Ex Parte Tilton

Board of Patent Appeals and Interferences

May 31, 2007

10211407 (B.P.A.I. May. 31, 2007)

The opinion in support of the decision being entered today is not binding
precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JEFFREY A. TILTON
____________

Appeal 2007-1168
Application 10/211,4071
Technology Center 1700
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Decided: May 31, 2007
____________

Before TEDDY S. GRON, RICHARD TORCZON, and MARK NAGUMO,
Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.
DECISION ON APPEAL
A. Introduction
The appeal is under 35 U.S.C. § 134(a) from the Final Rejection of
claims 1, 2, 4, 6–15, 19, and 20, which are all the claims remaining in the
case. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART.
The invention relates to blankets of fibrous material that are said to be
especially useful as sound insulation. The blankets comprise at least two

1 Application (original) filed 2 August 2002. The real party in interest is
identified as Owens-Corning Fiberglas Technology, Inc. (Br. at 3.)
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layers that are bonded together by means of heat or spray adhesive. The first
layer can be made from a variety of fibers and is usually thicker. The
second layer is made from meltblown polypropylene fibers. In a second
embodiment, the meltblown polypropylene fiber layer is sandwiched
between two thicker layers.
The Examiner relied on the following prior art:
Lutzow US 5,466,516 Nov. 14, 1995
Sorrick US 5,714,067 Feb. 3, 1998
Nissan JP 10-203,268-A Aug. 4, 1998
The Examiner rejected claims 1 and 6–10 as being obvious under
35 U.S.C. § 103(a) over the combined teachings of Lutzow and Sorrick.
The Examiner also rejected claims 2, 4, 11–15, 19, and 20 as obvious
over the combined teachings of Lutzow, Sorrick, and Nissan.
B. Issues
The dispositive issue in this case is whether the Applicant ("Tilton")
proved that the examiner erred in concluding the claimed subject matter
would have been obvious as a result of improperly combining the references.
C. Findings of Fact
The following findings of fact and any set out in the Discussion are
supported by a preponderance of the evidence of record. Any conclusions of
law should be treated as such.
1. Tilton describes his invention generally as a fibrous blanket 10 that is
useful for sound attenuation in a variety of applications. (Specification at 6.)
2. Tilton describes two general embodiments of his invention.
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3. The first embodiment comprises two layers, a first fibrous layer with
an average fiber diameter between about 10.0 and about 30.0 microns and a
second layer of meltblown polypropylene fiber having a thickness of
between about 0.0127 and about 0.254 cm and fiber diameters between
about 10.0 and 30.0 μm. (Claim 1; Specification at 3.)
4. In preferred embodiments, the first fibrous layer has a thickness of
about 0.5 to about 8.0 cm. (Claim 2; Specification at 3.)
5. In a second embodiment, the fibrous blanket comprises three layers,
the meltblown polypropylene fiber layer being sandwiched between two
fibrous layers of the first kind. (Claims 10, 11; Specification at 3-4.)
6. Generally, according to the specification:
[t]he first fibrous layer 12 may incorporate multicomponent
fibers, powder resin or other chemicals to promote bonding.
Alternatively, bonding may be achieved by mechanical means
such as needling. The two layers 12, 14 are then joined
together by heating sufficiently to cause the two layers to bond
together along their interface and/or by application of a spray
adhesive such as a spray hot melt known to be useful in binding
fibers of the type utilized in the layers 12, 14 of the invention.
(Specification at 8; emphasis added to the labels to elements shown in the
Figures.)
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7. Appellant's Figure 2 is shown below;

