Ex Parte Taylor

Patent Trial and Appeal Board

Aug 9, 2017

11072683 (P.T.A.B. Aug. 9, 2017)

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.
11/072,683 03/04/2005 David Stirling Taylor 1347-85104-US 1216
22242 7590 08/10/2017
FITCH EVEN TAB IN & FLANNERY, LLP
120 SOUTH LASALLE STREET
SUITE 1600
CHICAGO, IL 60603-3406
EXAMINER
PIZIALI, ANDREW T
ART UNIT PAPER NUMBER
1789
MAIL DATE DELIVERY MODE
08/10/2017 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 DAVID STIRLING TAYLOR
Appeal 2015-005021
Application 11/072,683
Technology Center 1700
Before ADRIENE LEPIANE HANLON, ROMULO H. DELMENDO, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.
HANLON, Administrative Patent Judge.
DECISION ON APPEAL
A. STATEMENT OF THE CASE
The Appellant filed an appeal under 35 U.S.C. § 134 from an Examiner’s
decision finally rejecting claims 1—3, 6, 24—27, 29, 30, 32—35, 39, 42-47, and 49-
66. A hearing was held on April 20, 2017. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM and enter new grounds of rejection under 37 C.F.R. § 41.50(b).
Representative claim 1 is reproduced below from the Claims Appendix of
the Appeal Brief dated January 5, 2015 (“App. Br.”).
1. A flexible material comprising:
a four way stretchable fabric substrate; and
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Application 11/072,683
a plurality of spaced resiliently compressible foam elements
comprising polyethylene, resiliently compressible individual foam
elements having a fabric interfacing surface adhesively affixed to the
fabric substrate with a polyethylene or ethyl vinyl acetate
thermoplastic hot melt adhesive, the fabric interfacing surface
adhesively affixed to the fabric and which fabric interfacing surface
having an area of not greater than 1 square inch, the adhesive
comprising a thermoplastic adhesive having a melting point of at least
about 250°F, wherein the flexible material may be washed in water
having a temperature of up to 140°F for up to about 15 minutes and
then dried at a temperature of from about 140°F to about 200°F for up
to about 40 minutes without detachment of resiliently compressible
foam elements from the fabric substrate after up to 50 washing and
drying cycles.
App. Br. 44.
The Examiner maintains the following grounds of rejection on appeal:1
(1) claims 1—3, 6, 24—27, 29, 30, 32—35, 39, 42-47, and 49-66 under 35
U.S.C. § 112, second paragraph, as being indefinite;
(2) claims 1—3, 6, 24, 26, 27, 29, 30, 32—35, 39, 42-47, and 49-66 under
35 U.S.C. § 103(a) as unpatentable over Taylor2 in view of Hefele3 and Sama Xiro
GmbH Technical Data Sheet (if necessary);4
1 The Examiner also objects to the Appellant’s Specification for using the
trademarks SPANDEX and INTERA without accompanying generic terminology.
Final Office Action dated June 19, 2014 (“Final”), at 2. Relying on MPEP
§ 608.0l(v)(I)(B), the Appellant argues that the specification is not objectionable.
App. Br. 39-40. This matter is properly raised by a petition under 37 C.F.R. §
1.181. See 37 C.F.R. § 1.113; MPEP § 1002.02(c) (8th ed., Rev. 9, Aug. 2012).
Petitionable matters are not appealable to the Patent Trial and Appeal Board.
MPEP § 1201.
2 US 6,743,325 Bl, issued June 1, 2004 (“Taylor”).
3 US 4,183,978, issued January 15, 1980 (“Hefele”).
4 Sama Xiro GmbH Technical Data Sheet dated January 2001 (“Sama”).
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Application 11/072,683
(3) claim 25 under 35 U.S.C. § 103(a) as unpatentable over Taylor in
view of Hefele and Sama (if necessary), and further in view of Lassiter5 or Dettoni
et al.;6
(4) claims 1—3, 6, 24, 26, 27, 29, 30, 32—35, 39, 42-47, and 49-66 under
35 U.S.C. § 103(a) as unpatentable over Taylor in view of Hefele and Sama (if
necessary), and further in view of the Applicant’s Admitted Prior Art;7
(5) claim 25 under 35 U.S.C. § 103(a) as unpatentable over Taylor in
view of Hefele, Sama (if necessary), and the Applicant’s Admitted Prior Art, and
further in view of Lassiter or Dettoni;
(6) claims 1—3, 6, 24, 26, 27, 29, 30, 32—35, 39, 42-47, and 49-66 under
35 U.S.C. § 103(a) as unpatentable over Taylor in view of Simon et al.8 and Sama
(if necessary);
(7) claim 25 under 35 U.S.C. § 103(a) as unpatentable over Taylor in
view of Simon and Sama (if necessary), and further in view of Lassiter or Dettoni;
(8) claims 1—3, 6, 24, 26, 27, 29, 30, 32—35, 39, 42-47, and 49-66 under
35 U.S.C. § 103(a) as unpatentable over Taylor in view of Simon and Sama (if
necessary), and further in view of the Applicant’s Admitted Prior Art;
(9) claim 25 under 35 U.S.C. § 103(a) as unpatentable over Taylor in
view of Simon, Sama (if necessary), and the Applicant’s Admitted Prior Art, and
further in view of Lassiter or Dettoni;
5 US 4,734,306, issued March 29, 1988 (“Lassiter”).
6 US 6,102,482, issued August 15, 2000 (“Dettoni”).
7 Page 1 of the Appellant’s Specification.
8 US 5,677,038, issued October 14, 1997 (“Simon”).
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(10) claims 1—3, 6, 24, 26, 27, 29, 30, 32—35, 39, 42^47, and 49-66 under
35 U.S.C. § 103(a) as unpatentable over Taylor in view of Kamat9 and Sama (if
necessary);
(11) claim 25 under 35 U.S.C. § 103(a) as unpatentable over Taylor in
view of Kamat and Sama (if necessary), and further in view of Lassiter or Dettoni;
(12) claims 1—3, 6, 24, 26, 27, 29, 30, 32—35, 39, 42^47, and 49-66 under
35 U.S.C. § 103(a) as unpatentable over Taylor in view of Kamat and Sama (if
necessary), and further in view of the Applicant’s Admitted Prior Art;
(13) claim 25 under 35 U.S.C. § 103(a) as unpatentable over Taylor in
view of Kamat, Sama (if necessary), and the Applicant’s Admitted Prior Art, and
further in view of Lassiter or Dettoni;
(14) claims 1—3, 6, 24, 26, 27, 29, 30, 32—35, 39, 42-47, and 49-66 under
35 U.S.C. § 103(a) as unpatentable over Taylor in view of Wald et al.10 and Sama;
(15) claim 25 under 35 U.S.C. § 103(a) as unpatentable over Taylor in
view of Wald and Sama, and further in view of Lassiter or Dettoni;
(16) claims 1—3, 6, 24, 26, 27, 29, 30, 32—35, 39, 42-47, and 49-66 under
35 U.S.C. § 103(a) as unpatentable over Taylor in view of Wald and Sama, and
further in view of the Applicant’s Admitted Prior Art;
(17) claim 25 under 35 U.S.C. § 103(a) as unpatentable over Taylor in
view of Wald, Sama, and the Applicant’s Admitted Prior Art, and further in view
of Lassiter or Dettoni;
9 US 4,415,622, issued November 15, 1983 (“Kamat”).
10 US 4,350,727, issued September 21, 1982 (“Wald”).
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(18) claims 1—3, 6, 24, 26, 27, 29, 30, 32—35, 39, 42-47, and 49-66 under
35 U.S.C. § 103(a) as unpatentable over Goldfme11 in view of Hefele and Sama (if
necessary);
(19) claim 25 under 35 U.S.C. § 103(a) as unpatentable over Goldfme in
view of Hefele and Sama (if necessary), and further in view of Lassiter or Dettoni;
(20) claims 1—3, 6, 24, 26, 27, 29, 30, 32—35, 39, 42-47, and 49-66 under
35 U.S.C. § 103(a) as unpatentable over Goldfme in view of Simon and Sama (if
necessary);
(21) claim 25 under 35 U.S.C. § 103(a) as unpatentable over Goldfme in
view of Simon and Sama (if necessary), and further in view of Lassiter or Dettoni;
(22) claims 1—3, 6, 24, 26, 27, 29, 30, 32—35, 39, 42-47, and 49-66 under
35 U.S.C. § 103(a) as unpatentable over Goldfme in view of Kamat and Sama (if
necessary);
(23) claim 25 under 35 U.S.C. § 103(a) as unpatentable over Goldfme in
view of Kamat and Sama (if necessary), and further in view of Lassiter or Dettoni;
(24) claims 1—3, 6, 24, 26, 27, 29, 30, 32—35, 39, 42-47, and 49-66 under
35 U.S.C. § 103(a) as unpatentable over Goldfme in view of Wald and Sama; and
(25) claim 25 under 35 U.S.C. § 103(a) as unpatentable over Goldfme in
view of Wald and Sama, and further in view of Lassiter or Dettoni.
