Grunlan, Jaime C. et al.

Patent Trials and Appeals Board

Sep 27, 2019

14369957 - (D) (P.T.A.B. Sep. 27, 2019)

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.
14/369,957 06/30/2014 Jaime C. Grunlan 2390-00108 4260
112876 7590 09/27/2019
Tumey LLP - Michelin
P.O.Box 22188
Houston, TX 77227-2188
EXAMINER
MELLOTT, JAMES M
ART UNIT PAPER NUMBER
1712
MAIL DATE DELIVERY MODE
09/27/2019 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 JAIME C. GRUNLAN, MORGAN A. PRIOLO,
BRIAN R. BERGMAN, and JOHN J. MCHUGH
____________

Appeal 2019-001000
Application 14/369,957
Technology Center 1700
____________

Before MONTÉ T. SQUIRE, BRIAN D. RANGE, and
SHELDON M. McGEE, Administrative Patent Judges.

SQUIRE, Administrative Patent Judge.

DECISION ON APPEAL1

1 In this Decision, we refer to the Specification filed June 30, 2014
(“Spec.”); Final Office Action dated Dec. 4, 2017 (“Final Act.”); Appeal
Brief filed June 1, 2018, as amended July 3, 2018 (“Appeal Br.”);
Examiner’s Answer dated Sept. 19, 2018 (“Ans.”); and Reply Brief filed
Nov. 19, 2018 (“Reply Br.”).
Appeal 2019-001000
Application 14/369,957
2

Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 1–9 and 11–19.3 We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
The Claimed Subject Matter
Appellants’ disclosure relates to diffusion barriers and a method for
producing a material diffusion barrier on an elastomeric substrate. Spec. 1;
Abstract. Claim 1 is illustrative of the claimed subject matter on appeal and
is reproduced below from the Claims Appendix to the Appeal Brief:
1. A method for producing a material diffusion barrier on an
elastomeric substrate, comprising:
(A) exposing the elastomeric substrate to a cationic
solution comprising cationic materials, wherein the cationic
materials comprise polyethylene oxide to produce a cationic
layer comprising polyethylene oxide on the elastomeric
substrate, wherein the elastomeric substrate comprises
polyisoprene, polychloroprene, butadiene-styrene copolymers,
acrylonitrilebutadiene copolymers, ethylenepropylene-diene
rubbers, polysulfide rubber, nitrile rubber, silicone, butyl rubber,
or any combinations thereof;
(B) exposing the cationic layer to an anionic solution to
produce an anionic layer comprising polyacrylic acid on the
cationic layer, wherein the anionic solution comprises layerable
materials and wherein the layerable materials comprise

