Ex Parte Block et al

Board of Patent Appeals and Interferences

Dec 28, 2010

10159539 (B.P.A.I. Dec. 28, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte THOMAS L. BLOCK, LEE A. STAELGRAEVE,
JEFFREY A TILTON and PAUL W. POOLE
____________

Appeal 2009-005354
Application 10/159,539
Technology Center 1700
____________

Before EDWARD C. KIMLIN, ADRIENE LEPIANE HANLON, and
PETER F. KRATZ, Administrative Patent Judges.

KRATZ, Administrative Patent Judge.

DECISION ON APPEAL1

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 2009-005354
Application 10/159,539
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1-3, 5-12, 14-23, and 25. We have
jurisdiction pursuant to 35 U.S.C. § 6.
Appellants’ claimed invention is directed to acoustical and thermal
insulation or a hood, dash, firewall, or engine cover liner for a vehicle
comprising a nonlaminate polymer fiber-containing insulation layer that
includes a higher density non-laminate skin (such as a polymer fiber skin)
along at least one face of the insulation layer. In other words, a nonlaminate
insulation structure is claimed that comprises a nonlaminate insulation layer
including a nonlaminate higher density skin. According to the Specification,
the disclosed polymer-fiber, non-laminate acoustical and thermal insulating
layer can be employed to satisfy a need for a hood liner, dash liner, engine
cover liner, and/or firewall liner of a vehicle that does not delaminate (Spec.
2-3).
Claims 1 and 12 are illustrative and reproduced below:
1. An acoustic and thermal insulator for a vehicle, comprising:
a hood, dash, firewall or engine cover liner including a nonlaminate,
non-needled multidensity acoustical and thermal insulating layer of polymer
fiber selected from a group consisting of polyester, polypropylene,
polyethylene, rayon, nylon and any mixtures thereof, and also including a
nonlaminate skin of polymer fiber along at least one face of said acoustical
and thermal insulating layer, said nonlaminate skin having a higher density
than a remaining portion of said insulating layer.
12. A hood, dash, firewall or engine cover liner for a vehicle,
comprising:
a nonlaminate, imperforate acoustical and thermal insulating layer of
substantially 100% polyethylene terephthalate nonwoven fabric having a
relatively high density skin along at least one face thereof.
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The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Van Kerrebrouck 6,066,388 May 23, 2000
Swan 5,773,375 Jun. 30, 1998
Young 5,719,198 Feb. 17, 1998
Ahrweiler 5,456,872 Oct. 10, 1995
Chenoweth 4,888,235 Dec. 19, 1989
Grard 4,245,698 Jan. 20, 1981

The Examiner maintains the following grounds of rejection:
Claims 1-3, 5-12, 14-23, and 25 stand rejected under 35 U.S.C. § 112,
first paragraph as failing to comply with the written description requirement.
Claims 12, 14-16, and 18-23 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Van Kerrebrouck. Claims 1, 2, 5-7, 10, 11, and 25
stand rejected under 35 U.S.C. § 102(b) as being anticipated by or, in the
alternative, under 35 U.S.C. § 103(a) as being unpatentable over Van
Kerrebrouck. Claims 3, 8, 9, and 17 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Van Kerrebrouck in view of Chenoweth.
Claims 12, 14, 15, 18-23 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by JP 08-290503 (Oku).2 Claims 1, 2, 5-7, 10, 11, and 25
stand rejected under 35 U.S.C. § 102(b) as being anticipated by or, in the
alternative, under 35 U.S.C. § 103(a) as being unpatentable over Oku.
Claims 7 and 16 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Oku in view of Swan. Claims 3, 8, and 9 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Oku in view of
Chenoweth.

