Ex Parte WEEKS et al

Patent Trials and Appeals Board

Jun 26, 2019

14069887 - (D) (P.T.A.B. Jun. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/069,887 11/01/2013
27683 7590 06/28/2019
HA YNES AND BOONE, LLP
IP Section
2323 Victory A venue
Suite 700
Dallas, TX 75219
FIRST NAMED INVENTOR
Kelvin WEEKS
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
57388.54US01
(UNF.SAF.P96
1023
EXAMINER
JOLLY, ONEKKI P
ART UNIT PAPER NUMBER
3735
NOTIFICATION DATE DELIVERY MODE
06/28/2019 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):
ipdocketing@haynesboone.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KELVIN WEEKS and ADAM KELSALL 1
Appeal2019-000477
Application 14/069,887
Technology Center 3700
Before JAMES P. CALVE, MICHAEL J. FITZPATRICK, and
MICHAEL L. WOODS, Administrative Patent Judges.
WOODS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Kelvin Weeks and Adam Kelsall ("Appellants") appeal from the
Examiner's rejection of claims 1-14, 16-24, 26, 27, and 33-35. Appeal Br.
We have jurisdiction over this appeal under 35 U.S.C. § 6(b ).
SUMMARY OF THE DECISION
We AFFIRM.
1 According to Appellants, the real party in interest is Unifrax I LLC.
Appeal Br 4.
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Application 14/069,887
CLAIMED SUBJECT MATTER
Appellants' invention relates to "polycrystalline wool fibers [that] are
high performance fibers ... [that] may comprise a composition in the range
of about 1 to about 28 percent Si 0 2, and about 72 to about 99 weight percent
Ah03." Spec. 1.
Claims 1 and 23 are the independent claims, and claim 1 is
reproduced below with emphases added to two limitations discussed in this
Decision.
1. A method of treating tough inorganic fiber bundles
comprising a plurality of the tough inorganic fiber bundles such
that tough inorganic fibers can be dispersed in a liquid slurry to
lay down a homogenous fiber aggregate, wherein the tough
inorganic fibers comprise the fiberization product of about 72
to about 99 weight percent alumina and about 1 to about 28
weight percent silica, wherein said opening comprises
mechanically altering the tough inorganic fibers and/or fiber
bundles, and wherein the tough inorganic fibers have a crush
settle volume of greater than 2 5 0 ml.
Appeal Br. 25 (Claims Appendix) (emphases added).
THE REJECTIONS
1. Claims 1-14, 16, 17, 23, 24, 26, 27, and 33-35 stand rejected
under 35 U.S.C. § 112(b) as being indefinite. 2 Non-Final Act. 2-3.
2. Claims 1, 2, 16, 17, and 33 stand rejected under 35 U.S.C. § I03(a)
as unpatentable over Fernando (US 2010/0173552 Al, published
July 8, 2010) and Furuzawa (US 2011/0239602 Al, published Oct.
6, 2011). Non-Final Act. 3.
2 In the Answer, the Examiner withdrew an indefiniteness rejection of claim
1 for lacking antecedent basis. Ans. 5; Non-Final Act. 3. Claim 1 remains
rejected as indefinite, however, for reciting "about." Non-Final Act. 3.
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3. Claim 3 stands rejected under 35 U.S.C. § I03(a) as unpatentable
over Fernando, Furuzawa, and Nunn (US 2008/0302494 Al,
published Dec. 11, 2008). Non-Final Act. 5.
4. Claim 4 stands rejected under 35 U.S.C. § I03(a) as unpatentable
over Fernando, Furuzawa, and Yancey (US 2005/0022415 Al,
published Feb. 3, 2005). Non-Final Act. 5.
5. Claim 5 stands rejected under 35 U.S.C. § I03(a) as unpatentable
over Fernando, Furuzawa, and Melius (US 6,706,945 Bl, issued
Mar. 16, 2004). Non-Final Act. 6.
6. Claims 6, 14, 23, 26, 27, 34, and 35 stand rejected under 35 U.S.C.
§ I03(a) as unpatentable over Fernando, Furuzawa, and Abe (US
4,520,124, issued May 28, 1985). Non-Final Act. 6.
7. Claim 7 stands rejected under 35 U.S.C. § I03(a) as unpatentable
over Fernando, Furuzawa, and Kuhl (US 2011/0226547 Al, issued
Sept. 22, 2011). Non-Final Act. 8.
