Ex Parte Berrigan et al

Patent Trial and Appeal Board

Jan 31, 2017

12810859 (P.T.A.B. Jan. 31, 2017)

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.
12/810,859 06/28/2010 Michael R. Berrigan 62925US004 9640
32692 7590 02/02/2017
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
CHOI, PETER Y
ART UNIT PAPER NUMBER
1786
NOTIFICATION DATE DELIVERY MODE
02/02/2017 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):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL R. BERRIGAN and ERIC M. MOORE
Appeal 2016-000151
Application 12/810,8591
Technology Center 1700
Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
JAMES C. HOUSEL, Administrative Patent Judges.
PER CURIAM.
DECISION ON APPEAL
A. STATEMENT OF THE CASE
Appellants filed an appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 1, 4, 6, 8, 9, 11, 14, 17, 23, 25, 26, 28, and 29.2
We have jurisdiction under 35 U.S.C. § 6(b).3
We REVERSE.
1 According to Appellants, the real party in interest is 3M Company. Appeal Br. 3.
2 Claim 13 was cancelled in an amendment dated Jan. 5, 2015. The amendment
was entered in the Advisory Action dated Jan. 13, 2015. Claims 5, 30, 32, 45, 50,
and 58 have been withdrawn from consideration and are not before us on appeal.
3 Our decision refers to the Specification filed Apr. 19, 2013 (Spec.), Appellants’
Appeal Brief (Appeal Br.) filed Apr. 9, 2015, the Examiner’s Answer (Ans.)
mailed July 16, 2015, and Appellants’ Reply Brief (Reply Br.) filed Sept. 16, 2015.
Appeal 2016-000151
Application 12/810,859
The claims on appeal are directed to composite nonwoven fibrous webs (see,
e.g., claim 1). Appellants disclose that nonwoven fibrous webs have been used as
absorbent articles for surface cleaning, for gas and/or liquid absorption in filtration
media, and as barrier materials. Spec. p. 1,11. 16—18. Although fine fibers may be
desirable in some applications requiring high absorbency, fine fibers have a
tendency to collapse or crush during handling, which decreases porosity and the
surface area available for absorption and increases the pressure drop of a fluid
passing through the nonwoven article. Id. at p. 1,11. 18—25. In view of this,
Appellants disclose it is desirable to minimize degradation of or damage to
nonwoven fibrous webs, to provide liquid filtration articles having a high amount
of active absorbent and/or absorbent particulates without increasing a pressure
drop across the filtration articles, to provide particulate-loaded nonwoven fibrous
webs that effectively retain particulates within the fiber matrix, and to provide
liquid filtration articles having improved service life and filtration effectiveness.
Id. at p. 1,1. 30 to p. 2,1. 6.
Independent claim 1 is illustrative and is reproduced below from the Claims
Appendix of the Appeal Brief. The limitations at issue are italicized.
1. A composite nonwoven fibrous web comprising:
an embedded phase ofparticulates forming a substantially
continuous three-dimensional network of particulates, wherein all of
the particulates in the embedded phase collectively make-up a
population of particulates including all particulates in the nonwoven
fibrous web, wherein each individual particulate of the population of
particulates of the embedded phase is in surface to surface contact
with at least one other particulate of the population of particulates of
the embedded phase, further wherein each individual particulate of
the population ofparticulates of the embedded phase is inorganic, and
a matrix phase comprising a population of fibers forming a
three-dimensional network around the embedded phase, wherein the
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Appeal 2016-000151
Application 12/810,859
composite nonwoven fibrous web has a thickness and exhibits a
Solidity of less than 10%.
Appeal Br. 17.
The claims on appeal stand rejected as follows:
(1) claims 1, 4, 6, 9, 11, 14, 17, 23, 25, and 26 under 35 U.S.C. § 103(a)
as being unpatentable over Chhabra4 in view of Saaski5 and Marked;6
(2) claim 8 under 35 U.S.C. § 103(a) as unpatentable over Chhabra in
view of Saaski and Marked and further in view of Berrigan;7 and
(3) claims 28 and 29 under 35 U.S.C. § 103(a) as being unpatentable over
Chhabra in view of Saaski and Marked and further in view of Schultink;8
B. DISCUSSION
1. Rejection over Chhabra, Saaski, and Marked
Claims 1, 4, 6, 9, 11, 17, 23, 25, and 26 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Chhabra in view of Saaski and Marked. We
select claim 1 as representative for discussing the issues on appeal.
