Henry Dunn et al.

Patent Trials and Appeals Board

Oct 6, 2020

11813764 - (D) (P.T.A.B. Oct. 6, 2020)

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.
11/813,764 01/22/2008 Henry Vincent Dunn 057905-0356043 6859
23370 7590 10/06/2020
KILPATRICK TOWNSEND & STOCKTON LLP
MAILSTOP: IP DOCKETING - 22
1100 PEACHTREE STREET
SUITE 2800
ATLANTA, GA 30309
EXAMINER
GOLDEN, CHINESSA T
ART UNIT PAPER NUMBER
1788
NOTIFICATION DATE DELIVERY MODE
10/06/2020 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
KTSDocketing2@kilpatrick.foundationip.com
ipefiling@kilpatricktownsend.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HENRY VINCENT DUNN, STEPHEN WOOLFENDEN,
DAVID ANTHONY THOMAS, and JOHN ROBERT HOYES
Appeal 2019-006818
Application 11/813,764
Technology Center 1700
Before LINDA M. GAUDETTE, N. WHITNEY WILSON, and
BRIAN D. RANGE, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL1
The Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 1–3, 6–11, 14, and 16–19.3
We REVERSE.

1 This Decision includes citations to the following documents: Specification
filed July 11, 2007, as amended (“Spec.”); Final Office Action dated
October 23, 2018 (“Final”); Appeal Brief filed May 1, 2019 (“Appeal Br.”);
Examiner’s Answer dated July 18, 2019 (“Ans.”); and Reply Brief filed
September 18, 2019 (“Reply Br.”).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as
Flexitallic Investments Inc. Appeal Br. 1.
3 We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing was held on
September 24, 2020.
Appeal 2019-006818
Application 11/813,764

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CLAIMED SUBJECT MATTER
The invention relates to a gasket material comprising a fibercomponent
(fibrillating fiber and mineral fiber), a rubber component, and a further
resilient material. Spec. 3:1–4. More specifically, the inventive gasket
material includes chemically exfoliated vermiculate (“CEV”) as the further
resilient material. Id. at 3:4–5. According to the Specification, by using CEV
in combination with a fibrillating fiber component, much lower levels of
rubber are required in the gasket material. Id. at 3:7–9. Low levels of rubber
are described as “advantageous because they result in lower levels of organic
material in the final product, high stress retention, high load bearing capability
and a reduced reduction in sealing performance at higher temperatures as
CEV out-performs rubber at high temperatures.” Id. at 3:14–19.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A gasket material comprising:
(a) a start layer comprising rubber;
(b) a body layer on top of the start layer and
comprising
(i) a fiber component comprising a fibrillating
fiber component and a mineral fiber component, wherein the
total amount of fibrillating fiber component and mineral fiber
component is 25–70% w/w of the gasket material,
(ii) a rubber component derived from a rubber
solution,
(iii) a further resilient material in an amount of
1–95% w/w of the gasket material, wherein the further resilient
material comprises a water-based chemically exfoliated
vermiculite (CEV) component, and
(iv) a filler material; and
(c) a finish layer on top of the body layer and
comprising rubber.
Appeal 2019-006818
Application 11/813,764

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Appeal Br. 12 (Appendix A).
REJECTIONS
1. Claims 1–3, 6–11, and 16–19 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Shekleton (US 6,399,204, issued June 4, 2002)
as evidenced by Bauer (US 5,437,920, issued August 1, 1995), in view of
Tracy (US 4,786,670, issued November 22, 1988) and Hoyes (US
2003/0132579 A1, published July 17, 2003) as evidenced by the Applicant’s
admission. Final Act. 3.
2. Claim 14 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Shekleton as evidenced by Bauer, in view of Tracy and Hoyes as
evidenced by the Applicant’s admission, in further view of Denman (US
2,136,734, issued November 15, 1938). Final Act. 14.
OPINION
“To render a later invention unpatentable for obviousness, the prior art
must enable a person of ordinary skill in the field to make and use the later
invention.” In re Kumar, 418 F.3d 1361, 1369 (Fed. Cir. 2005) (citations
omitted). “[W]hen the prior art includes a method that appears, on its face, to
be capable of producing the claimed composition,” “[t]he applicant has the
burden of coming forward with evidence in rebuttal.” Id. at 1368. “This
burden may be met by presenting sufficient reason or authority or evidence,
on the facts of the case, to show that the prior art method would not produce
or would not be expected to produce the claimed subject matter.” Id.
The Appellant argues that the applied prior art “fails to teach or suggest
any method capable of combining the recited elements to form the claimed
gasket material.” Appeal Br. 2. In support of this argument, the Appellant
Appeal 2019-006818
Application 11/813,764

