Ex Parte Cao et al

Patent Trial and Appeal Board

Sep 18, 2017

13268200 (P.T.A.B. Sep. 18, 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.
13/268,200 10/07/2011 Bangji Cao DPC-46949US1 6872
89462 7590 09/20/2017
Pearne Rr frnrHnn T T P
EXAMINER
1801 East Ninth Street CHOI, PETER Y
Suite 1200
Cleveland, OH 44114-3108 ART UNIT PAPER NUMBER
1786
NOTIFICATION DATE DELIVERY MODE
09/20/2017 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):
dpeterlin @ pearne .com
patdocket@peame.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BANGJI CAO,
WEIXIN D. SONG, OING YU,
and DONALD S. MUELLER
Appeal 2016-007494
Application 13/268,200
Technology Center 1700
Before ADRIENE LEPIANE HANLON, TERRY J. OWENS, and
WESLEY B. DERRICK, Administrative Patent Judges.
HANLON, Administrative Patent Judge.
DECISION ON APPEAL
A. STATEMENT OF THE CASE
The Appellants filed an appeal under 35 U.S.C. § 134(a) from an Examiner’s
decision finally rejecting claims 1, 3—10, 12, and 21—24. Claims 26 and 27 are also
pending but have been withdrawn from consideration. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
The claimed subject matter is directed to an acoustic ceiling tile comprising
a core that exhibits hydrophobic properties. Representative claim 1 is reproduced
Appeal 2016-007494
Application 13/268,200
below from the Claims Appendix of the Appeal Brief dated December 29, 2015
(“App. Br.”). The limitation at issue is italicized.
1. An acoustic ceiling tile configured to be suspended in a ceiling
tile grid comprising:
a self-supporting and wet laid non-woven core comprising an
inorganic base fiber and a synthetic thermal bonding fiber that exhibits
hydrophobic properties',
the synthetic thermal bonding fiber having a main body portion
comprising an average fiber length of about 3 mm or less, an average
fiber diameter of about 30 microns or less and a multitude of
microfibrils extending from the main body portion, a combination of
the main body portion and the plurality of microfibrils providing a
bonding surface area of about 0.5 m2/gram to about 15 m2/gram or
greater;
wherein the inorganic base fiber and the synthetic thermal
bonding fiber are homogeneously dispersed in the non-woven core
and the inorganic base fiber and the synthetic thermal bonding fiber
comprise porous and lofty structures with the porous and lofty
structure of the inorganic base fiber being fused with the porous and
lofty structure of the synthetic thermal bonding fiber at a plurality of
bonding sites so as to provide rigidity to the porous and lofty
structures of the inorganic base fiber and the synthetic thermal
bonding fiber; and
the core having a porous surface and a density of about 7 pcf to
about 13 pcf or less;
wherein the acoustic ceiling tile exhibits a noise reduction
coefficient of at least 0.55.
App. Br. 17.
The Examiner maintains the following rejections on appeal:1
1 The rejection of claims 1, 3—10, 12, and 21—24 under 35 U.S.C. § 112, first
paragraph, based on the written description requirement, was withdrawn in the
Examiner’s Answer dated June 7, 2016 (“Ans.”), at 10.
2
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Application 13/268,200
(1) claims 1, 4—10, 12, and 21—24 under 35 U.S.C. § 103(a) as
unpatentable over Haque2 in view of Horimoto3 and Pittman;4 and
(2) claims 1, 3—10, 12, and 21—24 under 35 U.S.C. § 103(a) as
unpatentable over Haque in view of Horimoto, Bond et al.,5 and Pittman.
B. DISCUSSION
1. Rejection (1)
The Examiner finds Haque discloses an acoustic mat comprising inorganic
glass fibers and thermoplastic bonding fibers comprising ethylene vinyl acetate,
polyester, or polyolefin. Ans. 2—3. The Examiner finds the synthetic bonding
fibers are inherently hydrophobic. Ans. 3.
The Examiner finds Haque does not teach the claimed bonding surface area
of the bonding fibers, including the claimed microfibrils, the claimed density, the
claimed noise reduction coefficient, and the incorporation of perlite. Ans. 3.
