Ex Parte Miele

Board of Patent Appeals and Interferences

Oct 29, 2008

10647917 (B.P.A.I. Oct. 29, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PHILIP FRANCIS MIELE
____________

Appeal 2008-5075
Application 10/647,917
Technology Center 1700
____________

Decided: October 29, 2008
____________

Before CHARLES F. WARREN, PETER F. KRATZ, and
JEFFREY T. SMITH, Administrative Patent Judges.

KRATZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1-13. We have jurisdiction pursuant to
35 U.S.C. § 6.

Appeal 2008-5075
Application 10/647,917

Appellant’s claimed invention is directed to a fibrous mat including a
formaldehyde-containing binder, which binder includes a bisulfite
compound that allegedly lowers formaldehyde emissions (Spec. 3-4).
Claim 1 is illustrative and reproduced below:
1. A nonwoven fibrous mat having a basis weight in the range of
about 50 - 225 grams/square meter, fibers in the fibrous mat
consisting essentially of polymer fibers bound by about 16-30 wt.
percent, based on the dry weight of the mat, of a formaledehyde
containing polymer resin latex binder, the polymer of the polymer
resin latex binder being selected from a group consisting of ethylene-
vinyl acetate copolymer, styrene-acrylic copolymer, vinyl-acrylic
copolymer, styrene-butadiene-acrylonitrile copolymer, acrylic
copolymer prepared by emulsion polymerization of one or more
acrylic ester monomers including ethyl acrylate, methyl acrylate,
methyl methacrylate, butyl acrylate, 2–ethyl hexylacrylate,
hydroxyethyl acrylate, hydroxypropyl acrylate, and hydroxyethyl
methacrylate, acrylamide or substituted acrylamides, butadiene,
styrene, acrylonitriles, vinyl acetate or other vinyl esters; carboxylic
acid monomers or ethylenically unsaturated anhydrides capable of
generating carboxylic acids, the binder containing bisulfite compound
providing a hot strength in the mat, at 200 degrees C., of no more than
about 1 percent elongation, in the machine direction, the binder
containing at least about 1.25 wt. percent and up to about 7.5 wt.
percent of the bisulfite compound, based on the dry weight of the
formaldehyde containing resin in the binder.

The Examiner relies on the following prior art references as evidence in
rejecting the appealed claims:
Nishibara 5,178,706 Jan. 12, 1993
Taylor 5,578,371 Nov. 26, 1996
Chang 5,914,365 Jun. 22, 1999
Hummerich 6,071,994 Jun. 6, 2000

