Ex Parte Hasket et al

Patent Trial and Appeal Board

Dec 23, 2016

13129002 (P.T.A.B. Dec. 23, 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.
13/129,002 08/01/2011 Thomas E. Hasket 64769US005 5126
32692 7590 12/28/2016
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
KARLS, SHAY LYNN
ART UNIT PAPER NUMBER
3723
NOTIFICATION DATE DELIVERY MODE
12/28/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS E. HASKET, SHRIDHAR B. SHINDE, and
ABHIJEET A. SAUNGIKAR
Appeal 2015-003026
Application 13/129,002
Technology Center 3700
Before EDWARD A. BROWN, BRANDON J. WARNER, and
MICHAEL L. WOODS, Administrative Patent Judges.
WOODS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Thomas E. Hasket et al. (“Appellants”) appeal under 35 U.S.C. § 134
from the Examiner’s final decision rejecting claims 13—24. Appeal Br. 1.
We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
SUMMARY OF THE DECISION
We REVERSE
Appeal 2015-003026
Application 13/129,002
CLAIMED SUBJECT MATTER
Appellants’ invention relates to “an open and lofty nonwoven
cleaning article that comprises natural fibers.” Spec. 1. Claims 13 and 21
are independent and claim 13 is reproduced below, with emphasis added to a
particular limitation at issue in this appeal.
13. A scouring material comprising:
a three dimensional nonwoven web of entangled fibers
comprising natural vegetable fibers and synthetic fibers;
wherein 40 to 80% wt. of the fibers are natural vegetable
fibers',
wherein the synthetic fibers comprise at least first
synthetic fibers having a first melting point and second synthetic
fibers having a second melting point that is higher than the first
melting point;
wherein the first synthetic fibers entirely melt and coalesce
at mutual contact point of the natural fibers and second synthetic
fibers to bond the fibers together and to create voids;
wherein the bonded web has a maximum density of 60
kg/m3.
Appeal Br. 12 (emphasis added) (Claims App.).
THE REJECTIONS
I. Claims 13—21, 23, and 24 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Birch (US 5,458,962, issued Oct. 17, 1995), Nunn et al.
(US 7,585,390 B2, issued Sept. 8, 2009, hereinafter “Nunn”), and Martin-
Rivera et al. (US 2007/0026754 Al, published Feb. 1, 2007, hereinafter
“Martin-Rivera”). Final Act. 2.
II. Claim 22 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Birch, Nunn, Martin-Rivera, and Spittle (US 6,360,478 Bl, issued Mar.
26,2002). Final Act. 4.
2
Appeal 2015-003026
Application 13/129,002
ANALYSIS
Rejection I: Claims 13—21, 23, and 24
In rejecting the claims, the Examiner relies on Birch’s scouring
material with a nonwoven web having natural vegetable fibers, a first
synthetic fiber, and a second synthetic fiber. Final Act. 2—3 (citations
omitted). The Examiner cites to Birch’s teaching that its “natural vegetable
fiber[s]” compose between “0-30% weight” of the material. Id. at 2 (citing
Birch, col. 13,11. 21—27).
In satisfying the claimed limitation “wherein 40 to 80% wt. of the
fibers are natural vegetable fibers,” the Examiner relies on Nunn’s teaching
of “a fibrous web comprising natural and synthetic fibers [where] the natural
fibers are 50% weight.” Id. at 4 (citing Nunn, col. 7,11. 3—11). In combining
Birch with Nunn, the Examiner reasons that it would have been obvious to
increase the Birch material’s natural fiber weight percentage, as taught by
Nunn, “to create a pad that is tough and durable.” Id. (emphasis added).
The Examiner further reasons that a person of ordinary skill in the art
“would by routine experimentation find the optimum weight... to optimize
performance of the pad.” Id. (emphasis added).
In contesting the rejection, Appellants disagree that it would have
been obvious to increase Birch’s natural fiber composition, as taught by
Nunn, “to create a pad that is tough and durable.” Appeal Br. 7. In support
of their argument, Appellants point out that Birch only discloses natural
fibers “from about 0 to about 30 weight percent,” and that nothing in “Birch
would suggest going beyond this specified amount.” Id. (citing Birch, col.
13,11. 26—27). Appellants further argue that Examiner’s finding that
“natural fibers are known to be tough and durable” is in error, as Nunn
3
Appeal 2015-003026
Application 13/129,002
explicitly discloses that “[i]n general, synthetic fibers are stronger, more
uniform, more flexible, and less compatible with water than natural fibers.”
Reply Br. 3 (citing Nunn, col. 7,1. 66—col. 8,1. 1).
Appellants’ argument is persuasive, as the Examiner’s reasoning for
modifying Birch lacks the rational underpinnings needed to support the legal
conclusion of obviousness. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007) (Explaining that there must be some articulated reasoning with
some rational underpinning to support the legal conclusion of obviousness.).
Although the Examiner is correct in finding that Birch discloses a
non woven web with between 0—30% weight natural fibers (Birch, col. 13,11.
21—27), and Nunn discloses a nonwoven web with 50% natural fibers (Nunn,
col. 7,11. 3—11), the Examiner’s reason for increasing Birch’s natural fiber
concentration—to satisfy the claimed limitation, which requires 40—80%
weight natural fiber composition—is speculative and unsupported by the
record. Speculation and conjecture cannot form the basis for concluding
obviousness. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“A
rejection based on section 103 clearly must rest on a factual basis, and these
facts must be interpreted without hindsight reconstruction of the invention
from the prior art.”). In particular, the rejection fails to establish adequately
why or how increasing Birch’s natural fiber composition would result in
either (1) a pad that is presumably “tougher” or “more durable” than Birch’s
disclosed pad, or (2) a pad with “optimized performance.” Final Act. 4. As
pointed out by Appellants, Nunn instead discloses, “synthetic fibers are
stronger, more uniform, [and] more flexible . . . than natural fibers.” Reply
Br. (citing Nunn, col. 7,1. 66-col. 8,1. 1). Accordingly, it is unclear how
4
Appeal 2015-003026
Application 13/129,002
increasing the natural fibers (and decreasing the synthetic fibers) would
achieve the stated benefits.
We further note that Nunn discloses that cotton fiber—a natural
fiber—is “conventionally designed to be tightly woven to produce a tough
and durable fabric.” Nunn, col. 7,11. 12—17 (emphasis added). Although
not cited explicitly by the Examiner (see Final Act. 2-4; see also Ans. 4—6),
this disclosure does not support a finding that natural fibers are any tougher
or more durable than synthetic fibers, or that increasing the composition of
natural fibers in a nonwoven web would result in a web with “optimized
performance” or one that is “tougher and more durable” than Birch’s
disclosed web, which has between 0—30% natural fibers.
For the foregoing reason, we do not sustain the rejection of claims 13—
21, 23, and 24 as unpatentable over Birch, Nunn, and Martin-Rivera.
Rejection II: Claim 22
The rejection of claim 22 relies upon the same unsupported reasoning
relied on and discussed, supra, with respect to Rejection I. See Appeal Br.
4—5. For the same reasons we do not sustain the rejection of Claims 13—21,
23, and 24, we also do not sustain the rejection of claim 22.
DECISION
The Examiner’s decision to reject claims 13—21, 23, and 24 as
unpatentable over Birch, Nunn, and Martin-Rivera is reversed.
The Examiner’s decision to reject claim 22 as unpatentable over
Birch, Nunn, Martin-Rivera, and Spittle is also reversed.
5
Appeal 2015-003026
Application 13/129,002
REVERSED
6