Ex Parte Fellinger

Patent Trial and Appeal Board

Jun 30, 2016

11486668 (P.T.A.B. Jun. 30, 2016)

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.
11/486,668 07/14/2006 Thomas John Fellinger 7321-3 CIP 3695
29602 7590 07/01/2016
JOHNS MANVILLE
10100 WEST UTE AVENUE
PO BOX 625005
LITTLETON, CO 80162-5005
EXAMINER
WYROZEBSKI LEE, KATARZYNA I
ART UNIT PAPER NUMBER
1789
MAIL DATE DELIVERY MODE
07/01/2016 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 THOMAS JOHN FELLINGER
____________

Appeal 2013-004473
Application 11/486,668
Technology Center 1700
____________

Before CHUNG K. PAK, BEVERLY A. FRANKLIN, and JEFFREY W.
ABRAHAM, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL

Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
decision rejecting claims 11–19. We have jurisdiction over the appeal under
35 U.S.C. § 6(b).

Appeal 2013-004473
Application 11/486,668

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STATEMENT OF THE CASE
Claim 11 is illustrative of Appellant’s subject matter on appeal and is
set forth below:
11. An insulation product for spraying into open cavities having
two frame members and a back wall comprising fibrous nodules comprising
glass fibers having an average fiber diameter of less than 3 microns and an
effective amount of fibrous material having a melting point that is higher
than the melting point of the glass fibers and in a substantially uniform
distribution with or in the glass fiber nodules to effectively reduce the rate of
heat transfer through the nodular insulation material, wherein the maximum
diameter of the fibrous nodules is 0.75 inch and at least about 90 percent of
the fibrous nodules have a maximum dimension of about one-half inch, and
wherein the fibrous nodules are coated with a solution comprising water and
a water soluble binder, wherein the moisture content of the fibrous nodules
is less than about 10 wt. percent, the binder solids content of the solution is
in the range of 10-50 volume percent of the solution and the solution is
present in such an amount that the added binder content of the nodules,
added by the binder solution coating on the nodules, is in the range of about
2 to about 6 wt. percent in the dried insulation product and wherein the
weight ratio of the fibrous material to the glass fibers present in the
insulation is from about 30:70 to about 70:30, based on the weight of the
insulation, producing a fire rating in the insulation product of at least one
hour under the standard set forth in ASTM E119-05a.
The Examiner relies on the following prior art references as evidence
of unpatentability:
Musz US 4,134,242 Jan. 16, 1979
Babbitt US 5,624,742 Apr. 29, 1997
Romes US 5,641,368 Jun. 24, 1997
Landin US 6,153,674 Nov. 28, 2000
Chen US 6,884,849 Apr. 26, 2005
Owens Coming Low Density Fiber Glass Insulation MSDS (2002) (hereafter
“Owens Corning MSDS”).
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Johns Manville MSDS No. 1050-3.1 (1997) (hereafter “Johns Manville
MSDS”).
Rock Wool Manufacturing Company MSDS (2003) (hereafter “Rock Wool
Manufacturing Company MSDS”).

THE REJECTIONS

1. Claims 11–16 and 19 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Romes in view of Musz and Babbitt, and further in view
of Owens Corning MSDS, Johns Manville MSDS, and Rock Wool
Manufacturing Company MSDS (wherein the MSDSs are evidentiary
materials that are cited to show the state of the art).
2. Claim 17 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Romes in view of Musz and Babbitt, further in view of Owens Corning
MSDS, Johns Manville MSDS, and Rock Wool Manufacturing Company
MSDS (wherein the MSDSs are evidentiary materials that are cited to show
the state of the art), as applied above to claims 11–16 and 19, and further in
view of Landin.
3. Claim 18 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Romes in view of Musz and Babbitt, further in view of Owens Corning
MSDS, Johns Manville MSDS, and Rock Wool Manufacturing Company
MSDS, (wherein the MSDSs are evidentiary materials that are cited to show
the state of the art), as applied above to claims 11–16 and 19, and further in
view of Chen.

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ANALYSIS

We affirm each rejection based upon the Examiner’s findings and
reasoning as stated in the record, and add the following.
We select claims 11 and 17 as representative of all the claims on
appeal, based upon Appellant’s presented arguments. 37 C.F.R. § 41.37(c)
(1) (iv) (2014).

