SAINT-GOBAIN ISOVER

Patent Trials and Appeals Board

May 1, 2020

14368984 - (D) (P.T.A.B. May. 1, 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.
14/368,984 06/26/2014 Stephane Maugendre 437005US41PCT 1014
22850 7590 05/01/2020
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
HOFFMANN, JOHN M
ART UNIT PAPER NUMBER
1741
NOTIFICATION DATE DELIVERY MODE
05/01/2020 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):
OBLONPAT@OBLON.COM
iahmadi@oblon.com
patentdocket@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
_________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte STEPHANE MAUGENDRE,
FRANCOIS SZALATA,
and RICHARD CLATOT
__________

Appeal 2019-003816
Application 14/368,984
Technology Center 1700
___________

Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
JAMES C. HOUSEL, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL

A. STATEMENT OF THE CASE
The Appellant1 filed an appeal under 35 U.S.C. § 134(a) from an Examiner’s
decision rejecting claims 17–29, 31, 33–50, and 53–56. We have jurisdiction
under 35 U.S.C. § 6(b). A hearing was held on April 3, 2020.
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Saint-Gobain Isover.
Appeal Brief dated February 21, 2018 (“App. Br.”), at 1.
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The Appellant’s invention is directed to a process of fabricating mineral
fibers from vitrifiable materials. The process comprises the steps of [1]
introducing raw materials into a circular furnace; [2] fusing the raw materials in the
furnace to form a molten material; [3] outflowing the molten material from the
furnace to a distribution channel; [4] outflowing the molten material from the
distribution channel; and [5] transforming the molten material into fibers. App. Br.
20. The first outflowing step (step [3] identified above) comprises passing the
molten material under a metal barrier located between the furnace and the
distribution channel. Id. The barrier is mobile “so as to be adjustable in height.”
Id. The transforming step (step [5] identified above) determines an output of the
process such that adjusting the height of the barrier regulates a temperature of the
molten material without regulating the output of the process. Id. In other words,
the Appellant discloses that “the passage of the glass in the fiber forming dies . . .
limits the output.” Spec. 2, ll. 3–4. “This is why the height of the [barrier] only
regulates the temperature and not the flow [i.e., output].” Spec. 2, ll. 6–7.
Representative claim 17 is reproduced below from the Claims Appendix to
the Appeal Brief.
Claim 17: A process of fabrication of mineral fibers,
comprising:
[1] introducing raw materials into a circular furnace with
electrodes;
[2] fusing the raw materials in the furnace to form a molten
material;
[3] outflowing the molten material via a lateral outlet from the
furnace to a distribution channel;
[4] outflowing the molten material from the distribution
channel via an orifice on a bottom of the distribution channel; and
[5] transforming the molten material into fibers,
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wherein the outflowing of the molten material via the lateral
outlet comprises passing said molten material under a metal barrier
located between the furnace and the distribution channel, said barrier
being mobile so as to be adjustable in height and configured to move
vertically up and down so as to adjust a height of said barrier,
wherein said height of said barrier is adjusted by moving said
barrier vertically, the transforming the molten material into fibers
determines an output of said process of fabrication of mineral fibers
such that adjusting said height is performed to regulate a temperature
of said molten material without regulating said output of the process
of fabrication,
wherein the metal barrier includes an envelope cooled by a flow
of cooling fluid, and
wherein the electrodes are submerged from above in the molten
material, and the electrodes are arranged such that a vertical
temperature gradient exists in the molten material where hotter molten
material is toward a top of the molten material and cooler molten
material is toward a bottom of the molten material.
App. Br. 20 (numbering added).
The claims on appeal stand rejected as follows:2
(1) claims 17–29, 31, 33–50, and 53–56 under 35 U.S.C. § 112, second
paragraph, as being indefinite;
(2) claims 17, 21, 27, 31, 34, 35, 43, 54, and 55 under 35 U.S.C. § 102(b)
as anticipated by Chenoweth3;
(3) claims 18–20, 22–25, 29, 33, 36–42, 44–50, and 53 under 35 U.S.C. §
103(a) as unpatentable over Chenoweth in view of Vignesoult et al.4;