2 Our references to Oku in this Decision are to the English language
translation by The McElroy Translation Company, of record.
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Claims 1-3, 5, 10, 20-22, and 25 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Ahrweiler in view of Grard. Claims 1, 2,
5, 10, 20-22, and 25 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ahrweiler in view of Young.
As outlined below, we affirm-in part.
Written Description Rejection
The test for determining compliance with the written description
requirement of 35 U.S.C. § 112, first paragraph for later claimed subject
matter is whether the disclosure of the application as originally filed
reasonably conveys to the artisan that the inventor had possession at that
time of the filing of the later claimed subject matter, rather than the presence
or absence of literal support in the specification for the claim language. See
Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991) and In
re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983).
It is the Examiner's burden to establish a prima facie case of non-
patentability based on the written description requirement by presenting
evidence or reasons establishing why persons skilled in the art would not
recognize in the original disclosure a description of the invention defined by
the claims. In re Alton, 76 F.3d 1168, 1175 (Fed. Cir. 1996).
The Examiner maintains that the appealed claims run afoul of the
written description requirement of 35 U.S.C. § 112, first paragraph because
the original disclosure does not “teach or suggest a technical concept of
exclusion of the perforation and needling applied to the thermal insulation
layer; therefore, support for “non-needled” and “imperforate” is not fully
provided by the present invention (Ans. 3 and 4). In this regard, the
Examiner further asserts that “[a]ny claim containing a negative limitation
which does not have basis in the original disclosure should be rejected under
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35 U.S.C. § 112, first paragraph as failing to comply with the written
description requirement (Ans. 3). In support, the Examiner cites Ex parte
Grasselli, 231 USPQ 393 (Bd. App. 1983), aff’d mem., 738 F. 2d 453 (Fed.
Cir. 1984).
However, Grasselli does not provide a per se rule providing that the
addition of any negative limitation to a claim, which is not expressly set
forth in an application disclosure as originally filed, automatically violates
the written description requirement of the first paragraph of 35 U.S.C. § 112.
Compare Ex parte Parks, 30 USPQ2d 1234, 1236-37 (BPAI 1993).
The Examiner argues to the effect that the Specification lacks an
explicit disclosure of the negative limitations in question (Ans. 3). The
Examiner does not point to any persuasive factual evidence that
substantiates or otherwise satisfactorily explains why the described
embodiments in the Specification, which do not require a non-laminate
acoustical and thermal insulating layer that is perforated or formed by
needling, are deficient in descriptive support for the contested negative claim
limitations. In this regard, the Examiner has not established that the
Specification specifies a perforated or needled insulating and acoustical non-
laminate layer for a vehicle; much more persuasively explained how the
Specification, as filed, requires a perforated or needle punch formed
acoustical and insulating layer only. See Vas-Cath, 935 F.2d at 1562-63 (the
written description requirement is a factual question).
The Examiner does not reasonably articulate why an ordinarily skilled
artisan would fail to readily understand that a generically described
acoustical and insulating layer as provided for in the Specification, as filed,
reasonably conveys that Appellant was in possession of a layer that is not
perforated or not needled.
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It follows that the Examiner has not carried the burden of supplying a
sufficient factual basis to support a conclusion that the negative limitations
in question introduce new concepts into the present Application disclosure.
See In re Alton, 76 F.3d at 1175; see also In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992) (“the examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie case of
unpatentability”).
Accordingly, the Examiner’s lack of written description rejection is
reversed on this appeal record.

Rejections Utilizing Van Kerrebrouck
We reverse the anticipation and obviousness rejections relying on Van
Kerrebrouck as prior art.
Van Kerrebrouck discloses a nonwoven sandwich structure including
two outer fiber layers and at least one inner layer there between, each
composed of construction fibers and lower melting point binding fibers, the
outer fiber layers having a greater amount of binding fibers than the inner
layer (col. 2, ll. 44-49 and 65-67, col. 3, ll. 16-21, and col. 4, ll. 43-67; Fig.
1). The construction fibers of the outer layers are thinner than the
construction fibers of the inner layer (Van Kerrebrouck, col. 3, ll. 39-41).
Van Kerrebrouck teaches that outer regions of the sandwich structure are
densified by needling leaving a non-needled central zone, which non-
densified central zone preferably corresponds to the inner fiber layer (col. 2,
ll. 55-60, col. 5, ll. 30-34 and 64-67; Example 1). Van Kerrebrouck teaches
that the main binding of the sandwich structure takes place thermally via
melting of the binding fibers, not by needling (col. 5, l. 59- col. 6, l. 6).
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In maintaining the first stated anticipation rejection and second stated
anticipation or, in the alternative, obviousness rejection utilizing Van
Kerrebrouck as prior art evidence, the Examiner argues, inter alia, that “it is
clearly apparent that the nonwoven sheet is in the form of a nonlaminate
wherein the central portion is fused with and less dense than the portion of
the sheet closed to the sheet surface” (Ans. 4 and 5).
Appellant, on the other hand, urges that Van Kerrebrouck teaches a
nonwoven sandwich structure that is a laminate of multiple layers bonded
together via thermal binding using melted binding fibers (Br. 16 and 17).
The Examiner counters by contending that the needling of Van
Kerrebrouck forms a unitary structure via intermingling of the fibers of the
outer layers with the fiber of the inner layer as the needling extends into the
thickness of the inner layer whereas the thermal binding enhances binding of
the construction fibers and prevents thermal contraction (Ans. 17 and 18;
Van Kerrebrouck, col. 2, ll. 55-60, col. 7, ll. 53-56, col. 8, ll. 14, 15, 29, 30,
and 39-41).
Contrary to the Examiner’s exposition of a unitary needled structure
via intermingling of inner and outer layer fibers being described in Van
Kerrebrouck at column 8 of the Van Kerrebrouck Patent and more consistent
with Appellant’s argument, however, the portion of the Van Kerrebrouck
Patent as referred to by the Examiner relates to an Example 1 construction
that is described as using two needlers,“the needles, of which are of the
SINGER type (15x18x40x3.5 CB 15), adjusted to penetrate only into the
outer layers 3, 4 of the nonwoven 1, in particular the penetration of the
needles reaching a thickness of 10mm” (col. 8, ll. 25-30). Moreover, Van
Kerrebrouck makes it plain that a multilayer sandwich construction remains
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after the disclosed needling process and that the main binding is thermally
induced (col. 5, l. 59-col. 6, l. 4).
It follows that the Examiner has not persuasively established that Van
Kerrebrouck teaches a nonlaminate product as required by the claims
rejected in the Examiner’s first two presented prior art rejections relying on
Van Kerrebrouck. Nor does the Examiner explain how the additional
Chenoweth reference applied against dependent claims 3, 8, 9, and 15
remedies the aforementioned shortcoming in the Examiner’s rejection.
Consequently, we reverse the rejections based all or, in part, on the
teachings of Van Kerrebrouck as presented by the Examiner.

