Ex Parte Potter et al

Patent Trial and Appeal BoardAug 25, 2017

13433721 (P.T.A.B. Aug. 25, 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. 13/433,721 03/29/2012 Russell M. Potter 27544/04845 9711 13538 7590 08/29/2017 Calfee, Halter & Griswold LLP The Calfee Building 1405 East Sixth Street Cleveland, OH 44114-1607 EXAMINER VINEIS, FRANK J ART UNIT PAPER NUMBER 1786 NOTIFICATION DATE DELIVERY MODE 08/29/2017 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): ipdocket @ c alfee .com bmgipdept@owenscorning.com wfrick @ c alfee. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RUSSELL M. POTTER, PATRICK M. GAVIN, WILLIAM J. GRIECO, and MANOJ K. CHOUDHARY1 Appeal 2017-000641 Application 13/433,721 Technology Center 1700 Before DONNA M. PRAISS, N. WHITNEY WILSON, and AVELYN M. ROSS, Administrative Patent Judges. ROSS, Administrative Patent Judge. DECISION ON APPEAL2 Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims 1—3, 6—15, 17, and 19—21. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Appellants identify the real party in interest as Owens Coming Intellectual Capital LLC. Appeal Br. 3. 2 In our Decision we refer to the Specification (“Spec.”) filed March 29, 2012 as amended, the Final Office Action (“Final Act.”) dated June 30, 2015, the Appeal Brief (Appeal Br.) filed June 8, 2016, the Examiner’s Answer (“Ans.”) dated August 12, 2016, and the Reply Brief (“Reply Br.”) filed October 11,2016. Appeal 2017-000641 Application 13/433,721 STATEMENT OF THE CASE The subject matter on appeal relates to a fibrous insulation product having an improved thermal resistance and method of “improving the capability of the insulation material to block the transfer of radiant heat by distributing the opacifier more uniformly throughout the fibrous matrix.” Spec. 12. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method of making a fibrous insulation product, comprising: coating inorganic base fibers with an aqueous composition comprising an opacifying agent to provide an opacified base fiber that is substantially uniformly coated with opacifying agent, contacting the opacified base fiber with a binder, after coating the inorganic base fibers with the aqueous composition comprising the opacifying agent, to form a matrix of [hjindered opacified base fibers, wherein the binder is applied without removing the coating of opacifier on the base fiber such that the opacified base fibers remain substantially uniformly coated with opacifying agent, wherein the fibrous insulation product has greater thermal resistivity than an otherwise identical fibrous product made with otherwise identical base fibers that are not coated with the opacifying agent. Appeal Br. 17 (Claims App’x) (emphasis added). REJECTIONS The Examiner maintains the following rejections: A. Claims 1—3, 6—9, 11—15, 17, and 19—21 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Houpt3 in view of Tripp.4 Final Act. 2. 3 Houpt et al., US 2008/0171201 Al, published July 17, 2008 (“Houpt”). 4 Tripp et al., US 2004/0161993 Al, published August 19, 2004 (“Tripp”). 2 Appeal 2017-000641 Application 13/433,721 B. Claim 10 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Houpt in view of Tripp and further in view of Burlone.5 Id. at 5. Appellants argue rejections A and B together, and argue the claims as a group. See Appeal Br. 10. Because our reason for reversing the rejection of claim 1—i.e., the lack of evidence in the record to show that it would have been obvious to apply a binder after the inorganic base fibers are coated with an aqueous opacifying agent—also applies to the rejection of independent claim 11 as well as the dependent claims, we focus our discussion below on claim 1. OPINION The Examiner rejects claims 1 and 11 as obvious over Houpt in view of Tripp. Final Act. 2. The Examiner finds that Houpt teaches a fiberglass material made of glass fibers and graphite. Id. The graphite fibers, or opacifying agents, are applied to the glass fibers as an aqueous composition and uniformly coat the glass fibers. Id. The Examiner further finds that “binders may be applied to the glass fibers” and that “the graphite loose-fill fiberglass may be bonded or non-bonded.” Id. The Examiner acknowledges that “Houpt does not teach that the binder is applied such that the coating of the opacifier is not removed” but finds that Tripp discloses inorganic fibers that are uniformly combined with plastic bonding fibers that “are uniformly blended together into a mat, where the plastic containing bonding fiber act[s] as the binding agent for the mat after the mat is heated in a curing oven.” Id. 5 Burlone et al., US 2001/0049421 Al, published December 6, 2001 (“Burlone”). 