The Examiner finds Chhabra discloses particulates entrapped in nonwoven
webs of nanofibers. Ans. 3. The particulates may be superabsorbent polymers and
odor-controlling particulates, such as activated charcoal or active carbon, which
the Examiner finds to be inorganic. Id. The Examiner finds Chhabra does not
disclose that the particulates form a substantially continuous three-dimensional
4 Chhabra et al., US 2005/0266760 Al, published Dec. 1, 2005 (“Chhabra”).
5 Saaski et al., US 2003/0224932 Al, published Dec. 4, 2003 (“Saaski”).
6 Marked et al., US 5,328,758 A, issued July 12, 1994 (“Marked”).
7 Berrigan et al., US 2003/0216099 Al, published Nov. 20, 2003 (“Berrigan”).
8 Schultink et al., US 5,871,836 A, issued Feb. 16, 1999 (“Schultink”).
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Appeal 2016-000151
Application 12/810,859
network in which each individual particulate is in surface to surface contact with at
least one other particulate, as recited in claim 1. Id.
The Examiner finds Saaski discloses filtration media including granules of
agglomerated binder coated with active particles. Id. The active particles may be
activated carbon, which the Examiner previously found to be inorganic. Id. at 4.
Figure 4 of Saaski is reproduced below.
FIG. 4
Figure 4 depicts an embodiment of filtration media
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Application 12/810,859
Figure 4 depicts filtration media that has been compressed and reseparated
into granules 70. Saaski || 20 and 35. The granules 70 include active particles 76
adhering to a binder core 72 formed by binder that has been compressed into the
binder core 72. Id. 135. Citing Figure 4, the Examiner finds all of the active
particles 769 are in surface to surface contact with at least one other particle. Ans.
4. The Examiner concludes it would have been obvious to form the nonwoven
web of Chhabra with the granule structure of Saaski so activated carbon
particulates are bonded in surface to surface contact with at least one other
particulate, as disclosed by Saaski, and to provide the web with improved
properties. Id.
Appellants argue the language of claim 1 “makes absolutely clear that all of
the particulates in the embedded phase collectively make-up a population of
particulates including all particulates in the nonwoven fibrous web, and each
individual particulate of the population of particulates of the embedded phase is
inorganic.” Appeal Br. 11 (emphasis added). Appellants contend the
“comprising” language of claim 1 cannot be interpreted in a manner that
contradicts this (e.g., by interpreting the “comprising” language to permit organic
particulates). Id.
Appellants’ arguments are supported by the record. The language of claim 1
requires that “the particulates in the embedded phase collectively make-up a
population of particulates including all particulates in the nonwoven fibrous web”
(emphasis added). Although claim 1 uses “comprising” language, all particulates
9 Although the Examiner states the granules 70 are in surface to surface contact
with one another at page 4 of the Answer, we understand the Examiner’s position
to be that the active particles 76 of the granules 70 are in surface to surface contact,
based upon the Examiner’s findings and explanation at pages 10—11 and 13—14 of
the Answer.
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Application 12/810,859
in the nonwoven fibrous web are included in the particulates of the embedded
phase and these particulates must be inorganic.10 Thus, all particulates in the
nonwoven web must be inorganic. “A claim must be read in accordance with the
precepts of English grammar.” In re Hyatt, 708 F.2d 712, 714 (Fed. Cir. 1983).
Moreover, Appellants assert the Examiner has misconstrued the term
“particulate.” Id. Appellants’ Specification defines “particle” or “particulate” as
meaning “a small distinct piece or individual part of a material in finely divided
form.” Id. at 11—12 (citing Spec. p. 5,11. 22—25). A particulate may also be “a
collection of individual particles associated or clustered together in finely divided
form,” thus meaning particles “may clump, physically intermesh, electro-statically
associate, or otherwise associate to form particulates,” such as “in the form of
agglomerates of individual particles.” Id. at 12 (citing Spec. p. 5,11. 25—29).
