Ex Parte De Rovere et al

Patent Trial and Appeal Board

Aug 9, 2017

13501588 (P.T.A.B. Aug. 9, 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.
13/501,588 04/12/2012 Anne N. De Rovere 65170US009 5058
32692 7590 08/11/2017
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
PLESZCZYNS KA, JOANNA
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
08/11/2017 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 ANNE N. DEROVERE and KIM C. SACHS JR.,1
Appeal 2015-008124
Application 13/501,588
Technology Center 1700
Before CHUNG K. PAK, PETER F. KRATZ, and MONTE T. SQUIRE,
Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134(a) from the
Examiner’s decision2 rejecting claims 1-14, 16-19, 21, and 22, which are
1 Appellants identify the real party in interest as “3M Company (formerly
known as Minnesota Mining and Manufacturing Company) of St. Paul,
Minnesota and its affiliate 3M Innovative Properties Company of St. Paul,
Minnesota.” Appeal Brief filed February 9, 2015 (“App. Br.”) 2.
2 Final Action entered January 10, 2014 (“Final Act.”) 2-12; and the
Examiner’s Answer entered July 8, 2015 (“Ans.”) 2-11.
Appeal 2015-008124
Application 13/501,588
of the claims pending in the above-identified application. An oral hearing
was held on July 25, 2017.3 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
The subject matter of the claims on appeal relates to “a non-woven
layer having generally opposed first and second major surfaces, a length
with generally opposed first and second edges, and a width of at least 35 mm
..., wherein the non-woven layer comprises inorganic fibers... has a binder
content no greater than 7.. .percent by weight, based on the total weight of
the non-woven layer, and has stitching, wherein the stitching is at least one
of (a) at least one.. .zig-zag line(s) of stitching...; and (b) at least two.. .lines
of stitching . . . . ” Spec. 17 (emphasis added). This non-woven layer is
used as either a mounting mat or part of a mounting mat for pollution control
devices, such as a catalytic converter, a diesel particulate filter, or a selective
catalytic reduction element. Spec. Tflf 1-6, 8, 19, 38.
Details of the appealed subject matter are recited in representative
claims 1, 2, 5, 6, 7, 21, and 22,4 which are reproduced below from the
3A written transcript of the oral hearing will be entered into the record when
the transcript is made available.
4 Appellants separately argue the limitations of claims 1, 2, 5, 6, 7, 21, and
22 on appeal. App. Br. 4-16. Therefore, for purposes of this appeal, we
limit our discussion to claims 1, 2, 5, 6, 7, 21, and 22 pursuant to 37 C.F.R.
§ 41.37(c)(l)(iv) (2013). The remaining claims on appeal stand or fall with
their parent claims. 37 C.F.R. § 41.37(c)(l)(iv).
2
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Application 13/501,588
Claims Appendix of the Appeal Brief (with disputed limitations in italicized
form):
1. A non-woven layer having opposed first and second major
surfaces, a length with opposed inlet and outlet edges, and a
width of at least 35 mm, wherein the non-woven
layer comprises inorganic fibers, has a binder content not
greater than 7 percent by weight, based on the total weight of
the non-woven layer, and has stitching, wherein the stitching is
at least one of:
(a) at least one zig-zag line of stitching that extends
widthwise to within at least 10 mm of each of the inlet and
outlet edges of the non-woven layer; and
(b) at least two lines of stitching, a first line of stitching
located only within an inlet edge region ranging from 5 mm to
30 mm from the inlet edge, and a second line of stitching
located only within an outlet edge region ranging from 5 mm to
30 mm from the outlet edge, with up to only one additional line
of stitching located between said inlet edge region and said
outlet edge region,
wherein the presence of the stitching reduces shear of the
first and second major surfaces of the non-woven layer by at
least 10 percent, when a mounting mat comprising the non-
woven layer is wrapped around a pollution control element and
inserted into a casing to make a pollution control device.
2. The non-woven layer of claim 1, wherein the at least one
zig-zag line of stitching is present, and the stitching is within
each of 10 mm of the inlet and outlet edges.
