Ex Parte Xing et al

Patent Trial and Appeal Board

Feb 12, 2014

11165418 (P.T.A.B. Feb. 12, 2014)

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.
11/165,418 06/23/2005 Linlin Xing FDN-2921 4295
7590 02/12/2014
Attn: William J. Davis, Esq.
GAF MATERIALS CORPORATION
1361 Alps Road
Legal Department, Building No. 8
Wayne, NJ 07470
EXAMINER
STEELE, JENNIFER A
ART UNIT PAPER NUMBER
1789
MAIL DATE DELIVERY MODE
02/12/2014 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 LINLIN XING,
WILLIAM BITTLE, and YARON STEINHAUER
____________

Appeal 2012-009021
Application 11/165,418
Technology Center 1700
____________

Before TERRY J. OWENS, ROMULO H. DELMENDO, and
GEORGE C. BEST, Administrative Patent Judges.

BEST, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-009021
Application 11/165,418
2
On July 12, 2011, the Examiner finally rejected claims 1-12 and 18-21
of Application 11/165,418 under 35 U.S.C. § 103(a) as obvious. Appellants1
seek reversal of the rejection of claims 1-5, 7, 8, 11, and 12 pursuant to 35
U.S.C. § 134(a).2 We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we AFFIRM.
BACKGROUND
The ’418 application describes a resinous fiber mat that can be used in
a variety of building materials. Spec. 1. Claim 1 is the only independent
claim in the ’418 application and is reproduced below:
1. A fiber mat comprising:
a formaldehyde type resinous fiber binder[;]
a plurality of glass fibers, said fibers fixedly distributed in said
binder; and
a polyethyleneimine polymer comprising from about 0.1 wt.%
to about 50 wt.%, based on the weight of said binder.
(App. Br. 13 (Claims App’x).)
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1-5, 7, 8, and 12 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Hummerich3 and
Biedermann.4 (Ans. 4.)

1 Building Materials Investment Corporation is identified as the real party in
interest. (App. Br. 3.)
2 Appellants have cancelled claims 6, 9, 10, and 18-21. (App. Br. 5.)
3 U.S. Patent No. 6,071,994, issued June 6, 2000.
Appeal 2012-009021
Application 11/165,418
3
2. Claim 11 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Hummerich, Biedermann, and Peng.5 (Ans. 8.)
DISCUSSION
Rejection 1. The Examiner rejected claims 1-5, 7, 8, and 12 as
obvious over the combination of Hummerich and Biedermann. (Ans. 4.)
The Examiner found that Hummerich describes the production of a fibrous
web comprising a fiber web, a formaldehyde-containing binder, and a
polyethyleneimine colloid. (Ans. 5.) The Examiner states that Hummerich
does not describe the use of polyethyleneimine in an amount that is 0.1% to
50% based on the weight of the formaldehyde-containing binder. (Id.) The
Examiner also found that Biedermann describes the use of a blend of a urea-
formaldehyde binder and polyethyleneimine as a binder in the production of
fiberboard. (Id. at 6.) The Examiner found that Biedermann describes the
use of an amount of polyethyleneimine that overlaps with the claimed
amount. (Id.)
Appellants present two arguments for reversal of this rejection.
First, Appellants argue that Biedermann is not analogous art and,
therefore, may not be used as part of an obviousness rejection. (App. Br. 9-
11.) In particular, Appellants argue that Biedermann is not analogous art
because it is not in the same field of endeavor as the ’418 application:
Biedermann is directed to a process for gluing cellulosic fibers
to produce a fiberboard. Biedermann fails to disclose or
suggest any teachings that are particularly relevant to the

