Ex Parte Letourmy et al

Patent Trial and Appeal Board

Feb 12, 2019

12919975 (P.T.A.B. Feb. 12, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/919,975 12/07/2010 Arnaud Letourmy
22850 7590 02/14/2019
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
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.
366296USOPCT 9577
EXAMINER
CHOI, PETER Y
ART UNIT PAPER NUMBER
1786
NOTIFICATION DATE DELIVERY MODE
02/14/2019 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):
patentdocket@oblon.com
OBLONPAT@OBLON.COM
iahmadi@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ARNAUD LETOURMY, ERIC MANGEMATIN, and
PATRICE MARTINS
Appeal2017-006044
Application 12/919,975
Technology Center 1700
Before DONNA M. PRAISS, MICHAEL G. McMANUS, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
PRAISS, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from the Final Rejection of
claims 1, 2, 4--8, 10, and 19--30 under 35 U.S.C. § 103(a). We have
jurisdiction under 35 U.S.C. § 6(b ). An oral hearing was held on February 5,
2019. We AFFIRM.
1 This decision makes reference to the Specification filed Aug. 27, 2010
("Spec."), the Final Office Action mailed June 2, 2016 ("Final Act."), the
Appeal Brief filed Nov. 1, 2016 ("Appeal Br."), the Examiner's Answer
mailed Dec. 30, 2016 ("Ans."), and the Reply Brief filed Feb. 28, 2017
("Reply Br.").
Appeal2017-006044
Application 12/919,975
The subject matter of this appeal relates to mineral wool based
products, such as glass wool, intended especially for making thermal and
possibly acoustic insulation products for the lining of walls and/or roofs.
Spec. 1:5-9. Claims 1, 4, and 21 are illustrative and reproduced from the
Claims Appendix ( disputed elements italicized):
1. A thermal insulation product having a three-
dimensional rectangular parallelepipedal shape with plane
dimensions longer than the thickness of the product, consisting
essentially of fibers of mineral wool, wherein the fibers have a
micronaire of less than 10 L/min, the product has a thermal
conductivity of less than 31 mW /(m.K.), and the product has a
density between 30 and 60 kg/m3;
wherein the fibers have an average fiber diameter of less
than 2 µm; and
wherein at least 75% of the fibers are approximately
parallel to the longer dimensions of the product, meaning a
parallelism to within plus or minus 30° with respect to the
planes formed by the longer dimensions of the product.
4. The thermal insulation product of claim 1, wherein a
structure of the mineral wool comprises the fibers, bound
together by a binder, in proportions of 5 to 8% by weight of the
product.
21. The thermal insulation product of claim 1, wherein
65% of the fibers have an average fiber diameter of less than
lµm.
Appeal Br. 38, 39 (Claims Appendix).
The Examiner maintains, and Appellants2 appeal, the following
rejections:
2 Appellants identify the real party in interest as Saint-Gobain Isover.
Appeal Br. 1.
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Application 12/919,975
1. Claims 1, 2, 4--8, 10, and 19--30 under (pre-AIA) 35 U.S.C.
§ 112 ,r 1 for failing to comply with the written description
requirement;
2. Claims 1, 2, 4--8, 10, and 19--30 under (pre-AIA) 35 U.S.C.
§ I03(a) as unpatentable over Nowobilski3 in view of Maricourt; 4
and
3. Claim 4 under (pre-AIA) 35 U.S.C. § I03(a) as unpatentable over
Nowobilski in view ofMaricourt and further in view of Toas. 5
Ans. 2-10; Appeal Br. 4--36.
OPINION
The dispositive issues for this appeal are whether the Examiner erred
in finding that (1) the Specification lacks written descriptive support for the
thickness of the product relative to the length of plane dimensions, (2) the
Specification lacks written descriptive support for 65% of the fibers having
an average diameter of less than 1 µm, and (3) whether the disclosures of
Nowobilski and Maricourt are limited to their preferred ranges.
After review of the arguments and evidence presented by both
Appellants and the Examiner, we affirm the stated rejections.
