Ex Parte Fay

Patent Trial and Appeal Board

Dec 23, 2013

11489177 (P.T.A.B. Dec. 23, 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.
11/489,177 07/19/2006 Ralph Michael Fay 7631 9488
29602 7590 12/24/2013
JOHNS MANVILLE
10100 WEST UTE AVENUE
PO BOX 625005
LITTLETON, CO 80162-5005
EXAMINER
SYKES, ALTREV C
ART UNIT PAPER NUMBER
1786
MAIL DATE DELIVERY MODE
12/24/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD

____________

Ex parte RALPH MICHAEL FAY
__________

Appeal 2012-010069
Application 11/489,177
Technology Center 1700
____________

Before ROMULO H. DELMENDO, JEFFREY T. SMITH, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 the final rejection of claims
1-45. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
We AFFIRM.
Appellant’s invention is directed to methods of making fibrous
thermal and acoustic insulation produced by spray application (claims 36
and 40), and the insulation product itself (claims 1 and 19) (Spec. 1:4-6).

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Application 11/489,177

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Claims 19 and 36 are illustrative:
19. Dry, loose nodules of inorganic fibers having an average diameter
of about 2.5 microns or less, the major portion, by weight, of said nodules
being no more than about 0.5 inch in diameter, comprising a coating of
about 2 to about 10 wt. percent of water, or other liquid, reactivatable
adhesive predominately on the outer surface of said nodules, said adhesive
coating being dry.

36. A method of insulating cavities in a building comprising blowing
pieces of dry fibrous insulation comprising a water reactivatable adhesive
through a hose while suspended at the end of the hose, or in a nozzle at the
end of the hose, and directing the wetted pieces of fibrous insulation into a
building cavity to form just installed insulation, the improvement
comprising;
a) feeding loose, dry nodules comprising fibrous insulation, said
dry nodules having a coating of dry, water-reactivatable
adhesive bonded to fibers on the outer surface of the nodules,
said dry nodules further comprising inorganic fibers having an
average diameter of about 2.5 microns or less, the major
portion, by weight, of the nodules having a coating of dry,
water-reactivatable adhesive having been made by first
spraying a liquid binder onto dry fibrous nodules while they
were suspended in air followed by drying or cooling the coated
nodules in a loose condition to dry to solidify the liquid
adhesive coating on the fibrous nodules, the adhesive being
predominately on the outer surface of the nodules, into the
hose, and

b) wherein said liquid comprises water sprayed onto said dry,
adhesive coated nodules in an amount such that water-activated
adhesive on the outer surface of the nodules produced a very
tacky surface on the nodules, the moisture content of the just
installed insulation is less than about 12 wt. percent and
wherein the water-reactivatable adhesive coating on the outer
surface of said dry nodules is present in an amount of about 2 to
about 10 wt. percent of said dry nodules.

Appellant appeals the following rejections:
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Application 11/489,177

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1. Claims 1-18 and 36-39 are rejected under 35 U.S.C. § 103(a), as being
unpatentable over Wagner (US 2006/0000155 A1, published Jan. 5,
2006) in view of Yang et al. (US 2003/0087576 A1, published May 8,
2003) and Fellinger et al. (WO 2005/062930 A2, published Jul. 14,
2005).
2. Claims 19-30, 40, 42, and 44 are rejected under 35 U.S.C. § 103(a), as
being unpatentable over Fellinger in view of Wagner.
3. Claims 41, 43, and 45 are rejected under 35 U.S.C. § 103(a), as being
unpatentable over Fellinger in view of Wagner and Musz et al. (US
4,134,242, issued Jan. 16, 1979).

Appellant’s arguments focus primarily on subject matter common to
claims 19, 36, and 40 (App. Br. 7-14). We select claims 19 and 36 as
representative of the group. The rejections of the remaining claims will
stand or fall with our analysis of claims 19 and 36.

ISSUES
1. Did the Examiner reversibly err in concluding that the combined
teachings of Wagner and Yang would have suggested drying liquid
adhesive applied to the insulation nodules while the nodules are
suspended in air prior to compressing and packaging the insulation?
We decide this issue in the negative.
2. Did the Examiner reversibly err in concluding that the combined
teachings of Fellinger and Wagner would have suggested dry, loose
nodules of inorganic fibers having a coating of water or other liquid,
reactivatable adhesive predominately on the outer surface of said
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Application 11/489,177

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nodules with the adhesive coating being dry as recited in claim 19?
We decide this issue in the negative.

