10385125 (B.P.A.I. May. 20, 2010)

Ex Parte Bascom et al

Board of Patent Appeals and InterferencesMay 20, 2010

10385125 (B.P.A.I. May. 20, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte RANDALL CLARK BASCOM, HAROLD MILES HENDRICKSON, RUSSELL DONOVAN ARTERBURN, CARLOS GILBERTO SANTIZO, and EMERY SIDNEY BARBER ____________ Appeal 2009-006315 Application 10/385,125 Technology Center 3700 ____________ Decided: May 20, 2010 ____________ Before: LINDA E. HORNER, WILLIAM F. PATE III, and FRED A. SILVERBERG, Administrative Patent Judges. HORNER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-006315 Application 10/385,125 2 STATEMENT OF THE CASE Randall Clark Bascom et al. (Appellants) seek our review under 35 U.S.C. § 134 of the Examiner’s decision rejecting claims 1, 2, and 6, which are all of the claims on appeal. Br. 2. Claims 3-5 and 34 have been withdrawn from consideration. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Appellants’ claimed invention is a system of chopping fiber, such as mineral fiber and synthetic fiber, at high speeds. Spec. 1:1-7. Claim 1, reproduced below, is representative of the subject matter on appeal. 1. A system of chopping fiber or strands of fiber comprising a chopper having a separator roll, a rotatable blade roll containing a plurality of blades, a rotatable back up roll, at least one blade being in contact with the back up roll, and a strand guide located at least two feet upstream of an upstream edge of said chopper to contain the strands running into said chopper and to keep said strands within a desired path as said strands enter said chopper, said path such as to prevent at least one of the strands from jumping out of the separator roll and running out of a nip between the back up roll and the blades of the blade roll when at least one of the strands break upstream of the strand guide, said strand guide having a bottom section and two generally vertical sections and an opening to allow a new strand to be placed into said strand guide. Appeal 2009-006315 Application 10/385,125 3 Appellants seek review of the Examiner’s rejection of claims 1, 2, and 6 under 35 U.S.C. § 103(a) as unpatentable over Arterburn (US 5,970,837) and McGill (US 3,717,060).1 The Examiner found Arterburn discloses all aspects of the invention of claims 1, 2, and 6, except for a strand guide located at least two feet upstream of the upstream edge of the chopper. Ans. 3. The Examiner found McGill teaches use of a strand guide (U-shaped member 11) for uniform feeding of tow2 10 to a cutter. Id. The Examiner concluded that it would have been obvious to modify the device of Arterburn by adding a strand guide as taught by McGill, to uniformly feed the fiber to the chopper. Id. The Examiner concluded that it would have been obvious to locate McGill’s strand guide at least two feet upstream of the upstream edge of the proposed combination because “it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art.” Ans. 3-4 (citing for support to In re Aller, 220 F.2d 454, 456 (CCPA 1955)). Appellants argue neither reference provides a reason for adding McGill’s strand guide to Arterburn’s cutting device, and that the Examiner relied on hindsight in reaching the conclusion of obviousness. Br. 4-8. 1 In the final Office action, the Examiner rejected claim 1 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Appellants filed an after-final amendment on July 7, 2004, seeking to delete the language from claim 1 that was the subject of this rejection. The Examiner entered the after-final amendment and withdrew the rejection. Ans. 2. 2 Though not defined in the reference, “tow” is commonly known as “a loose untwisted rope of textile filaments that is suitable for cutting into staple fiber.” Webster’s Unabridged Dictionary (1996) (“tow,” noun, definition 4). Appeal 2009-006315 Application 10/385,125 4 The issue before us is: Would the combined teachings of Arterburn and McGill have led a person of ordinary skill in the art to the system of chopping fiber of claim 1? Independent claim 1 is directed to a system of chopping fiber comprised of a chopper that includes a strand guide located at least two feet upstream of the upstream edge of the chopper. Arterburn discloses multi-chopper 22, an apparatus for cutting strands, particularly to cut glass fiber continuously at high speed. Arterburn, col. 1, ll. 10-15; col. 6, l. 48; fig. 2. Multi-chopper 22 is mounted in enclosure 24 and has a strand separator roll 35 adjacent each end 30, 30A. Arterburn, col. 6, ll. 48-55; figs. 2-4 (visible but not labeled in Figure 4). Alternatively, a single strand separator roll 35 is required if it is mounted to the floor or other structure near the chopper. Arterburn, col. 6, ll. 55-58; fig. 2. Arterburn does not disclose or discuss the problem of “stringers3,” and does not otherwise disclose the need for a strand guide. Arterburn, passim. McGill discloses an apparatus for cutting lengths from an advancing tow. McGill, col. 1, l. 11; figs. 1, 2. The single strand of tow 10 passes through a guide means, U-shaped guide member 11, and into opening 18 of the apparatus. McGill, col. 2, ll. 44-47, 65-67, figs. 1, 2. McGill does not disclose or discuss: the problem of “stringers,” the distance from U-shaped guide member 11 to the mouth of opening 18 of the apparatus, or the use of the U-shaped guide member 11 with multiple strands. McGill, passim. We disagree with the Examiner’s rationale that it would have been obvious to modify the device of Arterburn by adding a strand guide as taught 3 Stringers, as defined in Appellants’ Specification, are fibers that pass through a chopper with longer than the desired cut length. Spec. 2:1-4. Appeal 2009-006315 Application 10/385,125 5 by McGill to uniformly feed the fiber to the chopper. Ans. 3. While we agree with the Examiner’s finding that McGill discloses that U-shaped guide member 11 guides a single strand of tow 10 into a cutter (Ans. 3), such a finding does not support a conclusion that it would have been obvious to modify Arterburn’s apparatus to add a guide as taught by McGill. McGill does not disclose use of the U-shaped guide member 11 with multiple strand devices such as Arterburn, nor does McGill disclose the distance from the guide to the cutting apparatus. Further, Arterburn uses a strand separator (strand separator roll 35) and discloses no need for a guide. Additionally, neither reference discloses or discusses the problem of occasional stringers passing through the chopper. While the references need not solve the same problem that faced Appellants, absent knowledge of the stringer problem, we see no reason why a person of ordinary skill in the art would have modified Arterburn’s apparatus to include McGill’s strand guide. Thus, absent hindsight, we see no reason, and the Examiner has not adequately articulated a reason, why a person of ordinary skill in the art would have been led to modify Arterburn’s apparatus to add a strand guide at least two feet upstream from the upstream edge of the apparatus. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (citations omitted), cited with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[R]ejections 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.”). Appeal 2009-006315 Application 10/385,125 6 The combined teachings of Arterburn and McGill would not have led a person of ordinary skill in the art to the system of chopping fiber of claim 1. DECISION We REVERSE the Examiner’s decision to reject claims 1, 2, and 6. REVERSED nhl JOHNS MANVILLE 10100 WEST UTE AVENUE PO BOX 625005 LITTLETON CO 80162-5005