Ex Parte Kinsley

Board of Patent Appeals and Interferences

May 5, 2005

09950642 (B.P.A.I. May. 5, 2005)

1
The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte HOMAN B. KINSLEY, JR.
_____________
Appeal No. 2005-1083
Application No. 09/950,642
______________
ON BRIEF
_______________
Before PAK, DELMENDO and PAWLIKOWSKI, Administrative Patent
Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from
the examiner’s refusal to allow claims 1, 2, 4 through 11,
18 through 23, and 26 through 31, which are all of the claims
pending in the present application. Claim 1 was amended
subsequent to the final Office action dated June 4, 2003. See
the Advisory Action dated July 7, 2003.
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Application No. 09/950,642
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APPEALED SUBJECT MATTER
The appellant does not state that the claims on appeal do
not fall or stand together. See the Brief, page 4. Nor does the
appellant argue the claims on appeal separately. See the Brief
in its entirety. Therefore, for purposes of this appeal, we
select claim 1 from all the claims on appeal and decide the
propriety of the examiner’s rejection based on this claim alone
in accordance with 37 CFR § 1.192(c)(7)(2003) and 37 CFR § 41.37
(c)(1)(vii)(2004). Claim 1 is reproduced below:
1. A process for making a wet-layed metal fiber non-
woven sheet which comprises
(a)(i) preparing an aqueous dispensing fluid comprising
a non-carboxy containing soluble polymer in solution, with
the non-carboxy containing soluble polymer being polyvinyl
alcohol, starch or a cellulose ether, and (ii) dispersing
metal fibers into said aqueous dispensing fluid, with the
non-carboxy containing water soluble polymer being dissolved
in the aqueous dispensing fluid in an amount such that the
viscosity of the dispensing fluid with dispersed metal
fibers is suitable for wet laying techniques, and with the
water soluble polymer comprising from 1 to 5 weight percent
of the aqueous dispensing fluid,
(b) applying the aqueous dispensing fluid with
dispersed metal fibers onto a screen, and
(c) removing the aqueous dispensing fluid to thereby
form a metal fiber sheet.
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Application No. 09/950,642
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THE EVIDENCE
The examiner relies on the following evidence:
Terliska 4,265,703 May 5, 1981
“Metal Fibers,” Synthetic Fibers In Papermaking, 145, 157-61
and 167-80 (O.A. Battista ed., Interscience Publ., New York
1964)(hereinafter referred to as “Battista”).
THE REJECTION
Claims 1, 2, 4 through 11, 18 through 23, and 26 through
31 stand rejected under 35 U.S.C. § 103(a) as unpatentable over
Battista with or without Terliska.
OPINION
We have carefully reviewed the claims, specification and
applied prior art references, including all of the arguments and
evidence advanced by both the examiner and the appellant in
support of their respective positions. This review has led us to
conclude that the examiner’s Section 103 rejection is well
founded. Accordingly, we affirm this rejection for essentially
those reasons set forth in the Answer and below.
We observe that the appellant unequivocally and clearly
states at page 1 of the specification that:
The present invention relates to a process for
making a wet-layed metal fiber nonwoven sheet. In
particular, the present invention relates to such a
process which employs a unique dispersing agent in the
preparation of the metal fiber sheet.
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Application No. 09/950,642
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Claim 1 is directed to a process for making a wet-layed non-woven
metal fiber sheet. This process, according to claim 1,
comprises, inter alia, dispersing metal fibers into an aqueous
dispensing fluid containing the unique dispersing agent
and applying the resulting fluid containing the dispersed
metal fibers onto a screen to form a metal fiber sheet.
The appellant does not dispute the examiner’s finding that
Battista teaches a process for making a wet-layed non-woven metal
fiber sheet corresponding to the claimed process, except for the
employment of the claimed mixing sequence and the claimed amount
of the unique dispersing agent (water soluble polymer) in the
dispensing fluid. Compare the Answer in its entirety with the
Brief, page 4. Thus, the initial question raised by the
appellant is whether Battista alone, or together with Terliska,
teaches or would have suggested the claimed mixing sequence and
the claimed amount of the dispersing agent. On this record, we
answer this question in the affirmative.
