Ex Parte Quincy et al

Patent Trial and Appeal Board

Aug 29, 2018

13100353 (P.T.A.B. Aug. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/100,353 05/04/2011
127892 7590 08/31/2018
DORITY & MANNING, P.A. AND A VENT, INC.
P.O. BOX 1449
GREENVILLE, SC 29602-1449
Roger B. Quincy III
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
HAY-2067 64672962US02 2740
EXAMINER
SUL, DOUGLAS YOUNG
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
08/31/2018 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):
usdocketing@dority-manning.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROGER B. QUINCY III, BRYAN JAMES STADELMAN,
ELAINE M. NAMBA, and CATHERINE J. TURNBOW
Appeal2017-005230
Application 13/100,353
Technology Center 3700
Before CHARLES N. GREENHUT, NATHAN A. ENGELS, and
PAUL J. KORNICZKY, Administrative Patent Judges.
KORNICZKY, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2017-005230
Application 13/100,353
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellants Roger B. Quincy III et al. 1
appeal from the Examiner's decision, as set forth in the Final Office Action
dated April 19, 2016 ("Final Act.") and the Advisory Action dated July 22,
2016 ("Adv. Act."), rejecting claims 9, 14, and 15. 2 We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM.
THE CLAIMED SUBJECT MATTER
The claims are directed to a splash resistant facemask. Claim 9, the
only independent claims on appeal, is reproduced below with disputed
limitations italicized for emphasis:
9. A facemask for surgical use consisting essentially of
a first spunbond splash layer having a basis weight of
between 0. 7 and 0.9 osy, a drape stiffness above 3.5 according to
ASTM standard test D-1388 using l" by 8" pieces, an air
permeability value of greater than about 250 CFM/Ft2 according
to ASTM D737-04, and is adapted to be on a side away from a
wearer's face,
a second splash layer adjacent said first splash layer and
made from a sheet spunbond fabric having a basis weight of at
least 0.8 osy and an air permeability value of greater than about
250 CFM/Ft2 according to ASTM D737-04 and wherein the first
and second splash layers have a combined basis weight of at least
1.5 osy,
a meltblown filtration layer adjacent to the second splash
layer and having an air permeability value greater than 40
CFM/Ft2 according to ASTM D737-04 and a basis weight
between 0.4 and 0.9 osy, and
Appellants identify Advent, Inc. as the real party in interest. Appeal
Brief, dated September 8, 2016 ("Appeal Br."), at 1.
2 Claims 1-8 and 10-13 are cancelled. Final Act. 2; Appeal Br. 16.
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Application 13/100,353
an inner layer adapted to be suitable for contact with the
wearer's face and having a basis weight of between 0.3 osy to 0.9
osy and
wherein said facemask passes a test of splash resistance
conducted at a pressure of 160 mmHg according to ASTM F-
l862-05 level 3 and has an air permeability of at least 30
CFM/Ft2 according to ASTM D737-04, wherein the first
spunbond splash layer, the second splash layer, the meltblown
filtration layer, and the inner layer are without a repellent
treatment.
REFERENCES
In rejecting the claims on appeal, the Examiner relied upon the
following prior art:
Steindorf
Palomo
McManus
Facer
Welchel
Motomura
US 2005/0133036 Al
US 2006/0289009 Al
US 2008/0142433 Al
US 2008/0271739 Al
US 2009/0151733 Al
us 8,129,298
REJECTION
The Examiner made the following rejection:
June 23, 2005
Dec. 28, 2006
June 19, 2008
Nov. 6, 2008
June 18, 2009
Mar. 6, 2012
1. Claims 9, 14, and 15 stand rejected under 35 U.S.C. § I03(a) as
being unpatentable over Steindorf, Welchel, Motomura, McManus, Palomo,
and Facer.
Appellants seek our review of this rejection.
