Ex Parte Huberty

Board of Patent Appeals and Interferences

Apr 22, 2003

09377262 (B.P.A.I. Apr. 22, 2003)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
Paper No. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JOHN S. HUBERTY
__________
Appeal No. 2003-0318
Application 09/377,262
___________
HEARD: April 2, 2003
___________
Before GARRIS, WARREN, and POTEATE, Administrative Patent Judges.
POTEATE, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the final
rejection of claims 1-27. Claims 28 and 29 are pending but have
been withdrawn from consideration as directed to a nonelected
invention. See paper no. 4, mailed April 11, 2001.
Claim 1 is representative of the subject matter on appeal
and is reproduced below:
Appeal No. 2003-0318
Application 09/377,262
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1. A filter that comprises:
A fluid permeable first electret filter layer that comprises
fibers that contain a first polymeric material, wherein the first
electret filter layer exhibits nondecreasing removal efficiency
at completion of the DOP Penetration/Loading Test and removes a
majority of a challenge aerosol collected by the filter during
the DOP Penetration/Loading Test; and
a fluid permeable second electret filter layer that
comprises fibers that contain a second polymeric material,
wherein the second electret filter layer exhibits decreasing
removal efficiency at completion of the DOP Penetration/Loading
Test, and further wherein the second electret filter layer
exhibits an initial quality factor that is greater than an
initial quality factor of the first electret filter layer as
determined using the DOP Penetration/Loading Test.
The references relied upon by the examiner are:
Jones et al. (Jones) 5,411,576 May 2, 1995
Singer et al. (Singer) 5,817,584 Oct. 6, 1998
Ground of rejection
Claims 1-27 stand rejected under 35 U.S.C. § 103 as
unpatentable over Jones in view of Singer.
We reverse.
Discussion
The initial burden of presenting a prima facie case of
obviousness rest on the examiner. In re Oetriker, 977 F.2d 1443,
1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). In order to
establish a prima facie case of obviousness, the examiner must
Appeal No. 2003-0318
Application 09/377,262
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identify a suggestion or motivation to modify the teachings of
the cited references to achieve the claimed invention. In re
Kotzab 217 F.3d 1365, 1370, 55 USPQ2d 1313, 1316-17 (Fed. Cir.
2000). “[P]articular findings must be made as to the reason to
skilled artisan, with no knowledge of the claimed invention,
would have selected these components for combination in the
manner claimed.” Id., 217 F.3d at 1371, 55 USPQ2d at 1317. For
the reasons discussed below, we conclude that the examiner has
simply failed to satisfy this initial burden.
The examiner found that Jones discloses an oily-mist
resistant electret filter as claimed, with the exception that
Jones fails to disclose two electret layers. Examiner’s answer,
paper no. 11, mailed September 11, 2002, page 3, paragraph (10).
The examiner notes that Singer teaches a breathing mask fabric
having first and second electret treated microfiber webs. The
examiner conclude that “[i]t would have been obvious to one
having ordinary skill in the art to have used the teaching of two
electret filter layers as shown in Singer et al. with the
electret filter of Jones et al. motivated by the desire to obtain
a filter with increased filtering efficiency.” Id.
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Application 09/377,262
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At the outset, we note that it is unclear as to precisely
how the examiner’s proposes to combine the teachings of Jones and
Singer to achieve the claimed invention. It may be that the
examiner is suggesting that it would have been obvious to have
used two layers of Jones’ polypropylene electret fibers instead
of one layer to construct an oily-mist resistant electret filter
based on Singer’s disclosure of using a multilayer laminate
structure in constructing a high efficiency breathing mask
fabric. Alternatively, it may be that the examiner is proposing
that Singer’s first web (see Singer, claim 1) be combined with a
layer of Jones’ polypropylene electret fibers to achieve the
claimed filter media. However, regardless of how the examiner
has combined the teachings of Jones and Singer, it is clear that
the examiner has concluded that the resultant filter would
inherently exhibit the features of removable efficiency and
initial quality factor as recited in claim 1. See examiner’s
answer, page 4 (“[A] filter fabric as shown by Jones and Singer
et al. would have the same test results as Appellant’s invention,
because both filters have the same laminate structure and are
made from the same meltblown polypropylene electret
microfibers.”)
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“In relying upon the theory of inherency, the examiner must
provide a basis in fact and/or technical reasoning to reasonably
support the determination that the allegedly inherent
characteristic necessarily flows from the teachings of the
applied prior art. Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat.
App. & Int. 1990) (citations omitted). We are in agreement with
appellant that the examiner has failed to provide the requisite
factual basis in support of his conclusion that a filter
resulting from the combined teachings of Jones and Singer would
necessarily exhibit the features required in claim 1. See reply
brief, paper 12, received October 3, 2002, page 1. As further
noted by appellant, the examiner discusses various features of
the Singer and Jones filters, such as weight percent and size of
the fibers, but fails to state how these features relate to
removal efficiency and quality factor. See Id.
As explained by appellant,
[t]here are a number of structural factors that effect
filtration performance in a filtering web. In order to
satisfy the present invention, these structural factors need
to be selected so that one layer exhibits nondecreasing
removal efficiency and the other layer exhibits decreasing
removal efficiency at the completion of the DOP
penetration/loading test. Further, the second layer needs
to be constructed so that it exhibits an initial quality
factor that is greater than the initial quality factor of
the first layer.
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Application 09/377,262
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Reply brief, page 2. Although the examiner comments on the
Frazier permeability and other features of the Jones and Singer
references, the record is devoid of the examiner’s reasoning as
to how these factors correlate to removal efficiency and initial
quality factor.
Moreover, we are in agreement with appellant that the record
does not properly establish why one of skilled in the art would
have been motivated to combine the teachings of Jones and Singer.
The examiner seems to suggest that because Jones and Singer are
drawn to the same field of endeavor, one having ordinary skill in
the filter art would combine the teachings to arrive at a filter
with high filtering efficiency. See examiner’s answer, page 5.
However, the fact that Jones and Singer may be in the same field
of endeavor is not sufficient to establish that one of ordinary
skill in the art would have been motivated to combine their
teachings. In this regard, we note that the examiner has even
failed to provide reasoning as to why one of ordinary skill in
the art would have been motivated to look to Singer given the
fact that Singer does not relate to breathing mask fabrics that
are suitable for use in an oily-misk environment.
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Accordingly, we conclude that the examiner has failed to
establish a prima facie case of obviousness and the rejection of
claims 1-27 is reversed.
REVERSED

BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHARLES F. WARREN )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
LINDA A. POTEATE )
Administrative Patent Judge )
LRP:pgg
Appeal No. 2003-0318
Application 09/377,262
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