Appellant’s Figure 2 illustrates the second embodiment of the invention.
8. Claims 1 and 11 are representative of the issues on appeal.
9. Claim 1 reads:
A fibrous blanket material [10], comprising:
a first fibrous layer [12] selected from a group of fibers
consisting of polyester, polypropylene, polyethylene, fiberglass,
natural fibers, nylon, rayon and blends thereof wherein said
fibers have an average diameter of between about 10.0 and
about 30.0 microns; and
a layer [14] of meltblown polypropylene fibers having a
thickness of between about 0.0127 to about 0.254 cm
wherein said first fibrous layer and said layer of meltblown
polypropylene fibers are bonded together by means of heat,
spray adhesive or both.
(Br. at 24 (Claims Appendix); paragraphing added.)
10. Claim 11 reads:
A fibrous blanket material [10], comprising:
a first fibrous layer [12] selected from a group of fibers
consisting of polyester, polypropylene, polyethylene, fiberglass,
natural fibers, nylon, rayon and blends thereof wherein said
fibers have an average diameter of between about 10.0 and
about 30.0 microns; and
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a layer [14] of meltblown polypropylene fibers;
and a second fibrous layer [16] selected from a group of
fibers consisting of polyester, polypropylene, polyethylene,
fiberglass, natural fibers, nylon, rayon and blends thereof,
wherein said layer of meltblown polypropylene fibers [14] is
sandwiched between said first [12] and second [16] fibrous
layers
wherein said first fibrous layer [12], said layer of meltblown
polypropylene fibers [14] and said second fibrous layer [16] are
bonded together by means of heat, spray adhesive or both;
said first fibrous layer [12] having a thickness of between about
0.5 and about 5.0 cm, said layer of meltblown polypropylene
fibers [14] having a thickness of between about 0.0127 and
about 0.254 cm and said second fibrous layer [16] having a
thickness of between about 0.5 and about 5.0 cm.
(Br. at 25, (Claims Appendix); paragraphing and bracketed bold labels to
Figure 2 added.)
11. Of the remaining claims, claims 2, 4, and 6–10 depend from claim 1,
while claims 12–18 depend from claim 11, and claims 19 and 20 are
independent claims.
12. The remaining claims recite further limitations, including the
thickness and weight per unit area of the first (and second) fibrous layers,
the weight per unit area of the meltblown polypropylene layer, and further
limitations on the diameter of fibers in the meltblown polypropylene layer.
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Prior Art
Lutzow
13. Lutzow describes a three-layer laminated sheet designed to absorb
liquids, especially hydrocarbon liquids (Lutzow at 3:39–42), which Lutzow
refers to as an "NMN laminate" (id. at 5:37).
14. Lutzow's NMN laminate is depicted in Figure 1, shown below:

15. According to Lutzow, the NMN laminate comprises a layer M of
meltblown fibers sandwiched between two layers N of "needle punched
fibers" (sometimes called "needle felt"; id. at 4:20–21). (Id. at 3:39-42.)
16. Lutzow describes the needle felt as generally comprising a
thermoplastic resin (Lutzow at 4:7), preferably a composite of about
30% nylon and 70% polyester (id. at 18–20).
17. According to Lutzow, the diameter of the needle punched fibers is
ordinarily larger than the diameter of the meltblown fibers, and preferably
ranges from about 1 to 25 microns. (Lutzow at 4:13–17.)
18. Lutzow does not disclose the thickness or density of the needle felt
layer.
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19. In preferred embodiments, the melt blown material is 100%
polypropylene (Lutzow at 3:61-62).
20. The diameter of the meltblown polypropylene fibers is said to range
from about 0.1 to 100 microns, preferably from about 1 to 15 microns.
(Lutzow at 3:54–58.)
21. Lutzow does not disclose the thickness or density of the meltblown
polypropylene layer.
22. According to Lutzow, "[i]n a preferred embodiment, the layers are
bonded together at a number of discrete points across the length and width of
the laminated sheet.” (Lutzow at 2:57–60.)
23. Lutzow teaches that ultrasonic welding is preferred. (Lutzow
at 2:59-60.)
24. According to Lutzow, the needle punched fibers in the outer layers of
the laminated sheet draw in and sorb liquids toward the middle layer of
meltblown fibers, which wicks the liquid away from the outer layers,
substantially isolating the liquid from the outer layers. (Lutzow at 2:33–39.)
25. Lutzow states that the NMN laminate may "have additional,
unexpected performance characteristics when used in other applications such
as for an insulator, filter or garment material." (Lutzow at 8:5–8.)
Sorrick
26. Sorrick discloses a filter medium said to be useful for collecting
particulates out of fluids. (Sorrick at 2:39-41.)
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27. With reference to Sorrick Figure 1, shown below,