Rejection 1: Written Description
The Examiner determines that the recitation in claim 1 "a three-
dimensional rectangular parallelepipedal shape with plane dimensions longer
than the thickness of the product" lacks written descriptive support in the
3 US 4,537,820, issued Aug. 27, 1985.
4 US 2006/0281622 Al, published Dec. 14, 2006.
5 US 2003/0040239 Al, published Feb. 27, 2003.
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Application 12/919,975
Specification because the relationship between the plane dimensions and the
thickness of the product is not disclosed. Final Act. 2. The Examiner
further determines that the recitation in claim 21 of "65% of the fibers have
an average diameter of less than 1 µm" lacks written descriptive support
because the Specification only discloses "more than 65% of the fibers had an
average diameter of less than 1 µm." Id. at 3.
Appellants argue the subject matter of claims 1 and 21, and rely on the
same arguments presented for claim 1 for dependent claims 2, 4--8, 10, 19,
20, and 22-30. Appeal Br. 10-13. In accordance with 37 C.F.R.
§ 4I.37(c)(l)(iv), claims 2, 4--8, 10, 19, 20, and 22-30 will stand or fall
together with claim 1 on which they depend either directly or indirectly.
Claim 1
Appellants contend that the rejection is in error because the
Specification discloses that the product "is substantially of rectangular
parallelepipdal shape," that "planes form[] the long dimensions of the
product," and that "the thickness of the product (perpendicular to the long
dimensions) is minimized." Appeal Br. 10-11 (citing Spec. 6:24--25, 6:28-
29, 6:32-34). According to Appellants, "one skilled in the art reading
Applicant's Specification would have been hard-pressed to state that
Applicants' Specification as originally filed does not disclose the claimed
limitation between the plane dimensions and thickness of the product." Id.
at 11.
The Examiner responds that the Specification does not indicate which
"plane dimensions" are referenced as being longer (i.e. in the X dimension
or the Y dimension of a rectangular parallelepipedal shape) and there are no
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Application 12/919,975
values associated with plane dimension lengths with which to extrapolate a
relationship as claimed. Ans. 10-11. The Examiner points out that the
portion of the Specification cited by Appellants regarding "planes forming
the long dimensions of the product" is not characterizing the planes as the
long dimensions of the product, but forming the long dimensions of the
product when describing what is meant by "approximately parallel." Id. at
11 ( citing Spec. 6:24--29). The Examiner further responds that the
arrangement described in the Specification as being minimized relates to the
arrangement of fibers in the product, i.e. "[t]he proportion of fibers oriented
along the thickness of the product (perpendicular to the long dimensions) is
minimized," and not to the structure of the product. Id.
In the Reply Brief, Appellants provide a number of partial excerpts
from the Specification relating to the form of the product being substantially
of rectangular parallelepipedal shape, the density of the product being
reduced to reduce its thickness, and fibers being oriented substantially
parallel to the longest dimensions of the fiber blanket obtained as supporting
its position that claim 1 's requirement that the product has a three
dimensional shape with plane dimensions longer than the thickness of the
product. Reply Br. 2-3.
We are not persuaded of error in the Examiner's determination that
the claimed thickness of the product lacks descriptive support in the
Specification. "Adequate written description means that the applicant, in the
specification, must 'convey with reasonable clarity to those skilled in the art
that, as of the filing date sought, he or she was in possession of the [ claimed]
invention."' Agilent Techs., Inc. v. Afjj;metrix, Inc., 567 F.3d 1366, 1379
(Fed. Cir. 2009) (reh'g. en bane denied Sept. 18, 2009) (citation omitted).
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Application 12/919,975
At best, Appellants provide support for the product having ( 1) a thickness,
(2) a rectangular parallelepipedal shape, (3) a density, (4) long dimensions,
and ( 5) reduced density reduces the thickness. However, none of
Appellants' citations to the Specification provide a thickness of the product
relative to other dimensions of the product that supports the recitation "plane
dimensions longer than the thickness of the product." In the absence of any
disclosure in the Specification of the lengths or relative sizes of the thickness
and other dimensions of the product, Appellants have not demonstrated error
in the rejection of claim 1 for lack of written descriptive support.
