Ex Parte Fernando et alDownload PDFPatent Trial and Appeal BoardMay 29, 201815199073 (P.T.A.B. May. 29, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 15/199,073 06/30/2016 23575 7590 05/29/2018 CURATOLO SIDOTI CO., LPA 24500 CENTER RIDGE ROAD, SUITE 280 CLEVELAND, OH 44145 FIRST NAMED INVENTOR Joseph A. FERNANDO 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 ATTORNEY DOCKET NO. CONFIRMATION NO. UNF.P9582A 1390 EXAMINER KHAN, TAHSEEN ART UNIT PAPER NUMBER 1781 MAILDATE DELIVERY MODE 05/29/2018 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 JOSEPH A. FERNANDO, CHAD E. GARVEY, ROBERT RIOUX, and KENNETH B. MILLER Appeal2017-008027 Application 15/199,073 Technology Center 1700 Before CATHERINE Q. TIMM, LILAN REN, and SHELDON M. McGEE, Administrative Patent Judges. TIMM, Administrative Patent Judge. DECISION ON APPEAL 1 STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner's decision to reject claims 1-11 and 13-27 under 35 U.S.C. 1 In explaining our Decision, we cite to the Specification of June 30, 2016 ("Spec."), the Non-Final Office Action of August 15, 2016 ("Non-Final"), the Appeal Brief of January 20, 2017 ("Appeal Br."), the Examiner's Answer of March 8, 2017 ("Ans."), and the Reply Brief of May 4, 2017 ("Reply Br."). 2 Appellant is the Applicant, Unifrax I LLC, which, according to the Appeal Brief, is the real party in interest. Appeal Br. 3. Appeal2017-008027 Application 15/199,073 § 103(a) as obvious over Tompkins3 in view ofWoerner4 and Fay, 5 and claims 12 and 28 as obvious over those references further in view of Garvey. 6 We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM-IN-PART. The claims are directed to a fire barrier laminate (see, e.g., claim 1) and a method of making a fire barrier laminate (see, e.g., claim 19). Appellant's fire barrier layer is intended to solve problems previously associated with the use of lightweight ceramic or inorganic papers, which tend to be fragile. Spec. 2: 15-18. As recited in claims 1 and 19, Appellant's fire barrier layer includes inorganic fibers, inorganic platelet material, and organic and/or inorganic binder. 7 Claims 1 and 19 require the fire barrier layer contain from about 2% to about 50% by weight inorganic fibers based on the total weight of the fire barrier layer. Claim 1 is illustrative: 3 Tompkins, WO 2009/052015 A2, published Apr. 23, 2009. 4 Woerner et al., EP 0 004 602 Al, published March 22, 1979 (Machine Translation) (hereinafter "Woerner"). 5 Fay et al., EP 1 134 479 A2, published Sept. 19, 2001 (hereinafter "Fay"). 6 Garvey, US 2008/0166937 Al, issued July 10, 2008. 7 Because claims 1 and 19 recite that the fire barrier layer comprises organic binder and/or inorganic binder without the word "optionally," we interpret claims 1 and 19 as requiring at least one of these binders be present. Claims 7, 8, and 24 recite a range including zero for the binders. Because claims 7, 8, and 24 allow for the exclusion of the binders that claims 1 and 19 require, these claims fail to meet the requirements of 35 U.S.C. § 112 i-f 4 and are improperly dependent. The improper dependency, however, does not impact our review because Appellant does not separately argue claims 7, 8, and 24. 2 Appeal2017-008027 Application 15/199,073 1. A fire barrier laminate comprising: at least one fire barrier layer directly or indirectly coated onto at least one first polymeric flame propagation resistant film layer; at least one second film layer proximate to the fire barrier layer opposite the first polymeric flame propagation resistant film layer; at least one scrim layer disposed: (i) between the fire barrier layer and the first polymeric flame propagation resistant film layer; and/or (ii) between the fire barrier layer and the second film layer; and/or (iii) proximate to the first polymeric flame propagation resistant film layer opposite the fire barrier layer; and/or (iv) proximate to the second film layer opposite the fire barrier layer; optionally, at least one water-repellant material incorporated into and/or applied to the fire barrier layer; optionally at least one adhesive layer adhering the fire barrier layer to the first polymeric flame propagation resistant film layer; and optionally at least one adhesive layer adhering the scrim layer to at least one of the fire barrier layer, the first polymeric flame propagation resistant film layer, or the second film layer; wherein the fire barrier layer comprises from about 2% to about 5 0% by weight inorganic fibers based on the total weight of the fire barrier layer, at least one inorganic platelet material, at least one organic binder and/or at least one inorganic binder, and optionally at least one functional filler. Appeal Br. 19 (claims appendix) (emphasis added). 