3M INNOVATIVE PROPERTIES COMPANY

Patent Trials and Appeals Board

Dec 31, 2020

2020002655 (P.T.A.B. Dec. 31, 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.
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.
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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.

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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.
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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.
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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.
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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,
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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.
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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.
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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.
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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