B. DISCUSSION
1. Rejection (1)
Citing MPEP § 2173.05(b), the Examiner concludes that:
[T]he phrase “at least about 250° F” renders the claims indefinite
because there is close prior art and there is nothing in the
specification, prosecution history, or the prior art to provide any
11 WO 01/15892 Al, published March 8, 2001 (“Goldfme”).
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indication as to what range is covered by the term “about.” The court
has held that claims reciting “at least about” were invalid for
indefmiteness.
Final 2.
In response, the Appellant argues that MPEP § 2173.05(b) does not state that
the phrase “at least about” renders a claim per se indefinite. App. Br. 41. Rather,
the Appellant argues that the word “about” is known to be used to avoid a strict
numerical boundary for a specified parameter, which in this case is temperature.
App. Br. 41 (citing Ortho-McNeil Pharm., Inc. v. Caraco Pharm. Labs., Ltd., 476
F.3d 1321, 1326 (Fed. Cir. 2007)); Reply Br. 18 (citing Kennemetal v. Ingersoll
Cutting Tool Co., 780 F.3d 1376 (Fed. Cir. 2015)).12
The Appellant’s argument is persuasive of reversible error. The Appellant
discloses that “the adhesive has a melting point of at least 250°F.” Spec. 2. Thus,
the phrase “at least about 250°F” is interpreted as defining a range wherein the
lower limit of the range is slightly below 250°F. See In re Woodruff, 919 F.2d
1575, 1577 (Fed. Cir. 1990) (holding that prior art teaching of “about 1—5%”
allows for concentrations “slightly above 5%”); see also Ans. 56 (finding that “a
temperature that is about 250° F includes temperatures at least slightly below
250° F”).13
The Examiner also maintains that:
[I]t is not clear if. . . claim [1] requires “resiliently compressible foam
elements comprising polyethylene” and in addition requires
“resiliently compressible individual foam elements having a fabric
interfacing surface adhesively affixed to the fabric substrate.” Or, if
the claim requires that the “resiliently compressible foam elements
comprising polyethylene” are the “resiliently compressible individual
12 Reply Brief dated April 6, 2015.
13 Examiner’s Answer dated March 12, 2015.
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Application 11/072,683
foam elements having a fabric interfacing surface adhesively affixed
to the fabric substrate.”
Final 3.
In response, the Appellant argues:
[CJlaim 1 requires a plurality of “spaced resiliently compressible foam
elements comprising polyethylene.” Of these foam elements,
individual elements which are resiliently compressible have a fabric
interfacing surface affixed to the fabric substrate. That interfacing
surface is affixed to the fabric. The specification and drawings are
clear on this. See Figures 1 through 6 and page 5 of the specification
(second full paragraph or paragraph 13 of the published specification).
App. Br. 41.
The Appellant’s argument is persuasive of reversible error. On this record,
it is clear that the “plurality of spaced resiliently compressible foam elements
comprising polyethylene” are the “resiliently compressible individual foam
elements” that have “a fabric interfacing surface adhesively affixed to the fabric
substrate.” App. Br. 44.
Finally, the Examiner concludes that the phrase “the resiliently compressible
foam elements between the top and bottom layers” in claim 24 lacks antecedent
basis. Final 3. More specifically, the Examiner contends that the claim recites “a
top layer, a bottom layer, and resiliently compressible foam elements adhesively
affixed to the bottom layer” but “there are not previously disclosed foam elements
necessarily located between the top and bottom layers.” Ans. 57.
To the extent that “the sequence could be foam elements/bottom layer/top
layer,” as the Examiner contends,14 the language of claim 24 makes clear that the
sequence is bottom layer/foam elements/top layer. In the words of the Appellant,
“[t]he questioned phrase clearly adds the further detail that the foam is not only
14 Ans. 57 (emphasis added).
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Application 11/072,683
affixed to the bottom layer, but it is ‘between’ or sandwiched by the two layers.”
Reply Br. 18; see also App. Br. 42 (arguing that the claim “asserts the resiliently
compressible foam elements are between the top and bottom fabric substrates”).
For the reasons set forth above, the § 112, second paragraph, rejection is not
sustained.
2. Rejection (2)
a. Claim 1
The Examiner finds Taylor discloses a flexible material comprising a four
way stretchable fabric substrate and a plurality of spaced resiliently compressible
foam elements adhesively affixed to the fabric substrate with a hot melt adhesive.
Final 3; see also Taylor Fig. 1. The Examiner finds the material may be used in
clothing. Final 3^4 (citing Taylor, col. 3,11. 27—35); see also Taylor, col. 3,11. 28—
31 (disclosing that the material is suitable for incorporation into protective clothing
such as knee pads, shin pads, and arm bands). The Examiner finds “Taylor is
silent with regards to any and all specific hot melt adhesive materials” used to
bond the foam elements and stretchable fabric. Final 4.
The Examiner finds “Hefele discloses that in the clothing art (column 1,
lines 7—11) polyethylene adhesive is one of the ‘most commonly used heat-sealing
adhesives’ (column 1, lines 46—59) to provide a garment ‘resistant to water­
washing and dry cleaning’ (column 1, lines 22—30).” Final 4 (emphasis omitted);
see also Hefele, col. 1,11. 48—51 (disclosing that the most commonly used heat­
sealing adhesives, which are based on, inter alia, polyethylenes, are resistant to
water-washing). The Examiner finds the polyethylene adhesive has a melting
point of about 257°F to 275°F and adheres foam to fabric, resulting in a flexible
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structure.15 Final 4 (citing Hefele, col. 2,11. 50—54 and Hefele claim 1). The
Examiner concludes that it would have been obvious to one of ordinary skill in the
art to bond Taylor’s foam elements to the disclosed fabric using Hefele’s
polyethylene adhesive to enable clothing made with Taylor’s flexible material to
be washed.16 Final 4—5 (citing In re Leshin, 277 F.2d 197, 199 (CCPA 1960)
(obvious to select a known material on the basis of its suitability for an intended
use)).
The Appellant argues that Hefele does not bond small unstable elements and
does not mention foam. The Appellant argues that Hefele uses an array of small
adhesive spots to bond a relatively large stiffening substrate and a fabric sheet and
if one adhesive spot fails, the other adhesive spots will hold the stiffening substrate
and the fabric sheet together. App. Br. 24. The Appellant argues that “[t]he
tolerances for applicant’s article have to be higher.” App. Br. 24.
The Appellant’s argument is not persuasive of reversible error. Hefele
discloses that “the [adhesive] coating is applied to a substrate consisting of a
knitted fabric, woven fabric, fleece or foam” and the substrate may be joined to a
textile material. Hefele, col. 2,11. 50—54 (emphasis added); see also Hefele, col. 2,
11. 29-32 (disclosing that the adhesive may be applied to woven materials, knitted
15 In a preferred embodiment of Hefele’s invention, the polyethylene adhesive
comprises two layers. Hefele, col. 3,11. 36-40; see also App. Br. 24. The
Appellant does not direct us to any language in claim 1 excluding Hefele’s
polyethylene adhesive.
16 The Appellant does not dispute that one of ordinary skill in the art would have
found it desirable to wash the protective clothing disclosed in Taylor at the time of
the Appellant’s invention. Indeed, one of ordinary skill in the art would have
understood that Taylor’s protective clothing would need to be washed for hygienic
purposes.
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fabrics, fleeces and foams); Hefele claim 1 (reciting that the heat-sealing structure
remains flexible after being secured to a textile article).17
The Appellant does not direct us to any evidence showing that Hefele’s
adhesive spots would have been expected to fail when bonding fabric and foam in
Hefele’s article. The Appellant also does not direct us to any evidence showing
that considerations beyond the ordinary level of skill in the art would have been
required to bond the foam elements and stretchable textile of Taylor using Hefele’s
adhesive.18 Finally, the Appellant does not direct us to any evidence showing that
the flexible material of Taylor, modified with the polyethylene adhesive of Hefele,
would not have been expected to withstand the conditions recited in claim 1.19 See
17 In the Reply Brief, the Appellant argues that a flexible heat sealing structure
does not mean that the final product is flexible. Reply Br. 9. Nonetheless, one of
ordinary skill in the art would have found the formation of a flexible heat-sealing
structure to be desirable when bonding the foam elements and stretchable fabric
disclosed in Taylor.
