Ex Parte Potter et al

Patent Trial and Appeal Board

Aug 25, 2017

13433721 (P.T.A.B. Aug. 25, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/433,721 03/29/2012 Russell M. Potter 27544/04845 9711
13538 7590 08/29/2017
Calfee, Halter & Griswold LLP
The Calfee Building
1405 East Sixth Street
Cleveland, OH 44114-1607
EXAMINER
VINEIS, FRANK J
ART UNIT PAPER NUMBER
1786
NOTIFICATION DATE DELIVERY MODE
08/29/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ipdocket @ c alfee .com
bmgipdept@owenscorning.com
wfrick @ c alfee. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RUSSELL M. POTTER, PATRICK M. GAVIN,
WILLIAM J. GRIECO, and MANOJ K. CHOUDHARY1
Appeal 2017-000641
Application 13/433,721
Technology Center 1700
Before DONNA M. PRAISS, N. WHITNEY WILSON, and
AVELYN M. ROSS, Administrative Patent Judges.
ROSS, Administrative Patent Judge.
DECISION ON APPEAL2
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1—3, 6—15, 17, and 19—21. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellants identify the real party in interest as Owens Coming Intellectual
Capital LLC. Appeal Br. 3.
2 In our Decision we refer to the Specification (“Spec.”) filed March 29,
2012 as amended, the Final Office Action (“Final Act.”) dated June 30,
2015, the Appeal Brief (Appeal Br.) filed June 8, 2016, the Examiner’s
Answer (“Ans.”) dated August 12, 2016, and the Reply Brief (“Reply Br.”)
filed October 11,2016.
Appeal 2017-000641
Application 13/433,721
STATEMENT OF THE CASE
The subject matter on appeal relates to a fibrous insulation product
having an improved thermal resistance and method of “improving the
capability of the insulation material to block the transfer of radiant heat by
distributing the opacifier more uniformly throughout the fibrous matrix.”
Spec. 12. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method of making a fibrous insulation product,
comprising:
coating inorganic base fibers with an aqueous composition
comprising an opacifying agent to provide an opacified base
fiber that is substantially uniformly coated with opacifying agent,
contacting the opacified base fiber with a binder, after
coating the inorganic base fibers with the aqueous composition
comprising the opacifying agent, to form a matrix of [hjindered
opacified base fibers, wherein the binder is applied without
removing the coating of opacifier on the base fiber such that the
opacified base fibers remain substantially uniformly coated with
opacifying agent,
wherein the fibrous insulation product has greater thermal
resistivity than an otherwise identical fibrous product made with
otherwise identical base fibers that are not coated with the
opacifying agent.
Appeal Br. 17 (Claims App’x) (emphasis added).
REJECTIONS
The Examiner maintains the following rejections:
A. Claims 1—3, 6—9, 11—15, 17, and 19—21 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over
Houpt3 in view of Tripp.4 Final Act. 2.
3 Houpt et al., US 2008/0171201 Al, published July 17, 2008 (“Houpt”).
4 Tripp et al., US 2004/0161993 Al, published August 19, 2004 (“Tripp”).
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Application 13/433,721
B. Claim 10 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Houpt in view of Tripp and further in
view of Burlone.5 Id. at 5.
Appellants argue rejections A and B together, and argue the claims as
a group. See Appeal Br. 10. Because our reason for reversing the rejection
of claim 1—i.e., the lack of evidence in the record to show that it would
have been obvious to apply a binder after the inorganic base fibers are
coated with an aqueous opacifying agent—also applies to the rejection of
independent claim 11 as well as the dependent claims, we focus our
discussion below on claim 1.
OPINION
The Examiner rejects claims 1 and 11 as obvious over Houpt in view
of Tripp. Final Act. 2. The Examiner finds that Houpt teaches a fiberglass
material made of glass fibers and graphite. Id. The graphite fibers, or
opacifying agents, are applied to the glass fibers as an aqueous composition
and uniformly coat the glass fibers. Id. The Examiner further finds that
“binders may be applied to the glass fibers” and that “the graphite loose-fill
fiberglass may be bonded or non-bonded.” Id. The Examiner acknowledges
that “Houpt does not teach that the binder is applied such that the coating of
the opacifier is not removed” but finds that Tripp discloses inorganic fibers
that are uniformly combined with plastic bonding fibers that “are uniformly
blended together into a mat, where the plastic containing bonding fiber act[s]
as the binding agent for the mat after the mat is heated in a curing oven.” Id.
5 Burlone et al., US 2001/0049421 Al, published December 6, 2001
(“Burlone”).
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Application 13/433,721
at 3. The Examiner reasons that a person skilled in the art would have found
the proposed modification obvious in order to “avoid the pollution and
cleanup associated with the use of a conventional binder as taught by Tripp.”