5. The non-woven layer of claim 1, wherein at least the
first and second lines of stitching are present, the first line of
stitching is located only within an inlet edge region ranging
from 5 mm to 10 mm from the inlet edge, and the second line
of stitching is located only within an outlet edge region
ranging from 5 mm to 10 mm from the outlet edge.
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Application 13/501,588
6. The non-woven layer of claim 1 having a binder
content of zero percent by weight, based on the total weight of
the non-woven layer.
7. The non-woven layer of claim 1 having a width in a
range from 100 mm to 400 mm.
21. The non-woven layer of claim 1, wherein said non-
woven layer includes no additional line of stitching located
between said inlet edge region and said outlet edge region.
22. The non-woven layer of claim 21 having a width in a
range from 100 mm to 400 mm.
App. Br. 17-19, Claims Appendix.
The Examiner maintains, and Appellants seek review of, the
following grounds of rejection:5
1. Claims 1-8, 10, 11, 14, 16, 21, and 22 under 35 U.S.C. § 103(a) as
unpatentable over the combined disclosures of Merry ‘746 (US
2006/0153746 A1 published in the name of Merry et al. on July 13, 2006)
and Lefkowitz (US 4,181,514 issued in the name of Lefkowitz et al. on
January 1, 1980); and
2. Claims 9, 12, 13, and 17-19 under 35 U.S.C. § 103(a) as
unpatentable over the combined disclosures of Merry ‘746, Lefkowitz, and
Merry ‘040 (US 2006/0154040 Al, published in the name of Merry on July
13, 2006). Final Act. 2-13; Ans. 2-22; App. Br. 4-16; Reply Brief filed
September 8, 2015 (“Reply Br.”) 2-5.
5 The Examiner has withdrawn the § 112, second paragraph, rejection of
claims 1, 3, and 4 set forth in the Final Action. Ans. 11.
4
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Application 13/501,588
DISCUSSION
Upon consideration of the evidence relied upon by the Examiner and
Appellants in light of each of Appellants’ contentions,6 we find no reversible
error in the Examiner’s rejections of claims 1-14, 16-19, 21, and 22 under
35 U.S.C. § 103(a). Accordingly, we sustain the Examiner’s § 103(a)
rejections of the above claims substantially for the reasons set forth in the
Final Action and the Answer. We add the following primarily for emphasis
and completeness.
To prevail in appeal to this Board, Appellants must adequately explain
or identify reversible error in the Examiner’s § 103 rejections. See 37 C.F.R.
§ 41.37 (c)(l)(iv)(2012); see also In re Jung, 637 F.3d 1356, 1365-66
(2011). In assessing the presence or absence of reversible error in the
Examiner’s § 103(a) rejections, we must evaluate the prior art references
relied upon by the Examiner in light of Appellants’ arguments, taking into
account “demands known to the design community,” “the background
knowledge possessed by a person having ordinary skill in the art,” and “the
inferences and creative steps that a person of ordinary skill in the art would
employ[.]” KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
6 Any new arguments raised in the Reply Brief, which could have been
raised in the Appeal Brief, will not be considered. 37 C.F.R.
§ 41.37(c)(l)(iv) (“Except as provided for in §§ 41.41, 41.47 and 41.52, any
arguments or authorities not included in the appeal brief will be refused
consideration by the Board for purposes of the present appeal.”); see also Ex
parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (Informative)
(explaining that under the previous rules, which are similar to the current
rules, “the reply brief [is not] an opportunity to make arguments that could
have been made in the principal brief on appeal to rebut the Examiner’s
rejections, but were not.”).
5
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Application 13/501,588
I. REJECTION 1
As evidence of obviousness of the subject matter recited in claims 1-
8, 10, 11, 14, 16, 21, and 22 under 35 U.S.C. § 103(a), the Examiner relies
upon the combined disclosures of Merry ‘746 and Lefkowitz. Final Act. 3.
