Ex Parte Babineau

Patent Trial and Appeal Board

Sep 17, 2012

11788188 (P.T.A.B. Sep. 17, 2012)

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.
11/788,188 04/19/2007 Francis John Babineau JR. 7590 5374
29602 7590 09/17/2012
JOHNS MANVILLE
10100 WEST UTE AVENUE
PO BOX 625005
LITTLETON, CO 80162-5005
EXAMINER
JAYNE, DARNELL M
ART UNIT PAPER NUMBER
3637
MAIL DATE DELIVERY MODE
09/17/2012 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte FRANCIS JOHN BABINEAU, JR.
____________

Appeal 2010-005750
Application 11/788,188
Technology Center 3600
____________

Before STEFAN STAICOVICI, JAMES P. CALVE, and
SCOTT A. DANIELS, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-005750
Application 11/788,188

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STATEMENT OF THE CASE
Francis John Babineau, Jr. (Appellant) appeals under 35 U.S.C. § 134
from the Examiner’s decision rejecting claims 1-13. We have jurisdiction
over this appeal under 35 U.S.C. § 6.

THE INVENTION
Appellant’s invention relates to an acoustic ceiling panel 14 for a
suspended ceiling structure including a front layer 26 facing a sound field, a
core 20, and a rear layer 28 facing a plenum 16. Spec. 3, ll. 3-8 and fig. 3.
Claim 8, is illustrative of the claimed invention and reads as follows:
8. An acoustic ceiling panel comprising a core
portion having front and rear sides and front and
rear layers disposed on the front and rear sides,
respectively; wherein the air flow resistance of the
core portion does not exceed about 100 MKS
rayls, the air flow resistance of the front layer is in
the range of about 300 to about 800 MKS rayls;
and the air flow resistance of the rear layer is in the
range of about 300 to about 1200 MKS rayls.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Naipawer US 2004/0076786 A1 Apr. 22, 2004
Ray US 2004/0180177 A1 Sep. 16, 2004
Weir US 2004/0219853 A1 Nov. 4, 2004
Thompson US 2004/0231914 A1 Nov. 25, 2004
Wendt US 2005/0211500 A1 Sep. 29, 2005

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Application 11/788,188

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The following rejections are before us for review:
The Examiner rejected claims 1, 2, and 5-7 under 35 U.S.C. § 103(a)
as unpatentable over Wendt, Thompson, and Weir.
The Examiner rejected claim 3 under 35 U.S.C. § 103(a) as
unpatentable over Wendt, Thompson, Weir, and Naipawer.
The Examiner rejected claim 4 under 35 U.S.C. § 103(a) as
unpatentable over Wendt, Thompson, Weir, Naipawer, and Ray.
The Examiner rejected claims 8, 9, 12, and 13 under 35 U.S.C. §
103(a) as unpatentable over Thompson and Weir.
The Examiner rejected claim 10 under 35 U.S.C. § 103(a) as
unpatentable over Thompson, Weir, and Naipawer.
The Examiner rejected claim 11 under 35 U.S.C. § 103(a) as
unpatentable over Thompson, Weir, Naipawer, and Ray.

SUMMARY OF DECISION
We REVERSE.

