Fiber Innovation Technology, Inc.

Patent Trials and Appeals Board

Jan 13, 2022

2020004670 (P.T.A.B. Jan. 13, 2022)

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. 15/355,772 11/18/2016 Jeffrey S. Dugan F64155 1290US.1 (0018.0) 7133 26158 7590 01/13/2022 WOMBLE BOND DICKINSON (US) LLP ATTN: IP DOCKETING P.O. BOX 7037 ATLANTA, GA 30357-0037 EXAMINER JOHNSON, JENNA LEIGH ART UNIT PAPER NUMBER 1789 NOTIFICATION DATE DELIVERY MODE 01/13/2022 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): BostonDocket@wbd-us.com IPDocketing@wbd-us.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JEFFREY S. DUGAN Appeal 2020-004670 Application 15/355,772 Technology Center 1700 ____________ Before ADRIENE LEPIANE HANLON, BEVERLY A. FRANKLIN, and LILAN REN, Administrative Patent Judges. REN, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1-7 and 10-19. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 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 “Fiber Innovation Technology, Inc.” Appeal Br. 1. Appeal 2020-004670 Application 15/355,772 2 CLAIMED SUBJECT MATTER Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A multicomponent fiber having a sheath/core arrangement, comprising: a sheath component comprising a first polymer component; and a core component comprising a second polymer component; wherein the core component has a first axis that is substantially perpendicular to a second axis, and wherein the first axis is longer than the second axis such that the core component has a non-circular shape; wherein the multicomponent fiber has a first cross- sectional center of mass and a cross-sectional periphery; wherein the core component has a second cross-sectional center of mass; and wherein the second cross-sectional center of mass is positioned from about 20 percent to about 70 percent of the distance from the first cross-sectional center of mass to a point on the cross-sectional periphery; wherein the core component has a substantially circular side facing an outer periphery of the multicomponent fiber, which is connected to a substantially elliptical side facing an interior of the multicomponent fiber. Claims Appendix (Appeal Brief 11). REFERENCES The prior art relied upon by the Examiner are: Name Reference Date Ogata US 3,642,565 Feb. 15, 1972 Okaya US 8,268,444 B2 Sept. 18, 2012 Appeal 2020-004670 Application 15/355,772 3 REJECTIONS Claims Rejected 35 U.S.C. § Reference(s)/Basis 1-3, 5-7, 10-19 103 Okaya 1-5, 7, 10-16, 18, 192 103 Ogata 6, 173 103 Ogata, Okaya OPINION We review the appealed rejections for error based upon the issues identified by Appellant and in light of the arguments and evidence produced thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”)). After having considered the evidence presented in this Appeal and each of Appellant’s contentions, we are not persuaded that reversible error has been identified, and we affirm the Examiner’s section 103 rejections for the reasons expressed in the Final Office Action and the Answer. We add the following primarily for emphasis. Claim 1 (Okaya)4 Appellant argues that the Examiner reversibly erred in “equating the crescent moon-shaped core in Ogata” with “the core component ha[ving] a substantially circular side facing an outer periphery of the multicomponent 2 The Examiner corrects the claims rejected under Ogata in the Answer. Ans. 5, 6. Claims 8 and 9 have been cancelled. 3 See FN. 2. 4 Appellant does not separately argue for the rejection of claims 2, 3, 5-7, 10-19 over Okaya. See Appeal Br. 4-9. These claims stand or fall with claim 1 with respect to the rejection over Okaya. See id.; see also 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2020-004670 Application 15/355,772 4 fiber, which is connected to a substantially elliptical side facing an interior of the multicomponent fiber” as recited in claim 1 as an obvious design choice. Appeal Br. 4. Appellant argues that the claim language requires “the circular side facing the outer periphery of the fiber and elliptical side facing the interior of the fiber [to] both be essentially convex in relation to the center of gravity of the core component” whereas the elliptical side of a crescent moon shape is “essentially concave in relation to the center of gravity of the core component.” Id. at 4-5. Appellant’s argument is unpersuasive because it is not based on the claim language. The plain language of claim 1 does not require any particular orientation with respect to “the center of gravity of the core component” (id. at 5) as Appellant argues. We further note that there is no evidence in the record that the Specification supports such a narrow interpretation of the claim language.5 Appellant next argues that declaratory evidence (Declaration filed by Mr. Jeffrey Dugan, hereinafter “Declaration” or “Decl.”) shows that the Examiner reversibly erred in finding that “the unique design of the core shape presently recited in the pending claims is not an obvious matter of design choice.” Appeal Br. 5. Appellant argues that the Examiner reversibly erred because claim 1 recites “a core shape specifically designed by the 5 The Examiner finds: “Based on the applicant's arguments, the Examiner considers the shape shown in Figure 1 of the pending application and Figure 6 of Ogata et al. to meet the claim limitation.” Final Act. 3. Appellant does not dispute the Examiner’s statement that “the shape shown in Figure 1 of the pending application . . . meet[s] the claim limitation.” Compare Appeal Br. 4-9, with Final Act. 3. The record before us therefore shows that the Examiner’s obviousness rejection is supported by the identity between Figure 1 of the pending application and Figure 6 of Ogata. Appeal 2020-004670 Application 15/355,772 5 inventor of the presently claimed multicomponent fiber to address specific problems identified by the inventor.” Id. Appellant argues that “neither Okaya nor Ogata, either alone or in combination, even address the stated problems of having a thin, fragile outer sheath wall, pinch points in the outer sheath wall, and/or tear points in the outer sheath wall associated with sharp comers in the core component shape.” Id. at 6. A change of shape does not make a product nonobvious where the claimed shape is not of functional significance and accomplishes the same purpose as the prior art shape. See In re Dailey, 357 F.2d 669, 672-73 (CCPA 1966). As the Examiner points out in this case, the declaratory evidence is incommensurate in scope with the claim and therefore cannot show that the recited shape performs a different function or achieves a different purpose than the prior art shape. Final Act. 2. For example, the Declaration describes a D-shaped core and its various advantages (Decl. ¶¶ 8, 9) but does not explain why the claim language is limited to this particular embodiment. Moreover, as the Examiner also points out, the Declaration does not specifically discuss, much less compare, the claim and the prior art. See id. For example, the Declaration states: “A non-circular cross section of the core component can provide a greater separation of the centers of mass than prior art circular-core cross sections.” Decl. ¶ 5. The Declaration, however, does not discuss the various prior art shapes such as “the crescent moon- shaped cores” Appellant acknowledges are disclosed in Ogata (Appeal Br. 5, 7). Appellant does not dispute these issues (see Appeal Br. 4-9) and no reversible error has been identified. Appeal 2020-004670 Application 15/355,772 6 Appellant’s argument that “the crescent moon-shaped core components in Ogata (relied on by the Office) would present this exact same problem that the inventor was trying to solve (i.e., sharp comers which lead to tearing)” (Appeal Br. 7 (emphasis omitted)) is unpersuasive because it is unsupported by evidence. “Attorneys’ argument is no substitute for evidence.” Johnston v. IVAC Corp., 885 F.2d 1574, 1581 (Fed. Cir. 1989). Appellant’s argument that neither Okaya nor Ogata addresses problems recognized and solved by the inventor is unpersuasive. In determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls. . . . [A]ny need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419-20 (2007). Claim 1 (Ogata)6 Appellant does not present separate arguments for the rejection over Ogata. See Appeal Br. 4-9. The rejection is sustained for the same reason as provides supra. Objection to Drawings Appellant states that “[t]he drawings are objected to under 37 CFR l.83(a)” and requests “reconsideration and withdrawal of this rejection.” See Appeal Br. 8-9. “It is apparent . . . that Congress intended to differentiate between whatever requirements and objections an examiner might make on 6 Appellant does not separately argue for the rejection of claims 2-7 and 10- 19 over Ogata. See Appeal Br. 4-9. These claims stand or fall with claim 1 with respect to the rejection over Ogata. See id.; see also 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2020-004670 Application 15/355,772 7 the one hand, and matters involving actual rejections of claims on the other, at least insofar as its provision of statutory rights of appeal to the board.” In re Hengehold, 440 F.2d 1395, 1403 (CCPA 1971). Relief of the objection is by way of petition pursuant to 37 C.F.R. § 1.181, not by appealing to this Board. CONCLUSION The Examiner’s rejections are affirmed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-3, 5-7, 10-19 103 Okaya 1-3, 5-7, 10-19 1-5, 7, 10- 16, 18, 19 103 Ogata 1-5, 7, 10- 16, 18, 19 6, 17 103 Ogata, Okaya 6, 17 Overall Outcome 1-7, 10-19 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED