Ex Parte Schindzielorz et al

Patent Trial and Appeal BoardDec 19, 2012

10834990 (P.T.A.B. Dec. 19, 2012)

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. 10/834,990 04/30/2004 Michael Schindzielorz 039861-0103 8716 22428 7590 12/19/2012 FOLEY AND LARDNER LLP SUITE 500 3000 K STREET NW WASHINGTON, DC 20007 EXAMINER SINGH-PANDEY, ARTI R ART UNIT PAPER NUMBER 1786 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 SCHINDZIELORZ and SCOTT BURKHART ____________ Appeal 2011-009914 Application 10/834,990 Technology Center 1700 ____________ Before TERRY J. OWENS, ROMULO H. DELMENDO and JEFFREY T. SMITH, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-009914 Application 10/834,990 2 STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134 from the final rejection of claims 1-12 and 30-32. We have jurisdiction under 35 U.S.C. § 6. Appellants’ claimed invention relates to a coated fabric, which is useful in airbags. App. Br. 2. Claim 1 is illustrative: 1. A coated fabric, comprising: a fabric web; and a coating layer substantially overlying the fabric web, wherein a value of a coating weight in g/m2 divided by an average coating thickness in µm is 1.7 or less. The Examiner relied on the following references in rejecting the appealed subject matter: Schindzielorz US 7,468,334 B2 Dec. 23, 2008 Nagaoka US 6,759,355 B2 Jul. 6, 2004 Appellants request review of the following rejections (App. Br. 3) from the Examiner’s final office action: 1. Claims 1-6, 9-12, 30, and 32 rejected under 35 U.S.C. § 112, second paragraph. 2. Claims 1-12, 30, and32 provisionally rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over the claims of pending application 10/956,333.1 3. Claims 1-12 and 30-32 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Nagaoka. 1 Now US patent 7,468,334. Appeal 2011-009914 Application 10/834,990 3 OPINION Rejection under 35 U.S.C. § 112, second paragraph The Examiner contends that independent claims 1 and 9 are indefinite because the claim language compares the ratio of a coating weight to an average coating thickness (two unlike entities). The Examiner contends that the current specification does not provide enough clarity as to how Appellants are calculating or comparing these two entities. Ans. 3. Appellants argue, and we agree, that claims 1 and 9 recite the units for the coating weight and average coating thickness, which are used to calculate the ratio. (App. Br. 4-5). Appellants argue that the Specification provides the requisite guidance to one skilled in the art would have been able to determine the weight of a coating in a given coating process and the average coating thickness. (paragraph 0049; Figure 9). Thus a person of ordinary skill in the art would have known how to determine the relevant properties of a coated fabric in order to determine if the coated fabric falls within the scope of claims. Accordingly we reverse the rejection under 35 U.S.C. § 112, second paragraph. The prior art rejection2 The dispositive issue for this appeal is: Did the Examiner err in determining that Nagaoka describes or suggest a ratio of coating weight to as required by the subject matter of independent claims 1 and 9? 2 We will limit our discussion to independent claims 1 and 9. Appeal 2011-009914 Application 10/834,990 4 After thorough review of the respective positions provided by Appellants and the Examiner, we answer this question in the affirmative and REVERSE. The Examiner found that Nagaoka discloses an air impermeable coated fabric for airbags wherein the coating “thickness is proportion[al] to the coating weight and is less than 3.” (Ans. 4). The Examiner finds that the ratio of coating weight is a result effective variable and that optimizing this ratio to meet the claimed invention would have been obvious. (Id.). We agree with Appellants that independent claims 1 and 9 require the ratio of coating weight in g/m2 divided by an average coating thickness in µm to be 1.7 or less. Appellants correctly argue Nagaoka does not disclose or suggest a ratio of coating weight to average coating thickness because Nagaoka discloses a film thickness ratio of the thickness in a maximum coated portion to the thickness in a minimum coated portion. (App. Br. 6). Appellants additionally argue that the Examiner has not provided evidence to establish the claimed ratio or average coating layer thickness are result effective variables. Id. The Examiner has not adequately addressed Appellants’ arguments. The Examiner also has not identified where Nagaoka describes the suitable coating weight for comparison to the coating thickness. On the present record, the Examiner has failed to meet the initial burden of establishing a prima facie case of obviousness. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Non-Statutory Obvious-Type Double Patenting Appeal 2011-009914 Application 10/834,990 5 We agree with Appellants that the Examiner has not adequately provided evidence to support the basis of the double patenting rejection. (App. Br. 5). According to the Examiner, “[a]lthough the conflicting claims are not identical, they are not patentably distinct from each other because as presently claimed they all appear to be obvious variants of one another only differing in the resultant properties that are claimed.” (Ans. 5). The Examiner has failed to identify any specific evidence to support the stated rejection. The Examiner also has not identified where the claimed invention of 10/956,333 describes the suitable coating weight or the coating thickness for determination the ratio layer of. Accordingly, the Examiner’s rejection is reversed. ORDER The rejections of the appealed claims under 35 U.S.C. §§ 103(a), 112, second paragraph and under the ground of non-statutory obvious-type double patenting are reversed. REVERSED tc