Ex Parte Hitch

Board of Patent Appeals and Interferences

Dec 23, 2008

10812457 (B.P.A.I. Dec. 23, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JAMES MATTHEW HITCH
____________

Appeal 2008-5093
Application 10/812,457
Technology Center 1700
____________

Decided: December 23, 2008
____________

Before BRADLEY R. GARRIS, CATHERINE Q. TIMM, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE

Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1-8, 14, and 15. We have jurisdiction under
35 U.S.C. § 6(b).
Appeal 2008-5093
Application 10/812,457

We AFFIRM.
The invention relates to a nonwoven mat and a laminate made
therefrom. The mat has a smooth surface for the application of a coating
thereon. (Spec. 1, ll. 3-9; 5, ll. 17-19). The mat is made from glass fibers
provided in a combination of shorter and longer fibers for optimum
smoothness and minimal cost. (Spec. 3, ll. 1-9). Claim 1 is illustrative of
the subject matter on appeal:
1. A nonwoven fibrous mat having a smooth surface for coating, the
smooth surface having a reduced amount of "stand up fibers" comprising a
blend of fibers of at least two different lengths falling within the range of
about 0.12 inch and about 0.6 inch bound together with a cured binder, the
binder content of the mat being in the range of about 10-25 weight percent
of the finished mat, the fibers having an average fiber diameter in the range
of about 9 and about 14 microns and about 25 to about 50 wt. percent fibers
having a length of less than about 0.4 inch long and about 75 to about 50 wt.
percent fibers having a length at least about 0.45 inch long.

The Examiner maintains the following rejections:
1. Claims 1-8, 14, and 15 rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement;
2. Claims 1-8, 14, and 15 rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as the invention;
and
3. Claims 1-8, 14, and 15 rejected under 35 U.S.C. § 103(a) as being
obvious over U.S. Patent Application Publication No. 2003/0054714,
published March 20, 2003, in the name of Peng et al. (hereinafter “Peng”).1