18 According to Mr. Taylor, the problem with Taylor’s flexible material did not
occur when bonding the foam elements and stretchable fabric together but rather
occurred when the material was “exposed to the rigors of hot water washing in a
washing machine which agitated the stretchable fabric/foam garments.” Taylor
Declaration 14; see also Supplemental Taylor Declaration | 5; Third Taylor
Declaration 14. We note that claim 1 does not recite the condition of agitation.
19 Claim 1 recites that “the flexible material may be washed in water having a
temperature of up to 140°F for up to about 15 minutes and then dried at a
temperature of from about 140°F to about 200°F for up to about 40 minutes
without detachment of resiliently compressible foam elements from the fabric
substrate after up to 50 washing and drying cycles.” App. Br. 44 (emphasis
added). We interpret the phrase “up to” as the upper limit of a range that includes
much lower values, such as a temperature of 80°F (i.e., a cold water wash) and one
washing and drying cycle. We interpret independent claims 24, 44, and 52 in the
same manner. We further note that claims 44 and 52 recite that “the garment may
be exposed at least once to water having a temperature of 212°F.” App. Br. 47, 49.
The duration of that exposure, however, is not recited.
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In re O’Farrell, 853 F.2d 894, 904 (Fed. Cir. 1988) (“For obviousness under §
103, all that is required is a reasonable expectation of success.”). Thus, a
preponderance of the evidence supports a finding that one of ordinary skill in the
art would have considered Hefele’s polyethylene adhesive to be useful for bonding
the foam elements and stretchable fabric disclosed in Taylor.
The Appellant does not present arguments in support of the separate
patentability of any of dependent claims 2, 3, and 6. Therefore, the § 103(a)
rejection of claims 1—3 and 6 based on the combination of Taylor, Hefele, and
Sama is sustained.20
b. Claims 24, 44, 32, 47, and 49
Independent claim 24 is directed to a garment and similar to claim 1 recites
“a plurality of separate resiliently compressible foam elements . . . adhesively
affixed to [a] . . . fabric layer with a polyethylene or ethyl vinyl acetate
thermoplastic hot melt adhesive.” App. Br. 45. Claim 24, however, adds the
additional limitations of “a top stretchable fabric layer which is capable of
stretching at least 50%” and “a bottom stretchable fabric layer which is capable of
stretching at least 50%.” App. Br. 45.
Claim 44 is also directed to a garment and similar to claim 1 recites “a
plurality of resiliently compressible separate foam elements spaced apart from each
20 The Examiner states that “[i]n the event that it is shown that the polyethylene
adhesive of Hefele would not necessarily function as claimed,” Sama discloses a
polyethylene adhesive known to having washing resistance. Final 5. For the
reasons discussed above, the Examiner’s conclusion that claim 1 is rendered
obvious by the combination of Taylor and Hefele is supported by a preponderance
of the evidence. Therefore, it is not necessary to address the Appellant’s
arguments directed to Sama. See App. Br. 25. We note, however, that Sama is
evidence of the properties of polyethylene adhesive, e.g., wash resistant at 85°F
and heat resistant from 210 to 230°F.
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other and adhesively affixed to . . . fabric layers with a polyethylene or ethyl vinyl
acetate thermoplastic hot melt adhesive.” App. Br. 47. Claim 44, however, adds
the additional limitations of “a top four way stretchable fabric layer which is
capable of stretching at least 50%” and “a bottom four way stretchable fabric layer
which is capable of stretching at least 50%.” App. Br. 47. Dependent claims 32,
47, and 49 also recite that the fabric layers are capable of four way stretching
“from 50% to 200%.” App. Br. 46, 48.
The Appellant argues that Taylor does not describe a fabric capable of
stretching at least 50% as recited in claim 24, a four way stretch fabric capable of
stretching at least 50% as recited in claim 44, or a four way stretch fabric capable
of stretching from 50% to 200% as recited in claims 32, 47, 49, and 51.21 App. Br.
26,28, 30.
Taylor discloses that the material is stretchable in all directions. Taylor, col.
2,11. 37—43. The Examiner also finds:
Taylor . . . discloses that the fabric may comprise polyester or elastane
(Spandex) fibers (column 5, lines 3—5). Considering that the current
specification discloses that the fabric layer may be made with
identical fibers (see page 3, last paragraph), the fabric disclosed by
Taylor is inherently four-way stretchable and capable of stretching at
least 50%.
Final 7.
In the Appeal Brief, the Appellant does not direct us to any error in the
Examiner’s finding. See App. Br. 8 (recognizing that Taylor’s product “is
extremely stretchable”). In the Reply Brief, however, the Appellant argues that
21 Claim 51 recites that “the foam elements comprise polyethylene.” App. Br. 48.
Claim 51, however, depends from claim 47 which recites that “the four way
stretchable fabric of the top and bottom layers is capable of stretching from 50% to
200%.” App. Br. 48.
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“[ajnother of the Examiner’s improper conclusions is that. . . Taylor . . . discloses
four way stretch fabric capable of stretching at least 50%.” Reply Br. 10, n.7. The
Appellant argues that “merely because polyesters can include elastane, does not
mean a four way stretch fabric that can stretch at least 50% is disclosed by Taylor.”
Reply Br. 10, n.7.
The Appellant’s argument does not respond to arguments raised in the
Examiner’s Answer. See Final 7. Moreover, the Appellant does not show good
cause why the argument could not have been raised in the Appeal Brief. For those
reasons, the Appellant’s argument is untimely and will not be considered on
appeal. See 37 C.F.R. § 41.41(b)(2) (2015).
The Appellant also argues that Hefele discloses knitted fabrics but does not
suggest a fabric capable of stretching at least 50%.22 App. Br. 26, 28, 30. In that
regard, the Appellant argues that “Hefele is inconsistent with Taylor.” App. Br.
26,28, 30.
We understand the Appellant to be arguing that one of ordinary skill in the
art would not have used Hefele’s polyethylene adhesive to bond the foam elements
22 The Appellant also argues that “Sama and Taylor do not address the problem of
bonding foam to a stretch fabric capable of stretching at least 50%” or “the
problem of bonding foam to a four way stretch fabric capable of stretching at least
50%” or “the problem of bonding foam to a four way stretch fabric capable of
stretching from 50% to 200%.” App. Br. 27, 29, 30. The Examiner merely relies
on Sama as an alternative to the teachings of Hefele in the rejection of claims 24,
44, 32, 47, 49, and 51. For the reasons discussed supra, the Examiner’s conclusion
that those claims are rendered obvious by the combination of Taylor and Hefele is
supported by a preponderance of the evidence. Thus, it is not necessary to address
the Appellant’s arguments directed to Sama. As noted above, however, Sama is
evidence of the properties of polyethylene adhesive.
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and stretchable fabric disclosed in Taylor because Hefele does not disclose a
stretchable fabric as claimed.
The Appellant’s argument is not persuasive of reversible error. As discussed
above, Hefele teaches that the disclosed polyethylene adhesive is useful for
bonding a substrate consisting of a knitted fabric, woven fabric, fleece or foam to a
textile material. Hefele, col. 2,11. 50-54. The Appellant does not direct us to any
evidence showing that considerations beyond the ordinary level of skill in the art
would have been required to bond foam elements to the stretchable textile of
Taylor using Hefele’s adhesive. Thus, a preponderance of the evidence supports a
finding that one of ordinary skill in the art would have considered Hefele’s
polyethylene adhesive to be suitable for bonding the foam elements and stretchable
fabric disclosed in Taylor. See O’Farrell, 853 F.2d at 904 (“For obviousness
under § 103, all that is required is a reasonable expectation of success.”).
