Ex Parte Kim et al

Patent Trial and Appeal BoardApr 12, 2016

12364962 (P.T.A.B. Apr. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/364,962 0210312009 28863 7590 04/14/2016 SHUMAKER & SIEFFERT, P, A, 1625 RADIO DRIVE SUITE 300 WOODBURY, MN 55125 FIRST NAMED INVENTOR Young-Hwa Kim 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 1126-003US03 5041 EXAMINER PIZIALI, ANDREW T ART UNIT PAPER NUMBER 1789 NOTIFICATION DATE DELIVERY MODE 04/14/2016 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 Appeal2014-007709 Application 12/364,962 Technology Center 1700 Before: TERRY J. OWENS, CHRISTOPHER C. KENNEDY, and DEBRA L. DENNETT, Administrative Patent Judges. DENNETT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF CASE Appellants appeal under 35 U.S.C. Â§ 134 from a rejection of claims 9- 11, 13, 14, 16, 21-24, 26-35, and 37--48. We have jurisdiction under 35 U.S.C. Â§ 6(b). We REVERSE. The claims are directed to a fabric assembly comprising a woven, nonwoven, or knitted fabric substrate; and a plurality of non-overlapping guard plates comprising a cured polymer resin partially penetrating into the surface of the woven fabric substrate. Appeal2014-007709 Application 12/364,962 Of those claims before us on appeal, claims 9, 22, and 33 are independent. Claim 9, reproduced below, is illustrative of the claimed subject matter on appeal: 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 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. App. Br. 20 (Claims App'x). Independent claim 22 is directed to a fabric assembly comprising at least two woven, nonwoven, or knitted fabric substrates stacked on each other, each with a plurality of non-overlapping guard plates comprising a cured polymer resin on the top surface, wherein the guard plates are separated by gaps between directly adjacent guard plates of the top surface of each layer and partially penetrate into the top surface to provide a mechanical bond, wherein the first and second plurality of guard plates protrude out of the first and second top surfaces to define a thickness greater than or equal to 5 mils and less than I millimeter. App. Br. 22. 2 Appeal2014-007709 Application 12/364,962 Independent claim 33 is directed to a fabric assembly comprising a woven, nonwoven, or knitted fabric substrate; and a plurality of non- overlapping guard plates comprising a cured polymer resin partially penetrating into the surface of the woven fabric substrate, 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 plurality of 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. App. Br. 25. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Fassina Mahler Blauer Thompson Post us 4, 173, 199 us 5,418,044 us 5,626,949 us 5,697,762 us 6,044,493 REJECTIONS Nov. 6, 1979 May 23, 1995 May 6, 1997 Dec. 16, 1997 Apr. 4, 2000 The claims stand rejected under 35 U.S.C. Â§ 103(a) as follows: claims 9-11, 13, 14, 16, 21, 33-35, 37--40, 43, and 45--48 over Blauer in view of Fassina; claims 22-24, 26-32, and 44 over Blauer in view of Fassina and further in view of Thompson; claims 22-24, 26-32, 41, 42, and 44 over Blauer in view of Fassina and further in view of Mahler; claims 9-11, 13, 14, 16, 21, 33-35, 37--40, 43, and 45--48 over Blauer in view of Fassina and further in view of Post; 3 Appeal2014-007709 Application 12/364,962 claims 22-24, 26-32, and 44 over Blauer in view of Fassina and further in view of Thompson; and claims 22-24, 26-32, 41, 42, and 44 over Blauer in view of Fassina and further in view of Mahler. ANALYSIS We reverse the rejections. We need address only the independent claims, i.e., claims 9, 22, and 33. Blauer in view of Fassina With but one exception, 1 the Examiner's rejections of the independent claims rely on the combination of Blauer with Fassina.2 The Examiner contends that Blauer discloses a composite fabric assembly comprising: a woven fabric substrate; and a plurality of non-overlapping guard plates separated by gaps on a surface of the woven fabric substrate, the guard plates compnsmg a cured polymer resin, wherein the woven fabric substrate 1 The Examiner contends that the independent claims are obvious over Blauer in view of Fassina, but thereafter relies on Post if it is shown that Fassina fails to teach or suggest the claimed protruding guard plate thickness. 2 The Examiner rejects independent claims 9 and 33 and their dependent claims as a group. Ans. 3. The Examiner rejects independent claim 22 and its dependent claims as a separate group, but states "Claims 22 [and its dependent claims] are rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over [] Blauer in view of[] Fassina as applied to [independent claims 9 and 33 and their dependent claims] above, and further in view of USPN 5,697,762 to Thompson." Ans. 6. The Examiner does not rely upon Thompson for any disclosure that remedies the deficiency in the references applied to the independent claims. 