3M INNOVATIVE PROPERTIES COMPANY

Patent Trials and Appeals Board

Feb 17, 2022

2021004849 (P.T.A.B. Feb. 17, 2022)

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. 15/889,284 02/06/2018 Delton R. Thompson JR. 62185US013 5272 32692 7590 02/17/2022 3M INNOVATIVE PROPERTIES COMPANY PO BOX 33427 ST. PAUL, MN 55133-3427 EXAMINER EMRICH, LARISSA ROWE ART UNIT PAPER NUMBER 1789 NOTIFICATION DATE DELIVERY MODE 02/17/2022 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 DELTON R. THOMPSON JR., RONALD W. GERDES, and BRIAN L. NELSON ____________ Appeal 2021-004849 Application 15/889,284 Technology Center 1700 ____________ Before TERRY J. OWENS, KAREN M. HASTINGS, and JEFFREY R. SNAY, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision to reject claims 1-11. See Final Act. 1. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies 3M Company as the real party in interest (Appeal Br. 2). Appeal 2021-004849 Application 15/889,284 2 CLAIMED SUBJECT MATTER Claim 1 illustrates the subject matter on appeal: 1. A sound insulation construction comprising: a first layer comprising a bonded fiber nonwoven web exhibiting a work of compression of at least about 0.7 kJ/m3 and an airflow resistance of no greater than 10,000 Rayls/m, wherein individual fibers of the bonded fiber nonwoven web of the first layer are bonded to each other at fiber-bonding points by melt bonding or by a binder that extends between the individual fibers, the fiber-bonding points being distributed throughout the entire thickness of the bonded fiber nonwoven web. Appeal Br. 10 (Claims App.). REFERENCES The Examiner relied upon the following prior art: Name Reference Date Hennen US 3,837,988 Sept. 24, 1974 Keller US 2004/0238275 A1 Dec. 2, 2004 Thompson US 9,922,634 B2 Mar. 20, 2018 REJECTIONS ON APPEAL Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis 1-4, 6-10 102 Hennen 1-5, 8-11 103 Keller 6, 7 103 Keller, Hennen 1-11 103 Keller, Hennen 1-11 Nonstatutory Double Patenting; Thompson Appeal 2021-004849 Application 15/889,284 3 At the outset, we summarily affirm the Examiner’s rejection of claims 1-11 on the ground of nonstatutory double patenting as Appellant did not address this ground of rejection in the Briefs (see also Final Act. 39). OPINION Upon consideration of the evidence relied upon in this appeal and each of Appellant’s contentions as set forth in the Appeal Brief and Reply Brief, we determine that Appellant has not identified reversible error in the Examiner’s rejections (See generally Ans.). In re Jung, 637 F.3d 1356, 1365-66 (Fed. Cir. 2011) (explaining the Board’s long-held practice of requiring Appellant(s) to identify the alleged error in the Examiner’s rejection). We sustain the rejection for the reasons expressed by the Examiner in the Final Office Action and the Answer. We add the following primarily for emphasis. The § 102 Rejection Appellant’s main argument is that there is no disclosure that the Hennen carpet material would exhibit the claimed properties, and the Examiner has not established that Hennen’s carpet would inherently have the claimed properties (Appeal Br. 3-6). These arguments are not persuasive of reversible error for reasons explained by the Examiner (Ans. 22-26). It is well settled that when a claimed product reasonably appears to be substantially the same as a product disclosed by the prior art, the burden is on the applicant to prove that the prior art product does not necessarily or inherently possess characteristics attributed to the claimed product, and that it is of no moment whether the rejection is based on § 102 or § 103 since the Appeal 2021-004849 Application 15/889,284 4 burden is on the applicant is the same. In re Spada, 911 F.2d 705, 708 (Fed Cir. 1990); In re Best, 562 F.2d 1252, 1255 (CCPA 1977). Appellant has not provided any persuasive reasoning or credible evidence to refute the Examiner’s determination that Hennen’s carpet would have the claimed properties since Appellant’s Specification states that Hennen’s nonwoven carpet web may be used as a layer of the sound absorbing product (Spec. 13, 15; Ans. 4; Final Act. 4). Notably, Appellant has not sufficiently addressed this point in either of the Briefs. Any additional arguments made by the Appellant, but not explicitly discussed here, have been fully addressed by the Examiner and are unpersuasive of reversible error for the reasons explained in the Final Office Action or the Answer. The § 103 Rejections It has been established that “the [obviousness] analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007); see also In re Fritch, 972 F.2d 1260, 1264- 65 (Fed. Cir. 1992) (a reference stands for all of the specific teachings thereof as well as the inferences one of ordinary skill in the art would have reasonably been expected to draw therefrom). With respect to the §103 rejection based on Keller, Appellant’s main arguments are that 1) the Examiner has failed to identify where Keller teaches or suggests fiber-bonding points as recited in claim 1 (Appeal Br. 6- 7; 2) even though the endpoints of the claimed airflow resistance overlaps Appeal 2021-004849 Application 15/889,284 5 that of Keller, there is no reason