Ex Parte Tilton

Board of Patent Appeals and Interferences

Feb 27, 2008

10099659 (B.P.A.I. Feb. 27, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JEFFREY A. TILTON
____________

Appeal 2008-0490
Application 10/099,659
Technology Center 1700
____________

Decided: February 27, 2008
____________

Before EDWARD C. KIMLIN, CHARLES F. WARREN, and
THOMAS A. WALTZ, Administrative Patent Judges.

WALTZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Primary Examiner’s final rejection of claims 1, 5-7, and 9-28, which are the
only claims pending in this application (see also the Amendments dated June
15, 2006, and Oct. 19, 2006, entered as per the Advisory Actions dated July
Appeal 2008-0490
Application 10/099,659

5, 2006, and Dec. 8, 2006, respectively (Br. 6).1 We have jurisdiction
pursuant to 35 U.S.C. § 6(b).
According to Appellant, the invention is directed to an insulating
material, where the material comprises in weight percent about 20-60% low
melt bicomponent fiber, 10-40% high melt bicomponent fiber, and 20-60%
staple fiber, and the high melt bicomponent fiber has a melt flow
temperature above that of the low melt bicomponent fiber, the average fiber
diameter of all fibers is between 18-22 microns, and the low melt and high
melt fibers are concentric sheath/core CoPET/PET (Br. 7). Independent
claim 1 is illustrative of the invention on appeal and a copy of this claim is
reproduced below:
1. An insulating material, comprising in weight percent
about 20-60% low melt bicomponent fiber, 10-40% high melt
bicomponent fiber and 20-60% staple fiber wherein said high
melt bicomponent fiber has a melt flow temperature above that
of said low melt bicomponent fiber, wherein the average fiber
diameter of said low melt bicomponent fiber, said high melt
bicomponent fiber and said staple fiber is between 18-22
microns and wherein said low melt and high melt bicomponent
fibers are a concentric sheath/core CoPET/PET.

The Examiner has relied on the following prior art references as
evidence of obviousness:
Goettmann 5,851,355 Dec. 22, 1998
Yamaguchi 6,977,111 B2 Dec. 20, 2005

