Ex Parte Babbitt et alDownload PDFBoard of Patent Appeals and InterferencesAug 30, 201010453731 (B.P.A.I. Aug. 30, 2010) Copy Citation 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 2 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 3 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 4 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 5 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 6 Klh MACMILLAN, SOBANSKI & TODD, LLC ONE MARITIME PLAZA, FIFTH FLOOR 720 WATER STREET TOLEDO, OHIO 43604 Copy with citationCopy as parenthetical citation