Ex Parte Kunze et alDownload PDFPatent Trial and Appeal BoardJun 28, 201612682190 (P.T.A.B. Jun. 28, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/682,190 04/08/2010 32692 7590 06/30/2016 3M INNOVATIVE PROPERTIES COMPANY PO BOX 33427 ST. PAUL, MN 55133-3427 FIRST NAMED INVENTOR Ulrich E. Kunze UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www .uspto.gov ATTORNEY DOCKET NO. CONFIRMATION NO. 63617US005 1227 EXAMINER TOLIN, MICHAEL A ART UNIT PAPER NUMBER 1745 NOTIFICATION DATE DELIVERY MODE 06/30/2016 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): LegalUSDocketing@mmm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ULRICH E. KUNZE, LAHOUSSAINE LALOUCH, CLAUS MIDDENDORF, and HARALD H. KRIEG 1 Appeal2014-006668 Application 12/682, 190 Technology Center 1700 Before PETER F. KRATZ, CHRISTOPHER L. OGDEN, and MONTE T. SQUIRE, Administrative Patent Judges. OGDEN, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final decision rejecting claims 1-14 and 16-21 in the above-identified application. We have jurisdiction pursuant to 35 U.S.C. § 6(b). An oral hearing was held on June 17, 2016. We AFFIRM. 1 According to Appellants, the real parties in interest are 3M Company and its affiliate 3M Innovative Properties Company. Appeal Br. 1. Appeal2014-006668 Application 12/682, 190 BACKGROUND Appellants' invention relates to "a method of making a mounting mat for mounting a pollution control element into a catalytic converter." Spec. i-f 1 :5-6. Claim 1, the sole independent claim, is representative: 1. A method of making mounting mats for use in a pollution control device comprising the steps of: (i) supplying inorganic fibers through an inlet of a forming box having an open bottom positioned over a forming wire to form a mat of fibers on the forming wire, the forming box having a plurality of fiber separating rollers provided in at least one row in the housing between the inlet and housing bottom for breaking apart clumps of fibers and an endless belt screen; (ii) capturing clumps of fibers on a lower run of the endless belt beneath fiber separating rollers and above the forming wire; (iii) conveying captured clumps of fibers on the endless belt above fiber separating rollers to enable captured clumps to release from the belt and to contact and be broken apart by the rollers; (iv) transporting the mat of fibers out of the forming box by the forming wire; and ( v) compressing the mat of fibers and restraining the mat of fibers in its compressed state thereby obtaining a mounting mat having a desired thickness suitable for mounting a pollution control element in the housing of a catalytic converter. Appeal Br. 10 (as corrected by the Examiner).2 2 The Examiner notes that in the version of claim 1 reproduced in the Appeal Brief, the steps are incorrectly numbered as (vi}-(x), rather than (i}-(v) as they are in the amendment dated Mar. 26, 2013. See Answer 11. 2 Appeal2014-006668 Application 12/682, 190 The Examiner maintains the following grounds of rejection: I. Claims 1, 2, 4, 7-14, and 19-21under35 U.S.C. § 103(a) as being unpatentable over Int'l Pub. No. WO 2005/003530 Al [hereinafter Merry] (published Jan. 13, 2005) in view of U.S. Patent No. 5,380,580 [hereinafter Rogers] (issued Jan. 10, 1995), Int'l Pub. No. WO 2005/021945 Al [hereinafter Kaneko] (published Mar. 10, 2005), and U.S. Patent Pub. No. US 2005/0098910 Al [hereinafter Andersen] (published May 12, 2005). Final Action 2-6. II. Claims 1-9, 11, 14, 16-19, and 21under35 U.S.C. § 103(a) as being unpatentable over Int'l Pub. No. WO 97/32118 Al [hereinafter Boffey] (published Sept. 4, 1997) in view of Rogers and Anderson. Final Action 6-9. III. Claims 9, 10, and 20 under 35 U.S.C. § 103(a) as being unpatentable over Boffey in view of Rogers and Anderson, and further in view of Kaneko. Final Action 9. IV. Claims 6 and 18 under 35 U.S.C. § 103(a) as being unpatentable over Boffey in view of Rogers and Anderson, and further in view of U.S. Patent No. 6,733,628 B2 [Dinwoodie] (issued May 11, 2004). Final Action 9-10. V. Claims 1-14 and 16-21 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim 11 of copending U.S. Patent Application No. 12/682, 196 (published on Aug. 19, 2010 as US 2010/0209308 Al). Regarding rejection I, Appellants argue with regard to claims 1, 2, 4, 7-14, and 19-21 as a group. See Appeal Br. 4--8; Reply Br. 2--4. Regarding rejections II-IV, Appellants argue with regard to claims 1-11, 14, and 16-21 as a group. See id. at 8; Reply Br. 2--4. Therefore, consistent with the 3 Appeal2014-006668 Application 12/682, 190 provisions of 37 C.F.R. § 41.37(c)(l)(iv) (2013), we limit our discussion to independent claim 1, and all claims stand or fall together. DISCUSSION The Examiner finds that the combination of Merry, Rogers, and Kaneko teaches the structure of a mounting mat and the limitations of step (v) of claim 1, and that Anderson teaches steps (i}-(iv) of claim 1 for the formation of a fiber mat. See Final Action 2--4. The Examiner finds that Andersen's method of producing a fiber mat "provides high production capacity (paragraph 3), the ability to use a wider variety