Rejections utilizing Ahrweiler
We reverse the obviousness rejections relying on Ahrweiler as prior
art.
Ahrweiler is directed to a rigid laminate material useful as a surface
covering and a method of manufacturing same reusing plastic trimmings
from textile fibers (Abstract; col. 1, ll. 34-53). The laminate is a multilayer
structure (Ahrweiler; col. 3, ll. 30-35).
Regarding the obviousness rejections over Ahrweiler in view of Grard
and Ahrweiler in view of Young, the Examiner argues that Ahrweiler
allegedly teaches a nonlaminate non-needled multi-density fibrous layer
nonwoven (Ans. 14-16).
Appellant correctly points out that Ahrweiler explicitly teaches a
laminate material, not a non-laminate (Br. 22-24).
The Examiner does not explain how either Grard or Young make up
for this deficiency in the teachings of Ahrweiler as relied on in the stated
rejections with respect to the claimed non-laminate.
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On this record, we reverse the rejections over Ahrweiler in view of
Grard and Ahrweiler in view of Young.

Rejections Utilizing Oku
Oku is directed to a sound absorbing and insulation material
comprising an integrated fiber assembly useful in an automobile, such as a
headliner material, and a method of manufacturing the material with a
continuous fiber density gradient layer using controlled needle punching (¶¶
0001, 0007, 0017, 0027, 0030, and 0033).
In the anticipation rejection of claims 12, 14, 15, 18 and 23 over Oku
(JP’ 903), the Examiner has found that:
JP '503 teaches a nonwoven web comprising a blend of
polyethylene terethphalate fibers (PET) A and a bicomponent
fibers B having a sheath of the copolymer of PET over a PET
core (paragraph no. 33). Likewise, the multidensity nonwoven
web contains substantially 100% PET fibers. The bottom layer
reads on Applicants' high density skin layer while the top layer
reads on Applicants' first facing layer. Additionally, JP'503
discloses the interior material comprising 4 to 20 layers with
the density of the individual layer continuously decreasing from
the bottom to the top (paragraph no. 17). The bottom layer and
top layer read on Applicants' first facing and second facing
while the layer adjacent to the bottom layer corresponds to
Applicant's skin layer. Since the multi-density non-woven web,
first facing and second facing are made from the same material,
it is the examiner's position that they must inherently have the
same color. JP'503 discloses the interior material is laminated
with a uniform density contribution fabric layer 2 (paragraph
no. 30 and figure 2). The fabric layer 2 reads on Applicants'
facing layer. The needling which is known in the non-woven
material art does not create any perforations extending through
the fibrous layer but rather allows the fibers entangled and
intermingled to each other to form a unitary structure of a
multi-density nonwoven web. Nowhere does JP'503 teaches
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[sic.] or suggests [sic.] any separate perforation steps after
needling; therefore; the nonwoven sheet is imperforate.
Ans. 9 and 10.
Appellant argues the rejected claims together as a group. Appellant’s
only argument with the anticipation rejection of claims 12, 14, 15, and 18-23
over Oku as presented by the Examiner is based on the imperforate
limitation of independent claims 12, 20, and 22 and the contention that the
punch needling employed by Oku results in a perforate insulation layer
rather than the imperforate insulation layer these rejected claims require.
Contrarily, the Examiner contends that the punch needling employed
by Oku results in fiber intermingling, not perforation (through hole)
production (Ans. 20).
Oku supports the Examiner’s position that the needle punching serves
to intermingle fibers (¶ 0007). Appellant does not support their argument
that Oku’s needle punching results in perforations (through holes) with any
specific citation to Oku or other evidence.
On this record, we affirm the Examiner’s anticipation rejection of
claims 12, 14, 15, and 18-23 over Oku.
We reach a different result with the Examiner’s separate anticipation
and alternative obviousness rejection of claims 1, 2, 5-7, 10, 11, and 25 over