The § 103(a) rejection of claims 24, 44, 32, 47, 49, and 51 based on the
combination of Taylor, Hefele, and Sama is sustained. The Appellant does not
present arguments in support of the separate patentability of any of dependent
claims 26, 27, 29, 30, 33—35, 39, 42, 43, 45, 46, 50, 53—56, and 60-66. Therefore,
the § 103(a) rejection of claims 26, 27, 29, 30, 33—35, 39, 42, 43, 45, 46, 50, 53—
56, and 60—66 also is sustained.
c. Claims 52 and 57—59
Independent claim 52 is directed to a garment comprising, inter alia, “a top
four way stretchable fabric layer” and “a bottom four way stretchable fabric layer”
which are “capable of stretching from 50% to 200%” and “foam elements
adhesively affixed to the bottom and top fabric layers with a polyethylene . . .
thermoplastic hot melt adhesive” wherein the thermoplastic adhesive is “in the
form of a cutable [sic] film sheet prior to adhesive bonding to the foam and
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fabric.” App. Br. 48 49 (emphasis added). Similarly, dependent claims 57—5923
recite that “the thermoplastic adhesive is in the form of a cutable [sic] film sheet
prior to bonding the resiliently compressible foam elements to the fabric.” App.
Br. 49-50 (emphasis added).
The Appellant argues that claim 52 “is patentable for the same reasons as
dependent claims 32, 47, 49 and 51 are patentable because the references do not
suggest a four way stretch fabric capable of stretching 50 to 200%.” App. Br. 30-
31. For the reasons discussed above, the Appellant’s argument is not persuasive of
reversible error.
The Appellant also argues that the polyethylene adhesive disclosed in Hefele
is not a cuttable film as recited in claims 52 and 57—59. App. Br. 26, 27, 29, 31.
The Examiner concludes that claims 52 and 57—59 are product claims “so . .
. regardless of the adhesive shape prior to being melted, the end result is melted
adhesive with no defined form,” (i.e., melted adhesive affixing foam elements to
the fabric substrate). Ans. 42. The Examiner finds the Appellant has failed to
show that using a cuttable film adhesive as claimed results in a melted adhesive
having a shape that is patentably distinct from the shape of Hefele’s melted
adhesive. Ans. 42-43. Moreover, the Examiner finds Taylor “discloses that it is
known to produce an adhesive in film form.” Ans. 49.
In response, the Appellant argues that “[cjlaim recitations as to how an
article or composition are formed and which characterize the article or composition
should be given weight in determining the patentability of claims directed to the
23 Claim 57 depends from claim 1, claim 58 depends from claim 24, and claim 59
depends from claim 44.
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article or composition.” Reply Br. 16 (citing Ex parte Babcock, Appeal No. 2011-
011726 (BPAI 2012)).24
Significantly, the Appellant has failed to show that an adhesive in the form
of a cuttable film sheet prior to bonding, as recited in claims 52 and 57—59,
characterizes the claimed article. The claims on appeal are directed to an article
comprising foam elements that have been adhesively affixed or bonded to a fabric
substrate. Claims 52 and 57—59, on the other hand, recite how the claimed article
is formed, i.e., with a hot melt thermoplastic adhesive in the form of a cuttable film
sheet that bonds the foam elements to the fabric substrate. The Examiner finds that
the bond formed by the adhesive in the claimed article and the bond formed by the
adhesive in Taylor’s modified material are not structurally distinct because both
adhesive materials have an undefined shape upon melting. Ans. 42-43. The
Appellant does not direct us to any evidence to the contrary. Therefore, a
preponderance of the evidence supports a finding that the articles recited in claims
52 and 57—59 are not patentably distinct from Taylor’s modified flexible material.
24 In Babcock, the Board stated:
The composition defined in the claims is a composition “made by”
either (1) heating a dispersion, or (2) exposing the dispersion to a
mobility enhancing agent, or a combination of (1) and (2). The
rejection explicitly found the dispersion taught by [the prior art] was
not subjected to such treatment. However, the claimed composition is
defined as it exists after the treatment, or as Appellants call it, a “post-
treated” composition . . . , not the composition before treatment. Put
another way, the rejection failed to account for every limitation
claimed because the [prior art] composition is, in Appellants’ terms, a
pre-treatment composition, not the post-treatment composition
defined in the claims. [Emphasis added.]]
Slip op. 5—6 (emphasis added).
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The § 103(a) rejection of claims 52 and 57—59 based on the combination of
Taylor, Hefele, and Sama is sustained.
3. Rejection (3)
Claim 25 depends from claim 24 and recites that “the bottom layer is
stitched to the top layer.” App. Br. 45. The Appellant does not direct us to any
error in the Examiner’s factual findings or legal conclusions as to Lassiter or
Dettoni. See Final 8. Rather, the Appellant argues that “[njeither Lassiter nor
Dettoni bridges the gaps left by Taylor, Hefele and Sama.” App. Br. 31. For the
reasons discussed above, there are no deficiencies in the combination of Taylor,
Hefele, and Sama in the § 103(a) rejection of claim 24 that must be bridged or
cured by Lassiter or Dettoni. Therefore, rejection (3) is sustained.
4. Rejections (6) and (l)25
In rejections (6) and (7), the Examiner finds Simon, like Hefele, discloses a
polyethylene adhesive. The Examiner finds:
Simon discloses that in the clothing art (column 1, lines 7—13)
polyethylene adhesive is one of the “cleaning-resistant hot-melt
adhesive compositions mostly in use today” (column 1, lines 25—35)
and that it is known in the art to use polyethylene adhesive to adhere
“textiles” and/or “foam materials” (column 1, lines 7—13) to provide
both a flexible garment (column 2, line 45 through column 3, line 10)
and a garment that is “cleaning-resistant” has a “particularly high
degree of wash resistance and adhesion” and has a “high adhesive
strength and outstanding resistance to washing and cleaning” (column
1, lines 15—25 and column 3, lines 5—10).
25 The Appellant argues the patentability of claims 1—3, 6, 24—27, 29, 30, 32—35,
39, 42-47, and 49—66 as a group. App. Br. 32—33. Thus, for purposes of this
appeal, claims 2, 3, 6, 24—27, 29, 30, 32—35, 39, 42-47, and 49-66 stand or fall
with the patentability of claim 1.
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Final 9—10. The Examiner finds Simon’s polyethylene adhesive has a melting
point of 262°F to 266°F. Final 10.
The Examiner concludes that it would have been obvious to one of ordinary
skill in the art to bond Taylor’s foam elements and stretchable fabric using Simon’s
polyethylene adhesive to enable clothing made with Taylor’s flexible material to
be washed. Final 10.
The Appellant argues that the polyethylene adhesive disclosed in Simon is a
two layer adhesive that is applied wet. App. Br. 32. The Appellant, however, does
not direct us to any language in the claims on appeal that excludes Simon’s two
layer polyethylene adhesive.26
The Appellant also argues that “as with Hefele, Simon does not hint as to
how to bond small compressible foam surfaces with a stretch fabric surface, each
surface providing an unstable bonding surface which will withstand washing.”
App. Br. 32.
The Appellant’s argument is not persuasive of reversible error. Simon
discloses that the hot-melt polyethylene adhesive is suitable for bonding textiles
and foam materials and “has a high adhesive strength and outstanding resistance to
washing.” Simon, col. 1,11. 7—9 and col. 3,11. 6—10; see also Final 9-10. We
recognize that the textile disclosed in Taylor is stretchable fabric. The Appellant,
however, does not direct us to any evidence showing that considerations beyond
the ordinary level of skill in the art would have been required to bond foam
26 We recognize that independent claim 52, for example, recites “a thermoplastic
adhesive in the form of a cutable [sic] film sheet prior to adhesive bonding to the
foam and fabric.” App. Br. 48 49. For reasons discussed supra, however, the
recitation of the form of the adhesive prior to bonding does not patentably
distinguish the claimed article from Taylor’s modified material.
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elements to the stretchable textile of Taylor using Simon’s adhesive.27 Moreover,
there is no evidence on this record showing that the flexible material of Taylor,
modified with the polyethylene adhesive of Simon, would not have been expected
to withstand the conditions recited in claim l.28 Thus, a preponderance of the
evidence supports a finding that one of ordinary skill in the art would have
considered Simon’s polyethylene adhesive to be useful for bonding the foam
elements and stretchable fabric disclosed in Taylor.
Rejections (6) and (7) are sustained.
5. Rejections (4), (5), (8), and (9)
In rejection (4), the Examiner adds the Applicant’s Admitted Prior Art to the
combination of Taylor, Hefele, and Sama in rejection (2), and in rejection (8), the
Examiner adds the Applicant’s Admitted Prior Art to the combination of Taylor,
Simon, and Sama in rejection (6). Final 8, 12. In rejection (4), the Examiner
finds:
In the event that more motivation is required to use the
disclosed polyethylene adhesive as the hot melt adhesive of. . .