8. Claims 8 and 9 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Fernando, Furuzawa, and Wirtz (US
2011/0061214 Al, published Mar. 17, 2011). Non-Final Act. 9.
9. Claims 10 and 11 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Fernando, Furuzawa, and Alward (US 7,785,544
B2, published Aug. 31, 2010). Non-Final Act. 9.
10. Claim 12 stands rejected under 35 U.S.C. § I03(a) as unpatentable
over Fernando, Furuzawa, and Nunn '691 (US 2011/0094691 Al,
published Apr. 28, 2011). Non-Final Act. 10.
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11. Claim 13 stands rejected under 35 U.S.C. § I03(a) as unpatentable
over Fernando, Furuzawa, Alward, and Nunn '691. Non-Final
Act. 10.
12. Claim 24 stands rejected under 35 U.S.C. § I03(a) as unpatentable
over Fernando, Furuzawa, Abe, and Alward. Non-Final Act. 10.
13. Claims 1, 2, 4---6, 8, 10, 12-14, 16, 17, 23, 24, 26, 27, and 33-35
stand rejected under 35 U.S.C. § I03(a) as unpatentable over
Soyama (US 2009/0320428 Al, published Dec. 31, 2009) and
Fernando. Non-Final Act. 11.
14. Claim 3 stands rejected under 35 U.S.C. § I03(a) as unpatentable
over Soyama, Furuzawa, and Nunn. Non-Final Act. 12.
15. Claim 7 stands rejected under 35 U.S.C. § I03(a) as unpatentable
over Soyama, Furuzawa, and Kuhl. Non-Final Act. 13.
16. Claim 9 stands rejected under 35 U.S.C. § I03(a) as unpatentable
over Soyama, Furuzawa, and Wirtz. Non-Final Act. 13.
17. Claim 11 stands rejected under 35 U.S.C. § I03(a) as unpatentable
over Soyama, Furuzawa, and Alward. Non-Final Act. 14.
Throughout our Decision, we refer to these rejections by number, as
rejections (1 }-(17).
ANALYSIS
1) Rejection 1: Rejection of Claims 1-14, 16, 17, 23-24, 26, 27, and 33-35
as Indefinite
Independent claims 1 and 23 recite, in relevant part, "wherein the
tough inorganic fibers comprise the fiberization product of about 72 to about
99 weight percent alumina and about I to about 28 weight percent silica."
Appeal Br. 25, 27 (Claims Appendix) (emphases added).
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Claim 14 depends from claim 1 and further recites, "wherein the
tough inorganic fiber slurry dispersion comprises a dilution of about 0.1 % to
about 2%." Id. at 26 (emphases added).
Claim 34 depends from claim 1 and further recites, "wherein the
tough inorganic fiber slurry dispersion comprises a dilution of about O .1 % to
about 1 %." Id. at 29.
In rejecting claims 1-14, 16, 17, 23, 24, 26, 27, and 33-35 as
indefinite, the Examiner finds that the use of the term "about" "is indefinite
since it does not set the metes and bounds of the claim." See Non-Final Act.
3; see also id. ("Please note similar issues in claims 1, 23, and 34").
Specifically, the Examiner finds that the term "about" "is a relative term ...
[ and] the specification does not provide a standard for ascertaining the
requisite degree." See id.
In contending the rejection should be reversed, Appellants argue, "It is
well established that a relative term such as 'about' does not necessarily
render a claim term indefinite." Appeal Br. 9 ( citing In re Mattison, 509
F.2d 563, 564--65 (CCPA 1975)). Appellants further cite to the MPEP and
several court decisions that held the term "about" to be definite. See Appeal
Br. 9-11 ( citations omitted).
The use of the term "about" may or may not render a claim indefinite.
The Federal Circuit held that when a claim recites a relative term such
as "about," the claim is not indefinite when the Specification provides "some
standard for measuring that degree." Biosig Instr., Inc. v. Nautilus, Inc., 783
F.3d 1374, 1378 (Fed. Cir. 2015) (addressing indefiniteness of a limitation
within an issued patent). As such, in determining the range encompassed by
the term "about," we consider the context of the term as it is used in the
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specification and claims of the application. Ortho-McNeil Pharm., Inc. v.
Caraco Pharm. Labs., Ltd., 476 F.3d 1321, 1326 (Fed. Cir. 2007).
In one case, the Federal Circuit held that a limitation defining the
stretch rate of a plastic as "exceeding about 10% per second" is definite,
because infringement could clearly be assessed through the use of a
stopwatch. W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F .2d 1540
(Fed. Cir. 1983).
