Ex Parte Brang et al

Patent Trial and Appeal BoardApr 30, 2018

11736399 (P.T.A.B. Apr. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111736,399 04/17/2007 27896 7590 05/02/2018 EDELL, SHAPIRO & FINNAN, LLC 9801 Washingtonian Blvd. Suite 750 Gaithersburg, MD 20878 FIRST NAMED INVENTOR James E. Brang 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 0818.0194C 3732 EXAMINER LEYSON, JOSEPH S ART UNIT PAPER NUMBER 1744 NOTIFICATION DATE DELIVERY MODE 05/02/2018 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): epatent@usiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JAMES E. BRANG, ARNOLD WILKIE, and JEFF SCOTT HAGGARD Appeal2016--003269 Application 11/736,399 Technology Center 1700 Before BRADLEY R. GARRIS, BEYERL YA. FRANKLIN, and LILAN REN, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL Appellants request our review under 35 U.S.C. Â§ 134 of the Examiner's decision rejecting claims 1-8, 19-22, and 24--39. We have jurisdiction over the appeal under 35 U.S.C. Â§ 6(b). Appeal 2016-003269 Application 11/736,399 STATEMENT OF THE CASE Claim 1 is illustrative of Appellants' subject matter on appeal and is set forth below: 1. A nanofiber meltblown fiber spinning device into which molten polymer is fed comprising: at least a first flow distribution plate having an outflow edge and a pattern of flow regions defined therein, said pattern of flow regions comprising a reservoir portion for receiving polymer fed to the device and a plurality of spinning orifices defined as respective long, narrow, parallel flow passages, said spinning orifices being positioned in flow communication with said reservoir and extending to said outflow edge such that nanofibers of said polymer are extruded from said spinning orifices, said plate having a plate thickness defined between first and second opposite plate surfaces, wherein said flow regions are grooves that include said spinning orifices and are recessed in said first surface to a depth less than said thickness; wherein said spinning orifices are long and narrow spin holes having a length L and a maximum transverse dimension D and the ratio L/D is equal to or greater than twenty; and wherein said spinning device is configured to form said nanofibers such that when polymer flows through said spinning orifices at low flow rates of 0.01 grams per spinning orifice per minute or less a majority of the formed fibers have a diameter less than 0.5 micron. The Examiner relies on the following prior art references as evidence of unpatentability: Harding et al. (Harding) Allen et al. (Allen) Berger us 3,825,280 us 5,061,170 US 6,833,104 B2 Jul. 23, 1974 Oct. 29, 1991 Dec. 21, 2004 Ward, Filtration and Separation, United Kingdom, Elsevier Advanced Technology, Vol. 38, No. 9, pp. 42-43, November 2001. 2 Appeal 2016-003269 Application 11/736,399 Appellants list 5 Declarations on pages 10-11 of the Appeal Brief, which we do not re-list here. THE REJECTIONS 1. Claim 39 stands rejected under 35 U.S.C. Â§ 112(a) or 35 U.S.C. Â§ 112 (pre-AIA), first paragraph, as failing to comply with the written description requirement. 2. Claims 1-8, 19-22, 24, and 27-38 stand rejected under pre-AIA 35 U.S.C. Â§103(a) as being unpatentable over Berger in view of Ward and Harding. 3. Claims 25, 26 and 39 stand rejected under pre-AIA 35 U.S.C. Â§ 103(a) as being unpatentable over Berger in view of the Ward and Harding, as applied to claims 1-8, 19-22, 24, and 27-38 above, and further in view of Allen. ANALYSIS To the extent that Appellants have presented substantive arguments for the separate patentability of any individual claims on appeal, we will address them separately consistent with 37 C.F.R. Â§ 41.37(c)(l)(vii) (2007). Having considered the respective positions advanced by the Examiner and Appellants in light of this appeal record, we affirm Rejection 1, but reverse Rejections 2 and 3, based upon the preponderance of the evidence in the record. Our analysis follows. 3 Appeal 2016-003269 Application 11/736,399 Rejection 1 Claim 39 recites that the nanofibers have "a median diameter less than 0.5 microns". It is the Examiner's position there is no written descriptive support for this limitation. Ans. 2. Appellants argue that although the word "median" per se is not used, there is written descriptive for this phrase, and Appellants refer to the following aspects of their Specification: At page 4, lines 8 - 9, Applicants state: "With the present invention, webs can be made with most of the fibers less than 0.5 micron in d. " rnmeter . . . ; At page 8, lines 21 - 22, Applicants state: "The method of the invention, in a broad sense, may be viewed as a meltblown process for making a web of fibers that are mostly less than 0.5 microns in d. " rnmeter . . . ; At page 8, line 25 - 27, Applicants state: "The invention may also be viewed as including a meltblown fabric having fibers mostly less than 0.5 microns in diameter ... ". Appeal Br. 11. Appellants submit that the above disclosure supports that a median diameter to be less than 0.5 micron if more of the fiber diameters fall below 0.5 micron. Id. Appellants submit that therefore "a majority of the formed fibers have a diameter less