ANALYSIS
The obviousness rejections based upon Wendt, Thompson, and Weir
The Examiner found that Wendt discloses all the limitations of
independent claim 1 with the exception of the limitation that:
the air flow resistance of the core portion does not
exceed about 100 MKS rayls; the air flow
resistance of the front layer being in the range of
about 300 to about 800 MKS rayls; and the air
flow resistance of the rear layer in the range of
about 300 to about 1200 MKS rayls.
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Ans. 4. See also, App. Br., Clms. Appx.
The Examiner further found that Thompson discloses a three-layered
composite panel including a front layer 12 having an airflow resistance of
500-4000 mks Rayls, a core portion 18 having an airflow resistance that
does not exceed 100 mks Rayls, and a rear layer 24 having an airflow
resistance of at least about 100,000 mks Rayls. Ans. 5. See also,
Thompson, paras. [0021], [0024], [0027], and [0028]. Furthermore, the
Examiner found that Weir discloses a panel including a front layer 36 having
an airflow resistance of 300-800 mks Rayls, a core portion 34, and a rear
layer 35 having an airflow resistance of 300-1200 mks Rayls. Id. See also,
Weir, paras. [0038] and [0041]. The Examiner concluded that:
It would have been obvious to one of
ordinary skill in the art at the time the invention
was made to modify the ceiling structure of
WENDT ET AL. by replacing the ceiling panel
thereof with the panel of THOMPSON, JR. ET
AL. in order to improve the ceilings acoustics by
decreasing airflow resistance through the panel.
However, since the panel of THOMPSON, JR. ET
AL. was designed for use on vehicles which must
have higher airflow resistance to deal with ambient
noise than would the panel if used in housing
applications, it would have been obvious to one of
ordinary skill in the art at the time the invention
was made to replace the rear layer of the ceiling
structure resulting from the combination of
WENDT ET AL. in view of THOMPSON, JR. ET
AL. by the rear layer having a lower air flow
resistance of WEIR ET AL. in order to have a
panel which has optimized airflow resistance for
housing applications.
Ans. 5-6.
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Appellant argues that because “Wendt discloses a suspension ceiling
panel with enhanced sound deadening qualities . . . . there would be no
motivation or need to improve the sound deadening qualities of Wendt.” Br.
10.
In response, the Examiner opines that although Wendt may disclose a
ceiling panel with enhanced sound deadening qualities, it does not mean that
a person of ordinary skill in the art “would not be motivated to look to the
teachings of THOMPSON, JR. ET AL. to improve the sound deadening
qualities or other acoustical properties even more if he so chooses.” Ans.
16.
It is undisputed that Wendt fails to disclose a multi-layered panel
including a front layer, a core portion, and a rear layer, wherein each layer of
the panel has the specifically claimed airflow resistance range. Ans. 4; Br.
7. Thompson is directed to a sound absorptive multi-layered composite
panel, wherein each layer has a specific airflow resistance. Ans. 5; Br. 8.
Although Thompson discloses that it was known to make a multi-layered
acoustic panel, wherein each layer of the panel has a specific airflow
resistance, i.e., specific acoustic properties, we find the Examiner’s rejection
insufficient to explain what in the prior art would have prompted a person
having ordinary skill in the art to replace the acoustic panel in the ceiling
structure of Wendt with the acoustic panel of Thompson. The Examiner has
not provided any findings that either Wendt or Thompson recognized a
problem with the conventional acoustic panel in the ceiling structure of
Wendt. The reason proffered by the Examiner, i.e., “in order to improve the
ceiling acoustics,” appears to already be performed by the panel of Wendt,
which has “enhanced sound deadening qualities” and an optimum airflow
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Application 11/788,188

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resistance1 of 900 to 950 mks Rayls to “maximize sound absorption.”
Wendt, paras. [0004] and [0032]. See also, Br. 10. Moreover, Wendt
specifically discloses that if the panel’s “airflow resistance is too high, the
material reflects the sound wave as if it were a solid wall” and if it is too
low, “the sound wave freely travels through the material,” such that sound
attenuation is not optimum. Wendt, para. [0031]. Since Wendt’s panel
already has an optimum airflow resistance of 950 mks Rayls and
Thompson’s rear layer 24 is air-impermeable, that is, has an airflow
resistance of at least about 100,000 mks Rayls, it is not clear to us how the
Examiner’s proposed modification of Wendt’s ceiling structure with
Thompson’s panel will “improve the ceiling acoustics by decreasing airflow
resistance through the panel,” as the Examiner suggests. Emphasis added.
In contrast to the Examiner’s position, it appears to us that the airflow
resistance of the panel of Wendt as modified by Thompson will increase and
hence sound attenuation will not be optimum because the panel would
reflect the sound wave as if it were a wall. The Examiner has not provided
any evidence that replacing the panel in the ceiling structure of Wendt with
the acoustic panel of Thompson would decrease airflow resistance through
the panel, and hence would improve ceiling acoustics. See KSR Int'l Co. v.
Teleflex, Inc., 550 U.S. 398, 417 (2007). Without a persuasive articulated
rationale based on rational underpinning for modifying the reference as
proposed, the Examiner’s rejection appears to be the result of hindsight
analysis. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with

1 “Determination of [air] flow resistance is the main property in
describing the acoustical performance of any porous material.” Wendt, para.
[0032].
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approval in KSR, 550 U.S. at 418) (“rejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness”). Therefore, absent hindsight, we fail to
see why one having ordinary skill in the art would have been led to replace
the panel in the ceiling structure of Wendt with the acoustic panel of
Thompson, as the Examiner proposes.
The addition of Weir does not remedy the deficiencies of Wendt and
Thompson as described above. We further note that the reason proffered by
the Examiner to combine the teachings of Wendt, Thompson, and Weir, i.e.,
“in order to have a panel which has optimized airflow resistance for housing
applications,” appears to already be performed by the panel of Wendt which
is already designed for a ceiling structure, i.e., housing application, and has
an optimized airflow resistance, i.e., 900-950 mks Rayls. See Wendt, paras.
[0001] and [0032]. Thus, absent hindsight, we fail to see why one having
ordinary skill in the art would have been led to replace the rear layer in the
panel of Wendt and Thompson’s ceiling structure with Weir’s rear layer “in
order to have a panel which has optimized airflow resistance for housing
applications,” as the Examiner proposes. See Ans. 6.
Accordingly, for the foregoing reasons, we cannot sustain the
rejection of independent claim 1, and its dependent claims 2 and 5-7, under
35 U.S.C. § 103(a) as unpatentable over Wendt, Thompson, and Weir. See
In re Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988).
With respect to the rejections of claims 3 and 4 under 35 U.S.C.
§ 103(a), the addition of Naipawer and Ray does not remedy the deficiencies
of Wendt, Thompson, and Weir as described above. Thus, we likewise
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cannot sustain the rejection of claim 3 over the combined teachings of
Wendt, Thompson, Weir, and Naipawer and of claim 4 over the combined
teachings of Wendt, Thompson, Weir, Naipawer, and Ray.

