Ex Parte Fay

Board of Patent Appeals and Interferences

Dec 2, 2009

10923345 (B.P.A.I. Dec. 2, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte RALPH MICHAEL FAY
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Appeal 2009-000621
Application 10/923,345
Technology Center 1700
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Decided: December 2, 2009
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Before PETER F. KRATZ, CATHERINE Q. TIMM, and
LINDA M. GAUDETTE, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 39, 43, 47, and 49 (Final Office Action,
mailed May 3, 2007), the only claims pending in the application. We have
jurisdiction under 35 U.S.C. § 6(b).
Appeal 2009-000621
Application 10/923,345

2
We REVERSE.
The claimed invention is directed to a “method of making a polymeric
fiber liner insulation” (claims 39, 43, 47, and 49) for use, for example, as
equipment and duct liner insulation in HVAC systems. (Spec. 1:10-14.)
The sole ground of rejection maintained by the Examiner is the rejection of
claims 39, 43, 47, and 49 under 35 U.S.C. § 103(a) as unpatentable over
Isoda (U.S. 5,593,525, issued Jan. 14, 1997) in view of Haines (U.S.
5,824,973, issued Oct. 20, 1998). (See Examiner’s Answer (“Ans.”), mailed
Feb. 7, 2008, pp. 3-6.)
Claim 39, the sole independent claim, recites a step of “forming a
resilient insulation blanket core of polymeric fibers.” Claim 39 further
recites a step of:
forming a surface layer on the first major surface of the
insulation blanket core by heating, melting, and consolidating the
polymeric fibers of the insulation blanket core at and adjacent the
first major surface of the insulation blanket core into the surface
layer.

The issue presented for our review is: has Appellant shown reversible
error in the Examiner’s finding that thermally bonding a controlled porosity
facing, as taught by Haines, to Isoda’s insulation blanket core would
inherently result in the recited step of “forming a surface layer . . . by
heating, melting, and consolidating”? We answer this question in the
affirmative for the following reasons.
The Specification describes forming a surface layer as follows:
When forming the low porosity or fluid impermeable
surface layer 24 on the first major surface of the insulation
blanket core 22 by heating melting and consolidating the fibers at
and adjacent the first major surface of the insulation blanket core
Appeal 2009-000621
Application 10/923,345

3
into a surface layer 24 and cooling the surface layer 24, the fibers
at and adjacent the first major surface of the insulation blanket
core 22 are heated by heat searing the major surface of the
insulation blanket, e.g. with a flame spray, a heated roller or a
heated plate. Heat searing the first major surface of the
insulation blanket core 22 causes the thermoplastic polymeric
fibers at and adjacent the first major surface of the insulation
blanket core 22 to shrink back from the heat, melt and
consolidate into a surface layer with a lower porosity, improved
durability and toughness.

(Spec. 11:7-17.)
The Examiner found that thermally bonding a controlled porosity
facing, as taught by Haines, to Isoda’s insulation blanket core would result
in the claim 39 step of “forming a surface layer . . . by heating, melting, and
consolidating” because
thermal bonding necessarily meets the heating and melting
claimed limitations for forming the surface from the fiber
blanket, which would further result in some degree of
consolidation and formation of a surface on Isoda’s fiber blanket
at its thermal bonding interface with Haines’s [sic] facing.

(Ans. 4-5.)
Where the Examiner establishes a reasonable assertion of inherency
and thereby evinces that a claimed process appears to be identical to a
process disclosed by the prior art and/or that the products claimed by the
applicant and disclosed in the prior art appear to be the same, the burden is
properly shifted to the applicant to show that they are not. See In re Spada,
911 F.2d 705, 708 (Fed. Cir. 1990); In re Best, 562 F.2d 1252, 1254-56
(CCPA 1977).
Appeal 2009-000621
Application 10/923,345

4
Appellant has persuasively argued that the Examiner’s findings are
not sufficient to establish that Haines’ thermal bonding method appears to be
substantially the same as the heat searing methods employed by Appellant
such that heating, melting and consolidation of the fibers in Isoda’s
insulation blanket core would necessarily occur, thereby forming a surface
layer as claimed.
Accordingly, we do not sustain the rejection of claims 39, 43, 47, and
49 under 35 U.S.C. § 103(a) as unpatentable over Isoda in view of Haines.

REVERSED

kmm

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