The Examiner finds Horimoto discloses a synthetic pulp comprising a
thermoplastic pulp fiber and polypropylene glycol adhered to the surface thereof,
whereby the pulp has an excellent hydrophilic property. Ans. 4. The Examiner
finds Horimoto teaches that the pulp fiber is composed of polyethylene or
polypropylene multi-branched filaments having a surface area of at least 0.1 m2/g,
which overlaps the claimed range.6 Ans. 4 (citing Horimoto, col. 4,11. 4—17). The
2 US 2006/0141884 Al, published June 29, 2006 (“Haque”).
3 US 4,833,011, issued May 23, 1989 (“Horimoto”).
4 US 5,071,511, issued December 10, 1991 (“Pittman”).
5 US 2002/0168518 Al, published November 14, 2002 (“Bond”).
6 Referring to the average fiber length and average fiber diameter recited in claims
1 and 3, the Appellants argue in the Reply Brief, for the first time on appeal, that
“Horimoto provides no information concerning the dimensions of the main body
portion of the bonding fiber or the diameter of the branched filaments.” Reply
Brief dated August 1, 2016 (“Reply Br.”), at 5. The Appellants’ argument is not
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Application 13/268,200
Examiner finds Horimoto teaches that the synthetic pulp may be mixed with
inorganic fibers, such as glass fiber, wherein the fibers are at least partially bonded
to one another through the thermoplastic pulp fiber. Ans. 4 (citing Horimoto,
col. 6,11. 52—68). The Examiner also finds that articles made with the disclosed
synthetic pulp include insulating and construction materials having a high wet
strength. Ans. 4.
The Examiner concludes that it would have been obvious to one of ordinary
skill in the art to
substitute] the thermoplastic bonding fiber of Haque with the
synthetic pulp having a multi-branched structure and the surface area,
such as within the claimed range, as taught by Horimoto, motivated
by the desire of forming a conventional acoustic mat comprising a
synthetic pulp bonding fiber known in the art as being predictably
suitable for insulation or construction structures having high wet
strength.
Ans. 4—5.
The Examiner relies on Pittman as evidence that the addition of perlite and
the claimed density and noise reduction coefficient were known in the acoustic
panel art at the time of the Appellants’ invention. Ans. 5—6, 14. The Examiner
concludes that it would have been obvious to one of ordinary skill in the art to
form Haque’s modified acoustic mat,
wherein the panel [or mat] additionally includes perlite and has the
density and noise reduction coefficient, such as within the claimed
ranges, as taught by Pittman, motivated by the desire of forming a
responsive to an argument raised in the Examiner’s Answer (see Final Office
Action dated June 29, 2015 (“Final”), at 5—6), and the Appellants do not show
good cause why their argument could not have been presented in the Appeal Brief.
Therefore, the Appellants’ argument is untimely and will not be considered on
appeal. See 37 C.F.R. § 41.41(b)(2) (2015).
4
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Application 13/268,200
conventional acoustic panel having densities and noise reduction
coefficients known in the art as being predictably suitable for forming
a highly sound-absorptive ceiling panel.
Ans. 6.
The Appellants argue that the combination of Haque, Horimoto, and Pittman
is improper for at least two reasons. First, the Appellants argue that “even if the
teachings of Haque, Horimoto and Pittman are combined, the resulting product
would not meet the limitations of the claims.” App. Br. 10—11. Second, the
Appellants argue that “it would not be obvious to one skilled in the art to combine
the teachings of Haque, Horimoto and Pittman in the manner suggested by the
Examiner.” App. Br. 11.
As for the first reason, the Appellants argue that claim 1 recites “a ‘self-
supporting and wet-laid non-woven core comprising an inorganic base fiber
and . . . synthetic thermal bonding fibers [sic] that exhibit[s] hydrophobic
properties.App. Br. 11 (emphasis added); see App. Br. 17. The Appellants
argue that Horimoto, on the other hand, discloses a synthetic pulp having excellent
hydrophilic properties. App. Br. 11 (citing Horimoto, col. 2,11. 10—15). The
Appellants argue that “Horimoto accomplishes his objective of providing a
hydrophilic synthetic pulp by treating the synthetic pulp with polypropylene
glycol.” App. Br. 11 (citing Horimoto, col. 4,11. 38 etseq.).
The Examiner concludes that claim 1 does not exclude the synthetic pulp
disclosed in Horimoto, which includes hydrophobic thermoplastic fibers such as
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Application 13/268,200
polyethylene or polypropylene.7 Ans. 10—12. For support, the Examiner relies on
paragraphs 22 and 24 from the Appellants’ Specification,8 which state:
In some cases, the hydrophobic nature of the synthetic fibers
renders it difficult to disperse them in an aqueous slurry. To improve
the dispersion stability, the synthetic thermal bonding fibers also may
be surface treated to render an outer surface or a portion of the outer
surface hydrophilic. To make the outer surface hydrophilic, a fiber
manufacturer introduces certain hydrophilic functional groups such as
carboxylic group (-COOH) or hydroxyl group (-OH) in the polymer
used to form fibers. With a hydrophilic outer surface, the synthetic
thermal bonding fibers are generally more stable in an aqueous slurry.
* * *
It is believed that hydrophilic treated fibers still exhibit
hydrophobic tendencies during drying because the treated fibers have
just enough hydrophilic functional groups attached to hydrophobic
polymer chains so that they can be suspended in water and dispersed
with other ingredients. However, the bulk of these fibers are still
hydrophobic, and they have a very low water absorbency. When the
polymer melts it does not lose these groups, so the hydrophobic
tendencies remain.
