Paradis, Duane et al.

Patent Trials and Appeals Board

Jan 28, 2020

13973680 - (D) (P.T.A.B. Jan. 28, 2020)

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.
13/973,680 08/22/2013 Duane Paradis 7769D 5071
29602 7590 01/28/2020
JOHNS MANVILLE
10100 WEST UTE AVENUE
PO BOX 625005
LITTLETON, CO 80162-5005
EXAMINER
PIZIALI, ANDREW T
ART UNIT PAPER NUMBER
1789
NOTIFICATION DATE DELIVERY MODE
01/28/2020 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):
lavoie@jm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DUANE PARADIS and MANDY B. SCHWEITZER
Appeal 2019-002870
Application 13/973,680
Technology Center 1700
Before LINDA M. GAUDETTE, JAMES C. HOUSEL, and
JANE E. INGLESE, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL1
The Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 5, 9, 10 and 12–16 under 35 U.S.C. § 103(a)
as unpatentable over Harkins (US 4,698,258, issued October 6, 1987) in

1 This Decision includes citations to the following documents: Specification
filed (“Spec.”); Final Office Action dated May 22, 2018 (“Final”); Appeal
Brief filed October 19, 2018 (“Appeal Br.”); Examiner’s Answer dated
December 31, 2018 (“Ans.”); and Reply Brief filed February 22, 2019
(“Reply Br.”).
2 We use the word “Appellant” to refer to the “Applicant” as defined in 37
C.F.R. § 1.42. The Appellant identifies the real party in interest as Johns
Manville. Appeal Br. 1.
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view of Gluck (US 4,572,865, issued February 25, 1986) and von
Kwiatkowski (US 4,774,107, issued September 27, 1988).3, 4
We AFFIRM.
CLAIMED SUBJECT MATTER
The invention relates to a composite board containing glass fiber mat
and a method of manufacture therefor. Claim 13, reproduced below, is
illustrative of the claimed subject matter:
13. A method of making a composite board comprising:
providing a first glass fiber mat having an upper surface
and a lower surface;
applying a first binding composition to the upper surface
of the first glass fiber mat which penetrates into the glass fiber
mat beyond the upper surface;
applying a second binding composition to the lower
surface of the first glass fiber mat which penetrates into the first
glass fiber mat beyond the lower surface;
injecting a thermosetting polymer foam onto the upper
surface of the first glass fiber mat;
providing a second glass fiber mat having an upper
surface and a lower surface;
applying a third binding composition to the upper surface
of the second glass fiber mat which penetrates into the second
glass fiber mat beyond the upper surface;
applying a fourth binding composition to the lower
surface of the second glass fiber mat which penetrates into the
second glass fiber mat beyond the lower surface;

3 We have jurisdiction under 35 U.S.C. § 6(b).
4 The Examiner has withdrawn the rejection of claims 5, 9, 10 and 12–16
under 35 U.S.C. § 103(a) as unpatentable over Gluck in view of Harkins and
von Kwiatkowski. Ans. 3.

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wherein the viscosities of the first, second, third and
fourth binding compositions are controlled such that the air
permeability of both the first glass fiber mat and the second
glass fiber mat is at least 300 seconds for 300 cubic centimeters
of air to pass through 1 square inch;
maintaining the second glass fiber mat spaced apart from
the thermosetting polymer foam prior to heating and curing the
thermosetting polymer foam; and
heating the thermosetting polymer foam until the
thermosetting polymer foam cures, adheres to the upper surface
of the first glass fiber mat, and rises to the lower surface of the
second glass fiber mat and adheres to the lower surface of the
second glass fiber mat.
Appeal Br. 14–15 (Claims Appendix) (emphasis added).

OPINION
The Appellant argues the claims as a group. See generally Appeal Br.
3–8. Accordingly, we decide the appeal as to all claims subject to the
rejection on the basis of claim 13. See 37 C.F.R. § 41.37(c)(iv).
The Examiner found that Harkins discloses Appellant’s claimed
method of making a composite board comprising first and second fiber mats
and a thermosetting polymer foam with the exception of the last two steps of
“maintaining” and “heating.” Final 3; see claim 13 (italicized language)
supra. The Examiner found that Gluck discloses a method of making a
composite board that includes the claimed “maintaining” and “heating”
steps, and discloses that these steps are useful in controlling board thickness,
providing flat board surfaces, and securely interlocking a thermosetting
foam with fibrous layers. Id. (citing Gluck 4:19–30, 8:11–9:7). Based on
Gluck’s disclosure of these benefits, the Examiner found that one of
ordinary skill in the art at the time of the invention would have modified
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Harkins’s method by maintaining the second glass fiber mat spaced apart
from the thermosetting polymer foam prior to heating, and by curing the
thermosetting polymer foam such that the foam rises to the lower surface of
the second glass fiber mat. Id. at 3–4; see claim 13 (italicized language)
supra p. 3.
The Appellant argues that Harkins and Gluck utilize entirely different
methods and that the ordinary artisan would not have combined their
teachings. See generally Appeal Br. 5–7. The Appellant contends that
Harkins utilizes mats that are of a closed nature, i.e., mats that have been
impregnated fully with binding compositions such that they have limited air
permeability. Id. at 6–7. The Appellant argues that Harkins adds, e.g.,
laminates, the second mat to the composite board only after applying a
foamed layer to the first mat and curing the layer. Id. at 6. The Appellant
contends that Gluck’s method requires mats that are of an open nature, so
that when a foamed layer is added, the foam penetrates the mats. Id. at 7. In
other words, Gluck’s “method must involve glass mats that do not meet the
air permeability requirements of the mats in the present claimed method.” Id.
The Appellant thus argues that “[t]he two references cannot be combined as
suggested by the Examiner without destroying the very essence of at least
one of the methods taught.” Id.
The Appellant’s arguments do not persuade us of reversible error in
the Examiner’s conclusion of obviousness. As noted by the Examiner, the
Appellant’s argument that Gluck requires mats that are of an open nature—a
higher porosity than claimed—is not supported by Gluck’s disclosure. Ans.
7. To the contrary, Gluck discloses a method that may be used with “a wide
variety of fibrous layers or mats,” including “more difficult[] penetrable
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facing materials.” Gluck 16:45–58. Although the Appellant observes
correctly that in Gluck’s process, the foamed layer material penetrates the
glass mats to ensure secure interlocking (Appeal Br. 5), Gluck clearly
counsels against “excessive penetration which would be wasteful” (Gluck
16:55–59).
Harkins discloses that a barrier coating applied to an impregnated
fiber glass web provides a strong bond between the web and a foamed layer,
and that the “layers tend to perform after fusion more like a homogeneous
composite than a layered composite with marked delamination tendencies at
the various interfaces.” Harkins 10:40–45. Given Harkins’s disclosure that a
strong bond can be achieved without penetration of the foamed material into
the glass web, and Gluck’s teaching that excessive penetration is wasteful,
we are not persuaded of error in the Examiner’s finding that the ordinary
artisan would have had a reasonable expectation of success in achieving a
strong bond between Harkins’s coated fiber glass web and foamed layer
when using Gluck’s method of maintaining the second glass fiber mat
spaced apart from the thermosetting polymer foam prior to heating, and then
curing the thermosetting polymer foam such that the foam rises to the lower
surface of the second glass fiber mat.
The Appellant also has not shown error in the Examiner’s finding that
the ordinary artisan would have been motivated to modify Harkins’s method
to utilize Gluck’s maintaining and heating (curing) steps based on Gluck’s
teaching that these steps are useful in controlling board thickness and
providing flat board surfaces, both of which Harkins identifies as desirable.
See Final 3; Gluck 8:53–9:3; Harkins 4:21–26, 33–40, 8:10–22; see
generally Appeal Br. 4–7. We also observe that the Appellant does not
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dispute the Examiner’s finding that “the binder impregnated glass fiber mats
of Harkins inherently possess the claimed air permeability.” Final 5; see
generally Appeal Br. 4–7.
Any arguments made by the Appellant in the Appeal and Reply
Briefs, but not discussed explicitly in this decision, have been considered
fully, but are not persuasive of reversible error for the reasons expressed in
the Final, the Advisory Action dated August 1, 2018, and the Answer.
CONCLUSION
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
5, 9, 10,
12–16
103(a) Harkins, Gluck, von
Kwiatkowski
5, 9, 10,
12–16

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)(iv).
AFFIRMED