The Examiner finds that Merry ‘746, like Appellants, discloses a non-woven
and non-intumescent mounting mat (corresponding to a non-woven layer
having opposed first and second major surfaces, a length with opposed inlet
and outlet edges and a width) for a pollution control device, such as a
catalytic converter, wherein the non-woven and non-intumescent mounting
mat comprises inorganic fibers (magnesium aluminum silicate glass fibers
having a diameter of at least 5 micrometer and a length of 0.5 to 15 cm) and
a binder content not greater than 1% by weight. Final Act. Ans. 2-3;
compare also Merry ‘746 12, 20, 35 and Fig. 1, with Spec, 7, 8, 19, 20,
22, 23, 38 and Fig. 4. Implicit in the above disclosure of Merry ‘746 is that
its non-woven and non-intumescent mounting mat, like the non-woven layer
recited in claim 1, is sized to fit into given pollution devices. Compare also
Merry ‘746 120 and Fig. 1, with Spec. 119 and Fig. 4.
The Examiner also finds that Merry ‘746 discloses that “the non-
woven layer has stitching (p.4, par. 0034), referring to US. Patent No.
4181514 (Lefkowitz et al.), however [it] does not specify exactly what
stitching lines are to be provided in the layer.” Final Act. 4. In particular,
paragraph 34 of Merry ‘746 relied upon by the Examiner discloses as
follows:
The nonwoven mat can be stitchbonded using
conventional techniques (see[J e.g., U.S. Pat. No. 4,181,514
(Lefkowitz et al.), the disclosure of which is incorporated herein
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Application 13/501,588
by reference for its teaching of stitchbonding non-woven mats).
Typically, the mat is stitchbonded with organic thread. A thin
layer of an organic or inorganic sheet material can be placed on
either or both sides of the mat during stichbonding to prevent or
minimize the threads from cutting through the mat. Where it is
desired that the stitching ceramic or metal (e.g., stainless steel)
can be used. The spacing of the stiches is usually from 3 to 30
mm so that the fibers are uniformly compressed throughout the
entire area of the mat.
(Emphasis added.) Merry ‘746 recognizes that Lefkowitz’s stitch-knitting
technique for a filter comprising a batt in the form of a non-woven structure
made of inorganic fibers, such as glass fibers, is applicable to its non-woven
structure made of glass fibers for a pollution control device.7 Compare
Merry ‘746, 12 and 34, with Lefkowitz, col. 3,1. 56-col. 4,1. 46.
Consistent with the teachings of Merry ‘746, Lefkowitz teaches that
its non-woven structure (filter) “is fabricated in the stitch-knitting machine
using an appropriate stitch.” Lefkowitz, col. 3,11. 16-17. According to
column 4, lines 10-18, of Lefkowitz:
Commercially available stitch-knitting machines are
capable of producing numerous common stitch variations
including chain, tricot, plain, weft and chain, chain and tricot,
tricot with layer-in, and the like. Any of the well known stitch
variations may be employed in the practice of the present
invention, the stitch variation used being selected with an eye
toward the ultimate product desired and its application.
7 We also note that Merry ‘746’s reference to a pollution control device in
general does not exclude Lefkowitz’s filter which is used to remove foreign
and particulate material from gases. Merry ‘746,11 and Lefkowitz, col. 1,
11. 17-21. Indeed, Appellants acknowledge that the term “pollution control
device” not only includes a catalytic converter, but also includes a
particulate filter. Spec. ^ 8-9.
7
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Application 13/501,588
Lefkowitz reveals that:
The stitch-knitting technique obviates the need for a coating or
a binder to maintain the integrity and consolidation of the batt
in the final product from and during use of the filter structure.
The stitch-knitting yam itself will provide satisfactory
encapsulation and protection of the brittle fibrous filter mat
material.
Lefkowitz, col. 4,11. 41^46.
