Ex Parte Mueller et al

Patent Trial and Appeal Board

Dec 8, 2014

12061832 (P.T.A.B. Dec. 8, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte DONALD S. MUELLER, WEIXIN D. SONG, and BANGJI CAO
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Appeal 2013-002688
Application 12/061,832
Technology Center 1700
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Before PETER F. KRATZ, ROMULO H. DELMENDO and
ELIZABETH M. ROESEL, Administrative Patent Judges.

ROESEL, Administrative Patent Judge.

DECISION ON APPEAL

Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–6 and 14–25. We have jurisdiction under
35 U.S.C. § 6(b).

STATEMENT OF THE CASE
The claimed subject matter relates to a non-woven material, App. Br.
38 (claim 1), which is suitable for use as an acoustic ceiling tile. Spec.

1 According to Appellants, the Real Party in Interest is USG Interiors, LLC.
App. Br. 4.
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Abstract. Claims 1 and 23 are the only independent claims on appeal.
Claim 1 is set forth below (with disputed limitations shown in italics):
1. A non-woven material comprising:
an inorganic fiber and a multi-component bonding fiber
in a mat form;
the multi-component bonding fiber having a low melting
point component and a high melting point component formed in
unitary fiber filaments;
the low melting point component melting point is less
than the high melting point component melting point to enable
the low melting point component to melt and bind to the
inorganic fiber while the high melting point component remains
intact, at least a portion of the multi-component bonding fiber
being bound by heat bonding to at least a portion of the
inorganic fiber to form said non-woven material in the mat
form; and
the non-woven material having improved manual
cutability with a utility knife by virtue of the multi-component
bonding fiber having a strength substantially equal to that of
the inorganic fiber, said strength being from about 1 gram
force to about 10 grams force and having an elongation less
than 20% at break;
the non-woven material being in the mat form with a
basis weight of about 3,000 gsm or greater.
App. Br. 38 (Claims App’x.)
In claim 23, the preamble and first three body paragraphs are the same
as the corresponding parts of claim 1. The last two body paragraphs of
claim 23 recite:
the non-woven material having acceptable cutability
when manually cut with a utility knife by virtue of the inorganic
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fiber and the multi-component bonding fiber having
substantially equal strengths to inhibit fiber separation when the
non-woven material is subjected to a cutting force;
whereby the non-woven material may be manually cut
with a utility knife with less cutting force and fiber separation
as compared with an identical non-woven material except that
the multi-component bonding fiber does not have a fiber
strength substantially equal to the inorganic fiber strength.
Id. at 42.
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Magill et al. US 2003/0035951 A1 Feb. 20, 2003
Christie et al. US 2003/0060113 A1 Mar 27, 2003
Fay et al. US 2004/0185225 A1 Sept. 23, 2004
Gross et al. WO 2006/107847 A2 Oct. 12, 2006

Andy Tsou, Fillers in the Encyclopedia of Polymer Science and
Technology 1–21, published online 3/15/2004.

THE REJECTIONS
1. Claims 1–6 and 14–25 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
2012-03-13 Action 2.
2. Claims 1–6 and 14–25 are rejected under 35 U.S.C. § 112, second
paragraph, as indefinite. Id. at 3.
3. Claims 1–6 and 14–25 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Christie in view of Tsou and Magill. Id. at 4.
4. Claims 1–4 and 23–25 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Christie in view of Gross. Id. at 18.
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5. Claim 2 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Christie, Tsou, and Magill, as applied to claims 1–6 and 14–25, and further
in view of Fay. Id. at 22.

ANALYSIS
I. Written Description—First Ground of Rejection
Because we affirm the decision of the Examiner on the basis of the
second and fourth grounds of rejection for indefiniteness and obviousness,
respectively, we exercise our discretion not to reach the rejections under 35
U.S.C. § 112, first paragraph.
II. Indefiniteness—Second Ground of Rejection
The Examiner contends that the scope of “substantially equal” in
claims 1, 23, and 25 is unclear and that the limitation is subjective and
qualitative without further support in the Specification as to its metes and
bounds. 2012-03-13 Action 3; Ans. 8–10. Appellants argue that
“substantially equal” is not indefinite because the Specification includes
general guidelines as to what is meant by “substantially equal,” namely a
strength level that will result in the non-woven material having favorable
cutability characteristics and that will inhibit fiber separation when the non-
woven material is cut and that is not substantially different from the strength
level of the inorganic fibers. App. Br. 18–19 (citing Spec. ¶ 26);2 Reply Br.
3–4.
Section 112 places the burden of precise claim drafting on the
applicant. In re Morris, 127 F.3d 1048, 1056–57 (Fed. Cir. 1997). When a

