Ex Parte Sanders

Board of Patent Appeals and Interferences

Mar 24, 2010

10822747 (B.P.A.I. Mar. 24, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROBERT G. SANDERS
____________

Appeal 2009-010605
Application 10/822,747
Technology Center 1700
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Decided: March 24, 2010
____________

Before CATHERINE Q. TIMM, BEVERLY A. FRANKLIN, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 3, 4, 6, 7, 9, 10, 12, 13, 15, 19, 21, 22, and 24. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

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BACKGROUND
Claim 1 is illustrative of the invention:
1. In a method of making a filter media comprising a web of
thermoplastic fibers, wherein said thermoplastic fibers are surface modified
by treatment with a gaseous plasma at atmospheric pressure, the
improvement wherein the gaseous plasma consists essentially of air and at
least one gas selected from the group consisting of He, Ar, Ne, N2, Kr and
combinations thereof, and the thermoplastic fibers are electrostically
charged.

The Examiner relies upon the following prior art references in the
rejection of the appealed claims:
Roth US 5,403,453 Apr. 4, 1995
Jones US 6,953,544 B2 Oct. 11, 2005

The Examiner maintains, and Appellant seeks review of, the rejection
of all the claims on appeal under 35 U.S.C. § 103(a) as being unpatentable
over the combined prior art of Roth and Jones1.
Appellant presents arguments concerning the rejected claims as a
group (App. Br. 4-9). Appellant does not advance an argument that is
reasonably specific to any particular claim on appeal. Thus, in accordance
with 37 C.F.R. § 41.37(c)(1)(vii), we select claim 1 as the representative
claim on which our discussion will focus.

1 The claims were amended after final to incorporate dependent claim 2 into
claim 1; accordingly, all the claims are now rejected under § 103 based on
Roth and Jones (App. Br. 4; Ans. 3).
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ISSUE ON APPEAL
The issue is whether the Examiner has erred in his determination that
it would have been obvious to both treat fiber material with a gaseous
plasma treatment, as exemplified in Roth, as well as to electrostatically
charge the fiber material to make an electret, as exemplified in Jones. We
answer this question in the negative.
FINDINGS OF FACT (FF)
We refer to the Examiner’s findings and conclusion of obviousness
with respect to the use of both a gaseous plasma treatment to enhance
wettability of polymeric fibers, as exemplified in Roth, as well as a corona
discharge step to electrostatically charge polymeric fibers to transform fibers
into an electret, as exemplified in Jones (Ans. 3-6).
We add the following primarily for emphasis.
Appellant admits that filtration properties of nonwoven polymeric
fibrous webs can be improved by transforming the web into an electret, and
that such electrostatically charged filters are common today (Spec. 1, para.
[0002]). Appellant also describes that it is well known to charge fibers to
produce electrets by “corona charging” (Spec. 1, para. [0003]), and “can be
improved by incorporating fluorochemicals into the melt used to produce the
fibers of some electrets” (id.).
Appellant describes “post charging the media through conventional
electret charging equipment” (Spec. 4, para. [0024], emphasis added) and
that “after or before gaseous plasma treatment” the fibers may be
electrostatically charged “by any means known in the art with a corona
discharge method being particularly preferred”. (Spec. 6, para. [0035],
emphasis added).
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Jones similarly admits in the “Background” section that transforming
a web into an electret was known (Jones, col. 1, ll. 16 32).
One of ordinary skill would have readily appreciated that the use of
fluorochemical is optional for a process of electrostatically charging fibers to
make them into an electret.
Appellant does not dispute the Examiner’s findings that Roth and
Jones both treat the same or similar polymeric materials (Ans. 5, e.g.,
polypropylene as described in Roth, col. 10, ll. 20-25 and Jones, col. 2, l. 9).
PRINCIPLES OF LAW
In assessing whether a claim to a combination of prior art elements
would have been obvious, the question to be asked is whether the
improvement of the claim is more than the predictable use of prior art
elements according to their established functions. KSR Int'l Co. v. Teleflex,
Inc., 550 U.S. 398, 417 (2007). The analysis need not seek out precise
teachings directed to the specific subject matter of the claim, for it is proper
to take account of the inferences and creative steps that a person of ordinary
skill in the art would employ. Id. at 418.
The test for obviousness is what the combined teachings of the
references would have suggested to those of ordinary skill in the art; one
cannot show non-obviousness by attacking references individually where the
rejections are based on combinations of references. In re Young, 927 F.2d
588, 591 (Fed. Cir. 1991); In re Merck & Co., Inc., 800 F.2d 1091, 1097-98
(Fed. Cir. 1986); In re Keller, 642 F.2d 413, 425 (CCPA 1981).
ANALYSIS
Appellant contends that Jones only prepares a fluorinated electret and
thus there is no reason to combine with Roth (App. Br. 5, 6). This is not
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persuasive of error in the Examiner’s obviousness conclusion, since it would
have been no more than the predictable use of a known prior art treatment,
that is, electrostatically charging polymeric fibers (absent fluorination) as
exemplified in Jones and admitted to be known by Appellant2, for its known
purpose in combination with a known treatment as exemplified by Roth to
enhance rewettability of the same and similar polymeric fibrous materials.
Appellant’s contention that the gas flow of Roth contains “active
species” contrary to the present invention (App. Br. 8 and 9) is not well
taken. First, Appellant admits that the Examiner’s contention that by
definition plasma contains some active species is correct (Reply Br. 4).
Furthermore, as aptly pointed out by the Examiner, the claim encompasses
atmospheric pressure treatment of fibers with a gaseous plasma of air and
helium or argon or mixture thereof as taught by Roth (Ans. 3 and 6).
An improvement in the art is also obvious if “it is likely the product
not of innovation but of ordinary skill and common sense.” KSR, 550 U.S.
at 421. “A person of ordinary skill is also a person of ordinary creativity,
not an automaton.” Id. at 420-21. One of ordinary skill in the art, using no
more than ordinary creativity, would have modified Roth to include such a
electrostatic charging step before or after its plasma treatment, especially in
light of well known advantages of electrostatically charged polymeric
fibrous materials.

2 An applicant cannot defeat an obviousness rejection by asserting that the
cited references fail to teach or suggest elements which the applicant has
acknowledged are taught by the prior art. Constant v. Advanced Micro-
Device, Inc., 848 F. 2d 1560, 1570 (Fed. Cir. 1988) and In re Nomiya, 509
F.2d 566, 571n.5 (CCPA 1975) (A statement by an applicant that certain
matter is prior art is an admission that the matter is prior art for all
purposes).
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Accordingly, Appellant has not persuasively argued that the facts
and reasons relied on by the Examiner are insufficient to establish a prima
facie case of obviousness, and therefore has not identified any error in the
Examiner’s reasonable conclusion of obviousness.
We have considered Appellant’s other arguments in the Briefs, but do
not find any of them persuasive for reasons substantially set forth by the
Examiner in the Answer.
Accordingly, we sustain the Examiner’s § 103 rejection of claims 1, 3,
4, 6, 7, 9, 10, 12, 13, 15, 19, 21, 22, and 24 based on Roth and Jones.
ORDER
The Primary Examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(1)(v).

AFFIRMED

PL Initial:
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