Ex Parte Zheng

Patent Trial and Appeal Board

May 31, 2016

12837195 (P.T.A.B. May. 31, 2016)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/837,195 07/15/2010 Guodong Zheng 7775D 3735
29602 7590 06/01/2016
JOHNS MANVILLE
10100 WEST UTE AVENUE
PO BOX 625005
LITTLETON, CO 80162-5005
EXAMINER
STEELE, JENNIFER A
ART UNIT PAPER NUMBER
1789
MAIL DATE DELIVERY MODE
06/01/2016 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte GUODONG ZHENG
____________________

Appeal 2015-000491
Application 12/837,195
Technology Center 1700
____________________

Before MICHAEL P. COLAIANNI, N. WHITNEY WILSON, and
AVELYN M. ROSS, Administrative Patent Judges.

ROSS, Administrative Patent Judge.

DECISION ON APPEAL1
Appellant2 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1–5 and 14–16. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 In our opinion below, we refer to the Final Office Action appealed from,
mailed November 20, 2013 (Final Act.), the Appeal Brief filed May 8, 2014
(Appeal Br.), and the Examiner’s Answer mailed July 24, 2014 (Ans.).
2 Appellant identifies the real party in interest as Johns Manville, the
assignee of the instant application. Appeal Br. 2.
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Application 12/837,195

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STATEMENT OF CASE
The claims are directed to a coated nonwoven permeable glass mat.
Spec. 2. The claimed mat has a controlled saturated weight and porosity.
Id. at 4. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A permeable, coated, fibrous, nonwoven mat made by the
process of passing the nonwoven mat over the surface of a binder
or coating slurry to touch the bottom side of the mat sufficiently
to fully wet the glass mat, and immersing the mat in a slurry to
fully saturate the mat with the slurry material, with the solid
content of the binder or coating slurry less than the solids content
of the slurry in which immersion occurs.
Claims Appendix at Appeal Br. 10.

REJECTIONS
The Examiner rejected the claims as follows3:
A. Claims 1–5 stands rejected under 35 U.S.C. § 102(b) as
being anticipated by or, in the alternative, under §103(a)
as being unpatentable over Fensel.4 Id. at 5.

B. Claims 1–5 stands rejected under 35 U.S.C § 102(b) as
being anticipated by or, in the alternative, under §103(a)
as being unpatentable over Geel.5 Id. at 7.

3 In the Final Office Action, the Examiner also rejected claims 1–5 and 14–
16 under 35 U.S.C. §112(b) as being indefinite for failing to particularly
point out and distinctly claim the subject matter which the inventor regards
as the invention. Final Act. 4. The Examiner withdrew that rejection in
view of an after-final amendment to the claims. Ans. 4.
4 Fensel et al., US 6,641,896 B2, issued November 4, 2003 (hereinafter
“Fensel”).
5 Geel et al., US 2006/0292948 A1, published December 28, 2006
(hereinafter “Geel”).
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C. Claims 1–5, 14, and 15 stand rejected under 35 U.S.C.
§102(b) as being anticipated by or, in the alternative, under
§103(a) as being unpatentable over Hauber.6 Id. at 10.

D. Claims 1–5, 14, and 15 stand rejected under 35 U.S.C.
§102(b) as being anticipated by or, in the alternative, under
§103(a) as being unpatentable over Smith.7 Id. at 12.

E. Claim 16 stands rejected under 35 U.S.C. §103(a) as being
unpatentable over Smith in view of Bush.8 Id. at 14–15.

F. Claim 16 stands rejected under 35 U.S.C. §103(a) as being
unpatentable over Hauber in view of Bush. Id. at 15.
Appellant seeks our review of the rejections A–F. Appellant however
does not substantively argue any claim apart from the others for any of the
rejections. Moreover, Appellant’s arguments for each rejection raise the
same issues. Therefore, we select claim 1 as the representative claim for
deciding the arising issues and, while we have separately considered each of
the rejections, we discuss them together.

