10718007 (B.P.A.I. Mar. 15, 2012)

Ex Parte Jaffee et al

Board of Patent Appeals and InterferencesMar 15, 2012

10718007 (B.P.A.I. Mar. 15, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ________________ Ex parte ALAN MICHAEL JAFFEE and RICHARD EMIL KAJANDER ________________ Appeal 2010-011413 Application 10/718,007 Technology Center 1700 ________________ Before BRADLEY R. GARRIS, TERRY J. OWENS, and PETER F. KRATZ, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 51-64, 71-84, 91-94 and 99, which are all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). The Invention The Appellants claim a fibrous nonwoven mat. Claim 51 is illustrative: Appeal 2010-011413 Application 10/718,007 2 51. A fibrous nonwoven mat having a basis weight of 2.3 to about 2.6 lbs/100 sq. ft., a thickness in the range of about 38 to about 48 mils, high flame resistance and unexpected excellent tensile strength, flex and recovery properties after scoring and folding and being suitable for use as a scored and folded fibrous nonwoven mat for vertical webs spanning between an exposed mat and a backer mat in a compressible ceiling tile because of the fibrous nonwoven mat having the ability, after being scored, folded, and compressed, to spring back to the original shape and orientation, the fibrous nonwoven mat comprising a blend of fibers comprising about 88 to about 92 weight percent chopped glass fibers having a diameter in the range of about 13 to about 17.5 microns and a length in the range of about 0.7 to about 1.1 inches and about 8 to about 12 percent man-made polymer fibers selected from the group consisting of polyester, polypropylene, nylon, PBT, polyacrynitrile, and polybenzimidizole in the fibrous nonwoven mat, the blend of fibers in the being bound together by a binder that is at least partially cured and consists essentially of, before drying and curing, a homopolymer or a copolymer of polyacrylic acid and a polyol, with or without a polycarboxy polymer, the binder being present in the mat in an amount of about 25 +/- 5 wt. percent of the fibrous nonwoven mat, the fibrous nonwoven mat having a Taber Stiffness of at least about 50 gram centimeters and passing the National Fire Protection Association's (NFPA) Method #701 Flammability Test. The References Jaffee 5,772,846 Jun. 30, 1998 Arkens 5,661,213 Aug. 26, 1997 The Rejections The claims stand rejected as follows: claims 82-84, 91-94 and 99 under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the Appellants regard as the invention, and claims 51-64, 71-84, 91-94 and 99 under 35 U.S.C. § 103 over Jaffee in view of Arkens. OPINION We reverse the rejections. Appeal 2010-011413 Application 10/718,007 3 Rejection under 35 U.S.C. § 112, second paragraph “[T]he indefiniteness inquiry asks whether the claims ‘circumscribe a particular area with a reasonable degree of precision and particularity.’” Marley Mouldings Ltd. v. Mikron Industries Inc., 417 F.3d 1356, 1359 (Fed. Cir. 2005), quoting In re Moore, 439 F.2d 1232, 1235 (CCPA 1971). The Examiner argues that the claim 91 language “suitable for use as a scored and folded fibrous nonwoven mat as vertical webs spanning between an exposed mat and a backer mat in a compressible ceiling tile as disclosed in published U. S. Published Patent Application No. 20020020142 filed April 23, 2001” and the claim 99 language “suitable for use as the scored and folded fibrous nonwoven mat used for vertical webs spanning between an exposed mat and a backer mat in a compressible ceiling tile as disclosed in published U. S. Published Patent Application No. 20020020142 filed April 23, 2001” is improper because “[c]laims may not incorporate or incorporate by reference another publication , but instead should clearly spell out the intended structure, composition, etc. of the invention” (Ans. 4). The Examiner relies (Ans. 9) upon the following portion of Ex parte Fressola, 27 USPQ2d 1608, 1609 (BPAI 1993): Incorporation by reference to a specific figure or table of properties, as mentioned in the last paragraph above [“the velocity cycle shown in Figure 1”], is permitted only in exceptional circumstances where there is no practical way to define the invention in words and where it is more concise to incorporate by reference than duplicating a drawing or table into the claim. [citations omitted] Incorporation by reference is a necessity doctrine, not for applicant’s convenience. Appeal 2010-011413 Application 10/718,007 4 In Fressola the claim considered by the Board to be indefinite is: “42. A system for the display of stereographic three-dimensional images of celestial objects as disclosed in the specification and drawings herein.” Fressola, 27 USPQ at 1608, 1611-12. The Board stated that claim 42 is indefinite because it “does not comply with the requirement of § 112 ¶ 2 that the claims particularly point out and distinctly describe the invention because it relies entirely on incorporation by reference of the specification and drawings”, id. at 1611-12, “it is impossible to determine how much of the disclosure is incorporated by reference into claim 42, or to what extent claim 42 would be interpreted to cover equivalents”, id. at 1612, and “it is impossible to tell what parts of the specification are and are not intended to be limiting, or what modifications would fall within the scope of claim 42”, id. at 1612. The Appellants’ claim language found indefinite by the Examiner differs from that of claim 42 in Fressola in that the Appellants’ claim language merely sets forth a capability requirement of the mat described in the claim, i.e., the mat must be suitable for use as a scored and folded fibrous nonwoven mat spanning between an exposed mat and a backer mat in a compressible ceiling tile as disclosed in a specified published U.S. patent application. The Examiner has not explained how reciting the capability requirement in that form causes the claim to fail to circumscribe a particular area with a reasonable degree of precision and particularity. Accordingly, we do not sustain the rejection under 35 U.S.C. § 112, second paragraph. Rejection under 35 U.S.C. § 103 Jaffee discloses a nonwoven mat comprising glass fibers and a minor portion of synthetic fibers such as polyester fibers bonded together with a Appeal 2010-011413 Application 10/718,007 5 binder containing a thermoplastic polyvinyl chloride latex and up to 10 wt% of a stearylated melamine (col. 1, ll. 6-9; col. 2, ll. 38-40, 50-58). The mat can be any weight, preferably about 1.8 to about 2.2 pounds per 100 square feet, and the mat’s binder content can be up to about 35 wt% (col. 3, ll. 10- 18). The glass fibers typically have average diameters of about 9 to about 20 microns and have lengths from one quarter inch to one half inch (col. 3, ll. 37-38, 58-61). The mat “is especially useful as a facing on a gypsum wall board for exterior application and on which stucco is applied” (col. 1, ll. 9- 12). Compared to prior insulating gypsum board facing, the mat has improved flame resistance and flexibility and produces less, or less irritating, dust when the faced gypsum board is cut (col. 2, ll. 5-8). Arkens discloses a heat resistant nonwoven which contains a formaldehyde-free curable aqueous binder comprising a polyacid containing at least two carboxyl groups, anhydride groups, or salts thereof, a polyol containing at least two hydroxyl groups, and a phosphorous-containing accelerator (col. 2, ll. 55-62). The nonwoven contains heat-resistant fibers which can be glass fibers and certain polyester fibers, and can contain non- heat-resistant fibers which can be polyester fibers (col. 8, ll. 26-36). The nonwoven can be used as an insulation batt or roll, a reinforcing mat for roofs or floors, a roving, a microglass-based substrate for printed circuit boards or battery separators, a filter stock, a tape stock, or a reinforcement scrim in cementitious and non-cementitious coatings for masonry (col. 8, ll. 61-67). The Examiner argues that it would have been obvious to one of ordinary skill in the art to use Arkens’ binder in Jaffee’s nonwoven mat “to Appeal 2010-011413 Application 10/718,007 6 carry out the drying and curing functions in two or more distinct steps, if desired (col. 8, lines 42-60)” (Ans. 8). Arkens discloses drying and curing the binder in two stages if desired (col. 8, ll. 49-50), but does not disclose that the ability to dry and cure in two stages is the result of using Arkens’ particular binder. Thus, it does not appear that the ability to dry and cure in two stages is a reason why one of ordinary skill in the art would have selected Arkens’ binder for use in Jaffee’s nonwoven mat. The Examiner argues that one of ordinary skill in the art would have modified Jaffee’s nonwoven mat in view of Arkens based upon the desired properties of the final product and its intended use, and if the product is a mat which is suitable for use as a scored and folded mat for spanning between an exposed mat and a backer mat in a compressible ceiling tile, then that modification would have resulted in a mat having the Appellants’ mat’s composition and inherent properties (Ans. 5-9, 10-13). “A rejection based on section 103 clearly must rest on a factual basis, and these facts must be interpreted without hindsight reconstruction of the invention from the prior art.” In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). The Examiner has not set forth a factual basis which indicates that the applied references would have led one of ordinary skill in the art to make a mat which is suitable for use as a scored and folded mat for spanning between an exposed mat and a backer mat in a compressible ceiling tile. Thus, the record indicates that the Examiner’s reason for modifying the prior art to arrive at a mat having the composition and inherent properties of the Appellants’ mat comes solely from the Appellants’ disclosure and that, therefore, the Examiner used impermissible hindsight in rejecting the Appeal 2010-011413 Application 10/718,007 7 Appellants’ claims. Consequently, we reverse the rejection under 35 U.S.C. § 103. DECISION/ORDER The rejections of claims 82-84, 91-94 and 99 under 35 U.S.C. § 112, second paragraph, and claims 51-64, 71-84, 91-94 and 99 under 35 U.S.C. § 103 over Jaffee in view of Arkens are reversed. It is ordered that the Examiner’s decision is reversed. REVERSED tc 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. 10/718,007 11/20/2003 Alan Michael Jaffee 7237 8750 29602 7590 03/15/2012 JOHNS MANVILLE 10100 WEST UTE AVENUE PO BOX 625005 LITTLETON, CO 80162-5005 EXAMINER MATZEK, MATTHEW D ART UNIT PAPER NUMBER 1786 MAIL DATE DELIVERY MODE 03/15/2012 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)