Ex Parte D et al

Board of Patent Appeals and Interferences

Aug 10, 2012

11503024 (B.P.A.I. Aug. 10, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/503,024 08/11/2006 Sean D'Silva 7536 1976
29602 7590 08/13/2012
JOHNS MANVILLE
10100 WEST UTE AVENUE
PO BOX 625005
LITTLETON, CO 80162-5005
EXAMINER
CHOI, PETER Y
ART UNIT PAPER NUMBER
1786
MAIL DATE DELIVERY MODE
08/13/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte SEAN D’SILVA and THOMAS F. STEHLIN
________________

Appeal 2011-004980
Application 11/503,024
Technology Center 1700
________________

Before CHARLES F. WARREN, JEFFREY T. SMITH, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 3-9, 11-14, 16, 17, 19, and 20. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

BACKGROUND

Claim 1 is illustrative of the invention:
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Application 11/503,024

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1. A resin impregnated glass mat comprising:
a top resin layer;
an intermediate glass fiber non-woven fabric comprising cut glass
fibers, wherein the glass fiber non-woven fabric has an inhomogeneity of
2.5% or less, a weight per unit area of 600 g/m2 or greater and a tensile
breaking force of at least 10 N, and further wherein greater than 70% by
weight of the glass fibers are present in the form of bundles; and
a bottom resin layer.

The Examiner has maintained, and Appellants seek review of, the
following rejections under 35 U.S.C. § 103(a):
A. Claims 1, 3-8, 11-14, 19, and 20 as being unpatentable over the
combined prior art of Mitani (U.S. 4,327,145 issued Apr. 27,
1982), Beer (U.S. 5,883,021 issued Mar. 16, 1999 ), and
Appellants’ admission of prior art (AAPA; Spec. 1:10-17);
B. Claims 1, 3-8, 11-14, 19, and 20 as being unpatentable over the
combined prior art of Mitani, Beer, and Li (U.S. 3,520,750 issued
Jul. 14, 1970 );
C. Claims 1, 3-9, 11-14, 19, and 20 as being unpatentable over Van
Mitani, AAPA, and Moireau (U.S. 5,882,792 issued Mar. 16,
1999); and
D. Claim 1, 3-9, 11-14, 19, and 20 as being unpatentable over Van
Mitani, AAPA, and Moireau, and Li.
Appellants argue all of the claims rejected over the applied prior art in
rejection A as a group (Br. 3-6). Thus, in accordance with 37 C.F.R. §
41.37(c)(1)(vii), we select independent claim 1 as the representative claim
on which our discussion will focus.

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Application 11/503,024

3
MAIN ISSUE ON APPEAL
Has the Examiner erred in his determination that the claimed
invention is obvious because the Examiner has not provided a basis for
concluding that the glass fiber non-woven fabric mat of Mitani has an
inhomogeneity of 2.5% or less, and wherein greater than 70% by weight of
the glass fibers are present in the form of bundles (see, Br. 5, 6)?
We answer this question in the negative.
ANALYSIS with FACTUAL FINDINGS
We rely upon the Examiner’s findings of facts and determination of
obviousness for the subject matter encompassed in the § 103 rejections A to
D as set out in the Final Office Action and the Answer, including the
Response to Argument section (Final Office Action pp. 2-18; Ans. pp. 3-22).
In all of these rejections, the Examiner relies upon Mitani for the claimed
features in dispute (Id.).
Appellants’ main contention that a prima facie case of obviousness
has not been made since Mitani does not expressly “disclose the need for
homogeneity when employing [its glass mat]” (Br. 5) is unavailing. As
pointed out by the Examiner, Mitani teaches its “glass fibers in the form of
bundles which are uniformly dispersed throughout a resin mixture” (e.g.,
Ans. 19; emphasis added; Mitani, col. 5, l. 25-25; see also Final 17). The
Examiner further explains that a uniform dispersal of the glass fiber bundles
de facto means a homogenous distribution of the glass fiber bundles which
would correspond to the claimed “inhomogeneity of 2.5% or less” (Ans. 19).
Appellants do not directly address this reasonable position of the Examiner,
nor do they address the Examiner’s reasonable position that the ordinary
skilled artisan would predictably desire a low inhomogeneity, or mean
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weight per unit area, in order to form a resulting composite having uniform
properties and characteristic throughout (Id.; generally Br.; no Reply Br. has
been filed).
Appellants’ contention that Beer’s vacuum molded composite does
not contain glass fibers in the form of bundles (Br. 5) is unavailing, as the
Examiner does not rely upon Beer for this feature, and Appellants do not
dispute the Examiner’s finding that all (100%) of Mitani’s glass fibers are in
the form of bundles (e.g., Ans. 3, 19, 20; generally Br.)
Accordingly, the Examiner’s position that Mitani teaches the claimed
features in dispute is reasonable.
Furthermore, where patentability rests upon a property of the claimed
material not expressly disclosed within the art, the PTO has no reasonable
method of determining whether there is, in fact, a patentable difference
between the prior art materials and the claimed material. Therefore, where
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
possess the characteristics of his claimed product. In re Best, 562 F.2d 1252,
1255 (CCPA 1977); In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990).
Appellants have not provided any evidence or persuasive technical reasoning
to refute the Examiner’s determination that Mitani’s glass fiber mat, and the
resultant glass fiber mat composite of the Mitani/Beer/AAPA combination,
has the required features recited in claim 1.
Furthermore, the Examiner’s position that one of ordinary skill would
predictably desire a homogenous glass mat is unrefuted on this record. An
improvement in the art is obvious if “it is likely the product not of
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innovation but of ordinary skill and common sense.” KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 421 (2007). See also, Perfect Web Techs., Inc.
v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009) (“hold[ing] that
while an analysis of obviousness always depends on evidence that supports
the required Graham factual findings, it also may include recourse to logic,
judgment, and common sense available to the person of ordinary skill that do
not necessarily require explication in any reference or expert opinion”).
We therefore affirm the Examiner’s rejection A of claims 1, 3-8, 11-
14, 19, and 20 under 35 U.S.C. § 103.
Appellants do not provide any substantive additional arguments for
rejections B to D (Br. 6, 7).
Accordingly, we also affirm all of the § 103 rejections on appeal.

ORDER
The Primary Examiner’s decision is affirmed.

No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED

tc/sld