3 Appeal 2017-000641 Application 13/433,721 at 3. The Examiner reasons that a person skilled in the art would have found the proposed modification obvious in order to “avoid the pollution and cleanup associated with the use of a conventional binder as taught by Tripp.” Id. The Examiner further rationalizes that one of ordinary skill would have been motivated to apply the plastic fibers of Tripp after the application of the opacified fibers of Houpt because Houpt explains that the heat of the fiberization process vaporizes the water from the aqueous graphite dispersion. Id. “Thus[,] in order to maintain the ability of the water to vaporize, the aqueous solution must be applied immediately after fiberization of the glass fiber.” Id. Appellants argue two-fold: (1) “Houpt does not teach applying a binder to base fibers after applying an aqueous composition comprising an opacifying agent” and (2) “one of ordinary skill in the art would have had no motivation or rationale underpinning at the time of the instant application was filed, to modify the fiberglass material of Houpt to include the plastic containing binding fibers of Tripp.” Appeal Br. 10. Because we agree with Appellants’ first argument, we do not reach the second argument. We are persuaded of reversible error by the Examiner because Houpt fails to teach or suggest a method (or product) where the binder is applied after the base fibers are coated with the opacifying agent to form the matrix, or batt. The Examiner admits as much. Ans. 9 (explaining Appellants are correct “that Houpt does not teach applying a binder to base fibers after applying an aqueous solution comprising an opacifying agent”).6 But, nevertheless, the Examiner maintains there is reason 6 The Examiner relies solely on Houpt as support for the finding that it would have been obvious to apply the binder after coating the inorganic 4 Appeal 2017-000641 Application 13/433,721 to contact the plastic fiber (as taught by Tripp) with the opacified fiber (as taught by Houpt) after coating the inorganic base fiber with the opacifying agent because Houpt teaches the glass fibers having graphite evenly distributed thereon are formed by coating an aqueous graphite dispersion on virgin glass fiber immediately after the fiberization process where the heat from the fiberization process vaporizes the water leaving behind the graphite powder (see 127 and 134, Example 1). Final Act. 3. The Examiner has not adequately explained how the fact that Houpt teaches heat from the fiberization process vaporizes water to leave behind the graphite powder necessarily suggests the claimed order of steps. Moreover, when read as a whole, Houpt suggests adding the binder and opacifying agent at the same time or adding the binder before the opacifying agent—not after. For example, Houpt suggests the addition of a binder concurrently with the opacifying agent. The fibers, while in transit in the forming chamber and while still hot from the drawing operation, are sprayed with an aqueous binder solution. In addition to binders, an anti-static composition . . . may also be sprayed onto the surface of glass fiber mats. The residual heat from the glass fibers and the flow of cooling air through the fibrous mat during the forming operation generally evaporates most of the water from the binder and any anti-static composition .... [Houpt 1 4 (emphasis added)]. ft is to be understood that other substances such as including a de-dusting oil, silicone, a dye or a binder may also be applied to glass fibers with an opacifying agent because “Houpt teaches the heat from the process of forming the glass fibers helps to vaporize the water in the graphite/water dispersion.” See Ans. 9; see also Final Act. 3 (“in order to maintain the ability of the water to vaporize, the aqueous solution must be applied immediately after fiberization of the glass fiber.”) (citing Houpt). Thus, Appellants are justified in focusing their discussion on the teachings of Houpt. 5 Appeal 2017-000641 Application 13/433,721 the glass fibers together with the graphite powder or the graphite dispersion. [Id. 114 (emphasis added)]. And, Houpt explains that graphite powder, i.e., an opacifying agent, may be applied to bonded or non-bonded loose-fill fiberglass. Id. 123. If applied to bonded loose-fill insulation, the fiberglass has already been treated with a binder. Id.', see also id. 25, 26, and 32. Therefore, the totality of Houpt suggests application of the binder either simultaneously with the opacifying agent or before the addition of the opacifying agent and the Examiner’s suggestion otherwise hints of hindsight. On this record, we cannot sustain the Examiner’s rejections. CONCLUSION Appellants have identified a reversible error in the Examiner’s rejection of claims 1—3, 6—9, 11—15, 17, and 19—21 under 35 U.S.C. § 103(a) as being unpatentable over Houpt in view of Tripp. Appellants have identified a reversible error in the Examiner’s rejection of claim 10 under 35 U.S.C. § 103(a) as being unpatentable over Houpt in view of Tripp and further in view of Burlone. DECISION For the above reasons, the Examiner’s rejection of claims 1—3, 6—15, 17, and 19—21 is reversed. REVERSED 6