Ex Parte Hanna

Patent Trial and Appeal BoardMar 11, 2014

11546767 (P.T.A.B. Mar. 11, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/546,767 10/12/2006 Terry Joe Hanna 7614 5169 29602 7590 03/11/2014 JOHNS MANVILLE 10100 WEST UTE AVENUE PO BOX 625005 LITTLETON, CO 80162-5005 EXAMINER SZEWCZYK, CYNTHIA ART UNIT PAPER NUMBER 1741 MAIL DATE DELIVERY MODE 03/11/2014 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 TERRY JOE HANNA ____________ Appeal 2012-010720 Application 11/546,767 Technology Center 1700 ____________ Before EDWARD C. KIMLIN, ADRIENE LEPIANE HANLON, and GEORGE C. BEST, Administrative Patent Judges. KIMLIN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal from the final rejection of claims 1-29. We have jurisdiction under 35 U.S.C. Â§ 6(b). Claim 1 is illustrative: 1. A bushing assembly comprising a bushing comprising an orifice plate or tip plate having a length dimension L, and a width dimension W of at least about 4 inches, the L:W ratio being at least about 1.5, the bushing also comprising at least one wall and at least one pair of terminal ears, the orifice plate or a tip plate having a plurality of spaced apart orifices therethrough from an inside surface to an exposed surface, the bushing assembly also comprising a plurality of spaced apart cooling tubes located in close proximity to the exposed surface for containing a flow of cooling fluid in each cooling tube, the cooling fluid entering one end of each cooling tube and exiting an opposite end of each cooling tube, wherein all of the plurality Appeal 2012-010720 Application 11/546,767 2 of spaced apart cooling tubes, numbering 16 or more with each cooling tube having one or more fins extending from a surface of the cooling tube towards the orifice plate or tip plate, are oriented to be substantially parallel with the width dimension of the bushing and with rows of the orifices. The Examiner relies upon the following references as evidence of obviousness: Brosch U.S. 5,244,483 Sep. 14, 1993 Melia U.S. 6,196,029 B1 Mar. 6, 2001 New Composite, "Glass Fiber," 5 (Jan. 2002) http://netcomposites.com/education.asp?sequence=33 Appellant's claimed invention is directed to a bushing assembly for making fibers from a molten material, such as glass. The assembly comprises, inter alia, an orifice or tip plate having length and width dimensions, and spaced apart cooling tubes that are oriented substantially parallel with the width dimension of the orifice plate. Appealed claims 1-21 and 24-29 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Melia in view of Brosch. Claims 22 and 23 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over the stated combination of references further in view of Net Composites. We have thoroughly reviewed the respective positions advanced by Appellant and the Examiner. In so doing, we find ourselves in agreement with Appellant that the claimed subject matter would not have been obvious to one of ordinary skill in the art within the meaning of Â§ 103. Accordingly, we will not sustain the Examiner's rejections. As acknowledged by the Examiner, Melia does not expressly teach cooling tubes that are oriented substantially parallel with the width dimension of the orifice plate. To the extent the Examiner has made out a Appeal 2012-010720 Application 11/546,767 3 prima facie case for the obviousness of orienting the cooling tubes of Melia in either the length or width direction of the orifice plate, it is our judgment that the evidence of unexpected results shown by Appellant's two declarations effectively rebuts any prima facie case. It is well settled that once an applicant submits evidence of nonobviousness, the evidence of obviousness and nonobviousness must be considered and weighed anew. In the present case, the declaration evidence establishes that it was customary in the art to orient the cooling tubes parallel to the length dimension of the plate, and no advantage was seen in orienting the tubes parallel to the width dimension. However, the declaration evidence further establishes that cooling tubes oriented in the width direction are superior to tubes oriented in the length direction with respect to melt rate and pounds per hour, fiber break outs/per hour, and package weight variation. The Declarants have characterized these improvements as unexpected. The Examiner's only criticism of the declaration evidence is that it does "not address the current prior art in the rejection of Melia in view of Brosch" (Ans. 9, last para.). According to the Examiner, the evidence does not present a comparison with the closest prior art, which is Melia. However, Melia does not disclose cooling tubes oriented in the width dimension of the plate, but only in the length dimension. Since the declaration evidence presents a comparison between cooling tubes oriented in the length and width dimensions, we find that the comparative data is fairly representative of Appellant's claimed invention and the applied prior art. It is noteworthy that Melia's invention is not directed to the orientation of the cooling tubes. Appeal 2012-010720 Application 11/546,767 4 In conclusion, based on the foregoing, we are constrained to reverse the Examiner's rejections. REVERSED cam