Ex Parte Jaffee

Board of Patent Appeals and Interferences

Jan 29, 2009

10607858 (B.P.A.I. Jan. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte ALAN MICHAEL JAFFEE
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Appeal 2008-5001
Application 10/607,858
Technology Center 2800
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Decided: January 29, 2009
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Before TERRY J. OWENS, PETER F. KRATZ, and KAREN M.
HASTINGS, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-6, 8-15, 17-27 and 29-32. Claim 28, which is the only
other pending claim, stands withdrawn from consideration by the Examiner.
We have jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellant claims a fibrous mat and a gypsum board that includes
the fibrous mat. Claim 29 is illustrative:
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29. A fibrous mat comprising a non-woven glass fiber web
bonded together with a resinous binder, said glass fibers consisting
essentially of chopped glass fibers having an average fiber diameter
ranging from about 9.5 to 12.5 µm and an average fiber length
ranging from about 6 to 12 mm.

The References
References relied upon by the Examiner
Jaffee 5,772,846 Jun. 30, 1998
Horner 6,365,533 B1 Apr. 2, 2002
Carbo 7,056,582 B2 Jun. 6, 2006
(filed Apr. 17, 2003)
Reference relied upon by the Appellants
Gill 4,637,951 Jan. 20, 1987
The Rejections
The claims stand rejected under 35 U.S.C. § 103(a) as follows:
claims 1-6, 8-15, 17-19, 21-24, 26, 27, and 29-32 over Jaffee; claim 20 over
Jaffee in view of Horner; and claim 25 over Jaffee in view of Carbo.
OPINION
Rejection under 35 U.S.C. § 103(a) of
claims 1-6, 8-15, 17-19, 21-24, 26,
27, and 29-32 over Jaffee

The Appellant argues claims 1-6, 8-15, 17-19, 21-24, 26, 27, and 29-
32 in the following groups: 1) claims 1, 27, 29, and 32, 2) claims 4-6,
3) claim 26, and 4) claim 31 (Br. 16-57). We therefore, limit our discussion
to claims 26, 31 and one claim in each of the other groups, i.e., claims 29
and 4. The other claims in those groups stand or fall with the claim we
address. The Appellant mentions claims 30 (Br. 52), but does not provide a
substantive argument as to the separate patentability of that claim. Claim 30
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and the other claims not separately argued stand or fall with the claim we
address from which they depend. See 37 C.F.R. § 41.37(c)(1)(vii) (2007).
Issue
Has the Appellant shown reversible error in the Examiner’s
determination that Jaffee would have rendered the invention claimed in the
Appellant’s claims 4, 26, 29, and 31 prima facie obvious to one of ordinary
skill in the art?
Claim 29
Findings of Fact
Jaffee discloses a nonwoven fibrous mat for use as a facer on gypsum
insulating board (col. 1, ll. 6-12; col. 2, ll. 2-4).1 Jaffee’s mat preferably
contains a major portion of glass fibers and a minor portion of polymer
fibers (col. 2, ll. 38-39; col. 3, ll. 50-53). In Jaffee’s Example 4, wet mats of
various glass fiber types, diameters and lengths are made into mats using the
process in Example 1 (except for a different binder and drying temperature)
wherein the fibers are all chopped glass fibers (col. 4, l. 67 – col. 5, l. 1;
col. 6, ll. 51-54). Jaffee’s glass fibers typically have average diameters from
about 9 microns to about 20 microns, preferably about 10 microns to about
16 microns (col. 3, ll. 38-41). When making a facer for insulated gypsum
board, 16 micron diameter fibers are preferred (col. 3, ll. 41-42). In Jaffee’s
mat, “[g]lass lengths of one inch, 0.75 inch, half inch or one quarter inch can
be used, but about 0.75 to about one inch lengths are preferred, especially
when using 16 micron diameter fibers” (col. 3, ll. 58-61).