Taylor, the Applicant discloses that a known problem in the prior art
is that the material of. . . Taylor has not been washable and/or dryable
without the foam blocks disassociating from the fabric substrate to
which they were adhesively attached (page 1 of the current
specification). The Applicant discloses that providing the foam
elements with an adhesive, where the adhesive permits washing and
27 According to Mr. Taylor, the problem with Taylor’s flexible material did not
occur when bonding the foam elements and stretchable fabric together but rather
occurred when the material was “exposed to the rigors of hot water washing in a
washing machine which agitated the stretchable fabric/foam garments.” Taylor
Declaration 14; see also Supplemental Taylor Declaration | 5; Third Taylor
Declaration 14. We note that claim 1 does not recite the condition of agitation.
28 See Decision 10, fh.19 (interpreting the conditions recited in claim 1).
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drying of the flexible material, would be a very significant
commercial advantage (page 1 of the current specification).
Final 8—9. The Examiner makes similar findings in rejection (8). Final 12.
Based on those findings, the Examiner concludes that it would have been
obvious to one of ordinary skill in the art “to make the hot melt adhesive of Taylor
from the . . . polyethylene hot melt adhesive [disclosed in the prior art], motivated
by the desire to provide the material of Taylor with the commercial advantage of
washability.” Final 9 (emphasis omitted); see also Final 12.
The Appellant argues that the disclosure in the Appellant’s Specification of
“a problem and a need to provide washability is not admitted prior art.” App. Br.
23; see also App. Br. 32, 33 (arguing that “the purported admitted prior art
improperly uses applicant’s specification as prior art against applicant”).
The Examiner identifies the following portion of the Appellant’s
Specification as “Admitted Prior Art”:
The ‘325 patent to Taylor describes affixing the small blocks of foam
to the substrate fabric with a hot melt adhesive, but the problem with
such the flexible material of the ‘325 patent to Taylor is that the
material heretofore has not been washable and/or dryable without the
foam blocks disassociating from the fabric substrate to which they
were adhesively attached.
Spec. 1 (emphasis added).
The Appellant does not direct us to any evidence showing that the Appellant
discovered the problem of Taylor’s foam blocks disassociating from the disclosed
fabric substrate after washing and/or drying. In that regard, we find the problem
disclosed in the Appellant’s Specification would have been evident to anyone
washing or drying Taylor’s flexible material, absent some evidence to the contrary.
See Decision 9, fn.16, supra.
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The Appellant argues that “the previous Board Opinion did not approve of
using applicant’s specification as the link to provide motivation for using the
adhesive described in the claims.” App. Br. 23. However, in the prior appeal, the
claims were not rejected under the Applicant’s Admitted Prior Art. Moreover, the
Board in the prior opinion, did not make an affirmative statement that the
disclosure of the problem on page 1 of the Appellant’s Specification is not
admitted prior art.
In rejections (4) and (8) in this appeal, the Examiner is not relying on the
Appellant’s disclosure of the problem on page 1 of the Specification “as the link to
provide motivation for using the adhesive described in the claims.” See App. Br.
23. Rather, the Examiner is using that disclosure “[i]n the event that more
motivation is required to use the disclosed polyethylene adhesive [of Hefele and
Simon] as the hot melt adhesive of. . . Taylor.” Final 8, 12. For the reasons
discussed above, additional motivation is not required to establish prima facie
obviousness in rejections (2) and (6).
Rejections (4) and (8) are sustained.29
The Appellant does not present arguments in support of the separate
patentability of claim 25 in rejections (5) and (9). App. Br. 32, 33. Therefore,
rejections (5) and (9) also are sustained.
6. Rejections (10), (11), (14), and (15)
In rejections (10) and (14), the Examiner relies on Wald, Kamat, and Sama
as disclosing polyethylene adhesives. More specifically, the Examiner finds
“Wald discloses that it is ‘conventional’ in the garment and upholstery art to use a
29 The Appellant argues the patentability of claims 1—3, 6, 24, 26, 27, 29, 30, 32—
35, 39, 42-47, and 49-66 as a group. App. Br. 32, 33.
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polyethylene adhesive to bond stretch fabrics” and finds Kamat discloses that
polyethylene adhesive is a well-known hot melt adhesive in the clothing art. Final
13,16 (emphasis omitted). The Examiner also finds Sama discloses that
polyethylene adhesive is known to be wash and dry clean resistant. Final 14, 17.
The Examiner concludes that it would have been obvious to one of ordinary
skill in the art to use the polyethylene hot melt adhesive disclosed in Kamat or
Wald to bond the foam elements and stretchable fabric disclosed in Taylor
because, inter alia, it has been held to be within the general skill of a worker in the
art to select a known material on the basis of its suitability and desired
characteristics. Final 13,16. In the alternative, the Examiner concludes that it
would have been obvious to bond Taylor’s foam elements and stretchable fabric
using Sama’s polyethylene adhesive for the same reason. Final 14, 17.
The Appellant argues there is no suggestion in Kamat or Wald of using
polyethylene adhesive to join a stretchable fabric and small foam elements. App.
Br. 33—34, 35. Similarly, the Appellant argues that Sama’s polyethylene adhesive
is not disclosed as being capable of bonding foam to a fabric substrate. App. Br.
25.
The Appellant’s arguments are persuasive of reversible error. The Examiner
does not direct us to any disclosure in Wald, Kamat, or Sama suggesting that the
disclosed polyethylene adhesives would have been suitable for bonding foam
materials. See Final 13—14, 16—17; see also Supplemental Taylor Declaration 114
(stating that “[i]n my experience in the garment industry, merely because an
adhesive would be useful as a fabric adhesive, does not mean it will bond to
foam”). Thus, on this record, there would have been no reason to expect that the
polyethylene adhesive disclosed in Kamat, Wald, or Sama would be suitable for
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bonding the foam elements of Taylor to the disclosed fabric substrate. For that
reason, rejections (10) and (14) are not sustained.
The Examiner does not rely on Lassiter or Dettoni to cure the deficiencies
identified above. See Final 8, 15, 18. Therefore, rejections (11) and (15) also are
not sustained.
7. Rejections (12), (13), (16), and (17)
In rejection (12), the Examiner adds the Applicant’s Admitted Prior Art to
the combination of Taylor, Kamat, and Sama in rejection (10), and in rejection
(16), the Examiner adds the Applicant’s Admitted Prior Art to the combination of
Taylor, Wald, and Sama in rejection (14). Final 15, 18. The Examiner finds:
In the event that more motivation is required to use the
disclosed polyethylene adhesive as the hot melt adhesive of. . .
Taylor, the Applicant discloses that a known problem in the prior art
is that the material of. . . Taylor has not been washable and/or dryable
without the foam blocks disassociating from the fabric substrate to
which they were adhesively attached (page 1 of the current
specification). The Applicant discloses that providing the foam
elements with an adhesive, where the adhesive permits washing and
drying of the flexible material, would be a very significant
commercial advantage (page 1 of the current specification).
Final 15. The Examiner makes similar findings in rejection (16). Final 18.
Significantly, the error in the § 103(a) rejections based on the combination
of Taylor, Kamat, and Sama and the combination of Taylor, Wald, and Sama is not
a lack of motivation. Rather, the error in those rejections is that the Examiner has
failed to show that one of ordinary skill in the art would have expected the
polyethylene adhesive disclosed in Kamat, Wald, and Sama to be suitable for
bonding the foam elements of Taylor to the disclosed fabric substrate. The
Examiner’s reliance on the Applicant’s Admitted Prior Art does not cure that
deficiency. Therefore, rejections (12) and (16) are not sustained.
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As for rejections (13) and (17), the Examiner does not rely on Lassiter or
Dettoni to cure the deficiencies in rejections (12) and (16). See Final 8, 16, 19.
Therefore, rejections (13) and (17) also are not sustained.
8. Rejections (18) and (19)—
The Examiner finds Goldfme discloses a flexible material used in clothing
comprising a four way stretchable fabric substrate and a plurality of spaced
resiliently compressible foam elements adhesively affixed to the fabric substrate
with a hot melt adhesive. Final 19; see also Goldfme 9,1. 26—10,1. 1 (disclosing
that the flexible material may be used in a protective garment). The Examiner
finds Goldfme discloses that the adhesive may be polyurethane or “any other
conventional adhesive.” Final 19 (citing Goldfme 33—34). The Examiner,
however, finds Goldfme does not expressly disclose that the hot melt adhesive is
polyethylene adhesive as recited in claim 1. Final 19.
