Ex Parte Lewin et al

Board of Patent Appeals and Interferences

Apr 1, 2009

10066954 (B.P.A.I. Apr. 1, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte DAVID FREDERICK LEWIN and MICHAEL BLAISE FAZIO
__________

Appeal 2008-6316
Application 10/066,954
Technology Center 3700
__________

Decided: April 1, 2009
__________

Before DEMETRA J. MILLS, ERIC GRIMES, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a package
of texturized glass strand. We have jurisdiction under 35 U.S.C. § 6(b). We
reverse and enter a new ground of rejection.
Statement of the Case
Background
“In conventional filament forming systems, the streams of glass have
been attenuated by winding the filaments on an exterior of a rotating tube.
The strand of filaments is wound on the tube as a cylindrical package. The
Appeal 2008-6316
Application 10/066,954

winding device with the rotating tube pulls the filaments and collects the
strand” (Spec. 1, ll. 20-23). According to the Specification, “[t]exturized
strand is continuous strand that has been expanded or texturized. The fibers
in the strand are separated to give the strand a full, wool-like appearance.
Texturized strand has good acoustic and thermal insulative properties.
Texturized strand is typically used in sound absorbers” (Spec. 1, ll. 29-33).
The Claims
Claims 15-18 are on appeal. We will focus on claim 15, which is
representative and reads as follows:
15. A package of texturized glass strand comprising:
a container having a removable closure;
a glass strand disposed in said container in a
texturized, coiled form, wherein said glass strand can be
withdrawn from said container for subsequent use when said
closure is removed, wherein said glass strand in said
texturized, coiled form has a density of 5 to 10 lbs/ft3.

The prior art
The Examiner relies on the following prior art references to show
unpatentability:
Galanes US 3,670,949 Jun. 20, 1972
Mattis US 3,968,877 Jul. 13, 1976
Ingemansson US 4,569,471 Feb. 11, 1986

The issues
A. The Examiner rejected claims 15-17 under 35 U.S.C. § 103(a) as
being obvious over Ingemansson (Ans. 3-5).
B. The Examiner rejected claims 15-17 under 35 U.S.C. § 103(a) as
being obvious over Ingemansson and Mattis (Ans. 5-6).
2
Appeal 2008-6316
Application 10/066,954

C. The Examiner rejected claim 18 under 35 U.S.C. § 103(a) as being
obvious over Ingemansson, Mattis, and Galanes (Ans. 6).
A. 35 U.S.C. § 103(a) over Ingemansson
The Examiner finds that “Ingemansson discloses glass strands fed into
a muffler outer cylinder 14. The muffler outer cylinder is considered a
container” (Ans. 3). The Examiner finds that “the filled strand is considered
texturized” (Ans. 4). The Examiner finds that “the cover plate is considered
a closure” (Ans. 4). The Examiner finds that “Ingemansson does not
expressly disclose the density of the glass strand within the container. At the
time the invention was made, it would have been an obvious matter of
design choice to a person of ordinary skill in the art to provide the glass
strand in the claimed densities” (Ans. 4).
Appellants contend that the “‘function and structure of the claimed
invention’ is completely different from that of the prior art. ‘Common sense’
thus dictates that the claimed invention and that of Ingemansson are simply
not the same” (App. Br. 10). Appellants contend that Ingemansson “is
simply not from the same field of endeavor as the invention of claim 15”
(App. Br. 11).
Appellants contends that “a welded end piece of a muffler 13 cannot
qualify as the ‘removable closure’ of claim 15, even giving the term
‘removable’ its broadest reasonable interpretation in accordance with the
specification, as the law requires” (App. Br. 13). Appellants contend that
“[n]o substantial evidence in the record supports any possible conclusion
that the wool used in the muffler of Ingemansson is of a comparable density
3
Appeal 2008-6316
Application 10/066,954

