In Re Youqing Zhang ( 2016 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
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IN RE: YOUQING ZHANG,
Appellant
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2015-1995
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Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 12/023,047.
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Decided: June 17, 2016
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GEORGE G. WANG, Bei & Ocean, Millington, NJ for
appellant.
THOMAS W. KRAUSE, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA, for
appellee Michelle K. Lee. Also represented by STACY
BETH MARGOLIES, JOSEPH MATAL, WILLIAM LAMARCA.
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Before LOURIE, DYK, and STOLL, Circuit Judges.
PER CURIAM.
Mr. Zhang appeals a decision of the Patent Trial and
Appeal Board in the examination of Patent Application
Serial No. 12/023,047. The Board affirmed the examiner’s
rejection of claims 1–13 for failure to satisfy the written
2 IN RE: ZHANG
description requirement of 35 U.S.C. § 112, paragraph 1,
and for obviousness under 35 U.S.C. § 103(a). Because
substantial evidence supports the Board’s obviousness
determination, we affirm the final rejection of claims 1–13
of the ’047 application.
BACKGROUND
The purported invention relates to methods of pre-
venting knitted fabrics from unraveling by creating bonds
at the crossover points of the fabric’s yarns. The applica-
tion discloses a fabric made of at least two yarns, one with
a lower melting point than the other, so that when heated
and then cooled, a bond is created between the contacting
yarn segments. The ’047 application discloses that this
bond-forming yarn melts between 150º and 220ºC, and
that the other yarn must have a higher melting point.
The application further describes that the number of
bonds at the crossover points will affect the physical
properties and “hand feel” of the fabric. Too many bonds
would result in fabric with a “hard hand feel,” meaning a
fabric that is rough or coarse to the touch. Too few bonds
would result in fabric prone to unraveling. The ’047
application purports to address the balance between the
hand feel and anti-raveling effect with an ideal bond-
forming rate. It discloses that “parameters should be
chosen so as to produce the bonding at 5%–20% of the
yarn crossover points” and identifies 10% as the preferred
bonding rate. Joint Appendix (“J.A.”) 257.
Claim 1 is representative of the claims on appeal 1 and
recites:
1. A knitted fabric, comprising a first yarn and a
second yarn forming a plurality of stitches, where-
in said first yarn is non-coated and has a melting
1 The parties and the Board treated claim 1 as rep-
resentative, and therefore we do the same.
IN RE: ZHANG 3
point lower than said second yarn; segments of
said first yarn cross over each other in forming
said stitches and result in a plurality of crossover
points; and at a percentage of said crossover
points there is a bond formed between said seg-
ments of said first yarn.
J.A. 189 (emphasis added). Claim 6 claims the knitted
fabric of claim 1, “wherein said knitted fabric is a
weft-knitted fabric,” id., i.e., where the yarn zigzags
along the length of the fabric following adjacent columns.
During prosecution, the pending claims were rejected
as anticipated by U.S. Patent No. 4,748,078 (“Doi”) and
for obviousness in view of the same reference. Doi de-
scribes a lace fabric made with “a heat bonding yarn
comprising a lace knitting yarn carrying a low-melting
thermoplastic synthetic resin covering and said heat
bonding yarn being thermally joined to itself or to other
component yarns at intersections.” Doi, ’078 patent,
Abstract. Because Doi used coated yarn, Mr. Zhang
attempted to amend his claims to add a limitation that
the bond-forming yarn (or “first yarn”) is “non-coated” to
traverse these rejections. The examiner rejected the
added limitation for lack of written description because
“ ‘non-coated’ was not set forth in the specification as
originally filed.” J.A. 181. The Board agreed and af-
firmed the examiner’s rejection of claims 1–13 based on
§ 112, paragraph 1.
The Board also affirmed the examiner’s obviousness
rejections of claims 1–5 and 7–13 over Doi and
U.S. Patent No. 4,818,316 (“Weinle”) and claim 6 over Doi,
Weinle, and U.S. Patent No. 2,811,029 (“Conner”). The
examiner found that Doi “teaches the knitted fabric
substantially as claimed,” but that “the melting yarn is
coated rather than the claimed ‘non-coated’ yarn materi-
al.” J.A. 37. Weinle, however, “teaches that non-coated
polyamide yarns are well known for use in knit fabrics as
4 IN RE: ZHANG
a material for a meltable binding yarn.” Id. The Board
affirmed the examiner’s “combination [that] involves
substituting a non-coated yarn, as shown by Weinle, for
the coated yarn of Doi . . . for disclosing that the heat
bonding yarn crosses over itself for bonding, as claimed.”
