Ex Parte McGuire et al

Board of Patent Appeals and Interferences

Jun 30, 2009

11037522 (B.P.A.I. Jun. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SHERI L. MCGUIRE,
THOMAS E. TAYLOR, and
BRIAN K. EMANUEL
____________

Appeal 2008-005768
Application 11/037,522
Technology Center 1700
____________

Decided:1 June 30, 2009
____________

Before EDWARD C. KIMLIN, JEFFREY T. SMITH, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil action, as
recited in 37 C.F.R. § 1.304, begins to run from the Decided Date shown on this
page of the decision. The time period does not run from the Mail Date (paper
delivery) or Notification Date (electronic delivery).

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This is a decision on an appeal under 35 U.S.C. § 134 from the Examiner's
final rejection of claims 1 through 11, 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. Claim 1 is
illustrative:
1. A nonwoven article produced from about 25 to about 40 weight
percent of a low melt binder; at least one FR fiber; and optionally a non-
bonding synthetic or natural fiber, wherein said nonwoven article has a batt
weight of at least 4 oz./sq. yd and said at least one FR fiber consists of FR
fiber selected from the group consisting of FR rayon fiber, FR melamine
fiber, and FR coated synthetic fiber and mixtures thereof.

As evidence of unpatentability of the claimed subject matter, the Examiner
relies upon the following reference:
Mater WO 03/023108 A1 Mar. 20, 2003

Appellants appeal the following rejections of the Examiner2:
1) Claims 1-8, 10, and 11 under 35 U.S.C. § 102(b) as anticipated by, or
alternatively under 35 U.S.C. § 103(a) as unpatentable over, the disclosure of
Mater; and
2) Claim 9 under 35 U.S.C. § 103(a) as unpatentable over the disclosure of
Mater, as applied to claim 1 above.

2 The Examiner has withdrawn the § 103(a) rejection over the combined
disclosures of Hosoda and Horton set forth in the Final Office Action mailed on
July 2, 2007. (Ans. 3).

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REJECTION (1): THE REJECTION OF CLAIMS 1-8, 10, AND 11 UNDER
35 U.S.C. § 102(b) AS ANTICIPATED BY, OR ALTERNATIVELY UNDER
35 U.S.C. § 103(a) AS UNPATENTABLE OVER, MATER

CLAIMS 1-6, 8, 10, AND 11
With respect to the § 102(b) rejection, Appellants direct their arguments to
features recited in claims 1, 7, and 11. Accordingly, we address Appellants’
arguments with respect to claims 1, 7, and 11 only. See 37 C.F.R. § 41.37(c)(1)
(vii)(2008).
With respect to the § 103(a) rejection, Appellants argue the claims as a
group. Accordingly, we address Appellants’ arguments with respect to claim 1.
See 37 C.F.R. § 41.37(c)(1)(vii)(2008). For reasons evident below, we also
address the rejection of claim 7.

The § 102(b) rejection of independent claims 1 and 11 and the § 103(a) rejection
of independent claim 1

The Examiner determines that the claimed subject matter does not exclude
the category 2 fiber (i.e., FR fibers made from polymers with halogenated
monomers that generate oxygen depleting gas) disclosed in Mater. (Ans. 6-7).
Appellants argue that
[Claims 1 and 11 are] not inclusive of FR fibers produced from
polymers made with halogenated monomers that generate oxygen
depleting gases such as modacrylics. Since the nonwoven products
according to the Mater invention must contain 10-85% of category 2
fiber, the Mater nonwovens are not included within the scope of
[claims 1 and 11].
(App. Br. 5).
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ISSUE
Have Appellants shown reversible error in the Examiner's determination that
the claimed subject matter does not exclude the category 2 fiber disclosed in
Mater? We decide this issue in the negative.

FINDINGS OF FACT (FF)
1. Appellants do not dispute Examiner's finding that Mater teaches all of the
features recited in claims 1 and 11, except for the Examiner's finding that
Mater teaches the feature "at least one FR fiber consists of FR fiber selected
from the group consisting of FR rayon fiber, FR melamine fiber, and FR
coated synthetic fiber and mixtures thereof." (Compare Ans. 4-5 with App.
Br. 4-19 and Reply Br. 1-5). Appellants do not dispute the Examiner's
determination that the claimed phrase "produced from" is "'open-ended'
language and does not exclude additional, unrecited elements." (Compare
Ans. 7 with App. Br. 4-19 and Reply Br. 1-5).