We note that Battista describes “[d]isperse and blend metal
fibers. Add dispersing aids[, such as polyvinyl alcohol] and
carrier fibers” as the first stage of a “[m]etal fiber paper
manufacturing flow chart.” See Battista, page 157, Figure 6.34
and page 161. Substantial evidence supports the examiner’s
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finding that implicit in the above description in Battista is
that the metal fibers are necessarily added to water (dispensing
fluid) containing a dispersing aid, such as polyvinyl alcohol.
As pointed out by the examiner (Answer, page 4), to do otherwise
would prevent one of ordinary skill in the art from “dispersing”
the metal fibers. Specifically, the examiner correctly reasons
(Answer, page 4) that:
It would defeat the purpose of using a dispersing agent
if the fibers are first agitated and dispersed in water
prior to the addition of the dispersing agent . . . a
fair reading would be to add the metal fibers with
agitation to water already containing the dispersant in
order to prevent entanglement and achieve uniform
dispersal of the fibers.
This reasoning is indeed supported by Battista which teaches at
page 161 that
less expensive types of metal fibers available today
possess dimensions and specific gravities different
from those observed on ususal papermaking fibers . . .
The use of mucilaginous materials, such as polyvinyl
alcohol, and carrier fibers, such as cellulose . . . ,
to help disperse the metal fibers to reduce the
incidence of excessive settling, to prevent fiber
entanglement . . . .
Thus, we determine that one of ordinary skill in the art would
have interpreted the phrase “disperse . . . metal fibers” in
Battista as adding the metal fibers to water containing the
dispersing aid to cause “dispersion” of the metal fibers.
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Even if we agreed with the appellant that Battista does not
implicitly teach the claimed mixing sequence, we find that there
is at least sufficient suggestion to one of ordinary skill in the
art that the earlier the dispersing aid is used the better the
dispersion of the metal fibers as is apparent from the above
teachings of Battista. This finding is further confirmed by
Terliska which teaches that the preparatory treatment of metallic
fibers with a binder, such as polyvinyl alcohol and starch,
“substantially improves the dispersibility of the metallic fibers
. . . , ” thus suggesting the desirability of interacting the
dispersing aid and the metallic fibers at the earliest moment
possible. See column 4, lines 57-65. Thus, we conclude that it
would have been at least prima facie obvious to employ the
claimed mixing sequence in the process of Battista. See also In
re Burhans, 154 F.2d 690, 692, 69 USPQ 330, 332 (CCPA 1946).
With respect to the claimed amount of the dispersing aid
per the amount of water used, we find that Battista and/or
Terliska evince that the amount of dispersing aid used is a
result effective variable. That is, Battista and/or Terliska
recognize that the amount of the dispersing aid used affects the
dispersibility of metallic fibers. Thus, regardless of how the
amount of the dispersing aid used is defined (e.g., in terms of
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the amount of a dispersing aid per the amount of water, and/or
fibers, size of a container, etc.), we agree with the examiner
that the use of the optimum amount of the dispersing aid,
inclusive of the claimed amount of the dispersing aid, for the
purpose of dispersing the metallic fibers is well within the
ambit of one of ordinary skill in the art. See In re Woodruff,
919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990); In
re Boesch, 617 F.2d 272, 276, 205 USPQ 215, 219 (CCPA 1980).
The appellant argues that the claimed mixing sequence
imparts unexpected results, thereby rebutting any inference of
obviousness established by the examiner. See, e.g., the Brief,
page 5. In support of this argument, the appellant refers to a
declaration executed by Homan B. Kinsley, Jr., the inventor
listed in this application, on July 14, 1999. Id. We determine
that the declaration is ineffective to overcome the prima facie
case of obviousness established by the examiner.
