Ex Parte Spittle

Patent Trial and Appeal Board

Aug 22, 2017

13926114 (P.T.A.B. Aug. 22, 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.
13/926,114 06/25/2013 Kevin S. Spittle PRFL 0268 PUS 1 1979
22045 7590 08/24/2017
RROOKS KTTSHMAN P C EXAMINER
1000 TOWN CENTER NGUYEN, SON T
TWENTY-SECOND FLOOR
SOUTHFIELD, MI 48075 ART UNIT PAPER NUMBER
3643
NOTIFICATION DATE DELIVERY MODE
08/24/2017 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):
docketing @brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEVIN S. SPITTLE
(Applicant: Profile Products L.L.C.)
Appeal 2015-006117
Application 13/926,114
Technology Center 3600
Before EDWARD A. BROWN, ARTHUR M. PESLAK, and
SEAN P. O’HANLON, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Kevin S. Spittle (“Appellant”) appeals under 35 U.S.C. § 134(a) from
the Examiner’s decision rejecting claims 21—40.1 We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Appellant submits the real party in interest is Profile Products L.L.C.
Appeal Br. 3.
Appeal 2015-006117
Application 13/926,114
THE CLAIMED SUBJECT MATTER
Claim 21, reproduced below, is illustrative of the claimed subject
matter.
21. A thermally consolidated fiber mulch mat,
comprising:
a) in excess of from 50% by weight, relative to the
weight of the fiber mulch mat, of natural fibers;
b) about 3 to about 30% by weight, relative to the weight
of the fiber mulch mat, of synthetic fibers, at least a portion of
the synthetic fibers being bicomponent fibers comprising a core
of high melt temperature synthetic polymer and a sheath of low
melt temperature synthetic polymer in the bicomponent fibers,
the fiber mulch mat being of an open construction which
encourages germination of seeds and allows seedlings to
penetrate the mat, the fiber mulch mat being free of polymer
netting.
REJECTIONS
1) Claims 21, 24—29, and 31—40 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Jacobsen (US 5,484,501, issued Jan. 16,
1996) and Girard (US 2005/0246950 Al, published Nov. 10,
2005).
2) Claims 22 and 23 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Jacobsen, Girard, and Christie (US
2003/0060113 Al, published Mar. 27, 2003).
3) Claim 30 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Jacobsen, Girard, and Spittle (US 6,360,478 Bl, issued Mar. 26,
2002).
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DISCUSSION
Rejection 1
Appellant argues claims 21, 24—29, and 31—38 as a group. Appeal Br.
5—14. We select claim 21 as representative, and claims 24—29 and 31—38
stand or fall with claim 21. 37 C.F.R. § 41.37(c)(iv). We address
Appellant’s arguments concerning claims 39 and 40 separately.
The Examiner finds that Jacobsen discloses the limitations of claim 21
except for the recited “bicomponent fibers comprising a core of high melt
temperature synthetic polymer and a sheath of low melt temperature
synthetic polymer.” Final Act. 2—3. The Examiner finds that Girard
discloses the recited bicomponent fibers. Id. at 3 (citing Girard 127). The
Examiner concludes it would have been obvious to substitute Girard’s
bicomponent fibers for Jacobsen’s “two or more thermoplastic fibers . . .
because the combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
Id.
Appellant acknowledges that “Jacobsen teaches that his product may
be netless (no polymer grid).” Appeal Br. 5. However, Appellant contends
that Girard is non-analogous art because it “is not directed to fiber mulch
mats for use in seed germination, but to fibrous mulches for preventing seed
growth.” Id. at 5—6. Appellant next contends that even if Girard is
analogous art, “there is no motivation to combine Jacobsen and Girard.” Id.
at 8. In support of this contention, Appellant argues that Jacobsen’s mat is
“light and fluffy” while Girard’s mats are made of “mulch paper,” which is
“heavy and dense,” and one of ordinary skill in the art would not be
motivated to look to Girard to modify Jacobsen. Id. at 9—10. Appellant next
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contends that selecting Girard’s bicomponent fibers as opposed to other
materials is based on “impermissible hindsight.” Id. at 11. Appellant next
contends that Girard teaches away from the claimed invention, and claim 21
specifically recites the “mat being free of polymer netting.” Id. at 11—12.