PRINCIPLES OF LAW
Under 35 U.S.C. § 102, “every element of the claimed invention must be
identically shown in a single reference . . .” In re Bond, 910 F.2d 831, 832 (Fed.
Cir. 1990).
Under 35 U.S.C. § 103, the factual inquiry into obviousness requires a
determination of: (1) the scope and content of the prior art; (2) the differences
between the claimed subject matter and the prior art; (3) the level of ordinary skill
in the art; and (4) secondary considerations, if any. Graham v. John Deere Co.,
383 U.S. 1, 17-18 (1966). “[A]nalysis [of whether the subject matter of a claim
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would have been obvious] 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 Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
“[E]vidence establishing lack of all novelty in the claimed invention
necessarily evidences obviousness.” In re Fracalossi, 681 F.2d 792, 794 (CCPA
1982).

ANALYSIS AND CONCLUSION
We begin by construing the claim. As is apparent from claims 1 and 11, the
phrase "at least one FR fiber consists of FR fiber selected from the group
consisting of" recited therein limits at least one FR fiber to be a FR rayon fiber, FR
melamine fiber, FR coated synthetic fiber, and mixtures thereof. Appellants do not
dispute the Examiner's determination that the phrase "produced from" in claim 1 is
"open-ended" language. (FF 1). Moreover, claim 11 uses the open-ended
transitional claim language “comprising.” 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. Thus, we concur with the
Examiner that claims 1 and 11 do not exclude Mater's additional category 2 fiber.
Thus, it follows that Appellants have not shown reversible error in the
Examiner's determination that the claimed subject matter does not exclude the
category 2 fiber disclosed in Mater.
Accordingly, based on the Factual Findings and legal conclusions set forth
in the Answer and above, we affirm the Examiner's rejection of claims 1-6, 8, 10,
and 11 under 35 U.S.C. § 102(b) as anticipated by the disclosure of Mater.
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Moreover, since we find that claims 1 and 11 are anticipated by Mater, we
affirm the Examiner's rejection of claim 1 under 35 U.S.C. § 103 over Mater.
Fracalossi, 681 F.2d at 794 (“[E]vidence establishing lack of all novelty in the
claimed invention necessarily evidences obviousness”).
Accordingly, we affirm the Examiner's rejection of claims 1-6, 8, 10, and 11
under 35 U.S.C. § 103(a) as unpatentable over the disclosure of Mater.

CLAIM 7

The § 102(b) rejection of dependent claim 7

The Examiner finds that Mater teaches that it was known in the textile
industry to produce fire resistant products useful as mattresses wherein fibers are
coated with the phosphorous-based chemicals, as required by claim 7. (Ans. 9).
Appellants argue that

Page 11, lines 3-9 of Mater does state that phosphates or
polyphosphates may be added to the reaction mixture that forms the
melamine resin used to form the melamine fibers "before, during, or
after the condensation reaction." This portion of Mater must be read
in the context of page 11, lines 23- 29 which states that the melamine
resin is spun into fibers. Thus, even if the phosphate or polyphosphate
is added to the reaction mixture after the condensation reaction, that
melamine based resin product is subsequently spun into a fiber. To
spin a fiber this mixture . . . the phosphate is mixed with the molten
melamine . . . Mater does not describe the resulting melamine fiber as
being "coated."
(App. Br. 6).

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ISSUE
Have Appellants shown reversible error in the Examiner's finding that Mater
teaches a FR coated synthetic fiber having a coating containing a phosphorus
compound, phosphorus, or a mixture thereof as required by claim 7 within the
meaning of 35 U.S.C. § 102? We decide this issue in the affirmative.

