Ex Parte Wahlers-Shcmidlin et alDownload PDFPatent Trial and Appeal BoardMay 29, 201812543707 (P.T.A.B. May. 29, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/543,707 08/19/2009 27384 7590 05/29/2018 Briscoe, Kurt G. Norris McLaughlin & Marcus, PA 875 Third Avenue, 8th Floor New York, NY 10022 FIRST NAMED INVENTOR Andreas W AHLERS-SHCMIDLIN 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. 101769-529 KGB 7896 EXAMINER PIZIALI, ANDREW T ART UNIT PAPER NUMBER 1789 MAIL DATE DELIVERY MODE 05/29/2018 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 ANDREAS WAHLERS-SHCMIDLIN, PATRIKKOPF, and RONALD PFAFF Appeal2017-000148 Application 12/543,707 Technology Center 1700 Before MICHAEL P. COLAIANNI, CHRISTOPHER L. OGDEN, and MICHAEL G. McMANUS, Administrative Patent Judges. McMANUS, Administrative Patent Judge. DECISION ON APPEAL The Examiner finally rejected claims 1, 2, and 6-17 of Application No. 12/543,707 under 35 U.S.C. § 103(a). Final Act. (May 29, 2015) 2-13. Appellants seek reversal of these rejections pursuant to 35 U.S.C. § 134(a) 1 We have jurisdiction under 35 U.S.C. § 6. Oral argument was heard on May 16,2018. For the reasons set forth below, we AFFIRM. 1 Appellants identify "tesa SE" as the real party in interest. Appeal Br. 1. Appeal2017-000148 Application 12/543,707 BACKGROUND The present application generally relates to highly abrasion-resistant tape, useful for sheathing elongate material such as leads or cable looms, having a woven fabric backing where the woven fabric is composed of a plastics material, the yams used to form the fabric have a linear density of 2 80 to 1100 dtex, and each yam being constructed from at least 90 single filaments. Spec. 1. Claim 1 is representative of the claims at issue and is reproduced below: 1. Abrasion-resistant tape for sheathing elongate material, comprising a woven fabric backing, comprised of yams of a plastics material, the plastic material being selected from the group consisting of nylon 6, nylon 4,6, nylon 6,6, nylon 6,6 heat-stabilized, nylon 4,6 high-temperature polyamide, polyether ketones (PEEK) and polyphenylene sulphides (PPS), the yams having a linear density of 280 to 1100 dtex, each yam being constructed from at least 90 single filaments, the woven fabric backing comprising a number of warp threads in the 12 to 45 per cm range, the woven fabric backing comprising a number of weft threads in the 10 to 35 per cm range, and the woven fabric backing having a basis weight of 130 to 300 g/m2. Appeal Br. 20 (Claims App.). REJECTIONS The Examiner maintains the following rejections: 1. Claims 1, 2, and 6-17 are rejected under 35 U.S.C. § I03(a) as obvious over Kulper2 in view of Annis3 and further in view of 2 Kulper et al., US 2007/0173156 Al, published July 26, 2007. 3 Annis et al., US 4,936,135, issued June 6, 1990. 2 Appeal2017-000148 Application 12/543,707 Roerdink4, Weil5, Scheetz6, Peerlkamp 7, and/or Kleiner8. Final Act. 2---6. 2. Claims 1, 2, and 6-17 are rejected under 35 U.S.C. § 103(a) as obvious over Kulper in view of Moring9 and further in view of Roerdink, Weil, Scheetz, Peerlkamp, and/or Kleiner. Id. at 7-9. 3. Claims 1, 2, and 6-17 are rejected under 35 U.S.C. § 103(a) as obvious over Kulper in view of Mortimer10 and further in view of Roerdink, Weil, Scheetz, Peerlkamp, and/or Kleiner. Id. at 10-13. DISCUSSION Rejection 1. The Examiner rejected claims 1, 2, and 6-17 over Kulper, Annis, and several other references. Kulper is generally relied upon as teaching an abrasion resistant tape suitable for sheathing elongate materials. Final Act. 3. Annis is cited for the proposition that it is known that "increasing the number of filaments increases abrasion resistance." Id. at 3. The remaining references are cited in the alternative for their teaching of nylon fibers. Id. at 4. 4 Roerdink et al., US 5,084,552, issued Jan. 28, 1992. 5 Weil et al., US 4,946,885, issued Aug. 7, 1990. 6 Scheetz et al., US 5,434,223, issued July 18, 1995. 7 Peerlkamp et al., US 4,876,301, issued Oct. 24, 1989. 8 Kleiner et al., US 5,773,556, issued June 30, 1998. 