Brian John. Conolly et al.

Patent Trials and Appeals Board

Sep 12, 2019

13481190 - (D) (P.T.A.B. Sep. 12, 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.
13/481,190 05/25/2012 Brian John Conolly 07122-P0017AUS3 4362
131672 7590 09/12/2019
Whitmyer IP Group LLC
600 Summer Street
3rd Floor
Stamford, CT 06901
EXAMINER
PIZIALI, ANDREW T
ART UNIT PAPER NUMBER
1789
MAIL DATE DELIVERY MODE
09/12/2019 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte BRIAN JOHN CONOLLY,
THOMAS KENNETH HUSSEY, and
CHRISTOPHER HURREN
____________________

Appeal 2018-000274
Application 13/481,190
Technology Center 1700
____________________

Before ROMULO H. DELMENDO, CHRISTOPHER C. KENNEDY, and
LILAN REN, Administrative Patent Judges.

REN, Administrative Patent Judge.

DECISION ON APPEAL1

1 The record on appeal includes the Specification of May 25, 2012 (“Spec.”),
the Examiner’s Final Action of December 8, 2016 (“Final Act.”), Appeal
Brief of April 28, 2017 (“Br.”), the Examiner’s Answer of August 8, 2017
(“Ans.”), and Reply Brief of October 6, 2017 (“Reply Br.”).
Appeal 2018-000274
Application 13/481,190

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STATEMENT OF THE CASE
Appellants2 appeal under 35 U.S.C. § 134 from a rejection of claims
58–62 and 142–145. We have jurisdiction under 35 U.S.C. § 6(b). A hearing
was held on July 25, 2019.
We reverse.
CLAIMED SUBJECT MATTER
The claims are directed to a composite garment materials. Claim 58,
reproduced below, is illustrative of the claimed subject matter:
58. A heat reflective composite, comprising:
a substrate comprising a moisture vapor permeable,
substantially liquid impermeable material;
an insulating layer disposed over the substrate, the
insulating layer comprising gaps that expose the substrate; and
a reflective layer comprising an infrared-reflective
metallic material, the reflective layer being disposed on the
insulating layer, within substantially all gaps of the insulating
layer that expose the substrate, and on substantially all surfaces
of the substrate that are exposed through gaps of the insulating
layer.
Claims Appendix (Br. 13–14) (emphasis added).
During hearing, at the panel’s request, counsel for Appellants
described the recited “gap” and presented the following annotation of Fig.
20b:
MR. DUPLESSIS: I illustrated -- right. Yeah. I drew an
arrow pointing between two of these portions of the insulation
layer that are rising vertically in this picture from the substrate
and the arrows pointing horizontally between them.
JUDGE REN: Thank you.

2 “Zhik Pty Ltd. of Australia” is identified in the Appeal Brief as the real
party in interest. Br. 2.
Appeal 2018-000274
Application 13/481,190

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JUDGE DELMENDO: So it’s basically the empty space
that is between the rectangular pillar type structures protruding
as 2050. That would be the gaps, right?
MR. DUPLESSIS: In this embodiment, yes.

Transcript for Oral Hearing for Appeal No. 2018-000274 (July 25, 2019),
6:15–23.

Annotated Fig. 20b illustrating a composite

REFERENCE
The prior art reference relied upon by the Examiner in rejecting the
claims on appeal is:
Bletsos US 2008/0060302 A1 Mar. 13, 2008

REJECTIONS3
The Examiner rejects claims 58–62 and 142–145 under pre-AIA 35
U.S.C. 102(b) as anticipated by or, in the alternative, under pre-AIA 35
U.S.C. 103(a) as obvious over Bletsos. Final Act. 4.