ADDITIONAL FINDING OF FACT (FF)
2. Mater teaches adding alkali metal citrates, which may be phosphates, to the
reaction mixture to form a melamine resin "before, during, or after the
condensation reaction." (Mater, pp. 10-11). Mater teaches that this
melamine resin containing, inter alia, phosphates is then spun to form a
fiber. (Mater, p. 10). Mater, however, does not teach that its fiber has a
coating containing a phosphorous compound, phosphorous, or a mixture
thereof.

ADDITIONAL PRINCIPLE OF LAW
In order for a rejection under 35 U.S.C. § 102 to be proper:

[The] reference must clearly and unequivocally disclose the claimed
compound or direct those skilled in the art to the compound without
any need for picking, choosing, and combining various disclosures not
directly related to each other by the teachings of the cited reference.
Such picking and choosing may be entirely proper in the making of a
[§] 103, obviousness rejection, where the applicant must be afforded
an opportunity to rebut with objective evidence any inference of
obviousness which may arise from the similarity of the subject matter
which he claims to the prior art, but it has no place in the making of a
[§] 102, anticipation rejection.
In re Arkley, 455 F.2d 586, 587 (CCPA 1972).

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ANALYSIS AND CONCLUSION
The Examiner finds that Mater anticipates the claimed subject matter having
the feature recited in claim 7 for two reasons: (1) because Mater teaches that
"melamine resin fibers may be produced by polycondensing melamine in a reaction
mixture containing phosphates or polyphosphates . . ." (Ans. 4); or (2) because "it
was known in the textile industry to produce fire resistant products useful as
mattresses wherein fibers are coated with phosphrous-based chemicals." (Ans. 9).
We disagree with the Examiner that either of these reasons anticipates the claimed
subject matter having the features recited in claim 7.
With respect to the Examiner's first reason, we disagree with the Examiner's
finding that Mater teaches every element of the claimed invention. In particular,
Mater does not teach that the FR coated synthetic fiber has a coating containing a
phosphorous compound, phosphorous, or a mixture thereof. In this regard, Mater
teaches adding alkali metal citrates, which may be phosphates, to the reaction
mixture to form a melamine resin "before, during, or after the condensation
reaction." (FF 2). Mater teaches that this melamine resin containing, inter alia,
phosphates is then spun to form a fiber. (FF 2). In other words, Mater teaches that
phosphates are one of the ingredients used to make its melamine resin, which is
subsequently spun to form a fiber. Mater, however, does not teach that its fiber has
a coating containing phosphorous compound, phosphorous, or a mixture thereof.
(FF 2). Thus, with respect to the Examiner's first reason, because Mater does not
teach every element of the claimed invention, Mater cannot satisfy the
requirements of 35 U.S.C. § 102.
With respect to the Examiner's second reason, while it is undisputed that
Mater teaches that "it was known in the textile industry to produce fire resistant
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products useful as mattresses wherein fibers are coated with phosphorus-based
chemicals," we determine that one of ordinary skill in the art would have had to
pick and choose among Mater’s disclosures to reach the subject matter of claim 7.
(Compare Ans. 3 with App. Br. 4-19 and Reply Br. 1-5). Thus, while such picking
and choosing may be proper for a § 103 rejection, it is not proper to satisfy the
requirements of a § 102 rejection. Arkley, 455 F.2d at 587.
Thus, it follows that Appellants have shown reversible error in the
Examiner's finding that Mater teaches a FR coated synthetic fiber having a coating
containing a phosphorus compound, phosphorus, or a mixture thereof as required
by claim 7.
Accordingly, for the reasons stated by Appellants in the Brief and above, we
reverse the Examiner's decision rejecting claim 7 under 35 U.S.C. § 102(b) as
anticipated by the disclosure of Mater.

The § 103(a) rejection of dependent claim 7

As stated above, the Examiner determines that Mater would have suggested
the features unique to claim 7. (Ans. 4 and 9). Appellants argue that the
Examiner's rejection is not proper. (Reply Br. 5).

ISSUE
Have Appellants shown reversible error in the Examiner's determination that
Mater would have suggested a FR coated synthetic fiber having a coating
containing a phosphorus compound, phosphorus, or a mixture thereof as required
by claim 7? We decide this issue in the negative.