Sorrick teaches a three-layer filter 10 having a top layer 12 of needle felt, an
intermediate layer 14 of meltblown material, and a substrate layer 16 of
"SMS material." (Sorrick at 3:46–52.)
28. Sorrick instructs that in a preferred embodiment, the top layer of
needle felt [12] "includes a thickness of between 0.030 and 0.050 inches."
(Sorrick at 3:61–62.)
29. The metric conversions of 0.030 and 0.050 inches are 0.076 cm
and 0.127 cm, respectively.
30. According to Sorrick, the intermediate meltblown material [14] is
preferably polypropylene having a density of approximately 1.0 ounces per
square yard. (Sorrick at 4:8-10.)
31. Sorrick instructs further that in the preferred embodiment the
intermediate meltblown layer has a thickness of between 0.016
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and 0.028 inches, and a fiber diameter of between 1 and 5 microns. (Sorrick
at 4:17-20.)
32. The metric conversions of 0.016 and 0.028 inches are 0.04
and 0.07 cm, respectively.
33. According to Sorrick, the meltblown material must have a minimum
thickness to prevent destruction or damage to the layer during handling prior
to lamination and during the lamination process. (Sorrick at 2:3–8.)
34. Sorrick teaches further that "a standard layer of melt-blown material
requires at least 0.6 ounces per square yard for any significant stability of the
layer." (Sorrick at 4:51-54.)
35. According to Sorrick, the SMS substrate layer is a composite material
formed from groups of meltblown fibers interspersed between two groups of
spun bonded fibers. (Sorrick at 4:21–24.)
36. According to Sorrick, the three layers of the filter are "joined together
by needling to form an integrated layer of filter material." (Sorrick
at 2:47-49.)
37. Sorrick teaches that the needling creates holes [22] through the filter.
(Sorrick at 5:5–10.)
38. According to Sorrick, the holes increase the life of the filter because
small particles take longer to clog them; but the filter is less efficient.
(Sorrick at 5:10-13.)
39. Sorrick teaches that, due to differences in tension between the layers,
the holes will not remain precisely aligned, so meltblown fibers in the SMS
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layers will partially compensate for the holes in the meltblown layers.
(Sorrick at 5:13–24.)
Nissan
40. Nissan teaches a fibrous blanket designed for sound insulation having
a surface layer of nonwoven polypropylene fabric with an average apparent
density of 0.03 to 0.06 g/cm3, 5-15 mm thick, the fibers having a diameter
of 0.l to 10 μm, and an inner layer that is 2 to 5 times as thick as the surface
layer, i.e., 1 to 3 cm thick. (Nissan at 3, abstract.)
The Examiner's Rejections
Claims 1 and 6–10
41. The Examiner finds that Lutzow teaches all structures and limitations
required by claims 1 and 6-10 but for the required thickness of the
meltblown polypropylene fiber layer being between about 0.0127 and about
0.254 cm and having a weight between about 0.5 to about 10 ounces per
square yard. (Answer at 3–4.)
42. In particular, the Examiner finds that Lutzow teaches meltblown,
100% polypropylene fibers having diameters of ranging from about 0.1
to 100 μm, preferably from about 1 to 15 μm. (Answer at 3.)
43. The Examiner finds further that Lutzow teaches needle punched fibers
having a diameter of about 1 to 25 microns made from a composite material
of nylon and polyester. (Answer at 3.)
44. The Examiner finds that Sorrick teaches that a layer of meltblown
polypropylene fibers having less than a minimum thickness will be
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destroyed or damaged during handling prior to and during the lamination
process. (Answer at 4.)
45. The Examiner finds that Sorrick describes melt-blown polypropylene
layers 0.016 to 0.028 inches thick (i.e., 0.04 to 0.07 cm thick). (Answer at 4,
citing Sorrick at 4:8–20.)
46. The Examiner finds further that Sorrick describes meltblown
polypropylene layers having a weight of approximately 1.0 ounces per
square yard. (Answer at 4.)
47. The Examiner reasons that the ordinary worker would have been
motivated to use such a thickness in order to "prevent destruction or damage
to the layer during handling of the layer prior to the lamination process."
(Answer at 4.)
48. The Examiner also argues that the thickness of the meltblown
polypropylene layer would have been recognized as a result-effective
variable, and that therefore optimization of the thickness would have
involved only routine experimentation. (Answer at 4–5.)
49. According to the Examiner, "[s]ince both references are directed to
fibrous laminate structures, the purpose disclosed by Sorrick would have
been recognized in the pertinent art of Lutzow." (Answer at 4, emphasis
omitted.)
Tilton's Argument
50. Tilton argues that the Examiner relies on hindsight for the
combination of Lutzow and Sorrick. (Answer at 12.)
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51. More particularly, Tilton argues that Sorrick is concerned with a
minimum thickness of a meltblown polypropylene layer in the context of
lamination by needling (Br. at 12–13), not an application in which the layers
are bonded together by heat or spray adhesive, as required by the present
claims. (Br. at 13.)
52. Tilton argues further that "the 'minimum thickness' [of the meltblown
layer] mentioned at col. 2 line 4 is never specifically identified in Sorrick
and remains an unknown." (Br. at 12-13.)
53. In his Reply, Tilton clarifies his argument, stating, "[a]bsolutely no