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DISCUSSION
Rejection 1: Claims 9, 14, and 15
Claim 9
The Examiner finds that all of the limitations of independent claim 9
are disclosed by the teachings of Steindorf, Welchel, Motomura, McManus,
Palomo, and Facer. More particularly, the Examiner finds, in part, that
Steindorf discloses a fluid resistant face mask with first spunbond splash
layer 30 (outer facing layer that may be spunbond) adapted to be on a side
away from a wearer's face (i-f 69), second spunbond splash layer 16 (baffle
layer, which may be spunbond material) (i-f 44) adjacent said first splash
layer (i-f 60), meltblown filter layer 28 (filtration media layer) (i-f 72), and
inner facing layer 32 adapted to be suitable for contact with a user's face
(neck nonwoven material) (i-f 45). Final Act. 3; see also id. at 3-11, Adv.
Act. 2.
With respect to the limitation reciting that the second splash layer has
a basis weight of at least 0.8 osy and an air permeability value of greater
than about 250 CFM/Ft2 according to ASTM D737-04, the Examiner finds
that Motomura teaches a spunbond nonwoven fabric material having an air
permeability of 198 cc/cm2/sec (-388 CFM/ft2) and having a basis weight of
at least 0.8 osy (36 gsm = -1.09 osy). Id. at 5---6 (citing Motomura, 21:15-
35; Ex. 4); see also Adv. Act. 2; Ans. 9-11. The Examiner determines it
would have been obvious to modify Steindorf' s spunbond material by using
Motomura's basis weight of at least 0.8 osy and an air permeability value of
greater than about 250 CFM/Ft2 "to provide a material with excellent
elasticity, softness, water resistance, fuzz resistance, and curl resistance."
Final Act. 6 ( citing Motomura, 1 :45--48).
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With respect to the limitation reciting that the filtration media has a
basis weight between 0.4 and 0.9 osy, the Examiner finds that McManus
discloses "a basis weight of between 0.4 and 0.9 osy (basis weight of the
meltblown layer is 0.43-0.53 for samples A---C and E)." Final Act. 6; Adv.
Act. 2; Ans. 11-12. The Examiner determines that it would have been
obvious to modify Steindorf's meltblown filtration with McManus' basis
weight of between 0.4 and 0.9 osy "to provide a filtration media layer
without the need for additional support layers or an unnecessary pressure
drop across the media." Final Act. 6-7 (citing McMannus, ,r 4:4--9).
With respect to the limitation reciting that the "facemask passes a test
of splash resistance conducted at a pressure of 160 mmHg according to
AS TM F-1862-05 level 3," the Examiner finds that as "the mask of modified
Steindorf has the same structure as claimed, it appears that the modified
Steindorf s mask would pass the same test as claimed." Final Act. 7;
Ans. 13. The Examiner further finds that "[a]s the structure of the modified
Steindorf's mask meets the claimed structural limitations and the Examiner
is unable to test the disclosed splash resistance values of the mask, it would
be expected that the mask would meet the claimed testing limitations absent
an objective showing to the contrary." Ans. 13 (citing MPEP 2112).
Alternatively, the Examiner finds that "even if Steindorf' s mask
doesn't pass the claimed test, [] the feature of choosing a face mask to pass a
particular test such as an ASTM F-1862-05 level 3 is considered as an
obvious design choice" because "passing such [a] test is necessary and
common practice in the art to resist splash and it appears that Steindorf' s
mask would perform equally well with the property of the mask passing the
AS TM -1862-05 level 3 test." Final Act. 7. The Examiner explains that
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Steindorf specifically "identifies ASTM F-1862 as a suitable test for splash
resistance." Ans. 13 ( citing Steinfdorf ,r 7 ("The American Society of
Testing and Materials has developed test method F-1862, "Standard Test
Method of Resistance of Medical Face Masks to Penetration by Synthetic
Blood (Horizontal Projection of Fixed Volume at a Known Velocity) to
assess a face mask's ability to resist penetration by a splash.").
Appellants argue that the rejection is erroneous for several reasons.
First, with respect to Motomura, Appellants argue that the Examiner does
not cite "references that teach both the location and the basis weight of such
layers." Appeal Br. 6. According to Appellants, "[t]hough Motomura
teaches a spunbond fabric material having a basis weight of at least 0.8 osy,
nothing in the reference teaches a second spunbond splash layer (i.e.
between a first spunbond splash layer and a meltblown filtration layer)
having a basis weight of greater than 0.8 osy" and "there is no motivation
whatsoever for" combining "the spunbond fabric material of Motomura into
the facemask of Steindorf, particularly this specific basis weight into the
second layer." Appeal Br. 7.
