Ex Parte Teschner

Board of Patent Appeals and Interferences

Feb 28, 2012

10565701 (B.P.A.I. Feb. 28, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/565,701 08/31/2007 Roman Teschner 7261 2449
29602 7590 02/29/2012
JOHNS MANVILLE
10100 WEST UTE AVENUE
PO BOX 625005
LITTLETON, CO 80162-5005
EXAMINER
MULCAHY, PETER D
ART UNIT PAPER NUMBER
1762
MAIL DATE DELIVERY MODE
02/29/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte ROMAN TESCHNER
________________

Appeal 2011-000954
Application 10/565,701
Technology Center 1700
________________

Before CATHERINE Q. TIMM, JEFFREY T. SMITH, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-000954
Application 10/565,701

2
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1 and 3-19. We have jurisdiction under 35 U.S.C. § 6.
According to the Specification, the invention relates to a size for
treating glass fibers. (Spec. 1). Claim 1 is illustrative of the subject matter
on appeal and is reproduced below:
1. A glass fiber size comprising water, one film-former,
which is polyvinyl [sic]1 polyvinylpyrrolidone, an adhesion
promoter and an organic acid for establishing a pH in the acidic
range.
Appellant, (App. Br. 2), requests review of the following rejection
from the Examiner’s final office action:
Claims 1 and 3-19 stand rejected under 35 U.S.C. § 102(b) as
anticipated by, or alternatively, under 35 U.S.C. § 103(a) as
unpatentable over Schmid (DE 19818046 A1 issued Oct. 28,
1999)2.

After review of the arguments and evidence presented by both
Appellant and the Examiner we affirm the stated rejections. We affirm for
the reasons set forth by the Examiner and add the following for emphasis.3
Appellant argues that independent claim 1 recites a glass fiber size
comprising water, one film former specifically polyvinylpyrrolidone, an

1 The Appellant and Examiner agree (Ans. 4; Reply Br. 1) the inclusion of
“polyvinyl” in claim 1 is a typographical error.
2 We will limit our consideration to the English-language abstract of this
document and the German document as presented in the electronic working
file.
3 Appellants have not presented separate arguments addressing claims 3-19.
Consequently, we will limit our consideration to independent claim 1.
Appeal 2011-000954
Application 10/565,701

3
adhesion promoter and an organic acid for establishing a pH in the acidic
range. (App. Br. 3). Appellant argues that Schmid’s invention requires two
film formers polyvinylpyrrolidone and polyamidoamide and therefore is
distinguished from the claimed invention. Appellant further argues that
Schmid does not provide any guidance for using polyvinylpyrrolidone alone
as the film former to achieve the benefits of the claimed invention, i.e. a
reduction of corrosion, good cutting performance, a good wetting
performance and stiffness of the filaments. (Id. at 3-4).
Appellant also argues that Schmid does not render obvious the
claimed glass fiber size, because Schmid is directed specifically to a size
useful in working with a polylactam matrix. Removing one film former as
suggested by the Examiner would destroy the teachings of Schmid, as well
as the function of the size. (Id.at 4).
We initially note that the claimed invention utilizes the term
“comprising” when describing the components of the size. This claim
language allows for other components to be present in the coating
composition. See In re Baxter, 656 F.2d 679, 686 (CCPA 1981) (“As long
as one of the monomers in the reaction is propylene, any other monomer
may be present, because the term ‘comprises’ permits the inclusion of other
steps, elements, or materials.”). Thus, the claimed invention is open to
include other components.
Appellant’s arguments in response to the anticipation rejection are not
persuasive. Appellant has not argued that Schmid does not describe a glass
fiber size comprising water, polyvinylpyrrolidone, an adhesion promoter and
an organic acid as required by the claimed invention. As stated above, the
claimed language does not exclude additional components. Consequently,
Appeal 2011-000954
Application 10/565,701

4
the polyamidoamide contained in the size of Schmid is not excluded by the
present claim language.

We also agree with the Examiner’s obviousness determination. It is
well settled that the omission of a feature disclosed by the prior art along
with its attendant function or advantage is a matter of obviousness for one of
ordinary skill in the art. In re Thompson, 545 F.2d 1290, 1294 (CCPA
1976); In re Kuhle, 526 F.2d 553, 555 (CCPA 1975); In re Marzocchi, 456
F.2d 790, 793 (CCPA 1972); In re Larson, 340 F.2d 965, 969 (CCPA 1965);
In re Keegan, 331 F.2d 315, 319 (CCPA 1964); In re Porter, 68 F.2d 971,
973 (CCPA 1934). In the present case, Appellant has advanced no
argument, let alone the requisite objective evidence, that eschewing the
polyamide of Schmid results in anything other than a glass size. Moreover,
Appellant’s arguments appear to be premised on the discussion of the
identified preferred composition. (See Schmid “Technology Focus” of the
Abstract).
For the foregoing reasons and those presented by the Examiner, the
rejection of claims 1 and 3-19 is 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)(v).

AFFIRMED

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