3 Appeal2017-008027 Application 15/199,073 OPINION Obviousness of Claims 1-11and13-27 over Tompkins, Woerner, and Fay With regard to the rejection of claims 1-11 and 13-27 as obvious over Tompkins in view of Woerner and Fay, Appellant's arguments give rise to issues concerning the Examiner's rejection of claims 1, 13, 18, and 19. Appeal Br. 8-17. Thus, we focus on whether Appellant has identified a reversible error in the Examiner's rejection of those claims. Claim 1 The issue arising from the Examiner's rejection of claim 1 as obvious over the combination of Tompkins, Woerner, and Fay and Appellant's arguments against the rejection is: Has Appellant identified a reversible error in the Examiner's determination that it would have been obvious to those of ordinary skill in the art to use from about 2% to about 50% by weight inorganic fibers in the fire barrier layer of Tompkins? Appellant has not identified such an error. Tompkins discloses forming a fire barrier laminate, shown at 9 in Figure 1, that includes a first polymeric flame propagation resistant film layer (first layer 10) bonded by adhesive 12 to a fire barrier layer (second, fabric layer 14). Tompkins 6:25-7:3. There is no dispute that Tompkins teaches including inorganic fibers in the fire barrier layer (second, fabric layer 14), but fails to disclose a concentration range for the fibers. Compare Non-Final 4, with Appeal Br. 8. Appellant contends that, based on the disclosures of Tompkins, "a person of ordinary skill in the art is led to believe that including nonmetallic 4 Appeal2017-008027 Application 15/199,073 fibers in the fabric layer of Tompkins in an amount less than about 59% by weight, would render the fabric layer of Tompkins unsatisfactory for its intended purpose." Appeal Br. 10. As we stated above, there is no dispute that Tompkins does not explicitly disclose any concentration range for the non-metallic fiber of the second, fabric layer 14. Compare Non-Final 4, with Appeal Br. 8. Appellant derives a non-metallic fiber content of 59--80% for the second, fabric layers of Tompkins that contain platelets. Appeal Br. 8-9. Because Appellant's calculation is based on a flawed assumption, we do not find the argument persuasive. Specifically, Appellant calculates the 59--80% range for a second, fabric layer made up entirely of non-metallic fibers and platelets. Appeal Br. 8. But Tompkins discloses including other types of fibers, such as thermoplastic fibers, and other materials, such as metal oxide coatings and binders, and the concentrations of these other components would affect the concentration of inorganic fibers within the fire barrier layer (second, fabric layer). We review the relevant disclosures of Tompkins below. Tompkin's fire barrier layer (second, fabric layer 14) includes non- metallic fibers that may be inorganic. Tompkins 8:3-5, 8:22-24. The fibers may be formed into a nonwoven fabric by the wet-lay method. Tompkins 11: 19--25. A typical wet-lay method involves blending binder material, such as thermoplastic fibers, with the non-metallic fibers (chopped fibers and/or staple fibers) to suspend the fibers in water. Tompkins 11:29-12:10. A "slush" of the aqueous fibers is then typically cast onto a screen (for example, a papermaker), drained, blotted, and dried. Id. Thus, Tompkins 5 Appeal2017-008027 Application 15/199,073 discloses that the second, fabric layer may include thermoplastic fibers in addition to non-metallic inorganic fibers. Typically, the second fabric layer comprises at least 7 5 vol.% inorganic (ceramic oxide) fiber based on the total fiber volume of the second, fabric layer. Tompkins 13: 17-21. The second fabric layer may also include a metal oxide coating of discrete coated regions. Tompkins 13 :22-31. Optionally, inorganic oxide platelets (e.g., clay, vermiculite, mica, or talc platelets) may be secured to the second, fabric layer. Tompkins 17:26- 28. The inorganic oxide platelets are included in amount sufficient to reduce gas permeability and potential flame penetration through the second, fabric layer, but not enough to render the layer brittle and too heavy. Tompkins 18:3-15. Tompkins states that, typically, the amount is about 25 to about 70 wt.% based on the total weight of the layer excluding the weight of the platelets. Id. The platelets may be bonded to the second, fabric layer via a binder. Tompkins 18:16-20. Tompkins, therefore, teaches a second, fabric layer that not only includes inorganic fibers and may contain platelets, but may also contain up to 25 vol.% non-inorganic fibers, may contain metal oxide coating regions, and may contain binder for bonding the platelets to the fabric layer. Appellant's calculated 59-80% range for the inorganic oxide fibers of Tompkins does not take into account the non-inorganic fibers, coated regions, or the platelet-binding binder that may be present. Given that Tompkins does not specify the amount of non-metallic fibers, thermoplastic fibers, coating material, and platelet-binding binders to be used, the ordinary 6 Appeal2017-008027 Application 15/199,073 artisan would have needed to perform routine experimentation to obtain workable concentrations of inorganic oxide fibers in combination with, for instance, thermoplastic fibers used as binders, platelets for decreasing flame penetration, coating regions for strengthening, and binder for bonding the platelets to the fibers. Under the circumstances, a preponderance of the evidence supports a finding that the workable concentration would overlap the about 2% to about 50% by weight inorganic fiber concentration of claim 1. W oemer provides some evidence that mixtures of inorganic particles, such as vermiculite, inorganic fibers, such as glass fibers, and binder were known to result in fire resistant isolation material that swells to block the passage of fire and decreases the amount of toxic gas given off as compared to prior art materials. Woerner, Derwent Abs. Appellant has not identified a reversible error in the Examiner's determination that it would have been obvious to those of ordinary skill in the art to use from about 2% to about 50% by weight inorganic fibers in the fire barrier layer of Tompkins. Claim 13 Claim 13 depends from claim 1 and requires the fire barrier laminate have a basis weight of less than about 120 gsm. Tompkins discloses that "[i]n some exemplary embodiments, the flexible laminate sheet materials described herein have a weight up to 500 grams per square meter (in some embodiments, up 400, 350, 300, 250, 200, or even up to 150 grams per square meter[)]." Tompkins 22:7-9. The 7 Appeal2017-008027 Application 15/199,073 Examiner finds that substituting out the fibers for inorganic platelets would make the layer lighter. Ans. 10. Appellant contends the Examiner's finding regarding the weight of platelets relative to fibers is not based on evidence. Reply Br. 6. We do not find Appellant's argument persuasive. The range of up to 150 gsm disclosed by Tompkins includes lower weights, but it is not clear from the range itself whether it includes weights as low as 120 gsm. However, other teachings within Tompkins provide enlightenment. Tompkins desires a light weight laminate and uses lightweight materials. Tompkins 7:4--8 (first layer is light in weight), 8:7-8 (second, fabric layer is lightweight), 21: 1-8 (scrim layer is lightweight). Weight depends on material selections, layer thicknesses, and desired properties. Tompkins 7:23-26, 8:19-21. Tompkins forms five layer laminates with final aerial densities (weights) less than 120 gsm, i.e., of87.3 gsm, 97.6 gsm, and 98.8 gsm. Tompkins 36:2-29. After considering Tompkins as a whole, we determine that a preponderance of the evidence supports the Examiner's determination that those of ordinary skill in the art would have arrived at laminates with basis weights within the range of claim 13. Claim 18 Claim 18 depends from claim 14, which depends from claim 1. Claim 14 is directed to a thermal acoustic insulation system and claim 18 further limits the thermal acoustic insulation system to one capable of passing the flame propagation and bumthrough resistance test protocols of 14 C.F .R. § 25.856(a) and (b ), Appendix F, Parts VI and VII. 8 Appeal2017-008027 Application 15/199,073 There is no dispute that Tompkins discloses that the laminate sheet material disclosed in that reference passes a Flammability Test and Flame Propagation Test based on 14 C.F.R. § 25.856(a) and a Burnthrough test based on 14 C.F.R. § 25.856(b). Compare Non-Final 7, with Appeal Br. 16- 17; see also Tompkins 24: 17-22, 28:28-29:5, 33:7-10. Appellant contends that "modifying the fabric layer of Tompkins to reduce its fiber content would render the material of Tompkins unsatisfactory for its intended purpose," and "if the modification were made, it is unclear what effect it would have on the fabric layer and/or laminate of Tompkins." Appeal Br. 16-17. But this argument ignores the skill of the ordinary artisan. "A person of ordinary skill is also a person of ordinary creativity, not an