Oku. This is because Appellant persuasively argues that Oku does not
provide for a non-needled layer as required by the nonlaminate, non-needled
multi-density acoustical and thermal insulating layer of independent claim 1
(Br. 21). In this regard, the Examiner’s contention that the claimed non-
needled limitation is a product-by-process limitation without distinction in
the product is undercut by the teachings of the relied upon Oku itself (Ans.
20). In this regard, Oku teaches that the disclosed needle punching results in
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intermingling of the fibers and a continuous graduated density gradient in
the automobile insulation material (¶¶ 0007, 0008, 0033 and 0035). The
four layers prepared by slicing in Oku (see, e.g., ¶¶ 0033-0035) refer to
slices obtained from a graduated density product, which slices (layers) are
used for testing of the non-sliced product density, not a non-needled
nonlaminate insulation product having a nonlaminate skin as claimed.
Under these circumstances, the Examiner has not reasonably
articulated how the product insulation layer of Oku can be considered
identical to or substantially the same as the claimed nonlaminate non-
needled multidensity acoustical and thermal insulation layer with a
nonlaminate skin having a higher density than the remaining portion.
Concerning the separate obviousness rejection of dependent claims 7
and 16 over Oku in view of Swan and the separate obviousness rejection of
claims 3, 8, and 9 over Oku in view of Chenoweth, we reverse the second
rejection of claims 3, 8, and 9 and the first rejection as it pertains to claim 9
because the Examiner does not articulate how Swan or Chenoweth make up
for the deficiency in the teachings of Oku as outlined above with respect to
the anticipation and alternative obviousness rejection of claim 1, from which
these rejected claims depend. However, we affirm the obviousness rejection
of claim 16 over Oku in view of Swan. Claim 16 depends from independent
claim 12 and does not require a non-needled insulation layer but rather an
imperforate layer. Appellant presents substantially the same arguments with
respect to dependent claim 16 that we found unpersuasive with respect to
independent claim 12 (Br. 22). Appellant does not argue the additional
limitation added by dependent claim 16.
It follows that on this record we shall also sustain the Examiner’s
rejection of claim 16.
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ORDER
The Examiner’s decision to reject claims 1-3, 5-12, 14-23, and 25
under 35 U.S.C. § 112, first paragraph as failing to comply with the written
description requirement is reversed.
The Examiner’s decision to reject claims 12, 14-16, and 18-23 under
35 U.S.C. § 102(b) as being anticipated by Van Kerrebrouck; to reject
claims 1, 2, 5-7, 10, 11, and 25 under 35 U.S.C. § 102(b) as being
anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as being
unpatentable over Van Kerrebrouck; and to reject claims 3, 8, 9, and 17
under 35 U.S.C. § 103(a) as being unpatentable over Van Kerrebrouck in
view of Chenoweth is reversed.
The Examiner’s decision to reject claims 1-3, 5, 10, 20-22, and 25
under 35 U.S.C. § 103(a) as being unpatentable over Ahrweiler in view of
Grard; and to reject claims 1, 2, 5, 10, 20-22, and 25 under 35 U.S.C. §
103(a) as being unpatentable over Ahrweiler in view of Young is reversed.
The Examiner’s decision to reject claims 1, 2, 5-7, 10, 11, and 25
under 35 U.S.C. § 102(b) as being anticipated by or, in the alternative, under
35 U.S.C. § 103(a) as being unpatentable over Oku; to reject claim 7 under
35 U.S.C. § 103(a) as being unpatentable over Oku in view of Swan; and to
reject claims 3, 8, and 9 under 35 U.S.C. § 103(a) as being unpatentable over
Oku in view of Chenoweth is reversed.
The Examiner’s decision to reject claims 12, 14, 15, 18-23 under 35
U.S.C. § 102(b) as being anticipated by JP 08-290503 (Oku) and to reject
claim 16 under 35 U.S.C. § 103(a) as being unpatentable over Oku in view
of Swan is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 CFR § 1.136(a).
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AFFIRMED-IN- PART

tc

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