Ex Parte Ansley et al

Patent Trial and Appeal Board

Mar 27, 2018

13866377 (P.T.A.B. Mar. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/866,377 04/19/2013
6980 7590 03/29/2018
TROUTMANSANDERSLLP
600 PEACHTREE ST NE STE 3000
ATLANTA, GA 30308-2219
FIRST NAMED INVENTOR
Brandon P. Ansley
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.
PCil 7788
EXAMINER
PEEBLES, KATHERINE
ART UNIT PAPER NUMBER
1617
NOTIFICATION DATE DELIVERY MODE
03/29/2018 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):
j im. schutz@troutmansanders.com
ryan. schneider@troutmansanders.com
patents@troutmansanders.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRANDON P. ANSLEY, WILLIAM N. TURK,
JOHN A. MANCIN IV, and JOHN D. ELLIOT 1
Appeal2017-003951
Application 13/866,377
Technology Center 1600
Before FRANCISCO C. PRATS, JOHN G. NEW, and
RYAN H. FLAX, Administrative Patent Judges.
NEW, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants identify Pest Control Insulation, LLC as the real party-in-
interest. App. Br. 3.
Appeal2017-003951
Application 13/866,377
SUMMARY
Appellants file this appeal under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 1, 2, 4--8, and 28-32. Specifically,
claims 1, 2, 4--8, 28, 31, and 32 stand rejected as unpatentable under
35 U.S.C. § 103(a) as being obvious over the combination of over Church et
al. (US 7,449,125 B2, November 11, 2008) ("Church"), Killingsworth (US
6,113,990; September 5, 2000) ("Killingsworth"), and Burba et al. (US
2008/0156734 Al, July 3, 2008) ("Burba").
Claim 29 stands rejected as unpatentable under 35 U.S.C. § 103(a) as
being obvious over the combination of over Church, Killingsworth, Burba,
and Nickell et al. (US 6,370,834 Bl, April 16, 2002) ("Nickell").
Claim 30 stands rejected as unpatentable under 35 U.S.C. § 103(a) as
being obvious over the combination of over Church, Killingsworth, Burba,
and DeAngelis et al. (US 5,973,008, October 26, 1999) ("DeAngelis").
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
NATURE OF THE CLAIMED INVENTION
Appellants' invention is directed to a system including fiberglass
insulation that is treated with a pesticide. Abstract.
REPRESENTATIVE CLAIM
Claim 1 is representative of the claims on appeal and recites:
1. A system comprising:
an insulation product comprising a plurality of glass fibers and
providing insulation for a predetermined portion of a structure; and
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Application 13/866,377
a pesticide adhered to the insulation product such that the
pesticide is bioavailable;
wherein the system provides pest control at least for the
predetermined portion of the structure, and
wherein the pesticide is partially embedded in the glass fibers
such that the pesticide is bioavailable in a dry state on at least an
external portion of the glass fibers and mechanically detachable from
the external portion of the glass fibers in the dry state.
App. Br. 13.
ISSUES AND ANALYSIS
We agree with, and adopt, the Examiner's findings of fact and
conclusions that the appealed claims are directed to nonstatutory subject
matter. We address the arguments raised by Appellants below.
Issue 1
Appellants argue the Examiner erred in finding that the combined
cited prior art references teach or suggest the limitation of claim 1 reciting:
"partially embedding pesticide in glass fibers." App. Br. 8.
Analysis
The Examiner finds, in relevant part, that Burba teaches that particles
may be adhered to spun glass fibers by coating the glass fibers with the
particles while the glass is in a molten or partially molten state. Final Act. 5
(citing Burba i-f 44 ). The Examiner finds that applying this method to adhere
boric acid to fiberglass would result in a pesticide, such as boric acid (as
taught by Killingsworth), being partially embedded in the glass fibers. Id. at
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Application 13/866,377
5-6. The Examiner finds that an artisan of ordinary skill would have been
able to optimize boric acid particle adherence to the glass fiber by
controlling the degree of melting of the glass fibers prior to boric acid
application. Id. at 6.
Appellants argue that Burba teaches an apparatus that is "used to
safely remove and dispose of arsenic from high volume aqueous streams and
solutions." App. Br. 8 (citing Burba i-f 6). According to Appellants, Burba
teaches that "particulates of an insoluble rare earth-containing compound,"
such as cerium, lanthanum, or praseodymium, can be adhered to spun-glass
fibers "while the glass is in a molten or partially molten state or with the use
of adhesives." Id. at 8, 9 (quoting Burba i-f 44). However, Appellants assert,
Burba neither teaches nor suggests:
a pesticide adhered to the insulation product such that the
pesticide is bioavailable . . . wherein the pesticide is partially
embedded in the glass fibers such that the pesticide is
bioavailable in a dry state on at least an external portion of the
glass fibers and mechanically detachable from the external
portion of the glass fibers in the dry state,
as recited in claim 1. Id. Specifically, Appellants argue, Burba does not
teach a pesticide adhered to glass fibers, nor does it provide any teaching or
suggestion of how a pesticide would be adhered to glass fibers, let alone
adhered to glass fibers such that the pesticide is "partially embedded in the
glass fibers," such that the pesticide is bioavailable, as required by claim 1.
