Ex Parte Conley et al

Board of Patent Appeals and Interferences

Mar 29, 2010

10877845 (B.P.A.I. Mar. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JILL A. CONLEY and EDMUND A. MERRIMAN
____________

Appeal 2009-006484
Application 10/877,845
Technology Center 1700
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Decided: March 30, 2010
____________

Before MICHAEL P. COLAIANNI, LINDA M. GAUDETTE, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-006484
Application 10/877,845

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-26. (Corrected Appeal Brief filed June 27, 2008,
(hereinafter “App. Br.”) at 4; Final Rejection mailed Jan. 14, 2008
(hereinafter “Final”).) We have jurisdiction pursuant to 35 U.S.C. § 6(b).
We AFFIRM.
THE INVENTION
Appellants describe a process for making a cellulosic and para-aramid
pulp. Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A process for making a cellulosic and para-aramid pulp for
use as reinforcement material, comprising:
(a) combining pulp ingredients including:
(1) cellulosic fiber that retains at least 10 % of its weight
when heated in air to 700°C at a rate of 20°C per minute, the
fiber being 10 to 90 wt % of the total solids in the ingredients,
and having an average length of no more than 10 cm;
(2) para-aramid fiber being 10 to 90 wt % of the total
solids in the ingredients, and having an average length of no
more than 10 cm; and
(3) water being 95 to 99 wt % of the total ingredients;
(b) mixing the ingredients to a substantially uniform
slurry;
(c) co-refining the slurry by simultaneously:
(1) fibrillating, cutting [,] and masticating the cellulosic
fiber and the para-aramid fiber to irregularly shaped fibrillated
fibrous structures with stalks and fibrils; and
(2) dispersing all solids such that the refined slurry is
substantially uniform; and (d) removing water from the refined
slurry to no more than 60 total wt % water,
thereby producing a cellulosic and para-aramid pulp
where the cellulosic fibrils and/or stalks are substantially
entangled with the para-aramid fibrils and/or stalks.

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THE REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Provost US 4,472,241 Sept. 18, 1984
Haines US 5,171,402 Dec. 15, 1992
Foster US 5,240,766 Aug. 31, 1993
Hoiness US 5,811,042 Sept. 22, 1998
Kaminski US 6,110,991 Aug. 29, 2000
Levit US 2002/0142689 A1 Oct. 3, 2002
Kusaka US 2003/0022961 A1 Jan. 30, 2003
Mater US 2004/0198125 A1 Oct. 7, 2004

Research Disclosure 74-75, (Feb. 1980) (unpublished document on
file with E.I. du Pont de Nemours and Company).

E.I. du Pont de Nemours and Company, Kevlar® Pulp Product
Information– Special Additives for Enhanced Performance (1998),
http://www2.dupont.com/Automotive/en_US/assets/downloads/335-
012_Kevlar_bp_insert.pdf.

Appellants appeal the following grounds of rejection:
I. The Examiner rejected claims 1-5, 11, 13-16, and 18-22 under 35
U.S.C. § 103(a) as being unpatentable over Kusaka in view of Haines,
Provost, Levit, Mater, Kaminski, the Research Disclosure, and the Product
Information Sheet;
II. The Examiner rejected claims 6-10, 12, 17, 23, and 24 under 35
U.S.C. § 103(a) as being unpatentable over Kusaka in view of Haines,
Provost, Levit, Mater, Kaminski, the Research Disclosure, and further in
view of Hoiness; and
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III. The Examiner rejected claims 25 and 26 under 35 U.S.C. § 103(a)
as being unpatentable over Kusaka in view of Haines, Provost, Levit, Mater,
Kaminski, the Research Disclosure, and further in view of Foster.

ISSUE
Appellants have not separately argued the claims subject to Rejection
I. Accordingly, we confine our discussion to appealed claim 1, which
contains claim limitations representative of the arguments made by
Appellants, and address other claims only to the extent that Appellants have
argued them separately pursuant to 37 C.F.R. § 41.37(c)(1)(vii).1 Regarding
Rejections II and III, Appellants have not presented separate arguments, but
instead rely on the arguments presented for Rejection I. (App. Br. 8.)
Therefore, our comments regarding Rejection I apply equally to Rejections
II and III.
The Examiner found that Kusaka discloses that:
[t]he fibers are uniformly pre-mixed (either roughly
premixed, p 2, par 22; premixed at a definite ratio, p 2, par 27
or mixed well, p 6, pars 77 and 81) and then fibrillated
simultaneously in a single step (p 2, par 22; p 6, par 80). In one
embodiment, the fibrillation is performed by a wet method (p 5,
pars 67 and 76; p 6, par 77 and 81, Example 1). The pulp
obtained is well mixed and contains uniformly distributed fibers
(p 6, pars 77-78, 81).

(Examiner’s Answer entered September 4, 2008, (hereinafter “Ans.”)
at 5.)