Appellant further argues that Girard’s mat “prevents seed germination” in
contrast to claim 21 which recites the mat “encourages germination of
seeds.” Id. at 12—13. Appellant lastly contends that the claimed invention
results in “surprising and unexpected results” and is commercially
successful. Id. at 14.
The Examiner responds that Girard is analogous art because it relates
to mulch, which is the same field of endeavor as claim 21. Ans. 9—10. In
addition, the Examiner explains that Girard is relied on to disclose the
recited bicomponent fibers, not for teaching prevention of seed growth. Id.
at 10. The Examiner also asserts that Appellant’s argument relating to
whether Girard’s paper is “heavy and dense” and prevents germination of
seedlings is not supported by factual evidence from Girard. Id. at 13, 16—17.
The Examiner responds that Appellant fails to satisfy the evidentiary
requirements to establish secondary considerations of non-obviousness. Id.
at 14, 18 (citing MPEP §§ 716.03, 716.04). For the following reasons, we
sustain the rejection of claim 21.
We first note that Appellant does not dispute the Examiner’s findings
based on Jacobsen, including that Jacobsen discloses a mat without a
polymer netting. Final Act. 2—3; Appeal Br. 5—14. Girard discloses a
bicomponent fiber in “the form of a core, having a first melting point
surrounded by a sheath having a second lower melting point.” Girard 27.
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Appellant does not dispute that Girard discloses bicomponent fibers
substantially as recited in claim 21. Appeal Br. 5—14.
We now address Appellant’s contention that Girard is non-analogous
art. The Federal Circuit has explained that “[t]wo separate tests define the
scope of analogous prior art: (1) whether the art is from the same field of
endeavor, regardless of the problem addressed and, (2) if the reference is not
within the field of the inventor's endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the inventor is
involved.” In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011); see also In re
ICON Health and Fitness, Inc., 496 F.3d 1374, 1379-80 (Fed. Cir. 2007).
Appellant’s argument is based on a misconception of the first test for
analogous art. Appellant submits that Girard is directed to “fibrous
mulches,” which sounds “similar” to Appellant’s field of endeavor, i.e., a
“fiber mulch mat.” Appeal Br. 6. Appellant then asserts that Girard is
“diametrically opposed” to Appellant’s field of endeavor because Girard is
directed to solving a different problem than Appellant; namely, Girard is
directed to preventing seed germination.2 Id. We are, thus, not persuaded
that Girard is non-analogous art because both Girard and Appellant’s claim
21 are directed to the field of fiber mulch mats, and even if Girard may be
directed to solving a different problem than Appellant, this is not relevant to
the first test for analogous art noted above.
Appellant next contends that Girard teaches away from the claimed
invention. Appeal Br. 11—12. Appellant asserts Girard’s salient feature is a
polymer net around its mat, contrary to claim 21, and any rejection based on
2 We note that Appellant does not direct us to any specific disclosure where
Girard teaches the prevention of seed germination. See Appeal Br. 6.
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Girard must include this salient feature. Id. at 12. This argument
misconstrues the rejection and fails to establish that Girard teaches away
from the claimed invention. The Examiner modifies Jacobsen’s mulch mat,
not Girard’s mat, by substituting Girard’s bicomponent fibers for Jacobsen’s
thermoplastic fibers. See Final Act. 3. When a prior art reference discloses
a different solution to a similar problem, it does not teach away from the
claimed subject matter unless the prior art reference also criticizes,
discredits, or otherwise discourages the solution claimed. See Crocs, Inc. v.
