Ex Parte Patel

Board of Patent Appeals and Interferences

Apr 6, 2006

10123269 (B.P.A.I. Apr. 6, 2006)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte TUSHAR M. PATEL
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Appeal No. 2006-1153
Application No. 10/123,269
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ON BRIEF
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Before GARRIS, WARREN and FRANKLIN, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal which involves claims 1-18.
The subject matter on appeal relates to a method of
producing a glass strand mat which comprises distributing
unbonded glass filaments to form a first layer, disposing an
adhesive web binder over the first layer, distributing unbonded
glass filaments over the adhesive web binder to form a second
layer, thereby creating a lay-up, and heating the lay-up to a
temperature sufficient to at least partially melt the adhesive
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Application No. 10/123,269
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web binder, thereby providing an adhesive to bind that least some
of the unbonded filaments of the first layer of glass filaments
to at least some of the unbonded filaments of the second layer of
glass filaments. Further details regarding this subject matter
are set forth in representative independent claim 1 which reads
as follows:
1. A method of producing a glass strand mat,
comprising:
distributing unbonded glass filaments onto a surface to
form a first layer of glass filaments, at least some of the
first layer of glass filaments being unbonded glass
filaments;
disposing an adhesive web binder over the first layer
of glass filaments;
distributing unbonded glass filaments over the adhesive
web binder to form a second layer of glass filaments,
thereby creating a lay-up, at least some of the second layer
of glass filaments being unbonded glass filaments;
heating the lay-up to a temperature sufficient to at
least partially melt the adhesive web binder, thereby
providing an adhesive to bind at least some of the unbonded
filaments of the first layer of glass filaments to at least
some of the unbonded filaments of the second layer of glass
filaments; and
compacting the lay-up to create the glass and strand
mat.
Appeal No. 2006-1153
Application No. 10/123,269
We expressly repudiate the obviousness opinion expressed by1
the examiner in his exposition of the Section 102 rejection
(i.e., see the penultimate and last sentences in the paragraph
bridging pages 3 and 4 of the answer). Statements of obviousness
have no place in a rejection based on anticipation.
3
The reference set forth below is relied upon by the examiner
in the Section 102 and Section 103 rejections before us:
Francis, Jr. (Francis) 2,543,101 Feb. 27, 1951
Claims 1-3, 5, 7-11, 13, 14, 16 and 18 are rejected under
35 U.S.C. § 102(b) as being anticipated by Francis.
Claims 4, 6, 12, 15 and 17 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Francis.
We refer to the brief and reply brief and to the answer for
a complete discussion of the contrary viewpoints expressed by the
appellant and by the examiner concerning the above noted
rejections.
OPINION
For the reasons set forth in the answer and below, we will
sustain each of these rejections.
As fully explained in the answer, Francis discloses a method
(e.g., see figure 2 and the discussion thereof in columns 9-10)
which anticipatorily satisfies each of the limitations recited in
appealed independent claims 1 and 13.1
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Application No. 10/123,269
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In support of his opposing viewpoint, the appellant presents
the following argument on page 5 of the brief:
Applicants [sic] respectfully disagree with the Examiner’s
characterization that the fabric 47 (or the fabric 73 show
in Figure 4) is an adhesive web binder. Merely because the
fabric 47 contains “potentially adhesive fibers”, does not
make it an adhesive web binder as specifically recited in
claim 1 of the present application.
This argument is not well taken. Patentee’s fabric 47 is
expressly described as “consisting of potentially adhesive
fibers” (column 10, line 11) and the potentially adhesive fibers
are expressly disclosed as being “activated” by heat (e.g., see
lines 27-45 in column 10). Moreover, Francis explicitly teaches
that the heat activation “may be carried to the point where such
potentially adhesive fibers loose their fibrous structure, and
flow to form a continuous film of binding substance” (column 7,
lines 56-59). Based on these prior art disclosures, we find, as
did the examiner, that patentee’s “fabric 47 consisting of
potentially adhesive fibers” (column 10, lines 10-11) fully
satisfies the “adhesive web binder” limitation of independent
claim 1 (as well as independent claim 13).
Indeed, based on the record before us, this fabric
of potentially adhesive fibers taught by Francis is
indistinguishable from the adhesive web binder described
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Application No. 10/123,269
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in the subject specification. This is because, according to the
specification, the appellant’s adhesive web binder, like fabric
47 of Francis, is made of thermoplastic polymers which may be in
the form of a rolled product (e.g., see lines 1-17 on
specification page 6 in comparison with lines 28-54 in column
5 as well as fabric roller 45 shown in figure 2 of Francis).
The appellant further argues that Francis does not satisfy
the claim 1 limitation “providing an adhesive to bind at least
