ALENGRIN, Simon

Patent Trials and Appeals Board

Oct 30, 2019

14911115 - (D) (P.T.A.B. Oct. 30, 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.
14/911,115 02/09/2016 Simon ALENGRIN 466885US99 PCT 1352
22850 7590 10/30/2019
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
PLESZCZYNSKA, JOANNA
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
10/30/2019 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):
OBLONPAT@OBLON.COM
iahmadi@oblon.com
patentdocket@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SIMON ALENGRIN

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Appeal 2019-000740
Application 14/911,115
Technology Center 1700
____________

Before KAREN M. HASTINGS, MICHAEL G. McMANUS, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner’s decision rejecting claims 1, 3–6, 8–11, and 16–18 under 35
U.S.C. § 103 as unpatentable over at least the combined prior art of Fay et
al. (US 2004/0123539 A1, published July 1, 2004), Bondra Jr. et al. (US
3,958,385, issued May 25, 1976) and Knapp et al. (US 2011/0206897 A1,

1 We use the word “Appellant” to refer to the “Applicant” as defined in 37
C.F.R. § 1.42(a). Appellant is Saint-Gobain Isover, which is also identified as
a real party in interest (Appeal Br. 2).

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published August 25, 2011).2 We have jurisdiction over the appeal under 35
U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
Claim 1 is illustrative of the subject matter on appeal (emphasis added
to highlight key disputed limitation):
1. Fiber batting for the manufacture of thermally insulating
composite comprising:
a semi-rigid fibrous batt including mineral wool fibers
bonded by a binder; and
a facing sheet adhered to one outer main surface of the
semi-rigid fibrous batt with a binder or adhesive,
wherein:
a density of the semi-rigid fibrous batt is above 20
kg/m3;
the mineral wool fibers are arranged in a substantially
laminar layout with a majority of fibers parallel to the main
face;
the semi-rigid fibrous batt is provided, on an opposite
surface from the facing sheet, with alterations in a direction
transverse to the length of the semirigid fibrous batt;
the alterations are obtained by scoring and the depth of
scoring varies or the scoring is not continuous across the width
of the semi-rigid fibrous batt;
the fiber batting is in a rolled form with the facing sheet
interior to the roll and the alterations towards the exterior, and
is packaged into a roll packaged unit;
a first thickness of the semi-rigid fibrous batt, which is
before rolling, is at least 15 mm; and
the facing sheet is a veil, mat, non-woven glass fibers, or
a fabric of woven glass fibers.

