Anne N. De Rovere et al.

Patent Trials and Appeals Board

Jan 23, 2020

13399542 - (D) (P.T.A.B. Jan. 23, 2020)

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.
13/399,542 02/17/2012 Anne N. De Rovere 62919US017 3126
32692 7590 01/23/2020
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
MCKENZIE, THOMAS B
ART UNIT PAPER NUMBER
1776
NOTIFICATION DATE DELIVERY MODE
01/23/2020 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):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANNE N. DE ROVERE, GARY F. HOWORTH,
MICHAEL PATRICK M. MANDANAS, and CLAUS MIDDENDORF

Appeal 2018-008526
Application 13/399,542
Technology Center 1700
____________

BEFORE CATHERINE Q. TIMM, JEFFREY R. SNAY, and
MICHAEL G. McMANUS, Administrative Patent Judges.

McMANUS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 seeks review of the
Examiner’s decision to reject claims 1–12, 15–17, and 53–59. We have
jurisdiction under 35 U.S.C. § 6(b).
Oral argument was held January 9, 2020.
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real parties in interest as 3M
Company and its affiliate 3M Innovative Properties Company. Appeal Br.
2.
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CLAIMED SUBJECT MATTER

The present application generally relates to a method of
manufacturing a flexible fibrous material for use in pollution control devices
such as catalytic converters and diesel particulate filters. Specification filed
Feb. 17, 2012 (“Spec.”) 1–2. Both catalytic converters and diesel particulate
filters typically include ceramic structures. Id. at 1. The Specification
teaches that “[t]o avoid damage to the ceramic monolith from road shock
and vibration, to compensate for the thermal expansion difference, and to
prevent exhaust gases from passing between the monolith and the metal
housing, ceramic mat or intumescent sheet materials are often disposed
between the ceramic monolith and the metal housing.” Id. at 1–2. The
Specification teaches a flexible fibrous material having mechanical
properties suitable for use as such a mat in pollution control devices. Id. at
5.
The Specification teaches that one may make the subject flexible
fibrous material by forming a slurry that includes inorganic fibers, a first
emulsified organic polymer, and a flocculent. Id. at 3. The flocculent is
taught to comprise a second organic polymer. Id. The Specification further
teaches that one flocculates the emulsified first organic polymer onto the
inorganic fibers to yield a flocculated slurry. Id.

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Claims 1 and 2 are illustrative of the subject matter on appeal and are
reproduced below with certain limitations bolded for emphasis:
1. A method of forming a flexible mounting mat or insulation
material suitable for use in a pollution control device comprising
the steps:
(a) forming a slurry by mixing, in aqueous solution,
components comprising:
at least 40% by weight inorganic fibers based on the
total weight of the flexible mounting mat or
insulation material; and
organic components, wherein the organic
components comprise an emulsified first organic
polymer and a flocculent, the flocculent
comprising a second organic polymer having
cationic groups, and wherein the flocculent
further comprises metal cation;
(b) flocculating at least a portion of the emulsified first
organic polymer onto at least a portion of the inorganic
fibers to provide a flocculated slurry;
(c) dewatering the flocculated slurry to provide a
dewatered slurry;
(d) further drying the dewatered slurry to form the
flexible mounting mat or insulation material suitable for
use in a pollution control device,
wherein the flexible mounting mat or insulation material
suitable for use in a pollution control device has a total organic
component weight of less than or equal to 9 percent of the total weight
of the inorganic fibers.
2. A method of forming a flexible mounting mat or insulation
material suitable for use in a pollution control device according
to claim 1, wherein the first organic polymer comprises anionic
groups.
Appeal Br. 8 (Claims App.) (emphasis added).
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REFERENCES
The Examiner relies upon the following prior art:
Name Reference Date
McReynolds US 4,225,383 Sept. 30, 1980
Howorth US 2004/0234436 Al Nov. 25, 2004
REJECTION
The Examiner maintains the following rejection: Claims 1–12, 15–17
and 53–59 are rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable
over Howorth in view of McReynolds. Final Action, dated April 4, 2017,
(“Final Act.”) 2–10.
DISCUSSION
The Examiner rejects claims 1–12, 15–17, and 53–59 as obvious over
Howorth in view of McReynolds. Id. The Examiner finds that Howorth
teaches an insulation mat for use with a pollution control device. Id. at 3.
The Examiner further finds that Howorth teaches to form a slurry
comprising “up to 90 weight percent of inorganic fibers on a dry weight of
the mat (para. 57) and 0.1–15 weight percent on a dry basis of a polymeric
binder such as latex.” Id. The Examiner additionally finds that “[t]he slurry
may also comprise ‘latex coagulants’ when latex is used as the polymeric
binder.” Id. The Examiner also finds that the coagulants2 are “added to the
slurry to flocculate the binder, causing it to form larger particles which get
trapped in the inorganic fiber matrix.” Id.

