Ex Parte Babineau

Patent Trial and Appeal BoardSep 17, 2012

11788188 (P.T.A.B. Sep. 17, 2012)

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. 11/788,188 04/19/2007 Francis John Babineau JR. 7590 5374 29602 7590 09/17/2012 JOHNS MANVILLE 10100 WEST UTE AVENUE PO BOX 625005 LITTLETON, CO 80162-5005 EXAMINER JAYNE, DARNELL M ART UNIT PAPER NUMBER 3637 MAIL DATE DELIVERY MODE 09/17/2012 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 FRANCIS JOHN BABINEAU, JR. ____________ Appeal 2010-005750 Application 11/788,188 Technology Center 3600 ____________ Before STEFAN STAICOVICI, JAMES P. CALVE, and SCOTT A. DANIELS, Administrative Patent Judges. STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-005750 Application 11/788,188 2 STATEMENT OF THE CASE Francis John Babineau, Jr. (Appellant) appeals under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1-13. We have jurisdiction over this appeal under 35 U.S.C. § 6. THE INVENTION Appellant’s invention relates to an acoustic ceiling panel 14 for a suspended ceiling structure including a front layer 26 facing a sound field, a core 20, and a rear layer 28 facing a plenum 16. Spec. 3, ll. 3-8 and fig. 3. Claim 8, is illustrative of the claimed invention and reads as follows: 8. An acoustic ceiling panel comprising a core portion having front and rear sides and front and rear layers disposed on the front and rear sides, respectively; wherein the air flow resistance of the core portion does not exceed about 100 MKS rayls, the air flow resistance of the front layer is in the range of about 300 to about 800 MKS rayls; and the air flow resistance of the rear layer is in the range of about 300 to about 1200 MKS rayls. THE REJECTIONS The Examiner relies upon the following as evidence of unpatentability: Naipawer US 2004/0076786 A1 Apr. 22, 2004 Ray US 2004/0180177 A1 Sep. 16, 2004 Weir US 2004/0219853 A1 Nov. 4, 2004 Thompson US 2004/0231914 A1 Nov. 25, 2004 Wendt US 2005/0211500 A1 Sep. 29, 2005 Appeal 2010-005750 Application 11/788,188 3 The following rejections are before us for review: The Examiner rejected claims 1, 2, and 5-7 under 35 U.S.C. § 103(a) as unpatentable over Wendt, Thompson, and Weir. The Examiner rejected claim 3 under 35 U.S.C. § 103(a) as unpatentable over Wendt, Thompson, Weir, and Naipawer. The Examiner rejected claim 4 under 35 U.S.C. § 103(a) as unpatentable over Wendt, Thompson, Weir, Naipawer, and Ray. The Examiner rejected claims 8, 9, 12, and 13 under 35 U.S.C. § 103(a) as unpatentable over Thompson and Weir. The Examiner rejected claim 10 under 35 U.S.C. § 103(a) as unpatentable over Thompson, Weir, and Naipawer. The Examiner rejected claim 11 under 35 U.S.C. § 103(a) as unpatentable over Thompson, Weir, Naipawer, and Ray. SUMMARY OF DECISION We REVERSE. ANALYSIS The obviousness rejections based upon Wendt, Thompson, and Weir The Examiner found that Wendt discloses all the limitations of independent claim 1 with the exception of the limitation that: the air flow resistance of the core portion does not exceed about 100 MKS rayls; the air flow resistance of the front layer being in the range of about 300 to about 800 MKS rayls; and the air flow resistance of the rear layer in the range of about 300 to about 1200 MKS rayls. Appeal 2010-005750 Application 11/788,188 4 Ans. 4. See also, App. Br., Clms. Appx. The Examiner further found that Thompson discloses a three-layered composite panel including a front layer 12 having an airflow resistance of 500-4000 mks Rayls, a core portion 18 having an airflow resistance that does not exceed 100 mks Rayls, and a rear layer 24 having an airflow resistance of at least about 100,000 mks Rayls. Ans. 5. See also, Thompson, paras. [0021], [0024], [0027], and [0028]. Furthermore, the Examiner found that Weir discloses a panel including a front layer 36 having an airflow resistance of 300-800 mks Rayls, a core portion 34, and a rear layer 35 having an airflow resistance of 300-1200 mks Rayls. Id. See also, Weir, paras. [0038] and [0041]. The Examiner concluded that: It would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the ceiling structure of WENDT ET AL. by replacing the ceiling panel thereof with the panel of THOMPSON, JR. ET AL. in order to improve the ceilings acoustics by decreasing airflow resistance through the panel. However, since the panel of THOMPSON, JR. ET AL. was designed for use on vehicles which must have higher airflow resistance to deal with ambient noise than would the panel if used in housing applications, it would have been obvious to one of ordinary skill in the art at the time the invention was made to replace the rear layer of the ceiling structure resulting from the combination of WENDT ET AL. in view of THOMPSON, JR. ET AL. by the rear layer having a lower air flow resistance of WEIR ET