Ex Parte Fernando et al

Patent Trial and Appeal Board

Apr 21, 2017

12648903 (P.T.A.B. Apr. 21, 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.
12/648,903 12/29/2009 Joseph A. FERNANDO UNF.P9516 4657
23575 7590 04/21/2017
CURATOLO SIDOTI CO., LPA
24500 CENTER RIDGE ROAD, SUITE 280
CLEVELAND, OH 44145
EXAMINER
COLE, ELIZABETH M
ART UNIT PAPER NUMBER
1789
MAIL DATE DELIVERY MODE
04/21/2017 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JOSEPH A. FERNANDO and
KENNETH B. MILLER1
____________________

Appeal 2016-004872
Application 12/648,903
Technology Center 1700
____________________

Before ADRIENE LEPIANE HANLON, ROMULO H. DELMENDO, and
AVELYN M. ROSS, Administrative Patent Judges.

ROSS, Administrative Patent Judge.

DECISION ON APPEAL2
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1–14 and 18–26. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

1 Appellants identify the real party in interest as Unifrax I LLC, the assignee
of the instant application. Appeal Br. 3.
2 In our Decision below we refer to the Specification (“Spec.”) filed
December 29, 2009, the Final Office Action (“Final Act.”) mailed April 3,
2015, the Appeal Brief (Appeal Br.) filed August 28, 2015, the Examiner’s
Answer (“Ans.”) mailed February 11, 2016, and the Reply Brief (“Reply
Br.”) filed April 8, 2016.
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STATEMENT OF CASE
The claims are directed to a high strength biosoluble inorganic fiber
insulation mat useful for automotive exhaust systems. Spec. 1. Claim 1,
reproduced below with relevant claim language emphasized, is illustrative of
the claimed subject matter:
1. A high strength, substantially non-expanding inorganic
biosoluble fiber insulation mat comprising high temperature
resistant alkaline earth silicate fibers having a first average
length, at least one inorganic binder, and secondary inorganic
fibers having an average length that is greater than said first
length, wherein the insulation mat has a structure of partially
interlocking fibers and an organics content of less than 20 weight
percent prior to exposure to temperatures of at least 600° C, and
wherein the at least one inorganic binder comprises at least one
of colloidal silica, colloidal alumina, colloidal zirconia, clay, or
mixtures thereof.
Claims Appendix at Appeal Br. 20 (emphasis added).

REJECTIONS
The Examiner maintains the following rejections:
A. Claims 1–14 and 21–26 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Howorth3 in view of
Howorth II4 with evidence from Dixie Clay MSDS.5 Final
Act. 2.

3 Gary F. Howorth, US 2004/0234436 A1, published November 25, 2004
(“Howorth”).
4 Howorth et al., WO 2006/065534 A1, published June 22, 2006 (“Howorth
II”).
5 Vanderbilt Minerals, LLC, Material Safety Data Sheet, DIXIE CLAY
(“Dixie Clay MSDS”).
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B. Claim 18 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Howorth in view of Howorth II and
further in view of Hatch.6 Id. at 5.

C. Claims 19–20 stands rejected under 35 U.S.C. § 103(a) as
being unpatentable over Howorth in view of Howorth II
and further in view of Kumar.7 Id. at 6.

Appellants appeal the rejections of claims 1–14 and 18–26.
Appellants argue independent claims 1 (Rejection A) and 19 (Rejection C),
as well as dependent claim 18 (Rejection B), together with their dependent
claims and do not separately argue the merits of claims 2–14 and 20–26. See
generally Appeal Br. 6–19. Moreover, Appellants present nearly identical
arguments for claims 1, 18, and 19. Id. We therefore we focus our
discussion below on claim 1 (Rejections A) to resolve the issues on appeal.

OPINION
The Examiner rejects claim 1 (among others) as obvious over
Howorth in view of Howorth II and with evidence from Dixie Clay MSDS.
The Examiner finds that Howorth teaches all aspects of the claimed
invention. Final Act. 2–3. The Examiner finds that Howorth “teaches that
the biosoluble fibers can have length of 0.1–3 cm and that the additional
inorganic fibers can have a length of 0.1–1 cm” and that length of the fibers
is not critical. Id. at 3. The Examiner reasons that because the biosoluble
fibers can be less than 1 cm and the inorganic fibers can be 1 cm, Howorth
teaches an embodiment where the secondary inorganic fibers are greater

6 Hatch et al., 3,916, 057, issued October 28, 1975 (“Hatch”).
7 Kumar et al., US 2004/0134172 A1, published July 15, 2004 (“Kumar”).
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than the biosoluble fibers. Id. The Examiner acknowledges that Howorth
does not teach the particular inorganic binders as claimed. Id. The
Examiner finds that Howorth II teaches mounting material for a mat similar
to that of Howorth and that Howorth II uses Dixie Clay as an inorganic
binder, which is a hydrated aluminum silicate. Id. at 3–4. The Examiner
reasons that “it would be obvious to have employed other known inorganic
binders as taught by Howorth [II].” Id. at 4.
Appellants argue that neither Howorth nor Howorth II teach that the
relative “fiber length has any functional significance” and instead, “both
references explicitly disclose that the lengths of the fibers contained in the
mats are ‘not critical’.” Appeal Br. 6. As a result, Appellants urge that a
person of ordinary skill in the art would have no reason to combine
biosoluble fibers with secondary inorganic fibers having a length greater
than the biosoluble fibers as claimed. Id. at 8. Therefore, Appellants
contend no prima facie case of obviousness has been established and only
through impermissible hindsight reasoning can the prior art be modified to
achieve Appellants’ claimed invention. Reply Br. 2; Appeal Br. 10.
Appellants contend that an insulation mat “wherein the alkaline earth silicate
fibers have an average length that is shorter than the average length of the
secondary fibers, unexpectedly creates a ‘scaffolding’ effect that increases
the overall strength of the insulation mat.” Appeal Br. 6.
Appellants’ arguments do not identify a reversible error in the
Examiner’s findings and conclusions. 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
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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. In re
Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988). Moreover, establishing a prima
facie case of obviousness requires an apparent reason to combine the
elements in the manner claimed. In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006) (“[R]ejections on obviousness ground cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some underpinning to support the legal conclusion of obviousness.”).
In this instance, the Examiner has adequately established why a
person of ordinary skill in the art would have modified Howorth to arrive at
the claimed invention. As the Examiner finds, Howorth teaches a protective
material or mat, composed of biosoluble inorganic fibers, an inorganic
binder, and optionally non-respirable inorganic fibers. See, e.g., Howorth ¶¶
5–6 and 32. Howorth also teaches that the biosoluble fibers may have an
average length of 0.1 to 3.0 centimeters (id. ¶ 43) and that the secondary
inorganic fibers may have an average length of 0.1 to 1.0 centimeters (id. ¶
66). And, while neither Howorth nor Howorth II expressly teach the non-
respirable inorganic fibers having a length longer than the biosoluble fibers,
Howorth teaches that the length of the biosoluble fibers is not critical.
Howorth ¶ 43. As the Examiner explains, “Howorth teaches three
embodiments; one where both fibers are the same average length, a second
where the biosoluble fibers are shorter, and a third where the biosoluble
fibers are longer.” Ans. 7–8; see also Final Act. 3. Thus, Howorth teaches
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embodiments where the average fiber length of the respective fibers can be
any length within the ranges disclosed, including where the biosoluble fibers
are shorter than the secondary non-respirable inorganic fibers.
Appellants argument that because Howorth gives no suggestion that
fiber length of any kind is important, Howorth “does not provide any
direction to one of ordinary skill in the art to believe that different average
fiber lengths would impart any beneficial effect” (Reply Br. 3) is not
persuasive of error. Where “there are a finite number of identified,
predictable solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp.” KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 421 (2007). Here, the Examiner finds “Howorth
offers a finite number of possible average length combinations, (three),
which would predictably result in an insulation mat as disclosed by
Howorth.” Ans. 8–9. We find no error in the Examiner’s reasoning.
Based on the arguments and evidence of record, Appellants have not
demonstrated reversible error in this determination of a prima facie case of
obviousness. A prima facie case having been made, the burden shifts to
Appellants to offer evidence of nonobviousness.
However, Appellants’ evidence of unexpected results is vague, at best.
Appellants do not recite any length or differential of lengths which leads to
unexpected results. See Ans. 7. And, Appellants contend that it need not
offer evidence of unexpected results because no prima facie case has been
made. Reply Br. 2.
Therefore, we sustain the Examiner’s rejections.

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CONCLUSION
The Examiner did not err in rejecting claims 1–14 and 21–26 under 35
U.S.C. § 103(a) as being unpatentable over Howorth in view of Howorth II,
as evidenced by Dixie Clay MDS.
The Examiner did not err in rejecting claim 18 under 35 U.S.C. §
103(a) as being unpatentable over Howorth in view of Howorth II and
further in view of Hatch.
The Examiner did not err in rejecting claims 19–20 under 35 U.S.C. §
103(a) as being unpatentable over Howorth in view of Howorth II and
further in view of Kumar.

DECISION
For the above reasons, the Examiner’s rejection of claims 1–14 and
18–26 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)(1).

AFFIRMED