U.S. International Trade Commission, 598 F.3d 1294, 1308 (Fed. Cir. 2010)
(Prior art taught away by specifically discouraging use of foam straps.); In re
Fulton, 391 F. 3d 1195, 1201 (Fed. Cir. 2004). Appellant does not direct us
to any disclosure in Girard that criticizes, discredits, or discourages use of a
mat without a polymer netting as claimed. Appellant’s teaching away
argument is, thus, not persuasive.
Appellant next contends, based on a declaration by Kevin Spittle (“the
Spittle Decl.”), that the claimed mat surprisingly and unexpectedly results in
a higher water holding capacity than the Jacobsen mat, and is also stronger
than the Jacobsen mat despite not having a polymer grid. Appeal Br. 14
(citing Spittle Decl. 1 5). The Spittle Declaration, however, does not set
forth any objective data concerning the Jacobsen mat, or any comparison
between mats in accordance with claim 21 and the Jacobsen mat. Rather,
the mats in accordance with claim 21 are compared to Appellant’s prior
Futerra® mats, which have a polymer netting. Spittle Decl. H 4—5. In order
to establish unexpected results and rebut a prima facie case of obviousness,
the claimed invention must be compared to the closest prior art. See In re
Mayne, 104 F.3d 1339, 1343—44 (Fed. Cir. 1997) (“An applicant may make
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this showing with evidence that the claimed invention exhibits some superior
property or advantage that a person of ordinary skill. . . would find
surprising.” (emphasis added)); In re Burckel, 592 F. 2d 1175, 1179 (CCPA
1979). In this case, Jacobsen discloses a mat without netting. Jacobsen
3:49—54. Appellant’s argument that the Spittle Declaration establishes
unexpected results of the claimed fiber mulch mat compared to Jacobsen’s
mats is not supported by any evidence in the Spittle Declaration. Appellant
has not established, with evidence, that the claimed fiber mulch mat provides
unexpected advantages over the Jacobsen mat.
Appellant next contends that the claimed fiber mulch mats have been
a commercial success and states that “as a secondary consideration, despite
substantially no advertising, the non-netted product completely supplanted
the commercial, netted product (Jacobsen).” Appeal Br. 14 (referring to the
Spittle Declaration). In order for evidence of commercial success to be
accorded substantial weight, Appellant must show that the claimed features,
not some other reason, such as an advertising campaign, are responsible for
the commercial success. See Pentec, Inc. v. Graphic Controls Corp., 776
F.2d 309, 316 (Fed. Cir. 1985); In re Huang, 100 F.3d 135, 140 (Fed. Cir.
1996). The Spittle Declaration does not state that there was “substantially
no advertising” of the non-netted product, but, rather, that there was
“substantially the same amount of advertising to the relevant market” of the
non-netted product as the netted product. Spittle Decl. 1 6 (emphasis
added). We also note that the Spittle Declaration does not provide any
evidence of the “relevant market,” nor does it provide any evidence
quantifying the amount of money spent on advertising either the netted or
non-netted mats. Id. Tffl 6—7.
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In addition, “if the feature that creates the commercial success was
known in the prior art, the success is not pertinent.” Ormco Corp. v. Align
Technology, Inc., 463 F.3d 1299, 1312 (Fed. Cir. 2006). Appellant attributes
the commercial success of the claimed fiber mulch mats to “the lack of
polymer netting.” Spittle Decl. 1 6. As noted above, Jacobsen discloses a
non-netted mat and, therefore, any commercial success resulting from the
non-netted feature is not pertinent because this feature was known in the
prior art.
Finally, the Spittle Declaration provides gross sales figures for various
years for the claimed mulch mat, but provides no quantification of market
share for those years. Id. Sales figures “without evidence of market share is
only weak evidence of commercial success.” In re Applied Materials, 692
F.3d 1289, 1299 (Fed. Cir. 2012), citing In re Huang, 100 F. 3d 135, 140
(Fed. Cir. 1996). Based on all the foregoing, the Spittle Declaration shows
that the sales of the claimed fiber mulch mat increased for several years after
the introduction of the claimed fiber mulch mats, but the fact that the
increased sales are attributed hy Appellant to the non-netted feature
disclosed in the prior art and the absence of market share information weigh
against Appellants’ position that the claimed product was “commercially
successful.”