2 We use the word “Appellants” to refer to “Applicants” as defined in 37
C.F.R. § 1.42(a). Appellants identify Michelin North America, Inc. as the
real party in interest. Appeal Br. 3.
3 Claims 10 and 20 are canceled. Final Act. 2.
Appeal 2019-001000
Application 14/369,957
3
polyacrylic acid, wherein a layer comprises the cationic layer
and the anionic layer;
wherein the layer comprises the material diffusion
barrier, wherein the material diffusion barrier is disposed on
the elastomeric substrate, and wherein steps (A) and (B) are
repeated to produce a plurality of layers, further wherein the
material diffusion barrier comprises the plurality of layers, and
further wherein the plurality of layers provides a desired
retardant to transmission of material through the elastomeric
substrate.
Appeal Br. 12 (key disputed claim language italicized and bolded).
The References
The Examiner relies on the following prior art references as evidence
in rejecting the claims on appeal:
Grunlan US 2010/0227070 A1 Sept. 9, 2010
Kirk, II et al. (“Kirk”) US 2012/0185997 A1 July 26, 2012
The Rejection
On appeal, the Examiner maintains (Ans. 3) the following rejection:
claims 1–9 and 11–19 rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Kirk in view of Grunlan. Final Act. 4.
OPINION
Having considered the respective positions advanced by the Examiner
and Appellants in light of this appeal record, we affirm the Examiner’s
rejection based on the fact-finding and reasoning set forth in the Answer and
Final Office Action, which we adopt as our own. We add the following
primarily for emphasis.
Appeal 2019-001000
Application 14/369,957
4
Appellants argue independent claims 1 and 11 as a group, but do not
present separate argument for the patentability of the remaining dependent
claims 2–9 and 12–19. Appeal Br. 7–11. We select claim 1 as
representative and the remaining claims subject to the Examiner’s rejection
stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner determines that the combination of Kirk and Grunlan
suggests a process satisfying all of the elements of claim 1 and concludes the
combination would have rendered the claim obvious. Final Act. 4–6.
Appellants argue that the Examiner’s rejection of claim 1 should be
reversed because the Examiner has not established that Kirk teaches or
suggests “an elastomeric substrate,” “a layer comprises the anionic layer and
the cationic layer,” and “wherein the layer comprises the material diffusion
barrier, wherein the material diffusion barrier is disposed on the elastomeric
substrate,” as recited in the claim. Appeal Br. 7–8; Reply Br. 2. Appellant
contends it is unclear what the Examiner is using in Kirk to read on those
elements of the claim. Appeal Br. 7.
We do not find Appellants’ argument persuasive of reversible error in
the Examiner’s rejection because Appellants attack the references
individually rather than the combined teachings of the prior art as a whole.
One cannot show non-obviousness by attacking references individually
where the rejection is based on a combination of references. In re Keller,
642 F.2d 413, 425 (CCPA 1981). Appellants’ argument is premised on what
Appellants contend Kirk teaches individually, and not what the combined
teachings of Kirk and Grunlan as a whole would have suggested to one of
ordinary skill in the art.
Appeal 2019-001000
Application 14/369,957
5
As the Examiner finds (Ans. 3–4), Kirk is relied upon in the rejection
for teaching the “elastomeric substrate” recitations of claim 1, while Grunlan
is relied upon in the rejection for teaching or suggesting the “layer comprises
the cationic layer and the anionic layer” and “wherein the layer comprises
the material diffusion barrier” recitations of the claim.
Moreover, contrary to what Appellants argue, we find that a
preponderance of the evidence and the Examiner’s sound technical
reasoning support the Examiner’s analysis and determination that the
combination of Kirk and Grunlan suggests all of the elements of claim 1,
including each of the above elements Appellants argue, and the Examiner’s
conclusion that the combination would have rendered the claim obvious.
Kirk, Title, Abstract, ¶¶ 12, 26, 30; Grunlan, Title, Abstract, ¶¶ 9, 33, 34, 35,
38, 45, claim 1, claim 7.
As the Examiner finds (Ans. 3–4, Final Act. 4), Kirk discloses a glove
having barrier properties with an outer layer 410 comprised of cotton fibers
coated with butyl rubber (Kirk, Title, Abstract, ¶ 26), that the glove can
include one or more outer layers (id. ¶ 12), and further include a flame
resistant outer layer (id. ¶ 30), which corresponds to and discloses or would
have reasonably suggested to one of ordinary skill the “elastomeric
substrate” and “wherein the elastomeric substrate comprises . . . butyl
rubber” recitations of the claim.
Regarding disclosure of the recitations “a layer comprises the anionic
layer and the cationic layer,” and “wherein the layer comprises the material
diffusion barrier, wherein the material diffusion barrier is disposed on the
elastomeric substrate,” as the Examiner finds (Ans. 4; Final Act. 4–6),
Grunlan teaches or suggests these elements of the claim. In particular, as the
Appeal 2019-001000
Application 14/369,957
6
Examiner finds (Ans. 4; Final Act. 5), Grunlan teaches a multilayer coating
comprising negative (anionic) and positive (cationic) layers to provide a
flame resistant substrate and a method for producing the coating layer,
which corresponds to the “exposing the cationic layer to an anionic solution”
step of the claim. See Grunlan, Title, Abstract, ¶¶ 9, 33–35, claim 1,
claim 7.
As the Examiner further finds (Ans. 4; Final Act. 6), the coating layer
Grunlan teaches forming would inherently be a diffusion layer given that it
would have a certain thickness, which would impede diffusion of, for
example, different-sized materials depending on the size of the pores of the
substrate. See Grunlan ¶ 31 (“The positive and negative layers may have
any desired thickness. In embodiments, each layer is between about 1
nanometer and about 100 nanometers thick.”), ¶ 45 (disclosing the “coating
covers the internal walls of the pores of the substrate”).
As the Examiner also finds (Final Act. 6) and Appellants do not
refute, because the method and the resulting coating layer of Grunlan appear
to closely correspond to a layer comprising the cationic layer and the anionic
layer as defined by claim 1, it appears that the prior art process steps would
yield layers that possess the same property characteristics as the layer
produced by the claimed method. When a claimed process along with its
resultant product reasonably appears to be substantially the same as, or an
obvious variant of, a product disclosed by the prior art, the burden is on the
applicant to prove that the prior art process and its resultant product does not
necessarily or inherently possess characteristics attributed to the claimed
product. Cf. In re Spada, 911 F.2d 705, 708 (Fed Cir. 1990); In re Best, 562
F.2d 1252, 1255 (CCPA 1977).
Appeal 2019-001000
Application 14/369,957
7
Appellants argue the Examiner’s rejection should be reversed because
one of ordinary skill in the art would not try and combine
flame resistant and flame retardant fabrics because they are
inherently two completely different fabrics aiming to
accomplish entirely different purposes.
Id. at 11. In particular, Appellants contend that because Kirk is directed
towards flame resistant fabric and Grunlan is directed towards flame
retardant fabric, the two prior art references are “drastically different,”
“accomplish different goals, and they are made differently.” Id. at 8.
Appellants also contend
it would be improper to combine the cited references
because the proposed combination would change the
principle of operation of each respective reference, and it
would render the cited references unsatisfactory for their
intended respective purposes.
Id. at 10.
We do not find these arguments persuasive of reversible error in the
Examiner’s rejection. Rather, on the record before us, we find that the
Examiner provides a reasonable basis, which is supported by a
preponderance of the evidence in the record, to evince why one of ordinary
skill would have combined the teachings of Kirk and Grunlan to arrive at
Appellants’ claimed method. Final Act. 5–6; see also KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. 398, 420 (2007) (explaining that any need or
problem known in the art can provide a reason for combining the elements in
the manner claimed).
Appellant’s disagreement as to the Examiner’s factual findings and
reasoning for combining the references, without more, is insufficient to
establish reversible error. Cf. SmithKline Beecham Corp. v. Apotex Corp.,
439 F.3d 1312, 1320 (Fed. Cir. 2006) (“[M]ere statements of disagreement .
Appeal 2019-001000
Application 14/369,957
8
. . as to the existence of factual disputes do not amount to a developed
argument.”).
Appellants’ contentions that the two references are “drastically
different,” “accomplish different goals, and . . . are made differently”
(Appeal Br. 8) are not persuasive because they are conclusory and Appellant
does not direct us to persuasive evidence or provide an adequate technical
explanation to support them. Attorney argument is not evidence. In re De
Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Appellants’ assertion that “the
proposed combination would change the principle of operation of each
respective reference” (Appeal Br. 10) is equally unpersuasive because it, too,
is conclusory and unsupported by persuasive evidence in the record. De
Blauwe, 736 F.2d 699.
We do not find Appellants’ argument that one of ordinary skill in the
art would not have combined the cited references because Kirk is directed to
a flame resistant fabric and Grunlan is directed to a flame retardant fabric
(Appeal Br. 11) persuasive of reversible error based on the fact-finding and
reasons provided by the Examiner at pages 4–5 of the Answer. In particular,
as the Examiner finds (Ans. 5), the Grunlan reference, for example, uses the
terms “flame retardant” and “flame resistant” interchangeably throughout its
specification and the claims. See, e.g., Grunlan, Title (“FLAME
RETARDANT”), Abstract (“flame resistant”), ¶ 4 (“flame retardant”), ¶ 9
(“flame resistant”), claim 1 (“flame resistant”). Moreover, the
Merriam-Webster Online Dictionary4 defines the term “flame-retardant” to

