Ex Parte Borchardt et al

Patent Trial and Appeal Board

May 9, 2018

12285082 (P.T.A.B. May. 9, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/285,082 09/29/2008 Steven Borchardt
23413 7590 05/11/2018
CANTOR COLBURN LLP
20 Church Street
22nd Floor
Hartford, CT 06103
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
L020001US2 4492
EXAMINER
STEELE, JENNIFER A
ART UNIT PAPER NUMBER
1789
NOTIFICATION DATE DELIVERY MODE
05/11/2018 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):
usptopatentmail@cantorcolbum.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE
THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN BORCHARDT 1
and Brian Jarrard
Appeal2017-003654
Application 12/285,082
Technology Center 1700
Before MARK NAGUMO, DONNA M. PRAISS, and MONTE T. SQUIRE,
Administrative Patent Judges.
NAGUMO, Administrative Patent Judge.
DECISION ON APPEAL
Steven Borchardt and Brian Jarrard ("Borchardt") timely appeal
under 35 U.S.C. § 134(a) from the Final Rejection2 of claims 1-8 and 12-
19. 3 We have jurisdiction. 35 U.S.C. § 6. We reverse.
1 The real party in interest is identified as Lydall, Inc. (Appeal Brief,
filed 23 November 2015 ("Br."), 2.)
2 Office Action mailed 29 July 2015 ("Final Rejection"; cited as "FR").
3 Remaining copending claims 9-11 have been withdrawn from
consideration by the Examiner (FR 1, § 5a), and are not before us.
Appeal2017-003654
Application 12/285,082
A. Introduction4
OPINION
The subject matter on appeal relates to acoustically insulating molded
and shaped vehicle panels, especially wheel well shields. (Spec. 1 [0002].)
According to the '082 Specification, wheel well shields present an especially
difficult problem in the art because they "must not only prevent substantial
egress of splashed water from the road into the underbody or engine
compartment, but in order to be fully satisfactory must abate road noises
occasioned by debris being spun by the tires into the wheel well."
(Id. at 2 [0003].) According to the Specification, a traditional solution was
to use stamped steel, but steel is heavy, and has high stiffness and low
damping properties that lead to unwanted noise. (Id. at [0004].) Prior art
panels based on various plastics and fibrous materials have been proposed,
but improvements, including low cost (id. at 6 [0013]), acoustically active,
and self-supporting panels that provide water-splash and road hazard
protection (id. at 6 [0014]) are still sought.
Borchardt seeks patent protection for such a panel, illustrated in
Figure 1 of the Specification, which can be made from a simply-made dry-
laid and needled nonwoven composite, an embodiment of which is
illustrated in Figure 3, via the process illustrated in Figure 5. Figures 1, 3,
and 5 are reproduced on the following page.
4 Application 12/285,082, Molded and shaped acoustical insulating vehicle
panel and method of making the same, filed 29 September 2008, claiming
the benefit of 60/960,402, filed 28 September 2007. We refer to the
"'082 Specification," which we cite as "Spec."
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Application 12/285,082
{Figure 1
11
{Fig. 1: side cross-sectional
view of a finished panel 505}
Figure 3}
f 11 f 10
~~\~~~~~
12
{Fig. 3: side cross sectional view of
dry-laid and needled composite 10}
As shown in Figure 1, vehicle panel 50 comprises a continuous, semi-
impervious, densified skin layer 51 (Spec. 16 [0037]) with top surface 12
that covers an insulating thickness 53 (id. at 19 [0044]) having a lower
surface 11. An attachment area 57 has a thickness that is about 0.3 to 0.7
times the insulating thickness 53. (Id.)
Vehicle panel 50 is prepared from dry-laid and needled composite 10,
shown in Figure 3, which comprises layer 1 and layer 2. Layer 1 comprises
a first portion of greater than 60 to 80 percent meltable binder fibers and less
than 40 percent to 20 percent staple fibers. Layer 2 comprises a second
portion of about 20 to 50 percent meltable binder fibers and 50 to 80 percent
staple fibers. Layers 1 and 2 are prepared from independent layers 5 and 6,
as illustrated in Figure 5, below.
