Ex Parte Facer et al

Patent Trial and Appeal Board

Jun 4, 2013

11743716 (P.T.A.B. Jun. 4, 2013)

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.
11/743,716 05/03/2007 John M. Facer 63051US002 7412
32692 7590 06/06/2013
3M INNOVATIVE PROPERTIES COMPANY
EXAMINER
PO BOX 33427
ST. PAUL, MN 55133-3427
SKORUPA, VALERIE LYNN
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
06/06/2013 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 JOHN M. FACER, AUDRA A. WILSON,
and CHRISTOPHER P. HENDERSON
Appeal 2011-011292
Application 11/743,716
Technology Center 3700
Before FRANCISCO C. PRATS, MELANIE L. McCOLLUM, and
SHERIDAN K. SNEDDEN, Administrative Patent Judges.
McCOLLUM, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 involving claims to a mask
body and to a respirator comprising a mask body. The Examiner has
rejected the claims as anticipated or obvious. We have jurisdiction under
35 U.S.C. § 6(b). We affirm-in-part.
1 Appellants identify the real parties in interest as 3M Company and its
affiliate 3M Innovative Properties Company (App. Br. 2).
Appeal 2011-011292
Application 11/743,716
STATEMENT OF THE CASE
The Specification describes a maintenance-free respirator comprising
“a mask body that includes a sinus region and a primary filtering region,”
wherein the sinus region “has an alteration to its intrinsic structure to
significantly increase the pressure drop across it” (Spec. ^ [0006]). In
particular, the Specification discloses that the “alteration of the intrinsic
structure may be achieved by, for example, bonding or welding the mask
body structure,” in particular, by ultrasonic welding (id. at | [0052]). In
addition, the Specification discloses:
At the points w[h]ere the individual layer(s) and fibers are fused
together, there is less opportunity for air to pass through the
nonwoven fibrous webs and/or other material that comprises
the mask body 12. As a result of this alteration to the intrinsic
structure, the pressure drop in a sinus region 40 of the mask
body 12 increases.
(Id.)
Claims 1-15 are pending and on appeal (App. Br. 2-3). Claims 1, 2, 7,
11, and 14 are representative and read as follows:
1. A maintenance-free respirator that comprises:
(a) a harness; and
(b) a mask body that includes a sinus region and a primary filtering
region and that comprises at least one nonwoven fibrous web, the at least
one nonwoven fibrous web including a filtration layer, wherein at least a
portion of the sinus region of the mask body has had an alteration to its
intrinsic structure to significantly increase the pressure drop across the sinus
region, the increase in pressure drop being achieved through an alteration to
the intrinsic structure of the at least one nonwoven fibrous web without
adding additional material or items to the mask body in the sinus region.
2. The respirator of claim 1, wherein the alteration of the intrinsic
structure comprises a series of spot welds.
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Application 11/743,716
7. The respirator of claim 1, wherein the alteration of the intrinsic
structure occurs over 5 to 25% of the total surface area of the sinus region.
11. The respirator of claim [1, wherein the mask body comprises a
plurality of layers, and the intrinsic structure of the mask body is altered by
bonding the plurality of layers together, wherein the mask body further
comprises a predetermined pattern welded into portions of the sinus region,
and] wherein the predetermined pattern comprises a trademark.
14. The respirator of claim 1, wherein the pressure drop across the
sinus region or a part thereof has been increased from about 10 to 100% by
altering the intrinsic structure.
Claims 1, 5-10, and 12-15 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Kern et al. (US 5,701,893, Dec. 30, 1997) (Ans. 3).
Claims 2-4 stand rejected under 35 U.S.C. § 102(b) as anticipated by
or under 35 U.S.C. § 103(a) as obvious over Kern (Ans. 4).
Claim 11 stands rejected under 35 U.S.C. § 103(a) as obvious over
Kern in view of Begum (US 6,823,868 Bl, Nov. 30, 2004) (Ans. 5).
I
In rejecting claim 1, the Examiner finds:
Kern discloses a maintenance-free respirator (Fig. 1-6A) that
comprises; a harness 16 and a mask body 10 that includes a
sinus region 12 and a primary filtering region 14 . . . that
comprises at least one nonwoven fibrous web including a
filtration layer . . . wherein at leas[t] a portion of the sinus
region 12 of the mask body 10 has had an alteration to its
intrinsic structure (ultrasonically welded ribs 26/28/30/32 . . .).
(Ans. 3.) The Examiner also finds that “it is inherent that the pressure drop
across the sinus region 12 would be greater ... by altering the intrinsic
structure since the same material (nonwoven fabric) and process (ultrasonic
welding) is being used” {id. at 4).
