 7590 02/01/2022 Blue Filament Law 700 E. Maple Road Suite 450 Birmingham, MI 48009 EXAMINER CHOI, PETER Y ART UNIT PAPER NUMBER 1786 NOTIFICATION DATE DELIVERY MODE 02/01/2022 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): ag@bluefilamentlaw.com patentdocketing@bluefilamentlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte NEIL GROSS and JAMES COLMAN ____________ Appeal 2020-006132 Application 14/895,828 Technology Center 1700 ____________ Before JAMES C. HOUSEL, MICHELLE N. ANKENBRAND, and JULIA HEANEY, Administrative Patent Judges. ANKENBRAND, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision2 rejecting claims 1, 3-5, 7-9, and 11.3 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Acme Mills LLC as the real party in interest. Appeal Brief, filed March 17, 2020 (“Appeal Br.”) 3. 2 Non-Final Office Action, mailed September 19, 2019 (“Non-Final Act.”). 3 Claim 18 has been withdrawn from consideration. Non-Final Act. 1. Appeal 2020-006132 Application 14/895,828 2 STATEMENT OF THE CASE Background The subject matter on appeal “relates to flexible suspension laminates with woven backings and in particular to such laminates having a skin bonded to the woven backings.” Specification, filed December 3, 2015 (“Spec.”) ¶ 2. According to the Specification, thermoplastic polyester elastomers provide both stiffness and abrasion resistance for fabrics, and also have resistance to creep, impact damage, and flexural fatigue. Id. ¶¶ 3- 4. The Specification explains that it has been technologically difficult to join a surface skin to a thermoplastic polyester elastomer woven sheet and there is a need for a flexible suspension laminate that includes a thermoplastic polyester elastomer backing. Id. ¶¶ 5-6. In view of this, the Specification describes a flexible suspension laminate that includes a woven base of thermoplastic polyester elastomer filaments interwoven with polyester spun yarn filaments and a skin bonded to the woven base. Id. ¶ 7. The Specification states that the invention has high strength resilience durability and allows a seat to have a simplified construction. Id. ¶ 12. Of the appealed claims, claim 1 is independent. We reproduce below claim 1, which is representative of the subject matter on appeal. 1. A flexible suspension laminate consisting of: a woven base of thermoplastic polyester elastomer filaments interwoven with spun polyester yam filaments, said thermoplastic polyester elastomer filaments formed of a coaxial monofilament having a high melt temperature polyester core with a lower melting temperature sheath; and a skin having a thickness of between 0.8 and 2 mm directly and thermally bonded to said woven base independent of a contact adhesive, said skin consisting of di-isocyanate modified polyurethane or polyvinyl chloride. Appeal 2020-006132 Application 14/895,828 3 Appeal Br. 23 (Claims App’x). The References Taniguchi US 2005/0142970 A1 June 30, 2005 Mori US 2003/0087084 A1 May 8, 2003 Wen US 2006/0231188 A1 Oct. 19, 2006 The Rejections The Examiner maintains the following rejections on appeal: 1. Claim 8 under 35 U.S.C. § 112(a) as failing to comply with the enablement requirement; 2. Claims 8 and 11 under 35 U.S.C. § 112(b) as indefinite; 3. Claims 1, 3-5, 7, 9, and 11 under 35 U.S.C. § 103 as unpatentable over Taniguchi and Mori; and 4. Claim 8 under 35 U.S.C. § 103 as unpatentable over Taniguchi, Mori, and Wen. Non-Final Act. 2-8; Examiner’s Answer, dated June 26, 2020 (“Ans.”) 3- 10. OPINION Enablement Rejection The Examiner rejects claim 8 under 35 U.S.C. § 112(a) as failing to comply with the enablement requirement. Ans. 4-5. Claim 1 recites a flexible suspension laminate consisting of a woven base and a skin. Appeal Br. 23. Claim 8 depends from claim 1 and recites “wherein said skin has the outer surface being a flock.” Id. at 24. The Examiner determines that the Specification does not set forth an example of forming a structure in which the outer surface is a flock. Ans. 4. The Examiner states that “‘flock’ is defined as the ‘material obtained by Appeal 2020-006132 Application 14/895,828 4 reducing textile fibers to fragments by cutting or grinding,’” but the Specification does not describe a structure for a skin consisting of di-isocyanate modified polyurethane or polyvinyl chloride in addition to a flock that is also made of di-isocyanate modified polyurethane or polyvinyl chloride fibers or a method of forming that structure. Id. at 