Ex Parte Connelly et al

Board of Patent Appeals and Interferences

Jun 4, 2009

11160456 (B.P.A.I. Jun. 4, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TERENCE CONNELLY
and PAUL G. DEACON
____________

Appeal 2009-001651
Application 11/160,456
Technology Center 1700
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Decided:1 June 04, 2009
____________

Before BRADLEY R. GARRIS, JEFFREY T. SMITH, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2009-001651
Application 11/160,456

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of all pending claims 1-14. (Appeal Brief filed January 14, 2008,
hereinafter “App. Br.,” 2). We have jurisdiction pursuant to 35 U.S.C.
§ 6(b).
We AFFIRM.
THE INVENTION
Appellants describe an acoustical insulator including a first nonwoven
layer and a second nonwoven layer. Claim 1, reproduced below, is
representative of the subject matter on appeal.
1. An acoustical insulator for application to an
interior surface of a motor vehicle, comprising:

a first nonwoven layer having a first areal density; and

a second nonwoven layer coupled with said first
nonwoven layer to define a laminate, said second nonwoven
layer having a second areal density less than said first areal
density, said laminate adapted to be applied to the interior
surface of the motor vehicle with said first nonwoven layer
being positioned between said second nonwoven layer and the
surface, and said second nonwoven layer having a specific
airflow resistance between about 200 mks Rayls and about
1200 mks Rayls.

THE REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Sugawara US 6,524,691 B2 Feb. 25, 2003
Alts US 6,713,150 B2 Mar. 30, 2004
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Appeal 2009-001651
Application 11/160,456

There are four grounds of rejection for review on appeal: (1) the
Examiner rejected claims 1, 2, 5, 6, 9, 10, 13, and 14 under 35 U.S.C.
§ 102(b) as being anticipated by Alts; (2) the Examiner rejected claims 1, 2,
5, 6, 9, 10, 13, and 14 under 35 U.S.C. § 103(a) as being unpatentable over
Alts; (3) the Examiner rejected claims 1-6, 8-10, 13, and 14 under 35 U.S.C.
§ 103(a) as being unpatentable over Alts; and (4) the Examiner rejected
claims 7, 11, and 12 under 35 U.S.C. § 103(a) as being unpatentable over
Alts in view of Sugawara.
The Examiner found that Alts describes a sound absorbing laminate of
nonwoven material having a first layer and a second layer disposed between
the first layer and a substrate layer. (Examiner’s Answer entered March 8,
2008, hereinafter “Ans.,” 3). The Examiner found that the second layer has
a lower areal density than the first layer.2 Id. The Examiner stated that
the instant claim [1] is drawn to a two layered embodiment
and [] the limitations regarding how the layers are disposed
are statements of intended use . . . In the instant case since
the material of Alts is capable of performing the intended use
it meets the claimed invention.

(Ans. 6).
Appellants contend that Alts does not disclose the arrangement of
layers as recited in the claims. (App. Br. 3 and 4). Specifically, Appellants
contend that the “surface” in Alts is core layer (2), and that contrary to the
appealed claims, Alts discloses that the layer of lower density is closest to
the surface. (App. Br. 4). Appellants argue that

2 The Examiner found, and Appellants do not dispute that the area weight
disclosed by Alts corresponds to areal density. (Ans. 3).
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Appeal 2009-001651
Application 11/160,456

the interior surface in the preamble is used in the body of the
claim as a structural feature giving a reference to the
arrangement of the first and second nonwoven layers . . .
Hence, the “interior surface” is significant in claim
construction and gives life, meaning and vitality to the claim.

(App. Br. 6).

ISSUE
We frame the issue as: Have Appellants shown that the Examiner
reversibly erred in finding that Alts discloses the laminate structure recited
in appealed claim 1?

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Appellants’ Specification states: “[t]he laminate is adapted to be
applied to a surface of a motor vehicle with the first layer
positioned between said second nonwoven layer and the surface
when applied to an interior surface of a motor vehicle.” (Spec.
[Para 7]).
2. Alts discloses a component part for a vehicle, which may be a rear
shelf having high sound absorption. (Col. 1, ll. 5-10, 41-48).
3. Figure 1 of Alts is reproduced below:
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Application 11/160,456

Figure 1 depicts a rear shelf of a motor vehicle including a core
layer 2, reinforcing layers 3 and 4, and additional decor layers 5
and 6. (Col. 3, ll. 5-7; col. 4, ll. 51-54).
4. Alts discloses reinforcing layers including a first nonwoven layer
and a second connecting layer composed of SMMS-fibers (Spun-
bond, Melt-blown, Melt-blown, Spun-bond polypropylene fibers).
(Col. 2, ll. 32-40).
5. Alts states:
In a preferred embodiment, reinforcing layers having an area
weight of around 300 to 1000 g/m2 are used on both the
passenger compartment side as well as the trunk (or boot) side.
The inventive rear shelf also permits the inclusion of additional
layers, for example for improving the bonding connection
between the core layer and the reinforcement layer. So called
polypropylene SMMS-materials can be used for such additional
layers. In a preferred embodiment this additional layer has an
area weight of between 20 to 50 g/m2.

(Col. 3, ll. 27-36).

6. Alts discloses that the reinforcement layers have an air flow
resistance of between 500 to 3500 Nsm-3. (Col. 3, ll. 39-42).