automaton." KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). As we stated above, Thompkins is silent on the amount of inorganic fibers relative to the inorganic oxide platelets in the second, fabric layer (fire barrier layer). Both inorganic fibers and inorganic oxide platelets are fire resistant materials. Tompkins and Woerner provide guidance concerning the effects of these two types of materials in fire resistant materials and Appellant has not persuaded us that those of ordinary skill in the art would not have been capable of determining the workable or optimal amounts of each to use to achieve the flame propagation and burnthrough resistance required by 14 C.F.R. § 25.856(a) and (b), Appendix F, Parts VI and VII, which are standards that must be met according to the teachings of Tompkins. 9 Appeal2017-008027 Application 15/199,073 Claim 19 Claim 19 is directed to a method of making a fire barrier laminate and includes a step of "directly or indirectly coating at least one fire barrier layer onto a first polymeric flame propagation resistant film layer." The Examiner finds that Tompkins discloses that second, fabric layer 14 (fire barrier layer) is indirectly coated with the first layer 10 (first polymeric flame propagation resistant film layer). Non-Final 3. According to the Examiner, this is because Tompkins teaches using a layer of adhesive to bond the layers together and the adhesive may be applied by coating. Ans. 10. We agree with Appellant that adhesive bonding of already formed layers is not an indirect coating step as required by claim 19. The Specification discloses directly or indirectly coating as, for instance, coating a paste or slurry of the fire barrier layer materials (by, e.g., roll or reverse roll coating, gravure or reverse gravure coating, transfer coating, spray coating, brush coating, dip coating, tape casting, doctor blading, slot-die coating or deposition coating) onto the polymeric flame propagation resistant film layer and allowing it to dry (direct coating) or coating the fire barrier layer materials onto an intermediate layer, such as a scrim, attached to the flame propagation resistant layer (indirect coating). Spec. 3: 13-17 (defining indirect coating); 10:24--29 (discussing methods of coating); 12:15-21 (describing indirect coating); 13:15-25 (describing coating as coating a paste or slurry onto the polymeric flame propagation resistant film layer). The Specification restricts the meaning of "indirectly coating" such that it excludes laminating an already formed fire barrier layer to a first 10 Appeal2017-008027 Application 15/199,073 polymeric propagation resistant film layer with adhesive. According to the Specification, "[b ]y indirectly coating it is meant that the fire barrier layer may be coated onto an intermediate layer, such as a scrim, wherein the intermediate layer is engaged with the first polymeric flame propagation resistant film layer." Spec. 3: 13-15. Thus, indirect coating requires an affirmative step of coating the fire barrier layer onto another layer of the laminate. Tompkins does not coat the second, fabric layer onto any other layer: Instead, Tompkins forms the second, fabric layer (fire barrier layer) into, for instance, a nonwoven fabric and adhesively bonds that preformed layer with the first layer 10 (first polymeric propagation resistant film layer). Tompkin's laminating process is not an indirect coating step. Appellant has identified a reversible error in the Examiner's finding that Tompkins discloses indirectly coating a fire barrier onto a first polymeric flame propagation resistant film layer. Thus, we do not sustain the Examiner's rejection of claims 19-27. Obviousness of Claims 12 and 28 over Tompkins, Woerner, Fay, and Garvey Appellant does not identify any issue over and above those addressed above. We sustain the rejection of claim 12 for the reasons we discussed in sustaining the rejection of claim 1. Claim 28 ultimately depends from claim 19. We do not sustain the rejection of claim 2 8 for the reasons we discussed in not sustaining the rejection of claim 19. The Examiner's reliance on Garvey does not cure the deficiency. 11 Appeal2017-008027 Application 15/199,073 In summary: 1-11 13- ' § 103(a) 27 12,28 § 103(a) Summar CONCLUSION Tompkins, 1-11 13-18 ' Woerner, Fay Tompkins, 12 Woerner, Fay, Garvey 1-18 DECISION The Examiner's decision is affirmed-in-part. TIME PERIOD FOR RESPONSE 19-27 28 19-28 No time period for taking any subsequent action in connection with this appeal maybe extended under 37 C.F.R. § 1.136(a)(l). AFFIRMED-IN-PART 12 Copy with citationCopy as parenthetical citation