Appellant also makes two somewhat-related arguments that “there is
no motivation to combine Jacobsen and Girard” and the rejection is based
on impermissible hindsight. Appeal Br. 8,11. In connection with these
arguments, we note that the “obviousness analysis cannot be confined by a
formalistic conception of the words teaching, suggestion, and motivation.”
KSR Intern. Co. v Teleflex Inc., 550 U.S. 398, 419 (2007). Rather, the
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Examiner must provide ‘“some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.’” Id. at 418,
citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). Similarly, an
argument that the rejection is based on impermissible hindsight is fully
addressed where the Examiner states a reason supported by a rational
underpinning for the rejection. See In re Cree, 818 F.3d 694, 702 n.3 (Fed.
Cir. 2016).
We have considered all of Appellant’s arguments and determine that
they fail to apprise us of error in the Examiner’s factual findings or rationale,
quoted above, for the combination of Jacobsen and Girard, which we
determine to be reasonable and supported by rational underpinnings. See
KSR, 550 U.S. at 416 (“[t]he combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results.”). We have also considered Appellant’s arguments that
the claimed invention yields surprising or unexpected results and has been a
commercial success, and determined that Appellant has not provided the
requisite evidence to establish either unexpected results or commercial
success. We, thus, sustain the rejection of claim 21 under 35 U.S.C.
§ 103(a). Claims 24—29 and 31—38 fall with claim 21.
Claims 39 and 40 relate to a “process for establishing germination in a
seed bed” utilizing the fiber mulch mat of claim 21 and claim 27,
respectively. Appeal Br. (Claims App. 3.). The Examiner rejects claims 39
and 40 based on the combination of Jacobsen and Girard, relying
substantially on the same findings and reasoning as for claims 21 and 27.
Final Act. 6—7. Appellant raises the same argument stated above that Girard
is diametrically opposed to a process of establishing seed germination.
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Appeal Br. 13. The Examiner, however, relies on Jacobsen, not Girard, for
establishing seed germination. Final Act. 3. Appellant’s argument,
therefore, does not address the rejection, and we sustain the rejection of
claims 39 and 40.
Rejection 2
Claim 22 depends from claim 21 and recites that the bicomponent
fibers “contain a polyester core and a polyolefin sheath.” Appeal Br.
(Claims App. 1). Claim 23 depends from claim 21 and recites “the
bicomponent fibers have a core of polyester and a sheath of a lower melt
temperature polyester.” Id. The Examiner finds that Christie discloses “well
known bicomponent fibers [that] contain a polyester core and a polyolefin
sheath” and concludes it would have been obvious to substitute the
bicomponent fibers of Christie for the bicomponent fibers resulting from the
combined teaching of Jacobsen and Girard “because the combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” Final Act. 7. Appellants
contend that Christie “is directed to acoustic ceiling tiles, not fiber seed
growth mats, nor seed germination-preventing paper mulch . . . nor . . . any
problem solved by Appellant.” Appeal Br. 14—15.
Christie is directed to “acoustical panels.” Christie 11. Christie
discloses “a flexible acoustical panel that can be molded and embossed and
that is highly acoustically absorbent and possesses a smooth paintable
surface.” Id. 1 8.
The Examiner has not adequately explained why one of ordinary skill
in the art would have looked to Christie’s flexible acoustical panels that
absorb sound to solve a problem associated with fiber mulch mats.
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Therefore, we do not sustain the rejection of claims 22 and 23 because the
rejection is not supported by a rational underpinning.
Rejection 3
Claim 30 depends from claim 21. Appeal Br. (Claims App. 2).
Appellant argues that claim 30 is patentable for the same reasons as claim
21. Appeal Br. 15. We sustain the rejection of claim 30 for the same
reasons stated for claim 21.
DECISION
The Examiner’s decision rejecting claims 21 and 24-40 is affirmed.
The Examiner’s decision rejecting claims 22 and 23 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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