3 The Examiner withdrew the rejection of claims 144 and 145 “under 35
U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA), first paragraph” and the rejection
of claims 144 and 14 “under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA),
second paragraph.” Ans. 2; see also Final Act. 2–3.
gap
Appeal 2018-000274
Application 13/481,190

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OPINION
In rejecting claim 58, the Examiner finds that Bletsos describes a
composite sheet having a moisture vapor permeable film having both a
woven scrim (as an insulating layer) and a metal layer. Final Act. 4. More
specifically, Bletsos ¶ [0032] describes:
In one embodiment of the present invention, one or both sides
of the moisture vapor permeable sheet layer comprise a porous
outer surface, such as a fibrous surface or a porous film that is
coated with the organic and metal layers. The organic and metal
layers are deposited on the porous surface such that only the
exposed or “outer” surfaces of the fibers or film on the coated
side(s) are coated, without covering the pores. This includes the
internal surfaces of the walls of the interstitial spaces or pores
between the fibers, as well as the fiber surfaces that are exposed
when viewed from the outer surface of the sheet layer on the
coated side(s); but the surfaces of fibers in the interior structure
of the fabric remain uncoated.

Based on the finding that “Bletsos discloses that the metal coats the internal
surfaces of the walls of the pores, as well as the surfaces that are exposed
when viewed from the outer surface of the coated side[,]” the Examiner
concludes Bletsos anticipates or renders obvious “the reflective layer being
disposed on the insulating layer, within substantially all gaps of the
insulating layer that expose the substrate, and on substantially all surfaces of
the substrate that are exposed through gaps of the insulating layer” is
anticipated or rendered obvious. Final Act. 4.
In the Examiner’s Answer, the Examiner additionally provides
Fig. 1B of a reference known as Culler (U.S. Patent No. 5,955,175, issued
Sep. 21, 1999) to illustrate the basis for the rejection. Ans. 7. Fig. 1B of
Culler is reproduced below:
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Fig. 1B of Culler showing “a cross-sectional view of the
microporous membrane of FIG. 1A having a vapor deposited
metal coating.” Culler 3:19–21.

To aid our discussion here, we also reproduce Culler Fig. 1A below:

Fig. 1A of Culler showing “a cross-sectional view of a
microporous membrane used in the present invention having
irregularly shaped pores extending continuously from the top
surface to the bottom surface.” Culler 3:14–18.

The Examiner explains that Fig. 1B of Culler is similar to Bletsos in
showing that “the ‘walls’ of a pore are the exposed sub-surfaces, i.e., those
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Application 13/481,190