9 Moring et al., US 4,216,856, issued Aug. 12, 1980. 10 Mortimer et al., US 8,263,505 B2, issued Sept. 11, 2012. 3 Appeal2017-000148 Application 12/543,707 Appellants do not challenge the Examiner's prima facie case of obviousness. Appeal Br. 4--16. Rather, Appellants seek to rebut such case on the basis of unexpected results. Id. In general, an applicant may overcome a prima facie case of obviousness by establishing "that the [ claimed] range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range." In re Geisler, 116 F.3d 1465, 1469--70 (Fed. Cir. 1997) ( alteration in original) ( citation omitted). Appellants may show that the claimed invention has an unexpected property over the prior art "with evidence that the claimed invention exhibits some superior property or advantage that a person of ordinary skill in the relevant art would find surprising or unexpected." In re Mayne, 104 F.3d 1339, 1343 (Fed. Cir. 1997). "An examination for unexpected results is a factual, evidentiary inquiry." Id. "It is the established rule that 'objective evidence of non-obviousness must be commensurate in scope with the claims which the evidence is offered to support."' Allergan, Inc. v. Apotex Inc., 754 F.3d 952, 965 (Fed. Cir. 2014) (quoting In re Tiffin, 448 F.2d 791,792 (CCPA 1971)). This is as true for evidence of unexpected results as it is for any other type of objective evidence of non-obviousness. See In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) ("[T]he applicant's showing of unexpected results must be commensurate in scope with the claimed range."); In re Clemens, 622 F.2d 1029, 1035 (CCP A 1980) ("In order to establish unexpected results for a claimed invention, objective evidence of non-obviousness must be commensurate in scope with the claims which the evidence is offered to support."). 4 Appeal2017-000148 Application 12/543,707 Here, Appellants rely upon the following data in seeking to show unexpected results. Ex. Material Linear Density Filaments 7N/5mm 7N/10mm Weight Class g/m2 1 nylon 6,6 1100 dtex 140 18800 31200 280 F/F 2 nylon 6,6 470 dtex 144 18200 28000 210 F/F 3 nylon 6 470 dtex 136 6600 12100 190 E/E 4 nylon 6,6 470 dtex 68 3700 5900 185 D/E 5 polyester 370 dtex 102 1300 2200 180 DID Appeal Br. 7. The fifth ("7N/5mm") and sixth ("7N/1 Omm") columns indicate the results of scrape abrasion tests. Id. at 4; Spec. 1-2. The values in the fifth and sixth columns represent "the number of back-and-forth strokes taken to destroy the test specimen." Spec. 1-2. The eighth column ("Class") indicates the abrasion class of the tape backing material with values falling later in the alphabet indicating greater resistance. Id. at 3. Appellants submit a declaration stating, in part, that "persons skilled in the art, viewing all of the data collectively would appreciate that over the linear density of at least 280 dtex the abrasion resistance for the nylons correlates favorably with the number of filaments in the yam." Declaration of Andreas Wahlers-Schmidlin (dated August 8, 2014) ,r 30. Examples 1-3 are described as practicing the claims at issue. Appeal Br. 6. Example 4 falls outside the claims as it has only 68 filaments per yam (less than the "at least 90 single filaments" of claim 1 ). Id. Example 5 falls outside the claims as its filaments are made of polyester rather than one of the polymers listed in claim 1. Id. at 6. 5 Appeal2017-000148 Application 12/543,707 The Examiner finds that the test results are not unexpected and, additionally, not commensurate in scope with the claims. With regard to whether the test data is commensurate with the claims, particularly claim 1, the Examiner points out that "[t]here are no results for fabrics of the invention when the number of filaments per yam is from 90 to 135 and there are no results for fabrics when the number of filaments per yam is greater than 144." Answer 16. The Examiner further inquires whether "a yam of one million filaments ( or more) would behave similarly." Id. The Examiner further notes that "[t]he inventive examples are all limited to nylon 6 or nylon 6,6 but the