Based on this definition, Appellants contend the active particles 76 and binder 72
of Saaski would be particulates and the granules 70 would also be particulates
because they are agglomerates of individual particles. Appeal. Br. 12. Because the
binder 72 is made of organic thermoplastic polymers and the granules 70 include
the binder 72, Appellants contend the binder 72 and the granules 70 are not
inorganic particulates as recited in claim 1. Id. at 12—13. Appellants assert
Chhabra and Marked* 11 do not remedy this deficiency in Saaski. Id. at 13.
During prosecution before the Examiner, the claim language should be given
its broadest reasonable meaning of the words in their ordinary usage as they would
10 The Examiner also concludes that the “particulates” of claim 1 are limited to
those having a median diameter of less than 1 micrometer in view of an election of
species set forth in a response dated August 13, 2012. Ans. 12. We do not agree
because claim 1 is generic to the species identified in the Office Action mailed July
13, 2012 (i.e., (i) particulates having a median diameter of at least one micrometer
and (ii) particulates having a median diameter of less than one micrometer).
11 The Examiner relies on Markell as teaching the claimed thickness. Ans. 5.
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Application 12/810,859
be understood by one of ordinary skill in the art, taking into account any
definitions or enlightenment contained in the written description of Appellants’
Specification. See In re Morris, 111 F.3d 1048, 1054 (Fed. Cir. 1997). Here, we
agree with Appellants that page 5, lines 22—29 of the Specification defines a
structure for the “particulates” of claim 1.
Turning to the structure of Saaski cited by the Examiner, we find Figure 4
includes two components meeting the structural definition of “particulate” set forth
in the Specification. First, there are the active particles 76. As shown in Figure 4
of Saaski, the active particles 76 are each a small distinct piece or individual part
of a material in finely divided form, as stated in the Specification, and can be made
of an inorganic material, such as activated carbon.12 Thus, the active particles 76
meet the requirements for “particulates” set forth in claim 1.
Granules 70 also meet the definition of “particulate” set forth in the
Specification because the granules 70 are agglomerates of individual particles (i.e.,
activated particles 76 and binder 72, which is in the form of compressed
particles13), as argued by Appellants. However, the granules 70 include the binder
72, which is a polymer.14 Saaski 137. Therefore, although the granules 70 of
Saaski meet the structural definition of “particulate” set forth in Appellants’
Specification, the granules 70 are not inorganic particulates, as required by claim 1.
12 Saaski 136.
13 Saaski abstract and Tflf 35, 38, 39.
14 The Examiner contends that binder 72 in Figure 4 of Sasski was not relied on in
the rejection. However, binder 72 enables the surface to surface contact of
particles 76, and in the process, forms agglomerates or particulates 70. In contrast
to binder 72, Appellants disclose that individual particles may, for example,
electro-statically associate to form the requisite surface to surface contact recited in
claim 1. Spec. 5,11. 25—27.
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Application 12/810,859
As a result, all of the particulates depicted in Figure 4 of Saaski are not inorganic
particulates as claimed. See Reply Br. 7.
For these reasons, we do not sustain the § 103(a) rejection of claim 1 over
the combination of Chhabra, Saaski, and Marked. Claims 4, 6, 9, 11, 17, 23, 25,
and 26 depend from claim 1. Therefore, we also do not sustain the § 103(a)
rejection of claims 4, 6, 9, 11, 17, 23, 25, and 26.
2. Rejections of claims 8, 28, and 29 under 35 U.S.C. $ 103(a)
The § 103(a) rejections of claims 8, 28, and 29 include Berrigan and
Schultink as additional references but include the same deficiencies as the § 103(a)
rejection of claim 1 over the combination of Chhabra, Saaski, and Marked.
Although the § 103(a) rejections for claims 8, 28, and 29 rely on additional prior
art references, the Examiner does not rely on these added references to remedy the
deficiencies in the rejection of claim 1 over the combination of Chhabra, Saaski,
and Marked. Therefore, we do not sustain the § 103(a) rejections of claims 8, 28,
and 29.
C. DECISION
The decision of the Examiner is reversed.
REVERSED
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