Ex Parte Shaffer

Board of Patent Appeals and Interferences

Dec 8, 2008

11110365 (B.P.A.I. Dec. 8, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte ROY E. SHAFFER
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Appeal 2008-5015
Application 11/110,365
Technology Center 1700
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Decided: December 8, 2008
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Before CATHERINE Q. TIMM, LINDA M. GAUDETTE, and
KAREN M. HASTINGS, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1-9 and 22. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

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Application 11/110,365

I. STATEMENT OF THE CASE
The invention relates to a faced insulation product and a method for
providing a facing layer on the surface of a fibrous insulation layer. (Spec. ¶
2). A plurality of adhesive particles are pre-applied to the facing surface by
heating, followed by adhering the facing to a fibrous insulation layer by
heating to a temperature above the melting point of the adhesive particles.
(Spec. ¶ 12). Claim 1 is illustrative of the subject matter on appeal:
1. A faced fibrous insulation product, comprising:

a fibrous insulation layer having first and second opposed major
surfaces; and

a first facing including a facing surface, the facing surface having a
plurality of adhesive particles pre-applied thereto by heating;

wherein the first facing surface is adhered to the first major surface of
the fibrous insulation layer by heating the facing and the fibrous insulation
layer to a temperature above the melting point of said adhesive particles for
a time sufficient to adhere the facing surface to the fibrous insulation layer.

The Examiner relies on the following prior art references to show
unpatentability:
Berkhoff et al. US 2003/0073368 A1 Apr. 17, 2003
Zeng et al. US 2002/0160682 A1 Oct. 31, 2002
Shaffer US 7,427,575 B2 Sep. 23, 2008

The Examiner maintains the following rejections:
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1. Claims 1-6, 9, and 22 rejected under 35 U.S.C. § 102(b) as
anticipated by Berkhoff et al. (“Berkhoff”);
2. Claims 1-9, and 22 rejected under 35 U.S.C. § 102(b) as
anticipated by Zeng et al. (“Zeng”); and
3. Claims 1-9, and 22 rejected under the judicially created doctrine of
obviousness-type double patenting as obvious over claims 1-5 of Shaffer. 1
Appellant provides no separate arguments for any of the dependent
claims. As such, we address each of the above rejections on the sole basis of
independent claim 1.
II. ISSUES ON APPEAL
Regarding the rejection based on Berkhoff, Appellant contends that
Berkhoff does not teach an “insulation product” as recited in claim 1. (App.
Br. 7). However, the Examiner contends that Berkhoff anticipates the
structure and composition of the claimed product and would necessarily
provide an insulative function. (Ans. 4-5).
A first issue on appeal arising from the contentions of Appellant and
the Examiner is: does Berkhoff inherently teach an insulation product?
Regarding the rejection based on Zeng, Appellant contends that an
adhesive film, taught by Zeng, is structurally different from adhesive
particles, as claimed. (App. Br. 10-11). The Examiner contends that Zeng
teaches thermoplastic binder fibers (adhesive particles) present at an

