Ex Parte Alavi

Patent Trial and Appeal Board

Feb 15, 2019

14334731 (P.T.A.B. Feb. 15, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/334,731 07/18/2014
29602 7590 02/20/2019
JOHNS MANVILLE
10100 WEST UTE A VENUE
PO BOX 625005
LITTLETON, CO 80162-5005
FIRST NAMED INVENTOR
Kiarash Alavi
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
8149CIP 4121
EXAMINER
QIAN, YUN
ART UNIT PAPER NUMBER
1732
NOTIFICATION DATE DELIVERY MODE
02/20/2019 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):
lavoie@jm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KIARASH ALA VI
Appeal2018-004655
Application 14/334,731
Technology Center 1700
Before KAREN M. HASTINGS, DONNA M. PRAISS, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 requests our review under 35 U.S.C. § 134 of the
Examiner's final decision rejecting claims 25-54 under 35 U.S.C. § 103(a)
as being unpatentable over at least the basic combination of Wang (Wang et
al., US PG Pub. No. 2007/0082187 Al, published Apr. 12, 2007) with
Jewell (Jewell et al., US Pat. No. 6,207,278 Bl, issued Mar. 27, 2001). 2 We
have jurisdiction over the appeal under 35 U.S.C. § 6(b ).
1 Appellant is the Applicant, Johns Manville Corporation, which is also
stated to be the Real Party in Interest (Appeal Br. 3).
2 The Examiner's rejections of dependent claims 32 and 35 (Final Action 9)
and of claims 45-54 (Final Action 10) each further includes Srinivasan
(Srinivasan et al., US PG Pub. No. 2007/0292618 Al, published Dec. 20,
Appeal2018-004655
Application 14/334, 731
We AFFIRM.
Claim 41 is illustrative of the subject matter on appeal ( emphasis
added to highlight key limitation in dispute):
41. A fiber-containing composite comprising:
woven or non-woven fibers; and
a cured binder formed from a binder composition
comprising: reducing sugar; and
a crosslinking agent comprising a reaction product of
urea and an glyoxal, wherein the cured binder is cured by
conveying an amalgam of the woven or non-woven fibers and
the binder composition through a curing oven operated at a
temperature ranging/ram 150°C to 350°C.
Independent claim 25 is similar to claim 41 but further recites the
mole ratio of the urea to the glyoxal (Claims Appendix Appeal Br. 13).
Independent claim 45 is also similar to claim 41 except it recites "glass
fibers" (Claims Appendix Appeal Br. 16).
Appellant's arguments focus on the limitation emphasized above
which is common to all three independent claims.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010) (precedential),
cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
2007). A discussion of this reference is not needed for disposition of this
appeal.
2
Appeal2018-004655
Application 14/334, 731
("[I]t has long been the Board's practice to require an applicant to identify
the alleged error in the examiner's rejections."). After considering the
evidence presented in this Appeal and each of Appellant's arguments, we are
not persuaded that Appellant identifies reversible error. Thus, we affirm the
Examiner's rejections for the reasons expressed in the Final Office Action
and the Answer. We add the following for emphasis.
The Examiner's determination that the claims are directed to products
and that the key limitation in dispute involves the process by which the
product(s) were made is not in dispute (generally Appeal Br.; Ans.).
Appellant's main argument for all the rejections made by the Examiner
focuses on Wang's teaching of curing its cellulosic product to a maximum of
less than 100°C in part to at least substantially prevent cellulose degradation,
versus the claimed recitation of curing at 150°C to 350°C as recited in claim
41 (as well as claims 24 and 45) (Appeal Br. generally). Appellant argues
the binder formed with urea and glyoxal and a reducing sugar is not the
same as in Wang (Appeal Br. 9). Appellant, however, does not dispute the
Examiner's determination of obviousness based on Jewell to include a
reducing sugar as exemplified in Jewell to the binder of Wang; rather,
Appellant argues the cured binder would still be different because of the
maximum of 100°C curing temperature taught in Wang for cellulose fibers
(Appeal Br. 9, 10). These arguments are not persuasive of error in the
Examiner's position.
It has been well established that, when a product recited in product-
by-process format reasonably appears to be the same as or obvious from a
product of the prior art, the burden is on applicant to show that the prior art
product is in fact different from the claimed product, even though the
3
Appeal2018-004655
Application 14/334, 731
products may be made by different processes. In re Thorpe, 777 F.2d 695,
697 (Fed. Cir. 1985).
Appellant does not sufficiently dispute that the applied prior art
establishes that a fiber-containing composite comprising a binder comprising
the recited components would have been within the creativity of one of
ordinary skill in the art (Appeal Br. 9). KSR Int 'l Co. v. Teleflex Inc., 550
U.S. 398, 416 (2007) ("when a patent claims a structure already known in
the prior art that is altered by the mere substitution of one element for
another known in the field, the combination must do more than yield a
predictable result"). The Examiner points out that Appellant has not
provided any evidence that the product including the binder of the
Wang/Jewell combination would not withstand a curing temperature of
150°C as claimed (Ans. 5, 6). Attorney's arguments in a brief cannot take
the place of evidence. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974).
Moreover, Jewell teaches cellulose fibers with a crosslinking agent of
glyoxal with a polyol (which may be dextrose, a reducing sugar) may be
cured at temperatures between 150°C and 171 °C (340°F) (Jewell col. 5, 11.
43--48, col. 6, Table 2; see also Jewell col. 2, 1. 22 to col. 3, 1. 5). This
further reinforces the Examiner's determination that the product that one of
ordinary skill and creativity would have made based on the applied prior art
combination, is structurally similar to the claimed product.
Accordingly, on this record, Appellant has failed to demonstrate that a
product made using the Wang/Jewell binder combination is any different
than the product made from Appellant's process as claimed. In re Thorpe,
777 F.2d at 697; cf In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990); In re
Best, 562 F.2d 1252, 1255 (Fed. Cir. 1977).
4
Appeal2018-004655
Application 14/334, 731
Appellant has not relied upon any further arguments to address any of
the dependent claims, or to address the Examiner's rejection of various other
claims, including independent claim 45, using Srinivasan in addition to
Wang and Jewell (Appeal Br. 10, 11). Thus, Appellant has not persuasively
presented facts or reasons to convince us that the Examiner failed to
establish a prima facie case of obviousness as to any of the claims on appeal.
Accordingly, we sustain the § 103 rejections of all of the claims on
appeal.
The decision of the Examiner is affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
5