ALENGRIN, Simon

Patent Trials and Appeals BoardOct 30, 2019

14911115 - (D) (P.T.A.B. Oct. 30, 2019)

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. 14/911,115 02/09/2016 Simon ALENGRIN 466885US99 PCT 1352 22850 7590 10/30/2019 OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P. 1940 DUKE STREET ALEXANDRIA, VA 22314 EXAMINER PLESZCZYNSKA, JOANNA ART UNIT PAPER NUMBER 1783 NOTIFICATION DATE DELIVERY MODE 10/30/2019 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 SIMON ALENGRIN ____________ Appeal 2019-000740 Application 14/911,115 Technology Center 1700 ____________ Before KAREN M. HASTINGS, MICHAEL G. McMANUS, and MERRELL C. CASHION, JR., Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 requests our review under 35 U.S.C. § 134(a) of the Examiner’s decision rejecting claims 1, 3–6, 8–11, and 16–18 under 35 U.S.C. § 103 as unpatentable over at least the combined prior art of Fay et al. (US 2004/0123539 A1, published July 1, 2004), Bondra Jr. et al. (US 3,958,385, issued May 25, 1976) and Knapp et al. (US 2011/0206897 A1, 1 We use the word “Appellant” to refer to the “Applicant” as defined in 37 C.F.R. § 1.42(a). Appellant is Saint-Gobain Isover, which is also identified as a real party in interest (Appeal Br. 2). Appeal 2019-000740 Application 14/911,115 2 published August 25, 2011).2 We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. CLAIMED SUBJECT MATTER Claim 1 is illustrative of the subject matter on appeal (emphasis added to highlight key disputed limitation): 1. Fiber batting for the manufacture of thermally insulating composite comprising: a semi-rigid fibrous batt including mineral wool fibers bonded by a binder; and a facing sheet adhered to one outer main surface of the semi-rigid fibrous batt with a binder or adhesive, wherein: a density of the semi-rigid fibrous batt is above 20 kg/m3; the mineral wool fibers are arranged in a substantially laminar layout with a majority of fibers parallel to the main face; the semi-rigid fibrous batt is provided, on an opposite surface from the facing sheet, with alterations in a direction transverse to the length of the semirigid fibrous batt; the alterations are obtained by scoring and the depth of scoring varies or the scoring is not continuous across the width of the semi-rigid fibrous batt; the fiber batting is in a rolled form with the facing sheet interior to the roll and the alterations towards the exterior, and is packaged into a roll packaged unit; a first thickness of the semi-rigid fibrous batt, which is before rolling, is at least 15 mm; and the facing sheet is a veil, mat, non-woven glass fibers, or a fabric of woven glass fibers. 2 The Examiner applied an additional reference, Yang (US 2009/0053958 A1, published Feb. 26, 2009), to dependent claim 10 (Final Action 7). A discussion of this reference is not needed for disposition of this appeal. Appeal 2019-000740 Application 14/911,115 3 Appeal Br. (Claims App. i). OPINION Upon consideration of the evidence of record and each of Appellant’s contentions as set forth in the Appeal Brief, as well as the Reply Brief, we determine that Appellant has not demonstrated reversible error in the Examiner’s rejections (e.g., generally Ans.). In re Jung, 637 F.3d 1356, 1365–66 (Fed. Cir. 2011) (explaining the Board’s long-held practice of requiring Appellant(s) to identify the alleged error in the Examiner’s rejection.). We sustain the rejections for the reasons expressed by the Examiner in the Final Office Action and the Answer. We add the following primarily for emphasis. Appellant’s arguments in support of patentability as to the appealed claims, including separately rejected dependent claim 10, are based on limitations found in claim 1, except for a separate argument that applies to dependent claims 16 and 17. It has been established that “the [obviousness] analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007); see also In re Fritch, 972 F.2d 1260, 1264– 65 (Fed. Cir. 1992) (a reference stands for all of the specific teachings thereof as well as the inferences one of ordinary skill in the art would have reasonably been expected to draw therefrom). At the outset, it is noted that the Examiner’s rejection relies upon the second alternative of the disputed clause. Thus, all arguments and remarks, Appeal 2019-000740 Application 14/911,115 4 whether by the Appellant or the Examiner, directed at the first option of “the depth