2 Appellants refer to the Specification paragraphs as numbered in the Oct. 8,
2009 Pre-Grant Publication, US 2009/0252941 A1, and we do the same.
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word of degree, such as “substantially,” is used in a claim, we must
determine whether the Specification provides some standard for measuring
that degree. Seattle Box Company, Inc. v. Industrial Crating & Packing,
Inc., 731 F.2d 818, 826 (Fed. Cir. 1984) (addressing whether claim term
“substantially equal” is indefinite).
Appellants contend that the guidance needed for one of ordinary skill
in the art to understand the scope of “substantially equal” is provided by
paragraph 26 of the Specification. App. Br. 18–19. That paragraph
establishes that the purpose of the “substantially equal” limitation is to
ensure good cutability and to avoid separation of the component fibers when
a non-woven material is cut. Spec. ¶ 26. We are not, however, persuaded
that disclosure of this purpose is sufficient to inform one of ordinary skill in
the art of the metes and bounds of the “substantially equal” limitation. The
Specification provides no objective and quantifiable criteria for determining
whether a non-woven material has good cutability and avoids separation of
the fibers during cutting. Because the Specification discloses no criteria for
determining whether these cutability objectives are met, the Specification
fails to provide a reasonably clear standard for measuring whether the
strengths of the inorganic and bonding fibers are “substantially equal.” This
lack of clarity is compounded by Examples 1–4 of the Specification, which
describe non-woven materials having marginal cutability, requiring
excessive or relatively strong cutting force, and exhibiting fiber pull-out
during cutting. Spec. ¶¶ 59, 60, 64, 65, Tables 4, 6. Despite the reportedly
poor performance of these non-woven materials, the Specification states that
they are examples of Appellants’ claimed invention, Spec. ¶ 56, thus failing
to inform one of ordinary skill in the art of the scope of Appellants’ claims.
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Appellants do not direct us to any disclosure in the Specification that
that provides a reasonably clear standard for measuring whether the
strengths of the inorganic and bonding fibers are “substantially equal,” as
recited in claims 1, 23, and 25. We are therefore not persuaded of reversible
error in the Examiner’s indefiniteness rejection of claims 1–6 and 14–25,
each of which contains a limitation requiring “substantially equal” strength
or depends, directly or indirectly, from a claim containing that limitation.
III. Obviousness
A. Third and Fifth Grounds of Rejection
As we find no reversible error in the Examiner’s rejection of claims
1–6 and 14–25 as indefinite, we find it imprudent to speculate as to the
scope of these claims in order to reach a decision regarding the Examiner’s
art rejections over Christie, Tsou, Magill, and/or Fay. We therefore reverse
pro forma the third and fifth grounds of rejection of claims 1–6 and 14–25.
In re Steele, 305 F.2d 859, 862–63 (CCPA 1962).
B. Fourth Ground of Rejection
The dispute between Appellants and the Examiner regarding the art
rejection over Christie and Gross can be resolved independently of the
meaning of “substantially equal” in claims 1, 23, and 25. We therefore
exercise our discretion to reach this ground of rejection. Ex parte Tanksley,
26 USPQ2d 1384, 1387 (BPAI 1991) (exercising discretion to reach art
rejections despite indefiniteness where nature of case permitted).
1. Claims 1, 3, 4, and 23–25
With respect to the fourth ground of rejection, Appellants argue
claims 1, 3, 4, and 23–25 as a group, presenting no argument for
patentability of any of these claims separate from claim 1. App. Br. 34–36.
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Therefore, claims 1, 3, 4, and 23–25 stand or fall together, and we select
claim 1 as representative.
The Examiner finds that Christie teaches all elements of claim 1,
except for the improved cutability and “substantially equal” strength
limitations and the numerical limits for strength and elongation. 2012-03-13
Action 18–19 (citing Christie, Figs. 3, 4, ¶¶ 1–17, 25–41, 46–52, 55, 61, 62,
Exs. 1, 2, claims 1–51). With respect to these claim elements, the Examiner
finds that Appellants’ Specification Examples 1, 3, and 4 teach that
commercially available Trevira Type 255 bicomponent fiber is suitable and
meets the requirements of the claim. Id. at 20–21; Ans. 26–27. Based on
the teachings of Christie and Gross, the Examiner concludes that it would
have been obvious to one of ordinary skill in the art to form the insulating
panel of Christie where the multicomponent fibers of Christie comprise
Trevira Type 255 multicomponent fibers as taught by Gross. 2012-03-13
Action 20; Ans. 25–26 (citing Gross ¶¶ 14–18, 34, 59, 62–66, 68–71, 144).
Appellants do not challenge the Examiner’s conclusion that it would
have been obvious to combine the teachings of Christie and Gross in the
manner suggested by the Examiner. App. Br. 34. Instead, Appellants argue
that the resulting non-woven material would not meet the limitations of
claim 1 because it is not inherent that commercially available Trevira
Type 255 bi-component fiber has a strength that is substantially equal to the
strength of the inorganic fiber, and it would not have been obvious to modify
its strength to meet that requirement. Id. at 34–35; Reply Br. 6.3

