Ex Parte WAHLERS-SHCMIDLIN et al

Patent Trial and Appeal Board

May 29, 2018

12543707 (P.T.A.B. May. 29, 2018)

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.
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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.
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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.").
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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.
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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.
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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.
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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
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