4-5; see id. at 10-11 (responding similarly to Appellant’s arguments). Alternatively, the Examiner determines that, “if the structure is directed to a skin without fibers, Appellant’s specification does not appear to recite any process of forming a skin layer such that the skin layer resembles a flock, such as by texturing.” Id. at 5; see id. at 11. Appellant asserts that the test for enablement is whether one of ordinary skill in the art could make or use the invention without undue experimentation. Appeal Br. 7-8 (citing In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988)). Appellant agrees that one of ordinary skill in the art would be familiar with the term “flock” because the term is widely used and known in the textile industry. Id. at 8. Appellant thus contends that “the specification . . . and the level of ordinary skill in the art provide sufficient information to enable one skilled in the pertinent art to make and use the claimed invention.” Id. at 7. “[T]o be enabling, the specification of a patent must teach those skilled in the art how to make and use the full scope of the claimed invention without ‘undue experimentation.’” In re Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993) (citation omitted). The Specification, however, “need not disclose what is well known in the art.” See, e.g., Hybritech Inc. v. Monoclonal Antibodies Inc., 802 F.2d 1367, 1384 (Fed. Cir. 1986). Further, Appeal 2020-006132 Application 14/895,828 5 the Office carries the initial burden of setting forth a prima case of failing to meet the enablement requirement: When rejecting a claim under the enablement requirement of section 112, the PTO bears an initial burden of setting forth a reasonable explanation as to why it believes that the scope of protection provided by that claim is not adequately enabled by the description of the invention provided in the specification of the application; this includes, of course, providing sufficient reasons for doubting any assertions in the specification as to the scope of enablement. If the PTO meets this burden, the burden then shifts to the applicant to provide suitable proofs indicating that the specification is indeed enabling. Wright, 999 F.2d at 1561-62. The Examiner does not set forth a reasonable explanation why one of ordinary skill in the art would not be able to make and use the claimed invention without undue experimentation. The Examiner finds a lack of disclosure for an outer skin surface that is flocked and made of the skin materials recited in claim 1. For instance, the Examiner states that if the flock structure is di-isocyanate modified polyurethane or polyvinyl chloride fibers, the Specification does not disclose this structure in addition to the claimed skin or a manner of making this structure. Ans. 11. The Examiner’s cited definition for “flock,” however, indicates that one of ordinary skill in the art would be familiar with a flock structure. As noted above, the Examiner indicates that the structure can be made of the same substance as the skin. But the Examiner fails to provide a sufficient explanation why one of ordinary skill in the art would not be able to make and use the claimed structure (e.g., a flocked outer surface made from di- Appeal 2020-006132 Application 14/895,828 6 isocyanate modified polyurethane or polyvinyl chloride fibers) without undue experimentation.4 For these reasons, we do not sustain the Examiner’s § 112(a) rejection of claim 8 for failing to comply with the enablement requirement. Indefiniteness Rejection The Examiner rejects claims 8 and 11 under 35 U.S.C. § 112(b) as indefinite. Ans. 5-6. Specifically, the Examiner determines that claim 1 recites a laminate “consisting of” a woven base and a skin, which precludes the inclusion of additional components. Ans. 5-6. Appellant argues that claims 8 and 11 “merely provide[] additional details about elements recited in closed form claim 1 and as such can properly be interpreted as being consistent with the base claim.” Appeal Br. 9-10. As noted above, claim 8 recites “wherein said skin has the outer surface being a flock.”5 Appeal Br. 24. Claim 11 recites “wherein said woven base includes one or more additives of a dyes, pigments, UV stabilizers, plasticizers, flame retardants, antimicrobials, or nanoparticles.” Id. Although claim 1 uses “consisting of” language for its transitional phrase, we view the “consisting of” phrase as applying to the components of the laminate, i.e., a woven base and a 4 We note that the record does not include a complete Wands analysis. Though a complete analysis of all factors are not necessarily required for a proper enablement rejection, the Examiner does not make any findings as to the quantity of experimentation necessary, the nature of the invention, the state of the prior art, the relative skill of those in the art, the predictability or unpredictability of the art, or the breadth of the claims. See Wands, 858 F.2d 736-37. 