1 The Examiner’s rejection was provisionally based on claims 1-9 of the
Shaffer patent application (U.S. Patent Application No. 10/858,666,
published as US 2005/0272338 A1 on Dec. 8, 2005). However, the Shaffer
patent was published with claims 1-5 on Sep. 23, 2008 as U.S. Patent No.
7,427,575. Thus, we regard the Examiner’s rejection as converted to a non-
provisional rejection based on claims 1-5 of the Shaffer patent.
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interface between the two layers which may bind the layers together upon
application of heat. (Ans. 5 and 6).
A second issue on appeal arising from the contentions of Appellant
and the Examiner is: is the insulation product taught by Zeng structurally
distinct from the faced fibrous insulation product recited in claim 1 due to
the way the adhesive is provided during the manufacturing process?
Regarding the rejection based on Shaffer, the Examiner contends that
the present claims are not patentably distinct from the claims of Shaffer
“because both inventions are directed to faced insulation products.” (Ans.
4). Appellant contends that Shaffer does not disclose “bonding nonwoven
layers together using adhesive particles pre-applied to the surface of one of
the layers by heating as claimed in Appellant’s independent claim 1.” (App.
Br. 12).
A third issue on appeal arising from the contentions of Appellant and
the Examiner is: is the product of claim 1 patentably distinct from the
product recited in claim 1 of Shaffer?
III. FACTUAL FINDINGS
The following Findings of Fact (FF) are relevant to the issues on
appeal:
1. Claim 1 recites a “fibrous insulation product,” but does not
recite the degree to which the product must provide insulation. (Claim 1).
2. Appellant’s Specification does not provide a clear definition of
the term “fibrous insulation product.” (See Spec. generally).
3. Appellant’s Specification describes the fibrous insulation as
“used in a variety of thermal and acoustical applications.” (Spec. ¶ 3, as
amended).
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4. Appellant’s Specification does not indicate any degree of
thermal or acoustical insulation required to be defined as a “fibrous
insulation product.” (See Spec. generally).
5. Appellant’s Specification states that the fibrous insulation is
“typically glass fibers, but optionally mineral wool, rock wool, or polymer
fibers.” (Spec. ¶ 26).
6. Berkhoff teaches
a two-layer laminate with a first nonwoven layer
including thermoplastic fibers, the first nonwoven
layer being pre-consolidated and pre-shrunk, a
second nonwoven layer including glass fibers, and
at least one thermoplastic binder, wherein the first
nonwoven layer and the second nonwoven layer
are bonded together by the application of heat and
said second nonwoven layer is pre-consolidated
and wherein the thermoplastic binder originates
from said second nonwoven layer.
(Berkhoff, ¶ 11).
7. Claim 1 calls for a plurality of adhesive particles to be pre-
applied to a surface of the facing by heating. (See claim 1).
8. Then, claim 1 calls for the facing surface to be adhered to the
fibrous insulation layer by heating the insulation layer to a temperature
above the melting point of the adhesive particles for a time sufficient to
adhere the facing surface to the fibrous insulation layer. (See claim 1).
9. Claim 1 does not recite the condition of the adhesive after the
facing surface has been adhered to the fibrous insulation layer. (See claim
1).
10. Appellant’s Specification broadly describes “particles” as
“including but not limited to spheres, granules, rods, fibers, flakes or any
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other shape and size which allows the adhesive to be heated sufficiently to
activate the adhesive and bond the facer 12, 14 to the fibrous insulation 16.”
(Spec. ¶ 31).
11. Appellant’s Specification also indicates that the adhesive
particles may be polypropylene, among other suitable adhesives. (Spec. ¶¶
30 and 31).
12. However, Appellant’s Specification does not describe the
condition of the adhesive particles after the facing surface has been adhered
to the fibrous insulation layer. (See Spec. generally).
13. Zeng teaches “an acoustic insulation product for a vehicle
comprising a blanket of fibers and a facing material adhered to a major
surface of the blanket.” (Zeng, ¶ 8).
14. In Zeng, the facing material is a scrim that includes a film
“where the film has a softening point low enough so that when the facing
material is heated, the film softens and melts and bonds the scrim web to the
blanket 12.” (Zeng, ¶ 26).
15. The adhesive film taught by Zeng is a polypropylene adhesive
film. (Zeng, ¶ 27).
16. Claim 1 of Shaffer states
[a] mat faced fiberglass insulation product,
comprising:
a fiberglass insulation layer including glass fibers
having a diameter of between about 3 to about 9
microns and a binder content of between about 2 to
about 15% having first and second opposed major
surfaces; and
a first mat facing adhered to a first major surface
of the fiberglass insulation layer, the mat facing
including a non-woven layer having a first
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powdered polyethylene adhesive with a first
melting point and a second powdered polyamide
adhesive with a second melting point, wherein the
mat facing is adhered to the first major surface of
the fiberglass insulation layer by heating the mat
facing and the fiberglass insulation layer to a
temperature above the melting point of said first
adhesive for a time sufficient to adhere the mat
facing to the fiberglass insulation layer.
(Shaffer, claim 1).
IV. PRINCIPLES OF LAW
“[I]t is the patentability of the product claimed and not of the recited
process steps which must be established.” In re Brown, 459 F.2d 531, 535
(CCPA 1972). “Where a product-by-process claim is rejected over a prior
art product that appears to be identical, although produced by a different
process, the burden is upon the applicants to come forward with evidence
establishing an unobvious difference between the claimed product and the
prior art product.” In re Marosi, 710 F.2d 799, 803 (Fed. Cir. 1983).
However, Appellant’s attorney’s arguments do not take the place of
evidence in the record. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974).
A later claim that is not patentably distinct from an earlier claim in a
commonly owned patent is invalid for obvious-type double patenting. In re
Berg, 140 F.3d 1428, 1431 (Fed. Cir. 1998)(“[Obviousness-type double
patenting] requires rejection of an application claim when the claimed
subject matter is not patentably distinct from the subject matter claimed in a
commonly owned patent.”). A patentable distinction does not lie where a
later claim is anticipated by an earlier one. That is, a later patent claim that
fails to provide novel invention over an earlier claim is not patentably
