Ex Parte Lim et al

Patent Trial and Appeal Board

Aug 15, 2017

12817775 (P.T.A.B. Aug. 15, 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.
12/817,775 06/17/2010 Sang-Hoon Lim 09420010AA 6285
30743 7590 08/15/2017
WHITHAM, CURTIS & COOK, P.C.
11491 SUNSET HILLS ROAD
SUITE 340
RESTON, VA 20190
EXAMINER
REA, CHRISTINE
ART UNIT PAPER NUMBER
1786
MAIL DATE DELIVERY MODE
08/15/2017 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 SANG-HOON LIM
and ANDREA PIANA
________________
Appeal 2016-002568
Application 12/817,775
Technology Center 1700
________________
Before MARK NAGUMO, JAMES C. HOUSEL, and GEORGE C. BEST,
Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1, 3, 4, 7, 8, 14, 21, and 22 of
Application 12/817,775 under 35 U.S.C. § 103(a) as obvious. Final Act.
(July 13, 2015). Appellants1 seek reversal of these rejections pursuant to
35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6.
A hearing was held on August 8, 2017.
For the reasons set forth below, we affirm.

1 Tintoria Piana, U.S., Inc. is identified as the real party in interest. Appeal
Br. 3.
Appeal 2016-002568
Application 12/817,775
2
BACKGROUND
The ’775 Application describes a nonwoven fire barrier textile
comprising a blend of fibers. Spec. 1. The main components of the claimed
nonwoven fire barrier are flame retardant cellulosic fiber and a basalt fiber, a
glass fiber, or a mixture basalt and glass fibers. Id. Such fiber barrier
products are used in mattresses and upholster furniture. Id.
Claim 1 is representative of the ’775 Application’s claims and is
reproduced below from the Claims Appendix to the Appeal Brief.
1. Nonwoven, comprising:
a flame retardant (FR) treated cellulosic fiber selected
from the group consisting of FR cotton fiber and FR rayon fiber
and combinations of these fibers; and
basalt fiber,
wherein said FR treated cellulosic fiber is treated with at
least one FR chemical selected from the group consisting of
phosphorus-, sulfur-, halogen and boron-containing FR
chemicals, and
wherein said FR treated cellulosic fiber comprises 50–
99.99 wt% of said nonwoven,
wherein said basalt fiber is present in said nonwoven at
approximately 0.01–20 wt%,
and
wherein said flame retardant (FR) treated cellulosic fiber
and said basalt fiber form a blend of fibers.
Appeal Br. 27.
Appeal 2016-002568
Application 12/817,775
3
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1, 3, 4, 7, 8, and 14 are rejected under 35 U.S.C. § 103(a)
as unpatentable over the combination of Wyss2 and Narayanan.3
Final Act. 2.
2. Claims 21 and 22 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Wyss and Slimak.4 Final
Act. 5.
DISCUSSION
Rejection 1. Appellants argue for reversal of this rejection on the
basis of limitations of claim 1. See Appeal Br. 16–22. Thus, we select claim
1 as representative of the claims subject to this ground of rejection and limit
our discussion accordingly. 37 C.F.R. § 41.37(c)(1)(iv) (2014). Claims 3, 4,
7, 8, and 14 will stand or fall with claim 1. Id.
Appellants argue for reversal of the rejection of claim 1, contending
that the Examiner erred in four ways: (1) failing to demonstrate a reasonable
basis for combining Wyss and Narayanan, (2) failing to consider the prior art
in its entirety, (3) failing to establish a prima facie case of obviousness, and
(4) failing to give proper weight to evidence of secondary indicia of
nonobviousness. Appeal Br. 14–22.
We are not persuaded by these arguments.

2 US 2007/0004307 A1, published January 4, 2007.
3 US 2008/0242175 A1, published October 2, 2008.
4 US 6,146,766, issued November 14, 2000.
Appeal 2016-002568
Application 12/817,775
4
First, Appellants argue that the Examiner has not explained why, at
the time of the invention, a person having ordinary skill in the art would
have combined Wyss and Narayanan. Id. at 14.
To the extent that Appellants’ argument is based upon a contention
that the Examiner failed to provide any reason for the combination of Wyss
and Narayanan, we are unpersuaded. The Examiner expressly found that a
person of ordinary skill in the art would have replaced Wyss’s cellulosic
fibers with FR cotton fibers treated with phosphonium sulfate in order to use
a well-known fiber in a nonwoven that is predictably less expensive and
provides better FR protection. Answer 4.5
If, however, Appellants are arguing that the Examiner has not
provided an adequate reason for a person having ordinary skill in the art to
replace Wyss’s cellulosic fibers with FR cotton fiber because Wyss’s
intermediate nonwoven becomes flame resistant upon its treatment with
silicates, see Appeal Br. 18–19, we also are unpersuaded. As discussed
above, the Examiner reasoned that a person having ordinary skill in the art
would have been motivated by a desire to save money and to achieve better
FR protection. Answer 4.
As Appellants have explained, flame resistance is conferred upon the
Wyss’s ultimate product by the silicate treatment. In this rejection, the
Examiner is proposing substituting treatment with another chemical that
confers flame resistance for the silicate treatment. As the Supreme Court
has explained, “[t]he combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable

5 Appellants do not challenge the factual findings underlying the Examiner’s
reasoning. See generally Appeal Br.
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Application 12/817,775
5
results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). See also
In re Fout, 675 F.2d 297, 301 (CCPA 1982) (“Express suggestion to
substitute one equivalent for another need not be present to render such
substitution obvious.”).
Second, Appellants argue that the rejection of claim 1 should be
reversed because the Examiner failed to consider the prior art in entirety and
ignored evidence in the cited references which teach away from the claimed
invention. Appeal Br. 14–18. In particular, Appellants argue that “Wyss
does not describe a ‘nonwoven’ as claimed in the present invention.” Id. at
14. Appellants concede that Wyss does describe a nonwoven as an
intermediate product created as part of the manufacturing process of Wyss’s
ultimate product, which Wyss sometimes calls a “composite[].” Id.
(discussing Wyss ¶ 62); see also id. at 15 (“Simply put, Wyss is making a
different product than the claimed non-woven, and Wyss contemplates
having the majority of the product be silicate to purportedly provide
improved fire resistance to wall structure[s].”).
We are not persuaded by this argument. As the Examiner found,
Wyss describes a nonwoven intermediate that is subsequently impregnated
with silicate to create Wyss’s ultimate product. See Final Act. 2–3 (citing
Wyss ¶¶ 61–68).
Furthermore, we disagree with Appellants’ assertion that Wyss’s final
product is not a nonwoven as that term is used in claim 1. Appellants’
Specification defines the term nonwoven:
A “nonwoven” is a manufactured sheet, web, or batt of natural
and/or man-made fibers or filaments that are bonded to each
other by any of several means. . . . Web bonding methods
include mechanical bonding (e.g., needle punching, stitch, and
hydro-entanglement), chemical bonding using binder chemicals
Appeal 2016-002568
Application 12/817,775
6
(e.g., saturation, spraying, screen printing, and foam), and
thermal bonding using binder fibers with low-melting points.
Spec. 3.
Wyss describes its final product as a composite comprising non-
melting fibers, melting fibers, and at least one silicate. Wyss ¶¶ 5–8, 61–67.
Wyss manufactures its composite by impregnating an intermediate
nonwoven with silicates. Id. ¶¶ 68–72. Wyss describes the resulting
product as a sheet and refers to it as a “fireskin.” Id. ¶ 46, 47 (“[C]omposite
sheets may be prepared by forming sheets of mixtures of non-melting
[fibers] and melting [fibers]. The sheets are then impregnated with a silicate
solution or dispersion, and, if desired, [calendared], to form composite
sheets or papers.”); see also id. ¶ 72. The intermediate nonwoven is
prepared from a mixture of melting and non-melting fibers. Id. ¶ 62. The
fiber mixture is then spun-laced, spun-bonded or a needle-felt. Id. ¶ 63.
We do not discern, and Appellants have not identified, any reason
why a silicate-impregnated nonwoven falls outside the definition of
nonwoven set forth in Appellants’ Specification.
Third, Appellants argue that the rejection of claim 1 should be
reversed because the combination of Wyss and Narayanan does not render
subject matter of claim 1 prima facie obvious. Appeal Br. 18–20. In
particular, Appellants argue that Wyss’s nonwoven intermediate product
does not satisfy the weight percentage requirement for basalt. Appeal
Br. 18.
This argument is incorrect. Wyss describes the melting fiber content
of its nonwoven as
below at or about 55 wt %, based on the dry weight of the fibres
before treatment with silicate (i.e.[,] the dry weight of the total
fibre content) . . . . Preferably the melting fibre content falls
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Application 12/817,775
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between at or about 10 to 40 wt % . . . based on the dry weight
of the fibres before treatment with silicate (i.e.[,] the dry weight
of the total fibre content).
Wyss ¶ 65. Wyss specifically identifies basalt fibers as falling within the
meaning of the term “melting [fibers].” Id. ¶ 61. Wyss, therefore, describes
a nonwoven comprising an amount of basalt fibers that overlaps the range of
basalt content recited in claim 1 (as 0.01–25 wt %). It is well-established
that a prior art teaching of the range that overlaps the claimed range is
sufficient to establish the prima facie obviousness of the claimed range. See
In re Peterson, 315 F.3d 1325, 1329–30 (Fed. Cir. 2003).
Fourth, Appellants argue that the Examiner did not give sufficient
weight to Appellants’ evidence directed to secondary indicia of
nonobviousness. Appeal Br. 20–22. In particular, Appellants argue that
they have presented evidence—in the form of the Declaration of Dr. Sang-
Hoon Lim filed May 23, 2014 (the “Lim Declaration”)—that the claimed