AL. in order to have a panel which has optimized airflow resistance for housing applications. Ans. 5-6. Appeal 2010-005750 Application 11/788,188 5 Appellant argues that because “Wendt discloses a suspension ceiling panel with enhanced sound deadening qualities . . . . there would be no motivation or need to improve the sound deadening qualities of Wendt.” Br. 10. In response, the Examiner opines that although Wendt may disclose a ceiling panel with enhanced sound deadening qualities, it does not mean that a person of ordinary skill in the art “would not be motivated to look to the teachings of THOMPSON, JR. ET AL. to improve the sound deadening qualities or other acoustical properties even more if he so chooses.” Ans. 16. It is undisputed that Wendt fails to disclose a multi-layered panel including a front layer, a core portion, and a rear layer, wherein each layer of the panel has the specifically claimed airflow resistance range. Ans. 4; Br. 7. Thompson is directed to a sound absorptive multi-layered composite panel, wherein each layer has a specific airflow resistance. Ans. 5; Br. 8. Although Thompson discloses that it was known to make a multi-layered acoustic panel, wherein each layer of the panel has a specific airflow resistance, i.e., specific acoustic properties, we find the Examiner’s rejection insufficient to explain what in the prior art would have prompted a person having ordinary skill in the art to replace the acoustic panel in the ceiling structure of Wendt with the acoustic panel of Thompson. The Examiner has not provided any findings that either Wendt or Thompson recognized a problem with the conventional acoustic panel in the ceiling structure of Wendt. The reason proffered by the Examiner, i.e., “in order to improve the ceiling acoustics,” appears to already be performed by the panel of Wendt, which has “enhanced sound deadening qualities” and an optimum airflow Appeal 2010-005750 Application 11/788,188 6 resistance1 of 900 to 950 mks Rayls to “maximize sound absorption.” Wendt, paras. [0004] and [0032]. See also, Br. 10. Moreover, Wendt specifically discloses that if the panel’s “airflow resistance is too high, the material reflects the sound wave as if it were a solid wall” and if it is too low, “the sound wave freely travels through the material,” such that sound attenuation is not optimum. Wendt, para. [0031]. Since Wendt’s panel already has an optimum airflow resistance of 950 mks Rayls and Thompson’s rear layer 24 is air-impermeable, that is, has an airflow resistance of at least about 100,000 mks Rayls, it is not clear to us how the Examiner’s proposed modification of Wendt’s ceiling structure with Thompson’s panel will “improve the ceiling acoustics by decreasing airflow resistance through the panel,” as the Examiner suggests. Emphasis added. In contrast to the Examiner’s position, it appears to us that the airflow resistance of the panel of Wendt as modified by Thompson will increase and hence sound attenuation will not be optimum because the panel would reflect the sound wave as if it were a wall. The Examiner has not provided any evidence that replacing the panel in the ceiling structure of Wendt with the acoustic panel of Thompson would decrease airflow resistance through the panel, and hence would improve ceiling acoustics. See KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007). Without a persuasive articulated rationale based on rational underpinning for modifying the reference as proposed, the Examiner’s rejection appears to be the result of hindsight analysis. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with 1 “Determination of [air] flow resistance is the main property in describing the acoustical performance of any porous material.” Wendt, para. [0032]. Appeal 2010-005750 Application 11/788,188 7 approval in KSR, 550 U.S. at 418) (“rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”). Therefore, absent hindsight, we fail to see why one having ordinary skill in the art would have been led to replace the panel in the ceiling structure of Wendt with the acoustic panel of Thompson, as the Examiner proposes. The addition of Weir does not remedy the deficiencies of Wendt and Thompson as described above. We further note that the reason proffered by the Examiner to combine the teachings of Wendt, Thompson, and Weir, i.e., “in order to have a panel which has optimized airflow resistance for housing applications,” appears to already be performed by the panel of Wendt which is already designed for a ceiling structure, i.e., housing application, and has an optimized airflow resistance, i.e., 900-950 mks Rayls. See Wendt, paras. [0001] and [0032]. Thus, absent hindsight, we fail to see why one having ordinary skill in the art would have been led to replace the rear layer in the panel