2 The Examiner finds that the term “coagulant” is synonymous with the term
“flocculent. Final Act. 3. This determination is not disputed.
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The Examiner concedes that Howorth does not teach a “flocculent
comprising a second organic polymer having cationic groups, and wherein
the flocculent further comprises a metal cation,” as required by claim 1. Id.
(emphasis omitted). The Examiner relies on McReynolds as teaching this
limitation. More specifically, the Examiner finds that McReynolds teaches
“a mixture of flocculents that is beneficial to coagulate a latex binder
because it [is] more efficient and produces less water sensitive products
compared to conventional flocculents.” Id. The Examiner finds that the
flocculent comprises “a second organic polymer having cationic groups (the
cationic latex disclosed in McReynolds, col. 5, lns. 59–68), and where the
flocculent further comprises a metal cation (the aluminum cation from the
aluminum sulfate used in the McReynolds flocculent, col. 5, lns. 59–68).”
Id. at 4–5 (emphasis omitted).
The Examiner determines that a person of ordinary skill in the art
would have combined the teachings of Howorth and McReynolds “in order
to improve efficiency and reduce production [of] water sensitive materials.”
Id. at 4. The Examiner further determines that use of the flocculents taught
by McReynolds is the mere substitution of one known element for another
and is therefore within the ambit of a skilled artisan. Id.
Appellant argues that the rejection is in error because a person of
ordinary skill in the art would not have had reason to combine the teachings
of Howorth and McReynolds. Appeal Brief mailed April 27, 2018 (“Appeal
Br.”) 5–7. Appellant advances several points in support of its argument.
First, Appellant argues that “the Examiner has provided no credible
reason why a person of ordinary skill in the art of Howorth . . . would even
look at the teachings of McReynolds.” Id. at 5; Reply Br. 2. Appellant
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asserts that the sheets of McReynolds have different uses and different
temperature tolerances than the materials of Howorth. Appeal Br. 5; Reply
Br. 2. This is not persuasive of error.
In the Final Action, the Examiner found that one of skill in the art
would have used a mixture of the flocculants taught by McReynolds with the
composition of Howorth “in order to improve efficiency and reduce
production [of] water sensitive materials.” Final Act. 4. Thus, the Examiner
has set forth a reasoned basis why one of skill in the art would have
combined the teachings of Howorth and McReynolds. Appellant has made
broad assertions regarding the uses and heat tolerances of the products of
Howorth and McReynolds. This is inadequate to show that one of skill in
the art of Howorth would not have looked to the specific teaching of
McReynolds regarding flocculants. Asserting that the sheets of McReynolds
have different uses than the materials of Howorth does not squarely address
the Examiner’s proposed basis for combination.
Appellant’s argument that the Examiner has provided no credible
reason why the ordinary artisan in Howorth’s field of making flexible
mounting mats or insulation material for pollution control devices would
look to the teachings of McReynolds is not persuasive. First, as we discuss
above, the Examiner has established that Howorth requires a coagulant and
McReynolds teaches coagulants for coagulating the same or similar latexes.
Second, Appellant’s questioning of McReynolds’s suggestion of use as
muffler paper is not supported. According to Appellant, “the highest
temperature McReynolds teaches his sheet material is subjected to is 350 °F
or 177 °C (see col. 23, line 65 to col. 24, line 1).” Appeal Br. 5. But the
