Ex Parte Lalouch et al

Patent Trial and Appeal BoardDec 20, 2017

14458900 (P.T.A.B. Dec. 20, 2017)

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. 14/458,900 08/13/2014 Lahoussaine Lalouch 66305US012 8620 32692 7590 12/22/2017 3M INNOVATIVE PROPERTIES COMPANY PO BOX 33427 ST. PAUL, MN 55133-3427 EXAMINER HWU, DAVIS D ART UNIT PAPER NUMBER 3744 NOTIFICATION DATE DELIVERY MODE 12/22/2017 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): LegalUSDocketing@mmm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte LAHOUSSAINE LALOUCH, JOHN J. ROGERS, and GEORGE W. FROST1 Appeal 2017-001633 Application 14/458,900 Technology Center 3700 Before STEFAN STAICOVICI, JAMES P. CALVE, and WILLIAM A. CAPP, Administrative Patent Judges. CALVE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Final Office Action rejecting claims 1—22. Appeal Br. 3. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 3M Innovative Properties Company is the applicant as provided for in 37 C.F.R. § 1.46 and is identified as the real party in interest in the Appeal Brief along with 3M Company. Appeal Br. 3. Appeal 2017-001633 Application 14/458,900 CLAIMED SUBJECT MATTER Claims 1 and 13 are independent, with illustrative claim 1 reproduced below. 1. A method of enhancing the fire-protecting of a through- penetrating opening in a partition, the method comprising: inserting at least one article comprising a gravity-laid inorganic fiber web at least partially into the through-penetrating opening. Appeal Br. 9 (Claims Appendix). REJECTIONS Claims 1—6, 8—15, and 17—22 are rejected under 35 U.S.C. § 103(a) as unpatentable over Morris (US 2003/0185527 Al, pub. Oct. 2, 2003) and Zalewski (US 5,612,114, iss. Mar. 18, 1997). Claims 7 and 16 are rejected under 35 U.S.C. § 103(a) as unpatentable over Morris, Zalewski, and Wierzbicki (US 2011/0136937 Al, pub. June 9, 2011). ANALYSIS Claims 1—6, 8—15, and 17—22 Rejected Over Morris and Zalewski The Examiner finds that Morris teaches methods of fire protection by inserting article 10 comprising a fabric web (fabric layer 22) in an opening or wrapping an article with fabric web 22. Final Act. 2. The Examiner finds that Zalewski teaches a glass fiber web where glass is an inorganic material, and “the fiber web is formed by blending the fibers together, thus meeting the definition of ‘gravity-laid.’” Ans. 4. The Examiner finds that Zalewski teaches forming inorganic fibers into a sheet, and it is obvious that the fibers have been separated mechanically from larger pieces and collected to form the sheets so Zalewski teaches the gravity-fed material. Final Act. 3. 2 Appeal 2017-001633 Application 14/458,900 Appellants argue that Zalewski’s disclosure that its inorganic textile sheet material can “comprehend” any inorganic nonwoven web does not constitute a disclosure of a gravity-laid inorganic fiber web as claimed. Appeal Br. 6. Appellants also argue that they define what is meant by a gravity-laid web in their Specification, and that definition distinguishes a wet-laid web, which is the only inorganic web that Zalewski discloses. Id. Appellants further argue that there is no basis to find that Zalewski’s webs are made from fibers that were separated mechanically from other pieces and even if the fibers were processed in this general manner, such a web would not meet Appellants’ definition of a gravity-laid web in the Specification. Reply Br. 2. We agree. We agree with the Examiner that Zalewski discloses webs made of inorganic glass fibers as claimed. See Zalewski, 2:1—4. Appellants disclose glass fibers as one type of inorganic material used in their methods. Spec. 15:25—29. We are not persuaded, however, that Zalewski teaches inorganic fiber webs that are “gravity-laid” as claimed. Appellants define “gravity- laid inorganic fiber web” in their Specification: As defined herein, the term gravity-laid inorganic fiber web means a nonwoven web in which at least about 80 weight % of the fibers of the web are inorganic fibers and that was made by the consolidation of an inorganic fiber mat made by the above- described process of separating fibers (e.g., from an initially at least partially clumped or agglomerated state) by the mechanical action of fiber-separating rollers, with the mechanically separated fibers allowed to gravity-drop onto a collecting surface to form a mat, with any remaining clumps or agglomerates of fibers (if present) being recycled to undergo the mechanical separation process again. Id. at 12:11-18. 3 Appeal 2017-001633 Application 14/458,900 Appellants distinguish the claimed gravity-laid process from wet-laid, dry-laying, and air-laying web formation processes. The above-described process of fiber agglomerates being mechanically separated (e.g., de-agglomerated) by fiber- separating rollers 7 (rotating at relatively low speeds and hence imparting relatively low shear), with mechanically separated fibers 3 falling through chamber 2 to land on carrier 5 and with any remaining fiber agglomerates (if present) being recirculated by endless belt screen 8, is termed herein as gravity-laying, with an inorganic fiber mat formed therefrom termed a gravity- laid inorganic fiber mat. The gravity-laying process can be distinguished from so-called wet laid web formation processes which rely on papermaking apparatus and methods. This process can also be distinguished from well-known conventional dry-laying web formation processes such as carding, gametting and air-laying. Spec. 6:19-28. We agree with the Examiner that Zalewski teaches a glass fiber web at column 4, lines 54—56, and this web is formed by blending fibers together. See Final Act. 2; Ans. 4. However, we agree with Appellants that Zalewski forms this web using a wet-laid process, which the Specification disclaims as being a different, distinguishable process than the claimed gravity-laid process. Spec. 6:25—26 (“The gravity-laying process can be distinguished from so-called wet laid web formation processes which rely on papermaking apparatus and methods.”); see also Zalewski, 1:62—64, 4:15—21, 4:34^42. The Examiner’s finding that Zalewski’s fiber web is formed by separating and collecting the fibers (Ans. 4) does not establish by a preponderance of evidence that the fibers are combined using a gravity-laid web formation process, as claimed. Thus, we do not sustain the rejection of claims 1—6, 8—15, and 17—22. 4 Appeal 2017-001633 Application 14/458,900 Claims 7 and 16 Rejected Over Morris, Zalewski, and Wierzbicki The Examiner’s reliance on Wierzbicki to teach basalt fibers, as recited in dependent claims 7 and 16 (Final Act. 3), does not overcome the deficiencies of Morris and Zalewski as to claims 1 and 13 from which claims 7 and 16 depend, respectively. Thus, we do not sustain the rejection of claims 7 and 16. DECISION We reverse the rejections of claims 1—22. REVERSED 5