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ADDITIONAL FINDING OF FACT (FF)
3. It is undisputed that Mater teaches that "it was known in the textile industry
to produce fire resistant products useful as mattresses wherein fibers are
coated with phosphorus-based chemicals." (Compare Ans. 9 with App. Br.
4-19 and Reply Br. 1-5). In this regard, Mater states that "[c]onventional
fire retarding (FR) chemicals include halogen-based, phosphorus-based
and/or antimony-based chemicals." (Mater, p. 2).

PRINCIPLES OF LAW
We rely on the principles of law noted above.

ANALYSIS AND CONCLUSION

A § 103 rejection is on a different footing than a § 102 rejection since
picking and choosing may be proper in making a § 103 rejection. As stated above,
Mater teaches in one embodiment a fiber blend in a nonwoven article composed of,
inter alia, a FR synthetic fiber. This embodiment does not mention that a
phosphorus compound, phosphorus, or a mixture thereof coat the FR synthetic
fiber.
It is undisputed that Mater teaches that "it was known in the textile industry
to produce fire resistant products useful as mattresses wherein fibers are coated
with phosphrous-based chemicals." (FF 3). In this regard, Mater states that
"[c]onventional fire retarding (FR) chemicals include halogen-based, phosphorus-
based and/or antimony-based chemicals." (FF 3).
Thus, we determine that one of ordinary skill in the art would have been led
to employ a known phosphorus-based chemical to coat the fibers in Mater's fiber
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blend. In this regard, one of ordinary skill making such a combination would have
had a reasonable expectation of successfully enhancing the nonwoven article's
resistance to fire.
Thus, it follows that Appellants have not shown reversible error in the
Examiner's determination that Mater would have suggested a FR coated synthetic
fiber having a coating containing a phosphorus compound, phosphorus, or a
mixture thereof as required by claim 7.
Accordingly, based on the factual findings and legal conclusions set forth in
the Answer and above, we sustain the Examiner's decision rejecting claim 7 under
35 U.S.C. § 103(a) as unpatentable over the disclosure of Mater.

REJECTION (2): THE REJECTION OF CLAIM 9 UNDER 35 U.S.C. § 103(a)
AS UNPATENTABLE OVER MATER

The Examiner determines that
Claim 9 recites that the low melt binder comprises about 40
weight percent. Absent unexpected results with a low melt binder
about 40 weight percent, the optimizing of the range taught by Mater
to about 40 weight percent appears to have been obvious to one of
ordinary skill in the art at the time the invention was made as Mater
teaches that the binder fibers are utilized to maintain the fibers in their
orientation and thickness (Mater, page 22 lines 4-25) and one of
ordinary skill in the art would have optimized the binder based on the
desired properties such as weight and composition.
Mater teaches specifically low melt binders comprising 0-30%,
and additionally category 5 polyesters and polyolefins comprising
from 0-40%. Applicants' specification teaches that suitable low melt
binders include polyester and polyolefin (Applicants' substitute
specification of April 16, 2007, page 7 line 14 to page 8 line 12).
Additionally, Mater teaches that typical "lowmelt" fibers are
polyesters and polyolefins, which are further described as a category 5
fibers (page 15 lines 4- 17). . . . [The] Examiner relies on Applicants'
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admission and the express teachings of Mater that it is known to those
skilled in the textile art that polyesters and polyolefins are low melt
binders (Applicants' substitute specification of April 16,2007, page 7
line 14 to page 8 line 4). Therefore, it appears that Mater teaches a
low melt binder percentage which would have been obvious to one of
ordinary skill in the art based on the teachings of Mater.
(Ans. 9-10).
Appellants argue that "[t]he 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. . . . The examiner's assertion of
optimization is in error." (App. Br. 8).
In addition, Appellants argue that
Mater itself states that the "[blinder fiber can be a solid, single
polymer fiber with a significant lower melting point than the fill fibers
in the blend." Id., page 22, lines 9-12. The category 5 fibers of Mater
would be considered fill fibers. Note also the disclosure in Mater that
low melt fibers are "generally those fibers that have melting points
lower than the melting points or degradation temperatures of the other
fibers in the blends." Id., page 15, lines 4-9. It is not necessary for
the present specification to state a specific temperature range at which
the claimed low melt binder melts or flows as persons of ordinary skill
in the art are well familiar with low melt binder fibers and their use in
nonwoven fabrics as evidenced by Mater itself. Suffice it to say that
persons of ordinary skill in the art would not consider the category 5
fibers of Mater to be low melt binder fibers.
(App. Br. 9).

