Ex Parte McGuire

Board of Patent Appeals and Interferences

Mar 31, 2010

10392999 (B.P.A.I. Mar. 31, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte SHERI L. MCGUIRE
____________________

Appeal 2009-006830
Application 10/392,9991
Technology Center 1700
____________________

Decided: March 31, 2010
____________________

1 As Appellant points out at page 1 of the Appeal Brief, the subject matter in
this appeal is related to the subject matter in Appeal No. 2008-5768 (U.S.
Patent Application No. 11/037,522)(Hereinafter "'768 Decision"), which was
decided June 30, 2009, and also related to Appeal No. 2009-002177 (U.S.
Patent Application No. 11/166,567), which was decided November 30,
2009. Although Appellant additionally points out that an Appeal Brief was
filed in U.S. Patent Application No. 10/714,370, no decision by the Board of
Patent Appeals and Interferences was rendered because the Examiner
entered a new ground of rejection after the Appeal Brief filing, which
ultimately led to the application being abandoned.
Before: MICHAEL P. COLAIANNI, EDWARD C. KIMLIN, and
JEFFREY T. SMITH, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.
Appeal 2009-006830
Application 10/392,999

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DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 1 through 4, 6 through 10, 13 through
20, and 23 through 26, which are all of the claims pending in the above-
identified application. We have jurisdiction pursuant to 35 U.S.C. § 6.
We AFFIRM.

STATEMENT OF THE CASE
The subject matter on appeal is directed to a nonwoven article.
Claims 1 and 25 are illustrative:
1. A nonwoven article produced from about 35 to about 65
weight % low melt binder; at least one FR fiber; and optionally
non-FR nonbonding fibers, wherein said at least one FR fiber
consists of an FR fiber selected from the group consisting of FR
rayon fiber, FR melamine fiber, FR acrylic, FR coated synthetic
fiber and mixtures thereof and comprises in total from about 30
– 65 wt. % of said nonwoven article, and wherein said
nonwoven article has a weight of at least about 40 oz./sq. yd.

25. A nonwoven article produced from about 15 to about 65
weight % low melt binder; at least one FR fiber; and optionally
non-FR nonbonding fibers, wherein said FR fiber consists of an
FR fiber selected from the group consisting of FR rayon fiber,
FR coated synthetic fiber and mixtures thereof and comprises in
total from about 30 – 85 wt. % of said nonwoven article, and
wherein said nonwoven article has a weight of at least about 40
oz./sq. yd.

As evidence of unpatentability of the claimed subject matter, the
Examiner relies upon the following references:
Appeal 2009-006830
Application 10/392,999

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Hosoda US 4,794,037 Dec. 27, 1988
Berbner US 6,297,178 B1 Oct. 2, 2001
Owen GB 2,245,606 A Jan. 8, 19922
Mater WO 03/023108 A1 Mar. 20, 2003

Appellant appeals the following rejections of the Examiner:
1) Claims 1-3, 6-10, 13-20, and 23-26 under 35 U.S.C. § 103(a) as
unpatentable over Mater; and
2) Claim 4 under 35 U.S.C. § 103(a) as unpatentable over Mater in
view of Berbner, Hosoda, or Owen.
With respect to rejection (1), we address Appellant's arguments
regarding the rejection with respect to claims 1 and 25 only, as argued by
Appellant. See 37 C.F.R. § 41.37(c)(1)(vii). With respect to rejection (2),
Appellant provides no additional argument for this rejection and instead
refers to the arguments made regarding claim 1 in rejection (1). (App. Br.
7). Therefore, rejection (2) stands or falls with our decision regarding the
rejection of claim 1 in rejection (1).

ISSUES
1. Did the Examiner err in determining that Mater would have
suggested a nonwoven article produced from 35 to about 65%
weight % low melt binder as required by claim 1 within the
meaning of § 103? We decide this issue in the negative.

2 The Examiner's statement on page 3 of the Answer that Owen's publication
date is "6-1992" is harmless error since it is apparent from the reference that
its publication date is Jan. 8, 1992.
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2. Did the Examiner err in determining that the nonwoven article
recited in claim 25 does not exclude a FR acrylic fiber? We
decide this issue in the negative.

FINDINGS OF FACT
1. The Specification discloses that low melt fibers may be, inter alia, a
polyolefin. (Spec. 6).
2. Mater teaches that the fiber blend level concentrations (by weight
percentages) in the nonwoven highloft flame barrier may include
Categories 1 through 6 fibers. (Mater, p. 15). In one embodiment, Mater
teaches that the concentrations (by weight percentages) of its Categories
3 and 5 fibers are "0 - 30%, more preferably 5 - 25% and even more
preferably 10 - 20%" and "0 - 40%, more preferably 5 - 30% and even
more preferably 10 - 20%," respectively. (Mater, p. 15).
3. Mater teaches that low melt fibers may include a polyolefin. (Mater, p.
15). Mater also teaches that its Categories 3 and 5 fibers may be
polyolefins. (Mater, p. 15).
4. Mater teaches that its "[b]inder fiber is typically composed of polymer(s)
that have a low[] melting point[,]. . . melts in the presence of heat[,] . . .
flows to the intersection of fibers[,] and upon cooling rehardens and
forms a bond. These bonds allow the fibers to remain in their current
orientation." (Mater, p. 22).
5. Mater teaches that its Category 1 fiber may be "flame retardant viscose
rayons." (Mater, p. 12).
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6. Mater teaches that its Category 2 fiber may be "modacrylics." (Mater, p.
14).

PRINCIPLE OF LAW
“[D]iscovery of an optimum value of a result effective variable in
a known process is ordinarily within the skill of the art.” In re Boesch,
617 F.2d 272, 276 (CCPA 1980).