5 We note that the limitation “the outer surface” lacks antecedent basis and that neither claim 1 nor claim 8 limits the shape of the skin. Appellant and the Examiner may wish to consider this limitation if prosecution of this application continues. Appeal 2020-006132 Application 14/895,828 7 skin. Thus, we agree with Appellant that claim 8’s additional limitations to the skin and claim 11’s additional limitations to the base are proper because they provide additional details or components of the woven base and the skin, not the laminate. Claim 1 supports our view, as it further limits the skin’s material, reciting “said skin consisting of di-isocyanate modified polyurethane or polyvinyl chloride.” Id. at 23 (emphasis added). Appellant, however, did not similarly limit the structure of the skin or the material of the woven base in claim 1 by using “consisting of” language. As a result, we do not view claims 8 and 11 as improperly reciting additional components or elements in violation of claim 1’s “consisting of” language. For these reasons, we do not sustain the Examiner’s § 112(b) rejection of claims 8 and 11. Obviousness Rejections The Examiner rejects claims 1, 3-5, 7, 9, and 11 under 35 U.S.C. § 103 as unpatentable over Taniguchi and Mori. Ans. 6-9. Appellant states that claims 3-5, 7, 9, and 11 stand or fall with claim 1. Appeal Br. 15. As such, we address the arguments for claim 1 below. The Examiner finds that Taniguchi discloses a sheet material that may be combined with a foam and skin layer, and that the sheet material may be woven from a spun polyester yarn and a thermoplastic polyester yarn. Ans. 6. The Examiner finds that Taniguchi teaches a sheath-core monofilament having a low-melting point sheath for the polyester yarn. Id. The Examiner further finds that a urethane foam and a skin material are laminated to Taniguchi’s sheet material, but that Taniguchi does not teach the specific composition of the urethane. Id. at 7. The Examiner finds that Mori teaches a surface material that can be a polyurethane resin (e.g., a di-isocyanate modified polyurethane) laminated to a substrate. Id. The Appeal 2020-006132 Application 14/895,828 8 Examiner concludes that it would have been obvious to modify Taniguchi to use Mori’s polyurethane. Id. at 7-8. As to the “thermally bonded” limitation, the Examiner finds that the limitation is a product-by-process limitation because “the prior art combination teaches a substantially similar structure as claimed.” Id. at 8. Alternatively, the Examiner finds that Mori suggests lamination techniques for bonding polyester fabric to a polyurethane layer, such as flame lamination, and concludes that it would have been obvious to form Taniguchi’s film by using Mori’s technique as a conventional bonding process known in the art that provides a predictable result. Id. at 8-9. Appellant presents several arguments, which we address below. Woven Base Arguments Appellant contends that the applied references do not teach a woven base of thermoplastic polyester elastomer filaments interwoven with spun polyester yarn, as claim 1 recites. Appeal Br. 15. As an initial matter, Appellant asserts: As described in paragraph [0015], “a filament of a woven base is either a monofilament; or from a twisted bundle of fibers that collectively form a filament; synonymously referred to herein as a ‘yarn’ or a ‘yarn filament’. It is appreciated that a yam is formed of multiple bundled or twisted fibers; in which individual fibers are all formed of like composition of the bundle of fibers vary in composition within a filament.” Based on the claim language, the detailed description of the invention, and the understanding of one having ordinary skill in the art, it is clear that the filaments recited in claim 1 are different from the yarn recited in claim 1. That is, the filaments are thermoplastic polyester elastomer coaxial monofilaments, whereas the yarn is spun polyester