Claim 21
Regarding claim 21, Appellants contend "[i]t should suffice to say
that '65% of the fibers have an average fiber diameter of less than 1 µm' in
all products 'wherein more than 65% of the fibers have an average fiber
diameter of less than 1 µm."' Appeal Br. 12 (citing Spec. 9:28-29, 16:6-7).
The Examiner responds that the claim is directed to an exact value
that is excluded by the Specification statement "more than 65% of the fibers
had an average diameter of less than 1 µm." Ans. 12 (citing 9:28-29, 16:6-
7).
In the Reply Brief, Appellants restate their position that "more than
65%" is inclusive of 65% and specifically argue that the written description
requirement does not require a description of the subject matter in the same
language as the claims. Reply Br. 3.
We are not persuaded of error in the Examiner's determination that
the limitation recited in claim 21 lacks written descriptive support in the
Specification. The Specification qualifies the amount of the fibers having a
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diameter of less than 1 µmas "more than 65%." Spec. 9:28-29, 16:6-7.
Appellants' arguments do not direct us to any portion of the Specification or
provide other evidence to support their contention that the claim limitation
"more than 65%" includes an amount of 65% as its lower limit. Under
Appellants' rationale, if "more than 65%" is to be understood as inclusive of
the amount of 65%, then it could also be understood as inclusive of every
amount from 65% and below in addition to all amounts that are "more than
65%" as explicitly stated. This would render the claim limitation
meaningless. 6 Appellants correctly state that the claimed subject matter
need not be described "in haec verba" in the original specification in order
to satisfy the written description requirement. In re Wright, 866 F.2d 422,
425 (Fed. Cir. 1989). However, Appellants have not adequately shown how
the disclosure of "more than 65%" means something other than an amount
greater than 65%. Accordingly, Appellants' interpretation of "more than
65%" is not persuasive of error based on the cited record in this appeal.
Conclusion
For the foregoing reasons, we affirm the Examiner's rejection under
(pre-AIA) 35 U.S.C. § 112 ,r 1 of claims 1, 2, 4--8, 10, and 19-30.
Rejection 2: Obviousness over Nowobilski and Maricourt
The Examiner determines that Nowobilski in view of Mari court
disclose the subject matter of claims 1, 2, 4--8, 10, and 19-30 for the reasons
6 We note that Appellants also use the mathematical expression of "equal to
or greater" in claim 5. Thus, it appears that Appellants are aware that this
expression best defines a range inclusive of a lower limit.
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stated on pages 3-8 of the Final Rejection. We address below each claim
separately argued by Appellants.
Claim 1
In the Appeal Brief, Appellants argue that the prior art combination
does not suggest the claimed product or enable those skilled in the art to
make the claimed product without undue experimentation because "[t]he
prior art provides no specific teaching, and certainly no specific example, of
an insulation product with fibers having a micronaire less than 10 L/min and
an average diameter of less than 2µm, and a density between 30 and 60
kg/m.3'' Appeal Br. 14--16. Specifically, Appellants argue that
Nowobilski's disclosure that the diameter of the glass fibers making up glass
fiber sheets can be from 0.2 to 13 microns, and preferably from 1 to 5
microns, "does not teach or reasonably suggest to the ordinary artisan that
the average diameter of its glass fibers can be less than 2 µm, and is
preferably less than 1 µm." Id. at 17. According to Appellants, the claimed
diameter would not be expected or enabled because Nowobilski's one
example uses commercially available glass fiber sheets having glass fibers
with a diameter of 3 microns. Id. at 17-18. Appellants also contend that the
density ofNowobilski's insulation product does not overlap the claimed
range because the range of 14 to less than 3 0 pounds per cubic foot (pct)
corresponds to 224 kg/m3 to less than 480 kg/m3 and, thus, outside the
claimed 30 to 60 kg/m3 required by the claims. Id. at 18 (citing Nowobilski
3:64--4:3).