1 Only those arguments actually made by Appellants have been considered in
this decision. Arguments which Appellants could have made but chose not
to make have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii) (2009).
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Appellants contend that Kusaka discloses simultaneously premixing
and fibrillating fibers in a single step and that Kusaka does not disclose a
mixing step that provides a “substantially uniform slurry” as defined in the
Specification. (App. Br. 5.) Appellants argue that Kusaka does not define
“roughly premixing” and “mixed well” and that Kusaka’s mixing steps are
more analogous to the recited combining step. (App. Br. 6.) Appellants
contend that Kusaka teaches away from fibrillating fibers using a wet
method. (App. Br. 5.) Appellants contend that the cited art fails to disclose
a refining step that provides a refined pulp in a substantially uniform slurry.
(App. Br. 5.)
In view of Appellants’ contentions, the dispositive issue on appeal is:
Did the Examiner err in finding that Kusaka discloses mixing pulp
ingredients to a substantially uniform slurry and co-refining the slurry to
produce a refined slurry that is substantially uniform as recited in claim 1?

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Appellants’ Specification states: “[b]y ‘substantially uniform’ is
meant that random samples of the slurry contain the same wt % of
the concentration of each of the starting ingredients as in the total
ingredients in the combination step plus or minus 10 wt %....”
(Spec. 11, ll. 14-16; See also Spec. 12, ll. 1-2.)
2. Kusaka discloses a wet fibrillation method where aramid fiber and
acrylic fiber are put into water and mixed well, followed by
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introduction into a fibrillation apparatus. Kusaka discloses a
“uniformly distributed” pulp product. (Kusaka ¶ [0077].)

PRINCIPLES OF LAW
“Where, as here, the claimed and prior art products are identical or
substantially identical, or are produced by identical or substantially identical
processes, the PTO can require an applicant to prove that the prior art
products do not necessarily or inherently possess the characteristics of his
claimed product.” In re Best, 562 F.2d 1252, 1255 (CCPA 1977). “‘[T]he
PTO can require an applicant to prove that the prior art products do not
necessarily or inherently possess the characteristics of his claimed product. .
. . Whether the rejection is based on ‘inherency’ under 35 U.S.C. s [sic] 102,
on ‘prima facie obviousness’ under 35 U.S.C. s [sic] 103, jointly or
alternatively, the burden of proof is the same . . . [footnote omitted].’” In re
Fitzgerald, 619 F.2d 67, 70 (CCPA 1980) (quoting In re Best, 562 F.2d at
1255).

ANALYSIS and CONCLUSIONS
We are unpersuaded by Appellants’ argument that Kusaka fails to
disclose a “substantially uniform” slurry upon mixing the fiber ingredients.
As explained by the Examiner, Appellants’ definition of “substantially
uniform” is “rather broad” in light of the large range of cellulosic fibers and
para-aramid fibers recited in claim 1 and the undefined limit of a “random
sample size”. (Ans. 14-15.) Therefore, given the breadth of the Appellants’
definition, we cannot say that Kusaka’s well-mixed fiber slurry would not be
“substantially uniform.” In addition, Kusaka discloses that pulp contains
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“uniformly distributed” fibers. (FF 2.) Appellants have not provided any
persuasive evidence to distinguish the recited “substantially uniform” co-
refined slurry from Kusaka’s pulp product.
Appellants’ arguments that Kusaka teaches that the fibers are
simultaneously premixed and fibrillated in a single step and that Kusaka
teaches away from fibrillating a wet method are without merit. Kusaka
expressly discloses a wet fibrillation method. (FF 2.) In addition, as even
Appellants acknowledge, Kusaka discloses mixing fibers prior to fibrillating
them. (App. Br. 6; FF 2.) Moreover, claim 1 does not set forth any
particular order to the mixing and refining steps. We are also in agreement
with the Examiner that “[c]ombining need be no more than placing,
dumping, pouring [,] or otherwise adding at least some of the ingredients to
be mixed in a container.” (Ans. 15.) Accordingly, we are not persuaded by
Appellants’ arguments.
Appellants additionally argue that Haines does not disclose a length
weighted average. (App. Br. 7.) However, Appellants fail to sufficiently
explain why the Examiner’s explanation is in error. (Ans. 16-17.)
Therefore, we are not persuaded by Appellants’ arguments.
Appellants’ arguments regarding the secondary references focus on
each reference individually, rather than the rejection as a whole. (App. Br.
7.) As pointed out by the Examiner, the secondary references teach features
that are generally known to those of ordinary skill in the art. (Ans. 17.)
Appellants have not challenged the Examiner’s reasoning for combining the
references. Regarding Provost, Appellants have not sufficiently explained
why one of ordinary skill in the art would not have considered refining
fibrids with floc to be analogous to the claims in light of the Examiner’s
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statement that the prior art references and the claims are all “pertaining to
the refining of organic fibers to fibrillate them and products made
therefrom.” (Ans. 11.)
Accordingly, we are not persuaded that the Examiner erred in finding
that Kusaka discloses mixing pulp ingredients to a substantially uniform
slurry and co-refining the slurry to produce a refined slurry that is
substantially uniform as recited in claim 1.
As addressed above, Appellants do not offer any additional arguments
for rejections II and III. Therefore, we affirm rejections II and III for the
same reasons.

ORDER
We affirm the Examiner’s decision rejecting claims 1-26.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. §1.136(a)(1)(v).
AFFIRMED

KMF

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