Rejection 1
At dispute in this rejection is whether the applied art suggests the
claimed subject matter, particularly with respect to certain argued limitations
of claim 11, identified hereafter.
We refer to pages 2–9 and, to the Examiner’s “Response to
Argument” section of the Answer, regarding the Examiner’s position for
Rejection 1.
One aspect of Appellant’s position is that the applied art would not
have led one skilled in the art to a wet fibrous insulation product coated with
a binder mixture/solution having a solids content as high as 10–50 vol. %,
for the reasons set forth on page 11 of the Appeal Brief. Therein, Appellant
explains:
Romes teaches spray on glass fiber insulation pieces coated with
water or a liquid adhesive, col. 5, lines 49, as the pieces are enroute to
an open cavity, however Romes teaches, and does not reasonably
suggest, the high binder solids content of the coating, the size of the
pieces, nodules, or the average fiber diameter of the insulation product
claimed here. Romes further teaches in col. 7, lines 51-58, that the
first step in preparing the binder coating for the fibrous pieces is to
mix one part of the binder agent, see col. 6, lines 48-51, a water based
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organic resin adhesive concentrate (col. 7, line 56-58). The
concentrate had a resin solids content of 45-50%, but note that Romes
never defines the % as either vol. % or wt. %). However, Romes
teaches diluting the concentrate before use with 8, 16 or 32 parts of
tepid water to produce the coating liquid. These liquid binder
mixtures would have maximum binder solids contents of about 51/8
or 6.4%, 51/16 or 3.2% and 51/32 or 1.6%, i.e. Romes actually uses a
coating mixture in Examples 1-12, etc. of 5%, see col. 7, lines 56-58.
Thus, Romes actually teaches away from the applicant's claimed
solids content range of 10-50 vol.% of the coating solution on the
nodules by teaching an upper limit of 5% solids in the spray mixture,
but teaching that mixtures of 3.2% solids and 1.6% solids could also
be used, and because Romes discourages using a spray mixture
containing a ratio of the resin concentrate having 45-50% solids to
water of greater than 1:8 by simply saying, “using more adhesive is
possible, but it would increase the cost of the product”, see col. 11,
lines 18-19. Thus one of ordinary skill in the art would not have been
led to a wet fibrous insulation product coated with a binder
mixture/solution having a solids content as high as the 10-50 vol. % of
the claimed invention.
Appellant also argues that Romes does not recognize or teach that
using a much higher binder solids content in the coating (as claimed by
Appellant) produces tackier pieces causing them to stick better, for the
reasons stated in paragraph 2, on page 11, of the Appeal Brief.
In response, the Examiner states that the limitations argued by
Appellant are product–by-process limitations, and it is the claimed dried
binder content of from about 2 to about 6 wt. % that is relevant, and Romes
teaches this dried binder content. Ans. 14–15. Implicit in the Examiner’s
stated position is that once the claimed and Romes’ insulation products are
dried (water removed) to have the moisture content of 0 to 10% as recited in
claim 11, the relative amounts of binder and water in the insulation product
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of Romes are the same as the amounts of the binder and water (moisture)
included in the insulation product claimed by Appellants. In re Thorpe, 777
F.2d 695, 697 (Fed. Cir. 1985) (“If the product in a product-by-process
claim is the same as or obvious from a product of the prior art, the claim is
unpatentable even though the prior product was made by a different
process.”)In any event, notwithstanding Appellants’ arguments to the
contrary, Romes teaches using binder solids to promote adhesion, thus
implying that the amount of the binder solids used must be adequate or
appropriate for promoting adhesion. Romes, col. 5, l. 48 and col. 6, ll. 48–
51. Thus, from our perspective, one of ordinary skill in the art would have
been led to optimize the amount of a binder used in water to form a coating
solution for given amounts and/or sizes of fibrous nodules, with a reasonable
expectation of promoting the binding or adhesive capability of the coating
solution. 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.”); see also In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003)
(“The normal desire of scientists or artisans to improve upon what is already
generally known provides the motivation to determine where in a disclosed
set of percentage ranges is the optimum combination of percentages.”).As
such, we are unpersuaded by Appellant’s argument in this regard.
Appellant also refers to column 11, lines 18–23 of Romes, and states
that the teachings therein would have discouraged one skilled in the art from
using more adhesive due to the associated increase in costs. Appeal Br. 11.
However, it is well settled that merely because “[a] combination would not
be made by businessmen for economic reasons does not mean that persons
skilled in the art would not make the combination.” In re Farrenkopf, 713
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F.2d 714, 718 (Fed. Cir. 1983). Moreover, as indicated supra, the amount of
the adhesive used in a solution is dependent on the amount and/or size of
fibrous nodules used to fill a cavity.
Additionally, Appellant focuses on Examples 1–12 of Romes
(discussed, supra). Appeal Br. 11. However, we note that “all disclosure of
the prior art, including unpreferred embodiments, must be considered”. In
re Lamberti, 545 F.2d 747, 750 (CCPA 1976). Also, the prior art is not
limited to the applied references, but includes both the specialized
understanding of one of ordinary skill in the art as well as the common
understanding of the layman. See, e.g., Dann v. Johnston, 425 U.S. 219, 229
(1976) and Leapfrog Enterprises, Inc. v. Fisher-Price, Inc., 485 F.3d 1157,
1161 (Fed. Cir. 2007). In the instant case, the Examiner has sufficiently
directed us to evidence in the record and to rational underpinnings in support
of the obviousness rejection. Ans. 2–9, 14–15.
Appellant also argues that the applied art does not suggest use of
fibrous nodules having a maximum dimension of 3/4 inch, and at least about
90 percent of the nodules having a maximum dimension of 1/2 inch, for the
reasons stated on pages 14–15 of the Appeal Brief. On the other hand, it is
the Examiner’s positon that the collective teachings of the applied art
suggest these limitations for the reasons set forth on pages 3–6 of the
Answer, and on pages 19–22 of the Answer. Therein, the Examiner
adequately explains how the collective teachings suggest these claim
limitations. We agree with the Examiner that absent evidence of criticality,
selection of dimension of the fibrous nodules and percentage of fibrous
nodules having a selected dimension is prima facie obvious for the reasons
provided by the Examiner in the record. In re Williams, at 438. In re
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Peterson, 315 F.3d at 1330. As such, we are unpersuaded by Appellant’s
arguments in this regard.
In view of the above, we affirm Rejection 1.