claims include materials such as PEEK and PPS." Id. Accordingly, there is no support for Appellants' argument that yams made of polyether ketones (PEEK) or polyphenylene sulphides (PPS) would exhibit unexpected abrasion resistance relative to the prior art. Claim 2 depends from claim 1 and further limits the number of filaments per yam to "90 to 288 single filaments." Appeal Br. 20 (Claims App.). The evidence of record more nearly matches this range than that of claim 1 (with no upper bound). Nonetheless, the three exemplary tapes said to practice the patent contain 136, 140, and 144 filaments per yam. This is insufficient support for, at least, the upper portion of the claim range (up to 288 filaments per yam). Additionally, as with claim 1, there is no support for the argument that yams of PEEK or PPS would exhibit unexpected abrasion resistance. Appellants argue claims 14 and 15 separately. Appeal Br. 13-14. Claim 14 depends from claim 1 and further requires that the yams "comprise nylon 6,6." Appeal Br. 21 (Claims App.). Claim 14 does not, however, limit the range of the number of filaments per yam. 6 Appeal2017-000148 Application 12/543,707 Claim 15 is an independent claim similar to claim 1 but includes the additional limitation that "the tape exhibit[ s] an abrasion resistance that is higher than a comparison tape constructed of yams of the same plastics material and having the same linear density, but wherein each yam of said comparison tape is constructed from less than 90 single filaments." Id. at 21-22. Claim 16 depends from claim 15 and further requires that "each yam of said highly abrasion-resistant tape is constructed from 130 to 288 single filaments." Id. at 22. Claim 17 depends from claim 16 and further requires that "each yam of said highly abrasion-resistant tape is constructed from 130 to 145 single filaments." Id. Each of the claims at issue includes a range of filaments per yam significantly broader than that for which test data was submitted or includes materials ( e.g., PEEK and PPS) as to which no testing data was submitted. Claims 15-17 require that the claimed tape have better ("higher") abrasion resistance than a comparison tape. This does not equate to criticality. A showing of criticality requires "a marked improvement" relative to the closest prior art. In re Waymouth, 499 F.2d 1273, 1276 (CCPA 1974). Even accepting, arguendo, Appellants' argument that application DE 20 2006 015 701 is the closest prior art (although not part of the present rejection), that reference teaches a range of 48 to 80 filaments. See DE 20 2006 015 701 ,r 18. Thus, under Appellants' own reasoning, the closest prior art teaches 80 filaments per yam. Appellants have not submitted test data for tape backing having 80 filaments per yam. Nor have Appellants submitted evidence sufficient to show a marked improvement between the tapes of claims 15-17 and comparison tapes of PEEK and PPS. In view of the foregoing, Appellants have failed to rebut the prima facie case of obviousness. 7 Appeal2017-000148 Application 12/543,707 Rejections 2 and 3. Appellants rely on the same arguments in support of their appeal of Rejections 2 and 3 as with regard to Rejection 1. Appeal Br. 17, 18. We have determined such arguments to be unpersuasive with regard to Rejection 1 for the reasons set forth above. We similarly determine such arguments to be unpersuasive with regard to Rejections 2 and 3. Accordingly, Appellants have failed to rebut the prima facie case of obviousness set forth by the Examiner with regard to Rejections 2 and 3. CONCLUSION The rejection of claims 1, 2, and 6-17 as obvious over Kulper, Annis, Roerdink, Weil, Scheetz, Peerlkamp, and/or Kleiner is affirmed. The rejection of claims 1, 2, and 6-17 as obvious over Kulper, Moring, Roerdink, Weil, Scheetz, Peerlkamp, and/or Kleiner is affirmed. The rejection of claims 1, 2, and 6-17 as obvious over Kulper, Mortimer, Roerdink, Weil, Scheetz, Peerlkamp, and/or Kleiner is affirmed. 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 8 Copy with citationCopy as parenthetical citation