Ex Parte Howorth

Board of Patent Appeals and Interferences

Jul 13, 2010

10488710 (B.P.A.I. Jul. 13, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GARY F. HOWORTH
____________

Appeal 2009-010437
Application 10/488,710
Technology Center 1700
____________

Before BRADLEY R. GARRIS, CHUNG K. PAK, and
LINDA M. GAUDETTE, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-010437
Application 10/488,710

Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision2 finally rejecting claims 1, 3-10, 12-25, 27-33, and 37-41, the only
claims pending in the application.3 We have jurisdiction under 35 U.S.C.
§ 6(b).
The invention is directed to compositions that can be used as a fire
barrier, a protective packing material around the monolithic structure in a
fuel cell or pollution control device, or as a heat barrier such as an insulating
material positioned in the end cone regions of a pollution control device.
(Specification (“Spec.”) 2:15-18.) Independent claim 1 and dependent claim
20 are illustrative of the invention and are reproduced below from the
Claims Appendix to the Appeal Brief:
1. A composition comprising:

a) a micaceous binder in an amount of about 5 to about 80 weight
percent on a dry weight basis, said micaceous binder comprising a crushed
micaceous mineral that is non-intumescent; and

b) biosoluble inorganic fibers in an amount of about 10 to about 60
weight percent on a dry weight basis,

wherein said composition is in the form of a sheet material.

20. The composition of claim 1, wherein said sheet material is
intumescent and further comprises an edge protector.

The Examiner maintains4, and Appellant requests review of (App. Br.
6) the following grounds of rejection:

2 (Final Office Action, mailed Mar. 26, 2008)
3 (Supplemental Appeal Brief (“App. Br.”), filed Nov. 14, 2008, 3.)
4 (Examiner’s Answer (“Ans.”), mailed Feb. 5, 2009, 3-16)
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Appeal 2009-010437
Application 10/488,710

1. claims 1, 3-10, 12-19, 21-25, 27-32, and 37-41 under 35 U.S.C.
§ 103(a) as unpatentable over Langer (US 4,385,135, issued May 24, 1983)
in view of Olds (US 5,714,421, issued Feb. 03, 1993); and
2. claims 20 and 33 under 35 U.S.C. § 103(a) as unpatentable over
Stroom (US 6,245,301 B1, issued Jun. 12, 2001) in view of Olds.
We AFFIRM both grounds of rejection based on the Examiner’s
findings of fact and reasoning as set forth in the Answer (pp. 3-19), which
we adopt as our own. However, because Appellant’s arguments with respect
to the first ground of rejection raise an issue as to the scope and meaning of
the claim term “micaceous binder,” we add the following claim construction
analysis for the sake of completeness.
The independent claims recite a “micaceous binder” “comprising a
crushed micaceous mineral that is non-intumescent” (claims 1, 24, 32, 37,
40)/“compris[ing] expanded vermiculite in a crushed state” (claims 22)
The Specification defines the term “micaceous binder” as
refer[ring] to one or more micaceous minerals that can be
wetted and then dried to form a cohesive body that is self-
supporting. . . . “[S]elf-supporting” refers to a micaceous binder
that can be formed into a 5 cm x 5 cm x 3 mm sheet containing
no other materials such that the dried sheet can be held
horizontally at any edge for at least 5 minutes at 25 ºC and up to
50 percent relative humidity without crumbling or otherwise
falling apart.