~
41
7
{Fig. 5 illustrates the process of making insulating panels 41}
5 Throughout this Opinion, for clarity, labels to elements are presented in
bold font, regardless of their presentation in the original document.
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Application 12/285,082
Independent layers 5 and 6 are produced by cards 30 and 31, respectively.
Layers 5 and 6 are combined to form composite 34 by rollers 33. Next,
fibers of layer 1 are integrally entangled with fibers of layer 2 in needling
station 35. The Specification explains that "higher needling produces more
fiber entanglement within and between layers, which leads to greater
entangled strength and greater thermal bonding by the meltable fibers."
(Id. at 14--15 [0035].) In some embodiments, layer 1 is needled more
densely than layer 2, such that there is a density gradient from high density
at surface 12 to low density at surface 11. (Id. at 13 [0032].) Needled
composite 36 is cut to length and transferred to oven 37 (id. at 25 [0060]),
where it is heated sufficiently to soften or melt the meltable fibers "so that
they may resolidify, upon cooling, into the continuous, semi-impervious,
densified skin 51." (Id. at 16 [0037].)
The Specification teaches that it is important that the heated
composite be molded in a cool mold 39 to "cause the melted and/or softened
fibers to coalesce into a skin rather rapidly ... [to] prevent total lateral flow
of the melted fibrous material, which would result, undesirably, in a skin that
is not semi-impervious." (Id.) The Specification describes the term "semi-
impervious" in the following words:
This combination of resolidified binder fibers and staple
fibers results in a semi-impervious (to water) portion such
that the skin will allow splashed water in the molded panel to
drain from or evaporate from the molded panel, while at the
same time will not allow splashed water unimpeded
transmission through the panel and into the engine
compartment or body structure, which would be most
undesirable. The noise abatement is adversely affected if the
skin is not semi-impervious and the present semi-impervious
nature ( defined by the resistance) allows splashed water that
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Appeal2017-003654
Application 12/285,082
enters the panel to drain and evaporate from the panel, so as
to return to the most acoustical favored condition of a dry
panel.
(Id. at 11 [0028].)
The cooled molded article, which is said to be self-supporting, is then
finished at 40 and is ready for installation. (Id. at 25 [0060].)
Claim 1 is representative and reads:
A molded and shaped acoustical insulating vehicle panel,
compnsmg:
a nonwoven fibrous composite having
a first portion of
greater than 60 to 80 percent meltable binder fibers
and less than 40 percent to 20 percent staple fibers,
and having
a second portion of
about 20 to 50 percent meltable binder fibers and
50 to 80 percent staple fibers; and
at least a portion of the meltable binder fibers of the
first portion forming a substantially continuous,
semi-impervious, densified skin integrally associated
with and bonded to a surface of the first portion,
wherein
the densified skin is about 5 to about 20 percent of an
overall thickness of the molded and shaped acoustical
insulating vehicle panel,
wherein the molded and shaped acoustical insulating vehicle
panel has
a density of from about 12 to 22 lbs/ cubic foot
(192 to 352 kg/cubic meter) over a predominance of an
area defining the molded and shaped acoustical insulating
vehicle panel, and
is sufficiently rigid so as to be self-supporting.
(Br., Claims App. 1; some indentation, paragraphing, and emphasis added.)
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Application 12/285,082
The Examiner maintains the following grounds of rejection 6, 7 :
A. Claims 1-8 and 12-19 stand rejected under
35 U.S.C. § I03(a) in view of the combined teachings of
Tilton, 8 Omiya, 9 and Gomez. 10
Al. Claims 2 and 13 stand rejected under 35 U.S.C. § I03(a) in
view of the combined teachings of Tilton, Omiya, Gomez,
and W enstrup. 11
B. Discussion
The Board's findings of fact throughout this Opinion are supported by
a preponderance of the evidence of record.
The Examiner finds that Tilton describes liner/insulators that have
many of the characteristics of the claimed invention. (FR 3--4.) Among the
differences between the claimed invention and Tilton, the Examiner finds
that Tilton "does not teach the composition of staple fibers and binder fibers,
and does not teach two different compositions of fibers." (Id. at 5, 11. 17-
6 Examiner's Answer mailed 30 September 2016 ("Ans.").
7 Because this application was filed before the 16 March 2013, effective
date of the America Invents Act, we refer to the pre-AIA version of the
statute.
8 Jeffrey A. Tilton et al., Multidensity line/insulator, U.S. Patent Application
Publication 2003/0008581 Al (2003).
9 Yoshimasa Omiya et al., Exterior material for vehicle, JP 2006-306381
(2006) (JPO machine-translation).
10 Durward Gomez and Steven Borchardt, Gradient density padding
material and method of making same, U.S. Patent Application Publication
2003/0199216 Al (2003). (Gomez is discussed at page 5, paragraph [0010]
of the '082 Specification.)
11 David E. Wenstrup, Nonwoven material, U.S. Patent Application
Publication 2004/0087236 Al (2004).
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Application 12/285,082
18.) The Examiner finds that Omiya teaches a two-layer nonwoven sound-
insulating structure for vehicles, illustrated in Figure 5, below.
{ Omiya Figure 5 shows a cross section of a fender liner 20}
Fender liner 20 comprises a two layer structure with high fiber-density
surface [layer] 22 and lower fiber density internal layer 23.
(Omiya 7 [0032].) Surface 22 is described as being harder and more rigid
than internal layer 23 (id.), and to be made from a main fiber 221 of
polypropylene and polyester and a weld fiber 222 of polypropylene that has
a melting point lower than the mixture comprising main fiber 221
(id. at [0034 ]). Omiya teaches that when the content of weld fiber 222
becomes less than 20% by weight, "it becomes difficult to maintain the
morphological stability of the fender liner 20." (Id. at 8 [0036].) Omiya
teaches further that when the content of weld fiber exceeds 60% by weight,
the strength and durability of the fender liner cannot be maintained. (Id.)
Omiya also teaches that internal layer 23 comprises main fiber 231,
from a polyamide resin, and weld fiber 232 from "polypropylene as well as
the synthetic resin 221" with a melting point lower than that of the main
fiber 231 and the main fiber of surface 22. (Id. at [0038].) The content of
the melt fiber in internal layer 23 is disclosed to be the same as in surface 22,
i.e., 20 to 60% by weight, "for the same [r]eason as the surface 22." (Id.)
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Application 12/285,082
The Examiner also finds that Tilton does not teach the thickness of the
lofty pad portion, but only indicates in the figures that the high density skin
portion is a "minor fraction" of the thickness of the entire pad." (FR 4, 11. 7-
11.) The Examiner finds that Gomez describes an acoustic insulating article
gradient density padding having a single layer on nonwoven material
resulting in a skin thickness that is preferably 5-30% of the total thickness.
(Id. at para. bridging 4--5.) The Examiner finds further that Gomez teaches
that the non woven pad is produced from a blend of 65-80% thermoplastic
fibers and 20-35% nonmelting fibers. (Id. at 5, 11. 8-9, citing Gomez
[0031].)
The Examiner concludes that it would have been obvious "to employ
the claimed proportions of meltable fibers to stable fibers motivated to
produce the desired density for sound absorption and strength to resist
impacts." (Id. at 7, 11. 15-18.)
Borchardt urges the Examiner erred by failing to give proper weight
to the limitation "semi-impervious" in the claims, particularly in light of
Tilden's disclosure of an impervious layer on the surface of the disclosed
liner/insulator. In particular, Borchardt urges (Br. 8), Tilton teaches that,
upon heat treatment to form the "heat-seared skin" (Tilton 2 [0016]) of the
liner/insulator,
the increased density of the skin 16 closes the pores of the
material making it impervious to many potential
environmental contaminants which might otherwise degrade
the performance of the line/insulator over time. Thus, it
should be appreciated that the skin 16 effectively functions to
protect the insulation portion 14 in much the same manner as
a laminated facing material does in prior art line/insulator
designs. [Id. at 3 [0036].]
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Application 12/285,082
Tilton, Borchardt argues, is comparing Tilton's invention of an insulating
pad having an integral, heat-seared water barrier skin, to prior art insulation
materials that were laminated with a water-impervious barrier.