Appellants do not dispute the Examiner’s finding that Merry ‘746
would have suggested a non-woven web layer having a width of at least 35
mm as recited in claim 1. Compare Final Act. 4, with App. Br. 7-11. Nor
do Appellants dispute the Examiner’s finding that the stitching suggested by
Merry ‘746 and Lefkowitz to provide uniform compression and/or
consolidation of the fibers throughout the entire area of the mat would be
sufficient to reduce “shear of the first and second major surfaces of the non-
woven layer by a least 10 percent, when a mounting mat comprising the
non-woven layer is wrapped around a pollution control element and inserted
into a casing to make a pollution control device” as recited in claim l.8
Compare Final Act. 5, with App. Br. 7-11. Rather, Appellants contend that
the collective teachings of Merry ‘746 and Lefkowitz would not have
suggested
at least one of: (a) at least one zig-zag line of stitching that
extends width wise to within at least 10 mm of each of the inlet
8 During the oral hearing held on July 25, 2017, Appellants also
acknowledged that the stitching suggested by Merry ‘746 and Lefkowitz will
reduce “shear of the first and second major surfaces of the non-woven layer
by at least 10 percent” as recited in claim 1, when the non-woven layer
suggested by Merry ‘746 and Lefkowitz is used in a pollution control device
in the manner recited in claim 1.
8
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Application 13/501,588
and outlet edges of the non-woven layer; and (b) at least two
lines of stitching, a first line of stitching located only within an
inlet edge region ranging from 5 mm to 30 mm [(constituting an
area covering about 14 to 85% of the entire width)] from the
inlet edge [of at least 35 mm wide non-woven layer], and a
second line of stitching located only within an outlet edge
region ranging from 5 mm to 30 mm [(about 14 to 85% of the
entire width and the area of the non-woven layer)] from the
outlet edge [of at least 35 mm wide non-woven layer], with up
to only one [(0 to l)9] additional line of stitching located
between said inlet edge region and said outlet edge region ....
as recited in claim 1. (Emphasis added). App. Br. 7-11. Appellants also
contend that the collective teachings of Merry ‘746 and Lefkowitz would not
have suggested at least two lines of stitching alternatively recited in claim 1
that are further limited by claim 5 as being located within the inlet edge and
outlet edge regions ranging from 5 mm to 10 mm (constituting an area that
covers approximately 14% to 28% of the width and the area of the non-
woven layer), rather than 5 mm to 30 mm recited in claim 1, from the inlet
edge and the outlet edge, respectively of at least 35 mm wide non-woven
layer. App. Br. 12-13. However, we are not persuaded by these
contentions.
As correctly found by the Examiner, Merry ‘746’s Figure 1, like
Appellants’ Figure 4, illustrates the opposing edges of a length (longer sides)
of a mounting mat comprising a non-woven layer, which correspond to the
inlet and outlet edges10 of the non-woven layer recited in claim 1. Final Act.
9 In re Mochel, 470 F.2d 638, 640. (CCPA 1972) (explaining that the term
“up to” includes 0 as a lower limit.)
10 As is apparent from Appellants’ Figure 4, the terms “inlet edge” and
“outlet edge” refer to the edges of a length of a mounting mat comprising a
9
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Application 13/501,588
3-4; Ans. 2-3; compare Merry ‘746 120 and Fig. 1, with Spec. 119 and
Fig. 4. Merry ‘746 teaches using appropriate stitches, inclusive of any
adequate number of stiches, which may be 3 to 30 mm apart on its suggested
at least 35 mm wide non-woven web structure as indicated supra. Although
Merry ‘746 do not specifically mention that at least one line of stitching is
located within both the recited inlet edge and outlet edge regions,
respectively, the Examiner relies upon chain stiches illustrated in Lefkowitz
to show the obviousness of using such stitches in the recited inlet edge and
outlet edge regions of the non-woven layer suggested by Merry ‘746. Final
Act. 5-6. Figure 2 of Lefkowitz relied upon by the Examiner is reproduced
below:
non-woven layer, which face inlet and outlet of a pollution device, such as a
catalytic converter, when the mounting mat comprising a non-woven layer is
mounted in the pollution device. Spec. 119 and Fig. 4. In the context of the
non-woven layer recited in claim 1, the Specification does not use the terms
“inlet edge” and “outlet edge,” but describe them as the first and second
generally opposing edges of a length of the non-woven layer. See, e.g.,
Abstract and Spec. Tflf 7, 16, 17, 18, 19.