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Appeal 2009-001651
Application 11/160,456

PRINCIPLES OF LAW
“To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently.” In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).
If [] the body of the claim fully and intrinsically sets forth
the complete invention, including all of its limitations, and
the preamble offers no distinct definition of any of the
claimed invention’s limitations, but rather merely states, for
example, the purpose or intended use of the invention, then
the preamble is of no significance to claim construction
because it cannot be said to constitute or explain a claim
limitation.

Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir.
1999).

ANALYSIS
For each ground of rejection, Appellants state that the dependent
claims are not argued separately. (App. Br. 7, 10, and 11). Accordingly, we
select claim 1 as representative of the arguments made by Appellants, and
claims 2-14 stand or fall with claim 1 pursuant to 37 C.F.R.
§ 41.37(c)(1)(vii).3

Rejection of claims 1, 2, 5, 6, 9, and 10 as being anticipated by Alts
Appellants do not dispute that the second nonwoven layer disclosed
by Alts possesses the specific air flow resistance recited in claim 1. Rather,

3 Only those arguments actually made by Appellants have been considered in
this decision. Arguments which Appellants could have made but chose not
to make have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii) (2007).
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Appeal 2009-001651
Application 11/160,456

Appellants contend that the order of layers disclosed in Alts does not
anticipate the order of layers recited in claim 1. Appellants, citing MPEP
§ 2111.02 and In re Stencel, 828 F.2d 751 (Fed. Cir. 1987), argue that “the
interior surface in claim 1 limits the structure of the acoustical insulator as
the patentability of the claimed acoustical insulator should not be measured
in comparison with acoustical insulators broadly, but acoustical insulators
suitable for use in combination with the interior surface of a motor vehicle.”
(App. Br. 5-6).
Claim 1 recites “[a]n acoustical insulator for application to an interior
surface of a motor vehicle . . . adapted to be applied to the interior surface of
the motor vehicle with said first nonwoven layer being positioned between
said second nonwoven layer and the surface.” Claim 1 structurally requires
only a first nonwoven layer and a second nonwoven layer, which form a two
layer laminate structure. Moreover, by using the transitional phrase,
“comprising,” claim 1 does not exclude the presence of other layers in the
laminate, such as core layer 2 disclosed by Alts.
The structure of the insulator of Alts meets the laminate structure
comprising the two layers as recited in claim 1. (See Ans. 6 and 7).
Specifically, Alts describes an insulator having a core layer 2 with
reinforcing layers 3 and 4 on either side. (FF 3). Reinforcing layers 3 and 4
have an area weight of 300 to 1000 g/m2 and correspond to the first non-
woven layers having an areal density. (FF 4 and 5). Alts discloses
polypropylene SMMS-materials having an area weight of between 20 to 50
g/m2 for improving a bonding connection between reinforcing layers 3 and 4
and core layer 2. (FF 5). The polypropylene SMMS-materials correspond
to the second non-woven layers having an areal density less than reinforcing
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Appeal 2009-001651
Application 11/160,456

layers 3 and 4. Thus, Alts discloses laminate structure comprising the two
layers required in claim 1.
Moreover, when the insulator of Alts is applied to the interior surface
of a motor vehicle, at least one of reinforcing layers 3 and 4 (the first
nonwoven layer) would be positioned between a bonding connection layer
of lower areal density (the second nonwoven layer) and the interior surface
of the motor vehicle. Thus, Appellants have not demonstrated that the
laminates of Alts would be unsuitable for application to interior surfaces of
motor vehicles in the manner claimed.
Rejection of claims 1, 2, 5, 6, 9, and 10 as being unpatentable over
Alts

Because we affirm the Examiner’s rejection of claim 1 as being
anticipated by Alts, we agree with the Examiner, that there is no need to
modify Alts to rearrange the layers to arrive at the structure recited in
Appellants’ claims. (Ans. 7). Therefore, we affirm the Examiner’s rejection
of claim 1 as being unpatentable over Alts for the same reasons as discussed
above. In re Fracalossi, 681 F.2d 792, 794 (CCPA 1982) (“lack of novelty
is the ultimate of obviousness”).
Rejection of claims 1-6, 8-10, 13, and 14 as being unpatentable over
Alts and Rejection of claims 7, 11, and 12 as being unpatentable over
Alts in view of Sugawara.

Appellants do not present any separate arguments for the rejection of
claims 1-6, 8-10, 13, and 14 as being unpatentable over Alts and the
rejection of claims 7, 11, and 12 as being unpatentable over Alts in view of
Sugawara. Therefore, we affirm the Examiner’s rejections for the same
reasons as discussed above.
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Appeal 2009-001651
Application 11/160,456

CONCLUSION
Appellants have failed to demonstrate that the Examiner reversibly
erred in interpreting outer surfaces 5 and 6 of Alts as “the interior surface of
a motor vehicle” as recited in appealed claim 1.

ORDER
We affirm the Examiner’s decision rejecting claims 1, 2, 5, 6, 9, 10,
13, and 14 under 35 U.S.C. § 102 (b) as being anticipated by Alts.
We affirm the Examiner’s decision rejecting claims 1, 2, 5, 6, 9, 10,
13, and 14 under 35 U.S.C. § 103(a) as being unpatentable over Alts.
We affirm the Examiner’s decision rejecting claims 1-6, 8-10, 13, and
14 under 35 U.S.C. § 103(a) as being unpatentable over Alts.
We affirm the Examiner’s decision rejecting claims 7, 11, and 12
under 35 U.S.C. § 103(a) as being unpatentable over Alts in view of
Sugawara.

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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WOOD, HERRON & EVANS, LLP (LEAR)
2700 CAREW TOWER
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CINCINNATI, OH 45202
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