In another case, that same court held that claims reciting "at least
about" were invalid for indefiniteness where there was close prior art and
there was nothing in the specification, prosecution history, or the prior art to
provide any indication as to what range of specific activity is covered by the
term "about." Amgen, Inc. v. Chugai Pharmaceutical Co., 927 F.2d
1200(Fed. Cir. 1991) ( emphasis added).
Further, the MPEP provides that "an applicant may also overcome an
indefiniteness rejection by providing evidence that the meaning of the term
of degree can be ascertained by one of ordinary skill in the art when reading
the disclosure." MPEP § 2173.05(b)(I).
In the present case, Appellants do not identify anything in the
Specification, prior art, or prosecution history that provides any standard by
which the claim term "about," as used in the claims, may be measured. See
Appeal Br. 9--11; see also Reply Br. 2. Upon reviewing the Specification on
our own, we agree with the Examiner that "the specification does not
provide a standard for ascertaining the requisite degree." Non-Final Act. 3.
Absent any objective standard that guides us in determining the scope
of the claim term "about," we must sustain the indefiniteness rejection of
claims 1-14, 16, 17, 23, 24, 26, 27, and 33-35.
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2) Rejections 2-12: Rejections Based on Fernando
In rejecting claims 1-14, 16-24, 26, 27, and 33-35 under rejections
2-12, above, the Examiner relies on Fernando for disclosing a method of
treating tough inorganic fiber bundles comprising, inter alia, "a plurality of
tough inorganic fiber bundles ... [that] have a crush settle volume of greater
than 250 ml." Non-Final Act. 3--4 (citing Fernando ,r,r 39--41, 44). The
Examiner cites specifically to Fernando's paragraph 44, which provides in
relevant part, "'the indirect length measuring method of Settled Volume
(SV), the biosoluble inorganic fiber has a minimum length corresponding to
a minimum SV of 300 ml."' Id. at 4 (quoting Fernando ,r 44).
Appellants contend that claim 1 requires the "'fibers have a crush
settle volume of greater than 250 ml"' and that a skilled artisan "would have
no indication whether the settle volume test mentioned in Fernando is
similar to the Settle Height test disclosed in the present application." Appeal
Br. 12.
In its Answer, the Examiner responds, "Claim 1 only claims a volume
and not the steps of appellants' Crush Settle Volume Test in appellants'
specification." Ans. 7. The Examiner explains, "[ a ]lthough the claims are
interpreted in light of the specification, limitations from the specification are
not read into the claims." Id. ( citation omitted).
The Specification describes Crush Settle Volume Test as follows:
A Crush Settle Volume Test may be conducted similarly
to the Settle Height Test, except that the 5 g sample of tough
inorganic fibers is placed into a tube having an internal
diameter of 3 7. 5 mm and compressed at 1.4 kN for five minutes
prior to being added to the 400 ml of water and stirred. The
crush settle volume is measured as the volume occupied by the
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crushed, settled and dispersed tough inorganic fibers in the 1
liter cylinder.
A settle volume of greater than 250 ml may be associated
with a pressure performance of 90 kPa for fibers having a crush
settle volume of less than 250 ml.
Spec. 15 ( emphasis added).
We first note that the claims are not rejected as being indefinite for
their failure to recite the parameters in which the claimed "crush settle
volume of greater than 250 ml" is calculated. Non-Final Act. 2-3. Even so,
it is not clear to us if the "crush settle volume" is calculated by placing 5
grams of tough inorganic fibers in a tube having an internal diameter of 37.5
mm and compressed at 1.4 kN for five minutes prior to being added to 400
ml of water and stirred, as described in the Specification. Spec. 15.
Nevertheless, and despite that lack of clarity, we agree with Appellants that
the record does not support a finding that Fernando discloses the claim
limitation.
In particular, the claims require a "crush settle volume," not simply a
settle volume, and the record does not support a finding that the "Settled
Volume" disclosed in Fernando meets the claim limitation.
The Specification provides that the "crush settle volume is measured
as the volume occupied by the crushed, settled and dispersed tough
inorganic fibers in [a] 1 liter cylinder." Spec. 15 (emphasis added). Indeed,
the claimed "crush settle volume," when interpreted in light of the
Specification, requires the fibers to undergo at least some crushing force ( or
pressure) to compress the fibers prior to measurement. See id. The
Examiner does not explain how Fernando's "Settled Volume" is a "crush
settle volume," however. See Non-Final Act. 4 (citing Fernando ,r 44); see
also Ans. 7. Furthermore, we find nothing in Fernando, let alone the cited
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paragraph 44, that describes its "Settled Volmne" as undergoing any
pressure prior to measurement.