1 In addition to the two rejections under 35 U.S.C. § 112 indicated above,
the Final Office Action, mailed March 21, 2006, contained the following
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Since no claims are argued separately from the others, we decide each
ground of rejection on the basis of representative independent claim 1. See
37 C.F.R. § 41.37(c)(1)(vii) (“When multiple claims subject to the same
ground of rejection are argued as a group by appellant, the Board may select
a single claim from the group of claims that are argued together to decide the
appeal with respect to the group of claims as to the ground of rejection on
the basis of the selected claim alone.”).
II. FIRST REJECTION
A. ISSUE ON APPEAL
The Examiner contends that the Specification as originally filed does
not provide support for the limitation “about 25 to about 50 wt. percent
fibers having a length of less than about 0.4 inch long and about 75 to about
50 wt. percent fibers having a length at least about 0.45 inch long.” (Ans. 3
and 6). However, Appellant contends that the Specification provides
adequate written description to support this claim limitation.
Thus, a first issue on appeal arising from the contentions of Appellant
and the Examiner is: has the Examiner shown that the Specification lacks
rejections: (a) claims 1-8, 14, and 15 rejected under 35 U.S.C. § 102(b) as
anticipated by Peng; and (b) claims 3, 4, 7, 8, 14, and 15 rejected under
35 U.S.C. § 103(a) as being obvious over Peng. The Examiner explicitly
withdrew the rejection under 35 U.S.C. § 102(b) in favor of the new ground
of rejection under 35 U.S.C. § 103(a) indicated above. Although the
Examiner did not specifically mention the rejection of claims 3, 4, 7, 8, 14,
and 15 under 35 U.S.C. § 103(a), we consider this rejection to be maintained
via incorporation into the above rejection of claims 1-8, 14, and 15 under 35
U.S.C. § 103(a). Although Appellant’s Reply Brief indicates that the
rejection of claims 3, 4, 7, 8, 14 and 15 is separately maintained (Reply Br.
2, 5 and 9), Appellant understands that the rejection is incorporated because
the Appellant’s arguments are directed to the rejection of claims 1-8, 14, and
15 under 35 U.S.C. § 103(a). (Reply Br. 9).
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adequate written description to support the claim limitation of “about 25 to
about 50 wt. percent fibers having a length of less than about 0.4 inch long
and about 75 to about 50 wt. percent fibers having a length at least about
0.45 inch long”?
B. FACTUAL FINDINGS
The following Findings of Fact (FF) are relevant to the above
identified issue on appeal:
1. Appellant’s Specification states that “[p]referably a major
portion of the fiber is at least about 0.45 inch long and a minor portion of the
fiber is shorter than about 0.4 inch.” (Spec. 3, ll. 11-12).
2. Example 2 of Appellant’s Specification states that “[t]he fiber
blend contained about 75 wt. percent one-half inch long H137 fibers and
about 25 wt. percent H137 fibers that were about 0.2 inch long.” (Spec. 7, ll.
4-6).
3. Example 3 of Appellant’s Specification also states that “the
fiber blend contained about 50 wt. percent H137 fibers having a length of
about 0.5 inch long and about 50 wt. percent H137 fibers that were about 0.2
inch long.” (Spec. 7, ll. 14-16).
4. Appellant’s Specification defines the word “about” as varying
“some beyond that so long as the advantages of the invention are realized”
and that “the disclosed results of the invention might extend, at least
somewhat, beyond one or more of the limits disclosed.” (Spec. 3, l. 29-4,
l. 2).
C. PRINCIPLES OF LAW
The Specification need not disclose the exact range recited in the
claim in order to satisfy the written description requirement. See In re
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Wertheim, 541 F.2d 257, 265 (CCPA 1976)(“The PTO has done nothing
more than to argue lack of literal support, which is not enough.”); Ralston
Purina Co. v. Far-Mar-Co., Inc., 772 F.2d 1570, 1575 (Fed. Cir.
1985)(rejecting the notion that ranges found in the applicant’s claim
language must correspond exactly to ranges disclosed in the specification).
Rather, a disclosure is sufficient when, as a factual matter, persons skilled in
the art would consider the claimed range as part of the appellant’s invention.
See Wertheim, 541 F.2d at 265 (“we are of the opinion that, as a factual
matter, persons skilled in the art would consider processes employing a 35-
60% solids content range to be part of appellants’ invention and would be
led by the Swiss disclosure so to conclude.”); See also Union Oil Co. of
California v. Atlantic Richfield Co., 208 F.3d 989, 997 (Fed. Cir. 2000)(“the
description must clearly allow persons of ordinary skill in the art to
recognize that [he or she] invented what is claimed.”)(quoting In re Gosteli,
872 F.2d 1008, 1012 (Fed. Cir. 1989)).
For Example, our reviewing court has determined that an adequate
written description was provided where the claimed range was narrower than
the disclosed range, when an endpoint of the narrower range was
additionally disclosed. Kolmes v. World Fibers Corp., 107 F.3d 1534, 1539
(Fed. Cir. 1997)(adequate description found for claimed range of 8-12, with
range of 4-12 disclosed and 8 being disclosed as preferred); see also In re
Blaser, 556 F.2d 534, 538 (CCPA 1977)(adequate description found for
claimed operating temperature range of 80ºC to 200ºC, with operating
temperature range of 60ºC to 200ºC disclosed and a disclosure of initially
