Ex Parte Ricciardelli et al

Board of Patent Appeals and Interferences

Apr 29, 2011

10815944 (B.P.A.I. Apr. 29, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/815,944 04/02/2004 Thomas E. Ricciardelli 42186 8910
1609 7590 05/02/2011
ROYLANCE, ABRAMS, BERDO & GOODMAN, L.L.P.
1300 19TH STREET, N.W.
SUITE 600
WASHINGTON,, DC 20036
EXAMINER
THOMPSON, CAMIE S
ART UNIT PAPER NUMBER
1786
MAIL DATE DELIVERY MODE
05/02/2011 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte THOMAS E. RICCIARDELLI, MICHAEL H. KING,
MICHAEL P. SLATER, and STEVEN F. RAPOSO
____________________

Appeal 2009-012618
Application 10/815,944
Technology Center 1700
____________________

Before BRADLEY R. GARRIS, ADRIENE LEPIANE HANLON, and
CATHERINE Q. TIMM, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 34-48 under 35 U.S.C. § 102(b) as anticipated by
Desai (US 2002/0025414 A1; published Feb. 28, 2002) and claims 49-58
under 35 U.S.C. § 103(a) as obvious over Desai in view of Young (US
5,859,071; issued Jan. 12, 1999). We have jurisdiction under 35 U.S.C.
§ 6(b).
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We AFFIRM-IN-PART.
Appellants’ invention relates to a product and process for producing a
molded product from recycled carpet waste in which carpet fibers are
dispersed in a polyvinyl chloride (PVC) matrix (Spec. 1:2-7). Claims 34,
37, and 49 are illustrative:
34. A fiber-reinforced, flexible matrix, wherein said
matrix comprises:
about 10% to about 75% by weight of waste scrap
carpeting, wherein said carpeting has a first polymer backing
and carpet fibers from a polymer having a melting point higher
than the melting point of polyvinyl chloride and where said
waste scrap carpeting comprises about 50% to about 80% by
weight of non-melting filler materials including inorganic fillers
based on the weight of said backing; and
about 25% to about 90% by weight of a flexible second
polymer, wherein said matrix is a substantially continuous
phase of said first and second polymers having said carpet
fibers and inorganic fillers dispersed therein, wherein said
substantially continuous phase is formed by melting said first
and second polymers and wherein said carpet fibers are not
melted.
37. The matrix of claim 34, wherein said matrix is a
substantially homogenous mixture of polyvinyl chloride and
discrete carpet fibers having a length of about 1/8 to about 2
inches.
49. A process of forming a fiber reinforced, flexible
molded article comprising the steps of:
supplying a feed mixture to the inlet of an extruder, said
feed mixture comprising about 25% to about 90% flexible
polyvinyl chloride and about 10% to about 75% carpet scrap
based on the total weight of said feed mixture, said carpet scrap
having a fiber component and a backing material where said
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backing material includes about 30% to about 50% by weight
of a first polymer component;
heating said feed mixture in said extruder to a
temperature sufficient to melt said first polymer component of
said carpet scrap and of said flexible polyvinyl chloride
substantially without melting said fiber component and
substantially without reducing the fiber length to form a
substantially uniform and continuous mixture of said first
polymer component and said melted polyvinyl chloride and an
unmelted fiber component; and
discharging said substantially uniform mixture from said
extruder and shaping and cooling said mixture to form a
molded flexible article of a matrix of a substantially continuous
phase of said first polymer component and said polyvinyl
chloride having said unmelted fiber component dispersed
therein.
II. ANTICIPATION
For the anticipation rejection, Appellants discuss each claim under a
separate heading.
Claim 34
Although claims 34 and 47 stand or fall independently, the Examiner
has provided the same rationale as to the anticipation of each of the recited
matrices (Ans. 3-4), and Appellants’ arguments are substantially similar (Br.
5-8 and 11-13). Accordingly, while we have considered each claim
separately, the issues for claims 34 and 47 are the same, and they are
addressed as a group with claim 34 as a representative claim.
A. ISSUES ON APPEAL
A first issue on appeal arising from the contentions of Appellants and
the Examiner is: does the evidence support the Appellants’ view that the
Examiner erred in finding that Desai teaches a matrix (1) which is a
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continuous phase of first and second polymers with carpet fibers dispersed
therein that is (2) formed by melting the polymers wherein the carpet fibers
are not melted and (3) wherein the second polymer is flexible, as recited in
claim 34? We answer this question, including each of the three parts
separately, in the negative.
B. DISCUSSION
Appellants contend that Desai does not disclose a continuous phase of
carpet fibers dispersed in first and second polymers (Br. 5). Appellants
argue that Desai teaches a second virgin polymer mixed with recycled carpet
fiber-containing powder particles and that the carpet fiber-containing
particles are “fused” such that the powder particles “substantially maintain
their identity as particles” on a macroscopic and visual level (Br. 6).
According to Appellants, under such conditions, “[t]he powder particles of