2 Claims 17–29, 31, 33–50, and 53–56 were rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement. Non-
Final Action dated October 2, 2017 (“Non-Final Act.”), at 3. The rejection was
withdrawn in the Examiner’s Answer dated May 11, 2018 (“Ans.”), at 11.
3 US 6,044,667, issued April 4, 2000 (“Chenoweth”).
4 US 6,284,684 B1, issued September 4, 2001 (“Vignesoult”).
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(4) claims 26–28 and 56 under 35 U.S.C. § 103(a) as unpatentable over
Chenoweth; and
(5) claim 28 under 35 U.S.C. § 103(a) as unpatentable over Chenoweth in
view of the Appellant’s admission.5
B. DISCUSSION
1. Rejection (1)
The Examiner concludes that claim 17 is indefinite for several reasons. See
Non-Final Act. 6 (concluding that claims 35 and 43 are indefinite for substantially
the same reasons as claim 17). First, claim 17 recites “a metal barrier located
between the furnace and the distribution channel.”6 App. Br. 20 (emphasis added).
The Examiner concludes that “the language ‘located between the furnace and the
distribution channel’ is nebulous because the limits of what is or is not a furnace
can be arbitrary.” Non-Final Act. 4 (emphasis added). The Examiner finds that it
is “a matter of semantics as to whether one considers a channel to be something
that is part of the furnace, or something that is attached to the furnace.” Non-Final
Act. 4.
The definiteness of the claim language employed must be analyzed in light
“of the particular application disclosure as it would be interpreted by one
possessing the ordinary level of skill in the pertinent art.” In re Moore, 439 F.2d
1232, 1235 (CCPA 1971). The Appellant’s Figure 1 illustrates circular furnace 1.
Spec. 7, l. 31. The Appellant discloses that “[t]he molten materials leave the
furnace 1 by passing under the dam [or barrier] 10 . . . . They subsequently arrive
in the distribution channel 11 . . . .” Spec. 8, ll. 5–9 (emphasis added). Thus, in

5 Paragraph bridging pages 1 and 2 of the Appellant’s Specification.
6 The Appellant correctly points out that claim 35 does not recite a similar feature.
App. Br. 15.
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this case, the Appellant’s Specification makes it clear that distribution channel 11
is not part of furnace 1, but rather is downstream of furnace 1. See App. Br. 16
(contending that Appellant’s Figure 1 shows barrier 10 located between furnace 1
and distribution channel 11).
Second, claim 17 recites:
wherein said height of said barrier is adjusted by moving said
barrier vertically, the transforming the molten material into fibers
determines an output of said process of fabrication of mineral fibers
such that adjusting said height is performed to regulate a temperature
of said molten material without regulating said output of the process
of fabrication . . . .
App. Br. 20 (emphasis added). The Examiner finds the limitation is ambiguous
because it is unclear whether the limitation is “setting forth a functionality of the
barrier or claiming a step of adjusting.” Non-Final Act. 5.
Neither claim 17 nor claim 35 recites an adjusting step. See App. Br. 20, 23
(reciting “said barrier being mobile so as to be adjustable in height . . . wherein
said height of said barrier is adjusted by moving said barrier vertically” (emphasis
added)). Rather, claims 17 and 35 recite the function of the barrier in the claimed
process, i.e., regulating a temperature of the molten material without regulating the
output of the process of fabrication. Claim 43, on the other hand, recites an
adjusting step. See App. Br. 24 (reciting the step of “adjusting an elevation of said
barrier”). Therefore, on this record, we conclude that no ambiguity exists with
regard to whether claims 17, 35, and 43 recite a barrier function or an adjusting
step.
Third, in the “wherein” clause reproduced above, the Examiner finds that the
limitation “without regulating said output” is ambiguous. Non-Final Act. 5.
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According to the language of claim 17, the phrase “without regulating said
output” means that the height of the barrier does not regulate the output of the
claimed process. That interpretation is consistent with the Appellant’s
Specification. See Spec. 2, ll. 4–6 (disclosing that “[t]he transformation into fibers
is . . . the determining step for the flow of glass through the whole process
(output)”); Spec. 2, ll. 6–7 (disclosing that “the height of the dam only regulates
the temperature”); see also App. Br. 17 (contending that “both the specification
and claims of the present application make clear that adjusting the height of the
barrier does not regulate the output”). Therefore, on this record, we conclude that
the phrase “without regulating said output” is not ambiguous.
Fourth, claim 17 recites that “the electrodes are submerged from above in
the molten material.”7 App. Br. 20. The Examiner concludes that it is unclear
whether the electrodes are completely buried in the molten material or protrude
above the melt. Non-Final Act. 5.
The Appellant does not define “submerged” in the Specification. The
ordinary meaning of “submerged” is “(1) to put or sink below the surface of water
or any other enveloping medium; (2) to cover or overflow with water; immerse.”8
See Non-Final Act. 3 (finding that “[t]he plain meaning of ‘submerged’ conveys
the notion of being completely covered”).
The Appellant, however, contends that the Specification “expressly states
that part of the electrodes are above the molten materials.” App. Br. 15 (emphasis
added); App. Br. 17 (referring to the argument in the written description section of