of Wendt and Thompson’s ceiling structure with Weir’s rear layer “in order to have a panel which has optimized airflow resistance for housing applications,” as the Examiner proposes. See Ans. 6. Accordingly, for the foregoing reasons, we cannot sustain the rejection of independent claim 1, and its dependent claims 2 and 5-7, under 35 U.S.C. § 103(a) as unpatentable over Wendt, Thompson, and Weir. See In re Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988). With respect to the rejections of claims 3 and 4 under 35 U.S.C. § 103(a), the addition of Naipawer and Ray does not remedy the deficiencies of Wendt, Thompson, and Weir as described above. Thus, we likewise Appeal 2010-005750 Application 11/788,188 8 cannot sustain the rejection of claim 3 over the combined teachings of Wendt, Thompson, Weir, and Naipawer and of claim 4 over the combined teachings of Wendt, Thompson, Weir, Naipawer, and Ray. The obviousness rejections based upon Thompson and Weir The Examiner found that Thompson discloses all the limitations of independent claim 8 with the exception of a rear layer having an airflow resistance in the range of about 300-1200 mks Rayls. Ans. 11. The Examiner further found that Weir discloses a panel including a front layer 36 having an airflow resistance of 300-800 mks Rayls, a core portion 34, and a rear layer 35 having an airflow resistance of 300-1200 mks Rayls. Id. See also, Weir, paras. [0038] and [0041]. The Examiner concluded that: It would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the panel of THOMPSON, JR. ET AL. by making the air flow resistance of the rear layer be in the range of about 300 to about 1200 MKS rayls as taught by WEIR ET AL. in order to improve the ceilings acoustics by optimizing airflow resistance through the panel for housing applications. Ans. 12. Appellant argues that “it would not have been obvious to modify the airflow resistance of the air-impermeable barrier layer of the composite of Thomson in view of Weir” because “the proposed modification would render Thompson unsatisfactory for its intended purpose” and thus, “would change the principle of operation of Thompson.” Br. 15. We agree. As noted above, Thompson discloses a three-layered composite panel including air-impermeable rear layer 24 for preventing air flowing through Appeal 2010-005750 Application 11/788,188 9 the panel and having an airflow resistance of at least about 100,000 mks Rayls. Ans. 5. See also, Thompson, paras. [0021], [0024], [0027], and [0028]. Weir discloses a panel including a rear layer 35 having an airflow resistance of 300-1200 mks Rayls. Id. See also, Weir, paras. [0038] and [0041]. Thus, the acoustic panel of Thompson functions by having an air- impermeable rear layer that prevents airflow through the panel, whereas in contrast, the acoustic panel of Weir functions by having an air-permeable rear layer that allows airflow through the panel. It is well settled that where the proposed modification would render the prior art invention being modified unsatisfactory for its intended purpose, the proposed modification would not have been obvious. See Tec Air, Inc. v. Denso Mfg. Mich., Inc., 192 F.3d 1353, 1360 (Fed. Cir. 1999); In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984). "A reference may be said to teach away when a person of ordinary skill, upon [examining] the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant." In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Here, because the panel of Thompson includes an air-impermeable rear layer for preventing air flowing through the panel, we find that the rear layer of Thompson’s panel cannot be replaced with the air-permeable rear layer of Weir, which would allow air flowing through the panel. The air- impermeable rear layer of Thompson would have discouraged a person of ordinary skill in the art from providing the air-permeable rear layer of Weir. Accordingly, the modification proposed by the Examiner of providing the air-permeable rear layer of Weir to Thompson’s panel would not have been obvious to the person of ordinary skill in the art. Appeal 2010-005750 Application 11/788,188 10 Thus, for the foregoing reasons, we cannot sustain the rejection of independent claim 8, and its dependent claims 9, 12, and 13, under 35 U.S.C. § 103(a) as unpatentable over Thompson and Weir. With respect to the rejections of claims 10 and 11 under 35 U.S.C. § 103(a), the addition of Naipawer and Ray does not remedy the deficiencies of Thompson and Weir as described above. Thus, we likewise cannot sustain the rejection of claim 10 over the combined teachings of Thompson, Weir, and Naipawer and of claim 11 over the combined teachings of Thompson, Weir, Naipawer, and Ray. SUMMARY The decision of the Examiner to reject claims 1-13 is reversed. REVERSED hh