mixing the starting materials at 80ºC).
D. ANALYSIS
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The term “major portion” commonly means a range of greater than
50% and less than 100%, and the term “minor portion” commonly means a
range of greater than 0% to less than 50%. (FF 1). The use of “major” and
“minor” would seem to convey, in the absence of evidence to the contrary,
that Appellant’s invention included a broad range of long fiber
concentrations above 50% and a broad range of shorter fiber concentrations
less than 50%.
The use of the word “about” conveys that the ranges are even more
inclusive. To one of ordinary skill in the art, the phrase “about 50 wt.
percent,” as claimed, means somewhat greater than or somewhat less than 50
weight percent, which broadens the claimed range beyond the “minor
portion” and “major portion” ranges otherwise disclosed, particularly in light
of the definition of the word “about” provided by the Appellant. (FF 4).
Moreover, Example 3 further conveys that the “about 50%” endpoints
were within Appellant’s invention. (FF 2). While Example 2 conveys that
narrower endpoints of “about 25 wt. percent” and “about 75 wt. percent”
were also contemplated by Appellant. (FF 3).
Therefore, the claimed ranges of “about 25 to about 50 wt. percent
fibers having a length of less than about 0.4 inch long and about 75 to about
50 wt. percent fibers having a length at least about 0.45 inch long,” ranges
that are narrower than the major/minor disclosure and including exemplified
endpoints within the broader major/minor disclosure, appear to have been
fiber concentrations contemplated by Appellant. The Examiner has not
provided an adequate level of evidence indicating that the more narrowly
claimed ranges represent an inventive concept outside that possessed by
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Appellant. Accordingly, we cannot sustain the Examiner’s rejection of
claims 1-8, 14, and 15 under 35 U.S.C. § 112, first paragraph.
III. SECOND REJECTION
A. ISSUES ON APPEAL
Appellant contends that Appellant’s Specification provides a clear
meaning to the phrase “reduced amount of ‘stand up fibers,’” as recited in
claim 1. (App. Br. 7). The Examiner contends that the phrase “reduced
amount” is indefinite because “it is not clear to what the claimed invention is
being compared” and because “it is not clear what value of stand up fibers
would be a reduced amount.” (Ans. 6).
Thus, a second issue on appeal arising from the contentions of
Appellant and the Examiner is: does the Specification adequately clarify
what is meant by the phrase “reduced amount of ‘stand up fibers’”?
B. FACTUAL FINDINGS
The following additional Findings of Fact are relevant to the above
identified issue on appeal:
5. Appellant’s Specification describes the prior art as having a
“small amount of ‘stand up’ fibers that are undesirable.” (Spec. 2, ll. 9-10).
6. However, Appellant’s Specification does not indicate the extent
or degree of stand up fibers that constitute a “small amount” or that
constitute an undesirable amount. (See Spec. generally).
7. Appellant’s Specification also describes the desire for “fewer
‘stand up’ fibers” such that “substantially less coating material would be
required.” (Spec. 2, ll. 22-24).
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8. Appellant’s Specification does not indicate the extent or degree
that constitutes “fewer ‘stand up’ fibers” or the extent or degree to which the
coating material may be reduced. (See Spec. generally).
9. Appellant’s Specification describes using fibers in a
combination of lengths “to optimize smoothness and cost…while at the
same time minimizing the amount of ‘stand up’ fibers.” (Spec. 3, ll. 5-9).
10. However, Appellant’s Specification does not indicate the extent
or degree to which the stand up fibers are minimized. (See Spec. generally).
11. In comparing Example 2 (inventive example) to Example 1
(conventional and control example), Appellant’s Specification states that
“[t]his mat also appeared to have a smoother surface than the mat of
Example 1” and that “the thickness of the coating could possibly be reduced
versus the coating on the mat made in Example 1.” (Spec. 7, ll. 8-10).
12. The comparison between Examples 1 and 2 does not address
“stand up” fiber content. (Spec. 7, ll. 8-10).
13. The “smoother surface” of Example 2 is a subjective
observation; no data was provided as evidence of a smoother surface. (Spec.
7, ll. 8-10).
14. Appellant’s Specification does not suggest that a coating
operation was attempted or that a successful reduction in coating was
achieved. (Spec. 7, ll. 8-10).
15. Regarding Example 3 (inventive example), Appellant’s
Specification states that “[t]he finished mat . . . had substantially fewer
‘stand up’ fibers and a smoother surface than the mat of Example 2.” (Spec.
7, ll. 17-19).
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16. Appellant’s Specification does not indicate any comparison
between Example 3 and Example 1. Rather, Example 3 was only compared
to Example 2, both of which fall within the scope of the claimed invention.
(Spec. 7, ll. 17-19).
17. The reference to “fewer ‘stand up’ fibers” of Example 3 does
not indicate the extent or degree to which the mat of Example 3 has fewer
stand up fibers. (Spec. 7, ll. 17-19).
C. PRINCIPLES OF LAW
“The legal standard for definiteness [under the second paragraph of
35 U.S.C. § 112] is whether a claim reasonably apprises those of skill in the