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sub-surfaces which are open (exposed) as viewed from the top surface of the
membrane[.]” Ans. 7 (emphasis removed). The Examiner reasons Culler
helps illustrate Bletsos’s teaching that “the exposed sub-surfaces, i.e. those
sub-surfaces (e.g. substrate surfaces) which are open (exposed) as viewed
from the top surface of the membrane are coated with metal.” Id. at 8.
The Examiner finds that the moisture vapor permeable film of Bletsos
describes the recited substrate whereas the woven scrim describes the recited
insulating layer and the metal layer describes the recited reflective layer.
Final Act. 4 (finding that the recited substrate is taught or suggested by the
prior art moisture vapor permeable film, the recited insulating layer by the
prior art woven scrim, and the recited reflective layer by the prior art metal
layer). Anticipating or teaching the claim limitation “the reflective layer
being disposed on the insulating layer, within substantially all gaps of the
insulating layer that expose the substrate, and on substantially all surfaces of
the substrate that are exposed through gaps of the insulating layer” would
therefore require the prior art metal layer to be deposited on the part of the
moisture vapor permeable film surface exposed through the gaps of the
woven scrim. See Final Act. 4.
The Examiner’s finding that the metal layer in Bletsos coats “the
surfaces that are exposed when viewed from the outer surface of the coated
side” (Final Act. 4) does not show that the claim limitation is anticipated or
taught because the finding is not based on the claim language. That is, the
claim language requires that the reflective layer be disposed on the “surfaces
of the substrate that are exposed through gaps of the insulating layer” – as
opposed to the “surface that are exposed when viewed” from a particular
angle as the Examiner reasons. Furthermore, the cited portion of Bletsos
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paragraph 32 does not describe that the surfaces of the moisture vapor
permeable sheet layer is coated but rather that the “the exposed or ‘outer’
surfaces of the fibers or the film” – that is, the surfaces of the woven scrim
are coated. Bletsos ¶ 35; see also Final Act. 4 (“The metal layer is deposited
over the porous (woven scrim) surface such that only the exposed or ‘outer’
surfaces of the (woven scrim) fibers on the coated side are coated with metal
and without covering (sealing over) the (woven scrim) pores.”).
The Examiner’s analysis based on Culler clarifies this point. Culler
Fig. 1A describes “a cross-sectional view of a microporous membrane 10
having a top surface 10a, a bottom surface 10b, and discontinuous polymer
portions defining pores 12 therebetween.” Culler 3:32–36. In Culler Fig. 1B,
“a vapor deposited metal coating 13 is shown in which the metal is deposited
on the top surface of the membrane i.e. the metal coats the top surface and
the ‘open’ pore walls[.]” Ans. 7 (quoting Culler 3:50–67). Culler Fig. 1B
therefore shows only that the “sub-surfaces which are open (exposed) as
viewed from the top surface of the membrane” are coated by metal coating
13.4 The Examiner has not adequately explained why Culler Fig. 1B shows
the surfaces of membrane 10 – as exposed through pore 12 – are coated by
metal coating 13.
Because the Examiner’s findings do not show that the claim limitation
is anticipated, we cannot sustain the rejection.
We note, however, that we inquired during the oral hearing whether a
skilled artisan would understand the scope of claim 58 based on the claim
term “substantially all surfaces.” Counsel for Appellants responded that the

4 Membrane 10 includes polymeric particles 11 shown in Culler Fig. 1B. See
Culler 4:1–3.
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Application 13/481,190

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scope of claim 58 does not cover the entirety of all surfaces but declined to
delineate precisely what the scope of claim 58 does cover.
JUDGE REN: Well, tell us about the substantially all.
Where do we draw the line?
MR. DUPLESSIS: I’m checking the dependent claims
here. I was looking at a dependent claim where we’re
specifically saying that it’s on all surfaces not just substantially
all the surfaces.
JUDGE REN: Okay. So 58 is broader, so it’s less than
all of the surfaces.
MR. DUPLESSIS: Correct.
JUDGE REN: Okay. But you don’t have a position as to
where we draw the line?
MR. DUPLESSIS: I have to return to the specification.
JUDGE REN: Okay.
MR. DUPLESSIS: I don’t have the specifics ready at the
moment, but this Claim 144 where we specify the gaps of the
insulating layer would expose substrate collectively defined --
sorry, 143 is where we specify that all the surface that are
covered, correct.
JUDGE REN: Yeah. And by the way, in your appeal
brief you cite Paragraph 300 to 301 in support of essentially all
the limitations including the substantially all surfaces
limitation.
MR. DUPLESSIS: I can revisit that for you if you’d like
but I think to the extent here is suggesting that that language of
Claim 58 is (indiscernible) in some way, I would submit that
Claim 143 would resolve those issues.
JUDGE REN: Okay. Now, I just kind of -- I just wanted
to see if you have a position on, you know, are we talking about
95 percent versus, you know, 82 percent, so to speak.
MR. DUPLESSIS: I don’t have a particular percentage,
no.

Transcript for Oral Hearing for Appeal No. 2018-000274 (July 25, 2019),
12:21–13:24.
Appeal 2018-000274
Application 13/481,190

9
Based on the discussion at hearing, upon return of the application to
the Examiner’s jurisdiction, the Examiner may wish to consider whether
claim 58 complies with the definiteness requirement under 35 U.S.C. § 112,
second paragraph.

DECISION
The Examiner’s decision is reversed.

REVERSED