Spec. 22, 24 (emphasis added).
The Examiner also notes that claim 21, which depends from claim 1, recites
that “at least a portion of the outer surface of the synthetic thermal bonding fibers
is hydrophilic.” Ans. 10 (emphasis added); see also App. Br. 20.
7 Horimoto discloses that the amount of polypropylene glycol stuck to Horimoto’s
pulp fiber may be as little as 0.01% by weight based on the pulp fiber. Horimoto,
col. 4,11. 55-57.
8 The Examiner notes that the Appellants’ disclosure “is merely relied upon to
establish the scope of the claimed invention, including that a structure, such as
disclosed by Horimoto, is within the scope of the claimed bonding fibers exhibiting
hydrophobic properties.” Ans. 13; see App. Br. 12 (arguing that the Examiner
inappropriately relies on the Appellants’ disclosure).
6
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Horimoto discloses that the pulp fiber is mixed with, for example, an
inorganic fiber such as a glass fiber and a formed body is made with the mixture.
The formed body is said to be subjected to a fusion-bonding treatment “at such a
high temperature that at least a part of the synthetic pulp fiber of the present
invention is molten,” whereby the fibers “are bonded at least partially to one
another through the fusion-treated thermoplastic resin pulp fiber.”9 Horimoto, col.
6,11. 53—66. Similarly, Haque discloses that a sheet formed from a mixture of
glass fibers and thermoplastic bonding fibers is heated to a temperature above the
melting point of the thermoplastic bonding fibers but below the melting point of
the glass fibers to at least partially melt the thermoplastic bonding fibers and bond
the glass fibers and the thermoplastic bonding fibers. Haque Tflf 8, 49.
Based on the foregoing, a preponderance of the evidence supports a finding
that Haque’s modified article exhibits hydrophobic properties, after melting, due to
the hydrophobic thermoplastic resin in Horimoto’s surface treated thermoplastic
pulp fiber. Thus, the burden properly shifted to the Appellants to demonstrate that
Haque’s modified article does not exhibit hydrophobic properties. See In re Best,
562 F.2d 1252, 1255 (CCPA 1977) (“Where, as here, the claimed and prior art
products are identical or substantially identical, or are produced by identical or
substantially identical processes, the PTO can require an applicant to prove that the
prior art products do not necessarily or inherently possess the characteristics of his
claimed product.”). The Appellants have not satisfied that burden.
The Appellants also argue:
9 The Appellants disclose that “the drying oven operates at about 300°F or at least
about 5 to about 50°F higher than the melting point of the synthetic bonding fiber
to ensure sufficient melting and bonding of the tile ingredients.” Spec. 129.
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Application 13/268,200
[T]he product resulting from a modification of Haque in view of
Horimoto could not have the structural features or properties that are
recited in Applicants’ claims for Applicants’ product, i.e., the porous
and lofty structure formed by the inorganic base fibers and the
synthetic thermal bonding fibers as well as the claimed porosity and
density of the product. There is nothing in the prior art to contradict
the fact that, as taught by Applicants, these features and properties
are the result of applying a synthetic thermal bonding fiber that is
hydrophobic and the features and properties are not available when
the synthetic thermal bonding fiber is hydrophilic as taught by
Horimoto.
App. Br. 12—13 (emphasis added).
We understand the Appellants to be arguing that the structural features and
properties identified above are the result of applying a synthetic thermal bonding
fiber that exhibits hydrophobic properties. We base that understanding on the
disclosure in the Appellants’ Specification that the bonding fibers “may be surface
treated to render them hydrophilic at least on an outer surface thereof.” Spec. 132.
There is no dispute on this record that the thermoplastic resin in Horimoto’s
surface treated thermoplastic pulp fiber is hydrophobic. Thus, absent any evidence
to the contrary, it is reasonable to find that, like the Appellants’ product, Haque’s
modified article exhibits the structural features and properties identified above.10
10 For the first time on appeal, the Appellants argue in the Reply Brief that
“because Haque desires that there be intimate contact between the reinforcement
fibers and the bonding components, as expressed [in] paragraph [0063], one skilled
in the art would conclude that the intimate contact between the components would
produce final products that are dense to a degree such that their porosity and sound
absorption qualities would be compromised.” Reply Br. 3; see also Reply Br. 5—6.
The Appellants also argue that substituting Horimoto’s hydrophilic bonding fibers
for the bonding fibers of Haque “would only enhance the establishment of a dense
structure, thereby producing a final product having even less porosity and more
inferior sound absorption qualities.” Reply Br. 4; see also Reply Br. 5—6. The
Appellants’ arguments are not responsive to an argument raised in the Examiner’s
8
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Application 13/268,200
The Examiner also relies on Pittman as evidence that conventional acoustic
panels have a density and a noise reduction coefficient as recited in claim 1. Ans.
5—6, 13—15. However, the Appellants argue that:
Pittman is not aware of the relationship between density and noise
reduction coefficient values for ceiling tile manufactured from
inorganic base fibers and synthetic thermal bonding fibers including a
multitude of micro branches extending from outer surfaces of the
synthetic thermal bonding fibers to provide an increased bonding
surface area relative to length and diameter of the synthetic thermal
bonding fibers if compared to an unbranched fiber of a similar size.
App. Br. 14.
Significantly, the Appellants do not direct us to any evidence showing that it
would have been beyond the level of ordinary skill in the art to adjust the density
and noise reduction coefficient of Haque’s modified acoustic panel to values
within the ranges disclosed in Pittman.* 11 Therefore, the Appellants’ argument is
not persuasive of reversible error.
As for the Appellants’ second reason why the combination of Haque,
Horimoto, and Pittman is improper, the Appellants argue:
[Although it might be advantageous for the products of Haque to
have high wet strength, one skilled in the art would not be led to
modify Haque in view of Horimoto because to do so would produce
products containing significant hydrophilic materials such that the
products would be susceptible to being readily wetted. It would be
Answer. See Final 4—5; Ans. 13—15 (relying on Pittman to teach the claimed
density). Moreover, the Appellants do not show good cause why their arguments
could not have been presented in the Appeal Brief. Therefore, the Appellants’
arguments are untimely and will not be considered on appeal. See 37 C.F.R.
§ 41.41(b)(2) (2015).
11 There is no dispute on this record that Pittman discloses a density and a noise
reduction coefficient that overlap the claimed ranges. See In re Peterson, 315 F.3d
1325, 1329 (Fed. Cir. 2003) (“even a slight overlap in range establishes aprima
facie case of obviousness”).
9
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Application 13/268,200
counterintuitive for one skilled in the art to modify Haque’s products,
e.g., reinforcing automotive products, so that they would readily
absorb water and thereby potentially be subject to becoming water­
laden.
App. Br. 13.
The Appellants’ argument is not persuasive of reversible error. The
Appellants acknowledge that a high wet strength might be advantageous for the
products of Haque. In that regard, Haque discloses that automotive applications
include floor liners. Haque 153. The Appellants do not explain, in any detail,
why a high wet strength would not be useful in an automotive floor liner, including
those liners that absorb water.
Finally, the Appellants argue that the claimed ceiling tile exhibits
unexpected results. App. Br. 15. The Appellants, however, do not direct us to any
evidence demonstrating unexpected results. In re De Blauwe, 736 F.2d 699, 705
(Fed. Cir. 1984) (“unexpected results must be established by factual evidence”).
Based on the foregoing, the evidence of record weighs most heavily in favor
of the Examiner’s conclusion of obviousness. Therefore, the § 103(a) rejection of
claim 1 based on the combination of Haque, Horimoto, and Pittman is sustained.
The Appellants do not present arguments in support of the separate patentability of
any of claims 4—10, 12, and 21—24.12 Therefore, the § 103(a) rejection of claims
4—10, 12, and 21—24 based on the combination of Haque, Horimoto, and Pittman is
also sustained.
12 In the Reply Brief, the Appellants present an argument directed to claim 9 for the
first time on appeal. Reply Br. 6. The Appellants’ argument is not responsive to
an argument raised in the Examiner’s Answer (see Final 8), and the Appellants do
not show good cause why their argument could not have been presented in the
Appeal Brief. Therefore, the Appellants’ argument is untimely and will not be
considered on appeal. See 37 C.F.R. § 41.41(b)(2) (2015).
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2. Rejection (2)
The Appellants argue that Bond does not cure the deficiencies in Haque,
Horimoto, and Pittman.13 App. Br. 16. For the reasons set forth above, there are
no deficiencies in the combination of Haque, Horimoto, and Pittman in the
§ 103(a) rejection of claim 1 that require curing by Bond. Therefore, the § 103(a)
rejection of claims 1, 3—10, 12, and 21—24 based on the combination of Haque,
Horimoto, Bond, and Pittman is sustained.
C. DECISION
The Examiner’s decision 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)(l)(iv).
AFFIRMED
13 In the Reply Brief, the Appellants argue for the first time on appeal that
paragraph 11 of their Specification is evidence that the Examiner’s conclusions
regarding Bond are not correct. Reply Br. 6. The Appellants’ argument is not
responsive to an argument raised in the Examiner’s Answer (see Final 9—11), and
the Appellants do not show good cause why their argument could not have been
presented in the Appeal Brief. Therefore, the Appellants’ argument is untimely
and will not be considered on appeal. See 37 C.F.R. § 41.41(b)(2) (2015).
11