Ex Parte Baker et al

Patent Trial and Appeal Board

Jun 23, 2017

13358110 (P.T.A.B. Jun. 23, 2017)

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.
13/358,110 01/25/2012 Kevin D. Baker 0136.09 8538
25712 7590 06/27/2017
USDA-ARS-OFFICE OF TECHNOLOGY TRANSFER
PATENT ADVISORS OFFICE
5601 SUNNYSIDE AVENUE
REETSVTT.T.E, MD 20705
EXAMINER
HARM, NICHOLAS R
ART UNIT PAPER NUMBER
1745
NOTIFICATION DATE DELIVERY MODE
06/27/2017 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):
Claudia.Reynolds @ ars.usda.gov
Robin. Mccormick @ ars. usda.gov
Kelli. Gantt @ ars .u sda. gov
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEVIN D. BAKER and SIDNEY E. HUGHS
Appeal 2016-007043
Application 13/358,110
Technology Center 1700
Before MICHAEL P. COLAIANNI, JULIA HEANEY, and
BRIAN D. RANGE, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 the final rejection of claims
1—5 and 7—16. We have jurisdiction over the appeal pursuant to 35 U.S.C.
§ 6(b).
We AFFIRM.
Appeal 2016-007043
Application 13/358,110
Appellants’ invention is directed to an apparatus for separating the
backing portion of fiberglass insulation from the remaining fibrous
(fiberglass) material that comprises the bulk of conventional insulation
(Spec. 1:4—6).
Claim 1 is illustrative:
1. A fiber batt reclaiming apparatus comprising:
a roller; and
a separation tool;
whereby as the roller rotates, a backing material attached
to a fiber batt is drawn to the roller so that the separation tool is
positioned to separate the fiber batt from the backing.
Appellants appeal the following rejections:
1. Claims 1—4, 15, and 16 are rejected under 35 U.S.C. § 102(b) as
unpatentable over Candore (US 5,358,591, iss. Oct. 25, 1994).
2. Claims 1,5, and 7 are rejected under 35 U.S.C. § 102(b) as
unpatentable over Pfitzner (US 7,763,138 B2, iss. July 27, 2010).
3. Claims 1,8, and 9 are rejected under 35 U.S.C. § 102(b) as
unpatentable over Wright (US 6,500,298 Bl, iss. Dec. 31, 2002).
4. Claims 1 and 10-12 are rejected under 35 U.S.C. § 102(b) as
unpatentable over Simpson (US 4,347,985, iss. Sept. 7, 1982).
5. Claims 1, 13, and 14 are rejected under 35 U.S.C. § 102(b) as
unpatentable over Clough (US 6,681,828 Bl, iss. Jan. 27, 2004).
Appellants argue independent claim 1 only (App. Br. 7—12).
FINDINGS OF FACT & ANALYSIS
The Examiner’s findings regarding Candore, Pfitzner, Wright,
Simpson and Clough are located on pages 3^4 of the Final Action. The
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Application 13/358,110
Examiner finds that each reference teaches a roller and a separation tool to
effect delamination of an object, which satisfies the structure of the
apparatus and system recited in claims 1 and 15 (Final Act. 3—4; Ans. 2-4).
The Examiner finds that the claim limitation of a fiber batt is merely an
intended use of the apparatus and the structure of Candore, Pfitzner, Wright,
Simpson or Clough is capable of performing the separation of fiber batt
(Ans. 2-4).
Appellants argue that the Examiner has not established a prima facie
case of unpatentability because the Examiner’s statement of the rejections is
terse and fails to explain how the prior art would have suggested a fiber batt
(Br. 8).
The Patent and Trademark Office satisfies its procedural burden of
establishing a prima facie case when its rejection satisfies 35U.S.C. § 132
and notifies the applicant by stating the reasons for its rejection together
with such information and references as may be useful in judging the
propriety of continuing the prosecution of the application. In re Jung, 637
F.3d 1356, 1362 (Fed. Cir. 2011). In the present case, the Examiner’s
rejections may have been short and to the point, but the rejections addressed
the structure of the claims and how the prior art was applied to them (Final
Act. 3—4). The rejections explained that the Examiner finds that the
structure of the prior art apparatuses are capable of performing the intended
use (i.e., separating fiber batt insulation backing from the fiber batt) (Final
Act. 3—4). The Examiner has dispensed with the initial burden of
establishing a prima facie case of anticipation.