and, in fact, Appellant has submitted evidence that this wool is actually
without the claimed range (see Exhibit A)” (Ans. 16).
In view of these conflicting positions, we frame the obviousness issue
before us as follows:
Did the Examiner err in finding claims 15-17 obvious over the
disclosure of Ingemansson?
Findings of Fact (FF)
1. Ingemansson teaches “a muffler for a combustion engine, with
a space containing fiberglass wool” (Ingemansson, col. 1, ll. 8-9).
2. Ingemansson teaches that fiberglass thread is treated “so that
the thread will emerge from the nozzle as a ‘wool sausage’, i.e. as wool with
substantially continuous fibers. The wool is blown directly into the muffler”
(Ingemansson, col. 3, ll. 42-45).
3. Ingemansson teaches that “[w]hen the muffler 13 is filled, it is
moved to a station . . . for welding on the lefthand end piece” (Ingemansson,
col. 3, ll. 67-68).
4. Ingemansson teaches that a cover may be “temporarily placed
over the opening of the muffler before the hose 17 is disconnected to prevent
the wool from coming out during transport” (Ingemansson, col. 4, ll. 4-7).
5. The Examiner finds that the “strand of Ingemannson is
inherently capable of being removed for subsequent use since Ingemansson
lacks any permanent fastening means” (Ans. 4).
6. The Examiner finds that “[f]igures 1 and 3 show the fibers as
looped/coiled and since the length of the container is a much greater
4
Appeal 2008-6316
Application 10/066,954

dimension than a strand loop-coil, the deposit of the strand will be in
multiple layers” (Ans. 4).
7. The Examiner finds that “Ingemansson does not expressly
disclose the density of the glass strand within the container” (Ans. 4). The
Examiner finds that “it would have been an obvious matter of design choice
to a person of ordinary skill in the art to provide the glass strand in the
claimed densities because applicant has not disclosed that the specific
density provides an advantage, is used for a particular purpose, or solves a
stated problem” (Ans. 4).
Principles of Law
The question of obviousness is resolved on the basis of underlying
factual determinations including: (1) the scope and content of the prior art;
(2) the level of ordinary skill in the art; (3) the differences between the
claimed invention and the prior art; and (4) secondary considerations of
nonobviousness, if any. Graham v. John Deere Co., 383 U.S. 1, 17 (1966).
The Supreme Court has recently emphasized that “the [obviousness] analysis
need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” KSR
Int'l v. Teleflex Inc., 550 U.S. 398, ___, 127 S. Ct. 1727, 1741 (2007).
However, the Court in KSR stated, “[o]ften, it will be necessary for a
court to look to interrelated teachings of multiple patents; the effects of
demands known to the design community or present in the marketplace; and
the background knowledge possessed by a person having ordinary skill in
the art, all in order to determine whether there was an apparent reason to
5
Appeal 2008-6316
Application 10/066,954

combine the known elements in the fashion claimed by the patent at issue.
To facilitate review, this analysis should be made explicit. See In re Kahn,
441 F.3d 977, 988 (CA Fed. 2006) (“[R]ejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness”)”. Id. at 1740-1741.
Claim terms are interpreted using the broadest reasonable
interpretation in light of the Specification. See, e.g., In re Hyatt, 211 F.3d
1367, 1372 (Fed. Cir. 2000) (“[D]uring examination proceedings, claims are
given their broadest reasonable interpretation consistent with the
specification.”). Also see In re Morris, 127 F.3d 1048, 1054-56 (Fed. Cir.
1997) (“Absent an express definition in their specification, the fact that
appellants can point to definitions or usages that conform to their
interpretation does not make the PTO's definition unreasonable when the
PTO can point to other sources that support its interpretation.”)
Analysis
Ingemansson teaches fiberglass wool which is placed into a
container, specifically a muffler (FF 1-6). Ingemansson teaches that the
muffler is welded shut (FF 3). While the Examiner acknowledges that
Ingemansson does not teach the density of the glass strands, the Examiner
finds that the specific density recited in claim 15 would have been obvious
(FF 7).
The claim phrase “removable closure” imposes a structural
requirement on the container that permits the material within the container to
be withdrawn for subsequent use (see Claim 15). Even under the broadest
6
Appeal 2008-6316
Application 10/066,954

reasonable interpretation rubric, it is not reasonable in light of the
Specification to interpret a muffler that is welded shut as comprising a
container with a “removable closure” (FF 3). However, we agree with the
Examiner that when the cover plate is “temporarily placed over the opening
of the muffler before the hose 17 is disconnected to prevent the wool from
coming out during transport” (Ingemansson, col. 4, ll. 4-7), the closure is
removable (FF 4).
The Examiner provides no specific reason why a density of 5 to 10
lbs/ft3 of texturized glass would have been obvious other than “design
choice”. Appellants point out that the “claimed densities are relevant
because they demonstrate that Appellant’s invention is a package of
texturized glass strands for later use, and thus have a density as packaged
that different [sic differs] from that created through further processing prior
to use, such as in a muffler” (App. Br. 16). We agree with Appellants that
the function of the claimed texturized glass, intended for packaging for later
use, differs from the function in Ingemansson, where the texturized glass is
immediately placed in its final operative location. See In re Gal, 980 F.2d
717, 719 (Fed.Cir.1992) (finding of “obvious design choice” precluded
where the claimed structure and the function it performs are different from
the prior art). The Examiner has not adequately shown that it would have
been obvious to use texturized glass at the recited density in Ingemansson’s
muffler.
Conclusion of Law
The Examiner erred in finding claims 15-17 obvious over the
disclosure of Ingemansson.
7
Appeal 2008-6316
Application 10/066,954