invention satisfies a long-felt, unmet need. Id. at 21.
We are not persuaded by this argument. The Examiner clearly
considered the Lim Declaration. See Answer 8–9. We agree with the
Examiner’s conclusion that the Lim Declaration (along with a second
declaration filed by Dr. Lim) is insufficient to overcome the prima facie case
of obviousness when all of the relevant evidence is considered.
In assessing the totality of the evidence, the Lim Declaration does not
carry much weight for at least two related reasons:
(1) As a co-creator of the subject matter of the ’775 Application,
Dr. Lim has an interest in obtaining issuance of a patent, and may,
understandably, interpret non-technical information from an honest but
personal perspective.
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Application 12/817,775
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(2) The Lim Declaration does not provide corroborated evidence of
a long-felt unmet need, and therefore amounts to unsubstantiated opinion.
According to Appellants, see Appeal Br. 21, the relevant portion of the Lim
Declaration reads: “Upon the introduction of the novel blend, people in the
industry were surprised at the char strength of the product despite the lower
basis weight. They were furthermore excited by the economically beneficial
result of cost reduction per use of a lower basis weight.” Lim Declaration 9.
This passage does not indicate how Dr. Lim became aware of the surprise
and excitement of “people in the industry,” nor does it indicate who these
people were and how much information they had about the use of fire
resistant materials in the industry. Indeed, the quoted passage does not
indicate how many people expressed surprise and excitement when they
were introduced to Appellants’ novel blend.
For the reasons set forth above, we affirm the rejection of claims 1, 3,
4, 7, 8, and 14 as unpatentable over the combination of Wyss and
Narayanan.
Rejection 2. Appellants argue that the rejection of claims 21 and 22
as unpatentable over the combination of Wyss and Slimak should be
reversed. Appeal Br. 22–24. Appellants present separate arguments for the
patentability of each of these claims. Id. We, therefore, address the claims
individually.
Claim 21. Appellants argue that claim 21 recites all of the salient
features of claim 1, but uses the closed “‘consisting of’” transition. Id. at 22.
Based upon the use of the closed transition, Appellants argue that claim 21
does not read upon Wyss’s final product, i.e., a fireskin comprising at least
one silicate. Id. at 22–23.
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Application 12/817,775
9
We are not persuaded by this argument. As the Examiner explains,
the rejection is based upon a modification of Wyss’s nonwoven intermediate
product to replace Wyss’s untreated cellulose with the FR-treated cotton
described in Slimak. Answer 2–3, 5, 9. Because claim 21 reads upon the
Examiner’s proposed modified nonwoven intermediate product, the
Examiner has properly demonstrated a prima facie case of obviousness.
Appellants further argue that the combination of Wyss and Slimak
does not render the subject matter of claim 21 unpatentable because a person
of ordinary skill in the art would not have combined Wyss and Slimak for
the same reasons Appellants advanced in arguing against the combination of
Wyss and Narayanan in connection with Rejection 1. Id. at 23. As
discussed above, we do not find these arguments to be persuasive of
reversible error.
We, therefore, affirm the Examiner’s rejection of claim 21 as
unpatentable over the combination of Wyss and Slimak.
Claim 22. Appellants argue that claim 22 recites all of the salient
features of claim 1, but uses the closed “‘consisting of’” transition. Appeal
Br. 23. Based upon the use of the closed transition, Appellants argue that
claim 22 does not read upon Wyss’s final product, i.e., a fireskin comprising
at least one silicate. Id. For the reasons we have discussed in connection
with the rejection of claim 21, we do not find this argument to be persuasive.
See also Answer 9–10.
Appellants further argue that the combination of Wyss and Slimak
does not render the subject matter of claim 22 unpatentable because a person
of ordinary skill in the art would not have combined Wyss and Slimak for
the same reasons Appellants advanced in arguing against the combination of
Wyss and Narayanan in connection with Rejection 1. Id. at 23–24. As
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Application 12/817,775
10
discussed above, we do not find these arguments to be persuasive of
reversible error.
We, therefore, affirm the Examiner’s rejection of claim 22 as
unpatentable over the combination of Wyss and Slimak.
CONCLUSION
For the reasons set forth above, we affirm the rejection of claims 1, 3,
4, 7, 8, 14, 21, and 22 of the ’775 Application.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED