Ex Parte Babbitt et al

Board of Patent Appeals and Interferences

Aug 30, 2010

10453731 (B.P.A.I. Aug. 30, 2010)

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.
10/453,731 06/03/2003 William M. Babbitt 25306A 1580
97072 7590 08/31/2010
MacMillan, Sobanski & Todd, LLC
One Maritime Plaza, Fifth Floor, 720 Water Street
Toledo, OH 43604
EXAMINER
CHAPMAN, JEANETTE E
ART UNIT PAPER NUMBER
3633
MAIL DATE DELIVERY MODE
08/31/2010 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WILLIAM M. BABBITT and WILLIARD W. PRICE
____________

Appeal 2009-004439
Application 10/453,731
Technology Center 3600
____________

Before STEVEN D.A. McCARTHY, MICHAEL W. O’NEILL, and
FRED A. SILVERBERG, Administrative Patent Judges.

O’NEILL, Administrative Patent Judge.

DECISION ON APPEAL1

STATEMENT OF THE CASE
William M. Babbitt and Willard W. Price (Appellants) appeal under
35 U.S.C. § 134 from the Examiner’s decision finally rejecting claims 2, 3,

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal No. 2009-004439
Application No. 10/453,731

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7-9, 12, 13, 15, 18, 24, 25, 27-29, 33, and 34-362 under 35 U.S.C. § 103(a)
as being unpatentable over Clements (US 2,864,324, issued Dec. 16, 1958)
in view of Bondra (US 3,958,385, issued May 25, 1976) and Berdan ’911
(US 6,042,911, issued Mar. 28, 2000) and claims 4-6, 10, 11, 14, 16, 17, 20,
22, 23, 26, and 30-32 under 35 U.S.C. § 103(a) as being unpatentable over
Clements in view of Bondra and Berdan, as applied to 3, 7, 9, 15, 27, 33, and
34, and further in view of Berdan ’133 (US 5,421,133, issued Jun. 6, 1995).
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
The Invention
The claims on appeal relate to flangeless insulation batt. Claim 15,
reproduced below, is illustrative of the subject matter on appeal.
15. A flangeless insulation batt, comprising:

(a) an elongated blanket of fibrous insulation material
having edges defining a width of a major surface of the
insulation blanket, wherein the width of the major surface is
within the range of from about 15-1/8 to about 15-3/8 inches;

(b) an elongated strip of facing material adhered to the
insulation blanket, wherein the facing material has a facing
width which is at least equal to the blanket width but no greater
than about 3% wider than the blanket width wherein the
insulation batt has a stiffness characterized by an angle
measurement that measures the amount of deflection of the
insulation product as the insulation product is draped over a
support located perpendicular to the longitudinal center axis of

2 A discrepancy exists between the Final Rejection and the Answer
concerning whether claims 35 and 36 are rejected as obvious over the prior
art of record. Compare Final Rejection at 2 and Ans. 3. This discrepancy
does not effect our disposition of the appeal as it stands before us. Further,
Appellants acknowledge claims 35 and 36 stand rejected. App. Br. 10.
Appeal No. 2009-004439
Application No. 10/453,731

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the insulation product, wherein the stiffness measurement is
within the range from about 15 degrees to about 35 degrees.

The Rejections
The Examiner posits that “the percentage of difference between the
insulation (blanket/facing) and the nominal width . . . has been considered a
matter of choice.” See Ans. 5 and 7.
Contentions
Appellants contend that the Examiner simply stating that “the
percentage of difference between the insulation (blanket/facing) and the
nominal width . . . has been considered a matter of choice” fails to
adequately address the limitation of the facing width being at least equal to
the blanket width but no greater than about 3% wider than the blanket width,
as called for in the claims. Reply Br. 2 and see also App. Br. 19, 24, 29, and
31. Appellants further contend that the Examiner’s reliance on Bondra is
misplaced since there is no disclosure within Bondra to support the finding
that Bondra teaches a relationship between the width of the facing and the
insulation, as called for in the claims, nor can the relative widths between the
facing and insulation be fairly deduced or inferred from Bondra’s side views
as shown in the Figures. App. Br. 13.

OPINION
Based on the Appellants’ arguments and the Examiner’s positions, the
determinative issue in this appeal is whether the Examiner has set forth a
prima facie case of obviousness.
We find that the Examiner’s explanation of the rejection consists of
nothing more than a series of essentially unconnected discussions of selected
Appeal No. 2009-004439
Application No. 10/453,731

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teachings of references followed by the Examiner simply stating, with
respect to those limitations not disclosed, taught, or suggested by the
references, as being a “matter of choice.” See Ans. 5 and 7. We further find
that the Examiner’s statements, alleging that what is disclosed in the
references is the same as what is claimed and thus “would function
identically to applicants[’] invention” (see Ans. 5), are essentially
conclusory statements of obviousness without any support within the
references or elaboration from the Examiner.
We identify one limitation in particular, within all of the claims on
appeal, which the Examiner fails to cogently address; however, this should
not be construed as concurring that the remaining alleged findings made by
the Examiner are supported either by the references themselves or by any
cogent explanation from the Examiner. As Appellants argue, throughout
both Briefs, the Examiner has failed to adequately address the claimed
feature of the facing material’s width being at least equal to but no greater
than about 3% wider than the blanket’s width. We agree. The Examiner
fails to articulate any cogent explanation of how a person of ordinary skill in
the art would readily find that this facing material has a width at least equal
to the blanket width but no greater than about 3% wider than the blanket
width, as called for in the claims, based upon the teachings of at least
Bondra, which discloses only sideviews in the figures of an insulation
blanket and, as stated by the Examiner, teaches using an adhesive to apply a
facing material onto a blanket.
In rejecting claims as unpatentable on the basis of obviousness, the
Examiner must provide “some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” KSR Int’l.
Appeal No. 2009-004439
Application No. 10/453,731

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Co. v. Teleflex, Inc., 550 US. 398, 418 (2007). Moreover, rejections based
on 35 U.S.C. § 103 must rest on a factual basis. In making such a rejection,
the Examiner has the initial duty of supplying the requisite factual basis and
may not, because of doubts that the invention is patentable, resort to
speculation, unfounded assumptions, or hindsight reconstruction to supply
deficiencies in the factual basis. See In re Warner, 379 F.2d 1011, 1017
(CCPA 1967). In this case, because of doubts that the invention is
patentable, the Examiner has resorted to faulty or unsubstantiated findings,
unfounded assumptions, hindsight reconstruction and conclusory statements
that certain limitations, which the Examiner could not expressly find within
the prior art, are merely “matters of choice.” This substitutes per se rules of
obviousness for apparent reasons underpinned by a careful consideration of
the facts.
Inasmuch as the Examiner failed to set forth a prima facie case of
obviousness, for the reasoning supra, we need not evaluate the Tedhams
Declaration.

CONCLUSION
The Examiner has failed to set forth a prima facie case of obviousness
for any of the claims on appeal.

DECISION
We REVERSE the Examiner’s decision to reject the claims as
obvious.

REVERSED
Appeal No. 2009-004439
Application No. 10/453,731

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