Id. at 8-9.
We do not find Appellants' arguments persuasive. Appellants cannot
demonstrate non-obviousness by attacking references individually where the
rejections are based on combinations of references. In re Keller, 642 F.2d
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Application 13/866,377
413, 426 (C.C.P.A. 1981). Church teaches insulation intended for the same
use claimed by Appellants consisting of fiberglass fibers and cellulose.
Church col. 1, 11. 4---6. Killingsworth teaches that cellulose-based insulation
may be coated with boric acid, which is known in the art as a pesticide and
fire retardant. Killingsworth col. 3, 11. 7-12, 46-50.
Burba teaches that particles of rare-earth compounds can be adhered
onto spun glass fibers to serve as arsenic-removing compounds in a
filtration-type apparatus. Burba i-fi-16-11. Furthermore, Burba teaches that
its particles can be adhered to the glass fibers "while the glass is in a molten
or partially molten state or with the use of adhesives." Id. i1 44. Contrary to
Appellants assertion, the particles of Burba would necessarily have to be
partially embedded in the glass fibers to properly form their function of
binding to, and removing arsenic, from the water filtrate.
We therefore agree with the Examiner's conclusion that it would have
been obvious to a person of ordinary skill in the art to apply the specific
method of adhering particulate pesticides to glass fibers taught by Burba to
the pesticide-coated glass fiber and cellulose insulation taught by the
combination of Church and Killingsworth. We find that a skilled artisan
would have had a reasonable expectation of success in doing so, because
Burba explicitly teaches that its rare-earth particles can be partially
embedded in glass fibers and still perform their function of binding to, and
removing, arsenic from a water filtrate.
Issue 2
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Appellants argue the Examiner erred because secondary
considerations of non-obviousness of record are sufficient to overcome the
Examiner's primafacie conclusion that the claims are obvious. App. Br. 10.
Analysis
In support of their contention that secondary considerations overcome
the Examiner's primafacie conclusion of obviousness Appellants submit the
Declaration of William Turk, an Appellant and co-inventor of the claimed
invention. App. Br. 10 (citing Declaration of William Turk (the "Turk
Declaration"); see i-fi-12-3).
Appellants contend that the Turk Declaration supports their argument
that the claimed invention fills a long-felt need in the insulation market.
App. Br. 11. Specifically, argue Appellants, while there are and have been
many types of insulation on the market, there was no fiberglass insulation in
which the "pesticide [is] adhered to [an] insulation product such that the
pesticide is bioavailable; ... and wherein the pesticide is partially embedded
in the glass fibers such that the pesticide is bioavailable in a dry state on at
least an external portion of the glass fibers and mechanically detachable
from the external portion of the glass fibers in the dry state," as recited in
Claim 1. Id. Appellants assert that this limitation of the claim represents a
crucial feature in developing an effective insulation for pest treatment, as it
is extremely difficult to apply the pesticide in the uniform surface treatment
necessary to be effective. Id.
Appellants therefore contend that there has been a long-felt need in
the industry to develop an insulation product with bioavailable pesticide on
glass fibers, and there is a noted absence of such products in the market.
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App. Br. 11. Appellants note that such a product would have broad
commercial appeal, and allow an entire living space and crawlspace to be
protected with pest treatment, rather than limiting such pest treatment to the
attic of a home, as is opined in the Turk Declaration. Id. Appellants further
argue that there have been unsuccessful attempts by industry competitors to
develop an insulation product with bio-available pesticide on glass fibers, as
also asserted in the Turk Declaration. Id. According to Appellants, the
competitors have found it extremely challenging to achieve a uniform
adhesion of pesticide (noted as being of "key importance") as required for
effective treatment. Id. As evidence of this need, Appellants point to
Exhibits A and B of the Turk Declaration. Id.
We have reviewed the Turk Declaration and its associated exhibits,
and although we accord the evidence and opinions presented therein due
probative weight, we are not persuaded that the weight of this evidence on
secondary considerations of non-obviousness is sufficient to overcome the
Examiner's primafacie conclusion of obviousness.
As an initial matter, Mr. Turk opines that: "a person of skill in the art
would not find it obvious to provide an insulation product with pesticide
adhered to the insulation product such that the pesticide is bioavailable on
glass fibers, as recited in the claims of the Application." Turk Deel. i-f 8.
Whether a claim is obvious over the prior art is a question of law based on
underlying factual findings. PAR Pharm., Inc. v. TWI Pharms., Inc., 773
F.3d 1186, 1193 (Fed. Cir. 2014). Mr. Turk does not attest to having
received any legal training or guidance that would lend credence to his
otherwise bare legal assertion that the claims are nonobviousness, and we
therefore credit his assertion to that effect with no probative weight.
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Mr. Turk also points to Exhibits A and B as demonstrating:
"unsuccessful attempts by industry competitors to develop an insulation
product with bio-available pesticide on glass fibers." 2 Turk Deel. i-f 10. Mr.