OPINION
Each of the Examiner’s rejections is founded on the fact that the
claims are product-by-process claims in that they are directed to a
permeable, coated, fibrous, nonwoven, glass mat made by a claimed process.
See generally Ans. 4–7. The Examiner explains that the process, i.e., the

6 Hauber et al., US 6,524,679 B2, issued February 25, 2003 (hereinafter
“Hauber”).
7 Smith et al., US 2005/0202742 A1, published September 15, 2005
(hereinafter “Smith”).
8 Bush et al., US 2007/0042657 A1, published February 22, 2007
(hereinafter “Bush”).
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process of coating the mat, does not structurally distinguish the resulting
product from the products of the prior art. Id. The Examiner determines,
because the physical limitations are present in the prior art, the claims are
anticipated, or in the alternative obvious, over each of the recited references.
Therefore, according to the Examiner, “[t]he burden is on Appellant to
provide evidence that an unexpected result is produced by the process
limitation. [And,] Appellant has not provided evidence of an unexpected
result, nor has Appellant claimed a different product than the prior art.” Id.
Appellant does not dispute that each of Fensel, Geel, Hauber (alone or
in combination with Bush), and Smith (alone or in combination with Bush)
describe a permeable, coated, fibrous, nonwoven, glass mat. Rather,
Appellant argues that “[t]he claimed process, as discussed at page 4, lines 1-
14 of the present specification, results in a different mat than that obtained
from conventional coating/immersion processes.” Appeal Br. 4. Appellant
argues that the claimed product is the result “of first touching the bottom
side of a mat to fully wet the glass mat, followed by immersion in the slurry,
[which] permits one to prepare a non-woven mat, preferably a glass mat,
with a controlled saturated weight and porosity,” a vastly different process
than used in the prior art. Id. Only through the claimed process, Appellant
urges, can a mat be produced with a controlled saturated weight and porosity
which advantageously reduces scrap and improves tensile strength. Id. 4–5.
Therefore, says Appellant, “Applicants believe they have met their burden.”
Id. at 4.
The issue on appeal is whether Appellant has identified reversible
error in the Examiner’s finding that the properly construed claim includes
the coated nonwoven permeable glass mat described by the applied prior
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art. Appellant has failed to identify such error and the evidence as a whole
supports the position of the Examiner.
In order to be patentable, a claimed product must be different from the
product of the prior art. In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985). It
is settled that “even though product-by-process claims are limited by and
defined by the process, determination of patentability is based on the product
itself” and process limitations do not add patentable distinction where the
product is the same as the prior art. Id. Therefore, “[w]here 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).
As we stated above, Appellant neither disputes the Examiner’s
determination that the structure imparted to the mat in claims is a
“permeable, coated, fibrous nonwoven mat” nor the finding that the prior art
teaches a coated nonwoven permeable glass mat. Appeal Br. 4. We
therefore adopt this finding as fact. In re Kunzmann, 326 F.2d 424, 425 n.3
(CCPA 1964) (“Since appellant has not shown this finding to be clearly
erroneous, we accept it as fact.”). The Examiner’s additional findings (Final
Act. 6–14 and Ans. 7) that the coating process does not result in a patentable
structural difference in the product is reasonable in that the properly
construed claims structurally require a permeable, coated, fibrous nonwoven
mat. Therefore, and as Appellant recognizes (Appeal Br. 4), the burden
shifted to the Appellant to show that, in fact, the coating process as claimed
results in a product having a patentable structural distinction. Appellant
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offers no objective evidence, nor convincing technically-based argument,
that meets the burden in establishing that the coating method of claim 1
results in a patentable difference in structure of the fibrous insulation
product and instead, rests on ineffectual attorney argument. Estee Lauder
Inc. v. L’Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997) (“arguments of
counsel cannot take the place of evidence lacking in the record.”).
Accordingly, a preponderance of the evidence supports the Examiner
finding of anticipation and obviousness of the claimed subject matter. In re
Fracalossi, 681 F.2d 792, 794 (CCPA 1982) (“Thus evidence establishing
lack of all novelty in the claimed invention necessarily evidences
obviousness.”).

CONCLUSION
The Examiner did not reversibly err in rejecting claims 1–5 and 14–
16.

DECISION
For the above reasons, the Examiner’s rejections of claims 1–5 and
14–16 are affirmed.

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) (2009).

AFFIRMED