some of the unbonded filaments of the first layer of glass
filaments to at least some of the unbonded filaments of the
second layer of glass filaments.” In this regard, the appellant
does not disagree with the proposition that, in the method of
Francis, “a first bat [i.e., bat 44] is bonded to one side of the
textile fabric [i.e., fabric 47], and a second bat [i.e., the
unnumbered bat formed in chamber 48] is bonded to a second side
of the textile fabric” (reply brief, page 2). Nevertheless, the
appellant contends that patentee’s method does not satisfy the
aforequoted claim limitation because “[t]he two layers of web or
bat in the product made by the method described in Francis . . .
are separated from each other by the textile fabric” (id.).
Like the examiner, we are unpersuaded by this contention.
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As previously explained, patentee’s “fabric 47 consisting
of potentially adhesive fibers” (column 10, lines 10-11) is
indistinguishable from the “adhesive web binder” of independent
claim 1 (as well as independent claim 13). Moreover, the
potentially adhesive fibers of Francis, like the adhesive web
binder claimed by appellant, are heated to a temperature
sufficient to at least partially melt the fibers to thereby
provide the desired adhesive as fully explained above and in the
answer. In this way, at least some of the unbonded filaments or
fibers of patentee’s first bat 44 are necessarily and inherently
bonded to at least some of the unbonded filaments or fibers of
the second bat as required by the independent claims on appeal.
Viewed from this perspective, the appellant’s statement that
“[t]he two layers of web or bat in the product made by the method
described in Francis . . . are separated from each other by the
textile fabric” (reply brief, page 2) is equally applicable to
the product made by the hereclaimed method wherein the two layers
are separated from each other by the adhesive web binder. Again,
this is because patentee’s fabric 47 consisting of potentially
Appeal No. 2006-1153
Application No. 10/123,269
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adhesive fibers and appellant’s adhesive web binder are both at
least partially melted by heat in order to thereby provide the
desired adhesive.
For the reasons stated above and in the answer, it is our
determination that the examiner has established a prima facie
case of anticipation which the appellant has failed to
successfully rebut with argument or evidence to the contrary.
See In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992). We hereby sustain, therefore the examiner’s
Section 102 rejection based on Francis of independent claims
1 and 13 as well as nonargued dependent claims 2, 3, 5, 7-11, 14,
16 and 18.
As for the Section 103 rejection, the only additional
argument advanced by the appellant is that Francis contains no
teaching or suggestion that his fabric 47 consisting of
potentially adhesive fibers is produced “from at least one molten
polymeric material” as required by dependent claims 6 and 15.
However, as previously explained, patentee’s fabric (like
appellant’s adhesive web binder) is made from thermoplastic
polymers (e.g., see the paragraph bridging columns 2 and 3 of
Francis in comparison with lines 1-7 on page 6 of the appellant’s
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Application No. 10/123,269
We recognize that the claims on appeal are directed to a2
method of producing a glass strand mat. Nevertheless, dependent
claims 6 and 15 are not directed to any aspect of such a method
but instead merely describe the manner by which the previously
recited adhesive web binder is manufactured. For this reason,
it is questionable whether these dependent claims further limit
the mat producing claims from which they depend (see 37 CFR
§ 1.75(c)). Concomitantly, it is questionable whether the
adhesive web binder recited in claims 6 and 15 is distinguished
from fabric 47 of Francis merely by reciting the manner in which
this adhesive web binder has been manufactured. Compare In re
Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
These issues should be considered by the examiner and the
appellant in any further prosecution that may occur.
8
specification). Furthermore, Francis teaches forming these
potentially adhesive fibers by means which include spray guns 36,
49 and solvent vents 38, 51 (see lines 55-62 in column 9 and
lines 13-19 in column 10). In light of these disclosures of
Francis, it would have been obvious for an artisan to produce
patentee’s potentially adhesive fibers from molten polymeric
material as required by claims 6 and 15.2
In light of the foregoing, we again determine that the
Francis reference establishes a prima facie case of
unpatentability (under Section 103) which the appellant has
failed to successfully rebut with argument or evidence of
Appeal No. 2006-1153
Application No. 10/123,269
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patentability. Oetiker, 977 F.2d at 1445, 24 USPQ2d at 1444. As
a consequence, we also hereby also sustain the examiner’s Section
103 rejection based on Francis of claims 4, 6, 12, 15 and 17.
The decision of the examiner is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a)(1)(iv).
AFFIRMED

BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES F. WARREN ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
)
BEVERLY A. FRANKLIN )
Administrative Patent Judge )
BRG:hh
Appeal No. 2006-1153
Application No. 10/123,269
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BROOKS KUSHMAN, P.C.
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TWENTY-SECOND FLOOR
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