4 Merriam-Webster Online Dictionary,
http://www.merriam-webster.com/dictionary.
Appeal 2019-001000
Application 14/369,957
9
mean “made or treated so as to resist burning,” which corresponds to the
plain and ordinary meaning of the term “flame resistant” and is consistent
with the broadest reasonable interpretation in light of the specification. In re
Am. Acad. Of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
Thus, we conclude a person of ordinary skill in the art at the time of
the invention would have understood the terms “flame resistant” and “flame
retardant” as both having essentially the same meaning, i.e., made or treated
so as to resist burning, and that the terms could be used interchangeably.
As the Examiner also finds (Ans. 5), Appellants do not provide any
evidence that Grunlan’s flame retardant coating would not act or be suitable
to serve as Kirk’s flame resistant outer layer. See In re Schulze, 346 F.2d
600, 602 (CCPA 1965) (“Argument in the brief does not take the place of
evidence in the record.”).
Accordingly, we affirm the Examiner’s rejection of claims 1–9 and
11–19 under 35 U.S.C. § 103(a) as obvious over the combination of Kirk
and Grunlan.
Appeal 2019-001000
Application 14/369,957
10
CONCLUSION
In summary:
Claims
Rejected
Basis Affirmed Reversed
1–9, 11–19 § 103(a)
Kirk, Grunlan
1–9, 11–19
Overall
Outcome
1–9, 11–19

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)(iv).
AFFIRMED