yarn filaments. Appeal 2020-006132 Application 14/895,828 9 Id. at 15-16. Based on that assertion, Appellant contends that its thermoplastic polyester elastomer filaments formed of a coaxial monofilament are neither spun nor twisted. Reply Brief, dated August 26, 2020 (“Reply Br.”) 2.6 Appellant contrasts its own filaments to Taniguchi’s material, asserting that “Taniguchi discloses a woven or knitted sheet material formed using spun yarns only” and Taniguchi’s Examples 16 and 17 use warp and weft yarns. Id. at 16; Reply Br. 3. In addition, Appellant contends that Taniguchi does not teach a woven base of a sheath-core monofilament interwoven with polyester yarn filaments, as claim 1 recites. Appeal Br. 16- 17; Reply Br. 4-5. Appellant’s arguments do not identify a reversible error in the rejection of claim 1. The Examiner cites Taniguchi’s Examples 16 and 17 when finding that Taniguchi discloses a spun polyester yarn and a polyester elastomer yarn that can be a sheath-core monofilament. Ans. 6. Example 16 describes a sheath-core monofilament for a warp yarn and a doubled and twisted yarn of polyethylene terephthalate fiber that is used as a weft yarn. Taniguchi ¶ 37. Taniguchi teaches that the sheath-core monofilament has a copolymerized polyester sheath and a poly(trimethylene terephthalate) core that has a higher melting point than the sheath. Id. ¶ 173. Therefore, Taniguchi discloses claim 1’s coaxial structure that has a high melt temperature polyester core and a lower melting temperature sheath. Appellant’s position appears to be that claim 1 recites a woven base that includes thermoplastic polyester elastomer filaments in addition to the spun 6 Appellant also argues that the term “elastomer” is entitled to patentable weight. Reply Br. 2-3. The Examiner’s rejection, however, finds that Taniguchi discloses “a polyester elastomer fiber.” Ans. 6. As a result, there is no reason to determine whether the term “elastomer” is entitled to patentable weight. Appeal 2020-006132 Application 14/895,828 10 polyester yarn filaments, with the former being formed of “a coaxial monofilament.” As noted above, Appellant cites the Specification’s description of filaments in paragraph 15 to argue that yarns are distinct from a monofilament. But paragraph 15 does not support Appellant’s position because paragraph 15 states that a filament “is either a monofilament; or from a twisted bundle of fibers that collectively form a filament; synonymously referred to herein as a ‘yarn’ or a ‘yarn filament.’” Appellant appears to view the last clause after the second semicolon as modifying only the second clause regarding “a twisted bundle of fibers.” We do not agree with Appellant because the last clause instead appears to modify both the second clause regarding “a twisted bundle of fibers” and the first clause regarding a monofilament. In other words, paragraph 15 indicates that a yarn is either a monofilament or a twisted bundle of fibers. As noted above, Taniguchi discloses warp and weft yarns for Example 16 and Appellant argues that these yarns are spun yarns. Taniguchi ¶ 337; Appeal Br. 16. As a result, Taniguchi teaches a woven base that includes the claimed thermoplastic polyester filaments and spun polyester yarn filaments. With regard to the yarns being interwoven, the Examiner points out that Appellant acknowledges Taniguchi’s sheet material includes warp and weft yarns. Ans. 13. In other words, the Examiner’s position is that warp and weft yarns, such as those of Taniguchi’s Example 16, would be interwoven. To the extent Appellant relies upon the embodiment depicted in its Figure 1 to define “interwoven,” which depicts thermoplastic polyester elastomer filaments 14 parallel to and “interwoven” with spun polyester yarn filaments 16 (Spec ¶ 23), we do not discern an express intent in Appellant’s Specification to define “interwoven” in this way. Instead, the Specification Appeal 2020-006132 Application 14/895,828 11 states that the invention is not limited to the embodiments shown in the drawings. Spec. ¶ 8. “Without evidence in the patent specification of an express intent to impart a novel meaning to a claim term, the term takes on its ordinary meaning.” Optical Disc Corp. v. Del Mar Avionics, 208 F.3d 1324, 1334 (Fed. Cir. 2000). As a result, we turn to the ordinary meaning of “interwoven.” The Merriam-Webster dictionary7 defines “interweave” as “to weave together.” We interpret “interwoven” as