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In addition, Appellants dispute the Examiner's finding that
Nowobilski's product meets the micronaire value required by the claims
based on the following correlation disclosed in Appellants' Specification:
In general, the fibers obtained by internal centrifugation have an
average diameter of 3 µm, which corresponds to a micronaire of
3 under 5 grams, or else an average diameter of 2 µm, which
corresponds to a micronaire of 2.8 under 5 grams.
Id. at 19 (quoting Spec. 2:31-35). According to Appellants, the micronaire
of conventional fibers having an average diameter of 3 µm and a
corresponding micronaire of 3 under 5 grams "is significantly higher than
Applicant's claimed maximum mi cronaire of 10 L/ min." Id.
Appellants argue that there is also a significantly different technical
problem addressed by Nowobilski, namely improving the compressive
strength of commercially available thermal insulation board without the use
of chemicals or adhesives, than by the invention, which "improved thermal
insulation properties ... in reasonable thicknesses for the building
application." Id. at 20 (quoting Spec. 5:28-32, citing Nowobilski 2: 1--4).
Appellants contend that Maricourt does not remedy the alleged
deficiencies ofNowobilski and that Maricourt's preferred density of
between 60 and 200 kg/m3 would not have led an ordinarily skilled artisan to
optimize the density to between 30 and 60 kg/m3 as required by the claims.
Id. at 22-23.
The Examiner responds that the concepts of glass fibers oriented
perpendicular to the direction of heat leak maximizes the thermal resistance
of the board as well as fibers having average fiber diameters within the
claimed range are taught by Nowobilski. Ans. 12-13. The Examiner finds
that Appellants' thickness range of "equal to or greater than 3 0 mm" is not
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Application 12/919,975
thin and is potentially an infinite thickness range. Id. at 13. The Examiner
further finds that Nowobilski does not require criss-crossing its glass fibers
and that Nowobilski acknowledges broken fibers stick up and orient
themselves at right angles, which Nowobilski remedies by applying a light
compressive force resulting in a maximum of fibers oriented perpendicular
to the direction of heat leak. Id. at 13-14 (citing Nowobilski 4:58-5:19).
The Examiner also responds that the rejection is not based on Nowobilski
alone, that the cited art is not limited to their examples, and that Nowobilski
contemplates varying the density and discloses a density of less than 30
pounds per cubic foot, which overlaps the claimed range. Id. at 15-17, 22
(citing Nowobilski 3:64--4:13).
The Examiner additionally finds that Maricourt discloses fibers
having an overlapping micronaire or fiber diameter value as Nowobilski
when the density of Maricourt's product is at least 40 kg/m3 and the thermal
conductivity is at most 3 5 mW /mK. The Examiner then determines that it
would have been obvious to form the insulation product ofNowobilski with
the conventional densities and corresponding thermal conductivities of
Maricourt to form insulation products having the desired properties known
in the art, where such insulation products would have been predictably
suitable as insulation materials comprising glass fibers. Id. at 16-17. The
Examiner also responds that preferred ranges disclosed by the prior art
references do not differentiate the prior art from the claimed invention. Id.
at 20. Regarding the correlation between micronaire and an average
diameter, the Examiner finds that a diameter of less than 2µm disclosed by
Nowobilski would meet both the claimed average diameter and the claimed
micronaire. Id. at 17-18. Regarding the technical problem addressed by
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Application 12/919,975
Appellants' invention and Nowobilski, the Examiner finds that an insulation
board concerned with compressive strength is not mutually exclusive from
an insulation product having a reasonable thickness and that a skilled artisan
would have expected an insulation board to comprise both compressive
strength and a reasonable thickness. Id. at 18.
In the Reply Brief, Appellants contend that neither Nowobilski nor
Maricourt teaches the claimed thermal insulation product and that a skilled
artisan would have to disregard the preferences and examples of the prior art
to conclude that it would have been obvious to modify Nowobilski's high
density thermal insulation product. Reply Br. 3--4. According to
Appellants, undue experimentation without a reasonable expectation of
success would be required to modify Nowobilski's high density thermal
insulation product with the non-preferred teachings ofMaricourt and in the
absence of any teaching or motivation or suggestion to do so. Id. at 4.