carpet material are not melted to a liquid state so that the fibers cannot be
dispersed in the second [virgin] polymer” (Br. 7).
However, Appellants’ arguments fail to address the Examiner’s
particular findings. In particular, Appellants do not dispute the Examiner’s
finding that Desai teaches an embodiment directed to a layer made from
100% recycled material or that the 100% recycled materials may contain a
first and second polymer, particularly PVC and polyethylene (Ans. 6-7). It
is this 100% recycled material embodiment, which the Examiner finds meets
the limitations of claim 34, and not an embodiment including a virgin
thermoplastic.
During examination, “claims . . . are to be given their broadest
reasonable interpretation consistent with the specification, and . . . claim
language should be read in light of the specification as it would be
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interpreted by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (quoting In re Bond, 910 F.2d
831, 833 (Fed. Cir. 1990)). Appellants’ Specification states that “the
additional source of polyvinyl chloride” (i.e., a “second polymer”) may also
be “recycled industrial scrap, post consumer recycled material and mixtures
thereof” (Spec. 10:25-11:3). Appellants’ Specification also states that “the
ethylene copolymer [i.e., an alternative second polymer] . . . can be a
component of the carpet backing material” (Spec. 12:14-16). Since claim 34
is silent as to the source of the “second polymer,” both the first polymer and
the second polymer may be provided from recycled materials, consistent
with the Examiner’s findings. Thus, we agree with the Examiner that claim
34 would read on a continuous layer made from 100% recycled material as
taught by Desai.
Appellants place much emphasis on the teaching in Desai that:
the recycled particles or granules . . . substantially maintain
their identity as particles on a macroscopic level, but are part of
the continuous layer. In one embodiment of the present
invention, after the recycled material has been fused to form a
continuous layer, visually, one can identify many of the
individual recycled particles in the backing layer.
(Desai, ¶ [0038]). According to Appellants, “Desai et al. does not disclose
either expressly or inherently that the virgin thermoplastic is melted or that a
continuous phase of the virgin plastic and the polymer backing from the
carpet are capable of forming a continuous phase” (Br. 6). To the extent that
this argument applies to the 100% recycled embodiment relied upon by the
Examiner, a continuous layer made from 100% recycled materials would
necessarily be a continuous phase of the recycled material, since there is
only one material (i.e., only one phase) present in the continuous layer.
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Appellants also contend that Desai does not teach forming a
continuous phase “by melting said first and second polymers,” as claimed,
but rather teaches that the particles are “fused” (Br. 7-8). We agree with the
Examiner that claim 34 is directed to a matrix product. As such, it is the
patentability of the product defined by the claim, rather than the process for
making it that we must gauge in light of the prior art. In re Wertheim, 541
F.2d 257, 271 (CCPA 1976); In re Brown, 459 F.2d 531, 535 (CCPA 1972).
Appellants have shown no structural distinction between the
continuous layer of Desai and the continuous phase claimed, since Desai’s
100% recycled material layer necessarily consist of a continuous phase of
100% recycled material, despite the method by which the continuous layer
was formed.
Appellants also contend that Desai does not disclose “that the virgin
material is flexible” (Br. 8). As discussed in detail above, the Examiner’s
position does not rest on an embodiment employing virgin material.
Moreover, claim 34 does not define a degree of flexibility. Appellants’
invention uses the same “second polymer” as Desai, specifically
polyethylene. Appellants have presented no reason to suggest that the same
materials would have a different degree of flexibility. In re Papesch, 315
F.2d 381, 391 (CCPA 1963) (“a compound and all of its properties are
inseparable”).
Accordingly, we sustain the Examiner’s anticipation rejection of
claim 34.
Claim 37
Appellants have also provided substantive arguments with respect to
claim 37 (Br. 9), which we address separately below.
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A. ISSUES ON APPEAL
A second issue on appeal arising from the contentions of Appellants
and the Examiner is: does the evidence support the Appellants’ view that
the Examiner erred in finding that Desai teaches a matrix in which carpet
fibers are present in lengths of from about 1/8 to about 2 inches, as recited in
claim 37? We answer this question in the affirmative.
B. DISCUSSION
Appellants contend that a continuous phase made from Desai’s
powder particles having a size range of less than 3000 microns cannot
contain carpet fibers in lengths of from 1/8 to about 2 inches (Br. 9; see
Desai, ¶ [0034]). We agree.
The Examiner relies on a teaching in Desai of an initial step in which
the recycled carpet is cut into “chunks or granules” with a diameter range of
from about 1” to 2” (Ans. 7; see Desai, ¶ [0031]). We cannot agree with the
Examiner that the recycled carpet at this initial stage in the process