10
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Lefkowitz’s Figure 2 illustrates, but are not limited to, using five chain
stitches 3 with at least two or three stitches11 being nearest to one of the
edges of a length12 of filter material 1 comprising fibrous batt 2 in the form
of a non-woven structure, at least two stitches being nearest to the other edge
of the length of filter material 1 comprising fibrous bat 2 in the form of a
non-woven structure, and none or one stitch being between those two or
three chain stiches nearest to the opposing edges of the length of filter
material 1 comprising fibrous batt 2 in the form of a non-woven structure.
See Lefkowitz, col. 3,1. 54-col. 4,1. 24 and Fig. 2. Thus, we find no
reversible error in the Examiner’s determination that one of ordinary skill in
the art would have been led to place two or more lines13 of stitching (such as
11 Claim 1, by virtue of reciting the phrase “at least two lines of stitching”
and/or using the open-ended transitional term “having,” does not exclude the
presence of more than one line of stitching in either the broadly recited inlet
edge region or the broadly recited outlet edge region. See, e.g., Crystal
Semiconductor Corp. v. TriTech Microelectronics Inti Inc., 246 F.3d 1336,
1348 (Fed. Cir. 2001)(the term “having” in transitional phrase “does create
a presumption that the body of the claim is open.”); Lampi Corp. v.
American Power Products, 228 F.3d 1365, 1376 (Fed. Cir.
2000) (interpreting the term “having” as open terminology, allowing the
inclusion of other components in addition to those recited). This
interpretation is also consistent with paragraph 7 of the Specification, which
describes employing “three, four, or more” lines of stitching and “three,
four, or more” zig-zag lines of stitching in a non-woven layer. See also
dependent claim 5.
12 We refer to a longer side of a filter comprising a fibrous batt in the form of
a non-woven structure as “a length.”
13 Appellants do not argue that the term “two or more lines of stitching”
excludes the chain stitches taught by Lefkowitz. App. Br. 7-13.
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the chain stiches horizontally aligned with respect to a length of a non-
woven structure, as taught by Lefkowitz14) in the manner (spacing)
suggested by Merry ‘744 to provide four or five chain stiches in the recited
inlet and outlet edge regions of at least 35 mm wide non-woven mounting
mat suggested by Merry ‘746 to arrive at the subject matter recited in claims
1 and 5,15 with reasonable expectation of successfully uniformly
compressing and/or successfully improving the integrity of consolidation of
inorganic fibers throughout the entire area of the mat.
In addition to the teachings discussed above, both Merry ‘746 and
Lefkowitz, by virtue of leaving the appropriate stitching to one of ordinary
14 Although Appellants seem to indicate at page 9 of the Appeal Brief that
Lefkowitz’s Figure 2 cannot be viewed as providing horizontal chain
stitches with respect to a length of the fibrous bat in the form of a non-
woven structure because Lefkowitz does not specifically indicate that the
longer side of the non-woven structure is a length or a width, our conclusion
would remain unchanged. Such disclosure, from our perspective, still would
have suggested using either vertical or horizontal stitching with respect to
the length of the non-woven structure. Bristol-Myers Squibb Co. v. Ben
Venue Labs, Inc., 246 F. 3d 1368, 1380 (Fed. Cir. 2001) (“[T]he disclosure
of a small genus may anticipate the species of that genus even if the species
are not themselves recited.”).
15 When, for example, at least three stiches are spaced 15 mm apart (first and
second stiches are 30 mm apart with a third stich located in the middle so
that every stich is 15 mm apart), as suggested by Merry ‘746, in the 35 mm
wide non-woven structure or layer, one of ordinary skill in the art would
have reasonably expected that at least one stitch is located within both the
inlet edge and outlet edge regions recited in claims 1 and 5. The same holds
true for five stiches where, for example, at least two stiches near one or the
other edges of a length of a non-woven layer are 3 mm apart, with one stitch
in the center being 12 to 13 mm apart from those located near the opposing
edges, as suggested by Merry ‘746.