evidence is cited to establish that, if the 'minimum thickness' prior to
lamination recited in Sorrick corresponds to the thickness of the claimed
layer, this same range would translate over to Lutzow et al. and result in the
claimed article after the required processing is complete." (Reply at 2–3.)
54. Tilton also argues that Sorrick relates to a high efficiency, high
capacity filter media in which the needling lamination is essential to provide
the strength, high capacity, lifetime, and efficiency of the filter. (Br. at 16.)
55. In contrast, according to Tilton, Lutzow is concerned with providing a
barrier against liquids passing from one outer layer to another, and teaches
ultrasonic welding to laminate the layers. (Br. at 16.)
56. Therefore, Tilton argues, Sorrick's needling "would perforate the
meltblown fiber layer and destroy the barrier function desired in Lutzow."
(Br. at 16, emphasis not reproduced.)
57. Tilton concludes that the intent, purpose, and function of either
invention are destroyed by the Examiner's proposed combination, and that
the rejection must be reversed. (Br. at 17.)
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58. Tilton argues further that it is improper to extract a teaching from
Sorrick that the thickness of the meltblown layer is necessary to prevent
damage to the layer during handling prior to lamination, because the prior art
reference must be considered as a whole. (Br. at 17–18.)
59. Similarly, Tilton criticizes the Examiner's reliance on the teaching that
the Lutzow NMN structure may be used as a filter, because the Sorrick filter
is an "obviously different type of filter." (Br. at 18.)
60. Tilton also argues that there is no optimization of a result effective
variable in a known process involved in selecting the thickness range recited
in its claims because the references are not properly combined. (Br. at 19.)
Claims 2, 4, 11–15, 19, and 20
61. The Examiner finds that Lutzow and Sorrick teach all thickness and
weight per unit area limitations but for those of the first and second fibrous
layers. (Answer at 5.)
62. The Examiner concedes that neither Lutzow nor Sorrick teaches the
thickness or density of the first fibrous layer (Answer at 5).
63. The Examiner finds that Nissan describes an insulating structure with
nonwoven cloth made from fibers having diameters of 0.1 to 10 microns,
densities of 0.03 to 0.06 g/cm3 [1.87 to 3.74 lbs/ft3], and thickness of 5 to
15 mm for the surface and back layers. (Answer at 5.)
64. The Examiner reasons that the use of the fibrous layers taught by
Nissan in the laminates disclosed by Lutzow would have been obvious
because a person having ordinary skill in the art would have used the
laminate "in an insulation application with a thickness appropriate for sound
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absorption applications as the laminate disclosed by Lutzow et al." (Answer
at 5.)
Tilton's Argument
65. Regarding the rejection of claims 2, 4, 11–15, 19, and 20, Tilton
objects that Nissan further conflicts with the teachings of Lutzow and
Sorrick. (Br. at 20.)
66. Specifically, Tilton points out that the Examiner relies on Sorrick for a
(inner) meltblown fiber layer 0.04 to 0.07 cm thick and on Nissan for a
teaching that the surface layers may be between 5 and 15 mm thick.
67. However, according to Tilton, in so doing, the Examiner ignores the
express teaching in Nissan that the internal layer should be 2 to 5 times as
thick as the surface layer. (Br. at 20.)
68. In contrast, Tilton argues, the outer layers specified by its claims are
thicker (e.g., 0.5 to 5 cm) than the inner layer (0.0127 to 0.254 cm). (Br.
at 21.)
69. Tilton concludes that Nissan teaches away from the claimed
invention, that the combination of references is improper, and that rejection
should be reversed. (Br. at 21.)
C. Discussion
An invention that would have been obvious is not patentable under
35 U.S.C. § 103. The analysis underlying an obviousness inquiry has been
outlined by the Supreme Court:
the scope and content of the prior art are to be determined;
differences between the prior art and the claims at issue are to
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be ascertained; and the level of ordinary skill in the pertinent art
resolved. Against this background, the obviousness or
nonobviousness of the subject matter is determined. Such
secondary considerations as commercial success, long felt but
unsolved needs, failure of others, etc., might be utilized to give
light to the circumstances surrounding the origin of the subject
matter sought to be patented.
Graham v. John Deere Co., 383 U.S. 1, 17–18, 148 USPQ 459, 467 (1966).
As the Supreme Court explained recently, a court assessing the obviousness
or nonobviousness of a claimed invention, “must ask whether the
improvement is more than the predictable use of prior art elements according
to their established functions." KSR Int'l, Co. v. Teleflex Inc., 127 S. Ct.
1727, 82 USPQ2d 1385 (2007). The Court explained further that "[t]he
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” KSR Int'l,
127 S. Ct. at 1739, 82 USQP2d at 1395.
Claims in an application for patent are to be given their broadest
reasonable construction in light of the specification as it would be
interpreted by one of ordinary skill in the art. Phillips v. AWH Corp., 415
F.3d 1303, 1316, 75 USPQ2d 1321, 1328 (Fed. Cir. 2005).
On appeal, the applicant bears the burden of showing that the