than 0.5 micron" means exactly the same thing as "nanofibers having a median diameter less than 0.5 microns". Id. Appellants also provide a definition of "median" as being "[a] median data point is the middle data point such that half remaining data points have 4 Appeal 2016-003269 Application 11/736,399 values less than or equal to the median and the other half of the data points have values greater than or equal to the median.". Appeal Br. 11. The Examiner does not agree that the Specification disclosure of "most of the fibers less than 0.5 micron in diameter" provides support for a "median diameter less than 0.5 microns", wherein a median data point is the middle data point such that half the remaining data points have values less than or equal to the median and the other half of the data points have values greater than or equal to the median. Ans. 12. The Examiners explains that if most of the fibers are less than 0.5 microns, then half the data points cannot be less than 0.5 microns. Id. We agree. In the Reply Brief, Appellants present additional arguments not presented in the principal Appeal Brief. Rely Br. 5. Appellants refer to certain U.S. patents in an effort to show that a median diameter is a conventional concept. Appellants also refer to a definition of "median" not mentioned in the Appeal Brief. Reply Br. 6-7. These new arguments are untimely. Because Appellants did not establish good cause for raising the arguments for the first time in Reply Brief, the arguments are waived. See 37 C.F.R. Â§ 41.41(b)(2) (requiring showing of good cause for Board to entertain new arguments in a Reply Brief). In view of the above, we affirm Rejection 1. Rejections 2 and 3 Several issues are raised in the record. We focus on the dispositive issue in this case which is whether the Examiner's finding that Ward teaches 5 Appeal 2016-003269 Application 11/736,399 that the claim element regarding "a majority of formed fibers have a diameter less than 0.5 microns" is flawed. The Examiner relies upon Berger for teaching certain aspects of the claimed subject matter. Ans. 2--4. The Examiner acknowledges that Berger does not teach making fibers wherein a majority of fibers having a diameter of less than 0.5 microns. Ans. 4. The Examiner relies upon Ward for teaching this aspect of the claims. 1 Ans. 4---6. It is the Examiner's position that Ward teaches a spinning device configured to form fibers such that a majority of the fibers formed have a diameter less than 0.5 microns. Ans. 4--6. We are in agreement with Appellants that Ward does not teach such a system as explained on pages 15-16 Appeal Brief, as well as on pages 13-14 of the Reply Brief. Therein, Appellants persuasively argue that one cannot discern (from the teachings of Ward), what the diameters are, of the majority of the fibers formed in Ward. We incorporate Appellants' position stated therein and adopt Appellants' presentation of the facts as our own (see pp. 15-16 Appeal Brief and pp. 13- 14 of the Reply Brief), rather than reproduce it herein. Notably, the Examiner's response made on pages 14--15 of the Answer is persuasively rebutted by Appellants response thereto made on pages 13-14 of the Reply Brief. As such, the Examiner's position that the Ward system is capable of making fibers wherein a majority of them have a diameter less than 0.5 microns (Ans. 15-16) is likewise unsupported. The Examiner does not 1 The Examiner relies upon the Harding reference to teach the claimed L/D ratio. Ans. 5-8. Harding is not relied upon for teaching a majority of the formed fibers have a diameter less than 0.5 microns. 6 Appeal 2016-003269 Application 11/736,399 adequately point to evidence in Ward showing why the device in Ward is in fact capable of forming fibers wherein a majority of them has a diameter less than 0.5 microns. Ans. 4---6. It appears the Examiner is relying upon the flawed finding that a majority of the Ward's formed fibers have a diameter of less than 0.5 microns to support this position. However, because this position is based upon a flawed finding (as discussed, supra), it cannot be said, without more (such as a finding that the applied art device has similar/identical structure), that a preponderance of the evidence indicates that Ward's device is capable of forming such fibers. It is the Examiner's burden to establish that the correspondingly cited prior art structure is inherently capable of performing the claimed function. In re Schreiber, 128 F.3d 1473, 1478-79 (Fed. Cir. 1997). In the instant case, the rejection lacks sufficient analysis in this regard, and therefore falls short of meeting this burden. As such, we are persuaded by Appellants' arguments in the record on this issue. We thus reverse Rejection 2. Because the Examiner does not rely upon the additional reference of Allen to cure these aforementioned deficiencies of the combination of Berger in view of Ward and Harding, we likewise reverse Rejection 3. DECISION Rejection 1 is affirmed. Rejections 2 and 3 are reversed. 7 Appeal 2016-003269 Application 11/736,399 TIME PERIOD No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). See 37 C.F.R. Â§ 1.136(a). ORDER AFFIRMED-IN-PART 8