However, Appellants are attacking the teachings of Motomura
individually. Nonobviousness cannot be established by attacking the
references individually when the rejection is predicated upon a combination
of prior art disclosures. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir.
1986). Here, the Examiner finds that Steindorf, not Motomura, discloses the
second spunbond splash layer between a first spunbond splash layer and a
meltblown filtration layer. Final Act. 5; Adv. Act. 2; Ans. 10. The
Examiner determines it would have been obvious to modify Steindorf s
spunbond material by using Motomura's basis weight of at least 0.8 osy "to
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provide a material with excellent elasticity, softness, water resistance, fuzz
resistance, and curl resistance." Final Act. 6. Appellants' conclusory
arguments do not address the rejection as articulated by the Examiner, and,
thus, do not identify error by the Examiner.
Second, with respect to McManus, Appellants argue that, "[ t ]hough
McManus teaches a composite meltblown polymeric fabric media for
facemasks having a basis weight between 0.4 osy and 0.9 osy, nothing in the
reference teaches a meltblown filtration layer in a locations between a
second spunbond splash layer and an outer layer having a basis weight
between 0.4 osy and 0.9 osy" and "there is no motivation whatsoever for"
combining "the media of McManus into the facemask of Steindorf,
particularly this specific basis weight into the meltblown filtration layer."
Appeal Br. 7.
Again, Appellants are improperly attacking the teachings of McManus
individually. Merck, 800 F .2d at 1097. Here, the Examiner finds that
Steindorf, not McManus, discloses a meltblown filtration layer located
between a second spunbond splash layer and an outer layer. Final Act. 6;
Adv. Act. 2; Ans. 12. The Examiner determines it would have been obvious
to modify Steindorf s spunbond material by using Mc Manus' basis weight
of between 0.4 osy and 0.9 osy "to provide a filtration media layer without
the need for additional support layers or an unnecessary pressure drop across
the media." Final Act. 6-7 (citing McMannus, ,r 4:4--9). Appellants'
conclusory arguments do not address the rejection as articulated by the
Examiner, and, thus, do not identify error by the Examiner.
Third, Appellants argue that the Examiner erroneously finds that
( 1) the Steindorf mask as modified by the teachings of Welchel, Motomura,
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McManus, Palomo, and Facer "would appear to pass the splash resistance
test conducted at a pressure of 160 mmHg according to ASTM F-1862-05
Level 3," and (2) "even if the mask did not pass the claimed test, the feature
of choosing a facemask to pass a particular test, such as an ASTM F-1862-
05 Level 3 test, is considered an obvious design choice since passing such a
test is necessary and common practice in the art to resist splash." Appeal Br.
8. Appellants assert that the Specification explains that "the challenge ... in
splash resistance to facemasks is to maintain an acceptable level of
breathability while also prohibiting splashes and/or airborne particles from
passing through the mask and being inhaled by the wearer." Id. at 8-9
( citing Spec. 1: 19-21, 2: 1-22). According to Appellants, in view of the
problems with prior art masks identified in the Specification, "it is not an
obvious design choice for a facemask to have the feature of passing a
particular test, such as an ASTM F-1862-05 Level 3 test as required by the
pending claims," and "achieving such results while also having sufficient
breathability is a challenge identified by the present inventors." Id. at 9.
Appellants also assert that "it is not required that all facemasks pass the
ASTM F-1862-05 Level 3 test as a number of other tests exist that still
provide suitable facemasks depending on their use." Id.
Appellants' argument is not persuasive. It is well settled that where
"the claimed and prior art products are identical or substantially identical in
structure or composition, or are produced by identical or substantially
identical processes, the PTO can require [Appellants] to prove that the prior
art products do not necessarily or inherently possess the characteristics of
[the] claimed product." In re Best, 562 F.2d 1252, 1255 (CCPA 1977).
"[W]hen the PTO shows [a] sound basis for believing that the products of
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the applicant and the prior art are the same, the applicant has the burden of
showing that they are not." In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990).