4 U.S. Patent No. 6,624,284 B1, issued September 23, 2003.
5 U.S. Patent No. 6,817,152 B2, issued November 16, 2004.
Appeal 2012-009021
Application 11/165,418
4
production of glass fiber mats, as claimed in the present
application. Even though the present invention and the
Biedermann reference both relate to building materials, this
does not put the cited reference in the same field of endeavor as
the present invention. In re Clay, 966 F.2d [656,] 659 [(Fed.
Cir. 1992)] (“However, Sydansk cannot be considered to be
within Clay’s field of endeavor merely because both relate to
the petroleum industry.”).
(App. Br. 9-10.)
We are not persuaded by this argument. Appellants’ field of endeavor
is determined by referring to the entirety of their disclosure and not just the
claims at issue. See, e.g., In re Mettke, 570 F.3d 1356, 1359 (Fed. Cir. 2009)
(relying on specification to determine applicant’s field of endeavor). In this
case, the ’418 application’s Specification establishes that Appellants’ field
of endeavor is building materials generally and is not limited to building
materials that are comprised of resinous glass fiber mats. See, e.g., Spec. 1
(“The present invention relates generally to a fiber mat and a process of
making the same. In particular, the present invention relates to a glass fiber
mat comprising fibers, a binder and a binder modifier.”), 2 (summarizing
invention as “a fiber mat for use in a building materials component”), 3, 5
(discussing alternative embodiments using wood or plastic fibers), 6 (“[T]he
process is described using chopped bundles of glass fibers. As discussed
above, however, other types of fiber content are considered well within the
scope of the present invention.”).
Furthermore, Appellants’ reliance on Clay is misplaced. In Clay, the
Federal Circuit determined that a reference discussing the use of a gel to
increase petroleum extraction from subterranean rock formations (which are
at elevated temperatures and pressures) was in a different field of endeavor
from an application directed to the use of a gel in a storage tank at ambient
Appeal 2012-009021
Application 11/165,418
5
temperature and pressure. See Clay, 966 F.2d at 959. In this case,
Biedermann and the ’418 application are both directed to the formation and
use of resinous fiber bundles in the manufacture of building products. Clay,
therefore, is readily distinguishable as it involves much greater difference
between the technical fields in question than exist in the present case.
Finally, even if Biedermann were not in Appellants’ field of endeavor,
it is reasonably pertinent to the particular problem with which Appellants
were involved. Appellants state that they were confronted with the problem
of “how to provide a glass fiber mat having improved wet web strength,
shingle tear and shingle tensile strength.” (App. Br. 10.) As the Examiner
found (Ans. 6 (citing Biedermann col. 7, ll. 30-36)), Biedermann teaches
that the particular glue formulation it describes result in a final product that
has, among other advantageous properties, improved transverse tensile
strength.
The Examiner, therefore, correctly found that Biedermann is
analogous art and may be used as part of a rejection under § 103(a).
Second, Appellants argue that the Examiner has not provided an
articulated reason supporting the combination of Hummerich and
Biedermann. (App. Br. 9.) We are not persuaded by this argument. The
Examiner explained that Biedermann’s description of a binder composition
that provides improved tensile strength of the bonded fibers would have
provided a reason for a person of ordinary skill in the art to combine the
descriptions in Hummerich and Biedermann. (See, e.g., Ans. 12.)
For the foregoing reasons, we affirm the Examiner’s rejection of
claims 1-5, 7, 8, and 12 as obvious over the combination of Hummerich and
Biedermann.
Appeal 2012-009021
Application 11/165,418
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Rejection 2. The Examiner rejected claim 11 as obvious over the
combination of Hummerich, Biedermann, and Peng. (Ans. 8.) Appellants
seek reversal of this rejection because Peng does not cure the defects in
rejection 1. (App. Br. 11.)
As discussed above, we are not persuaded by Appellants’ arguments
for reversal of rejection 1. Thus, we also affirm the rejection of claim 11 as
obvious over the combination of Hummerich, Biedermann, and Peng.
CONCLUSION
For the reasons discussed above, we affirm the rejections of claims 1-
5, 7, 8, 11, and 12 of the ’418 application.

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

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