7 Similarly, claims 35 and 43 recite that “the electrodes are submerged from above
in the molten material.” App. Br. 23, 25.
8 Dictionary.com, definition of “submerged,”
https://www.dictionary.com/browse/submerged# (last visited April 7, 2020).
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the Appeal Brief); see also Spec. 6, ll. 4–7 (disclosing that the “electrodes
generally comprise a part made of molybdenum immersed in the vitrifiable
materials and a part made of steel above the vitrifiable materials connected to an
electrical voltage” (emphasis added)). In that regard, the Appellant’s Figure 1
shows electrodes 9 extending above vitrifiable materials 7. See Tr. 8, ll. 1–2 (“I
think that we’re just trying to claim what’s shown in Figure 1”).9
On this record, we find that the electrodes are not covered by or submerged
in the molten material in the claimed process. Therefore, the claims on appeal do
not recite the subject matter which the inventors regard as the invention. For that
reason alone, the rejection under 35 U.S.C. § 112, second paragraph, is sustained.
2. Rejections (2)–(5)
Chenoweth discloses an apparatus for melting glass and distributing the
molten glass to a conventional spinner array for making fiberglass insulating batts.
Chenoweth, col. 6, ll. 12–21. The Examiner finds Chenoweth’s cooling tube 61
corresponds to the claimed metal barrier. Non-Final Act. 7. In particular, cooling
tube 61 may be inserted into orifice 59b or 59c to cool the molten glass in the
passage between furnace 1 and distribution channel 5. Non-Final 7; Chenoweth,
col. 8, ll. 48–49, 54–55. Chenoweth discloses that “[t]ubes 61 can be provided
with a simple mechanism for controlling their depth of emersion into the molten
glass. This, in turn, can be used to ultimately control the outlet temperature of the
glass at the entrance 6 of forehearth [or distribution channel] 5.” Chenoweth, col.
8, ll. 40–44 (emphasis omitted).
The Examiner does not find that Chenoweth expressly describes the
following limitation recited in claim 17:

9 Hearing transcript.
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wherein . . . the transforming the molten material into fibers
determines an output of said process of fabrication of mineral fibers
such that adjusting said height [of the barrier] is performed to
regulate a temperature of said molten material without regulating said
output of the process of fabrication . . . .
App. Br. 20 (emphasis added).
Nonetheless, the Examiner concludes that claim 17 does not require an
adjusting step and concludes that the “wherein clause does not give meaning and
purpose to any of the requires [sic, required] steps (of introducing, fusing,
outflowing and transforming).”10 Non-Final Act. 7. The Examiner concludes that
the limitation “such that adjusting said height [of the barrier] is performed to
regulate a temperature of said molten material without regulating said output of the
process of fabrication” is merely a desired result or suggestion. Non-Final Act. 7;
Ans. 5.11
The Examiner’s interpretation of claim 17 is not supported by the record.
Claim 17 recites the step of “transforming the molten material into fibers.” App.
Br. 20. As recited in the wherein clause reproduced above, the transforming step
“determines an output of said process of fabrication of mineral fibers such that
adjusting said height [of the barrier] is performed to regulate a temperature of said
molten material without regulating said output of the process of fabrication.” App.
Br. 20. That is, the transforming step, not the first outflowing step,12 determines
the output of the claimed process. Our interpretation of claim 17 is consistent with

