Ex Parte Jacobsen

Board of Patent Appeals and Interferences

Feb 27, 2009

11252313 (B.P.A.I. Feb. 27, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WILLIAM W. JACOBSEN
__________

Appeal 2008-6131
Application 11/252,3131
Technology Center 1700
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Decided:2 February 27, 2009
____________

Before EDWARD C. KIMLIN, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL

1 The present application is a continuation of 09/900,129, which was the
subject of Appeal No. 2005-2171 mailed August 19, 2005.
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2008-6131
Application 11/252,313

Appellant appeals under 35 U.S.C. § 134 the final rejection of claims
13-19. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
We AFFIRM.

INTRODUCTION
Appellant claims a moldable thermoplastic composite composition
that includes a discontinuous lignocellulose wood fiber and thermoplastic
(claim 13). The claim recites that the discontinuous lignocellulose wood
fiber has a length of at least about 15 millimeters and a diameter of less than
about 0.50 millimeters and a size distribution based on ASTM screens
(claim 13). The Specification discloses that the discontinuous lignocellulose
wood fibers increase tensile strength and flexural properties of the composite
(Spec. 3).
Claim 13 is illustrative:
13. A moldable thermoplastic composite composition, comprising:

about 30 percent by weight of a discontinuous lignocellulose wood fiber
filler, the discontinuous lignocellulose wood fiber filler comprising at least
(A) about 20 percent by weight of discontinuous lignocellulose wood fibers
having a length of at least about 15 millimeters and a diameter of less than
about 0.50 millimeters, and (B) a size distribution of the fiber filler as
percent by total weight fiber filler withheld on ASTM screens of about 50
percent withheld on an 8 mesh screen, about 20 to about 40 percent withheld
on a 16 mesh screen, about 20 to about 30 percent withheld on a 50 mesh
screen, and about 10 percent finer than a 50 mesh screen, and

about 50 to about 80 percent by weight thermoplastic,

wherein the composition has a flexural modulus and a tensile @ break
superior to that of a comparative composition having discontinuous
lignocellulose wood fiber filler and thermoplastic, wherein the comparative
composition has, as compared to the composition, (A) the same about 30
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percent by weight amount of the same type of wood fiber filler, and (B) a
smaller amount of wood fibers with a length of at least about 15 millimeters,
such that the size distribution of the fiber filler as percent by total weight
fiber filler withheld on ASTM screens is from about 13 to about 18 percent
withheld on an 8 mesh screen.

The Examiner relies on the following prior art references as evidence
of unpatentability:
Georlette US 4,380,522 Apr. 19, 1983
Bergquist US 5,194,461 Mar. 16, 1993

The appealed rejection is as follows:3
1. Claims 13-194 are rejected under 35 U.S.C. § 103 as being
unpatentable over the combined teachings of Georlette and Bergquist.
Appellant argues the claims as a group. Pursuant to 37 C.F.R. §
41.37, we select claim 13 as the representative claim on which to render our
Decision.
The Examiner finds that Georlette discloses a thermoplastic composite
having the features of claim 13, except for the claimed length and size
distribution of the fibers (Ans. 5). The Examiner finds that Bergquist

3 A 35 U.S.C. § 112, second paragraph, rejection over claims 13-19 was
withdrawn by the Examiner (Ans. 4).
4 The Examiner indicates that claims 18 and 19 were inadvertently omitted
from the formal statement of this rejection (Ans. 4). The Examiner included
claims 18 and 19 in the statement of the § 103 rejection over Georlette in
view of Bergquist in the Non-Final Office Action mailed June 27, 2006
(Ans. 4). As correctly indicated by the Examiner, Appellant has not
separately argued claims 18 and 19. Furthermore, Appellant has not filed a
Reply Brief contesting the Examiner’s addition of claims 18 and 19 to the
statement of the rejection. Therefore, we determine that the Examiner’s
inadvertent omission of claims 18 and 19 from the statement of the § 103
rejection is harmless error.
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Application 11/252,313

discloses a thermoplastic composite having fiber lengths that include those
claimed by Appellant (Ans. 5). Based on these disclosures, the Examiner
concludes that it would have been obvious to use the fibers of length up to
several inches in the composition of Georlette because the use of such fibers
will reduce the cost of production of the composition and articles therefrom
(Ans. 5).
Regarding the claimed size distribution, the Examiner further
determines that because the length, diameter, and compositional make-up of
the fibers taught by Georlette and Bergquist are identical or similar to those
claimed, the fibers would inherently have the claimed size distribution as
withheld on mesh screens (Ans. 5-6). The Examiner further states that one
of ordinary skill in the art following the teachings of Georlette and Bergquist
would have reasonably arrived at a workable or optimum range for the size
distribution in view of Georlette’s teaching that the fibers may be “any type”
and “in any sufficiently finely divided form” (Ans. 6).
The Examiner further finds that Appellant’s Table V does not
establish unexpected results because the evidence provided is not
commensurate in scope with the claimed invention or compared to the
closest prior art (Ans. 7). The Examiner determines that Appellant has not
explained or provided evidence establishing that the data of Table V is
unexpected (Ans. 9-10).
Appellant argues that there is no suggestion or motivation for a
particular selection of the claimed wood fiber size (App. Br. 4-8). Appellant
contends that there are too many combinations to have suggested selecting
Appellant’s specifically claimed invention absent hindsight (App. Br. 8 and
10). Appellant further argues that Table V in the Specification demonstrates
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the superiority of Appellant’s moldable composition with its specific
components (i.e., unexpected results) (App. Br. 9).

ISSUES
Based upon Appellant’s arguments and the Examiner’s contentions,
the issues presented are:
1. Did Appellant show that the Examiner reversibly erred in determining
that the claimed fiber sizes and size distribution would have been
obvious over the combined teachings of Georlette and Bergquist? We
answer this question in the negative.
2. Did Appellant establish that the data of Table V on page 14 of the
Specification demonstrate unexpected results in the claimed invention
so as to rebut any prima facie case of obviousness? We answer this
question in the negative.

PRINCIPLES OF LAW
For a prima facie case of obviousness all the claim features must be
taught or suggested by the applied prior art. In re Royka, 490 F.2d 981, 985
(CCPA 1974).
“[W]here 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.” In re Aller, 220 F.2d 454, 456-58 (CCPA 1955).
Where the difference between the claimed invention and the prior art
is some range or other variable within the claims, applicant must show that
the particular range is critical, generally by showing that the claimed range
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achieves unexpected results relative to the prior art range. In re Woodruff,
919 F.2d 1575, 1577-78 (Fed. Cir. 1990).
Appellant has the burden of explaining the data in any declaration
proffered as evidence of non-obviousness. Ex parte Ishizaka, 24 USPQ2d
1621, 1624 (BPAI 1992) citing In re Payne, 606 F.2d 303 (CCPA 1979);
In re Borkowski, 505 F.2d 713 (CCPA 1974); In re Goldberg, 168 F.2d 527
(CCPA 1948). Evidence of nonobviousness must be compared with the
closest prior art. In re Burckel, 592 F.2d 1175, 1179-80 (CCPA 1979). Any
showing of unexpected results must be commensurate in scope with the
claimed range. In re Peterson, 315 F.3d 1325, 1329-31 (Fed. Cir. 2003).

FACTUAL FINDINGS (FF)
1. Georlette discloses a process for making shaped articles composed of
polyolefins modified by means of polar monomers, and high contents
of cellulosic fibers. (col. 1, ll. 15-19).
2. Regarding the cellulosic fibers, Georlette states that the fibers “can be
of any type and can be in any sufficiently finely divided form.” (col.
4, ll. 1-3). In other words, Georlette places no restriction on the size
of the fibers (e.g., diameter or length).
3. Georlette discloses that the fibers may be made from deciduous or
resinous timber (col. 4, ll. 3-4).
4. Georlette discloses that the amount of cellulosic fiber in the composite
may be between 20% and 80% by weight (col. 2, ll. 23-26).
5. Georlette discloses that combining the fibers and polyolefins modified
with polar monomers produces a composite material exhibiting
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exceptionally good mechanical properties (col. 1, ll. 64-68; col. 2,
ll. 1-2).
6. Bergquist discloses compositions based on polymers and fibrous
filler materials (col. 1, ll. 8-9).
7. Bergquist discloses that the fibers may be made of “fibrous vegetative
matter, preferably herbaceous fibers, . . . chopped into suitably short
lengths” (col. 1, ll. 52-55).
8. Bergquist discloses that the fibrous material is “chopped into small
dimension, nominally 0.5 inches, though fibers of lengths from 0.001
inch to several inches in length may be used” (col. 2, ll. 46-52).
9. Bergquist claims that the length of the fibers may be from 0.001 to 12
inches (claims 3 and 8).
10. Bergquist discloses that advantageous properties are achieved by
incorporating the fibers into the material (col. 11, ll. 14-20).
11. Bergquist discloses that the amount of fiber added to the composite
affects the property of the composite (col. 2, ll. 64-68; col. 3, ll. 1-20;
col. 4, ll. 12-21; 40-65).
12. Appellant does not explain the data presented in Table V.
Specifically, Appellant does not indicate what the diameters or lengths
are of the fibers, or how the data is commensurate in scope with the
claimed fiber size and size distribution ranges.
13. Appellant does not compare the data with the closest prior art,
Georlette.

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ANALYSIS
Issues 1 and 2
Contrary to Appellant’s motivation argument, we determine that
Georlette’s and Bergquist’s teachings, as a whole, would have suggested the
claimed fiber size and size distribution. Specifically, Georlette discloses that
the fibers in a composite material may be any suitable size (FF 2). Georlette
discloses that the amount of the cellulosic fibers in the composite may vary
between 20% to 80% by weight (FF 4). Georlette discloses that combining
the fibers and the polyolefin produces a composite with good mechanical
properties (FF 5).
Moreover, Bergquist discloses that fibers used in composite material
are chopped to suitably short lengths, which may include lengths from 0.001
to 12 inches (FF 7-9). Bergquist discloses that the amount of the fibers in
the composite affects the properties of the material (FF 11). Bergquist
further recognizes that the combination of the fibers with the polymeric (i.e.,
plastic) material of the composite produces advantageous properties in the
composite material (FF 10).
The teachings of Georlette and Bergquist, as a whole, recognize that
the size and amount of the fibers affect the desired properties of a plastic
composite material. In other words, the Examiner has established that the
general conditions of the claim are known in the prior art, such that it would
have been obvious to determine workable or optimum ranges for the fiber
size and the amount of the particular sized fibers that include the claimed
fiber sizes and size distribution. Aller, 220 F.2d at 456-58.
Moreover, Appellant does not contest the Examiner’s determination
that the claimed fiber size distribution as withheld on ASTM mesh screens
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would inherently result because Georlette’s and Bergquist’s fibers have
identical or substantially identical lengths, diameters and compositional
make-up (Ans. 5-6).
Furthermore, we do not find that the Examiner’s reason for the
combination is based on impermissible hindsight as argued by Appellant.
Rather, motivation for the combination comes from the teachings of the
references as noted above.
The Examiner finds that the only difference between the prior art and
the claimed invention regards the range of the claimed fiber size and size
distribution. In such circumstances, it is incumbent on Appellant to establish
that the claimed fiber size and size distribution are critical (i.e., unexpected
results). Woodruff, 919 F.2d at 1577-78.
Attempting to show criticality of the fiber size and size distribution,
Appellant contends that Table V on page 14 of the Specification, reproduced
on page 14 of the Appeal Brief, demonstrates the “superiority” (i.e.,
unexpected results) of the claimed invention (App. Br. 9). However,
Appellant’s evidence is flawed for multiple reasons.
First, Appellant has not explained how the data contained in Table V
establishes unexpected results in the fiber size range. Specifically,
Appellant does not explain how the data indicates what the diameter or
length is of the fibers used in the samples. While we note that page 12 of the
Specification discloses a range of fiber sizes based on “mesh” size,
Appellant has not explained how the data in Table V evinces the fiber size
(particularly the diameter) and size distribution claimed. Appellant has the
burden of explaining any proffered evidence of nonobviousness.
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Second, Appellant has not shown unexpected results over the entire
claimed fiber size and size distribution ranges. Indeed, Appellant has not
explained what the fiber sizes of the various samples are. Accordingly, the
Appellant has not shown unexpected results over the entire claimed range.
Finally, Appellant has not explained how the evidence in Table V
compares with the closest prior art (i.e., Georlette). Appellant’s evidence of
non-obviousness must be compared to the closest prior art. Burckel, 592
F.2d 1179-80.
Therefore, based on this record, we determine that the Examiner has
established a prima facie case of obviousness over the combined teachings
of Georlette in view of Bergquist, which has not been persuasively rebutted
by Appellant.

DECISION
We affirm the Examiner’s § 103 rejection of claims 13-19 over
Georlette in view of Bergquist.
The Examiner’s decision is affirmed.
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)(iv).

ORDER
AFFIRMED

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