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Application 11/743,716
Principles of Law
[I]t is elementary that the mere recitation of a newly
discovered function or property, inherently possessed by things
in the prior art, does not cause a claim drawn to those things to
distinguish over the prior art. Additionally, where the Patent
Office has reason to believe that a functional limitation asserted
to be critical for establishing novelty in the claimed subject
matter may, in fact, be an inherent characteristic of the prior art,
it possesses the authority to require the applicant to prove that
the subject matter shown to be in the prior art does not possess
the characteristic relied on.
In re Best, 562 F.2d 1252, 1254-55 (CCPA 1977) (citing In re Swinehart,
439 F.2d 210, 212-13 (CCPA 1971)).
Analysis
The Specification states that the ‘“sinus region’ means the nose region
and the area of the mask body that resides beneath the wearer’s eyes and/or
eye orbitals when the respirator is being worn and is described below in
further detail in reference to FIGs. 1, 4, and 5” (id. at | [0036] as amended
September 21, 2010 (emphasis added)). In discussing FIGs. 1, 4, and 5, the
Specification states:
In defining the sinus region, the apex 45 of the nose region is
first located. The outer extremities of the sinus region are
located by moving along the perimeter 21 of the mask body 12,
9 cm on each side of the apex 45, until points 47 are located.
Thus, if a string were laid on the perimeter 21 such that it
followed the perimeter until reaching point 47, the string would
be 9 cm in length on each side of point 45 for a total length of
18 cm. A fourth point 49 is also located 5 cm away from the
perimeter 21 along a line that bisects the mask body. The sinus
region is the surface area of the mask body that is located
between the perimeter 21 and the straight lines that connect
points 47 and point 49.
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Application 11/743,716
(Id. at | [0053].) Based on these descriptions, we agree with Appellants that
the term “sinus region” should be interpreted to mean ‘“a surface area of the
mask body that is located between the perimeter 21 and the straight lines that
connect points 47 and 49 as shown in applicants Figure 5,’” point 49 being
“located 5 cm away from the perimeter 21 along a line that bisects the mask
body” (App. Br. 4-5). However, we do not agree with Appellants that this
interpretation changes the Examiner’s conclusion that Kern anticipates
claim 1.
We understand that, based on this interpretation, not all of Kern’s
weld lines 26-32 may fall within the sinus region (id. at 4). However,
claim 1 does not exclude the presence of alterations outside of the sinus
region. In fact, the Specification states that the “alteration of the intrinsic
structure of the mask body also may occur beyond the sinus region” (Spec.
1 [0053]).
We also understand that Kern discloses that the “ribs prevent the
collapse of the mask during use so that breathing resistance remains lower
for easier breathing” (Kern, col. 3,11. 23-26). However, we do not agree
with Appellants that this teaching is inconsistent with the Examiner’s
conclusion that Kerns’ ribs, which are formed by ultrasonic welding (id. at
col. 4,11. 41-45), would be expected to increase the pressure drop across the
sinus region itself.
In addition, we understand that Kern’s “lines 26-32, particularly 30
and 32, only occupy a small percentage of the surface area available for
filtering” (App. Br. 5). However, we agree with the Examiner that the
Specification suggests that altering even a small percentage of the surface
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Application 11/743,716
area can increase the pressure drop (Spec. 1 [0053] (“The area that may be
intrinsically altered may comprise about 1 to 100% of the total surface area
of the sinus region, typically about 2 to 50% of the total surface area of the
sinus region, more typically about 6 to 10% of the total surface area of the
sinus region.”)). In addition, given the broad definition of the term
“significantly increase” to mean that “the increase is measurable and is
beyond measurement error” {id. at | [0035]), we conclude that the Examiner
has set forth an adequate basis to believe that Kern’s ultrasonic welding
significantly increases the pressure drop across the sinus region.
Finally, we understand Appellants’ position that their Specification
does not state that every alteration of 1% or greater of the surface area of the
sinus region would result in a significant increase in pressure drop (Reply
Br. 2). However, we conclude that the Examiner has provided a sufficient
basis to shift the burden to Appellants to demonstrate that Kern’s structure
would not necessarily provide this property. Appellants have not met this
burden.
With regard to claim 7, the Examiner finds that “Kern discloses that
the alteration of the intrinsic structure occurs over 5-25% of the total surface
area of the sinus region 12 (see Fig. 1, Fig. 4A where it is apparent that the
area of the sinus region 12 that includes the ribs 26/28/30/32 is within this
range)” (Ans. 3-4). Appellants argue that “Kern’s weld lines clearly occupy
less than 5% of the surface area in the sinus region” (App. Br. 6). Although
we do not agree with Appellants that this is clear, we conclude that it was
improper for the Examiner to rely on the Figures alone to support this
rejection. Instead, “it is well established that patent drawings do not define
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the precise proportions of the elements and may not be relied on to show
particular sizes if the specification is completely silent on the issue.”