art of its scope.” In re Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir. 1994).
“[T]he definiteness of claim terms depends on whether those terms can be
given any reasonable meaning.” Datamize, LLC v. Plumtree Software, Inc.,
417 F.3d 1342, 1347 (Fed. Cir. 2005).
In a situation involving a relative claim expression, the Specification
must provide some standard for defining or measuring its meaning. Seattle
Box Co. v. Industrial Crating & Packing, Inc., 731 F.2d 818, 826 (Fed. Cir.
1984)(“[w]hen a word of degree is used [the issue is] whether the patent’s
specification provides some standard for measuring that degree.”); See also
Datamize, 417 F.3d at 1350 (“Some objective standard must be provided in
order to allow the public to determine the scope of the claimed invention.”).
While mathematical values are not necessary, Appellant must claim
the invention in terms that would be understood by persons of skill in the
field of the invention. Exxon Research & Eng. Co. v. U.S., 265 F.3d 1371,
1381 (Fed. Cir. 2001); Modine Mfg. Co. v. U.S. Int’l Trade Comm’n,
75 F.3d 1545, 1557 (Fed. Cir. 1996).
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D. ANALYSIS
Neither the description nor the examples of Appellant’s Specification
provides a standard for measuring the degree of scope encompassed by the
phrase “reduced amounts of ‘stand up’ fibers” in claim 1. (FF 5-17). Even
in light of the Specification, one of ordinary skill in the art would be unable
to ascribe a reasonably definite meaning to this claim phase and would be
unable to compare amounts of ‘stand up’ fibers in a mat to ascertain if the
amounts are in fact “reduced”.
As such, the Specification does not adequately clarify what is meant
by the term “reduced amount of ‘stand up fibers.’” Therefore, we sustain the
Examiner’s rejection of claims 1-8, 14 and 15 under 35 U.S.C § 112, second
paragraph.
IV. THIRD REJECTION
A. ISSUES ON APPEAL
Appellant contends that Peng does not teach or suggest the weight
percentage range of longer and shorter fibers recited in claim 1, and the
Examiner has not provided an adequate rationale for modifying Peng to
achieve the claimed percentage ranges of fibers. (Reply Br. 9). Appellant
also contends that the “improved tear strength” taught by Peng addresses a
different problem and produces a different result than the “smoother
surface” and “fewer ‘stand up’ fibers” of the present invention. (Reply Br. 9
and 12).
The Examiner contends that Peng has a broad disclosure that
completely encompasses the claimed ranges and that it would have been
obvious to one of ordinary skill in the art to have selected optimum lengths
and proportions from the broader range through routine experimentation.
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(Ans. 4-5 and 6-7). The Examiner also contends that the problem addressed
by the prior art need not be the same problem addressed by the present
invention. (Ans. 7).
Thus, a third issue on appeal arising from the contentions of Appellant
and the Examiner is: has the Examiner established that claim 1 is prima
facie obvious over the teachings of Peng?
Appellant contends that the claims overcome the prima facie case
provided by the Examiner because (a) Peng is not enabled for the broad
disclosure beyond what is taught by the examples in Peng (Reply Br. 9-13);
(b) the examples and best mode taught by Peng teach away from the claimed
invention (Reply Br. 13-14); and (c) Example 1 of Appellant’s Specification
provides evidence of non-obviousness. (Reply Br. 10).
The Examiner contends that “the teachings of Peng are not limited to
what is shown in the examples.” (Ans. 6).
Thus, a fourth issue on appeal arising from the contentions of
Appellant and the Examiner is: has the Appellant provided sufficient
evidence to overcome the Examiner’s prima facie case of obviousness?
B. FACTUAL FINDINGS
The following additional Findings of Fact are relevant to the above
identified issues on appeal:
18. Peng teaches that
the inventive mat comprises a mixture of fibers
where from about 0 to about 100 weight % of the
fibers have an average length of from about 0.5 to
about 60 mm and from about 0 to about 100
weight % of the fibers have an average length of
from about 10 to about 150 mm.
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(Peng, ¶ 19). About 0.5 to about 60 mm equals about 0.02 to about 2.3 inch,
and about 10 to about 150 mm equals about 0.4 to about 5.9 inch.
19. Peng also teaches that
More preferably, the inventive mat comprises from
about 20 to about 80 weight % of fibers having an
average length of from about 10 to about 45 mm
and from about 20 to about 80 weight % of fibers
having an average length of from about 30 to about
80 mm.
(Peng, ¶ 19). About 10 to about 45 mm equals about 0.39 to about 1.77
inch, and about 30 to about 80 mm equals about 1.18 to about 3.15 inch.
20. Peng also states that “[t]he fibers can be obtained from
commercial sources or made by techniques well known to those skilled in
the art.” (Peng, ¶ 19).
21. Peng teaches that
using the differing fiber lengths in conjunction
with a polysiloxane compound, lower weight mats
can be produced that render similar shingle tear
properties as a higher weight mat. The extent of
this improvement is dependent on the fiber lengths
and the amounts of different fibers employed.
(Peng, ¶ 12).
22. Peng teaches “several methods of making non-woven fiber
mats.” (Peng, ¶ 14 and 15).
23. Peng teaches appropriate materials for fibers, which includes
“fibers of glass.” (Peng, ¶ 18).

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C. PRINCIPLES OF LAW
“[A] prima facie case of obviousness arises when the ranges of a
claimed composition overlap the ranges disclosed in the prior art. [Citations
omitted.] Where the ‘claimed ranges are completely encompassed by the
prior art, the conclusion [that the claims are prima facie obvious] is even
more compelling than in cases of mere overlap.’" In re Harris, 409 F.3d
1339, 1341 (Fed. Cir. 2005)(quoting In re Peterson, 315 F.3d 1325, 1330
(Fed. Cir. 2003)).
Further, an improvement in the art is obvious if “it is likely the
product not of innovation but of ordinary skill and common sense.” KSR
Int’l v. Teleflex Inc., 127 S. Ct. 1727, 1742 (2007). Optimization of a
variable which is recognized in the prior art to be a result effective variable
would ordinarily be within the skill in the art. In re Boesch, 617 F.2d 272,
276 (CCPA 1980); see also In re Aller, 220 F.2d 454, 456 (CCPA 1955)
(“where the general conditions of a claim are disclosed in the prior art, it is
not inventive to discover the optimum or workable ranges by routine
experimentation.”).
A teaching or suggestion of applicant’s problem is not required for a
prima facie case of obviousness. An invention may be obvious for reasons
the inventor did not contemplate. See In re Dillon, 919 F.2d 688, 693 (Fed.
Cir. 1990)(“In particular, the statement that a prima facie obviousness
rejection is not supported if no reference shows or suggests the newly-
discovered properties and results of a claimed structure is not the law.”).
In order to establish anticipation, “a prior art disclosure must also be
enabling, such that one of ordinary skill in the art could practice the
invention without undue experimentation.” Novo Nordisk Pharm., Inc. v.
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Bio-Tech. General Corp., 424 F.3d 1347, 1355 (Fed. Cir. 2005). The
disclosure of particular materials and methods needed to produce the product
has been shown to be sufficient to enable the prior art. Id. at 1356 (“The
[prior art] discloses the production of ripe hGH protein in an enabling
manner because it discusses particular materials and a particular
methodology (the secretion approach) to produce the hGH protein.”).
Moreover, there is a strong presumption that one of ordinary skill in
the art, making adaptations within the skill of the art, would have been
enabled by the prior art disclosure to successfully carry out what the
reference describes, and Appellant carries a heavy burden in overcoming this
presumption. In re Weber, 405 F.2d 1403, 1407 (CCPA 1969); In re
Spence, 261 F.2d 244, 246 (CCPA 1958); In re Michalek, 162 F.2d 229,
231-32 (CCPA 1941).
Further, a rejection based on obviousness under 35 U.S.C. § 103 may
be made over non-enabled prior art. Symbol Tech. v. Opticon, Inc., 935 F.2d
1569, 1578 (Fed. Cir. 1991)(“While a reference must enable someone to
practice the invention in order to anticipate under § 102(b), a non-enabling
reference may qualify as prior art for the purpose of determining
obviousness under § 103.”)(citations omitted); See also Manual of Patent
Examining Procedure (MPEP) § 2121.01(II) (Rev. 6, Sept. 2007).
A reference “teaches away” when it suggests that the developments
flowing from its disclosures are unlikely to produce the objective of the
Appellant’s invention. See In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
However, disclosed examples and preferred embodiments do not constitute a
teaching away from a broader disclosure. In re Susi, 440 F.2d 442, 446 n.3
(CCPA 1971).
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D. ANALYSIS
Applying the preceding legal principles to the Factual Findings in the
record of this appeal, we determine that the Examiner has established a
prima facie case of obviousness.
We have already determined that the limitation “a reduced amount of
‘stand up fibers’” is indefinite. Yet, Appellants acknowledged that “the term
‘a reduced amount of stand up fibers’ is a property or characteristic of the
claimed mats, a result of following the compositional limitations.” (App. Br.
6). In other words, despite the meaning of the phrase, a fibrous mat would
have the property or characteristic of “a reduced amount of ‘stand up
fibers’” as a result of having the other compositional limitations recited in
the claims. As such, the phrase “a reduced amount of ‘stand up fibers’”
provides no structural limitation beyond the compositional limitations
otherwise recited in claim 1. Thus, to the extent the Examiner has
demonstrated that the compositional limitations would have been obvious to
one of ordinary skill in the art, “a reduced amount of ‘stand up fibers’”