The obviousness rejections based upon Thompson and Weir
The Examiner found that Thompson discloses all the limitations of
independent claim 8 with the exception of a rear layer having an airflow
resistance in the range of about 300-1200 mks Rayls. Ans. 11. The
Examiner further found that Weir discloses a panel including a front layer 36
having an airflow resistance of 300-800 mks Rayls, a core portion 34, and a
rear layer 35 having an airflow resistance of 300-1200 mks Rayls. Id. See
also, Weir, paras. [0038] and [0041]. The Examiner concluded that:
It would have been obvious to one of
ordinary skill in the art at the time the invention
was made to modify the panel of THOMPSON,
JR. ET AL. by making the air flow resistance of
the rear layer be in the range of about 300 to about
1200 MKS rayls as taught by WEIR ET AL. in
order to improve the ceilings acoustics by
optimizing airflow resistance through the panel for
housing applications.
Ans. 12.
Appellant argues that “it would not have been obvious to modify the
airflow resistance of the air-impermeable barrier layer of the composite of
Thomson in view of Weir” because “the proposed modification would
render Thompson unsatisfactory for its intended purpose” and thus, “would
change the principle of operation of Thompson.” Br. 15. We agree.
As noted above, Thompson discloses a three-layered composite panel
including air-impermeable rear layer 24 for preventing air flowing through
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the panel and having an airflow resistance of at least about 100,000 mks
Rayls. Ans. 5. See also, Thompson, paras. [0021], [0024], [0027], and
[0028]. Weir discloses a panel including a rear layer 35 having an airflow
resistance of 300-1200 mks Rayls. Id. See also, Weir, paras. [0038] and
[0041]. Thus, the acoustic panel of Thompson functions by having an air-
impermeable rear layer that prevents airflow through the panel, whereas in
contrast, the acoustic panel of Weir functions by having an air-permeable
rear layer that allows airflow through the panel. It is well settled that where
the proposed modification would render the prior art invention being
modified unsatisfactory for its intended purpose, the proposed modification
would not have been obvious. See Tec Air, Inc. v. Denso Mfg. Mich., Inc.,
192 F.3d 1353, 1360 (Fed. Cir. 1999); In re Gordon, 733 F.2d 900, 902
(Fed. Cir. 1984). "A reference may be said to teach away when a person of
ordinary skill, upon [examining] the reference, would be discouraged from
following the path set out in the reference, or would be led in a direction
divergent from the path that was taken by the applicant." In re Gurley, 27
F.3d 551, 553 (Fed. Cir. 1994).
Here, because the panel of Thompson includes an air-impermeable
rear layer for preventing air flowing through the panel, we find that the rear
layer of Thompson’s panel cannot be replaced with the air-permeable rear
layer of Weir, which would allow air flowing through the panel. The air-
impermeable rear layer of Thompson would have discouraged a person of
ordinary skill in the art from providing the air-permeable rear layer of Weir.
Accordingly, the modification proposed by the Examiner of providing the
air-permeable rear layer of Weir to Thompson’s panel would not have been
obvious to the person of ordinary skill in the art.
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Thus, for the foregoing reasons, we cannot sustain the rejection of
independent claim 8, and its dependent claims 9, 12, and 13, under 35
U.S.C. § 103(a) as unpatentable over Thompson and Weir.
With respect to the rejections of claims 10 and 11 under 35 U.S.C.
§ 103(a), the addition of Naipawer and Ray does not remedy the deficiencies
of Thompson and Weir as described above. Thus, we likewise cannot
sustain the rejection of claim 10 over the combined teachings of Thompson,
Weir, and Naipawer and of claim 11 over the combined teachings of
Thompson, Weir, Naipawer, and Ray.

SUMMARY
The decision of the Examiner to reject claims 1-13 is reversed.

REVERSED

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