Examiner has not established a legally sufficient basis for combining the
teachings of the prior art. The applicant may sustain his burden by showing
that where the Examiner relies on a combination of disclosures, the
Examiner failed to provide sufficient evidence to show that one having
ordinary skill in the art would have done what Applicant did. United States
v. Adams, 383 U.S. 39 (1966); In re Fridolph, 134 F.2d 414, 415, 57 USPQ
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122, 124 (CCPA 1943) (would the prior art have suggested doing the thing
which the appellant has done?)
Claims 1 and 6–10
Claim 1 covers a fibrous blanket material comprising a first layer
having fibers with an average diameter between about 10.0 and about
30.0 microns that is bonded by means of heat, spray adhesive, or both, to a
layer, about 0.0127 cm to about 0.254 cm thick, of meltblown polypropylene
fibers. Claim 1, and claims 6–10, do not limit the thickness of weight per
unit area of the "first layer." The composition of the first layer is limited to
natural fibers, a set of specified artificial fibers, and blends thereof. None of
the claims on appeal limit the distribution of the bonding between the layers.
Tilton does not contest the Examiner's rejection except with respect to
the limitations of claim 1. Claims 6-10 will thus stand or fall with claim 1.
Tilton does not dispute that Lutzow describes a fibrous blanket material
comprising a first fibrous layer of nylon and polyester fibers having a
diameter ranging from about 1 to 25 microns, which substantially overlaps
the range of about 10.0 to about 30.0 microns recited in claim 1. Nor does
Tilton dispute that Lutzow describes a layer of meltblown polypropylene in
that blanket, as well as a second fibrous layer sandwiching the meltblown
polypropylene layer. Similarly, Tilton does not dispute that Sorrick
describes a meltblown polypropylene layer weighing about 1.0 ounces per
square yard, thus meeting the further limitations of claims 6 and 7.
Rather, Tilton argues that Sorrick does not describe a layer of
meltblown material 0.04 to 0.07 cm thick in the final processed filter
medium. We reject this argument for the following reasons. Sorrick
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describes the intermediate layer 14 of the structure shown in Figure 1, which
is reproduced supra. Sorrick teaches that the preferred embodiment uses a
melt-blown polypropylene layer having a weight of approximately
1.0 ounces per square yard. In this preferred embodiment, according to
Sorrick, "the intermediate layer of melt-blown material includes a thickness
of between 0.016 and 0.028 inches, and a fiber diameter of between 1 and
5 microns." (Sorrick at 4:17-20.) In this context, the thickness is clearly
that of the layer in the finished product. Moreover, we observe that Sorrick
teaches that "a standard layer of melt-blown material requires at least
0.6 ounces per square yard for any significant stability of the layer."
(Sorrick at 4:51-53.) Thus, the mechanical stability is reported to be a
function of the weight per unit area of the layer.
Tilton argues that the thickness of the melt-blown material layer
relates solely to the requirements of bonding layers by needling. Tilton,
however, does not direct our attention to any credible evidence supporting
this argument. We therefore reject his arguments that its teachings are
irrelevant to inventions involving webs of meltblown polypropylene fibers.
Tilton next argues that Sorrick's teachings of thickness of the melt-
blown fiber layer cannot be combined with the teachings of Lutzow because
Sorrick is concerned with high efficiency filtration, whereas Lutzow is
concerned with providing a "'barrier' against liquid passing from one outer
layer to the other." (Br. at 16.) Tilton asserts that "needling, such as taught
in Sorrick, would perforate the meltblown fiber layer and destroy the barrier
function desired in Lutzow." (Id., emphasis not reproduced.)
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This argument is not persuasive. First, although the barrier function
of Lutzow's laminates might, as Tilton suggests, be decreased by "through
needling" (to coin a phrase), Tilton has not directed our attention to any
evidence that it would be destroyed. Indeed, Sorrick teaches that due to
differences in tension between the needle felt layers and the meltblown
layer, the needle holes will not be precisely aligned. This teaching appears
to apply to the Lutzow structure, as it is similar. Coupled with Lutzow's
teaching that the meltblown fibers wick liquid throughout the middle layer
(Lutzow at 2:33–38), the preponderance of the evidence indicates that needle
holes would not destroy the liquid-holding function of Lutzow's middle
layer.
Tilton also argues that the ultrasonic welding taught by Lutzow
would prevent the Sorrick filters from performing their function, in view of
the problems Sorrick associates with heat-fusing, and Sorrick's observation
that needling creates holes that increase the life of the filter. (Br. at 16.)
This argument is something of a red herring, in that we do not understand
the Examiner to have suggested that it would have been obvious to modify
Sorrick's laminates according to teachings of Lutzow. Moreover, Tilton has
not directed our attention to any credible evidence in support of his
argument. As long as the spot welding occurs "at a number of discrete
points across the length and width of the laminated sheet" as taught by