encompassing warp and weft fibers that are woven together to form a fabric, such as the warp and weft yarns of Taniguchi’s Example 16. “Thermally Bonded” Skin Appellant argues that Taniguchi is silent regarding the details of forming its skin and its urethane foam. Appeal Br. 17-18; Reply Br. 6-7. Appellant contends that the Examiner cites Mori to cure these deficiencies, but Mori discloses a urethane resin surface material that includes both thermoplastic polyurethane and acrylic soft resin. Appeal Br. 18; Reply Br. 7. Appellant thus argues that Mori does not teach or suggest a skin “consisting of di-isocyanate modified polyurethane or polyvinyl chloride,” as claim 1 recites. Appeal Br. 18-19. In response, the Examiner finds that Mori teaches using thermoplastic polyurethane alone. Ans. 14. Mori’s disclosure that “a thermoplastic polyurethane can be used alone instead of the mixed resin” supports this finding. Mori ¶ 41. The Examiner also finds that Mori teaches using a 7 Merriam-Webster Dictionary entry for “interweave,” http://www.merriam- webster.com/dictionary/interwoven (last visited January 11, 2022). Appeal 2020-006132 Application 14/895,828 12 di-isocyanate modified polyurethane, which Mori’s disclosure supports. Ans. 7 (citing Mori ¶¶ 16-20, 41). Appellant argues that the rejection is improper because the Examiner does not cite the current language for claim 1 at page 14 of the Examiner’s Answer. Reply Br. 5-6. We agree that the language cited at page 14 of the Answer is not the correct language. But we view this as harmless error because the Examiner finds Mori teaches that its polyurethane can be used alone, which meets claim 1’s limitation that the skin consists of di-isocyanate modified polyurethane or polyvinyl chloride. Appellant also argues that claim 1 requires the skin to be thermally bonded to the woven base independent of a contact adhesive, but that Mori only teaches the use of a contact adhesive. Appeal Br. 19; Reply Br. 7. These arguments are unpersuasive because the Examiner finds that Mori teaches the use of flame lamination and concludes it would have been obvious to form Taniguchi’s material using this technique. Ans. 8-9, 15; see Mori ¶ 42. Appellant’s arguments do not address the Examiner’s finding. Claim 1 as a Closed Group Appellant argues that claim 1 uses the language “consisting of,” but “Taniguchi and Mori teach the criticality of components beyond those currently recited in claim 1.” Appeal Br. 20. Specifically, Appellant argues that omitting an intermediate form and/or adhesive bonding layer would render the prior art unsuitable for its intended purpose because “Mori teaches is [sic] explicitly clear that a contact adhesive is essential when a woven substrate and sheet are pressed together to form one body.” Id. As discussed above regarding the “thermally bonded” limitation, this argument is unpersuasive because it does not address the Examiner’s finding regarding Appeal 2020-006132 Application 14/895,828 13 Mori’s flame lamination teachings and the Examiner’s conclusion that one of ordinary skill in the art would have modified Taniguchi to use this technique. Appellant also contends that the Examiner relies upon Mori for a skin material but Mori teaches a mixed resin. Id. at 20-21. As discussed above with regard to Appellant’s “thermally bonded” skin arguments, the Examiner correctly finds that Mori teaches using a thermoplastic polyurethane alone. Therefore, this argument is also unpersuasive. For these reasons, Appellant’s arguments do not identify a reversible error in the Examiner’s § 103 rejection of claim 1. Claim 8 The Examiner rejects Claim 8 under 35 U.S.C. § 103 as unpatentable over Taniguchi, Mori, and Wen. Ans. 9-10. Appellant states that claim 8 stands or falls with claim 1 and does not advance separate arguments directed to the Examiner’s additional findings and conclusions based upon Wen. Appeal Br. 15. As a result, we sustain the Examiner’s § 103 rejection of claim 8 over the combination of Taniguchi, Mori, and Wen. CONCLUSION We affirm the Examiner’s rejection of claims 1, 3-5, 7-9, and 11. In summary: Claims Rejected 35 U.S.C. § References/Basis Affirmed Reversed 8 112(a) Enablement 8 8, 11 112(b) Indefiniteness 8, 11 1, 3-5, 7, 9, 11 103 Taniguchi, Mori 1, 3-5, 7, 9, 11 8 103 Taniguchi, Mori, Wen 8 Overall Outcome 1, 3-5, 7- 9, 11 Appeal 2020-006132 Application 14/895,828 14 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