J.A. 11. The examiner further found, and the Board
affirmed, that “Conner teaches weft knit fabrics which
include melt yarns for fusion” and that it would have been
obvious to a person of ordinary skill to make the knitted
fabric of Doi as a weft knit because Conner discloses that
weft knits having melt yarns were well known. 183–84.
Mr. Zhang appeals the rejections, and we have juris-
diction under 35 U.S.C. § 141(a) and 28 U.S.C.
§ 1295(a)(4)(A).
DISCUSSION
We review the Board’s factual findings for substantial
evidence and its legal determinations de novo. ACCO
Brands Corp. v. Fellowes, Inc., 813 F.3d 1361, 1365
(Fed. Cir. 2016). “We review the Board’s ultimate obvi-
ousness determination de novo and underlying factual
findings for substantial evidence.” In re Varma, 816 F.3d
1352, 1359 (Fed. Cir. 2016). 2
Doi teaches lace fabric with a “foundation yarn which
is wholly or partially comprised of a heat bonding fiber
consisting in an ordinary lace yarn carrying a low-melting
thermoplastic synthetic resin surface covering . . . .” Doi,
’078 patent col. 1 ll. 60–64. The Board determined that
“Doi teaches using a coated yarn to solve the problem of
2 Given the January 31, 2008 effective filing date of
the claims of the ’047 application, the version of 35 U.S.C.
§ 103 that applies here is that in force preceding the
changes made by the America Invents Act. See Leahy–
Smith America Invents Act, Pub. L. No. 112-29, 125 Stat.
284, 293 (2011).
IN RE: ZHANG 5
[a] hard hand [feel] . . . .” J.A. 17. The Board also af-
firmed the examiner’s finding that “[i]t would have been
obvious at the time the invention was made to substitute
a ‘non-coated’ polyamide yarn material as shown by
Weinle for the coated yarn of Doi et al in order to avoid
the additional step of providing a coating on the yarn and
yet still provide the same binding function.” J.A. 8 (quot-
ing J.A. 73 (Examiner’s Answer)). Mr. Zhang primarily
argues on appeal that Doi teaches away from using non-
coated yarn because the “substitution of Doi’s coated yarn
with Weinle’s non-coated yarn would eliminate the ad-
vantage provided by Doi’s coated yarn,” in that a soft
hand feel may not be achieved. J.A. 18. The Board rec-
ognized this point, but nevertheless determined that “one
skilled in the art would appreciate that Doi’s coated yarn
is an alternative to the heat-bonding yarn of the prior
art.” Id.We conclude that the Board’s findings on obviousness,
including that Doi does not teach away from using the
non-coated yarn of Weinle, are supported by substantial
evidence. While a prior art reference may indicate that a
particular combination is undesirable for its own purpos-
es, the reference can nevertheless teach that combination
if it remains suitable for the claimed invention. See In re
Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006) (“[T]he teaching
of [a reference] is not limited to the specific invention
disclosed.”). Though using the non-coated yarn of Weinle
to make the knitted fabric of Doi may eliminate the
advantage in hand feel provided by Doi’s coated yarn, “[a]
known or obvious composition does not become patentable
simply because it has been described as somewhat inferior
to some other product for the same use.” In re Gurley,
27 F.3d 551, 553 (Fed. Cir. 1994). Moreover, the claims of
the ’047 application are not limited to fabrics that are soft
to the touch. Rather, they only require a knitted fabric
made of two yarns, one that is non-coated with a lower
relative melting point that is heat-bonded to itself “at a
6 IN RE: ZHANG
percentage of . . . crossover points.” J.A. 189. Substantial
evidence supports the Board’s findings that the prior art
teaches the claim elements and that a skilled artisan
would have been motivated to combine the non-coated
yarn of Weinle to make the heat-bonded fabric thermally
bonded at the crossover points as disclosed in Doi.
Mr. Zhang does not make additional arguments regarding
the rejection of claim 6. We thus affirm the Board’s
rejection of claims 1–13 for obviousness. Because we
affirm the rejection of all pending claims under § 103(a),
we decline to reach the rejection under § 112, para-
graph 1. See In re GPAC Inc., 57 F.3d 1573, 1577
(Fed. Cir. 1995).
CONCLUSION
Because the Board’s findings on obviousness are sup-
ported by substantial evidence, we affirm the final rejec-
tion of claims 1–13 in the ’047 application.
AFFIRMED
COSTS
No costs.