Ex Parte Kamleiter et al

Patent Trial and Appeal Board

Dec 19, 2012

10582349 (P.T.A.B. Dec. 19, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/582,349 01/08/2008 Michael Kamleiter 51648 4931
1609 7590 12/19/2012
ROYLANCE, ABRAMS, BERDO & GOODMAN, L.L.P.
1300 19TH STREET, N.W.
SUITE 600
WASHINGTON,, DC 20036
EXAMINER
MENON, KRISHNAN S
ART UNIT PAPER NUMBER
1777
MAIL DATE DELIVERY MODE
12/19/2012 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 MICHAEL KAMLEITER, WILHELM N. GUDERNATSCH
and EDITH GUDERNATSCH
____________

Appeal 2011-010054
Application 10/582,349
Technology Center 1700
____________

Before JEFFREY T. SMITH, DEBORAH KATZ
and JAMES C. HOUSEL, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-010054
Application 10/582,349

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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 10 through 14, 16 through 26 and 28 through 33. We have
jurisdiction under 35 U.S.C. § 6.
Appellants’ invention is directed to tubular membranes and methods
for making the same. App. Br. 2-3. Claim 10 is illustrative of the subject
matter on appeal and is reproduced below:
10. A method for producing membranes, comprising
the steps of:
constructing a tubular body having a longitudinal axis
from a plurality of threads such that some of the threads are tied
substantially firmly together along fillet-shaped connecting
lines with continuous longitudinal threads parallel to the
longitudinal axis;
between the fillet-shaped connecting lines, forming at
least some of the threads as planar transverse connections
between mutually adjacent ones of the fillet-shaped connecting
lines; and
applying a predefinable membrane material to the tubular
body.
The Examiner relied on the following references in rejecting the
appealed subject matter:
Ten Hove US 5,034,129 July 23, 1991
Stockwell US 5,359,735 November 1, 1994
Murase US 2002/0046970 A1 April 25, 2002
Shintani US 6,454,942 B1 September 24, 2002
Mahendran US 2003/0098275 A1 May 29, 2003

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Appellants, App. Br. 3-4, request review of the following rejections
from the Examiner’s final office action:
I. Claims 16 and 28 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the enablement requirement.
II. Claims 10-14, 16-26 and 28-33 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Ten Hove, Shintani, Murase and
Mahendran.
III. Claims 10-14, 16-26 and 28-33 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by or under 35 U.S.C. § 103(a) as being unpatentable
over Stockwell with further evidence from Shintani, Murase and Mahendran.

OPINION
Rejection under 35 U.S.C. § 112, 1st paragraph (Lack of Enablement)
(Rejection I)
The dispositive issue on this rejection is: Did the Examiner err in
determining that claims 16 and 28 fail to comply with the enablement
requirement?
We answer this question in the affirmative and REVERSE.
The Examiner asserts that making filaments from graphite powder is
extremely difficult, if not impossible. Ans. 12. Thus, the Examiner
contends that Appellants’ disclosure does not provide guidance for making
mono or multifilaments of graphite powder without undue experimentation.
Id. at 5.
We agree with Appellants that the Examiner provided no evidence or
reasonable basis to support the contention that making threads from graphite
powder is not known. App. Br. 5. The Examiner has not adequately
explained why or how the claims are not enabled by the Specification. The
Examiner has also not established that undue experimentation is required to
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Application 10/582,349

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practice the claimed invention. Further, the Examiner has not adequately
addressed why the U.S. Patents cited by Appellants do not support
Appellants’ position that one skilled in the art would be able to make and
use threads of graphite powder. Id. at 4-5.
Accordingly we reverse the rejection under 35 U.S.C. § 112, first
paragraph.

Rejection under 35 U.S.C. § 103(a) based on Ten Hove and Shintani
(Rejection II)
The dispositive issue for this appeal is: Did the Examiner err in
determining that the tricot knitted fabric of Shintani would have made
obvious a tubular body having continuous longitudinal threads parallel to the
longitudinal axis as required by the subject matter of independent claims 10
and 23? 1, 2
After thorough review of the respective positions provided by
Appellants and the Examiner, we REVERSE for the reasons presented by
Appellants and add the following.
During examination, the Examiner bears the initial burden of
establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). The Examiner’s mere conclusory statements
are not sufficient to support the prima facie case of obviousness.
“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning

1 We focus our discussion on independent claim 10.
2 A discussion of the references to Murase and Mahendran is unnecessary
for disposition of this rejection. The Examiner relied upon these references
for describing features not related to the dispositive issue.
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with some rational underpinning to support the legal conclusion of
obviousness.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)
(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
The Examiner found that Ten Hove teaches a method of making
membranes comprising the steps of providing a knitted tubular body and
applying a membrane material to the tubular body. Ans. 6-7. The Examiner
also found that Ten Hove does not disclose details of the knitted tubular
body. Id. at 7. The Examiner found that Shintani teaches a tricot knitted
fabric knitted as claimed with knots strung along a longitudinal direction
parallel to the longitudinal axis with continuous threads. Id. The Examiner
found that it would have been obvious to one skilled in the art to replace the
knitted fabric of Ten Hove with Shintani’s knitted fabric to make the tubular
membrane of Ten Hove so as to maintain the structure and rigidity of the
tubular membrane. Id. at 9.
Appellants argue that the prior art does not disclose the method steps
of forming the claimed knitted structure. App. Br. 8. Appellants
particularly argue that Shintani does not disclose the claimed plurality of
threads tied substantially firmly together along fillet-shaped connecting lines
with continuous longitudinal threads parallel to the longitudinal axis. Id. at
7-8. Thus, Appellants assert that the claimed invention is patentably
distinguishable over Shintani by the continuous longitudinal threads parallel
to the longitudinal axis. Id. at 7.
We agree with Appellants that Shintani does not disclose a knitted
fabric with a weave structure having the continuous longitudinal threads
parallel to the longitudinal axis as required by the subject matter of
independent claim 10. As correctly noted by Appellants, Shintani’s Figure 1
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shows no continuous longitudinal threads provided in the knotted fillet lines
of Shintani’s tricot fabric. Id. at 8. We are unpersuaded by the Examiner’s
assertion that Appellants’ disclosure provides reason to believe that
Appellants’ crochet knit is the same as or similar to Shintani’s knit because
Appellants’ connecting lines 14 are not disclosed as straight continuous
longitudinal threads. Ans. 14. Specification pages 7-9 suggest otherwise.3
Thus, the Examiner has not adequately explained why the tricot weave of
Shintani’s knitted fabric meets the structural requirements of Appellants’
knitted tubular body as required by the subject matter of independent claim
10.
On the present record, the Examiner has failed to meet the initial
burden of establishing a prima facie case of obviousness. See Oetiker, 977
F.2d at 1445; In re Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993).
For the reasons stated above and those presented by Appellants, the
rejection of claims 10-14, 16-26 and 28-33 under 35 U.S.C. § 103(a) over
Ten Hove, Shintani, Murase and Mahendran is reversed.

Rejection based on Stockwell (Rejection III) 4, 5
The Examiner found that Stockwell discloses a method of coating a
circular (tubular) knitted fabric with a membrane material. Ans. 10. The
Examiner also found that Stockwell discloses using tricot knitted material.
Id. The Examiner concluded that the subject matter of independent claim 10

3 We also note that Specification page discloses that the device and method
of making Appellants’ knitted tubular body is known in the art.
4 We again focus our discussion on independent claim 10.
5 A discussion of the references to Murase and Mahendran is also
unnecessary for disposition of this rejection.
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would have been anticipated by or obvious over Stockwell in light of the
teachings of Shintani. Id.
We REVERSE for the reasons presented by Appellants and add the
following.
We agree with Appellants that the subject matter of independent claim
10 is not anticipated by Stockwell. App. Br. 22-23. The Examiner
improperly asserted that Stockwell’s tricot woven knitted fabric anticipated
the claimed knitted fabric. Ans. 10. The Examiner has not adequately
explained why or how Stockwell’s tricot woven knit fabric anticipates the
structural requirements of Appellants’ knitted tubular body as required by
the subject matter of independent claim 10. Under these circumstances, we
cannot conclude that the Examiner has met the minimum threshold of
establishing anticipation under § 102(b).
We also cannot sustain the rejection under 35 U.S.C. § 103(a) over
Stockwell, Shintani, Murase and Mahendran. We note that the positions of
the Examiner (Ans. 10-11, 19-20) and Appellants (App. Br. 14-21) with
respect to this rejection are substantially the same as those we addressed in
our discussion of the prior art under 35 U.S.C. § 103(a). Therefore, for the
reasons stated above and those presented by Appellants, the rejection of
claims 10-14, 16-26 and 28-33 under 35 U.S.C. § 103(a) over Ten Hove,
Shintani, Murase and Mahendran is reversed.

ORDER
The rejection of claims 16 and 28 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the enablement requirement is reversed.
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The rejection of claims 10-14, 16-26 and 28-33 under 35 U.S.C.
§ 103(a) as unpatentable over Ten Hove, Shintani, Murase and Mahendran is
reversed.
The rejection of claims 10-14, 16-26 and 28-33 under 35 U.S.C.
§ 102(b) as anticipated by or under 35 U.S.C. § 103(a) as being unpatentable
over Stockwell with further evidence from Shintani, Murase and Mahendran
is reversed.

REVERSED
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