Ex Parte Weller

Board of Patent Appeals and Interferences

Jun 21, 2011

11187741 (B.P.A.I. Jun. 21, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte DAVID E. WELLER, JR.
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Appeal 2010-004843
Application 11/187,741
Technology Center 1700
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Before ADRIENE LEPIANE HANLON, CHUNG K. PAK, and
TERRY J. OWENS, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-4, 25-27 and 29-31. Claims 32-36, which are all of the
other pending claims, have been allowed. We have jurisdiction under
35 U.S.C. § 6(b).

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Application 11/187,741

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The Invention
The Appellant claims a fibrous article. Claim 1 is illustrative:
1. A fibrous article for use as a fire retardant comprising:
a wet-laid nonwoven fibrous veil including:
a plurality of randomly oriented glass fibers;
a plurality of randomly oriented comfort enhancing fibers; and
a binder composition, said binder composition including a
binder and at least one fire retardant,
wherein said glass fibers are present in said veil in an amount
up to approximately 50% by weight.

The References
Geel 6,497,787 B1 Dec. 24, 2002
Grove 7,294,363 B2 Nov. 13, 2007
(filed Dec. 19, 2002)
The Rejection
Claims 1-4, 25-27 and 29-31 stand rejected under 35 U.S.C. § 103
over Geel in view of Grove.
OPINION
We reverse the rejection and, under 37 C.F.R. § 41.50(b), enter a new
ground of rejection. Regarding the reversal we need to address only the sole
independent claim (1).
The Appellant’s claim 1 requires a wet-laid nonwoven fibrous veil
containing up to approximately 50 wt% glass fibers.
Geel discloses (col. 4, l. 66 – col. 5, l. 7):
At the “wet-end” formation of the veil 615, such as on
the forming wire 610, and prior to the first dryer 620, the
formed veil comprises a fiber composition and water. The fiber
composition is present in an amount of about 15% to about 45%
by weight, preferably about 30% by weight. The fiber
composition comprises preferably about 70% to about 95%
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fibers and about 5 to about 30% wet end pre-binder. The water
is present in an amount of about 55% to about 85% by weight,
preferably about 70% water.

The Examiner argues (answer, p. 5):
Geel teach[es] a wet laid veil comprising a fiber composition
present in amount of about 15-45%, 5-30% wet end binder and
about 55-85% water (Geel, column 5, 1-5). Geel further
teaches that the fiber composition preferably comprises about
70-95% fibers (Geel, column 5, 1-5). The Examiner interprets
this teaching to mean that of the 15-45% fiber composition
present in the total veil, only 70-95% is fibers. For example,
based on the teachings of Geel, if the total composition of the
veil comprises 15% fiber composition, 5% binder and 80%
water, then the amount of fibers within the fraction of the 15%
fiber composition of the veil ranges between 70-95% fibers. To
that end, 70-95% (fraction of fibers) of 15-45% (total fiber
composition) actually equals 10.5-42.75%. In the Example
above, the fraction of fibers within the 15% of the fiber
composition based on the total content of the wet laid veil is
therefore actually only 10.5%. Such an amount is clearly less
than 50% and thus meets the limitation of a wet laid veil
comprising glass fibers in amount up to approximately 50%.

