Ex Parte FERNANDO et al

Patent Trial and Appeal Board

May 29, 2018

15198910 (P.T.A.B. May. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
15/198,910 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.P9571C 2383
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, KENNETH B. MILLER, and GENE JUNG
Appeal2017-008716
Application 15/198,910
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), Appellants2 appeal from the
Examiner's decision to reject claims 1-9 and 11under35 U.S.C. §103(a) as
1 In explaining our Decision, we cite to the Specification of June 30, 2016
("Spec."), Non-Final Office Action of August 18, 2016 ("Non-Final"),
Appeal Brief of January 22, 2017 ("Appeal Br."), Examiner's Answer of
March 22, 2017 ("Ans."), and Reply Brief of May 19, 2017 ("Reply Br.").
2 Appellants are the Applicants, Unifrax I LLC and Lamart Corporation,
which, according to the Appeal Brief, are the real parties in interest. Appeal
Br. 3.
Appeal2017-008716
Application 15/198,910
obvious over Tompkins3 in view ofRichardson4 and Fay, 5 and claims 10
and 12 as obvious over those references further in view of Garvey. 6 We
have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE and ENTER NEW GROUNDS OF REJECTION.
The claims are directed to a method of making a fire barrier laminate.
Claim 1 is illustrative:
1. A method of making a fire barrier laminate
compnsmg:
directly or indirectly coating at least one non-fibrous fire
barrier layer onto a first polymeric flame propagation resistant
film layer;
laminating the non-fibrous fire barrier layer with at least
one second film layer, wherein the second film layer is
proximate to the non-fibrous fire barrier layer; and
laminating at least one scrim layer with the fire barrier
laminate, wherein the at least one scrim layer is disposed: (i)
between the non-fibrous fire barrier layer and the first
polymeric flame propagation resistant film layer; and/or (ii)
between the non-fibrous fire barrier layer and the second film
layer; and/or (iii) proximate to the first polymeric flame
propagation resistant film layer opposite the non-fibrous fire
barrier layer; and/or (iv) proximate to the second film layer
opposite the non-fibrous fire barrier layer;
wherein the non-fibrous fire barrier layer comprises at
least one inorganic platelet material, at least one organic binder
3 Tompkins, WO 2009/052015 A2, published April 23, 2009.
4 Richardson et al., WO 2010/123771 Al, published Oct. 28, 2010
(hereinafter "Richardson").
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.
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Appeal2017-008716
Application 15/198,910
and/or at least one inorganic binder, and optionally at least one
functional filler;
wherein the non-fibrous fire barrier layer optionally
contains at least one water-repellant material, and/or the method
further comprises optionally coating and/or saturating the non-
fibrous fire barrier layer with at least one water-repellant
material; and
wherein the fire barrier laminate has a basis weight of
about 80 gsm to about 120 gsm.
Appeal Br. 15 (claims appendix).
OPINION
The Examiner's Rejections
Claim 1 is directed to a method of making a fire barrier laminate and
includes a step of directly or indirectly coating at least one non-fibrous fiber
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. But we agree with Appellants that such adhesive bonding of
already formed layers is not encompassed by claim 19. According to the
Specification, "[b ]y indirectly coating it is meant that the non-fibrous 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
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Appeal2017-008716
Application 15/198,910
requires an affirmative step of coating the fire barrier layer onto another
layer. Tompkins does not coat the second, fabric layer onto any other layer.
Instead, Tompkins forms the second, fabric layer into, for instance, a
nonwoven fabric and adhesively bonds that preformed layer with the first
layer 10 (first polymeric propagation resistant film layer).
Because Tompkins does not perform the coating step as required by
claim 1, Appellants have 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 1-9 and 11. Because the error is not
remedied in the Examiner's rejection of claims 10 and 12, we also do not
sustain that rejection.
New Grounds of Rejection
We enter the following new ground of rejections:
New Ground based on Obviousness
We reject claim 1under35 U.S.C. § 103(a) as obvious over
Richardson. 7
Richardson teaches or suggests the first three recited coating and
laminating steps of claim 1. Richardson discloses indirectly coating a non-
fibrous fire barrier layer (platelet layer), via a scrim, onto a first polymeric