Appellants contend that Nowobilski's thermal insulation product is not a
conventional insulation product, therefore, there would have been no
incentive to "make it undesirably conventional by drastically reducing its
density and compressibility contrary to Nowobilski's inventive direction and
disclosure." Id. at 6.
For the reasons discussed below, Appellants' arguments fail to
identify a reversible error in the Examiner's findings as to claim 1. In re
Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
First, it is undisputed that Nowobilski discloses a thermal insulation
board comprising "a maximum of glass fibers which can be oriented
perpendicular to the direction of heat leak and thus maximizes the thermal
resistance of the board." Nowobilski 5:5-7, 5:14--20; Final Act. 4. It is
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undisputed that Nowobilski discloses glass fibers used to make up glass fiber
sheets where the diameter of the glass fibers is from O .2 to 13 microns and
preferably from 1 to 5 microns, which ranges both encompass the claimed
average diameter of 2 microns. Nowobilski 3:41--43; Final Act. 3. It is
undisputed that Nowobilski broadly discloses a density range of "less than
30 pounds per cubic foot," which encompasses the claimed range.
Nowobilski 3:41--46; Final Act. 3. It is also undisputed that Nowobilski
discloses that "for a specific fiber diameter, the thermal conductivity of the
board varies with board density." Nowobilski 6:23-25; Final Act. 4. The
Examiner's finding that Nowobilski's Figure 2 discloses thermal
conductivities within the claimed ranges (Final Act. 6) is also not disputed.
Further, Appellants do not dispute that Maricourt discloses a conventional
insulation product having a thermal conductivity of at most 35 m W/mK and
a density of at least 40 Kg/m3• Mari court ,r,r 3 8, 63; Final Act. 6; Ans. 16-
17.
Second, Appellants do not direct us to any evidence that would rebut
the Examiner's finding (Final Act. 4) that a relationship exists between
micronaire values and average diameters such that an average diameter of
0.2 to 1.0 micron would have a micronaire value within the claimed range.
The Examiner's finding is supported by the evidence cited in this record on
appeal. Spec. 2:37--4:5; Maricourt ,r 100.
Third, to the extent Appellants challenge the Examiner's reason to
combine Maricourt's teaching of thermal conductivity and density
parameters for a conventional insulation board on the basis that Maricourt
discloses a "crimping" process not used by Nowobilski (Appeal Br. 21-22),
Appellants' argument is not persuasive because "[t]he test for obviousness is
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not whether the features of a secondary reference may be bodily
incorporated into the structure of the primary reference. . . . Rather, the test
is what the combined teachings of those references would have suggested to
those of ordinary skill in the art." In re Keller, 642 F.2d 413, 425 (CCPA
1981 ). The Examiner's rejection is over the disclosure ofNowobilski's
insulation board that "achieves maximum insulation when the glass fibers
are oriented perpendicular to the direction of heat leak" in view of
Maricourt, which is cited to support the Examiner's finding that the thermal
conductivity and density parameters disclosed in Maricourt are desirable for
a conventional insulation board and not for Maricourt's process (Final Act.
6; Ans. 17). Thus, Appellants' argument lacks any meaningful explanation
as to why it would not have been within the purview of one of ordinary skill
in the art to modify the density and thermal conductivity ofNowobilski's
insulation board.
Appellants' contention (Reply Br. 6) that Nowobilski's product is not
a conventional insulation product and, therefore, it would be undesirable to
make it a conventional insulation product by reducing its density and
compressibility is not persuasive because Nowobilski itself contemplates
varying the density, does not exclude density being below 30 pounds per
cubic foot, and recognizes that the thermal conductivity of the board varies
with board density. Nowobilski 3:64--4: 13, 6:20-40; Ans. 16; Final Act. 4.
Accordingly, Appellants do not adequately explain why it would not have
been obvious to a skilled artisan to vary the density and thermal conductivity
ofNowobilski's insulation board, as desired, in view of the disclosures of
both Nowobilski and Maricourt.