1 We refer to and cite from the amended Appeal Brief dated Jan. 16, 2007.
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ISSUES ON APPEAL
Claims 1, 5-7, and 9-28 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over “Goettmann as evidenced by Yamaguchi” (Ans. 3).
Appellant contends that Goettmann teaches a non-woven web using
only 1-10% by weight of a second thermoplastic binder, in contrast to claims
1 and 27 which require 20-60% by weight of the corresponding low melt
bicomponent fiber (Br. 9). Appellant contends that there is no motivation or
suggestion to optimize the amount of low melt bicomponent fiber outside of
the ranges taught by Goettmann (Br. 10 and 12), and the Examiner’s
assertion of optimization is contrary to the express teachings of Goettmann
that porosity is crucial to the invention (Br. 11).
Appellant contends that the Examiner ignores the claimed requirement
that the minimum average fiber diameter of claims 1 and 27 is 18 microns,
and there is no evidence that the average fiber diameter of Goettmann falls
within the claimed range (Br. 11-12).
Appellant also presents contentions regarding the Examiner’s
“inherent” presumption for dependent claims 5-7, 10-11, and 21-26 (Br. 14-
15), as well as specific arguments for claim 20 (Br. 15-16). We consider
these claims separately below.
The Examiner contends that the amount of fibers, fiber diameter, and
density are result-effective variables, and that Goettmann teaches that the
range and blend of bicomponent fibers may be varied to effect the desired
physical properties (Ans. 5 and 8).
The Examiner contends that it was known in the art, and taught by
Goettmann, that the physical properties of the sheet material can be altered
to fit a particular set of physical specifications (Ans. 7-8). The Examiner
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also contends that Goettmann requires a denier of 0.2 to 3.0 for the staple
fibers, and Appellant concedes that this denier is equivalent to a fiber
diameter of 4.5 to 17.6 microns (Ans. 6). The Examiner further contends
that determining the optimum fiber diameter would have involved only
routine skill in the art (id.).
Accordingly, we determine that the issues presented in the record of
this appeal are as follows: (1) Has Appellant established that the Examiner
reversibly erred in concluding the amount of low melt bicomponent fibers
was well within the ordinary skill in this art?; and (2) Has Appellant
established that the Examiner reversibly erred in concluding that the average
fiber diameter was well within the ordinary skill in this art?
We determine that the Examiner has properly established a prima
facie case of obviousness for all claims except claim 20, which prima facie
case has not been adequately rebutted by Appellant’s arguments. Therefore,
we AFFIRM the rejection of claims 1, 5-7, 9-19, and 21-28 essentially for
the reasons stated in the Answer, as well as those reasons set forth below.
Since the Examiner has not provided any evidence that the subject matter of
claim 20 was known in the art, or explained any reason for the combination
or substitution of crystalline/semi-crystalline bicomponent fibers for high
melt bicomponent fibers, we determine that prima facie obviousness has not
been established for this claimed subject matter. Therefore, we REVERSE
the rejection of claim 20 essentially for the reasons stated in the Brief, as
well as those reasons set forth below. Accordingly, the decision of the
Examiner is AFFIRMED-IN-PART.
OPINION
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Although Goettmann is directed to a fiber sheet material useful as a
support substrate for a reverse osmosis membrane (col. 1, ll. 5-10),
Appellant does not dispute that Goettmann discloses a material comprising
5-40% by weight staple fibers, 0 to 60% by weight a second staple fiber, 15-
50% of a first binder fiber corresponding to the claimed high melt
bicomponent fiber, and 1-10% by weight of a second binder fiber
corresponding to the claimed low melt bicomponent fiber (Br. 9; Goettmann,
col. 3, ll. 57-67). We determine that Goettmann expressly teaches that the
bicomponent fibers are core/sheath made of polyester/copolyester, with
Examples to PET as the polyester (Goettmann, col. 2, ll. 57-65; col. 4, ll. 1-
19; Yamaguchi, col. 10, l. 62-col. 11, l. 1). We further determine that
Goettmann discloses denier of the staple fibers that corresponds to a
maximum average fiber diameter of about 18 microns (Ans. 6). Therefore,
we determine, as discussed above as the issues on appeal, that the only
differences between the subject matter recited in claim 1 on appeal and
Goettmann is the amount of low melt bicomponent fiber and the average
fiber diameter (for all three fibers).
Under 35 U.S.C. § 103, the factual inquiry into obviousness requires a
determination of: (1) the scope and content of the prior art; (2) the
differences between the claimed subject matter and the prior art; (3) the level
of ordinary skill in the art; and (4) secondary considerations, if any. See
Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). “[A]nalysis [of
whether the subject matter of a claim is obvious] need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex, Inc., 127
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S. Ct. 1727, 1740-41 (2007) quoting In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006). Discovery of the optimum value of a result effective variable in
a known process is ordinarily within the skill of the art. See In re Aller, 220
F.2d 454, 456 (CCPA 1955); In re Boesch, 617 F.2d 272, 276 (CCPA 1980).
“The law is replete with cases in which the difference between the claimed
invention and the prior art is some range or other variable within the claims.
[Citations omitted]. These cases have consistently held that in such a
situation, the applicant must show that the particular range is critical,
generally by showing that the claimed range achieves unexpected results
relative to the prior art range.” In re Woodruff, 919 F.2d 1575, 1578 (Fed.
Cir. 1990). The case where the parameter optimized was not recognized to
be a result effective variable is an exception to this rule. See In re Antonie,
559 F.2d 618, 620 (CCPA 1977). “While it may ordinarily be the case that
determination of optimum values for the parameters of a prior art process
would be at least be prima facie obvious, that conclusion depends upon what
the prior art discloses with respect to those parameters.” In re Sebek, 465
F.2d 904, 907 (CCPA 1972).
We determine that Goettmann discloses the three fiber sheet material
or composite in general terms, with “preferred embodiments” teaching 1-
10% by weight of the low melt bicomponent fiber (compare col. 2, ll. 40-55
with col. 3, ll. 55-67). Accordingly, we determine that Goettmann is not
limited to the preferred embodiment. We also determine that Goettmann, at
col. 3, ll. 24-37, teaches both denier (and thus fiber diameter) and the
quantity of polyester are result effective variables:
Strength and porous characteristics are imparted to the
composite by the combination of polyester fibers employed in
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the invention. In particular, the strength of the composite can
be improved by varying the polyester fiber content in
accordance with the following relations: (a) as the polyester
denier increases at constant length and amount, the porosity,
bulk and stiffness of the composite increase and the amount of
fiber entanglement decreases; (b) as the polyester length
increases at constant denier and amount, the tensile and tear
strengths in the MD and CD directions and the Mullen burst
strength increase and the stiffness decreases; and (c) as the
quantity of polyester increases at constant denier and length, the
tensile strength improves, Mullen burst and tear strengths, and
porosity increase.