Appellants argue that the Examiner failed to consider all of
Appellants’ claim limitations that include using a fiberglass batt (Br. 9).
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Appeal 2016-007043
Application 13/358,110
Appellants contend that Candore discloses a method and apparatus for
removing a cover sheet 8, 10 from the top and bottom surface of a rigid,
planar laminated board 6 (Br. 10). Appellants argue that it is not the air
injectors 46, 48 and a set of knurling wheels 50 that separate the coversheet
8, 10 from the board 6 (Br. 10). Appellants argue that air injectors 54, 56
only act to help the sucking action of the rollers 22, 24 by pressing the
released edge of the cover sheets 8, 10 into the sucking rollers 22, 24 (Br.
10). Appellants conclude that Candore does not disclose an equivalent of
Appellants’ fiber batt separation tool. Id. Appellants argue that Candore,
Pfitzner, Wright, Simpson and Clough are non-analogous and fail to teach a
fiber batt, a fiber batt separation tool or a fiber batt reclaiming
apparatus/system (Br. 11—12).
Claims 1 and 15 are directed to apparatus and system claims,
respectively. As apparatus claims, the material or article worked upon by
the apparatus does not impart patentability to the claims. In re Otto, 312
F.2d 937, 940 (CCPA 1963). Claim 1 requires as structural components a
roller and a separation tool. Claim 15 requires structurally a perforated
roller, a vacuum means, and a separation tool capable of separating backing
from a fiber batt. In other words, the recitation of a fiber batt in the claims is
merely an intended use of the apparatus that does not impart a structural
difference to the apparatus. The Specification describes that a “fiber batt
separation tool” may include a knife, an air bar with nozzles, saw wheel or
brush (Spec. 4:14—15, 21; 5:7, 13—14). The Examiner finds that Candore,
Pfitzner, Wright, Simpson and Clough each teaches a roller and a separation
tool for delaminating a structure (Final Act. 3^4; Ans. 2-4). The Examiner
further finds that Candore teaches using a perforated roller as recited in
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Appeal 2016-007043
Application 13/358,110
claim 15 (Final Act. 3). The separation tool in Candore includes air jets 46,
48, 54 and 56 along with knurling wheels 50 (Candore, col. 7,11. 51—67; col.
8,11. 44-49). Candore’s knurling wheels 50 etch (i.e., cut) the top layer and
lift up the layer that is then further lifted up by the air jets 46, 48. Id. In
other words, Candore’s knurling wheels along with the air jets function as a
separation tool for delaminating a structure. Indeed, Candore’s knurling
wheels appear to include a knife-like functionality along with an air jet
peeling force, each of which is disclosed as a suitable separation tool by
Appellants in the Specification. Appellants do not explain the difference
between the claimed fiber batt separation tool and Candore’s separating tool.
Because the structure required by the claims is taught by the applied
prior art, the Examiner is correct that there is no structural difference
between Candore, Wright, Pfitzner, Simpson and Clough and the claimed
invention (Ans. 4). In light of this similarity in structure, the Examiner
correctly finds that the apparatus of Candore, Pfitzner, Simpson, Wright, and
Clough would have been capable of removing backing from fiber batts.
Though Appellants argue that Candore, Pfitzner, Simpson, Wright and
Clough are non-analogous, the Examiner’s rejection are under 35 U.S.C. §
102(b). Whether prior art is analogous is relevant to a rejection under 35
U.S.C. § 103(a), which is not the rejection before us. In re Self, 671 F.2d
1344, 1351 (CCPA 1982).
On this record, we affirm the Examiner’s § 102 rejections over
Candore, Pfitzner, Simpson, Wright, and Clough.
DECISION
The Examiner’s decision is affirmed.
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Appeal 2016-007043
Application 13/358,110
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
ORDER
AFFIRMED
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