12
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Application 13/501,588
skill in the art for the uniform compression and/or consolidation of fibers of
a non-woven layer, and/or other desired purposes, as indicated supra, reveal
that placing appropriate stitching, such as an appropriate number of chain
stitches, in appropriate locations of the surface(s) of a non-woven layer,
including near the opposing edges of a length of the non-woven layer, is
well within the ambit of one of ordinary skill in the art. In re Boesch, 617
F.2d 272, 276 (CCPA 1980)(“[D]iscovery of an optimum value of a result
effective variable ... is ordinarily within the skill of the art.”); In re Applied
Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012) (“A recognition in the
prior art that a property is affected by the variable is sufficient to find the
variable result-effective.”). Thus, we find no reversible error in the
Examiner’s determination that “it would have been obvious to one of
ordinary skill in the art at the time of the invention was made to optimize
that distance in [the] course of routine experimentation.” Ans. 5. See also
In re Kuhle, 526 F.2d 553, 555 (CCPA 1975) (explaining that the particular
placement of electrical contact an obvious matter of design choice absent
showing of an unexpected result.)
Appellants also contend that the collective teachings of Merry ‘746
and Lefkowitz would not have suggested “at least one zig-zag line of
stitching that extends width wise to within at least 10 mm of each of the inlet
and outlet edges of the non-woven layer” as alternatively recited in claim 1.
App. Br. 11. According to Appellants, dependent claim 2 requires such at
least one zig-zag line of stitching because it recites “the at least one zig-zag
line of stitching is present, and the stitching is [extending widthwise to be]
within each of 10 mmm of the inlet and outlet edges [of at least 35 mm wide
non-woven layer].” Id. However, we are not perusaded by this contention.
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Figure 6 of Lefkowitz relied upon by the Examiner is reproduced
below:
TBSntSS._______£B
As correctly found by the Examiner, Lefkowitz’s Figure 6 illustrates
three zig-zag stiches 12 formed with tricots, some of which are located near
the opposing edges of a length of filter material 9 comprising fibrous batt 10
in the form of a non-woven structure. Final Act. 3^4; Lefkowitz, col. 6,11.
44-61 and Fig. 6. Although the zig-zag stiches illustrated in Figure 6 of
Lefkowitz are not large enough to extend widthwise to be within at least 10
mm of each of the opposing edges of a length of the non-woven structure as
alternatively recited in claim 1 or as non-alternatively recited in claim 2, we
concur with the Examiner that one of ordinary skill in the art would have
been led to employ such large enough zig-zag stiches to cover the entire or a
significant area of a non-woven structure, such as the non-woven structure
taught or suggested by Merry ‘746, with a reasonable expectation of
successfully consolidating all fibers of the non-woven structure and/or
uniformly compressing all fibers of the non-woven structure. The use of
such large enough zig-zag stiches, rather than smaller zig-zag stiches, to
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cover the entire or a significant area of a non-woven structure is no more
than the predictable use of a known zig-zag stitching configuration
according to its established function of consolidating all fibers of the non-
woven structure and/or uniformly compressing all fibers of the non-woven
structure. See KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007); see
also Perfect Web Technologies, Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329
(Fed. Cir. 2009) (“hold[ing] that while an analysis of obviousness always
depends on evidence that supports the required Graham factual findings, it
also may include recourse to logic, judgment, and common sense available
to the person of ordinary skill that do not necessarily require explication in
any reference or expert opinion.”); In re Bozek, 416 F.2d 1385, 1390,
(CCPA 1969) (“Having established that this knowledge was in the art, the
examiner could then properly rely, as put forth by the solicitor, on a
conclusion of obviousness ‘from common knowledge and common sense of
the person of ordinary skill in the art without any specific hint or suggestion
in a particular reference. ’”).
