Ex Parte Koot et alDownload PDFPatent Trials and Appeals BoardApr 3, 201914193993 - (D) (P.T.A.B. Apr. 3, 2019) Copy Citation 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. 3 Appeal 2018-005185 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. 4 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. 5 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 6 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. 7 Appeal 2018-005185 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. 8 Appeal 2018-005185 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 9 Copy with citationCopy as parenthetical citation