to lower the airflow resistance of Keller (Appeal Br. 7); and 3) the Examiner’s position that Keller’s structure would inherently have all the claimed properties is not reasonable (Appeal Br. 8). With respect to the §103 rejection based on the combined prior art of Keller and Hennen, Appellant additionally argues that the Examiner is using impermissible hindsight to combine these references (Appeal Br. 8, 9). Appellant’s arguments are not persuasive of reversible error as they fail to consider the breadth of the claim, the applied prior art as a whole, and the inferences that one of ordinary skill would have made, as aptly explained by the Examiner (Ans. 26-34). Notably, as the Examiner points out, one of ordinary skill would have readily inferred that fiber bonding points as recited in claim 1 are present in Keller due to the manufacturing process detailed by Keller (Ans. 27; Keller ¶¶ 40-45). Furthermore, Appellant apparently fails to acknowledge that even a slight overlap in a claimed range with the prior art is enough to establish a prima facie case of obviousness (Ans. 29). See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (“In cases involving overlapping ranges, we and our predecessor court have consistently held that even a slight overlap in range establishes a prima facie case of obviousness.”). In any event, Keller also establishes that one of ordinary skill in the art would have readily appreciated that the airflow resistance as well as the strength of the composite nonwoven material may be adjusted depending on the desired acoustic properties of the final sound insulation product (id.; Keller ¶ 25). “A recognition in the prior art that a property is affected by the variable is sufficient to find the variable result-effective.” In re Applied Materials, Inc., Appeal 2021-004849 Application 15/889,284 6 692 F.3d 1289, 1297 (Fed. Cir. 2012). It is well settled that it would have been obvious for an artisan with ordinary skill to develop workable or even optimum ranges for result-effective parameters. In re Boesch, 617 F.2d 272, 276 (CCPA 1980); In re Woodruff, 919 F.2d 1575, 1577-78 (Fed. Cir. 1990) (where the difference between the claimed invention and the prior art is some range, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range). Appellant’s argument that the Examiner is using impermissible hindsight in the rejections where the teachings of Keller and Hennen are combined is also unpersuasive of reversible error. As the Examiner states, it is well known that carpet as exemplified in Hennen is a sound absorbing material, and Keller also teaches that sound absorbers may be useful in floor coverings (Keller ¶¶ 64, 65; Ans. 33-34). Under the flexible inquiry set forth by the Supreme Court, the PTO must take account of the “inferences and creative steps,” or even routine steps, that an ordinary artisan would employ. Ball Aerosol & Specialty Container, Inc. v. Limited Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009). Cf. Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010) (“The Supreme Court’s decision in KSR . . . directs us to construe the scope of analogous art broadly, stating that ‘familiar items may have obvious uses beyond their primary purposes, and a person of ordinary skill often will be able to fit the teachings of multiple patents together like pieces of a puzzle.’” (quoting KSR, 550 U.S. at 420)). Accordingly, Appellant has not shown reversible error in the Examiner’s determination that one of ordinary skill would have used the nonwoven carpet material of Hennen as a nonwoven layer in Keller. Appeal 2021-004849 Application 15/889,284 7 As a final note, as discussed with respect to the anticipation rejection, it has been held that when, as is the case here, the Examiner establishes a reasonable basis that the products or processes claimed by the applicant and disclosed or suggested by the prior art appear to be the same or substantially similar, the burden is properly shifted to the applicant to show that they are not. This principle applies to an obviousness rejection as well. Cf. In re Dillon, 919 F.2d 688, 693 (Fed. Cir. 1990) (en banc) (“In particular, the statement [in In re Wright] that a prima facie obviousness rejection is not supported if no reference shows or suggests the newly-discovered properties and results of a claimed structure is not the law”). Appellant has not met this burden. Attorney’s arguments in a brief cannot take the place of evidence. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Any additional arguments made by the Appellant regarding the § 103 rejections, but not explicitly discussed here, have been fully addressed by the Examiner and are unpersuasive of reversible error for the reasons explained in the Final Office Action or the Answer. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-4, 6-10 102 Hennen 1-4, 6-10 1-5, 8-11 103 Keller 1-5, 8-11 6, 7 103 Keller, Hennen 6, 7 1-11 103 Keller, Hennen 1-11 1-11 Nonstatutory Double Patenting; Thompson 1-11 Overall Outcome 1-11 Appeal 2021-004849 Application 15/889,284 8 TIME PERIOD FOR RESPONSE 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) (2020). AFFIRMED