B. 35 U.S.C. § 103(a) over Ingemansson and Mattis
The Examiner rejected claims 15-17 under 35 U.S.C. § 103(a) as
being obvious over Ingemansson and Mattis (Ans. 5-6).
As we have reversed the rejection of claims 15-17 over
Ingemansson alone, and Mattis does not teach the densities of
textured glass missing from Ingemansson, we are also compelled
to reverse the rejection of claims 15-17 over the combination of
Ingemansson and Mattis.
C. 35 U.S.C. § 103(a) over Ingemansson, Mattis, and Galanes
The Examiner rejected claim 18 under 35 U.S.C. § 103(a) as being
obvious over Ingemansson, Mattis, and Galanes (Ans. 6).
Claim 18 depends from claims 15-17. As we have reversed
the rejection of claims 15-17 over Ingemansson and Mattis, and
Galanes not teach the densities of textured glass missing from
Ingemansson and Mattis, we are also compelled to reverse the
rejection of claim 18 as well.

New ground of rejection
Under the provisions of 37 C.F.R. § 41.50(b), we enter the
following new ground of rejection.

Claims 15-18 are rejected under 35 U.S.C. 103(a) as being
unpatentable over Sieloff1 in view of Galanes.

1 Sieloff et al (Sieloff) U.S. Patent 4,555,447 (Nov. 26, 1985).
8
Appeal 2008-6316
Application 10/066,954

Findings of Fact
8. The Specification teaches that the “texturized product is
typically created by expanding a continuous strand of glass fibers. The
strand is expanded by directing compressed air at the strand as it passes
through a texturizer to separate filaments in the strand” (Spec. 3, l. 34 to 4, l.
1).
9. The Specification teaches that the “frequency and length of the
coils in the strand 80 are determined by the flow and pressure of the
compressed air in the nozzle 20” (Spec. 5, l. 36 to Spec. 6, l. 1).
10. Sieloff teaches a method where “streams of glass, centrifuged
from the spinner, engaged by a vertically downwardly directed annular
gaseous blast for attenuating the centrifuged streams of fibers” are used to
produce glass wool (Sieloff, col. 2, ll. 65-68).
11. Sieloff teaches placing the strands in a container, noting that
“columns of fiber glass blowing wool may be produced and bagged”
(Sieloff, col. 3, ll. 65-66). Sieloff teaches that the bagged glass wool is later
“blown into place for insulation” (Sieloff, col. 3, l. 68).
12. Sieloff teaches that “[d]ensities of glass fiber material in the
range of about 0.2 to 20 pounds per cubic foot may be used in this
invention” (Sieloff, col. 3, ll. 53-54).
13. Sieloff teaches that the glass strand may be bonded into layers,
where “[a]ny binder suitable for bonding glass fibers together in batt or mat
form can be used with glass fibers to form the bonded glass fiber material”
(Sieloff, col. 3, ll. 18-20).
9
Appeal 2008-6316
Application 10/066,954

14. Sieloff does not teach placement of the material into a
corrugated box.
15. Galanes teaches “a collapsible and reusable carton suitable for a
variety of purposes” (Galanes, col. 1, ll. 1-2). Galanes teaches that a
“preferred packaging material is corrugated cardboard” (Galanes, col. 4, l.
57).
16. Galanes teaches a carton with advantages including “enhanced
durability and strength . . . having reinforced wall panel construction . . . so
as to prevent tearing and rupture of the carton when the carton is manually
lifted with a load . . . [and] having dual panel bottom panel construction
which is designed for increased strength in order to prevent failure of the
bottom of the carton when subjected to a heavy load” (Galanes, col. 1, ll. 9-
20).
Principles of Law
“[T]he existence of overlapping or encompassing ranges shifts the
burden to the applicant to show that his invention would not have been
obvious.” In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003). Also, “[i]t
is also an elementary principle of patent law that when, as by a recitation of
ranges or otherwise, a claim covers several compositions, the claim is
‘anticipated’ if one of them is in the prior art.” Titanium Metals Corp. v.
Banner, 778 F.2d 775, 782 (Fed.Cir.1985).
“Where, as here, the claimed and prior art products are identical or
substantially identical, or are produced by identical or substantially identical
processes, the PTO can require an applicant to prove that the prior art
products do not necessarily or inherently possess the characteristics of his
10
Appeal 2008-6316
Application 10/066,954