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Claims 1-13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Chang in view of Taylor. Additionally, claim 2 stands
rejected under 35 U.S.C. § 103(a) as being unpatentable over Chang in view
of Taylor, and Hummerich. Also, claims 8-10 additionally stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Chang in view of
Taylor, and Nishibara.
We affirm the stated rejections for reasons set forth in the Answer and
as further provided below.
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) any secondary considerations. Graham v.
John Deere Co., 383 U.S. 1, 17-18 (1966). “[A]nalysis [of whether the
subject matter of a claim is 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. Teleflex, Inc., 127 S.
Ct. 1727, 1741 (2007). See DyStar Textilfarben GmbH & Co. Deutschland
KG v. C.H. Patrick Co., 464 F.3d 1356, 1361 (Fed. Cir. 2006) (“The
motivation need not be found in the references sought to be combined, but
may be found in any number of sources, including common knowledge, the
prior art as a whole, or the nature of the problem itself.”).
Starting with the first stated rejection, claims 1-13 are argued together
as a group. Accordingly, we select claim 1, the sole independent claim on
appeal, as the representative claim on which we shall decide this appeal as to
the first stated rejection.
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The Examiner basically maintains that Chang teaches or suggests a
fibrous mat corresponding to the mat required by representative claim 1
including the provision of a formaldehyde-containing binder but for the
bisulfite compound additive for the binder (Chang, Abs., col. 2, l. 35-col. 3,
l. 15, col. 5, l. 6-col. 6, l. 67; Ans. 3). The Examiner turns to Taylor for
disclosing the addition of bisulfite to a formaldehyde-containing binder to
lower formaldehyde emissions during the curing of the binder (Taylor, Abs.,
col. 3, l. 38- col. 4, l. 54; Ans. 4)). The Examiner has determined that “[i]t
would have been obvious to one having ordinary skill in the art to have
modified the binder composition of Chang to include bisulfite as claimed
because Taylor teaches the incorporation reduces total emissions as cited
above” (Ans. 4).
Appellant contends that Chang is directed to a different type of
fibrous nonwoven mat (a glass fiber mat) and that Taylor’s teachings do not
suggest a modification to the fibrous mat binder of Chang that would result
in the claimed invention (Br. 9). A Declaration under 37 C.F.R. § 1.132 of
Ralph Michael Fay and an excerpt from Fiber Glass by Mohr et al. (Mohr)
are provided in support of Appellant’s contentions.
Hence, a principal issue before us is: Has Appellant established
reversible error in the Examiner’s obviousness rejection of representative
claim 1 by the assertions that Chang is directed to a different type of mat (a
glass fiber mat) that would not result in the claimed fibrous mat, which
includes fibers consisting essentially of polymer fibers, upon any
modification thereof suggested by Taylor? We answer this question in the
negative. Thus, we affirm the Examiner’s obviousness rejection of claims 1-
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13 over Chang in view of Taylor for reasons set forth in the Answer and
below.
Chang describes the use of organic polymer fibers as an alternative to
the otherwise disclosed inorganic (glass) fiber option for forming the mat
described therein, as pointed out by the Examiner (Chang, col. 6, ll. 55-67;
Ans. 3). Moreover, Chang teaches that a resin based aqueous binder
comprising a urea-formaldehyde resin and a styrene-maleic anhydride
copolymer (SMA) can be employed in forming a fiber mat useful as flooring
or roofing material (col. 2, ll. 48-59).
Appellant has not established that the acrylic copolymer option for the
binder as called for by the product-by-process limitations of claim 1 requires
a patentably different binder than the binder taught and suggested by Chang
based on the argument that their claimed formaldehyde containing polymer
would be recognized as being thermoplastic (Br. 9). In this regard,
representative claim 1 does not require the exclusion of thermosetting
formaldehydes from the claimed binder given the “formaldehyde containing
polymer latex resin” limitation of claim 1. Also, Chang teaches that the
fiber mat usually includes about 15-30 weight percent binder on a dry
weight basis, which disclosed binder content substantially overlaps the 16-
30 weight percent binder weight for the mat as required by representative
claim 1 (Chang, col. 6, ll. 45-54).
On this record, the applied Chang reference furnishes sufficient
teachings to render the product-by process defined binder polymer and hot
strength functionality specified in representative claim 1 at least prima facie
obvious. After all, whether a rejection is under 35 U.S.C. § 102 or § 103,
when Appellant’s product and that of the prior art appear to be identical or
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substantially identical, the burden shifts to Appellant to provide evidence
that the products taught by the prior art do not necessarily or inherently
possess the relied upon characteristics of Appellant’s claimed product. See
In re Fitzgerald, 619 F.2d 67, 70 (CCPA 1980); In re Best, 562 F.2d 1252,
1255 (CCPA 1977); In re Fessmann, 489 F.2d 742, 745 (CCPA 1974). The
reason is that the Patent and Trademark Office is not able to manufacture
and compare products. See Best, 562 F.2d at 1255.
Additionally, it is significant that Appellant acknowledges that
polymer fibrous mats employing formaldehyde containing acrylic latex
polymer binders that provide dimensional stability for roofing products were
known in the art albeit subject to emitting formaldehyde vapors during
heating and curing steps encountered during manufacture (Spec. 1).1
As for the representative claim 1 requirement for a bisulfite additive
being present in the formaldehyde containing resin binder, Taylor discloses
the provision of such a binder additive for decreasing formaldehyde
emissions during the curing of formaldehyde containing binder resin. In this
regard, we agree with the Examiner that one of ordinary skill in the art
would have been led to furnish such a formaldehyde scavenger to the
formaldehyde-containing binder of Chang to reduce emissions of