Rejection 2
Claim 17 recites that the glass fibers recited in claim 11 have an
average fiber diameter of 2.5 microns or less and the binder solids content of
the solution is in the range of from 10–20 volume percent of the solution.
The Examiner’s position for this rejection is set forth on pages 11–12
and 17–18 of the Answer. Appellants’ position is set forth on pages 12–13
of the Appeal Brief. We agree with the Examiner’s position that “it would
have been obvious to modify the collective teachings in the prior art by
selecting fibers of diameter smaller than the about 3.5 microns taught in the
prior art,” especially in view of the Examiner’s finding that fiber glass wool
having fibers with a diameter of less than 3 microns was known in the art.
Ans. 11–12 (citing Owens Corning MSDS), Indeed, our reviewing court
has held that a prima facie case of obviousness exists when the claimed
range and the prior art range do not overlap but are close enough that one
skilled in the art would have expected them to have the same properties.
Titanium Metals Corp. v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779
(Fed. Cir. 1985). Also, as quoted supra, “[i]t is a settled principle of law
that a mere carrying forward of an original patented conception involving
only change of form, proportions, or degree, or the substitution of
equivalents doing the same thing as the original invention, by substantially
the same means, is not such an invention as will sustain a patent, even
though the changes of the kind may produce better results than prior
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inventions.” In re Williams, 36 F.2d 436, 438 (CCPA 1929). See also In re
Peterson, 315 F.3d at1330. Absent evidence of criticality, as in the instant
case, we agree with the Examiner’s stated position in the record.
On pages 15–17 of the Appeal Brief, Appellant submits that the
Examiner improperly used Appellant’s disclosure as a road map in
formulating the rejection for the reason stated therein. We are in agreement
with the Examiner’s stated reply made on pages 22–23 of the Answer, and
are unpersuaded by such argument.
In view of the above, we affirm Rejection 2.
Rejection 3
Appellant does not specifically address the rejection of claim 18,
including the additional secondary reference of Chen that is applied in
Rejection 3. We thus affirm Rejection 3 for similar reasons that we affirmed
Rejections 1 and 2.

DECISION
Each rejection is affirmed.

TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a).

ORDER
AFFIRMED