claimed product.” In re Best, 562 F.2d 1252, 1255 (CCPA 1977). “Whether
the rejection is based on ‘inherency’ under 35 U.S.C. § 102, on ‘prima facie
obviousness' under 35 U.S.C. § 103, jointly or alternatively, the burden of
proof is the same, and its fairness is evidenced by the PTO's inability to
manufacture products or to obtain and compare prior art products.” Id. at
1255.
Analysis
Sieloff teaches packages, specifically bags, of texturized glass wool
(FF 11). Sieloff teaches that the glass strand can be withdrawn for
subsequent use (FF 11). Sieloff teaches that the glass strand has a density of
0.2 to 20 lbs/ft3, encompassing the claimed density range of 5 to 10 lbs/ft3
(FF 12). See Peterson, 315 F.3d at 1330 (“[T]he existence of overlapping or
encompassing ranges shifts the burden to the applicant to show that his
invention would not have been obvious.”)
Regarding the coiling required by claims 15 and 16, Sieloff teaches
forming the texturized glass wool using gaseous blasts just as Appellants’
Specification teaches forming texturized glass with blasts of compressed air
(FF 8, 10). Appellants’ Specification teaches that upon forming the glass
wool using the compressed air, the glass wool will inherently comprise some
amount of coils, where the frequency and length of the coils are dependent
upon the flow and pressure (FF 9). Consequently, since the texturized glass
wool of Sieloff is formed by gaseous blasts of some flow and pressure, the
resulting glass wool will inherently comprise some level of coiling as
evidenced by the teaching of the Specification (FF 9). See Best, 562 F.2d at
1255 (“Where, as here, the claimed and prior art products are identical or
11
Appeal 2008-6316
Application 10/066,954

substantially identical, or are produced by identical or substantially identical
processes, the PTO can require an applicant to prove that the prior art
products do not necessarily or inherently possess the characteristics of his
claimed product.”) No specific levels of coiling are required by the claims.
Regarding the layers required by claim 17, Sieloff teaches that the
glass strand may be bonded into layers, where “[a]ny binder suitable for
bonding glass fibers together in batt or mat form can be used with glass
fibers to form the bonded glass fiber material” (Sieloff, col. 3, ll. 18-20; FF
13). In placing the mat or batt into the bags, the glass strand of Sieloff
would be disposed in a series of layers (see FF 11, 13).
While Sieloff does not teach the use of a corrugated box, Galanes
teaches the use of a corrugated box (FF 14-15).
It would have been prima facie obvious to one of ordinary skill in the
art at the time the invention was made to place the glass wool of Sieloff into
a corrugated box as taught by Galanes since Sieloff desires storing the glass
wool in containers (FF 11) and Galanes teaches a carton with advantages
including “enhanced durability and strength . . . . having a reinforced wall
panel construction . . . . so as to prevent tearing and rupture of the carton
when the carton is manually lifted with a load . . . . [and] having dual panel
bottom panel construction which is designed for increased strength in order
to prevent failure of the bottom of the carton when subjected to a heavy
load” (Galanes, col. 1, ll. 9-20; FF 16). An ordinary practitioner would have
been motivated to place the glass fiber of Sieloff into the boxes of Galanes
in order to obtain the benefits of strong and durable cartons.
12
Appeal 2008-6316
Application 10/066,954

SUMMARY
In summary, we reverse the rejection of claims 15-17 under 35 U.S.C.
§ 103(a) as being obvious over Ingemansson. We reverse the rejection of
claims 15-17 under 35 U.S.C. § 103(a) as being obvious over Ingemansson
and Mattis. We reverse the rejection of claim 18 under 35 U.S.C. § 103(a)
as being obvious over Ingemansson, Mattis, and Galanes.
This decision also contains a new grounds of rejection pursuant to
37 C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 37
C.F.R. § 41.50(b) provides "[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of
rejection to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or
both, and have the matter reconsidered by the Examiner, in which event the
proceeding will be remanded to the Examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record. . . .

13
Appeal 2008-6316
Application 10/066,954

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)(2006).

REVERSED, § 41.50(b)

Ssc:

OWENS CORNING
2790 COLUMBUS ROAD
GRANVILLE, OH 43023
14