Thus, the Examiner is relying upon Geel’s mixture of the fiber composition
and water as corresponding to the Appellant’s wet-laid nonwoven fibrous
veil containing up to approximately 50 wt% glass fibers.
“[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.” In re Translogic
Tech. Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007), quoting In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000). The Appellant’s Specification states that
“[t]he veil is formed by a wet-laid process known to those of ordinary skill
in the art” (¶ 0022). Hence, the broadest reasonable interpretation of the
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Appellant’s claim term “wet-laid nonwoven fibrous veil” consistent with the
Specification is that it is the product produced by a wet-laid process. The
Specification, therefore, indicates that the Appellant’s claim term “wet-laid
nonwoven fibrous veil” does not include a fiber-containing slurry which is
an intermediate in the wet-laid process. Geel’s meaning of “wet-laid veil” is
consistent with that interpretation: “The term, “wet-laid veil,” as used herein,
refers to a web of intermingled, randomly oriented reinforcing fibers made
according to a wet laid process” (col. 2, ll. 34-36).
Geel indicates that the wet-laid veil after the first dryer (before
impregnation with microspheres) relied upon by the Examiner (answer, p. 3)
contains more than 50 wt% glass fibers: “Preferably, the fiber composition
of the veil after the first dryer is comprised of about 70 to about 95% glass
fibers and about 5 to about 30% wet end pre-binder” (col. 4, ll. 5-7). The
Examiner has not established that Geel would have rendered prima facie
obvious, to one of ordinary skill in the art, a product of the wet-laid process
containing up to approximately 50 wt% glass fibers.1 Accordingly, we
reverse the Examiner’s rejection.
New ground of rejection
Under 37 C.F.R. § 41.50(b) we enter the following new ground of
rejection.
Claim 1 is rejected under 35 U.S.C. § 103 as being unpatentable over
Geel in view of Grove.
Geel discloses a fibrous article comprising a veil of wet-laid,
nonwoven (randomly oriented) fibers (col. 1, ll. 9-10; col. 2, ll. 34-40). The

1 The Examiner does not rely upon Grove for any disclosure which remedies
this deficiency in Geel (Answer, p. 3).
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most preferred fibers are chopped glass fibers (col. 3, ll. 26-27). The glass
fibers can be used in combination with polyester fibers (col. 3, ll. 16-20)
which are among the Appellant’s comfort enhancing fibers (Specification
¶ 0054). The veil includes a pre-binder for the fibers and a binder, which
can be the same as the pre-binder, for microspheres contained in the veil
(col. 4, ll. 5-7, 30-36). The veil “may comprise any desired amount of
microspheres, for example, about 5 to about 50% by weight, preferably
about 15 to about 25% by weight microspheres” (col. 6, ll. 16-20). The
preferred ratio of microspheres to binder is 60:40 to 80:20 (col. 4, ll. 35-39).
If the veil contains 50 wt% microspheres and 12.5 wt% binder (80:20 ratio),
then the glass fibers in the veil cannot be more than 37.5 wt% of the veil
(and actually will be less due to the pre-binder) and, therefore, are present in
an amount of no more than approximately 50 wt% as required by the
Appellant’s claim 1.2
Geel discloses that the binder can contain other components suitable
for reinforcing fiber materials, but does not include a fire retardant among
the listed materials (col. 4, ll. 40-45). However, Grove’s disclosure that
flame retardant properties are required in veils used as building facers
(col. 4, ll. 15-29) would have led one of ordinary skill in the art, through no
more than ordinary creativity, to include a flame retardant in Geel’s binder
so that the articles in which Geel’s fibrous veil can be used as a
reinforcement (col. 1, ll. 9-10) include building facers. See KSR Int’l. Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007) (In making an obviousness

2 The Appellant’s transition term “comprising” opens the claim to elements
other than those recited, such as Geel’s microspheres. See In re Baxter, 656
F.2d 679, 686 (CCPA 1981).
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determination one “can take account of the inferences and creative steps that
a person of ordinary skill in the art would employ.”).
The fibrous article claimed in the Appellant’s claim 1, therefore,
would have been prima facie obvious to one of ordinary skill in the art.
We leave it to the Examiner to address the other claims.
DECISION/ORDER
The rejection of claims 1-4, 25-27 and 29-31 under 35 U.S.C. § 103
over Geel in view of Grove is reversed. Under 37 C.F.R. § 41.50(b) a new
ground of rejection of claim 1 has been entered.
It is ordered that the Examiner’s decision is reversed.
37 C.F.R. § 41.50(b) provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new ground of rejection to avoid
termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .

(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .
Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
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If Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Board of Patent Appeals and Interferences for
final action on the affirmed rejection, including any timely request for
rehearing thereof.
REVERSED; 37 C.F.R. § 41.50(b)

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