NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________ 

IN RE: YOUQING ZHANG,

Appellant

______________________ 

2015-1995

______________________ 

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. 12/023,047.

______________________ 

Decided: June 17, 2016

______________________ 

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. 

______________________ 

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 preventing knitted fabrics from unraveling by creating bonds 

at the crossover points of the fabric’s yarns. The application 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 bondforming 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 appeal1 and 

recites:

1. A knitted fabric, comprising a first yarn and a 

second yarn forming a plurality of stitches, wherein said first yarn is non-coated and has a melting 

 

1 The parties and the Board treated claim 1 as representative, 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 segments 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 describes 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 affirmed 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 material.” 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 jurisdiction 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 obviousness 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 affirmed 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 (quoting J.A. 73 (Examiner’s Answer)). Mr. Zhang primarily

argues on appeal that Doi teaches away from using noncoated yarn because the “substitution of Doi’s coated yarn 

with Weinle’s non-coated yarn would eliminate the advantage provided by Doi’s coated yarn,” in that a soft 

hand feel may not be achieved. J.A. 18. The Board recognized 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 purposes, 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, paragraph 1. See In re GPAC Inc., 57 F.3d 1573, 1577 

(Fed. Cir. 1995). 

CONCLUSION

Because the Board’s findings on obviousness are supported by substantial evidence, we affirm the final rejection of claims 1–13 in the ’047 application. 

AFFIRMED

COSTS

No costs.