14041713 (P.T.A.B. Oct. 10, 2018)

Ex Parte JACKSON et al

Patent Trial and Appeal BoardOct 10, 2018

14041713 (P.T.A.B. Oct. 10, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/041,713 118656 7590 Knauflnsulation, Inc. One Knauf Drive Shelbyville, IN 46176 09/30/2013 10/12/2018 FIRST NAMED INVENTOR Roger JACKSON 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 20121-226786 1013 EXAMINER ABU ALI, SHUANGYI ART UNIT PAPER NUMBER 1731 NOTIFICATION DATE DELIVERY MODE 10/12/2018 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): docketing@cpaglobal.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ROGER JACKSON, TONY AINDOW, and GEORGE BA YBUTT Appeal2018-000487 Application 14/041, 713 Technology Center 1700 Before JEFFREY T. SMITH, BEYERL YA. FRANKLIN, and LILAN REN, Administrative Patent Judges. REN, Administrative Patent Judge. DECISION ON APPEAL Appeal2018-000487 Application 14/041, 713 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. Â§ 134(a) from a rejection of claims 20-44. 1 We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm. CLAIMED SUBJECT MATTER "This invention relates to a mineral fibre insulating product, particularly having a low formaldehyde or formaldehyde free binder." Spec. 1 :3--4. The Specification provides various examples of a binder such as one that "include[s] at least one reaction product from a Maillard reaction," etc. Id. at 2:25-35. Claim 20, reproduced below, is illustrative of the claimed subject matter: 20. A heating device selected from an oven, a domestic oven, a self-cleaning oven, a range and a storage heater, wherein the heating device comprises a mineral fiber insulating material, and wherein the mineral fiber insulating material comprises mineral fibers bound by at least 0.5% by weight of a cured organic binder and wherein an initial heating of the mineral fiber insulating material to a temperature of 200 degrees C off gases a mixture of gases comprising predominately ketones. App. Br. 17 (Claims Appendix). 1 The real party in interest is identified as Knauf Insulation SPRL and Knauf Insulation Inc. Appeal Brief of February 17, 2017 ("App. Br."), 2. In this opinion, we also refer to the Final Action of February 18, 2016 ("Final Act."), the Examiner's Answer of August 16, 2017 ("Ans."), and the Reply Brief of October 16, 2017 ("Reply Br."). 2 Appeal2018-000487 Application 14/041, 713 REFERENCES The prior art references relied upon by the Examiner in rejecting the claims on appeal are: Hurko Hansen Swift us 3,038,462 US 2006/0111480 Al US 2007 /0027283 Al REJECTIONS June 12, 1962 May 25, 2006 Feb. 1, 2007 Claims 20-44 are rejected under pre-AIA 35 U.S.C. I03(a) as being unpatentable over Hurko in view of Swift. Final Act. 3. Claims 20-38 and 40 are alternatively rejected under 35 U.S.C. I03(a) as being unpatentable over Hurko in view of Hansen. Final Act. 5. 2 OPINION We review the appealed rejections for error based upon the issues identified by Appellants and in light of the arguments and evidence produced thereon. Cf Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) ("it has long been the Board's practice to require an applicant to identify the alleged error in the examiner's rejections")). After having considered the evidence presented in this Appeal and each of Appellants' contentions, we are not persuaded that Appellants identify reversible error, 2 Claim 39 is alternatively rejected under 35 U.S.C. I03(a) as being unpatentable over Hurko in view of Hansen and Izard. Final Act. 7. Appellants do not present arguments separate from those for the rejection of claim 20 based on Hurko and Hansen. See App. Br. 15. The rejection of claim 39 based on Hurko, Hansen, and Izard therefore stands or falls with the rejection of claim 20 based on Hurko and Hansen. See id.; see also 37 C.F.R. Â§ 4I.37(c)(l)(iv) (2013). 3 Appeal2018-000487 Application 14/041, 713 and we affirm the Examiner'sÂ§ 103 rejections for the reasons expressed in the Final Office Action and the Answer. We add the following primarily for emphasis. Claims 20 (Hurko and Swift)3 Appellants do not dispute the teachings of the prior art but argue that the prior art does not solve the same problem as claim 20. App. Br. 8; Reply Br. 6. Specifically, Appellants argue that Hurko does not mention the use of a binder in the prior art fiberglass insulation or "what happens when the range is first raised to a temperature of 200 Â°C." App. Br. 8. Appellants argue that Swift, on the other hand, "fails to provide any indication that his insulation material could provide a solution to the particular problems that occur in oven insulation." Id. "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,416 (2007). "[W]hen the question is whether a patent claiming the combination of elements of prior art is obvious," the answer depends on "whether the improvement is more than the predictable use of prior art elements according to their established functions." Id. at 417. The Examiner finds that Hurko discloses an oven comprising fiberglass thermal insulation however fails to disclose the binder use to bond the fiberglass. Final Act. 3. The Examiner finds that Swift describes using 3 For the obviousness rejection of claims 21--44, Appellants do not present arguments separate from those for claim 20 based on Hurko and Swift. App. Br. 9-10. These claims therefore stand or fall with claim 20 for the obviousness rejection based on Hurko and Swift. See id.; see also 37 C.F.R. Â§ 4I.37(c)(l)(iv) (2013). 4 Appeal2018-000487 Application 14/041, 713 formaldehyde-free binders and made from Maillard reactants such as amine and a carbohydrate to bind mineral fiber products. Id. The Examiner concludes it would have been obvious to formulate fiberglass thermal insulation, such as described by Hurko, comprising a formaldehyde free binder. Id. The Examiner reasons that absent structural differences between the recited mineral fibers and the prior art material, the inclusion of a known material in a known device such as an oven or the like does not impart patentability. Id. We agree with the Examiner that "the patentability of apparatus or composition claims depends on the claimed structure, not on the use or purpose of that structure." Catalina Mktg. Int 'l, Inc. v. Coo/savings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002). Appellants argue "the contents of Hurko should be assessed at its publication date." App. Br. 7. We disagree. The obviousness analysis assesses the "differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains." 35 U.S.C. Â§ 103; KSR, 550 US at 418. Appellants' remaining argument based on the teachings of French patent application FR2614388Al (App. Br. 7; Reply Br. 5) does not structurally distinguish the recited mineral fiber and is not persuasive of reversible error in the Examiner's analysis. 5 Appeal2018-000487 Application 14/041, 713 Claims 20 (Hurko and Hansen}4 With regard to the obviousness rejection of claim 20 based on Hurko and Hansen, Appellants argue that the examples of binder shown in Hansen are not identical in composition to one particular example of the binder described in the Specification- both prior to curing. App. Br. 12-13 (providing a tabulated comparison of the prior art binder compositions and an example provided in the specification ,r 44); Reply Br. 10-12 (providing the same). We, however, decline to import into the claim limitations that are not recited. Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005). In this case, the particular pre-curing binder composition described in the Specification is not recited in claim 20. The plain language of claim 20 requires no more than "a cured organic binder." Such unclaimed feature cannot impart patentability to the claim. In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998). Appellants' remaining arguments mirror those for the rejection based on Hurko and Swift which we address supra. DECISION The Examiner's prior art rejections are affirmed. 4 Appellants do not present arguments separate from those for claim 20 for the obviousness rejection of claims 21-38 and 40 based on Hurko and Hansen. App. Br. 14--15. These claims therefore stand or fall with claim 20 for the obviousness rejection based on Hurko and Hansen. See id.; see also 37 C.F.R. Â§ 4I.37(c)(l)(iv) (2013). 6 Appeal2018-000487 Application 14/041, 713 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). See 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 7