2 The Examiner applied an additional reference, Yang (US 2009/0053958
A1, published Feb. 26, 2009), to dependent claim 10 (Final Action 7). A
discussion of this reference is not needed for disposition of this appeal.
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Appeal Br. (Claims App. i).
OPINION
Upon consideration of the evidence of record and each of Appellant’s
contentions as set forth in the Appeal Brief, as well as the Reply Brief, we
determine that Appellant has not demonstrated reversible error in the
Examiner’s rejections (e.g., generally Ans.). In re Jung, 637 F.3d 1356,
1365–66 (Fed. Cir. 2011) (explaining the Board’s long-held practice of
requiring Appellant(s) to identify the alleged error in the Examiner’s
rejection.). We sustain the rejections for the reasons expressed by the
Examiner in the Final Office Action and the Answer.
We add the following primarily for emphasis.
Appellant’s arguments in support of patentability as to the appealed
claims, including separately rejected dependent claim 10, are based on
limitations found in claim 1, except for a separate argument that applies to
dependent claims 16 and 17.
It has been established that “the [obviousness] analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007); see also In re Fritch, 972 F.2d 1260, 1264–
65 (Fed. Cir. 1992) (a reference stands for all of the specific teachings
thereof as well as the inferences one of ordinary skill in the art would have
reasonably been expected to draw therefrom).
At the outset, it is noted that the Examiner’s rejection relies upon the
second alternative of the disputed clause. Thus, all arguments and remarks,
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whether by the Appellant or the Examiner, directed at the first option of “the
depth of scoring varies” are not relevant to this appeal.
Appellant’s arguments all focus on the alleged failure of Fay/Bondra
to teach or suggest a rolled batting having cuts or scoring that is “not
continuous across the width” of the web as recited in claim 1 (e.g., Appeal
Br. 5–13; Reply Br. 3-6). Appellant argues that having discontinuous cuts in
Bondra would defeat the purpose of having cuts to prevent the facing from
sliding with respect to the face during rolling of the batting (Appeal Br. 10).
Appellant also argues that the Examiner’s reliance on Knapp is misplaced
because Knapp teaches the use of discontinuous cuts/scoring in a folded batt,
not in a rolled batt (id). Appellant argues that Knapp teaches away from
rolling insulation (Appeal Br. 12).
These arguments are not persuasive of reversible error in the
Examiner’s rejection (e.g., Ans. 9–12).
Whether the prior art teaches away from the claimed invention is a
question of fact, In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005). It is
well established that a prior art reference must be considered in its entirety,
i.e., as a whole, when determining if it would lead one of ordinary skill in
the art away from the claimed invention. W.L. Gore & Associates, Inc. v.
Garlock, Inc., 721 F.2d 1540, 1550 (Fed. Cir. 1983). See Syntex (U.S.A.)
LLC v. Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005) (“A statement that
a particular combination is not a preferred embodiment does not teach away
absent clear discouragement of that combination.”). Knapp explicitly
teaches that discontinuous scoring or cuts is an alternative to a continuous
cut/scoring in a folded batting product (Knapp ¶ 26). One of ordinary skill
in the art would have immediately inferred, using no more than ordinary
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creativity, that the use of discontinuous (intermittent) scoring would have
been an appropriate alternative to a continuous scoring to aid in rolling the
rolled batting of Fay/Bondra and/or to aid in separating pieces of the batting
(e.g., similar to the ubiquitous use of perforated lines to separate sheets of
rolled paper products). Appellant’s argument that having discontinuous cuts
in Bondra would defeat its purpose is unavailing because the argument is
unsupported by objective evidence or adequate technical explanation (e.g.,
Appeal Br. 10; Reply Br. 7). Notably, the claim encompasses very short
uncut portions in between long scored/cut portions such that the undesired
bending that Appellant asserts would result would be minimal, if it occurs.
Thus, Appellant, at most, has provided mere attorney arguments and such
arguments in a brief cannot take the place of evidence. In re Pearson, 494
F.2d 1399, 1405 (CCPA 1974).
In summary, Appellant has not directed our attention to any
persuasive reasoning or credible evidence to establish that there is reversible
error in the Examiner’s obviousness determination of claim 1 (Ans.
generally). See KSR, 550 U.S. at 417 (the predictable use of known prior art
elements or steps performing the same functions they have been known to
perform is normally obvious; the combination of familiar elements/steps is
likely to be obvious when it does no more than yield predictable results);
Ball Aerosol and Specialty Container, Inc. v. Limited Brands, Inc., 555 F.3d
984, 993 (Fed. Cir. 2009) (under the flexible inquiry set forth by the
Supreme Court, the PTO must take account of the “inferences and creative
steps,” as well as routine steps, that an ordinary artisan would employ).
With respect to claims 16 and 17, Appellant’s argument that the
Examiner has not shown that the spacing distance is a result effective
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variable (Appeal Br. 16) is unpersuasive. One of ordinary skill in the art
using no more than ordinary creativity would have optimized the
longitudinally spacing of the cuts depending on the ultimate size of the roll
of rolled batting (e.g., Ans. 10).
Accordingly, we sustain the Examiner’s prior art rejections under 35
U.S.C. § 103 of all the claims on appeal for the reasons given above and
presented by the Examiner.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1, 3–6, 8, 9,
11, 16–18
§ 103 Fay, Bondra,
Knapp
1, 3–6, 8, 9,
11, 16–18

10 § 103 Fay, Bondra,
Knapp, Yang

10
Overall
Outcome
1, 3–6, 8–11,
16-18

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)(1).

AFFIRMED