Lutzow (Lutzow at 2:57–59; and Lutzow, claim 1 at 8:10–20, which does
not specify the type of bonding), we are not persuaded that such bonding
would destroy the filtering efficiency or function of Sorrick's laminates.
Finally, Tilton takes issue with the Examiner's argument that the
variation of the meltblown polypropylene layer thickness would have been
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an obvious optimization of a result effective variable. (Br. at 18–19.)
However, one of ordinary skill in the art, reading Lutzow, would have
recognized that the amount of meltblown polypropylene fiber relates to the
amount of liquid that can be wicked and retained. (See Lutzow at 5:49–52,
recognizing that the layer will not function as a barrier once it is saturated
with oil.) Similarly, reading Sorrick, such a person would have recognized
that thicker melt-blown polypropylene fiber layers are mechanically sturdier
(Sorrick at 2:3–7 and at 4:51-53), and yet offer more resistance to fluid
(id. at 53–54) and decrease the effective life of the filter (id. at 5:32–64,
discussing the tradeoffs that must be considered regarding the amount of
SMS and melt-blown fibers in the filters). Thus, the Examiner's finding that
the thickness of the layer of meltblown fibers would have been recognized
as a result-effective variable is supported by the preponderance of the
evidence of record. This situation is an example of a need or problem
known in the field and addressed by prior art providing "a reason for
combining the elements in the manner claimed." See KSR 127 S.Ct. at 1742,
82 USPQ2d at 1389-90 (2007). As the Court stressed, the problem solved
need not be the same as the problem addressed by the patentee (here, the
applicant). Id.
Accordingly, we AFFIRM the rejection of claims 1 and 6–10 as
obvious under § 103 over the combined teachings of Lutzow and Sorrick.
Claims 2, 4, 11–15, 19, and 20
Claims 2, 4, 11–15, 19, and 20 differ from claims 1 and 6–10 in that
they also specify the thickness of the first layer (and second layer, if
present); some claims also recite the weight per unit area of the first (and
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second) layer. The Examiner finds that neither Lutzow nor Sorrick teaches
these parameters, and relies on Nissan for its teachings of a thickness for the
front and back layer of from 5 to 15 cm and a density of 0.03 to 0.06 g/cm3
[1.87 to 3.74 lbs/ft3], which are within the required ranges. (Answer at 5.)
The Examiner argues that it would have been obvious to modify the fibrous
layer of the laminate and provide the thickness and density taught by Nissan
"in an insulation application with a thickness appropriate for sound
absorption applications as the laminate disclosed by Lutzow et al." (Answer
at 5.)
Tilton does not dispute the Examiner's findings as to Nissan. Instead,
Tilton argues that the teachings of Nissan "conflict" with the teachings of
Lutzow and Sorrick. (Br. at 20.) Specifically, Tilton points out that Nissan
teaches that the inner layer is 2 to 5 times thicker than the surface layers
(id.), whereas, according to Tilton, "if the surface layer is 5 to 15 mm as
taught by [Nissan] reference and the intermediate meltblown fiber layer is
0.04 to 0.07 cm as taught by Sorrick, it is very clear that the intermediate
layer is not two to five times as thick as the surface layer." (Id.) Tilton
applies the same argument to claim 11, which recites first and second fibrous
layers having a thickness of between about 0.5 and about 5.0 cm, and a
thickness of the layer of meltblown polypropylene fibers of between about
0.0127 and 0.254 cm. (Br. at 21.)
The Examiner responds to this argument by arguing that Nissan
further shows that thickness of the intermediate layer is a "cause-
[sic: result-] effective" variable, and that its optimization would be
recognized by one of ordinary skill in the art of laminates because "the
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thickness of the middle layer is only dependent on the particular application
of the laminate." (Answer at 7.)
In the present case, Tilton has made it clear that the Examiner has
failed to show that the invention claimed involves the use of the prior art
elements according to their established functions. Each layer, in the
invention and in the references, is present for a purpose. In Lutzow, the
outer needled layers perform a wicking function, while the inner meltblown
layer performs a sorptive function. In Sorrick, the outer needled layers
provide strength and increased capacity for filter material, while the inner
meltblown layer provides filtering capacity. In Nissan, the surface
layers 5 to 15 mm thick are made from nonwoven webs of microfibers
(diameter 0.1 to 10 microns) of polypropylene, apparently selected for high
sound absorption near 500 Hz. (Nissan at 12, ¶ 11.)2 Nissan teaches that the
inner surface layer should be two to five times thicker in order to optimize
what is translated as "air spring" and "movement spring" of the nonwoven
fabric. (Nissan at 16, ¶ 20.) It appears that these properties relate somehow
to the acoustic response of the insulation. (Id.)
The Examiner has not explained in terms of the teachings of Lutzow
or Sorrick why one of ordinary skill in the art would have used the thickness
of the outer layers of Nissan in the structures of Lutzow or Sorrick. It is not
enough to note that Lutzow indicates that its disclosed structure may have
unexpected performance characteristics in other applications: this is true of