of fiber lengths (paragraph 4), providing mats with an even distribution of fibers and providing a high degree of reliability in operation (paragraph 6)." Id. at 4. Moreover, the Examiner finds that "Andersen provides a device which is very effective at disintegrating clumps of fibers to individualize them and then air lay the fibers to form a mat." Id. (citing Anderson i-fi-f 14--16, 25- 27). Noting that Merry teaches individualizing fibers using a hammer mill, a contact method analogous to the spike rollers of Anderson, see Answer 16 (citing Merry 10:28), the Examiner finds that "the method of Anderson is clearly suitable for use with inorganic fibers," and determines that "there would have been a reasonable expectation of success in using the method of Anderson to form the air laid nonwoven mat of Merry." Id. at 4. Therefore, the Examiner determines that it would have been obvious to one of ordinary skill in the art at the time of the invention to form the mat of Merry using the claimed supplying, capturing, conveying and transporting steps because one of ordinary skill in the art would have been motivated to achieve the above noted 4 Appeal2014-006668 Application 12/682, 190 advantages in accordance with the teachings of Andersen. Id. Appellants argue that the Examiner has failed to establish a prima facie case of obvious based on the combination including Merry and Andersen. See Appeal Br. 7. Appellants argue that "Merry teaches the need to use fibers within a precise range of lengths," id. at 4, and that Merry teaches that to make fiber mats for pollution control devices, fibers must be within a narrow range of 2.5-5 cm, see id. at 5 (citing Merry 10:20-23), which Merry obtains by chopping the fibers using a cutting tool, see id. Appellants also argue that Merry teaches that fiber length may affect "the ability of a mounting mat to be handled." Reply Br. 3 (citing Merry 10:29- 31 ). According to Appellants, however, "Anderson does not provide any teaching that his invention is able to accurately control the lengths of fibers his equipment is processing." Id. at 4. Rather, Appellants argue, Anderson teaches "processing fibers through spiked rollers multiple times until the fibers are 'shredded' and 'disintegrated."' Id. at 5. Thus, Appellants argue that Anderson is incapable of controlling fiber length, and "the person of ordinary skill in the art would not have any confidence that the Anderson invention could be controlled so as to successfully produce the precise lengths of cut fibers specified by Merry." Id. Appellants further argue that "a person of ordinary skill in the art of making mounting mats for pollution control devices would actually be motivated not to use the method and equipment of Anderson to form the mat of Merry." Id. Having carefully considered all of Appellants' arguments and evidence, we are not persuaded that the Examiner has failed to establish a prima facie case of obviousness with respect to claim 1. Nor have we been 5 Appeal2014-006668 Application 12/682, 190 directed to evidence sufficient to rebut the Examiner's prima facie case. As the Examiner correctly notes, the fiber length range indicated in Merry is only a preferred range, which does not appear to exclude other fiber lengths. See Answer 12 (citing Merry 10:23). The Examiner also correctly notes that Boffey discloses an even broader preferred range of 1-10 cm. See id. (citing Boffey 3: 1 ). Appellants have presented no evidence sufficient to establish that a person of ordinary skill in the art would have found the preferred ranges in Merry or Boff ey to be critical to forming mounting mats for use in a pollution control device, such that they would have been dissuaded from producing the mats using the method taught by Anderson. Nor have Appellants presented evidence sufficient to show that a person of ordinary skill in the art would have understood that making a mounting mat would require precise control of fiber lengths beyond the precision of Anderson's method. Although Merry discloses that "[ d]epending upon the length of the fibers, the resulting mat typically has sufficient handleability to be transferred to a needle punch machine without the need for a support (e.g., a scrim)," Merry 10:29-31, Merry does not indicate that all mats with fibers within the preferred range (or the preferred range ofBoffey) would have this level of handleability, that a person of ordinary skill in the art would not have had reason to produce mats without this level of handleability, or that mats produced by a method informed by the teachings of Anderson would not have this level of handleability. Therefore, we find no reversible error in the Examiner's decision to reject independent claim 1. For the same reasons, we find no reversible error in the Examiner's decision to reject dependent claims 2-14 and 16-21. 6 Appeal2014-006668 Application 12/682, 190 We also summarily affirm the non-contested provisional obviousness- type double patenting rejection. DECISION 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)(l )(iv). AFFIRMED 7 Copy with citationCopy as parenthetical citation