portion of columns 23 and 24 Appellant cites is directed to test parameters
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for a hot tensile test, not to the maximum duty temperature of the end
product muffler paper. McReynold intends the highly filled paper to
substitute for asbestos-based fibrous sheets that had previously been used in
muffler paper. McReynolds col. 2, ll. 10–23. Thus, the evidence does not
support Appellant’s argument.
Second, Appellant argues that Howorth teaches to use alum as its
latex coagulant. Appeal Br. 5–6. Appellant asserts that “alum has been the
staple coagulant used in the art.” Id. at 6. Appellant, however, does not
provide evidentiary support for this assertion. Id. Appellant further
observes that McReynolds teaches to use alum, among other materials, as a
coagulant. Id. Appellant appears to argue that, as both cited references
teach the use of alum, one would not have reason to use other coagulants.
As above, this does not squarely address the Examiner’s stated reason to
combine and does not show error therein. Further, Howorth’s teachings to
use aluminum sulfate (¶¶111, 115) or alum (¶124) do not negate
McReynolds’ teachings regarding other coagulants (col. 5, l. 59 – col. 6, l.
9). See, e.g., In re Applied Materials, Inc., 692 F.3d 1289, 1298 (Fed. Cir.
2012) (“A reference must be considered for everything that it teaches, not
simply the described invention or a preferred embodiment.”).
Third, Appellant argues that McReynolds does not teach that there is
any benefit to using a mixture of the flocculents taught therein. Id. at 6–7;
Reply Br. 2. In the Final Action, the Examiner finds that, “in the
papermaking arts, McReynolds discloses that a mixture of flocculents . . . is
beneficial to coagulate a latex binder because it more efficient and produces
less water sensitive products compared to conventional flocculents.” Final
Act. 3 (citing McReynolds col. 5, ll. 59–68, col. 6, ll. 6–9). Appellant argues
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that McReynolds attributes the asserted benefit to the use of polymeric
flocculents rather than to use of a mixture of flocculents. Appeal Br. 6.
Given such understanding, Appellant argues that the Examiner “has failed to
provide any reasoning why a person of ordinary skill in the art of Howorth
would choose to replace his flocculent of choice, alum, with any mixture of
the McReynolds’ flocculents, let alone the particular mixture asserted by the
Examiner.” Id.
In the Answer, the Examiner determines that “McReynolds teaches
that a mixture of two or more coagulants such as cationic latex and
aluminum sulfate are useful for coagulating latex binder within an aqueous
solution . . . . The reference also teaches that polymeric flocculents are
especially beneficial because they improve efficiency.” Answer 14. The
portion of McReynolds relied upon by the Examiner provides as follows:
Representative flocculants are cationic starch; water-soluble,
inorganic salts such as alum, aluminum sulfate, calcium
chloride and magnesium chloride; an ionic latex having a charge
opposite in sign (+ or -) to that of the binder latex, e.g., a cationic
latex or an anionic latex; water-soluble, ionic, synthetic, organic
polymers such as polyethylenimine and various ionic
polyacrylamides such as carboxyl-containing polyacrylamides;
copolymers of acrylamide with dimethylaminoethyl
methacrylate or diallyldimethyl ammonium chloride;
polyacrylamides modified other than by copolymerization to
have ionic groups; and combinations of two or more of the
above, added simultaneously or in sequence. Quaternized
polyacrylamide derivatives are especially advantageous when
the latex which is used is anionic. Polymeric flocculants are
preferred because they are more efficient, tend to produce less
water-sensitive products and provide better shear stability of
the furnish.