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Application 12/919,975
For the foregoing reasons and the reasons provided in the Examiner's
Answer and the Final Office Action, we affirm the Examiner's rejection
under 35 U.S.C. § 103(a) of claims 1, 2, 4--8, 10, and 19-30.
Claim 2
Claim 2 depends from claim 1 and recites "having a density between
35 kg/m3 and 55 kg/m3." Appeal Br. 38 (Claims Appendix).
Appellants contend that the Examiner's rejection is in error because
Maricourt discloses a preferred range of 60 to 200 kg/m3 and even though
Maricourt also discloses a density limit of at least 40 kg/m3, "Maricourt is
more interested in tear resistance and compressive strength and achieves
those improvements by crimping." Id. at 31.
The Examiner replies that Maricourt's fiber micronaire of less than or
equal to 18 L/min and thermal conductivity of at most 35 m W/mK include
and substantially overlap Appellants' claimed ranges. Ans. 28-29. The
Examiner further responds that Maricourt establishes that a person having
ordinary skill in the art would have decreased the density of the product as
the diameter of the fibers and the thermal conductivity of the thermal
insulation product is reduced. Id. at 29.
We are not persuaded that the Examiner reversibly erred in rejecting
claim 2 over the combination ofNowobilski and Maricourt for substantially
the same reasons discussed above in connection with claim 1. Nowobilski
discloses that "for a specific fiber diameter, the thermal conductivity of the
board varies with board density." Nowobilski 6:23-25; Final Act. 4.
Maricourt discloses a conventional insulation product having a thermal
conductivity of at most 3 5 mW /mK and a density of at least 40 Kg/m3.
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Maricourt ,r,r 38, 63; Final Act. 6; Ans. 16-17. Accordingly, the Examiner's
determination that it would have been obvious to a person having ordinary
skill in the art to modify Nowobilski's insulation product to have the desired
properties known in the insulation art as predictably suitable for insulation
materials comprising glass fibers, as established by Maricourt, is supported
by the preponderance of the evidence cited in this record on appeal. Final
Act. 6-7.
Claims 20 and 22
Claims 20 and 22 each depend from claim 1 and recite "wherein the
fibers have a micronaire of between 3 and 6 L/min" and "having a density
between 35 and 55 kg/m3 and an average fiber diameter of less than 1 µm,"
respectively. Appeal Br. 39 (Claims Appendix).
Appellants contend that the Examiner's rejection of claim 20 is in
error because Mari court's teaching of a micronaire less than 18 L/min is
inconsistent with Nowobilski's preferred glass fiber diameter of 1 to 5
microns and conflicts with Maricourt's preferred range of "especially
between 11 and 15 L/min." Appeal Br. 32 (citing Maricourt ,r 24).
Appellants contend that the rejection of claim 22 is in error because the cited
prior art would not have reasonably led a skilled artisan to the claimed
density and average fiber diameter because Nowobilski's product has a
density significantly greater than 60 kg/m3 and has a preferred glass fiber
diameter of 1 to 5 microns. Id.
The Examiner replies that Nowobilski discloses the glass fiber
diameters can be 0.2 to 13 microns and preferably 1 to 5 microns and, since
diameter is analogous to micronaire, Maricourt's disclosure of a micronaire
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less than 18 L/min is consistent with the teachings of Nowobilski. Ans. 29--
30. The Examiner also responds that the lower limit of product density set
forth by the prior art combination is "at least equal to 40 kg/m3" and the
lower limit of fiber diameter is 0.2 microns, which is less than 1 micron. Id.
at 30.
We are not persuaded that the Examiner reversibly erred in rejecting
claims 20 and 22 over the combination ofNowobilski and Maricourt for
substantially the same reasons discussed above in connection with claim 1.
The Examiner's findings that the prior art combination discloses
insulation materials comprising glass fibers having fiber
diameters/micronaires and density properties overlapping the claimed ranges
is supported by the preponderance of the evidence cited in this appeal
record. Nowobilski 3:41--43, 3:64--66; Maricourt ,r,r 49, 63.
Claims 23 and 24
Claims 23 and 24 depend from claims 1 and 2, respectively, and both
recite "wherein the fibers are approximately parallel to the longer
dimensions of the planes of the product in a proportion of at least 80%."