flame propagation resistant film layer (moisture barrier layer with a UL 94
flame classification of V-0, which can be, e.g., polyimide, a layer material
used by Appellants (Spec. 8: 1---6)). Richardson 3:23-32; 4:3--4. Richardson
7 We leave it to the Examiner to determine the obviousness of the other
claims should there be further prosecution.
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Appeal2017-008716
Application 15/198,910
further discloses laminating the non-fibrous fire barrier layer (platelet layer)
with a second film layer 13. Richardson 1-2, Examples 1 and 2, and Fig. 1.
Because the scrim is positioned into the platelet layer either after the platelet
material has been coated onto the moisture barrier layer or while the platelet
material is being coated onto the moisture barrier layer (Richardson 3 :29-
32), the scrim would be laminated so that the scrim is disposed between the
non-fibrous fire barrier layer and the first polymeric flame propagation
resistant film layer or between the non-fibrous fire barrier layer and the
second film layer as required by claim 1.
Turning to the first "wherein" clause of claim 1, we note that this
clause requires the non-fibrous barrier layer contain "at least one organic
binder and/or at least one inorganic binder." Binder is not stated as optional.
Because the binder is not optional in claim 1, we interpret claim 1 as
requiring at least one of the organic or inorganic binders be present.
Richardson does not disclose including organic binder and/or
inorganic binder in the platelet fire barrier layer, but instead discloses using
100% platelets. Richardson 3: 19-32. Richardson, however, suggests that
the use of carrier material, such as resin or adhesive, was known in the art.
Id. (stating that the "inorganic platelet layer contains 100% platelets i.e.
there is no carrier material such as resin, adhesive, cloth or paper."). "The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results." KSR Int 'l Co.
v. Teleflex Inc., 550 U.S. 398, 416 (2007). The evidence supports a finding
that it would have been obvious to the ordinary artisan to add resin or
adhesive binder to the fire barrier layer of Richardson for their known and
predictable binding properties.
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Appeal2017-008716
Application 15/198,910
The last clause of claim 1 requires the fire barrier laminate have a
basis weight of about 80 gsm to about 120 gsm. Richardson does not
disclose a range of basis weight for the fire barrier laminate, but discloses
example laminates weighing 59.3 gsm and 69.5 gsm, respectively.
Richardson Examples 1 and 2. The laminates of Examples 1 and 2 do not
include a scrim layer, which typically adds 40 gsm of weight to the laminate.
Richardson 3 :28-29. Thus, Richardson suggests forming fire barrier
laminates having basis weights of 99 .3 and 109 .5 gsm, which are within the
basis weight range recited in claim 1 (about 80 to about 120 gsm).
New Ground based on Improper Dependency
We reject claims 4--6 under 35 U.S.C. § 112 i-f 4 as improperly
dependent.
Claim 1 recites that "the non-fibrous fire barrier layer comprises ... at
least one organic binder and/or at least one inorganic binder." Thus, claim 1
only requires one of the organic binder and inorganic binder be present.
Claim 4 attempts to further limit the organic binder, but the limitation is
meaningless because the organic binder need not be present when the
inorganic binder is present. Claim 5 attempts to further limit the inorganic
binder, but the limitation is likewise meaningless because the inorganic
binder need not be present when the organic binder is present.
With respect to claim 6, we note that this claim allows for the use of
100% platelet material and 0% organic binder and/or inorganic binder, but a
non-fibrous fire barrier layer with 100% platelet material and no binder is
not encompassed by claim 1. Claim 1 affirmatively requires organic and/or
inorganic binder be present. Thus, claim 6 does not further limit claim 1 and
is improperly dependent.
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Application 15/198,910
In summary:
1-9, 11 § 103(a)
10, 12 § 103(a)
Summa
New Grounds:
CONCLUSION
Tompkins,
Richardson, Fa
Tompkins,
Richardson, Fay,
Garve
1 § 103(a) Richardson
DECISION
1-9, 11
10, 12
1-12
The Examiner's decision is reversed and new grounds of rejection
entered.
TIME PERIOD FOR RESPONSE
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
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Appeal2017-008716
Application 15/198,910
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner ....
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record ....
REVERSED; 37 C.F.R. § 41.50(b)
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