ANALYSIS AND CONCLUSION
ISSUE (1):

With respect to claim 1, Appellant argues that
Claim 1 requires the low melt binder be present in an
amount from about 35 to about 65 weight %. The only
evidence of obviousness relied upon by the examiner in this
rejection is Mater that states an upper limit of 30% for the
amount of low melt binder to be used in that invention. . . . If
one is to optimize weight and composition, one would operate
within the confines of Mater's disclosure. The examiner's
assertion of optimization is in error.

(App. Br. 5). In addition, Appellant argues that the "[e]xaminer's assertion
of optimization is based upon impermissible hindsight." (App. Br. 6). We
find these arguments unpersuasive of reversible error.
Because we decided a virtually identical issue in our previous
Decision (Appeal No. 2008-5768), we apply the same analysis as we did in
our in our 2008-5768 Decision, which is as follows:
Mater teaches that its Categories 3 and 5 fibers may
include low melt fibers. In addition, Mater teaches that the
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concentration levels (by weight percentages) of its Categories 3
and 5 fibers in its fiber blend are "0 - 30%, more preferably 5 -
25% and even more preferably 10 - 20%" and "0 - 40%, more
preferably 5 - 30% and even more preferably 10 - 20%,"
respectively. In other words, Mater recognizes that the
concentrations of its Categories 3 and 5 fibers are important
variables.
Thus . . . it would have been obvious to optimize the
concentrations (by weight percentage) of Mater's Categories 3
and 5 low melt fibers to achieve a weight percent within the
claimed range . . . .

(2008-5768 Decision, p. 14) (Citations omitted).

Moreover, while Mater teaches (FF 2) in one embodiment that the
fiber blend level concentration (by weight percentage) of its Category 3 fiber
is "0 - 30%," Mater also teaches that its "[b]inder fiber is typically composed
of polymer(s) that have a low[] melting point[,]. . . melts in the presence of
heat[,] . . . flows to the intersection of fibers[,] and upon cooling rehardens
and forms a bond. These bonds allow the fibers to remain in their current
orientation." (FF 4). In other words, Mater teaches that the amount of its
binder fiber is an important variable that ensures that the orientation of the
other fibers are fixed.
Therefore, we, like the Examiner, determine that the amount (in
weight percent) of Mater's low melt fibers is a result-effective variable such
that adjusting the amount of its binder fiber to determine the optimum
amount of Mater's low melt fibers to suit the particular end use would have
been well within the ambit of one of ordinary skill in the art and, thus, would
have been obvious. Boesch, 617 F.2d at 276.
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In addition, since the Examiner’s analysis is rooted in the teachings of
Mater, the Examiner did not rely upon impermissible hindsight.
Accordingly, Appellant's arguments are unpersuasive of reversible error.
Appellant also argues that
If a person of ordinary skill in the art perceived a need to
provide bonding beyond the upper limit of 30% of low melt
binding fibers described in Mater, it is seen that the
hypothetical person would have used a combination of
chemical and/or mechanical bonding techniques with the low
melt binder fibers, not an increase in the amount of low melt
binder fiber, as taught by Mater at page 21, lines 1-9.

(App. Br. 6).
While Mater at page 21 teaches that formation of its nonwoven article
may involve chemical, thermal, or mechanical bonding, Appellant's
argument does not identify reversible error in the Examiner's determination
that it would have been obvious to optimize the amount of low melt binding
fiber to arrive at the claimed weight % amount of low melt binder.
Accordingly, Appellant's argument is without persuasive merit.
Thus, it follows that the Examiner did not err in determining that a
nonwoven article produced from 35 to about 65% weight % low melt binder
as required by claim 1 would have been obvious over Mater.

ISSUE (2):
With respect to claim 25, Appellant argues that
Claim 25 excludes the use of FR acrylic which is a
category 2 fiber of Mater. Category 2 fibers are an essential
component of the nonwoven of Mater. . . . While claim 25
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may be open to any number of additional components, it is not
open to FR fibers other than those specified.

(App. Br. 7). We find this argument unpersuasive of reversible error.
We begin by noting that Mater clearly teaches that its Category 1 fiber
may be "flame retardant viscose rayons," which meets the FR rayon feature
recited in claim 25. (FF 5). Because Mater teaches that its Category 1 fiber
may be flame retardant viscose rayons, Mater's Category 1 fiber meets the
"at least one FR fiber . . . consists of an FR fiber selected from the group
consisting of FR rayon fiber, FR coated synthetic fiber and mixtures thereof"
feature required by claim 25. (emphasis added).
Turning our attention to Mater's Category 2 fiber vis-à-vis the claimed
invention, while Mater clearly teaches (FF 6) that its Category 2 fiber may
be "modacrylics," which Appellant argues are FR acrylics, the claim does
not exclude this additional fiber since claim 25 only requires that "at least
one FR fiber" be selected among those fibers recited in the claim, which as
discussed above is met by Mater's Category 1 fiber. (emphasis added).
In addition, Appellant employs the claim term "produced from" in the
preamble of claim 25. Because we decided a virtually identical issue in our
2008-5768 Decision, we apply the same analysis we made in our previous
Decision, which is as follows:
Appellants do not dispute the Examiner's determination
that the phrase "produced from" in claim 1 is "open-ended"
language. . . . Such “open-ended” claim language does not
exclude additional, unrecited elements," and permits the
presence of additional components not listed to be a FR fiber.
(2008-5768 Decision, page 5) (citation omitted).
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Application 10/392,999

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Thus, it follows that the Examiner did not err in determining that the
nonwoven article of claim 25 does not exclude a FR acrylic fiber.

ORDER
In summary, the § 103 rejections are sustained.
Accordingly, the decision of the Examiner is affirmed.

TIME PERIOD
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)(2009).

AFFIRMED

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