To hold otherwise is to allow anyone to continue patenting the same
product indefinitely by adding a newly sized stitching configuration or a new
stitching configuration (that can be made by conventional stitching
machines) from an infinite number of possible configurations and sizes to
the same product for the same stitching purposes without changing the
nature of the product. Compare In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir.
2004) (“If we were to adopt Ngai’s position, anyone could continue
patenting a product indefinitely provided that they add a new instruction
sheet to the product.”). In this regard, we note that Appellants do not show
that the recited stitching arrangement provides any functions or properties
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one of ordinary skill in the art would not have expected from the teachings
of Merry ‘746 or Lefkowitz. Kuhle, 526 F.2d at 555 (explaining that the
particular placement of electrical contact an obvious matter of design choice
absent showing of an unexpected result.); see also In re Dailey, 357 F.2d
669, 672 (CCPA 1966). (“Appellants have presented no argument which
convinces us that the particular configuration of their container [(or the
particular configuration of stitching)] is significant or is anything more than
one of numerous configurations a person of ordinary skill in the art would
find obvious for the purpose of providing mating surfaces in the collapsed
container of Matzen . . . [(or for the purpose of stitching, consolidating or
compressing fibers of the prior art non-woven structure)].”)
In any event, as indicated supra, both Merry ‘746 and Lefkowitz teach
that appropriate stitching variations, including those zig-zag stitching
configurations formed by tricots, are result effective variables. Thus,
extending the zig zag stitching configuration illustrated by Lefkowitz to
cover a substantial or significant area of a non-woven structure, especially in
the vicinity of the edges of the non-woven structure, as alternatively required
by claim 1 and non-altematively required by claim 2, for the fiber
consolidation or uniform compression purposes or other desired application
purposes is well within the ambit of one of ordinary skill in the art. Boesch,
617 F.2d at 276.
Appellants further contend that the collective teachings of Merry ‘746
and Lefkowitz would not have suggested the binder content of 0 percent
recited in claim 6. App. Br. 13. However, as indicated supra, both Merry
‘746 and Lefkowitz teach or suggest using the binder content of 0 percent
recited in claim 5. In particular, Lefkowitz teaches that the “stitch-knitting
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Appeal 2015-008124
Application 13/501,588
technique obviates the need for a coating or a binder to maintain the integrity
and consolidation of the batt” in the form of a non-woven structure.
Lefkowitz, col. 4,11. 41^44. Merry ‘746 teaches using a binder content of
less than 0.5% by weight, which is inclusive 0 percent, and using a mounting
mat comprising a non-woven layer containing substantially free of organic
binder. Merry ‘746 |12. Merry ‘746 further teaches spacing stiches 3 to 30
mm apart in its 35 mm wide non-woven structure as discussed supra allows
the use of less than 0.5% by weight of a binder, inclusive of no binder.
Appellants further content that the collective teachings of Merry ‘746
and Leftkowitz would not have led one of ordinary skill in the art to employ
two or more lines of stitching in the recited inlet edge and outlet edge
regions or the zig-zag line of stitching extending widthwise to within at least
10 mm of each of the inlet and outlet edges, when the width of the non-
woven layer is within the range of from 100 mm to 400 mm as recited in
claims 7.16 App. Br. 13-14. We are not persuaded by this contention. Our
reasons for finding no reversible error in the Examiner’s determination
relating to the obviousness of the recited zig-zag line of stitching used in the
smaller non-woven layer recited in claims 1 and 2 are equally applicable to
the larger non-woven layer recited in claim 7.
We need not further address Appellants’ arguments relating to the
recited two or more lines of stitching as they are alternatively recited in
claims 1 and 7. However, the reasons for finding no reversible error in the
16 Appellants do not dispute the Examiner’s determination that it would have
been to a person skilled in the art to optimize the width of the [non-woven]
layer [of Merry ‘746] depending on its intended use [(e.g., the size of a
pollution control device it intends to cover)]. Compare Final Act. 6-7, with
App. Br. 13-14.