(Spec. 10:19-24.)
The Specification defines the term “micaceous mineral” as
“refer[ring] to a family of minerals that can be split or otherwise separated
into planar sheets or platelets. Micaceous minerals include, but are not
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Appeal 2009-010437
Application 10/488,710

limited to, expanded vermiculite, unexpanded vermiculite, and mica.”
(Spec. 10:14-17.)
The Specification states that the micaceous binder may include
vermiculite “that has been expanded, delaminated, and crushed” (Spec.
11:16-17.) These materials are described as “typically non-intumescent.”
(Spec. 11:17-18.)
During examination, claim terms are given their broadest reasonable
construction consistent with the Specification. In re ICON Health and
Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). The transitional term
“comprising” opens the claim to include additional structural elements and
materials. See, e.g., Exxon Chem. Pats., Inc. v. Lubrizol Corp., 64 F.3d
1553, 1555 (Fed. Cir. 1995); In re Baxter, 656 F.2d 679, 686-87 (CCPA
1981).
Based on the above-cited portions of the Specification, we interpret
the claim term “micaceous binder” as requiring at least one micaceous
mineral which can be wetted and dried to form a self-supporting body, but
not precluding the presence of one or more micaceous minerals, e.g.,
vermiculite, which do not form a self-supporting cohesive body, but remain
free-flowing after wetting and drying.
Appellant contends the Examiner erred in finding that Langer teaches
a “micaceous binder” as claimed.
Langer discloses “flexible intumescent sheet materials containing low
density filler components” (col. 1, ll. 7-9) which are “useful as a packing
material for mounting and positioning automobile catalytic converter
monoliths within containers” (col. 1, ll. 12-14). In the paragraph bridging
columns 2 and 3, Langer discloses sheet material comprising low density
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Appeal 2009-010437
Application 10/488,710

filler components such as “expanded vermiculite (#5 Grade from W. R.
Grace Co.) and 3 to 30% of binder as described above” (col. 3, ll. 20-22).
The referenced binder materials include “tetrasilicic fluorine mica” (col. 2,
ll. 40-41).
An Examiner's statement is accepted as true when an appellant fails to
question its accuracy or to present contradicting evidence. See, e.g., In re
Fox, 471 F.2d 1405, 1407 (CCPA 1973) (affirming the Board’s decision:
“In this court appellant has not denied the existence of the facts on which the
examiner rested his obviousness rejection nor the added facts of which the
board took judicial notice.”); In re Kunzmann, 326 F.2d 424, 425 n.3 (CCPA
1964) (“[T]he examiner appears to have considered thoroughly this
assertion, and to have found otherwise. Since appellant has not shown this
finding to be clearly erroneous, we accept it as fact.”).
The Examiner relies on the above cited disclosure in columns 2 and 3
of Langer in finding that the independent claim limitation “micaceous
binder” comprising “crushed micaceous mineral that is non-
intumescent”/“expanded vermiculite in a crushed state” reads on Langer’s
tetrasilicic fluorine mica and expanded vermiculite, respectively. (Ans. 17
(citing Final 35 and Ans. 4).)
These findings are reasonable based on the broadest reasonable
interpretation of the claim terms “micaceous binder” and “crushed
micaceous mineral” (see supra pp. 3-4).

5 “Langer discloses a composition comprising: (a) a micaceous binder in an
amount of about 5 to about 80 weight percent on a dry weight basis (see
Langer, column 3, lines 20-22), the micaceous binder comprising a
micaceous mineral that is non-intumescent (‘expanded vermiculite’).”
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Appeal 2009-010437
Application 10/488,710

Appellant has not explained why these findings are erroneous. (Ans.
16-17 (noting Appellant’s sole argument is that the vermiculite material
identified in col. 3, ll. 20-21 of Langer is not a micaceous binder because it
remains in the form of free-flowing granular particles after wetting and
drying (Br. 7)).)6
For the foregoing reasons, as well as those stated in the Answer, we
affirm the Examiner’s decision to reject claims 1, 3-10, 12-25, 27-33, and
37-41.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).

AFFIRMED

ssl

3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427

6 We note that Appellant has not filed a Reply Brief refuting the Examiner’s
finding that tetrasilicic fluorine mica is a micaceous mineral which can be
wetted and dried to form a self-supporting body, i.e., a “micaceous binder”
as claimed (see Ans. 17).
6