Here, Appellants do not substantively address the Examiner's finding that
"[a]s the structure of the modified Steindorf's mask meets the claimed
structural limitations and the Examiner is unable to test the disclosed splash
resistance values of the mask, it would be expected that the mask would
meet the claimed testing limitations absent an objective showing to the
contrary." Ans. 13 (citing MPEP 2112). Appellants do not present
persuasive evidence showing that the prior art products do
not necessarily possess the characteristics of the claimed splash test. In re
Best, 562 F.2d at 1255.
Fourth, Appellants assert that "the Examiner's only incentive or
motivation ... manner suggested in the Final Office Action results from
using Appellants' own disclosure as a blueprint to reconstruct the claimed
invention out of isolated teachings in the prior art, which is improper under
35 U.S.C. § 103." Appeal Br. 11. Here, the Examiner's findings and
articulated reasoning for combining Steindorf, Welchel, Motomura,
McManus, Palomo, and Facer are supported by explicit teachings in the
cited prior art (e.g., Welchel ,r 45, Motomura 1:45--48, McManus ,r 4:4--9,
Palomo ,r 38:1-5, and Facer ,r 59). See, e.g., Final Act. 3-9, Ans. 14--17.
Appellants do not identify any knowledge relied upon by the Examiner that
was gleaned only from Appellants' disclosure and that was not otherwise
within the level of ordinary skill at the time of the invention, thereby
obviating Appellants' assertion of hindsight. See In re McLaughlin, 443
F.2d 1392, 1395 (CCPA 1971). Thus, Appellants do not apprise us of error.
For the reasons above, the rejection of claim 9 is not sustained.
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Claims 14 and 15
Claim 14 recites that the "first splash layer has a drape stiffness above
4.0 according to ASTM standard test D-1388 using l" by 8" pieces." Claim
15 recites that the "first splash layer has a drape stiffness above 4.5
according to ASTM standard test D-1388 using l" by 8" pieces."
The Examiner finds that because "the first layer of modified Steindorf
has the same structure as claimed, it appears that the modified Steindorf s
first layer would pass the same test as claimed." Final Act. 9. The
Examiner further finds that because "the structure of the modified
Steindorfs first splash layer meets the claimed structural limitations and the
Examiner is unable to test the disclosed drape stiffness of the first splash
layer," "it would be expected that the first splash layer would meet the
claimed testing limitations absent an objective showing to the contrary."
Ans. 17-18 (citing MPEP 2112).
Alternatively, the Examiner finds that "even if Steindorf' s first layer
doesn't have the claimed drape stiffness, [] the feature of choosing an outer
layer to have a drape stiffness above 4.5 using a particular test such as an
ASTM standard D-1388 is considered as an obvious design choice" because
"having a stiff outer layer is necessary and common practice in the art to
resist splash." Final Act. 9. The Examiner further finds that
The claimed drape stiffness and air permeability are considered
result-effective variables optimized by routine experimentation
in order to resist splash and allow a user to breathe more
comfortably, and it appears that Steindorf' s mask would perform
equally well with the property of the outer layer having a drape
stiffness of above 4. 0 or 4. 5 according to AS TM standard D-13 8 8
using l" by 8" pieces and an air permeability value greater than
about 250 CFM/ft2 according to ASTM D737-04.
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Ans. 18.
Appellants argue that the Examiner erroneously finds that "the feature
of having a drape stiffness above 4.5 using a particular test such as an
ASTM standard D-1388 is considered an obvious design choice since having
a stiff outer layer is necessary and common practice in the art to resist
splash." Here, Appellants do not substantively address the Examiner's
finding that because "the structure of the modified Steindorf' s first splash
layer meets the claimed structural limitations and the Examiner is unable to
test the disclosed drape stiffness of the first splash layer," "it would be
expected that the first splash layer would meet the claimed testing
limitations absent an objective showing to the contrary." Ans. 17-18 (citing
MPEP 2112). Appellants do not present persuasive evidence showing that
the prior art products do not necessarily possess the characteristics of the
claimed drape stiffness. In re Best, 562 F.2d at 1255.
Appellants also do not address the Examiner's findings that the
claimed drape stiffness and air permeability are considered result-effective
variables optimized by routine experimentation.
Thus, Appellants do not apprise us of error. The rejection of claims
14 and 15 is sustained.
DECISION
For the above reasons, the Examiner's rejection of claims 9, 14, and
15 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)(l )(iv).
AFFIRMED
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