Ex Parte Koot et al

Patent Trials and Appeals Board

Apr 3, 2019

14193993 - (D) (P.T.A.B. Apr. 3, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/193,993 02/28/2014
26813 7590 04/05/2019
MUETING, RAASCH & GEBHARDT, P.A.
P.O. BOX 581336
MINNEAPOLIS, MN 55458-1336
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Jurgen Koot
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.
553.00850101 1414
EXAMINER
MCKINNON, LASHAWNDA T
ART UNIT PAPER NUMBER
1789
NOTIFICATION DATE DELIVERY MODE
04/05/2019 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):
ptodocketing@mrgs.com
PTOL-90A (Rev. 04/07)
UNITED ST ATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JURGEN KOOT and JURGEN TRAMNITZ
Appeal2018-005185
Application 14/193, 993
Technology Center 1700
Before JEFFREY B. ROBERTSON, SHELDONM. McGEE, and
JANEE. INGLESE, Administrative Patent Judges.
McGEE, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellant 1 appeals from the Examiner's
rejections under 35 U.S.C. §103(a).
We have jurisdiction. 35 U.S.C. §6.
We affrrm.
1 Appellant is the Applicant, Parabeam b. v. ZCL Composites, Inc., which is
identified as the real party in interest. App. Br. 2.
Appeal 2018-005185
Application 14/193, 993
BACKGROUND
The subject matter on appeal relates to a cushioning material. Spec. 1.
Representative claim 1, taken from the Claims Appendix of the
Appeal Brief, appears below with emphasis added to limitations relevant to
this appeal, and indentations added to assist readability:
1. Cushioning material for resilient, insulating or padding
covering of objects or components, comprising
a double-pile fabric being elastically impregnated by non-
foamed resin impregnation, in which an upper fabric and a lower
fabric are connected in a spaced-apart manner by webs that are
formed by pile threads,
wherein the elastically impregnated double-pile fabric
exhibits a shape resilience with a non-linear spring
characteristic due to the connecting webs, having a lower
characteristic region, a medium characteristic region and an
upper characteristic region,
the lower and the upper characteristic regions having an
ascending hysteresis loop profile respectively,
while the medium characteristic region has a less
ascending hysteresis loop profile which gives the impregnated
double-pile fabric an internal damping capacity, and said internal
damping capacity is adjusted by a volume weight depending on
the used pile threads and/or a degree of hardness of the resin
impregnation,
wherein the degree of hardness of the resin impregnation
is settable in a range from 30 to 90 Shore A,
and wherein the webs formed by the pile threads comprise
helically twisted individual webs being axially loadable spring
elements, and further wherein the double-pile fabric comprises
yams with a thread size in the range from 60 to 3 00 tex.
App. Br. 34.
2
Appeal 2018-005185
Application 14/193, 993
REFERENCES
The Examiner relies on the following references as evidence of
unpatentability:
Bottger
De LaPorte
Yuuki
Dai et al.
Hascalovich
Geraharuto2
Ziche
us 4,840,828 June 20, 1989
us 5,175,034 Dec. 29, 1992
US 2003/0044607 Al Mar. 6, 2003
US 2009/0270523 Al Oct. 29, 2009
US 2010/0248573 Al Sept. 30, 2010
JP 1218410 Aug. 21, 1989
DE 102006056379 June 5, 2008
REJECTIONS ON APPEAL
On appeal, the Examiner maintains the following rejections under pre-
AIA 35 U.S.C. § 103(a):
Claims 1, 2, 6 and 8 as unpatentable over Bottger in view of Yuuki in
further view of Ziche;
Claims 4 and 7 as unpatentable over Bottger in view of Yuuki in view
of Zic he in further view of De La Porte;
Claims 12-20 as unpatentable over Bottger in view ofYuuki in view
of De La Porte in further view of Zic he;
Claims 7 and 9 as unpatentable over Bottger in view of Yuuki in view
of Zic he in further view of Geraharuto;
Claims 17 and 21 as unpatentable over Bottger in view of Yuuki in
view of De La Porte in further view of Zic he in further view of Geraharuto;
2 The Examiner relies on EP0280213 as an English translation of
Geraharuto. Final Act. 16, 18.