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McReynolds col. 5, l. 58 – col. 6, l. 9 (emphasis added). Review of the
foregoing portion of McReynolds suggests that Appellant is correct that the
reference does not teach any particular benefit flowing from the use of a
mixture of flocculents (as opposed to a single flocculent). McReynolds
does, however, teach that one may use “combinations of two or more” of the
listed flocculents. Id. at col. 6, ll. 2–3.
Additionally, it is prima facie obvious to combine two compositions
so as to form a third composition for the same purpose.
It is prima facie obvious to combine two compositions each of
which is taught by the prior art to be useful for the same
purpose, in order to form a third composition which is to be
used for the very same purpose. . . . [T]he idea of combining
them flows logically from their having been individually taught
in the prior art.

In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980). Here, McReynolds
explicitly teaches to combine two or more listed flocculents for use as a
flocculent composition. The specifically listed flocculents include
aluminum sulfate and cationic latex. See Merck & Co. v. Biocraft Labs. Inc.,
874 F.2d 804, 807 (Fed. Cir. 1989) (“That the [reference] discloses a
multitude of effective combinations does not render any particular
formulation less obvious.”). Accordingly, the Examiner has set forth a
prima facie case of obviousness. Appellant has not shown reversible error in
the foregoing.
In its Reply Brief, Appellant additionally argues that a person of
ordinary skill in the art “would need significant assurances that a change to
the Howorth composition would not detrimentally affect the properties of
the finished material or the process used to make those materials.” Reply
Br. 3–4. Appellant further argues that “the Examiner has failed to provide a
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prima facie case that such a substitution would be expected to produce
predictable results.” Id. at 4. These arguments were not included in
Appellant’s opening brief, nor has Appellant shown good cause for such
omission. Accordingly, such arguments will not be considered. See 37 CFR
§ 41.41(b)(2) (providing that new argument will not be considered by the
Board absent a showing of good cause).

Claim 2
Appellant presents separate argument with respect to claim 2. Appeal
Br. 7. Claim 2 depends from claim 1 and further requires that “the first
organic polymer comprises anionic groups.” Id. at 8 (Claims App.).
In the Final Action, with respect to claim 1, the Examiner finds that
Howorth teaches forming a slurry by mixing certain components including
“an emulsified first organic polymer (the latex used as the polymeric binder,
para. 75).” Final Act. 4. The Examiner further finds, with respect to claim
2, that “McReynolds discloses that its flocculent should comprise cationic
latex when the binding latex has anionic groups. Therefore, it would have
been obvious for the latex used as Howorth’s binder to have anionic
groups.” Id. at 5 (internal citation omitted). In the Answer, the Examiner
finds that McReynolds teaches that when a latex binder is used, it should be
maintained by ionic stabilization so that it remains dispersed in the slurry
prior to addition of the flocculant. Answer 16 (citing McReynolds col. 3, ll.
34–37, col. 6, ll. 35–43).
Appellant argues that “Howorth does not teach the use of any anionic
polymeric binders.” Appeal Br. 7. Appellant further argues that “the
Examiner assumes the person skilled in the art of Howorth would use the
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organic binders of McReynolds. However, the Examiner provides no
support for this conclusion.” Id.
Appellant’s arguments are not persuasive. The Examiner relies on
McReynolds as teaching the selection of an ionic binder. Answer 16 (“when
a latex binder is used with a similar process, the latex binder should be
maintained within the aqueous solution by ionic stabilization”). This
maintains the binder in a dispersed state. Id. McReynolds further teaches
that the latex coagulant should have a charge which is opposite to that of the
latex binder. Id. (citing McReynolds col. 5, ll. 51–53). Thus, McReynolds
teaches using an anionic binder in conjunction with a cationic flocculant. As
we discussed above, a preponderance of the evidence supports the
Examiner’s finding of a suggestion to look to the teachings of McReynolds.
Considered as a whole, the teachings of the references support the
Examiner’s findings regarding the subject matter of claim 2. Accordingly,
Appellant has not shown error in this regard.

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CONCLUSION

The Examiner’s rejections are affirmed.
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–12, 15–17,
53–59
103(a) Howorth,
McReynolds
1–12, 15–17,
53–59

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED