Gary E. Romes

Patent Trials and Appeals BoardAug 8, 2019

12557575 - (D) (P.T.A.B. Aug. 8, 2019)

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. 12/557,575 09/11/2009 Gary E. Romes 20121-233104 4680 23643 7590 08/08/2019 Barnes & Thornburg LLP (IN) 11 S. Meridian Street Indianapolis, IN 46204 EXAMINER GOLDEN, CHINESSA T ART UNIT PAPER NUMBER 1788 NOTIFICATION DATE DELIVERY MODE 08/08/2019 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): INDocket@btlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte GARY E. ROMES ____________________ Appeal 2018-004116 Application 12/557,575 Technology Center 1700 ____________________ Before JEFFREY B. ROBERTSON, DONNA M. PRAISS, and DEBRA L. DENNETT, Administrative Patent Judges. PRAISS, Administrative Patent Judge. DECISION ON APPEAL1 STATEMENT OF THE CASE Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s final decision to reject claims 1–3, 5–14, and 17–23 as obvious under 35 U.S.C. § 103. We have jurisdiction under 35 U.S.C. § 6(b). 1 In this decision, we refer to the Specification filed Sept. 11, 2009 (“Spec.”), the Final Office Action mailed Oct. 4, 2016 (“Final Act.”), the Appeal Brief filed June 1, 2017 (“App. Br.”), the Examiner’s Answer mailed Jan. 11, 2018 (“Ans.”), and the Reply Brief filed Mar. 9, 2018 (“Reply Br.”). 2 Appellant identifies Knauf Insulation, LLC as the real party in interest. App. Br. 1. Appeal 2018-004116 Application 12/557,575 2 We AFFIRM. The subject matter on appeal relates to a pre-assembled laminate insulation product comprising a first layer of a fibrous insulation material attached to a second air barrier layer that may be made from a flexible foam material. Spec. 3:1–15. According to the Specification, “any suitable foam material may be used” for the air barrier layer, which is attached to the fibrous insulation material of the first layer “using any suitable technique.” Id. at 3:15–28. The Specification states “no adhesive may be needed” when the foam material is “formed directly on the fibrous insulation material.” Id. at 3:29–31. Independent claim 1 is illustrative (disputed matter italicized): 1. A pre-assembled spirally wound insulation product configured to be unwound and applied to a surface for insulating the surface consisting of a first layer laminated to a second layer, the first layer consisting of a batt of fibrous insulation material laminated to a backing material, the second layer consisting of a foam air barrier layer wherein at least a portion of the fibrous insulation material is attached to the foam air barrier layer by forming the foam air barrier on the fibrous insulation material. App. Br. 13 (Claims Appendix). Independent claim 17 is similar to claim 1, but additionally recites “the foam material compris[es] a polyurethane foam” and requires thicknesses of the first and second layers of “about 2 inches to about 12 inches” and “about 0.25 inches to about 2 inches,” respectively. Id. at 14. Appeal 2018-004116 Application 12/557,575 3 OPINION The Examiner rejected claims 1–3, 5–14, and 17–23 under 35 U.S.C. § 103 over the combination of Bose3 and Romes4 alone and together with additional prior art references, including Bogrett.5 Final Act. 2–18. Appellant argues the rejections of claims 1, 3, 6, 12, 13, 17, 20, and 23. App. Br. 3–11. In accordance with 37 C.F.R. § 41.37(c)(1)(iv), claims 2, 5, 7, and 11 will stand or fall together with independent claim 1, claims 8–10 and 14 will stand or fall together with claims 6, and claims 18, 19, 21, and 22 will stand or fall together with independent claim 17. Claim 1 Appellant argues that the Examiner erred in rejecting claim 1 over Bose and Romes because (1) Romes does not teach or suggest “attached” layers “by forming the foam air barrier on the fibrous insulation material,” and (2) it would not have been obvious to modify Bose with Romes “because Bose has air flow obstruction layer 14 and an additional air flow obstruction layer would be redundant.” App. Br. 4–6. According to Appellant, Romes does not disclose or suggest attachment of the foam layer because it provides a foam layer in a cavity and then provides a fiberglass layer in the cavity. Id. at 5 (citing Romes ¶¶ 13–16, 25, 27). In addition, Appellant asserts that Romes provides the foam to compensate for the effects of air flow through the fiberglass batt, however, Bose’s fiberglass batt is adhered to facing sheet 14, therefore it would not have been obvious 3 U.S. Patent No. 4,952,441, issued Aug. 28, 1990. 4 U.S. Published Application No. 2006/0272280 A1, published Dec. 7, 2006. 5 U.S. Patent No. 6,228,476 B1, issued May 8, 2001. Appeal 2018-004116 Application 12/557,575 4 to add Romes’s air flow foam obstruction layer. Id. at 5–6 (citing Romes ¶ 13; Bose 3:25–26). We are not persuaded by Appellant’s arguments that the Examiner reversibly erred in rejecting claim 1 under 35 U.S.C. § 103 for the reasons stated in the Final Action and the Answer. The Examiner’s finding (Ans. 19) that Romes discloses not only a “laminate” structure, but also an embodiment where the foam is provided over the fiberglass in the cavity so that the fiberglass is between the wall[s] or back of the cavity and the foam insulation, is supported by cited record in this appeal. (Romes ¶¶ 25, 27). In the Reply Brief, Appellant acknowledges that “Romes teaches that the foam is provided in either the cavity or the foam is provided over the fiberglass.” Reply Br. 3 (emphasis omitted). Appellant does not dispute the Examiner’s finding that Romes discloses a laminate (Ans. 19; Romes 27). Instead, Appellant argues that “Romes is completely silent as to the state of the foam air barrier or how the foam is formed.” Reply Br. 3. However, Appellant does not adequately explain why providing a foam layer over the fiberglass to form a laminate as taught by Romes does not teach or suggest the claim recitation “fibrous insulation material is attached to the foam air barrier layer by forming the foam air barrier on the fibrous insulation material.” App. Br. 3. Appellant does not direct us to any evidence in this record that “attached” and “forming” as recited in claim 1 are not met by providing a foam layer over the fiberglass to form a laminate as taught by Romes. Therefore, we are not persuaded by Appellant that the Examiner erred in finding that Romes discloses forming an air barrier foam layer on and attached to the fibrous insulation material layer as required by claim 1. Appeal 2018-004116 Application 12/557,575 5 Regarding the foam air barrier layer of Romes being redundant to Bose’s facing sheet 14 providing air flow obstruction, Appellant does not dispute the Examiner’s findings (Ans. 19–20) that Bose’s facing sheet 14 corresponds to the backing material required by claim 1 and that attaching Romes’s foam air barrier layer onto the first layer of Bose opposite the facing/backing layer would prevent air from flowing through the fiberglass and not be redundant. Appellant also does not dispute the Examiner’s finding (Ans. 20) that Romes teaches another benefit of its foam air barrier layer is to maintain intended R-values and, thus, provides an additional reason for modifying Bose with the teachings of Romes. The Examiner’s findings are supported by the record. Romes ¶¶ 4, 12, 13, 25. In sum, Appellant fails to show harmful error by the Examiner in rejecting claim 1 as obvious over the combination of Bose and Romes. Claims 13 and 23 Claims 13 and 23 depend from claim 1 and recite the foam air barrier as being “formed in-situ on the first layer by spraying a foam-making composition onto the first layer” (claim 13) and “forming the foam air barrier on the fibrous insulation material by spraying whereby the foam and fiber form a bond” (claim 23). Appellant argues that the Examiner erred in rejecting claims 13 and 23 over the combination of Bose and Romes because a person having ordinary skill in the art would not expect that Romes’s fibrous layer and foam layer form a bond because “the layers were merely placed one over the other.” App. Br. 7. Appellant also asserts that a skilled artisan “would readily understand the difference in the resulting structures” when a bond is formed from spraying or with an adhesive. Id. According to Appeal 2018-004116 Application 12/557,575 6 Appellant, spraying foam onto a fibrous material “provides a distinctive structural characteristic to the insulation product (e.g., the foam solidifies around fibers).” Id. We are not persuaded by Appellant’s arguments because they are not supported by the record. It is well settled that arguments of counsel cannot take the place of factually supported objective evidence. See, e.g., In re Huang, 100 F.3d 135, 139–40 (Fed. Cir. 1996); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Moreover, Appellant does not explain adequately why Romes’s laminate of fiberglass and foam insulation would not form a bond as the Examiner finds (22) nor does Appellant sufficiently describe a structural distinction between such an insulation product and the claimed insulation product. Accordingly, we find the preponderance of the evidence in this appeal record supports the Examiner’s rejection of claims 13 and 23 over the combination of Bose and Romes. Claims 3, 6, and 17 Appellant argues that the Examiner erred in rejecting claims 3, 6, and 17 because the secondary references cited by the Examiner for each of the claims do not cure the deficiencies of Bose and Romes identified in connection with claim 1. App. Br. 8, 9–10. Because we do not find Appellant’s arguments persuasive of error in the rejection of claim 1, we likewise are not persuaded that the Examiner reversibly erred in rejecting claims 3, 6, and 17. Appeal 2018-004116 Application 12/557,575 7 Claims 12 and 20 Claims 12 and 20 depend from independent claims 1 and 17, respectively, and require that the air barrier layer or foam material comprises an elastomeric foam. App. Br. 14, 15 (Claims Appendix). Appellant argues that the Examiner erred in rejecting claims 12 and 20 because Bogrett does not disclose an “elastomeric foam,” but, rather, an elastomeric coating to a foam layer. Id. at 9, 10. We are not persuaded by Appellant’s arguments because Appellant does not dispute the Examiner’s finding (Ans. 24) that the inclusion of a foam stabilizer in Bogrett’s “frothed elastomeric coating” shows that the frothed elastomeric coating is a foam. The Examiner’s finding is supported by the cited record in this appeal. Bogrett 3:20–35. Accordingly, we find the preponderance of the evidence in this appeal record supports the Examiner’s rejection of claims 12 and 20 over the combination of Bose and Romes with Bogrett. DECISION The Examiner’s rejections of claims 1–3, 5–14, and 17–23 are affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). AFFIRMED