Appeal Br. 40 (Claims Appendix).
Appellants contend that the Examiner erred because the processes
used by Nowobilski and Maricourt do not suggest that the increased
proportion of fibers recited in claims 23 and 24 could be achieved because
they tend to reduce the proportion of glass fibers that are parallel to the
longer dimensions of the product. Appeal Br. 33-34. Appellants rely on
Nowobilski's disclosure that stacking and compressing starting glass fiber
sheets may cause breakage of some of the fibers so that they become
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oriented perpendicular to the other fibers and parallel to the heat leak.
Appeal Br. 33 (citing Nowobilski 1:61---64). Appellants contend that
Maricourt's insulation product would be expected to be "even further
misaligned" because the product is "obtained by internal centrifugation and
attenuation by a high-temperature gas stream and by crimping .... " Id.
( citing Maricourt, claim 1 ).
The Examiner replies that Nowobilski acknowledges that broken
fibers tend to stick up and remedies this problem by applying a light
compressive force where fewer glass fibers are damaged or broken, resulting
in a maximum of glass fibers oriented perpendicular to the direction of heat
leak and maximizing the thermal resistance of the board. Ans. 30.
We are not persuaded that the Examiner reversibly erred in rejecting
claims 23 and 24 over the combination ofNowobilski and Maricourt for the
reasons stated by the Examiner in the Final Action and the Answer. The
Examiner's finding that Nowobilski teaches maximizing both the maximum
glass fibers oriented perpendicular to the direction of heat leak and, thus, the
thermal resistance of the board is supported by the preponderance of the
evidence cited in this appeal record. The Examiner's finding that
Nowobilski discloses how to remedy the breakage of fibers that would
interfere with the fiber orientation is also supported by the record.
Nowobilski 4:58-5: 19; Ans. 13-14; Final Act. 3--4.
Claims 25-28
Claims 25 and 26 depend indirectly from claims 1 and 2, respectively,
and recite "wherein the approximately parallel fibers are produced by an
internal centrifugation fiberizing process comprising" followed by a
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description of the equipment used, including the speed of a conveyor being
greater than the speed of a receiving belt "by more than 10%." Appeal Br.
40 (Claims Appendix). Claims 27 and 28 depend from claims 25 and 26,
respectively, and recite "wherein the speed of the conveyor is greater than
the speed of the receiving belt by more than 15%." Id. at 41.
Appellants contend that the Examiner's rejection of claims 25 and 26
on the basis that the applied prior art is identical to or only slightly different
than the claimed article is in error because"[ o ]nly Applicant's Specification
would have enabled one skilled in the art to make and use the claimed
thermal insulation product." Appeal Br. 35. Appellants further assert that
the process of dependent claims 27 and 28 is not disclosed, suggested, or
enabled by the prior art and that the claims are supported by Example 1 in
the Specification. Id. at 35-36.
The Examiner responds that claims 25 and 26 are directed to the
process of forming the parallel fibers and not to forming the product. Ans.
22. The Examiner notes that the claims do not require the inclusion of
binder as recited in claim 4, which depends from product claim 1. Id. For
this reason, the Examiner concludes there is no basis for Appellants'
argument that the process limitations are required to form the claimed
product having the claimed density. Id. at 23. The Examiner also responds
that the product by process limitations of claims 27 and 28 were not
specifically rejected under 35 U.S.C. § 112 and that Appellants have not
shown unobvious differences between the claimed product and the prior art
product. Ans. 32.
In the Reply Brief, Appellants contend that it is not understandable
how the dependent claims can be rejected under 35 U.S.C. § 112 when the
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products made by the claimed process are disclosed in the original
specification and the specific limitations of the claims are not rejected under
Section 112. Reply Br. 8-9.