3 Although the Appeal Brief makes an argument regarding the basis weight
limitation of claim 1, that argument is withdrawn in the Reply Brief.
Compare App. Br. 34 with Reply Br. 6.
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Upon consideration of the evidence on this record and each of
Appellants contentions, we find that a preponderance of evidence supports
the Examiner’s conclusion that the subject matter of claims 1, 3, 4, and 23–
25 is unpatentable over Christie and Gross. We sustain the rejection of
claims 1, 3, 4, and 23–25 based on the Examiner’s findings of fact,
conclusions of law, and rebuttals to Appellants’ arguments, as expressed in
the 2012-03-13 Action and the Answer. We add the following for emphasis.
Appellants do not contest the Examiner’s finding that Specification
Examples 1, 3, and 4 teach that commercially available Trevira Type 255
bicomponent fiber is suitable for use in making the claimed non-woven
material. App. Br. 34–35; Reply Br. 6. Each of these Examples teaches
combining mineral wool (as an inorganic fiber) with a commercially-
available bi-component fiber (as a bonding fiber) to make a non-woven
material. Spec. ¶¶ 57, 61, 65. According to these Examples, the
commercially-available bi-component fiber is incorporated into the non-
woven material “as is,” without any disclosed modification to meet the
“substantially equal” strength limitation of the claims. Id. Appellants do not
argue otherwise. Examples 1, 3, and 4 are disclosed as embodiments of
Appellants’ claimed invention. Spec. ¶ 56 (“Advantages and embodiments
of the non-woven materials described herein are further illustrated by the
following examples; however, the particular materials and amounts thereof
recited in these examples, as well as other conditions and details, should not
be construed to unduly limit the claims.”) Again, Appellants do not contend
otherwise.
According to the Examiner’s uncontested findings, the combination of
Christie and Gross teaches a non-woven material made from the same fibers
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disclosed in Appellants’ Examples 1, 3, and 4, namely mineral wool (as an
inorganic fiber) and Trevira Type 255 bicomponent fiber (as a bonding
fiber). 2012-03-13 Action 18–20; Ans. 25–27; see Christie ¶¶ 23, 24, 25
(disclosing acoustic panel formed from multi-component polymer fibers and
mineral wool); Gross ¶¶ 4, 63, 64, 144 (disclosing bicomponent binder fiber
for making nonwoven material for, e.g., an acoustic panel, where Trevira
Type 255 fiber is an example of a bicomponent fiber). Appellants do not
persuade us that the combined teachings of Christie and Gross are patentably
distinguishable from the embodiments disclosed in Examples 1, 3, and 4 of
the Specification, which Appellants admit are embodiments of the claimed
invention, Spec. ¶ 56, and which are presumed to be within the scope of the
claims. See Oatey Co. v. IPS Corp., 514 F.3d 1271, 1276 (Fed. Cir. 2008)
(“We normally do not interpret claim terms in a way that excludes
embodiments disclosed in the specification.”). We therefore affirm the
Examiner’s rejection of claims 1, 3, 4, and 23–25 for obviousness over
Christie and Gross.
2. Claim 2
With respect to claim 2, Appellants argue that the combined teachings
of Christie and Gross do not disclose the shot content of the inorganic fiber
and flame spread index and smoke development index of the non-woven
material, as recited in the claim. App. Br. 35–36. Appellants do not,
however, argue that the combined teachings of Christie and Gross are
distinguishable from the embodiments disclosed in Examples 1, 3, and 4 of
the Specification. We therefore affirm the Examiner’s rejection of claim 2
for the same reasons as discussed above with respect to claims 1, 3, 4, and
23–25.
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CONCLUSION OF LAW AND DECISION
The decision of the Examiner is affirmed solely on the basis of the
Second Ground of Rejection (indefiniteness as to all appealed claims) and
Fourth Ground of Rejection (obviousness as to claims 1–4 and 23–25).
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).
AFFIRMED

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