Hockerson-Halberstadt, Inc. v. Avia Grp. Int'l, Inc., 222 F.3d 951, 956 (Fed.
Cir. 2000). See also In re Wright, 569 F.2d 1124, 1127 (CCPA 1977)
(“Absent any written description in the specification of quantitative values,
arguments based on measurement of a drawing are of little value.”).
With regard to claim 14, the Examiner finds:
Kern discloses the structural limitations to the claims.
Therefore, it is inherent . . . that the pressure drop across the
sinus region or a part thereof would be increased from about 1
to 100% by altering the intrinsic structure since the same
material (nonwoven fabric) and process (ultrasonic welding) is
being used.
(Ans. 4.) Appellants argue that “Kern surely is not describing a product that
would cause a 10 to 100% increase in pressure drop across the sinus region”
(App. Br. 6). However, we conclude that the Examiner has provided an
adequate basis to shift the burden to Appellants to demonstrate that Kern’s
structure would not provide the claimed increase in “the pressure drop across
the sinus region or a part thereof,” as recited in claim 14. Appellants have
not met this burden.
Conclusion
The evidence supports the Examiner’s conclusion that Kern
anticipates claims 1 and 14. We therefore affirm the anticipation rejection of
claims 1 and 14. Claims 5, 6, 8-10, 12, 13, and 15 have not been argued
separately and therefore fall with claim 1. 37 C.F.R. § 41.37(c)(l)(vii).
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However, the Examiner has not set forth a prima facie case that Kern
anticipates claim 7. We therefore reverse the anticipation rejection of this
claim.
II
In rejecting claim 2, the Examiner finds “that the spot welding
limitation is a product-by process claim and the product itself does not
depend on the process for making it” (Ans. 4). Therefore, the Examiner
does not give the process of spot welding patentable weight {id.). In
addition, the Examiner finds that “Kern discloses spot welds 72 on at least a
portion of the sinus region (see Fig. 6A)” {id.). The Examiner also finds that
“it is apparent that the alteration 26/28/30 (weld points) disclosed by Kern
could be formed by spot welding” {id. at 4-5). Thus, the Examiner
concludes that, “even if Kern’s welding is not a spot welding, the feature of
choosing a spot welding rather than regular welding is considered a matter
of design choice since spot welding is well known in the art for bringing two
layers of material together” {id. at 5).
Analysis
Appellants argue that “Kern does not suggest the use of spot welds to
provide a significant increase in pressure drop” (App. Br. 6). However, as
noted above, “the mere recitation of a newly discovered function or
property, inherently possessed by things in the prior art, does not cause a
claim drawn to those things to distinguish over the prior art.” In re Best,
supra. Therefore, we are not persuaded by Appellants’ argument.
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Conclusion
The evidence supports the Examiner’s conclusion that Kern teaches or
suggests the respirator of claim 2. We therefore affirm the rejection of
claim 2. Claims 3 and 4 have not been argued separately and therefore fall
with claim 2. 37 C.F.R. § 41.37(c)(l)(vii).
Ill
In rejecting claim 11, the Examiner finds that “Kern discloses the
claimed invention except that the predetermined pattern comprises a
trademark” (Ans. 5). However, the Examiner finds that “Begum teaches
markings 30 (Fig. 2) on a mask 14 which can be in the form of a trademark”
{id.). The Examiner concludes that it would have been obvious “to modify
the mask body of Kern so that the pattern is a trademark as taught by
Begum, in order to promote a company for advertising purposes” {id.).
Analysis
Appellants argue: “Begum does not describe a repeating pattern of
trademarks which are sufficient to alter the ‘intrinsic structure to
significantly increase the pressure drop across the sinus region’ of the mask
body. As such Begum adds little to nothing to what is lacking in Kern.”
(App. Br. 6.) We are not persuaded.
As noted by the Examiner, “Kern discloses a repeating pattern of the
alteration which significantly increases the pressure drop across the sinus
region of the mask body and Begum is only relied upon to teach the
modification of the patterns being in the shape of a trademark in order to
promote a sponsor, for example” (Ans. 7). Appellants have not adequately
explained why the Examiner’s position is in error.
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Conclusion
The evidence supports the Examiner’s conclusion that Kern and
Begum suggest the respirator of claim 11. We therefore affirm the
obviousness rejection of claim 11.
SUMMARY
We affirm the rejections of claims 1-6 and 8-15. However, we reverse
the anticipation rejection of claim 7.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
cdc
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