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relies on the Declaration of Stephen Bond, PhD, filed September 4, 2018
(“Bond Decl. IV”). Id. at 3. “Facts, such as test data demonstrating
inoperativeness . . , or facts set forth in an affidavit (37 CFR 1.132) of an
expert in the field suggesting that inoperativeness, [are] highly probative.” In
re Payne, 606 F.2d 303, 315 (CCPA 1979) (citations omitted). Based on Dr.
Bond’s testimony regarding his education and work experience, we find that
Dr. Bond is an expert in the field of mineral chemistry and high temperature
sealing materials, and is qualified to testify as to the level of ordinary skill in
the art at the time of the present invention. See Bond Decl. IV ¶ 2.
Dr. Bond testified that “gasket sealing materials may be made by a
variety of processes and may include a variety of materials. But certain
materials are unsuited for use in certain processes.” Id. ¶ 5. According to Dr.
Bond, “even when a component is known for use in a first gasket sealing
material made by a first method, often it is challenging, and sometimes
impossible, to incorporate that component into a second gasket material made
by a second method.” Id. ¶ 5. In paragraphs 6–12 of his declaration, Dr. Bond
explains why he would not have expected that Shekleton’s polymer, fibers,
graphite, and filler, and Hoyes’s rubber solution and CEV, could be combined
successfully using the Shekleton, Hoyes, or Tracy processes.
“The Board has broad discretion as to the weight to give to declarations
offered in the course of prosecution.” In re Am. Acad. of Sci. Tech. Ctr., 367
F.3d 1359, 1368 (Fed. Cir. 2004). Here, we observe that, at the time of his
declaration, Dr. Bond was “employed as Vice President of Technology at
Flexitallic” (Bond Decl. IV ¶ 2), which appears to be the real party in interest
(see supra note 2). Therefore, Dr. Bond was not a completely disinterested
person. Further, the appeal record lacks factual corroboration to support Dr.
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Application 11/813,764

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Bond’s opinion that the prior art methods could not have been used to produce
the claimed gasket material. See generally Bond Decl. IV ¶¶ 5–12. These are
factors that warrant discounting Dr. Bond’s opinion. See Am. Acad. of Sci.
Tech. Ctr., 367 F.3d at 1368 (“Although there is ‘no reason why opinion
evidence relating to a fact issue should not be considered by an examiner,’ In
re Alton, 76 F.3d 1168, 1175 n.10 (Fed. Cir. 1996), the Board is entitled to
weigh the declarations and conclude that the lack of factual corroboration
warrants discounting the opinions expressed in the declaration . . . .”); cf. In re
Bulina, 362 F.2d 555, 559 (CCPA 1966) (“Such ex parte affidavits must, of
course, be closely scrutinized and weighed with care, it being kept in mind
that they may unconsciously and unintentionally be colored as a result of
enthusiasm for the subject matter of the application. We think also that an
affidavit by an applicant or co-applicant as to the advantages of his invention
is less persuasive than one made by a disinterested person. However, it is not
to be disregarded for that reason alone and may be relied on when sufficiently
convincing.” (internal citations omitted)).
In this case, however, we need not determine the weight to be accorded
to Dr. Bond’s declaration because the declaration is evidence, and the
Examiner reversibly erred in failing to meaningfully address this evidence
(see, e.g., Ans. 16 (“[T]he evidence presented by Appellant is not persuasive.
The evidence merely describes different methods of making gasket materials.
However, data has not been presented which shows that the prior art would
not result in the claimed gasket material.”); Final Act. 17 (“[T]he instant
claims are for a product, not a process. The rejection is based on the claimed
product. Additionally, the process by which a product is made is not germane
to the issue of patentability of the product.”)). See Appeal Br. 6 (“In response
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Application 11/813,764

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to Appellant's arguments and evidence, the Office failed to set forth any
relevant facts or reasoning to explain why it found the arguments and
evidence unpersuasive.”); Reply Br. 4 (“The Answer demonstrates that the
Office improperly analyzed Appellant’s rebuttal evidence under a product-by-
process framework, and ignored case law that applies generally to all product
claims.”); cf. In re Sullivan, 498 F.3d 1345, 1353 (Fed. Cir. 2007) (“The
claimed composition cannot be held to have been obvious if competent
evidence rebuts the prima facie case of obviousness. By failing to consider the
submitted evidence, the Board thus committed error. That is not to suggest the
Board’s finding of obviousness must be overturned in light of the evidence;
rather, the Board must give the declarations meaningful consideration before
arriving at its conclusion.”).
For the above reasons, we do not sustain the rejections of claims 1–3,
6–11, 14, and 16–19.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
1–3, 6–11,
16–19
103(a) Shekleton, Bauer,
Tracy, Hoyes,
Applicant’s admission
1–3, 6–11,
16–19
14 103(a) Shekleton, Bauer,
Tracy, Hoyes,
Applicant’s admission,
Denman
14
Overall
Outcome:

1–3, 6–11,
14, 16–19
REVERSED