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Application 14/193, 993
Claim 10 as unpatentable over Bottger in view of Yuuki in view of
Zic he in further view of Hascalovich; and
Claim 11 as unpatentable over Bottger in view of Yuuki in view of
Zic he in view of Hascalovich in further view of Dai.
OPINION
Appellant presents arguments specifically directed to the common
limitations recited in independent claims 1 and 12 (App. Br. 8-32). In
considering these arguments, we need focus only on representative claim 1.
After consideration of this appeal record, we sustain the§ 103(a)
rejections advanced in this appeal based on the fmdings of fact, conclusions
of law, and rebuttals to arguments well expressed by the Examiner in the
Final Office Action and in the Answer. We add the following for emphasis.
"[T]o rely on inherency to establish the existence of a claim limitation
in the prior art in an obviousness analysis[,] the limitation at issue
necessarily must be present, or the natural result of the combination of
elements explicitly disclosed by the prior art." PAR Pharm., Inc. v. Tlfll
Phanns, Inc., 773 F.3d 1186, 1195-96 (Fed. Cir. 2014). Furthennore, to
properly rely on the doctrine of inherency, "the Examiner must provide a
basis in fact and/or technical reasoning to reasonably support the
determination that the allegedly inherent characteristic necessarily flows
from the teachings of the applied prior art." Ex Parte Levy, 17 USPQ2d
1461, 1464 (BP AI 1990). Once the Examiner so provides, the burden then
shifts to the patent applicant to demonstrate otherwise. See In re Best, 562
F.2d 1252, 1255 (CCP A 1977).
Here, Appellant does not dispute that the prior art teaches the
structural elements of the claimed cushioning material. App. Br., generally.
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Appeal 2018-005185
Application 14/193, 993
Rather, Appellant focuses on the properties (e.g., "a shape resilience," "a
non-linear spring characteristic") that the Examiner has determined would be
inherent. Thus, we must frrst determine whether the Examiner properly
shifted the burden to Appellant to demonstrate that the properties the
Examiner has alleged are inherent- i.e., "the claimed shape resilience of the
double pile fabric having a non-linear spring characteristic due to the
connecting webs" (Final Act. 3)- do not necessarily flow from the teachings
of the applied references. Uponconsideringthe evidence of record, we
determine that the Examiner properly shifted the burden to Appellant. Our
reasoning follows.
In the "Summary of Claimed Subject Matter" of the Appeal Brief,
Appellant refers to Figure 1 of the Specification and identifies "reference
number 1 that shows the double-pile fabric provided ... for resin
impregnation" as claimed in independent claims 1 and 12. App. Br. 2, 3.
Appellant's Figure 1 is copied below:
FIG.1
Appellant's Figure 1 depicts a "perspective view of a cushioning
material." Spec. 5:35-36.
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Appeal 2018-005185
Application 14/193, 993
In rejecting claim 1, the Examiner finds that Bottger teaches a double-
pile fabric in its Figure 1, and that such fabric may be resin-impregnated
with a non-foamed resin. Final Act. 2. Bottger's Figures 1 and 2 are
reproduced together below:
F!G.1
Bottger's Figure 1 illustrates a perspective view of a multi-layered
fabric with upper layer 2, lower layer 3 and intermediate ribs 4 connecting
the upper and lower layers. Bottger 3:38--40, 4:1-11. Bottger's Figure 2
illustrates a cross-sectional view along line II-II in Figure 1. Id. at 3:41--42.