distinct from the earlier claim. Eli Lilly and Co. v. Barr Laboratories, Inc.,
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251 F.3d 955, 968 (Fed. Cir. 2001)(“A later patent claim is not patentably
distinct from an earlier patent claim if the later claim is obvious over, or
anticipated by, the earlier claim.”).
V. ANALYSIS
First Rejection
Regarding the first issue, Appellant’s Specification provides no clear
definition of the term “fibrous insulation product.” (FF 2). Although
Appellant’s Specification states that a fibrous insulation product provides
thermal or acoustic insulation (FF 3), the Specification’s only structural
description is a glass, wool or polymer fiber product. (FF 5). Berkhoff
teaches a laminate product having a first polymer fiber layer and a second
glass fiber layer bound together with a thermoplastic binder that “originates”
from the second glass fiber layer. (FF 6). Berkhoff’s laminate has the
necessary fibers (polymer or glass fibers) of a “fibrous insulation product”
within the meaning of the claim. Thus, we are in agreement with the
Examiner that the insulation product of claim 1 appears to be substantially
identical to Berkhoff’s laminate product.
Thus, the burden was properly shifted to Appellant to prove that
Berkhoff’s laminate product is patentably different than the prior art product.
Marosi, 710 F.2d at 803. Appellant has not presented evidence sufficient to
refute the Examiner’s finding that there is no patentable difference between
the products. Instead, Appellant provides unsupported attorney argument as
to a skilled artisan’s conclusions regarding the teachings of Berkhoff. (App.
Br. 7-9). Attorney argument is no substitute for objective evidence against
the Examiner’s finding. Pearson, 494 F.2d at 1405. Likewise, Appellant
has not claimed nor demonstrated that any particular thickness of any layer
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is necessary to provide insulative properties over the laminate product taught
by Berkhoff. (See App. Br. 8).
Further, neither Appellant’s Specification nor claim 1 recites any
particular degree of thermal or acoustic insulation. (FF 1 and 4). Thus, the
substantial identity of the products indicates that Berkhoff inherently teaches
an insulation product.
Thus, we agree with the Examiner determination that Berkhoff
anticipates claim 1.
Second rejection
Regarding the second issue, claim 1 clearly recites limitations that
describe how the fibrous insulation product is made despite being directed to
a fibrous insulation product. (FF 7 and 8). Neither the claims nor
Appellant’s Specification indicates that the adhesive particles remain as
discrete particles in the final faced fibrous insulation product upon heating to
a temperature above the melting point of the adhesive particles. (FF 9 and
12). Nonetheless, when an adhesive particle is heated to a temperature
above its melting point, it melts and becomes a liquid. (See FF 14). As
such, the melted adhesive would no longer have the particular shape of a
sphere, granule, rod, fiber, flake or other shape that Appellant’s
Specification designate as a “particle.” (FF 10). Thus, the final faced
fibrous insulation product is directed solely to a fibrous insulation layer-
adhesive-facing layer structure, without requiring that the adhesive retain the
form of discrete particles.
Zeng likewise teaches a fibrous insulation layer-adhesive-facing layer
structure. (FF 13 and 14). The only difference is that the adhesive exists on
the facing layer as a film, rather than a particle, before heating. (FF 14).
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Since the adhesive in both Appellant’s Specification and Zeng may be
polypropylene (FF 11 and 15) and would melt in the same manner when
heated to a temperature above the melting point of polypropylene, the final
fibrous insulation layer-adhesive-facing layer products taught by Zeng and
claimed in claim 1 would be substantially identical. Therefore, we
determine that the faced fibrous insulation product taught by Zeng is not
structurally distinct from the insulation product recited in claim 1 merely due
to the way the adhesive is provided during the manufacturing process.
The burden has shifted to the Appellant to show a structural difference
between the fibrous insulation layer-adhesive-facing layer structure taught
by Zeng and the product claimed based on the difference in how the product
was manufactured (i.e., via the presence of adhesive particles). Marosi, 710
F.2d at 803. Appellant’s Specification and Appellant’s Brief lack such a
showing. (FF 13; See App. Br. generally).
Thus, we agree with the Examiner’s determination that Zeng
anticipates claim 1.
Third rejection
Regarding the third issue, claim 1 of Shaffer features all of the
limitations of claim 1 of the present invention, with the exception that claim
1 of Shaffer does not disclose that the adhesive powder (adhesive particles)
are applied to the mat facing (facing layer) by heating. (FF 16; See Claim
1). However, as mentioned above, claim 1 is directed to a final faced fibrous
insulation product having a fibrous insulation layer-adhesive-facing layer
structure. (See Claim 1). The structure of the final faced fibrous insulation
product disclosed in claim 1 of Shaffer would be substantially identical to
the claimed faced fibrous insulation product of the present invention despite
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how the adhesive particles arrived on the mat facing (facing layer). Upon a
second heating, the adhesive powder (adhesive particles) would have
similarly melted to bind the mat facing (facing layer) to the fiberglass
insulation layer (fibrous insulation layer) to form a substantially identical
final faced insulation product.
Since the product recited in claim 1 of Shaffer would have anticipated
the product of claim 1, the product of claim 1 is not patentably distinct from
the product recited in claim 1 of Shaffer. Eli Lilly, 251 F.3d at 968. Thus,
we agree with the Examiner’s determination that claim 1 constitutes
obviousness-type double patenting over claim 1 of Shaffer. Berg, 140 F.3d
at 1431.
VI. CONCLUSION
For the reasons discussed above, we sustain the following rejections:
1. Claims 1-6, 9, and 22 rejected under 35 U.S.C. § 102(b) as
anticipated by Berkhoff;
2. Claims 1-9, and 22 rejected under 35 U.S.C. § 102(b) as
anticipated by Zeng; and
3. Claims 1-9, and 22 rejected under the judicially created doctrine of
obviousness-type double patenting as obvious over claims 1-5 of Shaffer.
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VII. DECISION
We affirm the Examiner’s decision.
VIII. TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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OWENS CORNING
2790 COLUMBUS ROAD
GRANVILLE, OH 43023
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