4 Appeal2014-007709 Application 12/364,962 and the plurality of guard plates are configured to allow for air flow through the composite fabric article. Ans. 3. Having acknowledged that Blauer does not disclose partial penetration of resin into the surface of the substrate, the Examiner turns to Fassina for this limitation, alleging that "Fassina discloses that it is known in the clothing art to partially penetrate resin into a substrate to increase the bond strength between the resins and the substrate." Id. (citing Fassina i-f bridging columns 5 and 6) (emphasis added). However, the Examiner misinterprets Fassina, which instead teaches that the strength of the reinforcing material (not the strength of the bond between elements of the reinforcing material) is derived from a combination of the cured or set reinforcing material and the fabric fibers embedded therein. Fassina 5:61---63. Therefore, the Examiner incorrectly concludes that one of ordinary skill in the art would combine Blauer and Fassina motivated to by a desire to increase the bond between the resin and the substrate. Ans. 3. The Examiner then suggests that Blauer discloses protective coating thickness is a result effective variable that affects flexibility. Ans. 3 (citing Blauer 1 :51-53). The Examiner asserts that Fassina also "discloses that resin thickness is a result effective variable that affects weight, strength, and springiness." Id. Here, again, the Examiner misinterprets Fassina, which teaches that penetration of resin into the fabric (not thickness of resin) provides strength, reinforcement, and springiness, with greater penetration providing greater reinforcement and springiness. Fassina 5:61---65. Based on this further misinterpretation of Fassina' s disclosures, the Examiner concludes that it would have been obvious to one of ordinary skill in the art to make the claimed fabric assembly with protruding guard plates in the 5 Appeal2014-007709 Application 12/364,962 thickness range claimed "because guard plate thickness affects flexibility, weight, strength, and springiness and it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art." However, as discussed, Fassina does not support the Examiner's conclusion that resin thickness is a result effective variable affecting "flexibility, weight, strength, and springiness." Setting forth a prima facie case of obviousness requires establishing that the applied prior art would have provided one of ordinary skill in the art with an apparent reason to modify the prior art to arrive at the claimed invention. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Having misinterpreted the disclosures of Fassina, the Examiner's assertions are not well taken because the Examiner has not established that, in view of Blauer' s disclosures, one of ordinary skill in the art would have had an apparent reason to look to the teachings of Fassina. Thus, the Examiner has not established a prima facie case of obviousness of the Appellants' claimed invention. Blauer in view of Fassina and further in view of Post The Examiner rejects all of the claims at issue over Blauer in view of Fassina and further in view of Post. Ans. 8. 3 The Examiner contends that In the event that it is shown that Fassina fails to teach or suggest the claimed protruding guard plate thickness, Post is cited for disclosing that it is known in the resin coated fabric 3 The Examiner rejects independent claim 22 and its dependent claims under 35 U.S.C. Â§ 103(a) over Blauer in view of Fassina in view of Post "as applied to [independent claims 9 and 33 and their dependent claims]." Ans. 8. 6 Appeal2014-007709 Application 12/364,962 garment art to coat a woven fabric with a protruding resin coating having a thickness of between 0.5 and 1.5 mm to maintain the wearer's manual dexterity and/or tactile sensitivity. Ans. 8 (citing entirety of Post including 1:5-12 and 5:10-36). Id. 3. The Examiner also argues that it would have been obvious to one having ordinary skill in the art at the time the invention was made to make the protruding guard plates within the claimed thickness range, motivated by the expectation of successfully practicing the invention of Blauer [] and/or motivated by a desire to produce a garment that maintains the wearer's manual dexterity and/or tactile sensitivity. However, Post teaches a stretchable protective glove for use by, e.g., law enforcement officers and military personnel who may come in contact with sharp objects or require protection from cuts, punctures, and abrasions as a result of an attack. Post 1 :29-53; 2:46-54. The garment material of Post comprises high strength cut resistant fibers, preferably para-aramid fibers such as KEVLARÂ® fibers, and elastic strands knitted together. Id. 2: 12-25. To achieve the desired elasticity, which provides formfitting, the material typically comprises 3% to 35% elastic fibers. Id. 2: 19-23; 5:58---61. When used for protective gloves, the palm surface of the glove body and palm-side surfaces of the finger and thumb stalls are provided with a palm coating which increases the thickness of the palm surface of the glove and protects the underlying substrate material, provides for a strong non-slip grip with which the wearer can securely grasp the blade of an assailant, and provides a smooth (gap-free) surface along which sharp edges may glide to 7 Appeal2014-007709 Application 12/364,962 reduce the possibility of a sharp edge cutting the glove material. Id. 2:42- 54; 5:43-54. In contrast, Blauer is drawn to a breathable shell for outerwear, comprising an outer fabric and an inner face with a printed stratum of elastomer, i.e., the elastomer is patterned and non-continuous. Blauer Abstract; 3:42--45; 4: 19-23. Blauer teaches that a continuous coating (such as that taught by Post) has several shortcomings, including lack of breathability. Id. 1 :42--45. The Examiner has not established that one of ordinary skill in the art would have been motivated to combine the breathable shell for outerwear with a printed elastomer stratum taught by Blauer and the protective gloves with a smooth palm surface taught by Post to achieve the claimed invention. Thus, the Examiner has not established a prima facie case of obviousness of the Appellants' claimed invention. DECISION/ORDER For the above reasons, the Examiner's rejection of claims 9-11, 13, 14, 16, 21-24, 26-35, and 37--48 reversed. REVERSED 8