10 As pointed out above, claim 43 recites an adjusting step. See App. Br. 24.
11 Examiner’s Answer dated May 11, 2018.
12 The first outflowing step recited in claim 17 is “outflowing the molten material
via a lateral outlet from the furnace to a distribution channel” which comprises
“passing said molten material under a metal barrier located between the furnace
and the distribution channel.” App. Br. 20.
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the Appellant’s Specification. See Spec. 2, ll. 3–7 (disclosing that “[t]he
transformation into fibers is . . . the determining step for the flow of glass through
the whole process (output)” and the height of the dam [or barrier] only regulates
the temperature”); see also App. Br. 7 (arguing that “the height of the barrier has
no influence on the overall flow (i.e., the output)” in the Appellant’s invention
(emphasis omitted)).
The Examiner finds that Chenoweth’s transforming step inherently
determines the output (i.e., the rate of forming fibers) in the disclosed process.
Non-Final Act. 7. The Examiner offers the following example. “[I]f the
transforming comprises transforming 1 ton/hour of molten glass into fibers. Then
the rate of fabrication of fibers would be 1 ton/hour.” Non-Final Act. 7.
The Appellant argues that the Examiner’s finding is erroneous because it
ignores the possibility that other limiting factors could regulate the output of
Chenoweth’s process, such as “cooling tube 61 . . . restricting the amount of
molten material that can pass through the distribution channel to be turned into
fibers.” App. Br. 13.
The Appellant’s argument is persuasive of reversible error. We recognize
that Chenoweth’s transforming step results in an output. The issue on appeal,
however, is whether Chenoweth’s transforming step necessarily determines the
output of the disclosed process. By way of example, the Appellant explains that
the fiberizing device in the claimed transforming step13 allows a smaller flow than
the adjustable barrier in the Appellant’s process. See App. Br. 7 (stating that “the
flow rate of the molten material under the barrier is greater, even when the barrier

13 Claim 17 recites the step of “transforming the molten material into fibers.” App.
Br. 20.
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is adjusted, than the rate at which the fiberizing device can convert the molten
material into fibers”). Therefore, the Appellant contends that the height of the
claimed barrier has “no influence” on the flow (or output) exiting the fiberizing
device. App. Br. 7.
On this record, the Examiner has not directed us to any disclosure in
Chenoweth that describes, either expressly or inherently,14 an equivalent operation
in Chenoweth, whereby the transforming step rather than, for example, the height
of Chenoweth’s cooling tube 61, necessarily determines the output of the disclosed
process. See Ans. 17 (explaining that “[t]he fact that something is inherent means
it is necessarily so; it means that there [are] no exceptions and no possibility of it
not happening”). Therefore, the anticipation rejection of claims 17, 21, 27, 31, 34,
35, 43, 54, and 55 based on Chenoweth is not sustained. See In re Oetiker, 977
F.2d 1443, 1445 (Fed. Cir. 1992) (examiner bears the initial burden of presenting a
prima facie case of unpatentability).
The Examiner does not rely on the remaining prior art of record to cure the
deficiency in Chenoweth identified above. Therefore, the obviousness rejections
of claims 18–20, 22–29, 33, 36–42, 44–50, 53, and 56 also are not sustained.
C. CONCLUSION
The Examiner’s decision is affirmed.

14 See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (“To anticipate a
claim, a prior art reference must disclose every limitation of the claimed invention,
either explicitly or inherently.”).
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Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
17–29, 31, 33–
50, 53–56
112, second
paragraph
Indefinite 17–29, 31, 33–
50, 53–56

17, 21, 27, 31,
34, 35, 43, 54,
55
102(b) Chenoweth 17, 21, 27, 31,
34, 35, 43, 54,
55
18–20, 22–25,
29, 33, 36–42,
44–50, 53
103(a) Chenoweth,
Vignesoult
18–20, 22–25,
29, 33, 36–42,
44–50, 53
26–28, 56 103(a) Chenoweth 26–28, 56
28 103(a) Chenoweth,
Appellant’s
admission
28
Overall
Outcome
17–29, 31, 33–
50, 53–56

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).
AFFIRMED