FINDINGS OF FACT AND ANALYSES
Issue (1): Claim 36
The Examiner’s findings and conclusions are located on pages 5-8 of
the Answer. The Examiner finds that Wagner teaches most of the steps
recited in claim 36, except for, inter alia, the step of spraying a liquid binder
onto dry fibrous nodules while they are suspended in air followed by drying
or cooling the coated nodules in a loose condition to dry or solidify the
liquid adhesive coating on the fibrous nodules (Ans. 5-6). The Examiner
finds that Wagner teaches that the adhesive mixture can be sprayed or
otherwise mixed with the loose fill (Ans. 6-7). The Examiner finds that
Yang discloses a known method of combining a liquid mixture comprising
an adhesive with dry nodules involves spraying the adhesive mixture onto
the loose fill and preferably air drying before the loose fill is compressed
(Ans. 7). The Examiner concludes that it would have been obvious to spray
the nodules with the binder mixture while suspended in air since Yang
teaches that air drying is preferred (Ans. 7).
Appellant argues that Yang does not teach that the loose fill is air
dried or cooled, in a loose condition prior to compression of the loose fill
mixture (App. Br. 11). Appellant contends that Yang’s reference to
“preferably air drying” refers to the nature of the binder, not that the loose
fill is air dried prior to compressing and packaging. Id. Appellant argues
that Yang’s Figure 2 and Figure 3 embodiments show that the loose
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fill/binder mixture is sent directly to a compressor without drying the
insulation nodules in a loose condition (App. Br. 11).
Wagner teaches that a dry adhesive may be sprayed onto or mixed
with loose fill insulation before compressing to package the loose fill
insulation (para. [0018]). Wagner teaches that the binder is activated at the
time of installation by spraying the insulation with water. Id. In other
words, Wagner teaches that a binder coated insulation nodules should be dry
before compressing to package the insulation.
Yang teaches applying a liquid binder to loose fill insulation prior to
compressing the insulation (para. [0029]). Though Appellant contends that
Yang’s Figures 2 and 3 fail to show drying the binder-coated insulation
nodules before compressing, such argument attacks the references
individually instead of addressing what the combined teachings of Wagner
and Yang would have suggested to one of ordinary skill in the art. In re
Keller, 642 F.2d 413, 425 (CCPA 1981). In the present case, the combined
teachings of Wagner and Yang would have suggested coating the insulation
nodules with a binder followed by drying of the coated nodules in a
suspended air medium prior to compressing the nodules into a package.
Such a drying step would have been obvious to the ordinarily skilled artisan
as compressing immediately the wet binder-coated nodules would have
resulted in having the insulation bind together in the package as a lump. See
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“The [obviousness]
analysis need not seek out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art would employ.”).

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Issue (2): Claim 19
Appellant argues that Fellinger and Wagner fail to teach dry, loose
nodules of inorganic fiber having a dry coating of a water, or other liquid,
reactivatable adhesive predominately on the outer surface of the nodules
(App. Br. 12).
Wagner’s teachings are noted supra. Fellinger teaches coating
nodules with a liquid or powdered adhesive prior to application of the
nodules to the substrate (page 10, ll. 13-22). Fellinger teaches that the
binder adheres the nodules to each other and the substrate surface to prevent
settling, slumping or collapsing of the insulation (page 10, ll. 24-28).
The combined teachings of Fellinger and Wagner would have
suggested forming dry, loose nodules of inorganic fibers having a dry
coating of water, or other liquid, reactivatable adhesive predominately on the
outer surface of the nodules. Fellinger and Wagner both teach forming
binder-coated nodules. Fellinger teaches that the binder is water-soluble
(page 10, ll. 28-29). Accordingly, it would have been obvious to form a dry
coating of water reactivatable adhesive binder on loose nodules of inorganic
fibers in light of Fellinger’s and Wagner’s teachings.

With respect to the rejections, Appellant further argues that Romes
(U.S. Patent 5,641,368, issued Jun. 24, 1997) establishes that one of ordinary
skill in the art would not have reasonably expected the tackiness of the
claimed loose nodules after being sprayed with water and just entering the
building cavity to be the same as Wagner, Yang, or Fellinger (App. Br. 12).
Appellant contends that the tackiness of the claimed nodules is superior to
the tackiness of the wet nodules of the prior art (App. Br. 13). Appellants
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contend that the dry binder coating of the claimed nodules is essentially 100
percent binder solids which provides a very tacky coating as compared to the
binder coatings of Wagner, Yang, and Fellinger (App. Br. 13).
As noted by the Examiner, Appellant’s arguments are not persuasive
as they are not substantiated by any credible evidence and the arguments are
directed to unclaimed features (Ans. 23). The claims do not recite binder
solids in the dry coating as argued by Appellant. No comparison has been
provided by Appellant of the prior art adhesive coatings to the claimed
adhesive coating in terms of tackiness. Appellant’s arguments regarding
Romes’ teachings about the particular coating employed by Romes are not
particularly relevant to the coating employed by Wagner, Yang, and
Fellinger.
On this record, we find that one of ordinary skill in the art would have
had a reasonable expectation that wetting the dry coating of the prior art
nodules would have resulted in a tacky surface that adheres the nodules to
one another and to the substrate. Indeed, Wagner, Yang, and Fellinger each
teach that the binder adheres the nodules together and the substrate (Wagner,
para. [0018]; Yang para. [0029], Fellinger 10:24-26). Fellinger further
teaches that the binder provides “sufficient adhesion to reduce or prevent
settling, collapsing, or slumping of the installed insulation” (Fellinger 10:26-
28). In our view, the prior art disclosure provides a reasonable expectation
that the dry coat on the fibers of the nodule would have successfully bound
the nodules together and prevent slumping of the insulation.
For the above reasons, we affirm the Examiner’s § 103 rejections of
record.

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Application 11/489,177

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DECISION
The Examiner’s decision is affirmed.
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).

ORDER
AFFIRMED

cdc