The Examiner finds Hefele discloses that “in the clothing art (column 1,
lines 7—11) polyethylene adhesive is one of the ‘most commonly used heat-sealing
adhesives’ (column 1, lines 46—59) to provide a garment ‘resistant to water­
washing and dry cleaning’ (column 1, lines 22—30).” Final 19 (emphasis omitted);
see also Hefele, col. 1,11. 48—51 (disclosing that the most commonly used heat­
sealing adhesives, which are based on, inter alia, polyethylenes, are resistant to
water-washing). The Examiner finds Hefele discloses that the polyethylene
adhesive adheres foam to fabric, resulting in a flexible structure. Final 20 (citing
Hefele, col. 2,11. 50—54 and Hefele claim 1). The Examiner also finds the
30 The Appellant argues the patentability of claims 1—3, 6, 24—27, 29, 30, 32—35,
39, 42-47, and 49—66 as a group. App. Br. 35—36. Thus, for purposes of this
appeal, claims 2, 3, 6, 24—27, 29, 30, 32—35, 39, 42-47, and 49-66 stand or fall
with the patentability of claim 1.
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polyethylene adhesive has a melting point of about 257°F to 275°F and is a known
substitute for polyurethane adhesive. Final 19-20 (citing Hefele, col. 3,11. 12—23).
The Examiner concludes that it would have been obvious to one of ordinary
skill in the art to bond Goldfme’s foam elements and stretchable fabric using
Hefele’s adhesive to enable clothing made with Goldfme’s flexible material to be
washed.31 Final 20 (citing Leshin, 277 F.2d at 199 (obvious to select a known
material on the basis of its suitability for an intended use)). The Examiner also
concludes that it would have been obvious to one of ordinary skill in the art to
bond Goldfme’s foam elements and stretchable fabric using Hefele’s polyethylene
adhesive because Hefele teaches that polyethylene adhesive is a known substitute
for the polyurethane adhesive disclosed in Goldfme. Final 20, 21; see also In re
Fout, 675 F.2d 297, 301 (CCPA 1982) (“Express suggestion to substitute one
equivalent for another need not be present to render such substitution obvious.”).
The Appellant argues that “Goldfme provides an apparent ‘better alternative’
to his polyurethane adhesive by describing melting the elements through the
fabric,” and thus “teaches away from adhesives.” App. Br. 36 (citing Goldfme 43,
11. 6-17).
The Appellant’s argument is not persuasive of reversible error. Goldfme
discloses that impact absorbing members (i.e., foam) may be attached to a flexible
substrate with an adhesive layer, and in a preferred embodiment, discloses that the
flexible substrate “passes through, is integral with, and is bonded within the impact
31 The Appellant does not dispute that one of ordinary skill in the art would have
found it desirable to wash the protective clothing disclosed in Goldfme at the time
of the Appellant’s invention. Indeed, one of ordinary skill in the art would have
understood that Goldfme’s protective clothing would need to be washed for
hygienic purposes.
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absorbing members.” Goldfme 43,11. 6—17. Significantly, Goldfme’s preferred
embodiment does not teach away from the broader disclosure in Goldfme which
includes impact absorbing members (i.e., foam) adhesively attached to a flexible
substrate. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (the “mere
disclosure of alternative designs does not teach away”); cf. In re Gordon, 733 F.2d
900, 902 (Fed. Cir. 1984) (modification that renders an invention inoperable for its
intended purpose teaches away from modification).
Rejections (18) and (19) are sustained.
9. Rejections (20) and (21)—
In rejections (20) and (21), the Examiner finds Simon, like Hefele, discloses
a polyethylene adhesive. The Examiner finds:
Simon discloses that in the clothing art (column 1, lines 7—13)
polyethylene adhesive is one of the “cleaning-resistant hot-melt
adhesive compositions mostly in use today” (column 1, lines 25—35)
and that it is known in the art to use polyethylene adhesive to adhere
“textiles” and/or “foam materials” (column 1, lines 7—13) to provide
both a flexible garment (column 2, line 45 through column 3, line 10)
and a garment that is “cleaning-resistant” has a “particularly high
degree of wash resistance and adhesion” and has a “high adhesive
strength and outstanding resistance to washing and cleaning” (column
1, lines 15—25 and column 3, lines 5—10).
Final 23—24 (emphasis omitted). The Examiner finds that Simon’s polyethylene
adhesive has a melting point of 262°F to 266°F. Final 24.
The Examiner concludes that it would have been obvious to one of ordinary
skill in the art to bond Goldfme’s foam elements and stretchable fabric using
32 The Appellant argues the patentability of claims 1—3, 6, 24—27, 29, 30, 32—35,
39, 42-47, and 49—66 as a group. App. Br. 36—37. Thus, for purposes of this
appeal, claims 2, 3, 6, 24—27, 29, 30, 32—35, 39, 42-47, and 49-66 stand or fall
with the patentability of claim 1.
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Simon’s polyethylene adhesive to enable clothing made with Goldfme’s flexible
material to be washed. Final 24.
The Appellant argues that Simon’s polyethylene adhesive is a two layer
adhesive that is applied wet. App. Br. 36. The Appellant, however, does not direct
us to any language in the claims on appeal that excludes Simon’s two layer
polyethylene adhesive.33
The Appellant also argues that “as with Hefele, Simon does not hint as to
how to bond small compressible foam surfaces with a stretch fabric surface, each
surface providing an unstable bonding surface which will withstand washing.”
App. Br. 36.
The Appellant’s argument is not persuasive of reversible error. Simon
discloses that the hot-melt polyethylene adhesive is suitable for bonding textiles
and foam materials and “has a high adhesive strength and outstanding resistance to
washing.” Simon, col. 1,11. 7—9 and col. 3,11. 6—10; see also Final 24. We
recognize that the textile disclosed in Goldfme is stretchable fabric. The
Appellant, however, does not direct us to any evidence showing that considerations
beyond the ordinary level of skill in the art would have been required to bond
Goldfme’s foam elements and stretchable textile using Simon’s adhesive.
Moreover, the Appellant does not direct us to any evidence showing that the
flexible material of Goldfme, modified with the polyethylene adhesive of Simon,
would not have been expected to withstand the conditions recited in claim 1.34
33 We recognize that independent claim 52, for example, recites “a thermoplastic
adhesive in the form of a cutable [sic] film sheet prior to adhesive bonding to the
foam and fabric.” App. Br. 48 49. For the reasons discussed supra, the recitation
of a cuttable film prior to adhesive bonding does not patentably distinguish the
claimed article from Goldfme’s modified material.
34 See Decision 10, fh.19 (interpreting the conditions recited in claim 1).
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Thus, a preponderance of the evidence supports a finding that one of ordinary skill
in the art would have considered Simon’s polyethylene adhesive to be useful for
bonding the foam elements and stretchable fabric disclosed in Goldfme.
Rejections (20) and (21) are sustained.
10. Rejections 6227—6257
In rejections (22) and (24), the Examiner relies on Wald, Kamat, and Sama
as disclosing polyethylene adhesives. More specifically, the Examiner finds
“Wald discloses that it is ‘conventional’ in the garment and upholstery art to use a
polyethylene adhesive to bond stretch fabrics” and finds Kamat discloses that
polyethylene adhesive is a well-known hot melt adhesive in the clothing art. Final
26, Final 28 (emphasis omitted). The Examiner also finds Sama discloses that
polyethylene adhesive is known to be wash and dry clean resistant. Final 27, 30.
The Examiner concludes that it would have been obvious to one of ordinary
skill in the art to use the polyethylene hot melt adhesive disclosed in Kamat or
Wald to bond the foam elements and stretchable fabric disclosed in Goldfme
because, inter alia, it has been held to be within the general skill of a worker in the
art to select a known material on the basis of its suitability and desired
characteristics. Final 26, 29. In the alternative, the Examiner concludes that it
would have been obvious to bond Goldfme’s foam elements and stretchable fabric
using Sama’s polyethylene adhesive for the same reason. Final 27, 30.
The Appellant argues there is no suggestion in Kamat or Wald of using a
polyethylene adhesive to join a stretchable fabric and small foam elements. App.
Br. 33, 35, 37.35 Similarly, the Appellant argues that Sama’s polyethylene
35 The Appellant incorporates previous arguments directed to Kamat and Wald
from pages 24—31 and 33—36 of the Appeal Brief.
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adhesive is not disclosed as being capable of bonding foam to a fabric substrate.
App. Br. 25.
