Ex Parte Lim et al

Patent Trial and Appeal Board

Jan 18, 2018

14025108 (P.T.A.B. Jan. 18, 2018)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/025,108 09/12/2013 Sang-Hoon Lim 09420010PC 4188
30743 7590 01/19/2018
WHITHAM, CURTIS & COOK, P.C.
11491 SUNSET HILLS ROAD
SUITE 340
RESTON, VA 20190
EXAMINER
TOLIN, MICHAEL A
ART UNIT PAPER NUMBER
1745
MAIL DATE DELIVERY MODE
01/19/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SANG-HOON LIM and ANDREA PIANA
Appeal 2016-005987
Application 14/025,108
Technology Center 1700
Before ADRIENE LEPIANE HANLON, BEVERLY A. FRANKLIN, and
KAREN M. HASTINGS, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants request review under 35 U.S.C. § 134 from the Examiner’s
final rejection of claims 20, 21, 23, 29-34, 36, and 37 under 35 U.S.C.
§ 103(a) as unpatentable over the combined prior art of Mater (US 7,259,117
B2; iss. Aug. 21, 2007), Ogle (US 7,125,460 B2; iss. Oct. 24, 2006), and
Small (US 7,150,059 B2; iss. Dec. 19, 2006), optionally with Murphy (US
2004/0060120 Al; publ. Apr. 1, 2004). An oral hearing was conducted on
January 11, 2018. We have jurisdiction pursuant to 35 U.S.C. § 6.
We AFFIRM.
BACKGROUND
Claim 20 is illustrative of the claimed subject matter and is
reproduced below from the Claims Appendix to the Appeal Brief:
Appeal 2016-005987
Application 14/025,108
20. A method of making a fire resistant non woven with
enhanced char strength, comprising the steps of:
acquiring one or more fire retardant cellulosic fibers
which are comprised of cellulosic fibers treated with one or
more fire retardant chemicals; and then forming a non woven
from said one or more fire retardant cellulosic fibers with basalt
fiber and one or more binder fibers, wherein said basalt fiber is
present in said nonwoven at 0.1-30 wt%; and then
melting said one or more binder fibers to thermally bond
said nonwoven.
Appellants focus on claim 20 in their arguments. Accordingly, we
select independent claim 20 as representative of the claims.
ANALYSIS
We have thoroughly reviewed each of Appellants’ arguments and
evidence for patentability. However, we are in agreement with the Examiner
that the claimed subject matter of representative claim 20 would have been
obvious to one of ordinary skill in the art within the meaning of § 103 in
view of the applied prior art. We determine that, after consideration of all of
the evidence in this appeal, including the Lim Declaration (filed November
11, 2015), that the evidence tending to establish the obviousness of the
claimed subject matter outweighs any evidence of record that may tend to
indicate the non-obviousness thereof.
Accordingly, we sustain the Examiner’s rejections of the claims for
essentially those reasons expressed in the Answer, including the Examiner’s
Response to Argument section, and we add the following primarily for
emphasis.
It has been established that “the [obviousness] analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
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Application 14/025,108
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 7 Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007). Likewise, it is also well settled that a
reference stands for all of the specific teachings thereof as well as the
inferences one of ordinary skill in the art would have reasonably been
expected to draw therefrom. See In reFritch, 972 F.2d 1260, 1264—65 (Fed.
Cir. 1992).
Appellants’ arguments focus on their belief that the Examiner used
impermissible hindsight in combining the teachings of the applied
references, in part because both Mater and Small (as well as Murphy)
provide lengthy lists of suitable fibers for use in fire resistant nonwovens
(generally Appeal Br.; Reply Br.). These arguments are unpersuasive, since,
as aptly pointed out by the Examiner, the use of fire retardant cellulosic
fibers and basalt fibers in Mater would have been no more than the
predictable use of known prior art elements for their known function in a fire
resistant nonwoven (Ans. generally). See also, Merck & Co. v. Biocraft
Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (holding that the prior art’s
disclosure of over 1200 possible combinations rendered all possible
formulations obvious).
Appellants’ arguments that “one would not substitute basalt fiber for
glass fiber since glass fiber is less expensive than basalt fiber” (Appeal Br.
15) are unpersuasive. As the Examiner aptly points out, the Examiner’s
rejection does not rely upon such a substitution (Ans. 11). Moreover, the
clams require only a minute amount of fire retardant cellulosic fibers and
basalt fibers to be present (no minimum amount is recited for the cellulosic