The Examiner responds that the term "semi-impervious" is not
defined in the Specification or the claims, and is not limited to water. (Ans.,
para. bridging 4--5.) Moreover, the Examiner finds, the definition of the
term "[']impervious['] means to not allow something to enter or 'to pass
through"' (id. at 7, 1st para.), and the '082 Specification describes the term
"[']semi-impervious['] to mean a structure that does not allow something
'the water' to pass through" (id., last para.). Given that the prefix 'semi'
means "partly, not completely" (id.), the Examiner concludes that the terms
"impervious" and "semi-impervious" overlap in scope and "encompass the
same meaning." (id. at 8, 1st para.)
The Examiner is correct that, during examination, terms in claims are
to be read broadly, and that limitations are not to be imported from the
Specification into the claims. We are unable, however, to discern substantial
evidence supporting the Examiner's conclusion that a person skilled in the
relevant arts would have understood the term "impervious," as used by
Tilton, and the term "semi-impervious," as used in the '082 Specification, to
have an overlap in scope, or to "encompass the same meaning." Although
there are few absolutes in engineering solutions to practical problems, and
most terms are susceptible of degrees or ranges of meaning, the common
principal focus of all of the references is use in automotive vehicles, and a
common principal concern of Tilton and the '082 Specification is to keep
water out of the insulating structure. The weight of the evidence is that
Tilton and the '082 Specification achieve this goal using distinctly different
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Application 12/285,082
skin layers. Accordingly, we find the weight of the evidence supports
Borchardt as to the mutually exclusive meanings of these terms.
The Examiner responds further that the independent claims ( unlike
claims 4 and 15) do not recite whether pores are present, and that "[i]t is not
conclusive that Tilton's structure has no pores." (Ans. 10, first full para.)
The Examiner concludes further that "[ t ]he densified skin of Tilton is
materially and structurally the same as Appellant's claimed densified skin of
binder fibers and stable fibers which are treated to melt the binder fibers."
(Id.) These arguments depend on the broad definition of "semi-impervious"
that we have rejected, and are therefore not persuasive. Moreover, the
burden has not been shifted to Borchardt to demonstrate that Tilton does not
teach a structure that has no pores. To shift that burden to Borchardt, the
Examiner had the initial burden to demonstrate, by the preponderance of the
evidence, that the skin described by Tilton, at least within certain disclosed
or recognized ranges, necessarily would be sufficiently pervious to be "semi-
impervious" as described in the '082 Specification. The mere possibility that
such might be the case for some embodiment within the compositional scope
of Tilton's disclosure is not sufficient, especially given Tilton's express
disclosure that impervious skins are sought.
The same error arises in the Examiner's conclusions that "Tilton,
Gomez, and Omiya are analogous art" and that they "share the same
structural features and those same structural features are the features claimed
by Appellant." (Ans. 12, last para.) We do not understand Borchardt to
dispute that the references are "analogous," in that they are all concerned
with sound insulation panels for vehicles. But identifying references as
being "analogous" is merely the first step in an obviousness analysis.
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Application 12/285,082
It means little more than that a person having ordinary skill in the relevant
arts would have consulted those references and considered their teachings in
the course of analyzing the problem addressed. It does not mean that those
teachings would have been combined. A deeper analysis concerning the
particular disclosures of each reference is required to establish that factual
conclusion, which underlies the ultimate legal conclusion of obviousness.
In this regard, Borchardt argues further that the amount of weld fiber
present in Omiya, 20 to 60%, does not teach or suggest, and in fact teaches
away from the "greater than 60 to 80 percent" of meltable binder fibers
required for the "first portion" of the non woven fibrous composite recited in
claim 1. (Br. 11-12.) While the Examiner's general point that numerical
boundaries are often "soft," in that there may be little if any practical
difference in properties between a composite comprising 60 wt%
and 60.1 wt% meltable binder fibers, the Examiner has not shown, by the
preponderance of the evidence, that using compositions containing 60 wt%
fiber for weld in liner/insulators obvious in view of Tilton, Gomez, and
Omiya would necessarily have the semi-permeable skin and other properties
required by claim 1.
The Examiner's findings regarding the limitations of the dependent
claims, including findings regarding the reference Wenstrup, do not cure the
defects of the rejection of the independent claims.
We therefore reverse the appealed rejections.
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Application 12/285,082
C. Order
It is ORDERED that the rejection of claims 1-8 and 12-19 is
affirmed.
REVERSED
12