In rejecting claim 1, the Examiner relies on the teachings of Bottger
except for 1) the claimed Shore A hardness of the impregnated resin, 2) the
thread sizes used, and 3) the recited "a shape resilience with a non-linear
spring characteristic." 3 Final Act. 2--4. Regarding difference 1), the
3 Each of the independent claims 1 and 12 recites "a shape resilience with a
non-linear spring characteristic." Neither claim, however, specifies any
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Appeal 2018-005185
Application 14/193, 993
Examiner fmds that Zic he teaches an elastic resin for impregnation of a
fabric having a Shore A hardness range (i.e., 66-82) that is fully
encompassed by the range recited in claim 1 (i.e., 30 to 90). Id. at 3--4.
Regarding difference 2), the Examiner fmds that Yuuki discloses a
connecting yam having a thread size of 5-120 tex, which overlaps the
claimed range of 60 to 3 00 tex. Id. at 3.
Considering Bottger's Figure 1 vis-a-vis Figure 1 of Appellant's
Drawings, Ziche' s impregnation resin having a Shore A hardness that is
fully encompassed by the claimed range, and Yuuki's thread sizes that
overlap those recited in claim 1, the Examiner has identified a product
suggested by the combined disclosures of the applied prior art that is
identical or substantially identical to that which is claimed. Under such
circumstances, the predecessor to our reviewing court has made it clear that
the burden shifts from the Examiner to the Appellant:
Where ... the claimed and prior art products are identical
or substantially identical, ... the PTO can require an applicant to
prove that the prior art products do not necessarily or inherently
possess the characteristics of his claimed product. Whether the
rejection is based on 'inherency' under 35 U.S.C. § 102, on
'prima facie obviousness' under 35 U.S.C. § 103, jointly or
alternatively, the burden of proof is the same, and its fairness is
evidenced by the PTO's inability to manufacture products or to
obtain and compare prior art products.
In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations and footnote
omitted).
particular degree of shape resilience or spring characteristic for the
impregnated double-pile fabric.
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Application 14/193, 993
Accordingly, we disagree with Appellant that the Examiner's reliance
on the doctrine of inherency is improper. App. Br. 11-16.
Furthermore, Appellant's argument that the Examiner solely relied on
the inherent properties as the basis of combining the references is
unpersuasive. Id. at 15-16, 22-23. Here, Appellant's argument fails to
mention the additional reasons the Examiner provided to support the
combination of references (i.e., "durability against long term use" for
Yuuki' s thread size, and Ziche' s resin which exhibits "high permeability to
gases"). Final Act. 3--4.
Finally, we observe that Appellant's teaching away arguments (App.
Br. 16-18) are unpersuasive because they focus on Bottger' s express
mention of the term "rigid," which is a relative term. 4 Similar arguments
that Yuuki teaches away from resin impregnation (id. at 18-20) are also not
well taken because Appellant identifies no disclosure with Yuuki that
"criticize[ s], discredit[ s], or otherwise discourage[ s ]" resin impregnation.
See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (explaining that
"[ t ]he prior art's mere disclosure of more than one alternative does not
constitute a teaching away ... because such disclosure does not criticize,
discredit, or otherwise discourage the solution claimed"). Here, we
emphasize Yuuki's teaching that "[t]he monofilament yam of the present
invention is applicable to various uses," and, in particular, "as a connecting
yam for a three-dimensional fabric." Yuuki ,r,r 22, 3 7.
4 Furthermore, as correctly observed by the Examiner (Ans. 24), the
Specification indicates that "the webs 14 have a spring-elastic restoring
force on account of inherent stiffness." Spec. 7:14--16. Appellant's
arguments regarding Bottger's rigidity do not distinguish over such an
inherently stiff product.
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Application 14/193, 993
Therefore, upon consideration of the respective positions of the
Examiner and Appellant, we determine that the Examiner properly shifted
the burden to Appellant to demonstrate that the claimed properties would not
be inherent in the prior art. Because Appellant has not shown persuasively
that the properties are not inherent in the proposed combination of the relied-
upon disclosures in the applied prior art, and because Appellant fails to
argue persuasively that the Examiner's underlying combination ofBottger,
Yuuki, and Ziche is erroneous, Appellant has not identified reversible error
in the obviousness rejections.
DECISION
The decision of the Examiner is affrrmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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