3M INNOVATIVE PROPERTIES COMPANYDownload PDFPatent Trials and Appeals BoardDec 31, 20202020002655 (P.T.A.B. Dec. 31, 2020) Copy Citation 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. 15/102,393 06/07/2016 Richard P. Merry 69993US012 1061 32692 7590 12/31/2020 3M INNOVATIVE PROPERTIES COMPANY PO BOX 33427 ST. PAUL, MN 55133-3427 EXAMINER FORTUNA, JOSE A ART UNIT PAPER NUMBER 1748 NOTIFICATION DATE DELIVERY MODE 12/31/2020 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): LegalUSDocketing@mmm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte RICHARD P. MERRY, IAN R. I. HARDING, and GARY F. HOWORTH ____________ Appeal 2020-002655 Application 15/102,393 Technology Center 1700 ____________ Before N. WHITNEY WILSON, BRIAN D. RANGE, and MERRELL C. CASHION, JR., Administrative Patent Judges. CASHION, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from a Final Office Action, dated December 10, 2018, rejecting claims 1–12 and 16–23. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies “3M Company (formerly known as Minnesota Mining and Manufacturing Company) of St. Paul, Minnesota and its affiliate 3M Innovative Properties Company of St. Paul, Minnesota” as the real parties in interest. Appeal Br. 2. Appeal 2020-002655 Application 15/102,393 2 Final Act. 3; Appeal Br. 1–2.2 An oral hearing was held on December 10, 2020.3 We have jurisdiction under 35 U.S.C. § 6(a). We AFFIRM IN PART. The invention relates to making of nonwoven fibrous materials with inorganic fibers (for use, e.g., in pollution control devices, in fire stop applications, etc.) using an aqueous slurry that includes recycling of at least some of the waste water from an earlier used slurry. Spec. 1. According to the Specification, the use of neutral pH flocculents can cause the pH of a corresponding waste water to remain or become neutral, and if such neutral pH waste water is used in a subsequent slurry with the same or similar flocculent, the neutral pH waste water can result in the flocculent used in the subsequent slurry remaining sufficiently effective to produce a commercially acceptable inorganic fibrous material. Id. at 7. The Specification also defines the neutral pH flocculents as “any flocculent that produces a ‘neutral pH waste water’, regardless of what pH the flocculent exhibits.” Id. at 8. More specifically, the Specification discloses that “[a] neutral pH flocculent, according to the present invention, may be a flocculent that exhibits a relatively neutral pH by itself, especially 2 Appellant states that the separate rejection of claims 12, 21, and 23 under 35 U.S.C. § 103 is not being appealed. Appeal Br. 2. However, Appellant argues that this rejection should be reversed based on the arguments presented for claim 1. Id. at 9. Thus, we have conflicting statements regarding the rejections. We note the Examiner maintains the rejection of these claims under 35 U.S.C. § 103 based on Sako as the primary reference and the separate rejection under 35 U.S.C. §§ 102(a)(1)/103 based on a number of references in addition to Sako. Ans. 3. In view of this, we treat all rejections that the Examiner maintains as presented for review on appeal. 3 A written transcript of the oral hearing will be entered into the record when available. Appeal 2020-002655 Application 15/102,393 3 when compared to conventional Alum flocculents.” Id. Claim 1, reproduced from the Claims Appendix to the Appeal Brief, illustrates the invention: 1. A method of making nonwoven fibrous materials suitable for use in a pollution control device or as a firestop, said method comprising: providing a first slurry comprising water, first inorganic fibers, a first organic binder, and a first neutral pH flocculent, where the first slurry is used to form a first nonwoven fibrous material suitable for use in a pollution control device or as a firestop; removing first waste water from the first slurry; optionally forming a first nonwoven fibrous material from the first slurry; providing a second slurry comprising a quantity of the first waste water, an optional quantity of relatively clean water, second inorganic fibers, a second organic binder, and a second flocculent that is the same and/or a different flocculent than that used in the first slurry; and forming a second nonwoven fibrous material from the second slurry, wherein the addition of the first waste water in the second slurry does not adversely affect the flocculation of the second organic binder in the second slurry, and the second nonwoven fibrous material is suitable for use in a pollution control device or as a firestop. Independent claim 16 recites the second slurry used in claim 1 for making the nonwoven fibrous materials. Appeal 2020-002655 Application 15/102,393 4 The Examiner maintains the following rejections for review on appeal4, 5: I. Claims 1–12 and 16–23 rejected under 35 U.S.C. § 103 as being unpatentable over Sako (WO 2006/020058 A1, published February 23, 2006) in view of any of Lukemire (US 2,771,823, issued November 27, 1956), O’Brien (US 4,115,188, issued September 19, 1978), Frost (US 4,525,278, issued June 25, 1985), Hoffman ’809 (US 5,417,809, issued May 23, 1995), Meinander (US 5,567,278, issued October 22, 1996), Hoffman ’380 (US 6,071,380, issued June 6, 2000), and Au (Che On Au & Ian Thorn, “Applications of Wet-End Paper Chemistry,” Springer-Science+Business Media, B.V., first edition, pages 13–26 (1995)). II. Claims 12, 21, and 23 rejected under 35 U.S.C. § 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. § 103 as unpatentable over any of Sako, Dillon (US 2004/0137175 A1, published July 15, 2004), Merry (US 2005/0232827 A1, published October 20, 2005), De Rovere (US 2010/0115900 A1, published May 13, 2010), and Shirk (US 2010/0247399 A1, published September 30, 2010). OPINION Rejection I (35 U.S.C. § 103) After review of the respective positions of Appellant and the Examiner, we reverse the Examiner’s rejection of claims 1–11, 16–20, and 22 under 35 U.S.C. § 103 for essentially the reasons Appellant presents in 4 The Examiner withdrew the rejection under 35 U.S.C. § 112(a) (written description) presented in the Final Office Action. Ans. 3; Final Act. 2. Accordingly, this rejection is not before us for review on appeal. 5 Claim 23 is a product claim dependent from product-by-process claim 12. The Examiner indicates in the Final Office Action that claim 23 is rejected under 35 U.S.C. § 103. Final Act. 3. Because both rejections address product claims, we treat both rejections before us for review on appeal as including claim 23. Appeal 2020-002655 Application 15/102,393 5 the Appeal and Reply Briefs. However, we affirm the Examiner’s rejection of claims 12, 21, and 23 under 35 U.S.C. § 103 for essentially the reasons the Examiner presents. We add the following for emphasis. Claims 1–11 (method of making nonwoven fibrous materials)6 Claim 1 recites a method of making nonwoven fibrous materials using a first slurry comprising a first neutral pH flocculent and, after the initial use, replenishing the slurry by adding additional flocculent that can also be a neutral pH flocculent. We refer to the Examiner’s Final Office Action for a complete statement of the rejection of claim 1. Briefly, the Examiner finds that the combined teachings of Sako, Lukemire, O’Brien, Frost, Hoffman ’809, Meinander, and Hoffman ’380 suggest a method of making nonwoven fibrous materials suitable for use in a pollution control device that differs from the subject matter of claim 1 in that the combined teachings do not teach the use of flocculent(s) at pH within the claimed range. Final Act. 4– 5. The Examiner turns to Au to address the missing feature and determines that it would have been obvious to modify the process of the combined teachings by incorporating the flocculents disclosed by Au. Id. at 5. Appellant argues that the claimed invention recites using a neutral pH flocculent, while Sako does not teach the use of any type of flocculent, let alone a neutral pH flocculent. Appeal Br. 8. Appellant further contends that “the Examiner fails to identify any prior art teaching that identifies the desirability of using a pH neutral flocculent for waste slurry water recycling.” Id. at 9. 6 We limit our discussion to claim 1. Appeal 2020-002655 Application 15/102,393 6 We agree with Appellant that there is reversible error in the Examiner’s determination of obviousness. The Examiner bears the initial burden of presenting a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). “[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), quoted with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The fact finder must be aware “of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning.” KSR, 550 U.S. at 421 (“warning against a ‘temptation to read into the prior art the teachings of the invention in issue’”) (citing Graham v. John Deere Co., 383 U.S. 1, 36 (1966)). The premise of the Examiner’s rejection is that one skilled in the art would modify the method of making nonwoven fibrous materials resulting from the noted combined teachings, by using a flocculent disclosed by Au, because such use is well known in a similar wet papermaking process and would be no more than optimizing the pH of the slurry. Final Act. 5; Ans. 4–5. Au discloses the use of the flocculent poly-DADMAC, which Appellant identifies as a pH neutral flocculent (Spec. 9), in making nonwoven fibrous materials. However, the Examiner points to no disclosure in Au or other references that teaches using such flocculent material in a first waste water so that “the addition of the first waste water in the second slurry does not adversely affect the flocculation of the second organic binder in the second slurry,” as claimed. The Examiner has not adequately supported, Appeal 2020-002655 Application 15/102,393 7 with analysis or evidence, the assertion that one skilled in the art can arrive at the claimed invention by simply optimizing the pH of the slurry or flocculent. Thus, the Examiner does not explain adequately how one skilled in the art would arrive at the claimed invention from the teachings of the cited art. Accordingly, we reverse the Examiner’s prior art rejection of claims 1–11 under 35 U.S.C. § 103 for the reasons Appellant presents and we provide above. Claims 16–20 and 22 (slurry for making nonwoven fibrous materials)7 Claim 16 recites a slurry for making nonwoven fibrous materials. More specifically, the subject matter of claim 16 recites the second slurry comprising a first waste water. Claim 16 also recites that “the amount of first neutral pH flocculent present in the prior