The Appellant’s arguments are persuasive of reversible error. The Examiner
does not direct us to any disclosure in Wald, Kamat, or Sama suggesting that the
disclosed polyethylene adhesives would have been suitable for bonding foam
materials. See Final 26—30; see also Supplemental Taylor Declaration 114 (stating
that “[i]n my experience in the garment industry, merely because an adhesive
would be useful as a fabric adhesive, does not mean it will bond to foam”). Thus,
on this record, there would have been no reason to expect that the polyethylene
adhesive disclosed in Kamat, Wald, or Sama would be suitable for bonding the
foam elements of Goldfme to the disclosed fabric substrate. For that reason,
rejections (22) and (24) are not sustained.
The Examiner does not rely on Fassiter or Dettoni to cure the deficiencies
identified above. See Final 28, 30. Therefore, rejections (23) and (25) also are not
sustained.
11. New grounds of rejection
a. Taylor
Claims 1, 24, 44, and 52 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Taylor in view of Hefele or Simon, and further in view of Wald
and Sama.
The Examiner finds Taylor discloses a flexible material comprising a four
way stretchable fabric substrate and a plurality of spaced resiliently compressible
foam elements adhesively affixed to the fabric substrate with a hot melt adhesive.
Final 3; see also Taylor Fig. 1. The Examiner finds the material may be used in
clothing. Final 3^4 (citing Taylor, col. 3,11. 27—35); see also Taylor, col. 3,11. 28—
31 (disclosing that the material is suitable for incorporation into protective clothing
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such as knee pads, shin pads, and arm bands). The Examiner finds “Taylor is
silent with regards to any and all specific hot melt adhesive materials” used to
bond the foam elements and stretchable fabric. Final 4.
The Examiner finds “Hefele discloses that in the clothing art (column 1,
lines 7—11) polyethylene adhesive is one of the ‘most commonly used heat-sealing
adhesives’ (column 1, lines 46—59) to provide a garment ‘resistant to water­
washing and dry cleaning’ (column 1, lines 22—30).” Final 4 (emphasis omitted);
see also Hefele, col. 1,11. 48—51 (disclosing that the most commonly used heat­
sealing adhesives, which are based on, inter alia, polyethylenes, are resistant to
water-washing). The Examiner finds the polyethylene adhesive has a melting
point of about 257°F to 275°F and adheres foam to fabric, resulting in a flexible
structure. Final 4 (citing Hefele, col. 2,11. 50-54 and Hefele claim 1).
The Examiner also finds:
Simon discloses that in the clothing art (column 1, lines 7—13)
polyethylene adhesive is one of the “cleaning-resistant hot-melt
adhesive compositions mostly in use today” (column 1, lines 25—35)
and that it is known in the art to use polyethylene adhesive to adhere
“textiles” and/or “foam materials” (column 1, lines 7—13) to provide
both a flexible garment (column 2, line 45 through column 3, line 10)
and a garment that is “cleaning-resistant” has a “particularly high
degree of wash resistance and adhesion” and has a “high adhesive
strength and outstanding resistance to washing and cleaning” (column
1, lines 15—25 and column 3, lines 5—10).
Final 9—10. The Examiner finds Simon’s polyethylene adhesive has a melting
point of 262°F to 266°F. Final 10.
Wald discloses that it is conventional in the garment and upholstery art to
bond stretch fabrics with a polyethylene adhesive.36 Final 16. Moreover, Sama is
36 The Appellant argues that “[t]he Examiner’s use of Wald as describing the use of
a stretch fabric at minimum is misleading.” App. Br. 35. “What Wald describes,”
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additional evidence of the properties of a polyethylene adhesive that is washing
resistant. See Final 5.
We find that one of ordinary skill in the art would have understood that the
protective clothing disclosed in Taylor would need to be washed for hygienic
purposes. Hefele, Simon, and Sama disclose that polyethylene adhesive is
resistant to water washing. Hefele, Simon, and Wald also teach that polyethylene
adhesive is suitable for bonding a variety of materials, including foam and
stretchable fabric. Thus, the evidence of record supports a finding that one of
ordinary skill in the art would have considered polyethylene adhesive to be suitable
for bonding the foam elements and stretchable fabric of Taylor. For that reason, it
would have been obvious to one of ordinary skill in the art to bond Taylor’s foam
elements and stretchable fabric with the polyethylene adhesive disclosed in Hefele
and/or Simon.
Claim 52 recites the additional limitation that the adhesive comprises “a
thermoplastic adhesive in the form of a cutable [sic] film sheet prior to adhesive
bonding to the foam and fabric.” App. Br. 48-49. For the reasons discussed
above, that limitation does not patentably distinguish the flexible material of
Taylor, as modified by Hefele and/or Simon, from the claimed article. Moreover,
Wald teaches that polyethylene adhesive may be in the form of a film. Wald, col.
11,11. 3—9. Thus, it would have been obvious to one of ordinary skill in the art to
according to the Appellant, “is that his composite is strong and is able to stretch up
to 100% at break.” App. Br. 35. In response, the Examiner finds the Appellant’s
argument is not persuasive because claims 24, 44, and 52 recite a fabric “capable
of stretching at least 50%” and “a fabric that is capable of stretching 100% at break
is a fabric that is clearly capable of stretching even less than 100% (e.g. 50%).”
Ans. 52. The Appellant has failed to establish otherwise.
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use a polyethylene film, as disclosed in Wald, to bond the foam elements and
stretchable fabric of Taylor.
b. Goldfine
Claims 1, 24, 44, and 52 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Goldfine in view of Hefele and/or Simon, and further in view of
Wald and Sama.
The Examiner finds Goldfine discloses a flexible material used in clothing
comprising a four way stretchable fabric substrate and a plurality of spaced
resiliently compressible foam elements adhesively affixed to the fabric substrate
with a hot melt adhesive. Final 19; see also Goldfine 9,1. 26—10,1. 1 (disclosing
that the flexible material may be used in a protective garment). The Examiner
finds Goldfine discloses that the adhesive may be polyurethane or “any other
conventional adhesive.” Final 19 (citing Goldfine 33—34). The Examiner,
however, finds Goldfine does not expressly disclose that the hot melt adhesive is
polyethylene adhesive as recited in claim 1. Final 19.
The Examiner finds Hefele discloses that “in the clothing art (column 1,
lines 7—11) polyethylene adhesive is one of the ‘most commonly used heat-sealing
adhesives’ (column 1, lines 46—59) to provide a garment ‘resistant to water­
washing and dry cleaning’ (column 1, lines 22—30).” Final 19; see also Hefele,
col. 1,11. 48—51 (disclosing that the most commonly used heat-sealing adhesives,
which are based on, inter alia, polyethylenes, are resistant to water-washing). The
Examiner finds Hefele discloses that the polyethylene adhesive adheres foam to
fabric, resulting in a flexible structure. Final 20 (citing Hefele, col. 2,11. 50—54 and
Hefele claim 1). The Examiner also finds the polyethylene adhesive has a melting
point of about 257°F to 275°F and is a known substitute for polyurethane adhesive.
Final 19-20 (citing Hefele, col. 3,11. 12—23).
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As for Simon, the Examiner finds:
Simon discloses that in the clothing art (column 1, lines 7—13)
polyethylene adhesive is one of the “cleaning-resistant hot-melt
adhesive compositions mostly in use today” (column 1, lines 25—35)
and that it is known in the art to use polyethylene adhesive to adhere
“textiles” and/or “foam materials” (column 1, lines 7—13) to provide
both a flexible garment (column 2, line 45 through column 3, line 10)
and a garment that is “cleaning-resistant” has a “particularly high
degree of wash resistance and adhesion” and has a “high adhesive
strength and outstanding resistance to washing and cleaning” (column
1, lines 15—25 and column 3, lines 5—10).
Final 23—24 (emphasis omitted). The Examiner finds that Simon’s polyethylene
adhesive has a melting point of 262°F to 266°F. Final 24.
Wald discloses that it is conventional in the garment and upholstery art to
bond stretch fabrics with a polyethylene adhesive.37 Final 28. Moreover, Sama is
additional evidence of the properties of a polyethylene adhesive that is washing
resistant. See Final 21.
We find that one of ordinary skill in the art would have understood that the
protective clothing disclosed in Goldfme would need to be washed for hygienic
purposes. Hefele, Simon, and Sama disclose that polyethylene adhesive is
resistant to water washing. Hefele, Simon, and Wald also teach that polyethylene
adhesive is suitable for bonding a variety of materials, including foam and
stretchable fabric. Thus, the evidence of record supports a finding that one of
37 The Appellant argues that “[t]he Examiner’s use of Wald as describing the use of
a stretch fabric at minimum is misleading.” App. Br. 35. “What Wald describes,”
according to the Appellant, “is that his composite is strong and is able to stretch up
to 100% at break.” App. Br. 35. In response, the Examiner finds the Appellant’s
argument is not persuasive because claims 24, 44, and 52 recite a fabric “capable
of stretching at least 50%” and “a fabric that is capable of stretching 100% at break
is a fabric that is clearly capable of stretching even less than 100% (e.g. 50%).”
