Michael E. Evans et al.

Patent Trials and Appeals Board

Sep 26, 2019

12924974 - (D) (P.T.A.B. Sep. 26, 2019)

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.
12/924,974 10/08/2010 Michael E. Evans 26761-US-NP (1-51180) 1520
97072 7590 09/30/2019
MacMillan, Sobanski & Todd, LLC - OWENS CORNING
One Maritime Plaza, Fifth Floor, 720 Water Street
Toledo, OH 43604
EXAMINER
MCKINNON, LASHAWNDA T
ART UNIT PAPER NUMBER
1789
NOTIFICATION DATE DELIVERY MODE
09/30/2019 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):
MST@mstfirm.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHAEL E. EVANS and PATRICK M. GAVIN
____________

Appeal 2017-011758
Application 12/924,974
Technology Center 1700
____________

Before KAREN M. HASTINGS, JEFFREY R. SNAY, and
MICHAEL G. McMANUS, Administrative Patent Judges.

SNAY, Administrative Patent Judge.

DECISION ON APPEAL1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1, 3, 4, 6, 7, 9, 10, 12, 13, 15, 16, 18, 19, 21, 22,
and 24–26. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 We cite to the Specification (“Spec.”) filed October 8, 2010, as amended;
Final Office Action (“Final Act.”) dated November 1, 2016; Appellant’s
Appeal Brief (“Appeal Br.”) dated March 27, 2017; Examiner’s Answer
(“Ans.”) dated July 26, 201, and Appellant’s Reply Brief (“Reply Br.”)
dated September 22, 2017.
2 Appellant identifies Owens Corning Intellectual Capital, LLC as the real
party in interest. Appeal Br. 2.
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BACKGROUND
The subject matter on appeal relates to loosefill insulation material
comprising tufts. Spec. ¶ 7. A tuft is a cluster of insulative fibers. Id. ¶ 37.
The insulative value (so-called R-value) of loosefill insulation material is
affected by certain inter- and intra-tuft physical properties. Appeal Br. 11.
To that end, the Specification describes loosefill material in terms of: size,
frequency, and distribution of inter-tuft voids (Spec. ¶¶ 38, 51–53); major
tuft dimension (id. ¶¶ 41, 55); tuft density (id. ¶¶ 42, 57); percent surface
projections (id. 42, 60); quantity of hairs extending from surface projections
(id. ¶¶ 44, 61); and size, frequency, and distribution of intra-tuft gaps (id. ¶¶
45, 65–67). Claim 1 is illustrative:
1. A loosefill insulation material comprising:
a multiplicity of tufts formed from unbonded individual
fibers of insulative material, each of the unbonded individual
fibers having a fiber diameter, wherein each of the unbonded
individual fibers has the same fiber diameter, the tufts having a
plurality of voids between the tufts, wherein when installed in
an insulation cavity, the tufts have an outer surface that includes
a plurality of irregularly-shaped projections, the tufts having an
average major tuft dimension;
wherein when installed in an insulation cavity, the
average major tuft dimension of the tufts of the unbonded
loosefill insulation material has a length in a range of from
about 2.5 mm to about 7.6 mm.
.
App. Br. 32 (Claims Appendix).
Claims 4, 7, 10, 13, 16, 19, 22, and 25 also are in independent form,
and are directed to a loosefill insulation material defined by one or more of
the above-listed physical characteristics. Each remaining claim on appeal
depends from an independent claim.
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Application 12/924,974

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REJECTIONS
I. Claims 1, 3, 7, 9, 10, 12, 13, 15, 16, 18, 19, 21, 22, and 24–26 stand
finally rejected under 35 U.S.C. § 103(a) as unpatentable over Babbitt3 and
Evans.4
II. Claims 4 and 6 stand finally rejected under 35 U.S.C. § 103(a) as
unpatentable over Babbit, Evans, and Earle.5
OPINION
Common to all the independent claims is the recitation that “each of
the unbonded individual fibers has the same fiber diameter.” See claims 1,
4, 7, 10, 13, 16, 19, 22, and 25. The Examiner finds that Babbitt discloses
loosefill insulation material comprising nodules formed from individual
fibers, but that Babbitt is silent regarding relative fiber diameter. Final Act.
3, 12; Ans. 19. For that feature of the claims, the Examiner finds that Evans
teaches “individual unbonded fibers with the same fiber diameter in order to
effect thermal conductivity.” Final Act. 12 (citing Evans 2:60–3:16, 7:41–
45). In light of Evans, the Examiner determines it would have been obvious
to use fibers with the same fiber diameter “in order to effect thermal
conductivity.” Id.
Appellant argues, inter alia, that the Examiner erred in finding that
Evans would have provided a reason to use same-diameter fibers in
Babbitt’s material. Appeal Br. 11–13. We agree.
Evans discloses a loose-fill insulation product having irregularly
shaped glass fibers. Evans Abstract. The irregularity of the glass fiber