constitutes a matrix that is substantially a continuous phase, as recited in
claim 34.
Accordingly, we cannot sustain the Examiner’s rejection of claim 37.
Claims 35, 36, and 38-48
With respect to the remaining claims of the anticipation rejection,
Appellants provide general assertions that Desai does not teach the recited
claimed limitations. Appellants do not address the Examiner’s specific factual
findings in the rejections or explain why these findings are deficient. A general
allegation that the art does not teach any of the claim limitations is no more
than merely pointing out the claim limitations. 37 C.F.R. § 41.37(c)(1)(vii) (“A
statement which merely points out what a claim recites will not be considered
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an argument for separate patentability of the claim.”). Accordingly, we do not
address the merits of each of these claims separately.
For example, with respect to claim 35, Appellants contend that Desai
does not disclose a continuous phase containing polyvinyl chloride (Br. 8). Yet,
the Examiner has made specific findings indicating that Desai teaches a
continuous phase containing PVC (Ans. 3, last ¶). Appellants do not provide
any specific arguments to dispute the Examiner’s otherwise reasonable
findings.
Accordingly, we sustain the Examiner’s anticipation rejections of claims
35, 36, and 38-48.
III. OBVIOUSNESS
For the obviousness rejection, Appellants again discuss each claim
under a separate heading. However, the issue raised by Appellants and the
Examiner with respect to independent claim 49 is dispositive for each
rejected claim, as discussed below. Accordingly, we need not address each
claim separately.
A. DISPOSITIVE ISSUE ON APPEAL
A third issue on appeal arising from the contentions of Appellants and
the Examiner is: does the evidence support Appellants’ view that the
Examiner erred in concluding that it would have been obvious to one of
ordinary skill in the art to have fed the waste carpet scrap and second
polymer of the Desai reference into an extruder as taught by Young? We
answer this question in the affirmative.
B. DISCUSSION
The Examiner states that “it would have been obvious to one of
ordinary skill in the art [sic, to] have the Desai reference feed the waste
scrap carpet and the second polymer into an extruder and heat the resulting
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mixture in order to have a polymeric material that is free from thermal
degradation” (Ans. 5).
Appellants contend that it would not have been obvious to use the
extruder taught by Young with the waste scrap carpet of Desai (Ans. 16-17).
We agree with Appellants.
“[A] patent composed of several elements is not proved obvious
merely by demonstrating that each of its elements was, independently,
known in the prior art.” KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 418
(2007). “Although common sense directs one to look with care at a patent
application that claims as innovation the combination of two known devices
according to their established functions, it can be important to identify a
reason that would have prompted a person of ordinary skill in the relevant
field to combine the elements in the way the claimed new invention does.”
Id.
Desai specifically teaches a process of fusing powder particles (Desai,
¶ [0038]) such that carpet fibers therein are not melted. Young teaches a
process of recycling carpet that includes using compatibilizing agents to
produce a good blend of all of the polymer materials in the carpet, including
the nylon, polypropylene or polyester material of the carpet fibers (Young,
col. 1, ll. 14-17 and col. 8, ll. 5-16). For example, Young teaches a melt
compounding temperature of about 230º C and that “[t]he lowest
temperature at which fibers appeared to completely melt and disperse was
230º C.” (Young, col. 13, ll. 15-24). The Examiner has failed to adequately
explain how one of ordinary skill in the art having the combined teachings of
Desai and Young would have arrived at a process in which carpet scrap is
fed into an extruder to produce a product having unmelted carpet fibers, as
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recited in the claims. In re Rouffet, 149 F.3d 1350, 1358 (Fed. Cir. 1998)
(“hindsight” is inferred when the specific understanding or principal within
the knowledge of one of ordinary skill in the art leading to the modification
of the prior art in order to arrive at Appellant’s claimed invention has not
been explained).
Accordingly, we cannot sustain the Examiner’s obviousness rejection
of claim 49. Since the Examiner provided the same reasoning in rejecting
all of claims 49-58 as obvious over Desai in view of Young, we cannot
sustain the Examiner’s obviousness rejection of any of claims 49-58.
IV. CONCLUSION
On the record before us and for the reasons discussed above, we
sustain the anticipation rejection of claims 34-36 and 38-48 under 35 U.S.C.
§ 102(b) maintained by the Examiner, but we do not sustain the anticipation
rejection of claim 37 under 35 U.S.C. § 102(b) or the obviousness rejection
of claims 49-58 under 35 U.S.C. § 103(a).
V. DECISION
We affirm-in-part the Examiner’s decision.
VI. TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART

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