Turk points first to Exhibit A, which is a letter from the Associate General
Counsel and Director of Governmental and Regulatory Affairs for Johns
Manville, a manufacturer of glass fiber insulation. Id. i-f I la. Mr. Turk
declares that Exhibit A remarks upon the difficulty that Johns Manville has
encountered and lack of success in attempting to develop a dry bio-available
pesticide for application to fiberglass, and notes the stark difference in
working with cellulose fibers and inorganic glass fibers. Id.
Turning next to Exhibit B, a letter from the Technical Manager for the
Quality Borate Company ("QBC"), Mr. Turk declares that the letter
describes the difficulty encountered in successfully adhering pesticide to
certain materials, particularly because a surface treatment for certain
pesticides (e.g., boric acid) must be uniform to be effective, and notes that
the demand for an effective pesticide loaded fiberglass insulation would be
significant. Turk Deel. i-f 11 b. Mr. Turk declares that Exhibit B states that
QBC has attempted to place a water soluble pesticide on a screen surface
2 We note that this opinion of Mr. Turk, as well as the related contents of
Exhibits A and B, appear to be directed more to a "failure of others,"
which, the Federal Circuit has cautioned us, is closely related to, but
distinct from a "longfelt need" in the industry. See, e.g., In re
Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig.,
676 F.3d 1063, 1081-83 (Fed. Cir. 2012). Nevertheless, we consider both
of these secondary considerations in the context of whether they are
together sufficient to overcome the Examiner's prima facie conclusion of
obviousness.
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with fiberglass, but has been unsuccessful in achieving a uniform adhesion
for an effective use of the pesticide. Id.
Consequently, Mr. Turk attests, the Exhibits establish that there has
been a long-felt need in the industry to develop an insulation product with
bio-available pesticide on glass fibers, and that others (including Johns
Manville and QBC) have failed to develop such a product. Turk Deel. i-f 12.
We assign substantial probative weight to the Turk Declaration and
the contents of Exhibits A and B, but we do not find the evidence of a long-
felt need or the failure of others provided by these is sufficient to overcome
the Examiner's primafacie conclusion of obviousness over the combined
teachings and suggestions of the cited prior art. As an initial matter, we note
that both Johns Manville and QBC, as well as Mr. Turk, the co-inventor, are
interested parties. Johns Manville has entered into a "Memorandum of
Understanding ... with Pest Control Insulation, LLC [the real party-in-
interest in the instant appeal] ... the purpose of which was to look into
development of a dry bio-available pesticide that would be applied to and
separable from newly formed glass fibers." Ex. A. Similarly, QBC admits
that "[Pest Control Insulation, LLC] is a customer of QBC," purchasing the
pesticide boric acid. Ex. B. Although we do not question the veracity of the
statements made in the Exhibits, we think the fact that they are commercially
interested parties is relevant to our analysis of the probative value of the
Exhibits.
Furthermore, although both Johns Manville and QBC state generally
that they have not been successful in adhering pesticides to glass fibers and
opine that there would be a significant market demand for such a product,
neither Exhibit states that they had ever attempted to apply the method of
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Burba, which was published in the prior art before Appellants' application
was filed and which teaches, in fact, the very method used by Appellants to
manufacture their claimed system. See Spec. 4 ("In some embodiments, the
methods can further comprise heating the plurality of glass fibers until the
plurality of glass fibers are at least partially molten prior to applying the
pesticide to partially embed the pesticide in the glass fibers"); compare with
Burba i-f 44 ("[E]xtruded or spun glass fibers may be coated with particles of
the insoluble rare earth-containing compound while the glass is in a molten
or partially molten state").
Therefore, although both Exhibits A and B of the Turk Declaration
state that they generally, if unsuccessfully attempted to adhere pesticides to
glass fibers, it is our view that the method expressly taught by Burba as a
method for embedding water-soluble particles in glass fibers was available
in the prior art, would have led a person of ordinary skill in the art to realize
that such a method could have been employed for to achieve that end with a
reasonable expectation of success.
Appellants have presented some credible evidence of secondary
considerations of nonobviousness indicating both a perceived need in the
market and unsuccessful attempts by others. However, secondary
considerations do not automatically control our ultimate conclusion. See
Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1372 (Fed. Cir. 2007) ("Although
secondary considerations must be taken into account, they do not necessarily
control the obviousness conclusion"). In this instance, we determine that,
for the reasons explained above, and balancing the secondary considerations
proffered by Appellants against the teachings of the prior art, the balance of
evidence is in favor of the conclusion of obviousness over the prior art and,
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especially, the cited teachings of Burba. Although QBC and Johns Manville
may not have attempted the method taught by Burba, those teachings were
available as part of the prior art and, ultimately, the standard for
obviousness, to which we must adhere, is what the teachings of the prior art
would have taught or suggested to a person of ordinary skill. See In re
Keller, 642 F.2d at 425. We consequently affirm the Examiner's rejection of
claim 1. Furthermore, because Appellants advance substantially the same
arguments with respect to the remaining claims on appeal, we similarly
affirm those claims. See App. Br. 9--10.
DECISION
The Examiner's rejection of claims 1, 2, 4--8, and 28-32 as
unpatentable under 35 U.S.C. § 103(a) is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l ).
AFFIRMED
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