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Application 13/501,588
Examiner’s determination of the obviousness of the recited two or more
lines of stitching in the smaller non-woven recited in claims 1 and 5 stated
above are equally applicable to the larger non-woven layer recited in claim
7. We only add that Appellants’ calculation relating to Merry’ 746’s
disclosure of 3 to 30 mm spacing at page 14 of the Appeal Brief does not
take into account the sizes of stitches that can be used in the non-woven
mounting mat suggested by Merry ‘746. When the appropriate varying or
non-varying sizes of stitches relevant to the large non-woven layer recited in
claim 7 are employed to consolidate or uniformly compress fibers of the
recited non-woven layer, as suggested by Merry ‘746 and/or Lefkowitz, we
find that Merry’ 746’s disclosure of 3 to 30 mm spacing would have led one
of ordinary skill in the art to place such appropriately sized stitches in the
recited inlet and outlet edge regions of the larger non-woven layer suggested
by Merry’ 746, with no more than one appropriately sized stitch between the
recited inlet and outlet edge regions.17 In any event, as indicated supra, both
Merry ‘746 and Lefkowitz, by virtue of leaving the appropriate stitching to
one of ordinary skill in the art for the uniform compression and/or
consolidation of fibers of a non-woven layer, and/or other desired
application purposes, as indicated supra, reveal that placing appropriate
stitching, such as an appropriate number of chain stitches, in appropriate
locations of the surface(s) of a non-woven layer, including near the opposing
17 When, for example, three stitches are spaced 20mm apart and each stitch
is 20 mm wide, one of ordinary skill in the art would have reasonably
expected that two of the three stiches would be within the recited inlet and
outlet edge regions, respectively, with the remaining stich being located
between the recited inlet and outlet edge regions.
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Application 13/501,588
edges of a length of the non-woven layer, with or with one addition stitch
therebetween, is well within the ambit of one of ordinary skill in the art.
Boesch, 617 F.2d at 276 (“[Djiscovery of an optimum value of a result
effective variable ... is ordinarily within the skill of the art.”)
Appellants further contend that the collective teachings of Merry ‘746
and Leftkowitz would not have suggested a non-woven layer having no
stitches between the recited inlet and outlet edge regions as recited in claim
21. App. Br. 14-15. However, we are not persuaded by this contention for
the reasons set forth in connection with claims 1, 2, 5, and 7.
Appellants further contend that the collective teachings of Merry ‘746
and Leftkowitz would not have suggested the feature recited in claim 22 for
the same arguments advanced in connected with claim 7. App. Br. 15-16.
Again, we are not persuaded by this contention for the reasons set forth
above in connection with claim 7.
Accordingly, we find no reversible error in the Examiner’s decision
rejecting claims 1-8, 10, 11, 14, 16, 21, and 22 under 35 U.S.C. § 103(a) as
unpatentable over the combined disclosures of Merry ‘746 and Lefkowitz.
II. REJECTION 2
As evidence of obviousness of the subject matter recited in claims 9,
12, 13, and 17-19 under 35 U.S.C. § 103(a), the Examiner further relies on
the teachings of Merry ‘040, in addition to the combined disclosures of
Merry ‘746 and Lefkowitz discussed supra. Appellants rely on the same
arguments advanced in connection with claim 1 to impart patentability to the
subject matter recited in claims 9, 12, 13, and 17-19. App. Br. 16.
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Application 13/501,588
Accordingly, based on the same reasons set forth above in connection
with claim 1, we find no reversible error in the Examiner’s decision rejecting
claims 9, 12, 13, and 17-19 under 35 U.S.C. § 103(a) as unpatentable over
the combined disclosures of Merry ‘746, Lefkowitz, and Merry ‘040.
DECISION
Upon consideration of the record, and for the reasons given, it is
ORDERED that the decision of the Examiner to reject of claims 1-14,
16-19, 21, and 22 under 35 U.S.C. § 103(a) is AFFIRMED; and
FURTHER ORDERED that no time period for taking any subsequent
action in connection with this appeal may be extended under 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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