We initially note that Battista teaches the claimed mixing
sequence in a process essentially identical to that of the
appellant as indicated supra. Thus, the appellant cannot
overcome the examiner’s rejection by relying on the declaration
which shows that the claimed (Battista’s) mixing sequence imparts
unexpected results. To do so would be to impart patentability
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for recognizing inherent results of prior art processes. Compare
In re Malagari, 499 F.2d 1297, 1302, 182 USPQ 549, 553 (CCPA
1974)(without novelty, a showing of unexpected results is
irrelevant).
Even if we must consider alleged unexpected results shown in
the declaration, our conclusion will not be altered. We find
that the declaration does not establish that the claimed
invention imparts unexpected results.
First, we cannot ascertain from the declaration that the
alleged unexpected improvement is due to, inter alia, the amount
of polyvinyl alcohol (dispersing aid) used, the type of polyvinyl
alcohol source used, the type of agitating conditions used
(agitator tip speed, temperature, time, etc.) or the claimed
mixing sequence as alleged. See In re Heyna, 360 F.2d 222, 228,
149 USPQ 692, 697 (CCPA 1966)(the cause-and-effect relationship
which the appellant desires to show between the claimed mixing
sequence and the improved results (uniformly formed paper having
no spindle formation). In this regard, we note that sheet #4,
which is said to be representative of the appellant’s invention,
is made by adding 6.0 grams of uncoated nickel fiber in 4000
grams of “a 4% solution of Air Products & Chemicals Airvol #540
polyvinyl alcohol in water” having a viscosity of 27 centipoise.
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We note that sheet #5 allegedly representative of a prior art
invention is made by adding 6.0 grams of nickel fibers (may be
coated or uncoated) to 4 liters of water and agitated (using the
same agitating speed and duration as above) the mixture before
adding 0.08 grams of polyvinyl alcohol (dispersing aid) of an
unknown source to the mixture, without further dilution. Sheet
#6 allegedly representative of a prior art invention is made by a
process used to make sheet #5, except that unknown agitation
conditions are employed and “the water [is replaced with] the
large amount of polyvinyl alcohol solution that we use in Sample
#4.”
Second, we note that the declaration does not demonstrate
that the alleged improvements are unexpected. In re Freeman,
474 F.2d 1318, 1324, 177 USPQ 139, 143 (CCPA 1973). As indicated
supra, there is a reasonable expectation from reading Battista
and/or Terliska that the earlier the dispersing aid is used the
better the dispersion of the metal fibers, thus preventing
excessive settling and fiber entanglement. Thus, one of ordinary
skill in the art would have reasonably expected the alleged
improvements resulting from adding metal fibers to a dispensing
liquid containing a dispersing aid which would have promoted
dispersibility of the metal fibers from the moment the fibers are
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introduced into the dispensing liquid. Similarly, one of
ordinary skill in the art would have reasonably expected that
adding more dispersing aid would correspondingly increase
dispersibility of the metal fibers since the purpose of the
dispersing aid is to promote dispersion of the metal fibers.
See, e.g., In re Skoner, 517 F.2d 947, 950, 186 USPQ 80, 82 (CCPA
1975)(“[e}xpected beneficial results are evidence of obviousness
of a claimed invention just as unexpected beneficial results are
evidence of unobviousness”).
Finally, we find that the declaration does not provide a
comparison of the claimed invention with the closest prior art.
See In re Baxter Travenol Labs., 952 F.2d 388, 391, 21 USPQ2d
1281, 1285 (Fed. Cir. 1991). We find Battista to be the closest
prior art since it teaches the claimed mixing sequence as
indicated supra.
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Thus, we determine that the evidence of obviousness, on
balance, outweighs the evidence of unobviousness proffered by the
appellant. Accordingly, we affirm the examiner’s decision
rejecting the claims on appeal under Section 103.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
CHUNG K. PAK )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
ROMULO H. DELMENDO ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
BEVERLY A. PAWLIKOWSKI )
Administrative Patent Judge )
CKP/hh
Appeal No. 2005-1083
Application No. 09/950,642
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E. JOSEPH GESS
BURNS, DOANE, SWECKER & MATHIS, L.L.P.
P.O. BOX 1404
ALEXANDRIA, VA 22313-1404