Ans. 52. The Appellant has failed to establish otherwise.
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ordinary skill in the art would have considered polyethylene adhesive to be suitable
for bonding the foam elements and stretchable fabric of Goldfme. For that reason,
it would have been obvious to one of ordinary skill in the art to bond Goldfme’s
foam elements and stretchable fabric with the polyethylene adhesive disclosed in
Hefele and/or Simon.
Claim 52 recites the additional limitation that the adhesive comprises “a
thermoplastic adhesive in the form of a cutable [sic] film sheet prior to adhesive
bonding to the foam and fabric.” App. Br. 48-49. For the reasons discussed
above, that limitation does not patentably distinguish the flexible material of
Goldfme, as modified by Hefele and/or Simon, from the claimed article.
Moreover, Wald teaches that polyethylene adhesive may be in the form of a film.
Wald, col. 11,11. 3—9. Thus, it would have been obvious to one of ordinary skill in
the art to use a polyethylene film, as disclosed in Wald, to bond the foam elements
and stretchable fabric of Goldfme.
C. DECISION
The Examiner’s decision rejecting claims 1—3, 6, 24—27, 29, 30, 32—35, 39,
42—47, and 49-66 under 35 U.S.C. § 112, second paragraph, as being indefinite is
reversed.
The Examiner’s decision rejecting claims 1—3, 6, 24, 26, 27, 29, 30, 32—35,
39, 42-47, and 49—66 under 35 U.S.C. § 103(a) as unpatentable over Taylor in
view of Hefele and Sama is affirmed.
The Examiner’s decision rejecting claim 25 under 35 U.S.C. § 103(a) as
unpatentable over Taylor in view of Hefele and Sama, and further in view of
Lassiter or Dettoni is affirmed.
The Examiner’s decision rejecting claims 1—3, 6, 24, 26, 27, 29, 30, 32—35,
39, 42-47, and 49—66 under 35 U.S.C. § 103(a) as unpatentable over Taylor in
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view of Hefele and Sama, and further in view of the Applicant’s Admitted Prior
Art is affirmed.
The Examiner’s decision rejecting claim 25 under 35 U.S.C. § 103(a) as
unpatentable over Taylor in view of Hefele, Sama, and the Applicant’s Admitted
Prior Art, and further in view of Lassiter or Dettoni is affirmed.
The Examiner’s decision rejecting claims 1—3, 6, 24, 26, 27, 29, 30, 32—35,
39, 42-47, and 49—66 under 35 U.S.C. § 103(a) as unpatentable over Taylor in
view of Simon and Sama is affirmed.
The Examiner’s decision rejecting claim 25 under 35 U.S.C. § 103(a) as
unpatentable over Taylor in view of Simon and Sama, and further in view of
Lassiter or Dettoni is affirmed.
The Examiner’s decision rejecting claims 1—3, 6, 24, 26, 27, 29, 30, 32—35,
39, 42-47, and 49—66 under 35 U.S.C. § 103(a) as unpatentable over Taylor in
view of Simon and Sama, and further in view of the Applicant’s Admitted Prior
Art is affirmed.
The Examiner’s decision rejecting claim 25 under 35 U.S.C. § 103(a) as
unpatentable over Taylor in view of Simon et al, Sama, and the Applicant’s
Admitted Prior Art, and further in view of Lassiter or Dettoni is affirmed.
The Examiner’s decision rejecting claims 1—3, 6, 24, 26, 27, 29, 30, 32—35,
39, 42-47, and 49—66 under 35 U.S.C. § 103(a) as unpatentable over Taylor in
view of Kamat and Sama is reversed.
The Examiner’s decision rejecting claim 25 under 35 U.S.C. § 103(a) as
unpatentable over Taylor in view of Kamat and Sama, and further in view of
Lassiter or Dettoni is reversed.
The Examiner’s decision rejecting claims 1—3, 6, 24, 26, 27, 29, 30, 32—35,
39, 42-47, and 49—66 under 35 U.S.C. § 103(a) as unpatentable over Taylor in
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view of Kamat and Sama, and further in view of the Applicant’s Admitted Prior
Art is reversed.
The Examiner’s decision rejecting claim 25 under 35 U.S.C. § 103(a) as
unpatentable over Taylor in view of Kamat, Sama, and the Applicant’s Admitted
Prior Art, and further in view of Lassiter or Dettoni is reversed.
The Examiner’s decision rejecting claims 1—3, 6, 24, 26, 27, 29, 30, 32—35,
39, 42-47, and 49—66 under 35 U.S.C. § 103(a) as unpatentable over Taylor in
view of Wald and Sama is reversed.
The Examiner’s decision rejecting claim 25 under 35 U.S.C. § 103(a) as
unpatentable over Taylor in view of Wald and Sama, and further in view of
Lassiter or Dettoni is reversed.
The Examiner’s decision rejecting claims 1—3, 6, 24, 26, 27, 29, 30, 32—35,
39, 42-47, and 49—66 under 35 U.S.C. § 103(a) as unpatentable over Taylor in
view of Wald and Sama, and further in view of the Applicant’s Admitted Prior Art
is reversed.
The Examiner’s decision rejecting claim 25 under 35 U.S.C. § 103(a) as
unpatentable over Taylor in view of Wald, Sama, and the Applicant’s Admitted
Prior Art, and further in view of Lassiter or Dettoni is reversed.
The Examiner’s decision rejecting claims 1—3, 6, 24, 26, 27, 29, 30, 32—35,
39, 42-47, and 49—66 under 35 U.S.C. § 103(a) as unpatentable over Goldfme in
view of Hefele and Sama is affirmed.
The Examiner’s decision rejecting claim 25 under 35 U.S.C. § 103(a) as
unpatentable over Goldfme in view of Hefele and Sama, and further in view of
Lassiter or Dettoni is affirmed.
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The Examiner’s decision rejecting claims 1—3, 6, 24, 26, 27, 29, 30, 32—35,
39, 42-47, and 49—66 under 35 U.S.C. § 103(a) as unpatentable over Goldfme in
view of Simon and Sama is affirmed.
The Examiner’s decision rejecting claim 25 under 35 U.S.C. § 103(a) as
unpatentable over Goldfme in view of Simon and Sama, and further in view of
Lassiter or Dettoni is affirmed.
The Examiner’s decision rejecting claims 1—3, 6, 24, 26, 27, 29, 30, 32—35,
39, 42-47, and 49—66 under 35 U.S.C. § 103(a) as unpatentable over Goldfme in
view of Kamat and Sama is reversed.
The Examiner’s decision rejecting claim 25 under 35 U.S.C. § 103(a) as
unpatentable over Goldfme in view of Kamat and Sama, and further in view of
Lassiter or Dettoni is reversed.
The Examiner’s decision rejecting claims 1—3, 6, 24, 26, 27, 29, 30, 32—35,
39, 42-47, and 49—66 under 35 U.S.C. § 103(a) as unpatentable over Goldfme in
view of Wald and Sama is reversed.
The Examiner’s decision rejecting claim 25 under 35 U.S.C. § 103(a) as
unpatentable over Goldfme in view of Wald and Sama, and further in view of
Lassiter or Dettoni is reversed.
We enter a new ground of rejection of claims 1, 24, 44, and 52 under 35
U.S.C. § 103(a) as unpatentable over Taylor in view of Hefele or Simon, and
further in view of Wald and Sama.
We enter a new ground of rejection of claims 1, 24, 44, and 52 under 35
U.S.C. § 103(a) as unpatentable over Goldfme in view of Hefele and/or Simon, and
further in view of Wald and Sama.
According to 37 C.F.R. § 41.50(b), “[a] new ground of rejection pursuant to
this paragraph shall not be considered final for judicial review.” 37 C.F.R. §
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Application 11/072,683
41.50(b) also provides that Appellant, WITHIN TWO MONTHS FROM THE
DATE OF THE DECISION, must exercise one of the following two options with
respect to the new grounds of rejection to avoid termination of the appeal as to the
rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the examiner, in
which event the prosecution will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same Record. . . .
Further guidance on responding to a new ground of rejection can be found in
the Manual of Patent Examining Procedure § 1214.01.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED: 37 C.F.R, $ 41.50(b)
38