of scoring varies” are not relevant to this appeal. Appellant’s arguments all focus on the alleged failure of Fay/Bondra to teach or suggest a rolled batting having cuts or scoring that is “not continuous across the width” of the web as recited in claim 1 (e.g., Appeal Br. 5–13; Reply Br. 3-6). Appellant argues that having discontinuous cuts in Bondra would defeat the purpose of having cuts to prevent the facing from sliding with respect to the face during rolling of the batting (Appeal Br. 10). Appellant also argues that the Examiner’s reliance on Knapp is misplaced because Knapp teaches the use of discontinuous cuts/scoring in a folded batt, not in a rolled batt (id). Appellant argues that Knapp teaches away from rolling insulation (Appeal Br. 12). These arguments are not persuasive of reversible error in the Examiner’s rejection (e.g., Ans. 9–12). Whether the prior art teaches away from the claimed invention is a question of fact, In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005). It is well established that a prior art reference must be considered in its entirety, i.e., as a whole, when determining if it would lead one of ordinary skill in the art away from the claimed invention. W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1550 (Fed. Cir. 1983). See Syntex (U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005) (“A statement that a particular combination is not a preferred embodiment does not teach away absent clear discouragement of that combination.”). Knapp explicitly teaches that discontinuous scoring or cuts is an alternative to a continuous cut/scoring in a folded batting product (Knapp ¶ 26). One of ordinary skill in the art would have immediately inferred, using no more than ordinary Appeal 2019-000740 Application 14/911,115 5 creativity, that the use of discontinuous (intermittent) scoring would have been an appropriate alternative to a continuous scoring to aid in rolling the rolled batting of Fay/Bondra and/or to aid in separating pieces of the batting (e.g., similar to the ubiquitous use of perforated lines to separate sheets of rolled paper products). Appellant’s argument that having discontinuous cuts in Bondra would defeat its purpose is unavailing because the argument is unsupported by objective evidence or adequate technical explanation (e.g., Appeal Br. 10; Reply Br. 7). Notably, the claim encompasses very short uncut portions in between long scored/cut portions such that the undesired bending that Appellant asserts would result would be minimal, if it occurs. Thus, Appellant, at most, has provided mere attorney arguments and such arguments in a brief cannot take the place of evidence. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). In summary, Appellant has not directed our attention to any persuasive reasoning or credible evidence to establish that there is reversible error in the Examiner’s obviousness determination of claim 1 (Ans. generally). See KSR, 550 U.S. at 417 (the predictable use of known prior art elements or steps performing the same functions they have been known to perform is normally obvious; the combination of familiar elements/steps is likely to be obvious when it does no more than yield predictable results); Ball Aerosol and Specialty Container, Inc. v. Limited Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009) (under the flexible inquiry set forth by the Supreme Court, the PTO must take account of the “inferences and creative steps,” as well as routine steps, that an ordinary artisan would employ). With respect to claims 16 and 17, Appellant’s argument that the Examiner has not shown that the spacing distance is a result effective Appeal 2019-000740 Application 14/911,115 6 variable (Appeal Br. 16) is unpersuasive. One of ordinary skill in the art using no more than ordinary creativity would have optimized the longitudinally spacing of the cuts depending on the ultimate size of the roll of rolled batting (e.g., Ans. 10). Accordingly, we sustain the Examiner’s prior art rejections under 35 U.S.C. § 103 of all the claims on appeal for the reasons given above and presented by the Examiner. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Basis Affirmed Reversed 1, 3–6, 8, 9, 11, 16–18 § 103 Fay, Bondra, Knapp 1, 3–6, 8, 9, 11, 16–18 10 § 103 Fay, Bondra, Knapp, Yang 10 Overall Outcome 1, 3–6, 8–11, 16-18 TIME PERIOD FOR RESPONSE 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