1 The Examiner relies upon US 4,647,496 to Lehnert et al., incorporated by
reference in Jaffee (col. 1, ll. 13-15), for a disclosure of nonwoven fibrous
mat facing materials on both sides of a gypsum board (Ans. 11).
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Analysis
The Appellant argues that Jaffee’s mat comprises a blend of glass
fibers and polymer fibers, and that the Appellant’s claim limitation “glass
fibers consisting essentially of chopped glass fibers” excludes polymer fibers
(Br. 18, 21; Reply Br. 6-7).
Jaffee’s blend of glass fibers and polymer fibers is merely a preferred
embodiment (col. 2, ll. 38-39; col. 3, ll. 50-53). In Example 4, wet mats of
various glass fiber types, diameters and cut lengths are made using the
process of Example 1 (except for a different binder and drying temperature)
wherein the fibers are all chopped glass fibers (col. 4, l. 67 – col. 5, l. 1;
col. 6, ll. 51-54).
The Appellant argues that glass fibers are used without polymer fibers
only in Jaffee’s prior art Example 1 (Br. 18).
Glass fibers also are used in Jaffee’s inventive Example 4 according
to the Example 1 process, except for a different binder and drying
temperature (col. 4, l. 67 – col. 5, l. 1; col. 6, ll. 51-54). As acknowledged
by the Appellant (Br. 18) and disclosed in Example 1 (col. 4, l. 67 – col. 5,
l. 1; col. 6, ll. 51-54), the fibers in Example 1 are all chopped glass fibers.
Claim 31
Claim 31 requires a fibrous mat having a permeability of at least about
300 cfm/ft2 measured by the Frazier test.
The Appellant argues that Gill’s disclosure that Gill’s mat preferably
has a porosity of no greater than 225 cfm/ft2 measured by the Frazier test
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(abstract) indicates that Jaffee’s mat does not inherently have a permeability
of at least about 300 cfm/ft2 (Br. 53-56; Reply Br. 9-10).2
Gill’s microfibers have a mean diameter of only about 1 micron
(col. 3, ll. 27-30). The mat in the Appellant’s Comparative Example 1
having an average fiber diameter of 13 microns has a Frazier permeability of
625 cfm/ft2 (Spec. 14-15, Tables I, II). The mats in the Appellant’s
Examples 2-4 having an average fiber diameter of 11 ± 1.5 microns have a
Frazier permeability of, respectively, 800, 603 and 527 cfm/ft2 (Spec. 15:23-
24; 16, Table III). Thus, it appears that Jaffee’s mats having fibers with
average diameters in the range from about 9 microns to about 20 microns
(col. 3, ll. 38-39), which are comparable to the average fiber diameters in the
Appellant’s examples, have high permeabilities like those of the Appellant’s
examples rather than the lower permeability of Gill’s mat containing much
thinner fibers. Moreover, the mats in Examples 3-8 of US 6,187,697 B1 to
Jaffee et al., relied upon by the Examiner in rebuttal to the Appellant’s
argument (Ans. 14-15), have a 10 micron diameter, a length of 0.5 inch, and
an air permeability of 320-580 cfm/ft2. The fibers in those mats are within
Jaffee ‘846’s range of about 9 to about 20 microns average diameter and a
quarter inch to one inch length (col. 3, ll. 38-39, 58-61), and have air
permeabilities within the range in the Appellant’s claim 31 rather than in
Gill’s lower range.

2 The maximum porosity disclosed by Gill is about 260 cfm/ft2 (col. 2, ll. 24-
28).
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Claim 4
Claim 4 requires that at least about 90 wt% of chopped glass fibers
have a diameter ranging between about 9.5 and 12.5 microns.
The Appellant argues that there is no disclosure in Jaffee that calls for
a narrow range of fiber diameters (Br. 47-48).
Jaffee’s disclosure that the glass fibers are chopped glass fibers and
typically have average diameters from about 9 microns to about 20 microns
(col. 3, ll. 38-39; col. 4, l. 67) would have indicated to one of ordinary skill
in the art that all of the chopped glass fibers can have an average diameter
within that range which includes the Appellant’s range of between about 9.5
and 12.5 microns.
Claim 26
Claim 26 requires a flame resistance sufficient to pass the test of
ASTM Method E84, Class 1.
The Appellant argues that Jaffee’s mat has a high loss on ignition
because it includes polyester fibers (Br. 51).
Jaffee prefers a minor portion of polymer fibers such as polyester
fibers (col. 2, ll. 37-40), but the mat can be made by the process of prior art
Example 1 wherein the mat contains no polyester fibers (col. 4, l. 66 – col. 5,
l. 6; col. 6, ll. 51-54). The mat in Example 1 is self-extinguishing (col. 5,
l. 30), i.e., it has the high flame resistance required by the Appellant’s
claim 1.
Conclusion of Law
The Appellant has not shown reversible error in the Examiner’s
determination that Jaffee would have rendered the invention claimed in the
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Appellant’s claims 4, 26, 29, and 31 prima facie obvious to one of ordinary
skill in the art.
Issue
Has the Appellant shown reversible error in the Examiner’s
determination that the Appellant’s Declarations fail to overcome the prima
facie case of obviousness?
Analysis
The Appellant argues that two Declarations (Declaration I filed
May 3, 2006, and Declaration II filed Oct. 24, 2006) by inventor Jaffee show
surprising and unexpected results (Br. 30-46). 3
In Declaration I Jaffee measures smoothness of a gypsum board by
shining light onto its surface at an angle, capturing images of the surface
using a camera, analyzing the images using computer software to determine
an average intensity, calculating a standard deviation across all pixels in the
image, and calculating a standard error by dividing the standard deviation by
the average intensity (Decl. I: ¶ 12). Jaffee states that in his opinion, lower
standard deviation indicates a smoother surface (Decl. I: ¶ 15). A test
(sample 2) within the Appellant’s claim 1 (11 micron average fiber diameter,
12 mm average fiber length) shows a standard deviation of 7.6%, whereas
three tests (samples 1, 3 and 4) outside claim 1 show standard deviations of
9.5% (13 micron average fiber diameter, 19 mm average fiber length), 8.3%
(8 micron average fiber diameter, 9 mm average fiber length), and 9.3%