For this reason, we do not sustain the rejection of claims 1-14, 16-24,
26, 27, and 33-35 under any of rejections 2-12, above, which rely on
Fernando.
3) Re} ections 13-17: Re} ections Based on Soyama
In rejecting claims 1-14, 16, 17, 23, 24, 26, 27, and 33-35 under
rejections 13-17 above, the Examiner relies on Soyama for disclosing a
method of treating tough inorganic fiber bundles comprising, inter alia, "a
plurality of tough inorganic fiber bundles ... [that] have a crush settle
volume greater than 250ml." Non-Final Act. 11 (citing Soyoma ,r,r 7, 16).
Notably, the Examiner cites to Soyama's paragraphs 7 and 16 for meeting
this limitation. See id.
In contending the rejections should be reversed, Appellants argue that
Soyoma fails to disclose the claimed "crush settle volume of greater than
250 ml." Appeal Br. 22.
In response to Appellants' argument, and as with the rejections
discussed above based on Fernando, the Examiner responds that "Claim 1
only claims a volume and not the steps of appellants' Crush Settle Volume
Test." Ans. 11.
The claims do not simply recite a volume, however, but recite a crush
settle volume.
The Examiner cites to Soyama's paragraphs 7 and 16 (see Non-Final
Act. 11 ), yet we find nothing in the cited paragraphs that disclose a "settle
volume," let alone the claimed "crush settle volume."
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For this reason, we do not sustain the rejection of claims 1-14, 16, 17,
23, 24, 26, 27, and 33-35 under any of rejections 13-17, above, which rely
on Soyoma.
SUMMARY
The rejection of claims 1-14, 16, 17, 23, 24, 26, 27, and 33-35 under
35 U.S.C. § 112(b) is affirmed.
The rejection of claims 1, 2, 16, 17, and 33 under 35 U.S.C. § 103(a)
as unpatentable over Fernando and Furuzawa is reversed.
The rejection of claim 3 under 35 U.S.C. § 103(a) as unpatentable
over Fernando, Furuzawa, and Nunn is reversed.
The rejection of claim 4 under 35 U.S.C. § 103(a) as unpatentable
over Fernando, Furuzawa, and Yancey is reversed.
The rejection of claim 5 under 35 U.S.C. § 103(a) as unpatentable
over Fernando, Furuzawa, and Melius is reversed.
The rejection of claims 6, 14, 23, 26, 27, 34, and 35 under 35 U.S.C.
§ 103(a) as unpatentable over Fernando, Furuzawa, and Abe is reversed.
The rejection of claim 7 under 35 U.S.C. § 103(a) as unpatentable
over Fernando, Furuzawa, and Kuhl is reversed.
The rejection of claims 8 and 9 under 35 U.S.C. § 103(a) as
unpatentable over Fernando, Furuzawa, and Wirtz is reversed.
The rejection of claims 10 and 11 under 35 U.S.C. § 103(a) as
unpatentable over Fernando, Furuzawa, and Alward is reversed.
The rejection of claim 12 under 35 U.S.C. § 103(a) as unpatentable
over Fernando, Furuzawa, and Nunn '691 is reversed.
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The rejection of claim 13 under 35 U.S.C. § 103(a) as unpatentable
over Fernando, Furuzawa, Alward, and Nunn '691 is reversed.
The rejection of claim 24 under 35 U.S.C. § 103(a) as unpatentable
over Fernando, Furuzawa, Abe, and Alward is reversed.
The rejection of claims 1, 2, 4---6, 8, 10, 12-14, 16, 17, 23, 24, 26, 27,
and 33-35 under 35 U.S.C. § 103(a) as unpatentable over Soyama and
Fernando is reversed.
The rejection of claim 3 under 35 U.S.C. § 103(a) as unpatentable
over Soyama, Furuzawa, and Nunn is reversed.
The rejection of claim 7 under 35 U.S.C. § 103(a) as unpatentable
over Soyama, Furuzawa, and Kuhl is reversed.
The rejection of claim 9 under 35 U.S.C. § 103(a) as unpatentable
over Soyama, Furuzawa, and Wirtz is reversed.
The rejection of claim 11 under 35 U.S.C. § 103(a) as unpatentable
over Soyama, Furuzawa, and Alward is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended. See 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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