ISSUE
Have Appellants shown reversible error in the Examiner's determination that
Mater would have suggested about 40 weight percent of low melt binder as
required by claim 9 within the meaning of § 103? We decide this issue in the
negative.
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ADDITIONAL FINDING OF FACT (FF)
4. Mater teaches that polyesters and polyolefins are low melt fibers. (Mater, p.
15). Mater also teaches that its Categories 3 and 5 fibers may be, inter alia,
polyesters and polyolefins. (Mater, p. 15). Mater teaches that the
concentrations (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. (Mater, p. 15).

ADDITIONAL PRINCIPLES OF LAW
Where general conditions of a claim are disclosed in the prior art it is not
inventive to discover the optimum or workable ranges by routine experimentation.
In re Aller, 220 F.2d 454, 456 (CCPA 1955).
“[W]here the prior art gives reason or motivation to make the claimed
[invention] . . . the burden (and opportunity) then falls on an applicant to rebut that
prima facie case. Such rebuttal or argument can consist of . . . any other argument
or presentation of evidence that is pertinent.” In re Dillon, 919 F.2d 688, 692-93
(Fed. Cir. 1990) (en banc).
It is well settled that objective evidence must be factually supported by an
appropriate affidavit or declaration. See In re De Blauwe, 736 F.2d 699, 705 (Fed.
Cir. 1984).

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ANALYSIS AND CONCLUSION

Mater teaches that its Categories 3 and 5 fibers may include low melt fibers.
(FF 4). In addition, Mater teaches that the 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. (FF 4). In
other words, Mater recognizes that the concentrations of its Categories 3 and 5
fibers are important variables.
Thus, we agree with the Examiner that 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 of "about 40
weight percent of said low melt fiber." Accordingly, we agree with the Examiner
that the claimed range would have been obvious to one of ordinary skill in the art
at the time of the invention.
With respect to Appellants' argument that "persons of ordinary skill in the
art would not consider the category 5 fibers of Mater to be low melt binder
fiber[s]," it is well settled that objective evidence must be factually supported by an
appropriate affidavit or declaration. See De Blauwe, 736 F.2d at 705. In this case,
Appellants have not directed us to any credible evidence to support their argument
of what a person of ordinary skill would consider to be a low melt binder fiber.
Accordingly, Appellants’ attorney argument is insufficient to establish that persons
of ordinary skill in the art would not consider the category 5 fibers of Mater to be
low melt fibers.
Moreover, Mater plainly discloses that polyesters and polyolefins, which
may be low melting polymers, may be included in both Categories 3 and 5. Such
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disclosure reasonably indicates that one of ordinary skill in the art would
understand that the Category 5 polyesters or polyolefins may include the same
“low melt” polyester or polyolefins of Category 3. Accordingly, we are
unpersuaded that one of ordinary skill in the art would not consider low-melt
polyesters or polyolefins for Mater’s Category 5 polymers.
Therefore, it follows that Appellants have not shown reversible error in the
Examiner's determination that Mater would have suggested about 40 weight
percent of low melt binder as required by claim 9 within the meaning of § 103.
Accordingly, based on the Factual Findings and legal conclusions set forth
in the Answer and above, we affirm the Examiner's rejection of claim 9 under
35 U.S.C. § 103(a) as unpatentable over the disclosure of Mater.

ORDER
In summary:
1) The § 102(b) and § 103(a) rejections of claims 1-6, 8, 10, and 11 over the
disclosure of Mater are affirmed;
2) The § 102(b) rejection of claim 7 over disclosure of Mater is reversed;
3) The § 103(a) rejection of claim 7 over the disclosure of Mater is
affirmed; and
4) The § 103(a) rejection of claim 9 over the disclosure of Mater is affirmed.
Accordingly, the decision of the Examiner is affirmed.
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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)(v)(2008).

AFFIRMED

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