would have necessarily resulted from the obvious composition. Therefore,
we can reach a determination regarding obviousness of claim 1 without
resorting to speculation or assumptions as to the meaning of the phrase “a
reduced amount of ‘stand up fibers.’” See In re Steele, 305 F.2d 859, 862
(CCPA 1962) (holding that a rejection based on prior art cannot be based on
speculations and assumptions).
Thus, we address the obviousness of the compositional limitations
recited in claim 1. Appellants do not contest the Examiner’s contention that
the ranges recited in the compositional limitations of claim 1 are
encompassed by the ranges disclosed in Peng. (Ans. 4-5; see App. Br.
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generally). In particular, the disputed range, “about 25 to about 50 wt.
percent fibers having a length of less than about 0.4 inch long and about 75
to about 50 wt. percent fibers having a length at least about 0.45 inch long,”
is completely encompassed by the ranges disclosed in Peng. (FF 18). Our
reviewing court has established that claimed ranges that are completely
encompassed by the disclosed range are prima facie obvious. Harris, 409
F.3d at 1341.
Further, Peng teaches that it was known in the art to vary the tear
strength, as desired, by varying “fiber lengths and the amounts of different
fibers employed.” (FF 21). Thus, “fiber lengths and the amounts of
different fibers employed,” are known result effective variables, for which
optimization by routine experimentation would ordinarily be within the skill
in the art. Boesch, 617 F.2d at 276; Aller, 220 F.2d at 456.
Additionally, a teaching or suggestion of a smoother surface and/or
“fewer” stand up fibers (i.e., the problems discussed in Appellant’s
Specification) are not required to establish a prima facie case of
obviousness, and the teaching of an alternative problem, such as improved
tear strength, would have been sufficient. Dillon, 919 F.2d at 693.
Thus, notwithstanding the Examiner’s stated motivation, the
disputed limitation “about 25 to about 50 wt. percent fibers having a length
of less than about 0.4 inch long and about 75 to about 50 wt. percent fibers
having a length at least about 0.45 inch long” is prima facie obvious over the
teachings of Peng, and the Examiner has established a prima facie case of
obviousness as to claim 1.
Additionally, Appellant has not overcome the Examiner’s prima facie
case of obviousness. Peng discloses methods and materials sufficient to
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teach one of ordinary skill in the art how to make a mat using easily made or
commercially acquired fibers within the claimed size and proportion ranges
(FF 18, 20, 22 and 23), and Appellant has not adequately shown that Peng is
not so enabled. Appellant has provided no evidence, only unsubstantiated
attorney argument, that one of ordinary skill in the art would be unable to
provide a mat with smaller fibers based on the teachings of Peng. (App. Br.
9-13). Moreover, Peng need not be enabling for us to determine that claim 1
is obvious under 35 U.S.C. § 103, the reference still qualifies as prior art for
all that it teaches. Symbol, 935 F.2d at 1578.
Also, Peng does not teach away from the claimed ranges, since
examples and preferred embodiments do not teach away from a broader
disclosure. See Susi, 440 F.2d at 446 n.3.
Finally, as discussed above, the comparisons between Example 2 and
Example 1 are speculative at best, and lack sufficient data to show a
substantial difference between the claimed nonwoven mat and the nonwoven
mat taught by Peng. (FF 11-14). Likewise, Example 3 and Example 1 are
not compared in Appellant’s Specification, and, thus, Examples 3 and
Example 1 are not sufficiently distinguished in Appellant’s Specification.
(FF 15-17).
Therefore, Appellant has not provided sufficient evidence to
overcome the Examiner’s prima facie case of obviousness. Accordingly, we
sustain the Examiner’s rejection of claims 1-8, 14 and 15 under 35 U.S.C.
§ 103(a).
V. CONCLUSION
The totality of the evidence weighs in favor of the following
conclusions:
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(1) We do not sustain the Examiner’s rejection of claims 1-8, 14,
and 15 under 35 U.S.C. § 112, first paragraph;
(2) We sustain the Examiner’s rejection of claims 1-8, 14, and 15
under 35 U.S.C. § 112, second paragraph; and
(3) We sustain the Examiner’s rejection of claims 1-8, 14, and 15
under 35 U.S.C. § 103(a).
VI. DECISION
The decision of the Examiner is affirmed.
VII. TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

cam

ROBERT D. TOUSLEE
JOHNS MANVILLE
10100 WEST UTE AVENUE
LITTLETON, CO 80127
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