3 US 5,624,742, issued April 29, 1997.
4 US 5,786,082, issued July 28, 1998.
5 US 3,584,796, issued June 15, 1971.
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Application 12/924,974

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shape is said to provide a uniform volume filling nature, such that voids or
gaps in the installed insulation are avoided. Id. at 2:18–25. At the passages
relied upon by the Examiner, Evans refers to an obtained resistance to heat
flow or R value for an insulation product having “a standard 3.5 inch (8.9
cm) sidewall at an effective diameter of 5 microns.” Evans 3:6–9 (emphasis
added). Evans also compares the disclosed product with a prior art product
at “a fixed product density . . . and fixed fiber diameter.” Id. at 7:41–45.
We do not view these passages as evidence to support the Examiner’s
finding that Evans teaches use of same-diameter fibers, much less that use of
same-diameter fibers would advantageously affect thermal conductivity of
the insulation material. Evans does not explain what is meant by effective
diameter. Nor does the Examiner provide evidence or technical reasoning to
show that the effective fiber diameter in the context of a loose-fill product
would have been viewed as meaning a singular diameter. Likewise, Evans’
reference to a “fixed” diameter to identify a comparative equivalence of the
tested product and a product taken from the prior art does not require either
product to have been formed from fibers having the same diameter. For
example, Evans uses the word, “fixed,” to identify a range of values. Id. at
7:42 (quantifying the fixed product density as “4.8 to 9.6 Kg/m3”). Of
particular significance, Evans expressly states that “[n]o two fibers are
exactly alike.” Id. at 6:15–16. Lastly, even if Evans were read as disclosing
use of same-diameter fibers, that disclosure alone would not support the
Examiner’s stated reason for using same-diameter fibers in Babbitt’s
material. We are directed to no teaching in Evans that use of same-diameter
fibers would have affected thermal conductivity of the produced insulative
material.
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Application 12/924,974

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Appellant additionally argues that Babbitt teaches away from using
fibers having the same diameter. Appeal Br. 11–12 (citing Declaration of
Patrick M. Gavin, filed June 20, 2014). Although we find no express
disclosure in Babbitt that would require fibers of different diameter, we note
that Babbitt does require a blend of groups of fibers differing in size.
Babbitt 2:35–42. To the extent that differently-sized fibers would have
implied or suggested fibers of different diameters, Babbitt also does not
support the Examiner’s finding that one of ordinary skill would have had a
reason to provide form the disclosed insulation from same-sized fibers.
The Examiner has the initial burden of establishing a prima facie case
of obviousness based on an inherent or explicit disclosure of the claimed
subject matter under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992) (“[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie case of
unpatentability.”). To establish a prima facie case of obviousness, the
Examiner must show that each and every limitation of the claim is described
or suggested by the prior art or would have been obvious based on the
knowledge of those of ordinary skill in the art or the inferences and creative
steps a person of ordinary skill in the art would have employed. In re Fine,
837 F.2d 1071, 1074 (Fed. Cir. 1988); KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 417 (2007).
In light of the foregoing teachings in Evans, we are persuaded that a
preponderance of evidence does not support the Examiner’s finding that the
relied-upon prior art teaches a reason to use same-diameter fibers in
Babbitt’s loose-fill insulation material, absent the use of impermissible
hindsight. The fact finder must be aware “of the distortion caused by
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hindsight bias and must be cautious of arguments reliant upon ex post
reasoning.” KSR, 550 U.S. at 421 (citing Graham v. John Deere Co., 383
U.S. 1, 36 (1966) (warning against a “temptation to read into the prior art the
teachings of the invention in issue”)). Accordingly, we do not sustain
Rejection I.

Rejection II
The Examiner’s obviousness determination in Rejection II is premised
on the same unsupported finding discussed above. See Final Act. 17.
Accordingly, Rejection II is not sustained for the same reasons.
DECISION
The Examiner’s decision rejecting claims 1, 3, 4, 6, 7, 9, 10, 12, 13,
15, 16, 18, 19, 21, 22, and 24–26 is reversed.

REVERSED