We further determine that Goettmann teaches, at col. 6, ll. 36-42:
The range and blend of bicomponent binder fibers may also be
varied to effect desired physical properties. Furthermore, the
physical properties as well as the performance of the sheet
material can be altered to fit a particular set of physical
specifications by adjusting the furnish composition and ratio as
well as the calendaring parameters.

Therefore, on this record, we determine that optimization of the fiber
diameters of the low melt and high melt bicomponent fibers would have
been well within the ordinary skill in the art, especially in view of the
teachings of Goettmann. We further determine that optimization of the
amount of low melt bicomponent fiber, even to amounts outside the
preferred ranges, would have been obvious to one of ordinary skill in the art
in view of the teachings of Goettmann, as long as the amount of such fiber
did not increase the porosity above the requisite range (see col. 3, ll. 35-37,
and col. 6, ll. 59-62).
For the foregoing reasons and those stated in the Answer, we
determine that the Examiner has established a prima facie case of
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obviousness in view of the reference evidence, which prima facie case has
not been adequately rebutted by Appellant’s arguments. We note that no
evidence has been submitted to rebut the prima facie case.
With regard to claims 5-7, 10-11, and 21-26, which Appellant argues
as a group (Br. 14-15), we determine that these claims recite physical
properties of the claimed material. As discussed above, Goettmann teaches
varying many parameters to achieve desired physical properties. Therefore,
we determine that these claims merely recite properties which would have
been easily optimized by one of ordinary skill in the art in view of the
teachings of Goettmann.
With regard to claim 20 on appeal, the Examiner states that it would
have been obvious to replace the high melt bicomponent fibers in part or in
whole with crystalline/semi-crystalline bicomponent fibers “since it has been
held to be within the general skill of a worker in the art to select a known
material on the basis of its suitability for the intended use as a matter of
design choice,” citing In re Leshin (Ans. 7-8). However, the Examiner has
not presented any factual findings that the crystalline/semi-crystalline
material required by claim 20 on appeal was a “known material” and
suitable for the intended use of Goettmann. “Where the legal conclusion [of
obviousness] is not supported by facts it cannot stand.” In re Warner, 379
F.2d 1011, 1017 (CCPA 1967). Accordingly, we cannot sustain the
Examiner’s rejection of claim 20 under § 103(a) over Goettmann in view of
Yamaguchi.
Therefore, we affirm the rejection of claims 1, 5-7, 9-19, and 21-28
under § 103(a) over Goettmann in view of Yamaguchi. We reverse the
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rejection of claim 20 under § 103(a) over Goettmann in view of Yamaguchi.
The decision of the Examiner is affirmed-in-part.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED-IN-PART

tf/ls

OWENS CORNING
2790 COLUMBUS ROAD
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