1 See In re Nomiya, 509 F.2d 566, 570-71 (CCPA 1975) (The admitted prior
art in the applicant’s specification may be used in determining the
patentability of a claimed invention.). Also, see In re Fout, 675 F.2d 297,
301 (CCPA 1982), “[i]t is not unfair or contrary to the policy of the patent
system that appellants’ invention be judged on obviousness against their
actual contribution to the art” (footnote omitted).
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formaldehyde during the curing of the binder of Chang as taught by Taylor
to be an expected benefit of providing such a binder additive.2
In light of the above, Appellant has not established that the
representative claim 1 mat patentably differs from the mat suggested by the
combined teachings of Chang and Taylor. In this regard, the Fay
Declaration addresses the teachings of Taylor and concludes that Appellant’s
mat is different from the mat of Taylor. However, the Examiner’s rejection
is not over Taylor alone; but, Chang taken with Taylor. Moreover, the
excerpt from Mohr’s book is likewise unpersuasive as Chang teaches
organic polymer fiber mats. For reasons stated above and in the Answer,
Appellant’s have not fairly substantiated their argument that the teachings of
Taylor would not have suggested a modification of Chang that would have
led one of ordinary skill in the art to the representative claim 1 subject
matter.
On this record, we affirm the Examiner’s first stated obviousness
rejection.
Concerning the Examiner’s second and third obviousness rejections,
we note that these rejections each include Chang and Taylor, as discussed
above, and an additional reference being applied against dependent claim 2
and dependent claims 8-10, respectively.
With respect to the separate obviousness rejection of dependent claim
2, we note that Chang and Taylor suffice to render the subject matter of
claim 2 prima facie obvious to one of ordinary skill in the art for the reasons

2 It is instructive to note that Examples 2 and 3, as set forth in the
Specification, demonstrate that bisulfite addition has little or no effect on the
hot strength of a mat.

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already stated above; that is, Chang reasonably suggests use of a
formaldehyde fortified acrylic copolymer binder and Taylor suggests a
bisulfite compound addition to reduce formaldehyde emissions during
curing. Hummerich further discloses the use of acrylic copolymer materials
in binder compositions as pointed out by the Examiner (Ans. 4-5) and
Hummerich teaches that formaldehyde can optionally be used to fortify the
binder (col. 10, ll. 8-12). Thus, Appellant’s arguments against the
additionally applied Hummerich as being directed to a formaldehyde free
binder are not persuasive of reversible error in the Examiner’s separate
obviousness rejection of claim 2.
With regard to the separate obviousness rejection of dependent claims
8-10, Appellant furnishes additional arguments attacking the Examiner’s use
of Nishibara in addition to Chang and Taylor in the separate rejection of
these dependent claims (Br. 12-14). Representative claim 8 depends from
claim 1, discussed above, and further requires that that the binder includes
emulsified styrene butadiene acrylonitrile copolymer latex. Appellant
identifies such a binder resin polymer as being a known commercially
available mat binder (Spec. 6, Example 1). As such, Appellant’s argument
with respect to the additionally applied Nishibara reference is not persuasive
of reversible error in the Examiner’s obviousness position of representative
claim 8 in that Nishibara is at best cumulative to the prior art respecting
known binder materials that are acknowledged by Appellant to be readily
available to one of ordinary skill of the art. Again, it is significant to note
that Appellant acknowledges that the alleged invention at issue here is drawn
to the addition of bisulfite compound to the mat binder (Spec. 3-4, Example
3), and not in the many known processes for forming the mat using known
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aqueous latex binder without the bisulfite compound (Compare Examples 1
and 2 with Example 3, Spec. 6-7).
It follows that, on this record, we shall affirm all of the Examiner’s
obviousness rejections.
CONCLUSION
The Examiner’s decision to reject claims 1-13 under 35 U.S.C. §
103(a) as being unpatentable over Chang in view of Taylor; to reject claim 2
under 35 U.S.C. § 103(a) as being unpatentable over Chang in view of
Taylor, and Hummerich; and to reject claims 8-10 under 35 U.S.C. § 103(a)
as being unpatentable over Chang in view of Taylor, and Nishibara 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)(1)(iv).

AFFIRMED

tf/ls

ROBERT D. TOUSLEE
JOHNS MANVILLE
LEGAL DEPARTMET
10100 WEST UTE AVENUE
LITTLETON, CO 80127
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