Because we determine that the preponderance of the evidence
supports the Examiner's rejection of product claims 1 and 2 over the
combination ofNowobilski and Maricourt for the reasons discussed above,
we likewise determine that the preponderance of the evidence supports the
Examiner's rejection of product by process claims 25-28. See In re Thorpe,
777 F.2d 695, 697 (Fed. Cir. 1985) (internal citations omitted) (noting that
"even though product-by-process claims are limited by and defined by the
process, determination of patentability is based on the product itself. The
patentability of a product does not depend on its method of production. If
the product in a product-by-process claim is the same as or obvious from a
product of the prior art, the claim is unpatentable even though the prior
product was made by a different process").
Rejection 3: Obviousness over Nowobilski, Maricourt, and Toas
Claim 4 depends from claim 1 and recites "wherein a structure of the
mineral wool comprises the fibers, bound together by a binder, in
proportions of 5 to 8% by weight of the product." Appeal Br. 38 (Claims
Appendix).
The Examiner finds that Toas discloses it is conventional to form a
thermal insulation product comprising rock wool or glass fibers and that the
insulation product can include a binder from 1-35 wt%, preferably from 3-
30 wt%, and more preferably from 4--25 wt%, to capture and hold the fibers
together. Final Act. 9 ( citing Toas Abstract, ,r,r 23-25). The Examiner
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determines it would have been obvious to include a binder from 1-35 wt%
in the insulation product from the combined teachings ofNowobilski and
Maricourt, as taught by Toas, to form a conventional insulating product
having an amount of binder predictably suitable for binding glass fiber in
thermal insulation products. Id.
Appellants contend that the Examiner erred because Nowobilski
discloses that the binder content of its preliminary insulation sheets must be
removed prior to use by heating in order to achieve the desired thermal
conductivity. Appeal Br. 25 (citing Nowobilski 5:57-59). Appellants argue
that Toas does not disclose the level of thermal conductivity required by
Appellants' claims. Id.
The Examiner responds that Nowobilski does not require the complete
absence of a binder, nor establishes a correlation between an amount of
binder and thermal conductivity. Ans. 23. The Examiner points out that
Maricourt is relied upon for disclosing the claimed thermal conductivity
property, which can be attained with the presence of a binder. Id.
In the Reply Brief, Appellants assert that Nowobilski's disclosure that
"[i]t is important that this binder material be essentially completely removed
from the glass fiber sheets for the attainment of the maximum benefits of
this invention" is an express instruction "to completely remove binder" and
adding binder in the amount disclosed by T oas would be inconsistent and
irreconcilable with the teachings ofNowobilski. Reply Br. 7 (citing
Nowobilski 3:50-53).
We are not persuaded of reversible error by the Examiner because
Nowobilski qualifies its disclosure to "essentially completely remove[]" the
binder material from commercially available glass fiber sheets used to
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fabricate Nowobilski's insulation board with "for the attainment of the
maximum benefits of this invention." Nowobilski 3:50-53 (emphasis
added). While Nowobilski recognizes the prior art disadvantages of using a
binder (id. 1 :40-45), Nowobilski also teaches that there is a purpose for the
presence of the binder and that is to hold the glass fiber layers together in a
simple and inexpensive way. Id. 1 :33-34. Nowobilski further teaches that
the removal of essentially all of the binder material is a procedure that takes
from 2 to 16 hours. Id. 1: 60-63. Therefore, the preponderance of the
evidence supports the Examiner's finding that Nowobilski does not require
the complete absence of binder in its insulation product. Nor are the
teachings of Nowobilski inconsistent with the teachings of Taos because
Taos teaches the amount of binder present in a thermal insulation product
and Nowobilski teaches that the glass fiber sheets used as its starting
material generally contain a binder. Nowobilski 1 :47--49; Taos ,r 25. In
addition, Nowobilski teaches that maximum insulation of the product is
achieved when the glass fibers are oriented perpendicular to the direction of
heat leak, not when binder is completely removed. Nowobilski 5:5-7.
For the foregoing reasons and the reasons provided in the Final Office
Action and the Answer, we affirm the Examiner's rejection under 35 U.S.C.
§ 103(a) of claim 4.
CONCLUSION
We affirm all of the Examiner's rejections.
ORDER
The Examiner's decision is affirmed.
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No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l)(v).
AFFIRMED
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