Ex Parte CREE

Patent Trial and Appeal Board

Aug 17, 2017

12971879 (P.T.A.B. Aug. 17, 2017)

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.
12/971,879 12/17/2010 James W. CREE JWC-003 8833
26868 7590 08/21/2017
Hasisie Rr Nesihitt T T C EXAMINER
8837 Chapel Square Drive
Suite C
SCHIFFMAN, BENJAMIN A
CINCINNATI, OH 45249 ART UNIT PAPER NUMBER
1742
NOTIFICATION DATE DELIVERY MODE
08/21/2017 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES W. CREE
Appeal 2016-004662
Application 12/971,879
Technology Center 1700
Before ELIZABETH M. ROESEL, JEFFREY R. SNAY, and LILAN REN,
Administrative Patent Judges.
SNAY, Administrative Patent Judge.
DECISION ON APPEAL1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1—9. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 We cite to the Specification (“Spec.”) filed July 11, 2013; Final Office
Action (“Final Act.”) dated January 26, 2015; Appellant’s Appeal Brief
(“App. Br.”) dated June 23, 2015; Examiner’s Answer (“Ans.”) dated
February 1, 2016, and Appellant’s Reply Brief (“Reply Br.”) dated April 1,
2016.
2 Appellant identifies Advantage Creation Enterprise LLC as the real party
in interest. App. Br. 3.
Appeal 2016-004662
Application 12/971,879
BACKGROUND
The subject matter on appeal relates to a method for making an
extrusion coated, perforated nonwoven web. Spec. 12. Claim 1—the sole
independent claim on appeal—is reproduced below from the Claims
Appendix of the Appeal Brief:
1. A method for making an extrusion coated, perforated
nonwoven web, comprising:
(a) extruding a molten polyethylene coating having a
basis weight between about 7 and about 17 gsm onto a
nonwoven web having a basis weight between about 9 and
about 40 gsm;
(b) while aperturing said molten polyethylene coating
through heat and pneumatic pressure differential to create raised
conical microperforations therein at a density of between about
35 and about 120 perforations per linear inch to provide a
microperforated nonwoven web; and then
(c) thermomechanically perforating said microperforated
nonwoven web by feeding it through perforating rolls that
contact the nonwoven web, at least one of said perforating rolls
having raised protuberances to create macroperforations therein
that extend through at least the polyethylene coating, said
macroperforations having a density of between about 6 and
about 35 perforations per linear inch, wherein said
microperforations and said macroperforations are capable of
absorbing and transporting liquid.
REJECTIONS
I. Claims 1—3, 5, and 7 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Kirchberger,3 Cree,4 and Merz.5
3 US 6,300,257 Bl, issued October 9, 2001 (“Kirchberger”).
4 US 2007/0029694 Al, published February 8, 2007 (“Cree”).
5 US 4,995,930, issued February 26, 1991 (“Merz”).
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Appeal 2016-004662
Application 12/971,879
II. Claim 4 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Kirchberger, Cree, Merz, and Young.6
III. Claims 6, 8, and 9 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Kirchberger, Cree, Merz, and Thomas.7
DISCUSSION
A dispositive issue in this case is whether a preponderance of the
evidence supports the Examiner’s finding that a desire to make
Kirchberger’s sheeting permeable to liquids would have been a reason for
one of ordinary skill in the art to apply Cree’s macro-perforation process to
Kirchberger’s extrusion-coated non woven sheeting. Compare Final Act. 19
(“[I]t would have been prima facie obvious to one of ordinary skill in the art
to modify the material of Krichberger to include the perforating of Cree, in
order to provide preferential fluid transport channels . . . [capable of]
absorbing liquid through the micro/macroapertures”), with App. Br. 11 (“[A]
person of ordinary skill would not modify Kirchberger to include the
perforating steps of Cree because this would destroy Kirchberger’s objective
of making breathable sheeting that does not transport liquids.”).
The Examiner finds that Kirchberger discloses an extrusion-coated
nonwoven sheeting but fails to disclose perforating the sheeting. Final Act.
^fl[ 6—7. The Examiner also finds that Cree discloses a process for forming
apertures in material for absorbant articles. Id. ^ 8. The Examiner
determines that it would have been obvious to one of ordinary skill in the art
6 US 5,626,571, issued May 6, 1997 (“Young”).
7 US 6,700,036 B2, issued March 2, 2004 (“Thomas”).
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Application 12/971,879
to perforate Kirchberger’s sheeting by Cree’s method for purposes related to
liquid permeability. Id. 19.
Appellant points to Kirchberger’s requirement that the disclosed
extrusion coating has at least 90 percent of all pores ranging in area from
0.03 to 0.20 pm2 and a maximum pore area of less than 1 pm2. App. Br. 9
(citing Kirchberger 2:7—10). Appellant provides the Declaration of James
W. Cree, the sole inventor in this case.8 Id. 20—26. There, Declarant states
that, “Kirchberger’s sheeting functions to contain liquid while letting vapor
transpire, because of its small pore size.” Decl. 3; App. Br. 22. Appellant
also points to Kirchberger’s teaching that the disclosed sheeting is suited for
use as a breathable material. Id. 9—10 (citing Kirchberger 7:11—25). In light
of the foregoing evidence, Appellant argues that perforating Kirchberger’s
disclosed sheeting to render it permeable to liquids would have been
contrary to Kirchberger’s objective of making a sheeting that is “breathable
but not porous to liquids.” App. Br. 10.
The Examiner responds as follows:
[Tjhese arguments are not based on the teaching of Kirchberger
but rather interpretations by Appellant and Appellant’s
representative. Thus the interpretation should not be given
evidentiary weight but should be considered as Appellant
interpretation/speculation. Appellant’s definition of
Kirchberger’s “breathable” being for vapor transport only, and
not for liquid transport, is not taught or suggested in
Kirchberger.
Ans. 2.
8 Declaration (“Decl.”) filed November 13, 2014 under 37 C.F.R § 1.132.
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Application 12/971,879
Notably, the Examiner fails to identify any evidence or technical
reasoning to show that Kirchberger’s sheeting would have benefitted from
being made liquid permeable. Nor does the Examiner address how
Kirchberger’s sheeting could be perforated to yield liquid permeability, in
the manner taught by Cree, without destroying Kirchberger’s stated limits on
pore size.
On this appeal record, we are persuaded that a preponderance of the
evidence shows that Kirchberger’s purpose is to provide a liquid
impermeable sheeting, and the Examiner’s obviousness rationale is contrary
to that purpose. In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984)
(modification that renders prior art “inoperable for its intended purpose”
may fail to support a conclusion of obviousness). For that reason, Rejection
1 is not sustained.
Neither Young nor Thomas is relied upon in a manner that cures the
above-noted deficiency. Accordingly, Rejections 11 and 111 also are not
sustained.
DECISION
The Examiner’s decision rejecting claims 1—9 is reversed.
REVERSED
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