slurry causes the first waste water to maintain a relatively neutral pH.” That is, like claim 1, the addition of the first waste water in the second slurry does not adversely affect the flocculation of the second organic binder in the second slurry. The Examiner has not addressed this feature of the claimed slurry. Therefore, we reverse the Examiner’s prior art rejection of claims 16–20 and 22 under 35 U.S.C. § 103 for the reasons Appellant presents and we provide above with respect to independent claim 1. Claims 12, 21, and 23 (nonwoven fibrous material) Claims 12, 21, and 23 recite a nonwoven fibrous material and are drafted in a product-by-process format. The patentability of this type of claim does not depend on the process 7 We limit our discussion to claim 16. Appeal 2020-002655 Application 15/102,393 8 steps, except to the extent that the process steps are shown to result in properties not possessed by prior art products. It has long been held that “[i]f the product in a product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” Smithkline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1317 (Fed. Cir. 2006) (quoting In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985)). It is also well settled that when a claimed product reasonably appears to be substantially the same as a product disclosed in the prior art, the burden of proof is on the applicants to prove that the prior art product does not inherently or necessarily possess the characteristics attributed to the claimed product. In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (“Where, as here, the claimed and prior art products are identical or substantially identical, . . . the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product.”). We have considered Appellant’s arguments as they apply to these claims but are unpersuaded of reversible error in the Examiner’s determination of obviousness. Appellant does not direct us to any objective evidence that shows the recited process steps result in properties not possessed by prior art nonwoven fibrous material, such as the one disclosed by Sako. Moreover, Appellant does not direct us to objective evidence showing that the use of pH neutral flocculents in making the nonwoven fibrous material results in properties not possessed by prior art nonwoven fibrous material, such as the one disclosed by Sako. Appeal 2020-002655 Application 15/102,393 9 Accordingly, we affirm the Examiner’s prior art rejection of claims 12, 21, and 23 under 35 U.S.C. § 103. See Final Act. 5–6. Rejection II (35 U.S.C. §§ 102(a)(1) and 103) After review of the respective positions of Appellant and the Examiner, we affirm the Examiner’s rejection of claims 12, 21, and 23 under 35 U.S.C. § 103 for essentially the reasons the Examiner presents in the Final Office Action and the Answer. We add the following for emphasis. In this rejection, the Examiner relies on a number of references8 to establish that product-by-process claims 12, 21, and 23, reciting a nonwoven fibrous material, are unpatentable. Non-Final Act. 5–6; Ans. 5–6. Appellant relies on the arguments presented when discussing claim 1 to address this rejection. Appeal Br. 9. As we explained in the prior rejection of these claims, Appellant does not direct us to any objective evidence that shows the recited process steps, or use of neutral pH flocculents, result in properties not possessed by prior 8 The Examiner cites to De Rovere as one of the references to establish the unpatentability of the claimed nonwoven fibrous material. Final Act. 5. De Rovere is Appellant’s own prior art, given that one of the named inventors for this Application (Gary F. Howorth) is also named as inventor in the De Rovere reference. In addition, this Application and De Rovere have the same assignee, 3M Innovative Properties Company. If prosecution is further continued, the Examiner may wish to consider whether De Rovere’s teachings, as a whole, are relevant to the subject matter of claims 1–11, 16– 20, and 22. De Rovere teaches a fibrous material useful for pollution control devices. De Rovere ¶¶ 4–8. De Rovere teaches a process of making the fibrous material using a slurry comprising flocculents. Id. ¶¶ 14–20. De Rovere discloses PDADMAC among the useful flocculents in making the fibrous material, which Appellant discloses as a neutral pH flocculent. De Rovere ¶ 56; Spec. 9. Appeal 2020-002655 Application 15/102,393 10 art nonwoven fibrous material, such as the ones disclosed by Sako as well as by the other cited references in this rejection. Accordingly, we affirm the Examiner’s prior art rejections of claims 12, 21, and 23 under 35 U.S.C. §§ 102(a)(1) and 103 for the reasons the Examiner presents and we give above. DECISION SUMMARY Because no rejection affirms all the claims presented for review on appeal, our decision is an affirmance in part. In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–12, 16– 23 103 Sako, Lukemire, O’Brien, Frost, Hoffman ’809, Meinander, Hoffman ’380, Au 12, 21, 23 1–11, 16– 20, 22 12, 21, 23 102(a)(1) Sako, Dillon, Merry, De Rovere, Shirk 12, 21, 23 12, 21, 23 103 Sako, Dillon, Merry, De Rovere, Shirk 12, 21, 23 Overall Outcome 12, 21, 23 1–11, 16– 20, 22 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 IN PART Copy with citationCopy as parenthetical citation