Ex Parte Fisler

Board of Patent Appeals and Interferences

Aug 24, 2011

11083326 (B.P.A.I. Aug. 24, 2011)

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.
11/083,326 03/18/2005 Diana Kim Fisler 7218 6595
29602 7590 08/24/2011
JOHNS MANVILLE
10100 WEST UTE AVENUE
PO BOX 625005
LITTLETON, CO 80162-5005
EXAMINER
JOHNSON, KEVIN M
ART UNIT PAPER NUMBER
1732
MAIL DATE DELIVERY MODE
08/24/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DIANA KIM FISLER
____________

Appeal 2009-015280
Application 11/083,326
Technology Center 1700
____________

Before BRADLEY R. GARRIS, JEFFREY T. SMITH, and
MARK NAGUMO, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-015280
Application 11/083,326

2
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 6-10 and 12. We have jurisdiction under 35 U.S.C. § 6.
Appellant’s invention relates to a method of manufacturing glass
fibers by rotary fiberization of a molten glass composition that has a High
Temperature Viscosity (HTV) of about 1675°F to about 1775°F and a
liquidus of at least 100°F below the HTV. According to the Specification,
the HTV is the temperature at which the molten glass has a viscosity of 10³
poises and the liquidus is the temperature at which the growth rate of
crystals within the glass becomes zero. (Spec. 1). Claim 6 is illustrative:
6. A method of manufacturing glass fibers by rotary
fiberization which comprises:
a) introducing a molten glass composition onto a rapidly
rotating spinner;
b) extruding the molten glass composition through
orifices in the spinner to obtain glass fibers;
c) attenuating the fibers, and;
d) collecting the fibers,
wherein the molten glass composition comprises 49% to
56% by weight SiO2, about 5% to 8% Al2O3, about 10% to 15%
by weight B2O3, about 8% to 11% by weight of a mixture of
CaO and MgO, and about 18% to 25% by weight of a mixture
of K2O and Na2O, the molten glass composition has an HTV of
about 1675°F to about 1775°F and a liquidus of at least 100°F
below the HTV.

Appeal 2009-015280
Application 11/083,326

3
Appellant requests review of the following rejection from the
Examiner’s final office action:

Claims 6-10 and 12 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Welsch (U.S. Patent No. 2,877,124 issued March 10,
1959).

OPINION
The dispositive issue on appeal is: Did the Examiner err in
determining that Welsch would have rendered obvious a method of
manufacturing glass fibers by rotary fiberization wherein the molten glass
composition that has a HTV of about 1675°F to about 1775°F as required by
the subject matter of independent claim 6? 1
After review of the respective positions provided by Appellant and the
Examiner, we agree with Appellant that the Examiner has identified
insufficient evidence in Welsch to establish that a person of ordinary skill in
the art would have been motivated to provide a glass composition with an
HTV temperature lower than the disclosed 1860-1985°F for use in a method
of manufacturing glass fibers by rotary fiberization as required by the
subject matter of independent claim 6.
The Examiner found that Welsch describes a method of
manufacturing glass fibers by rotary fiberization that differs from the
claimed invention and that the molten glass composition utilized in the
method has a HTV that exceeds the value required by the subject matter of
independent claim 6. (Ans. 3-4). The Examiner recognized that Welch does

1 We need not discuss the other claims.
Appeal 2009-015280
Application 11/083,326

4
not teach exemplary embodiments that meet the claim requirement.
However, the Examiner concluded:
It would have been obvious to one skilled in the art at the
time of the invention to optimize the glass composition taught
by Welch to achieve a HTV of 1700-1730°F. Such a
modification would have been motivated by the teaching in
Welch that lower operating temperatures reduce the erosion and
oxidation of the spinner used in the fiberization process
(column 4, lines 1-12).

(Id. 4).
Appellant argues that Welsch is directed to an invention that improves
the useful life by utilizing specific glass composition to provide low
operating temperatures. (App. Br. 4; Welsch, col., 4, ll. 1-8). Appellant
argues that Welch discloses that the required low operating temperatures are
made possible by a glass composition having an HTV of 1860-1985°F. (Id.)
Appellant also argues that Welsch does not suggest the manufacture of glass
fibers using a glass composition as required by the subject matter of
independent claim 6. (App. Br. 6). According to Appellant, the glass
composition utilized in the claimed invention differs from glass
compositions traditionally used in rotary fiberization methods due to the
lower silica and alumina content and relatively higher boron and soda
content. (Id. at 5-6; Spec. 4, ll. 3-5). Appellant argues that the glass
compositions exemplified in Welsch are representative of glass
compositions traditionally used in rotary fiberization methods. (Id. at 6).
Appellant further argues:
As a result, the HTVs of the Examples of Welsch are greater
than the presently claimed HTV of about 1675°F to about
1775°F. In fact, the HTV of all the example compositions in
Welsch are 1860°F or higher. Therefore, one following the
Appeal 2009-015280
Application 11/083,326

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disclosure of Welsch would be directed to compositions which
do not meet the presently claimed requirements, or achieve the
advantages thereof. There is no guidance in Welsch on how to
achieve same.

(Id.).
We do not find the Examiner's rejection is sustainable for the reasons
stated by Appellant, which are reproduced above. The Examiner’s rejection
and response to the argument presented in the Answer do not adequately
address the concerns raised by the Appellant outlined above. Welsch
exemplifies glass compositions that have HTV values greater than 1860°F
and produce low operating temperatures that would result in the extended
life of a glass manufacturing apparatus. The Examiner has not directed us to
evidence to support a determination that a person of ordinary skill in the art
would have sought lower HTV values than those expressly described in
Welsch.
For the foregoing reasons, and those presented by Appellant in the
Brief, the Examiner has not satisfied the initial burden of presenting a prima
facie case of obviousness. During examination, the Examiner bears the
initial burden of establishing a prima facie case of obviousness. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). The Examiner’s mere
conclusory statements are not sufficient to support the prima facie case of
obviousness. “[R]ejections on obviousness grounds cannot be sustained by
mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.” KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
For the foregoing reasons we reverse the Examiner’s stated rejection.
Appeal 2009-015280
Application 11/083,326

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ORDER
The appealed prior art rejection of claims 6- 10 and 12 under 35 USC
§ 103(a) is reversed.

REVERSED

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