2 We rely on the Thomson/Derwent machine assisted translation in the
record. As is frequently the case, the machine-assisted translation is not in
idiomatic English, and is of limited value in assessing the state of the prior
art.
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Appeal 2007-1168
Application 10/211,407

anything. Put another way, the Examiner has not come forward with a
factual basis on which the legal conclusion of obviousness can properly
stand. Accordingly, the rejection of claims 2, 4, 11–15, 19, and 20 as
obvious under 35 U.S.C. § 103 over the combined teachings of Lutzow,
Sorrick, and Nissan is REVERSED.
D. Decision
On consideration of the appeal, for the reasons given, it is:
ORDERED that the decision of the Examiner rejecting claims 1
and 6–10 as obvious under 35 U.S.C. § 103 over the combined teachings of
Lutzow and Sorrick is affirmed.
FURTHER ORDERED that the decision of the Examiner
rejecting claims 2, 4, 11–15, 19, and 20 as obvious under 35 U.S.C. § 103
over the combined teachings of Lutzow, Sorrick, and Nissan is reversed.
FURTHER ORDERED that the time for taking further action is
not extendable under the provisions of 37 C.F.R. § 1.136(as)(2006).
AFFIRMED-IN-PART

ljb:

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Appeal 2007-1168
Application 10/211,407

cc: U.S. Mail

Maria C. Gasaway
Owens Corning
2790 Columbus Road
Granville, OH 43023

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