fibers; 0.1% is the minimum amount recited of basalt fibers). See also, cf.
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Appeal 2016-005987
Application 14/025,108
WinnerInt’lRoyalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir.
2000) (“The fact that the motivating benefit comes at the expense of another
benefit, however, should not nullify its use as a basis to modify the
disclosure of one reference with the teachings of another. Instead, the
benefits, both lost and gained, should be weighed against one another”).
Thus, the Examiner’s position that it would have been prima face
obvious, using no more than ordinary creativity, to use some fire retardant
cellulosic fibers as exemplified in Ogle for the cellulosic fibers of the fire
resistant non woven material of Mater, and also to use some basalt fibers as
exemplified in Small to be a known alternative to flame retardant fibers such
as melamine, aramid, and polyimide fibers used in Mater, is well founded
(e.g., Ans. 2-4). KSR, 550 U.S. at 416 (the predictable use of prior art
elements according to known methods for their established functions is
likely to be obvious when it does no more than yield predictable results). “A
person of ordinary skill is also a person of ordinary creativity, not an
automaton.” Id. at 421.
Appellants’ argument that the Lim Declaration evinces that the
present invention satisfied a long-felt unmet need is not persuasive.
Establishing long-felt need requires objective evidence that an art-
recognized problem existed in the art for a long period of time without
solution. In particular, the evidence must show that the need was a
persistent one that was recognized by those of ordinary skill in the art. In re
Gershon, 372 F.2d 535, 538 (CCPA 1967). The relevance of long-felt need
and the failure of others to the issue of obviousness depends on several
factors. First, the need must have been a persistent one that was recognized
by those of ordinary skill in the art. Orthopedic Equip. Co. v. All
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Application 14/025,108
Orthopedic Appliances, Inc., 707 F.2d 1376, 1383 (Fed. Cir. 1983); see also
Gershon, 372 F.2d at 538. Second, the long-felt need must not have been
satisfied by another before the invention by applicant. Newell Cos., Inc. v.
Kenney Mfg. Co., 864 F.2d 757, 768 (Fed. Cir. 1988) (“[OJnce another
supplied the key element, there was no long-felt need or, indeed, a problem
to be solved”). Third, the invention must in fact satisfy the long-felt need.
In re Cavanagh, 436 F.2d 491, 496 (CCPA 1971). “[L]ong-felt need is
analyzed as of the date of an articulated identified problem and evidence of
efforts to solve that problem.” Texas Inst., Inc. v. U.S. Int’l Trade Comm ’n,
988 F.2d 1165, 1178 (Fed. Cir. 1993).
Based on the above, Appellants’ evidence, which is in the form of
conclusory statements, from Mr. Lim’s Declaration cannot be accorded great
weight. Balancing all the evidence anew, it is our conclusion that the
evidence for obviousness outweighs the evidence against obviousness.
In addition, we emphasize that, although secondary considerations
such as unexpected results must be taken into account, they do not
necessarily control the obviousness conclusion. Siid-Chemie, Inc. v.
Multisorb Techs., Inc., 554 F.3d 1001, 1009 (Fed. Cir. 2009) (“evidence of
unexpected results and other secondary considerations will not necessarily
overcome a strong prima facie showing of obviousness”); Agrizap, Inc. v.
Woodstream Corp., 520 F.3d 1337, 1344 (Fed. Cir. 2008) (Secondary
considerations “including substantial evidence of commercial success,
praise, and long-felt need, were inadequate to overcome a strong showing of
primary considerations that rendered the claims at issue invalid.”); Pfizer,
Inc. v. Apotex, Inc., 480 F.3d 1348, 1372 (Fed. Cir. 2007) (“[T]his secondary
consideration does not overcome the strong showing of obviousness in this
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Application 14/025,108
case. Although secondary considerations must be taken into account, they do
not necessarily control the obviousness conclusion”).
Here, the case of obviousness is so strong that Appellants’ alleged
long-felt unmet need is ultimately insufficient, since the applied prior art
evinces the known use of basalt and fire retardant cellulosic fibers for a fire
resistant non woven as produced in the method of claim 20 (see also, e.g.,
Ans. 15, 16).
Accordingly, the § 103 rejection advanced by the Examiner in this
appeal is sustained.
ORDER
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).
AFFIRMED
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