Federal-Mogul Powertrain, LLC

Patent Trials and Appeals BoardSep 14, 2021

2021000283 (P.T.A.B. Sep. 14, 2021)

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. 15/684,799 08/23/2017 Xiaodan Qiu SY-50718/710240-8646 6009 59582 7590 09/14/2021 Dickinson Wright PLLC - Troy 2600 West Big Beaver Rd. Suite 300 Troy, MI 48084-3312 EXAMINER NGUYEN, UYEN T ART UNIT PAPER NUMBER 3732 NOTIFICATION DATE DELIVERY MODE 09/14/2021 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): DWPatents@dickinson-wright.com tgood@dickinsonwright.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte XIAODAN QIU, LEIGH KRAUSER, MIKE PIOTROWSKI, TIANQI GAO, and EMMA ADAMSKI Appeal 2021-000283 Application 15/684,799 Technology Center 3700 Before WILLIAM A. CAPP, MICHAEL J. FITZPATRICK, and JEREMY M. PLENZLER, Administrative Patent Judges. PLENZLER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 3–6, 8–10, 12–15, 17, and 18. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Federal-Mogul Powertrain, Inc. Appeal Br. 1. Appeal 2021-000283 Application 15/684,799 2 CLAIMED SUBJECT MATTER The application “relates generally to textile sleeves for protecting elongate members, and more particularly to shrinkable braided tubular sleeves.” Spec. ¶ 2. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A textile sleeve for routing and protecting elongate members, comprising: an elongate wall having a circumferentially continuous, tubular outer periphery extending along a central axis between opposite open ends, said wall includes a plurality of yarns braided in helically extending bundles with one another, with each of said bundles including a plurality of said yarns arranged in side-by-side, abutting relation with one another, at least some of said bundles including shrinkable yarn and at least some of said bundles including non-shrinkable yarn, said shrinkable yarn providing the wall with an ability to be radially contracted from a first, diametrically enlarged assembly state to a second, diametrically shrunken state. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Pilgeram US 10,167,582 B1 Jan. 1, 2019 Iprotex DE 102 12 922 A1 Mar. 22, 2002 REJECTION Claims 1, 3–6, 8–10, 12–15, 17, and 18 are rejected under 35 U.S.C. § 103 as being unpatentable over Iprotex and Pilgeram. OPINION The main dispute in this appeal is whether Pilgeram is analogous art. “Two separate tests define the scope of analogous prior art: (1) whether the Appeal 2021-000283 Application 15/684,799 3 art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). Whether a reference is analogous art is an issue of fact. In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1378 (Fed. Cir. 2007). The Examiner determines that Pilgeram is analogous art under both tests. Ans. 3–5. There appears to be no dispute that Appellant’s field of endeavor is a “braiding method of textile sleeves for protecting an elongate member.” See, e.g., Ans. 3; Appeal Br. 4. The Examiner finds that “Pilgeram teach[es] [such a] braiding method of textile sleeves for protecting an elongate member.” Ans. 3. For example, the Examiner finds that “Pilgeram teaches a braided protective filament which comprise the same material and the same structure as the textile sleeve in the claimed invention,” including its “braided protective filament . . . compris[ing] a braided wrap around a hollow core (fig 2).” Id. at 3–4. Appellant disputes the Examiner’s finding, explaining, among other things, that Pilgeram’s suture is not a textile sleeve. Reply Br. 3. Appellant correctly notes that “[t]he mere presence of the suture core [in Pilgeram] does not provide the suture with the same structure as Appellant’s claimed textile sleeve.” Id. The Examiner fails to provide any reasonable basis to support the finding that Pilgeram’s “[s]utures . . . used for repair of tissue in the human body” (Pilgeram, 1:8–9) are from the field of a “braiding method of textile sleeves for protecting an elongate member.” Ans. 3. Appeal 2021-000283 Application 15/684,799 4 “A reference is reasonably pertinent if, even though it may be in a different field from that of the inventor’s endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem.” In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). “[T]he purposes of both the invention and the prior art are important in determining whether the reference is reasonably pertinent to the problem the invention attempts to solve.” Id. With respect to the problem solved by Appellant’s purported invention, the Examiner makes no meaningful findings. See Ans. 4–5 (simply concluding that “Pilgeram teaches the fibers of a strand can be plied together in a side by side configuration (column 2, lines 53-54), abutting with one another (fig 3).”). That is, the Examiner never identifies any particular problem addressed by Appellant’s purported invention. This, itself, is sufficient to establish error in the Examiner’s determination that Pilgeram is reasonably pertinent. Appellant contends, and the Examiner does not dispute, that its purported invention relates to “providing a braided textile sleeve that is heat- shrinkable, impact resistant, abrasion resistant, and substantially impermeable against the ingress of contamination.” Appeal Br. 4–5 (citing Spec. ¶¶ 5, 44). Even assuming the Examiner made such a finding regarding the purported problem identified by Appellant, the Examiner’s finding that “Pilgeram teaches the fibers of a strand can be plied together in a side by side configuration (column 2, lines 53-54), abutting with one another (fig 3)” (Ans. 4) provides no explanation as to why this makes Pilgeram reasonably pertinent to such a problem. Appeal 2021-000283 Application 15/684,799 5 Based on the record before us, the Examiner has failed to establish that Pilgeram is reasonably pertinent to any problem with which the inventor is involved. CONCLUSION The Examiner’s rejection is reversed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3–6, 8– 10, 12–15, 17, 18 103 Iprotex, Pilgeram 1, 3–6, 8– 10, 12–15, 17, 18 REVERSED