Id. The Examiner further rationalizes that one of ordinary skill would have
been motivated to apply the plastic fibers of Tripp after the application of the
opacified fibers of Houpt because Houpt explains that the heat of the
fiberization process vaporizes the water from the aqueous graphite
dispersion. Id. “Thus[,] in order to maintain the ability of the water to
vaporize, the aqueous solution must be applied immediately after
fiberization of the glass fiber.” Id.
Appellants argue two-fold: (1) “Houpt does not teach applying a
binder to base fibers after applying an aqueous composition comprising an
opacifying agent” and (2) “one of ordinary skill in the art would have had no
motivation or rationale underpinning at the time of the instant application
was filed, to modify the fiberglass material of Houpt to include the plastic
containing binding fibers of Tripp.” Appeal Br. 10. Because we agree with
Appellants’ first argument, we do not reach the second argument.
We are persuaded of reversible error by the Examiner because Houpt
fails to teach or suggest a method (or product) where the binder is applied
after the base fibers are coated with the opacifying agent to form the matrix,
or batt. The Examiner admits as much. Ans. 9 (explaining Appellants are
correct “that Houpt does not teach applying a binder to base fibers after
applying an aqueous solution comprising an opacifying agent”).6 But,
nevertheless, the Examiner maintains there is reason
6 The Examiner relies solely on Houpt as support for the finding that it
would have been obvious to apply the binder after coating the inorganic
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Application 13/433,721
to contact the plastic fiber (as taught by Tripp) with the opacified
fiber (as taught by Houpt) after coating the inorganic base fiber
with the opacifying agent because Houpt teaches the glass fibers
having graphite evenly distributed thereon are formed by coating
an aqueous graphite dispersion on virgin glass fiber immediately
after the fiberization process where the heat from the fiberization
process vaporizes the water leaving behind the graphite powder
(see 127 and 134, Example 1).
Final Act. 3. The Examiner has not adequately explained how the fact that
Houpt teaches heat from the fiberization process vaporizes water to leave
behind the graphite powder necessarily suggests the claimed order of steps.
Moreover, when read as a whole, Houpt suggests adding the binder
and opacifying agent at the same time or adding the binder before the
opacifying agent—not after. For example, Houpt suggests the addition of a
binder concurrently with the opacifying agent.
The fibers, while in transit in the forming chamber and while still
hot from the drawing operation, are sprayed with an aqueous
binder solution. In addition to binders, an anti-static
composition . . . may also be sprayed onto the surface of glass
fiber mats. The residual heat from the glass fibers and the flow
of cooling air through the fibrous mat during the forming
operation generally evaporates most of the water from the binder
and any anti-static composition .... [Houpt 1 4 (emphasis
added)].
ft is to be understood that other substances such as including a
de-dusting oil, silicone, a dye or a binder may also be applied to
glass fibers with an opacifying agent because “Houpt teaches the heat from
the process of forming the glass fibers helps to vaporize the water in the
graphite/water dispersion.” See Ans. 9; see also Final Act. 3 (“in order to
maintain the ability of the water to vaporize, the aqueous solution must be
applied immediately after fiberization of the glass fiber.”) (citing Houpt).
Thus, Appellants are justified in focusing their discussion on the teachings
of Houpt.
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Application 13/433,721
the glass fibers together with the graphite powder or the graphite
dispersion. [Id. 114 (emphasis added)].
And, Houpt explains that graphite powder, i.e., an opacifying agent, may be
applied to bonded or non-bonded loose-fill fiberglass. Id. 123. If applied to
bonded loose-fill insulation, the fiberglass has already been treated with a
binder. Id.', see also id. 25, 26, and 32. Therefore, the totality of Houpt
suggests application of the binder either simultaneously with the opacifying
agent or before the addition of the opacifying agent and the Examiner’s
suggestion otherwise hints of hindsight.
On this record, we cannot sustain the Examiner’s rejections.
CONCLUSION
Appellants have identified a reversible error in the Examiner’s
rejection of claims 1—3, 6—9, 11—15, 17, and 19—21 under 35 U.S.C. § 103(a)
as being unpatentable over Houpt in view of Tripp.
Appellants have identified a reversible error in the Examiner’s
rejection of claim 10 under 35 U.S.C. § 103(a) as being unpatentable over
Houpt in view of Tripp and further in view of Burlone.
DECISION
For the above reasons, the Examiner’s rejection of claims 1—3, 6—15,
17, and 19—21 is reversed.
REVERSED
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