Ex Parte Carpanedo et al

Patent Trial and Appeal BoardJul 27, 2016

11721051 (P.T.A.B. Jul. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 111721,051 0712212009 Olivier Carpanedo 22850 7590 07/29/2016 OBLON, MCCLELLAND, MAIER & NEUSTADT, LLP, 1940 DUKE STREET ALEXANDRIA, VA 22314 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. 309963USOPCT 6010 EXAMINER TOLIN, MICHAEL A ART UNIT PAPER NUMBER 1745 NOTIFICATION DATE DELIVERY MODE 07/29/2016 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): patentdocket@oblon.com oblonpat@oblon.com ahudgens@oblon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Exparte OLIVIER CARPANEDO, LAURENT JORET, and ROGER ZINZIUS Appeal2014-005911 Application 11/721,051 Technology Center 1700 Before N. WHITNEY WILSON, CHRISTOPHER C. KENNEDY, and JENNIFER R. GUPTA, Administrative Patent Judges. GUPTA, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. Â§ 134(a) from the Examiner's decision2 finally rejecting claims 1-9 and 11-22. We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm. The claims are directed to a method for producing a mineral wool product consisting of a polyester fabric and a colored mineral wool. Claim 1, reproduced below, is illustrative of the claims on appeal. 1 Appellants identify the real party in interest as Saint Gobain Isover. Appeal Brief filed January 22, 2014 ("Br."), 1. 2 Final Office Action mailed August 27, 2013 ("Final Act."). Appeal2014-005911 Application 11/721,051 1. A method for producing a mineral wool product consisting essentially of a polyester fabric and a colored mineral wool, wherein the method comprises: blending colored pigments, mineral wool and at least one heat-curable binder to form a colored mineral wool; gathering the colored mineral wool to form a fiber pad comprising the colored mineral wool; and introducing the fiber pad into a crosslinking chamber, wherein a polyester fabric is combined with the colored mineral wool prior to introduction into the crosslinking chamber, wherein the colored mineral wool and the polyester fabric are different colors prior to combination, wherein the polyester fabric is colored through diffusion of pigments from the colored mineral wool into the polyester fabric, and wherein at least 50% of the surface of the polyester fabric has the same color as the colored mineral wool. REJECTIONS The following rejections are before us for review: 1. Claims 1-9, 13-19, 21, and 22 are rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Lostak et al. (US 5,240,527, issued Aug. 31, 1993) (hereinafter "Lostak") in view of Suda et al. (US 2005,0166543 Al, published Aug. 4, 2005) (hereinafter "Suda"), Helbing et al. (US 6,638,882 B2, issued Oct. 28, 2003) (hereinafter "Helbing '882"), Helbing (US 5,601,629, issued Feb. 11, 1997) (hereinafter "Helbing '629"), Maycock (US 3,697,479, issued Oct. 10, 1972) (hereinafter "Maycock"), and Kajander (US 5,840,413, issued Nov. 24, 1998) (hereinafter "Kajander"); 2 Appeal2014-005911 Application 11/721,051 2. Claims 5, 11, and 12 are rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Lostak in view of Suda, Helbing '882, Helbing '629, Maycock, Kajander, and further in view of Pike et al. (US 6,169,045 Bl, issued Jan. 2, 2001) (hereinafter "Pike"); and 3. Claim 20 is rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Lostak in view of Suda, Helbing '882, Helbing '629, Maycock, Kajander, and further in view of Shannon et al. (US 3,337,669, issued Aug. 22, 1967) (hereinafter "Shannon"). ANALYSIS Rejection 1 The Appellants argue the claims subject to the first ground of rejection as a group. We select claim 1 as representative of the rejected claims, and claims 2-9, 13-19, 21, and 22 will stand or fall with claim 1. See 37 C.F.R. Â§ 41.37(c)(l)(iv). The Examiner finds, inter alia, that Lostak teaches or suggests all the limitations of claim 1 except the addition of colored pigments to the fabric. Ans. 4. Appellants do not dispute the Examiner's findings regarding Lostak. Br. 4. Moreover, Appellants do not challenge the Examiner's reasons for combining Lostak with Suda, Helbing '882, Helbing '629, Maycock, and Kajander. Instead, Appellants argue that the Examiner erred in finding that the modified method ofLostak would result in at least 50% of the surface of the polyester fabric having the same color as the colored mineral wool, as required by claim 1. See Br. 4. 3 Appeal2014-005911 Application 11/721,051 We are not persuaded of reversible error by the Appellants' argument. The Appellants do not dispute the Examiner's finding that the method of Lostak as modified by Helbing '882 and Helbing '629 is identical to the method of claim 1. See Ans. 4--8, 15. Nor have Appellants shown that Lostak's method as modified by Helbing '882 and Helbing '629 would not achieve the required coloration recited in claims 1, 21, and 22. In re Best, 562 F.2d 1252, 1255 (CCPA 1977) ("Where . . . the claimed and prior art products are . . . produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product.") Appellants contend that "it cannot be asserted with certainty that the combination of asserted art would necessarily or inherently result in the required coloration of the present invention." Br. 5 (emphasis added). The Appellants' contention is legally erroneous. Certainty is not required. Rather, the Examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art. Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Inter. 1990). Here, the Examiner has provided such technical reasoning, and as discussed above, the Appellants do not rebut the Examiner's reasonable findings and conclusions regarding the method of Lostak as modified by Helbing '882. Appellants are also legally incorrect in stating that inherency "cannot form the basis of a proper obviousness rejection" (Br. 5). See PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1195-96 (Fed. Cir. 2014) ("[I]n order to rely on inherency to establish the existence of a claim limitation in 4 Appeal2014-005911 Application 11/721,051 the prior art in an obviousness analysis-the limitation at issue necessarily must be present, or the natural result of the combination of elements explicitly disclosed by the prior art."). Rejections 2 & 3 Claims 5, 11, 12, and 20 depend directly from claim 1. Appellants argue that Pike (claims 5, 11, and 12) and Shannon (claim 20) fail to cure the alleged deficiencies in the rejection of claim 1. See Br. 6. This argument is not persuasive of error in the Examiner's rejections because, for the reasons discussed above, we are not persuaded of any deficiencies in the Examiner's rejection of claim 1. DECISION For the above reasons, we affirm the Examiner's rejections of claims 1-9 and 11-22. 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). AFFIRMED 5