3 Jaffee relies upon Declaration II for evidence that the average fiber length
in Examples 2-4 of the Specification is about 12 mm (Decl. II: ¶ 5). The
average fiber diameter in those examples is 11 ± 1.5 microns (Spec. 15:21-
24).
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(11 micron average fiber diameter, 19 mm average fiber length). (Decl. I:
¶ 14). Jaffee states that the test results were corroborated by visual
observation. (Decl. I: ¶ 16). The results were surprising, Jaffee states,
because “a skilled artisan would have inferred that the smoothest surface
would result from fabrication gypsum board with mat having the smallest
fiber diameter” (Decl. I: ¶ 17).
For the following reasons, the evidence is not effective for
overcoming the prima facie case of obviousness.
First, Jaffee has not established that the test using camera images,
software and visual observation is an art recognized test or is reliable. Also,
only one test was carried out for each fiber diameter and length, and Jaffee
has not established that the test is repeatable. Moreover, the cause-and-
effect relationship between standard error and surface smoothness is lost in a
multiple unfixed variables. See In re Heyna, 360 F.2d 222, 228 (CCPA
1966); In re Dunn, 349 F.2d 433, 439 (CCPA 1965). Jaffee changed not
only the average fiber diameter and length, but also the average intensity
(Decl. I: ¶ 14). If, for samples 1 and 4, the same standard deviation were
obtained at the 1837 average intensity used for the Appellant’s inventive
sample 2, the standard errors would be, respectively, 7.9% and 7.8%, which
are very close to the 7.6% for the Appellant’s inventive sample 2.
Second, it is not enough for the Appellant to show that the results for
the Appellant’s invention and the comparative examples differ. The
difference must be shown to be an unexpected difference. See In re
Freeman, 474 F.2d 1318, 1324 (CCPA 1973); In re Klosak, 455 F.2d 1077,
1080 (CCPA 1972). Jaffee states that one of ordinary skill in the art would
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have expected that a smoother surface would be obtained using a smaller
fiber diameter (Decl. I, ¶ 17), but Jaffee has not established that one of
ordinary skill in the art would not have expected a larger length to diameter
ratio than that in sample 3 to produce a smoother surface.
Third, the evidence is not commensurate in scope with the claims.
See In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622
F.2d 1029, 1035 (CCPA 1980). The Appellant’s claim 1 encompasses
average fiber diameters from about 9.5 to 12.5 microns, and average fiber
lengths from about 6 to 12 mm, yet Jaffee provides only one sample at an
average fiber diameter of 11 microns and an average fiber length of 12
microns. We find in the evidence of record no reasonable basis for
concluding that mats made of fibers having the other average diameters and
lengths encompassed by the Appellant’s claims would behave as a class in
the same manner as the particular sample tested. See In re Lindner, 457 F.2d
506, 508 (CCPA 1972); In re Susi, 440 F.2d 442, 445-46 (CCPA 1971).
Conclusion of Law
The Appellant has not shown reversible error in the Examiner’s
determination that the Appellant’s Declarations fail to overcome the prima
facie case of obviousness.
Rejections under 35 U.S.C. § 103(a) of claim 20
over Jaffee in view of Horner, and
claim 25 over Jaffee in view of Carbo

Regarding the rejection of claims 20 and 25, the Appellant argues that
Horner and Carbo do not remedy the deficiency in Jaffee as to claim 1
(Br. 58-59). As discussed above, that deficiency does not exist. Regarding
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claim 20 the Appellant argues that Horner, which discloses a kraft paper
facer (col. 6, ll. 13), does not disclose a gypsum board product (Reply
Br. 13-14). That argument is not persuasive in view of the Appellant’s
disclosure that kraft paper is what normally is used as the lower facing sheet
of gypsum board (Spec. 1:27-28).
Hence, we are not persuaded of reversible error in the rejection of
claims 20 and 25.
DECISION/ORDER
The rejections under 35 U.S.C. § 103(a) of claims 1-6, 8-15, 17-19,
21-24, 26, 27, and 29-32 over Jaffee, claim 20 over Jaffee in view of Horner,
and claim 25 over Jaffee in view of Carbo are affirmed.
It is ordered that 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).
AFFIRMED

PL Initial:
sld

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LEGAL DEPARTMENT
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