Ex Parte Yang et al

Board of Patent Appeals and Interferences

Nov 23, 2010

10939277 (B.P.A.I. Nov. 23, 2010)

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.
10/939,277 09/10/2004 Alain Yang D0932-00475 3692
8933 7590 11/23/2010
DUANE MORRIS LLP - Philadelphia
IP DEPARTMENT
30 SOUTH 17TH STREET
PHILADELPHIA, PA 19103-4196
EXAMINER
LAZORCIK, JASON L
ART UNIT PAPER NUMBER
1741
MAIL DATE DELIVERY MODE
11/23/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ALAIN YANG, FRANCOIS BOUQUET, and MARK TRABOLD
____________________

Appeal 2009-014391
Application 10/939,277
Technology Center 1700
____________________

Before CHARLES F. WARREN, CATHERINE Q. TIMM, and
MARK NAGUMO, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL1
I. STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 1 and 6-8. We have jurisdiction under 35 U.S.C.
§ 6(b).

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

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We AFFIRM.
Appellants’ invention relates to a fibrous insulation article made by a
particular process. Claim 1 is illustrative:
1. A fibrous insulation having insulation fibers and a
binder dispersed on the insulation fibers, the improvement
comprising:
the binder being cured by a heated gas flow as a ratio
of, an upward flow and a downward flow;
the binder on the insulation fibers at the bottom of
the fibrous insulation being cured substantially by heated
gas in the upward flow;
the binder on the insulation fibers at the top of the
fibrous insulation being cured substantially by heated gas in
the downward flow; and
the binder on the insulation fibers at an interior of the
fibrous insulation being cured substantially by the heated
gas in the upward flow and the heated gas in the downward
flow.

The Examiner maintains, and Appellants seek review of, the
following rejections:
1. Claims 1 and 6-8 rejected under 35 U.S.C. § 102(b) as anticipated
by or, in the alternative, under 35 U.S.C. § 103 (a) as obvious over
Chenoweth (US 4,751,134; issued Jun. 14, 1988).
2. Claims 1 and 6-8 are rejected under 35 U.S.C. § 102(b) as
anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as obvious
over Knapp (US 5,685,938; issued Nov. 11, 1997).
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3. Claims 1 and 6-8 are rejected under 35 U.S.C. § 102(b) as
anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as obvious
over Qi (US 6,851,941 B2; issued Feb. 8, 2005).

II. DISCUSSION
Each of the Examiner’s rejections is founded on the fact that the
claims are directed to a fibrous insulation product made by a claimed
process and that the claimed process, i.e., the process of curing the binder
dispersed on the fibers, does not structurally distinguish the resulting product
from the products of the prior art (Ans. 3-6).
Appellants do not argue any claim apart from the others for any of the
rejections. Moreover, the arguments for each rejection raise the same issues.
Therefore, we select claim 1 as the representative claim for deciding the
arising issues and, while have separately considered each of the rejections,
we discuss them together.
Appellants do not dispute that each of the references describes fibrous
insulation including insulation fibers and a cured binder dispersed on the
fibers (Br. 4, 11-12, 14). Rather, Appellants argue that the claimed
invention is based upon the improvement recited in claim 1, i.e., the process
of curing the binder by the claimed heating process (id.). According to
Appellants, the Examiner has failed to prove that the products described in
the references are “indistinguishable” from what is claimed; the
improvement limitations should be construed as structural limitations; and
the In re Fessmann and In re Brown cases cited by the Examiner do not
apply under the facts of this case (Br. 4-15). Appellants also contend that
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they need not provide a comparison of the prior art products to their claimed
product to support patentability (Reply Br. 4-5). Appellants further contend
that the Examiner has failed to apply a secondary reference to support the §
103 aspect of the rejection (Br. 6, 13).
For the reasons stated in the Answer, we determine that the Examiner
has established a prima facie case of unobviousness. Appellants have not
convinced us of an error in either the Examiner’s fact finding or application
of the law.
Appellants’ arguments evince a misunderstanding of the relevant law,
particularly the fact that the relevant comparison is between the product
“described” in the prior art and the products encompassed by the scope of
the claim, see 35 U.S.C. § 102, and the shifting burden of proof applicable
under the facts of this case.
It is well settled that, while one must give weight to any structure
implied by process limitations in claims when determining patentability of
the claimed product, the process steps need not be found in the prior art.
“[I]t is the patentability of the product claimed and not of the recited process
steps which must be established.” In re Brown, 459 F.2d 531, 535 (CCPA
1972).
As aptly stated in In re Brown, while it is acceptable to claim a
product in terms of the method of making it,
the lack of physical description in a product-by-process
claim makes determination of the patentability of the claim
more difficult, since in spite of the fact that the claim may recite
only process limitations, it is the patentability of the product
claimed and not of the recited process steps which must be
established. We are therefore of the opinion that when the prior
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art discloses a product which reasonably appears to be either
identical with or only slightly different than a product claimed
in a product-by-process claim, a rejection based alternatively on
either section 102 or section 103 of the statute is eminently fair
and acceptable. As a practical matter, the Patent Office is not
equipped to manufacture products by the myriad of processes
put before it and then obtain prior art products and make
physical comparisons therewith.
Id.
Therefore, “[w]here a product-by-process claim is rejected over a
prior art product that appears to be identical, although produced by a
different process, the burden is upon the applicants to come forward with
evidence establishing an unobvious difference between the claimed product
and the prior art product.” In re Marosi, 710 F.2d 799, 803 (Fed. Cir. 1983).
The fact that the claim recites structural limitations as well as process
steps does not change the analysis with respect to the process limitations.
Whether the structure is expressly set forth or implied by the process steps,
patentability must always be determined based upon the structure of the
claimed product rather than the process steps themselves. After all, the
patent law always requires that the product of the claim be “new.” Titanium
Metals Corp. of Am. v. Banner, 778 F.2d 775, 780 (Fed. Cir. 1985). Even if
the claim recites some structural features, if those features are met by the
product described in the prior art, and the Examiner provides a reasonable
basis to conclude that the additional feature claimed in terms of process
limitations is also present in the prior art, the burden shifts to Appellants to
prove that the structure, in fact, is patentably different. “[W]hen the prior art
evidence reasonably allows the PTO to conclude that a claimed feature is
present in the prior art, the evidence 'compels such a conclusion if the
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applicant produces no evidence or argument to rebut it.’” In re Crish, 393
F.3d 1253, 1259 (Fed. Cir. 2004) (quoting In re Spada, 911 F.2d 705, 708
n.3 (Fed. Cir. 1990)).
As we stated above, there is no dispute on this record that the prior art
references applied by the Examiner each describe fibrous insulation products
having insulation fibers and a binder dispersed on the fibers, that binder
being cured. The Examiner’s finding that the method of curing does not
result in a patentable structural difference in the process is reasonable.
Therefore, the burden shifted to Appellants to show that, in fact, curing as
claimed results in a patentable structural distinction. Appellants offer no
objective evidence, nor any convincing technically based argument, that
meets their burden in establishing that the heating method of claim 1 results
in a patentable difference in structure of the fibrous insulation product.
III. CONCLUSION
On the record before us, we sustain the rejections maintained by the
Examiner.
IV. DECISION
The decision of the Examiner is AFFIRMED.

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V. TIME PERIOD FOR RESPONSE
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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DUANE MORRIS LLP - PHILADELPHIA
IP DEPARTMENT
30 SOUTH 17TH STREET
PHILADELPHIA PA 19103-4196