Federal-Mogul Powertrain, Inc.

Patent Trials and Appeals Board

Jan 6, 2022

2021001088 (P.T.A.B. Jan. 6, 2022)

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. 14/216,444 03/17/2014 Ritesh Mehbubani SY-42451/710240-7007 2982 59582 7590 01/06/2022 Dickinson Wright PLLC - Troy 2600 West Big Beaver Rd. Suite 300 Troy, MI 48084-3312 EXAMINER FIGG, LAURA B ART UNIT PAPER NUMBER 1781 NOTIFICATION DATE DELIVERY MODE 01/06/2022 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): DWPatents@dickinson-wright.com tgood@dickinsonwright.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte RITESH MEHBUBANI, ALI KHOSROSHAHI, BRIAN TAYLOR, STEPHEN P. YANCHEK, and ERIC K. STAUDT ____________ Appeal 2021-001088 Application 14/216,444 Technology Center 1700 ____________ Before MICHAEL P. COLAIANNI, DEBRA L. DENNETT, and SHELDON M. MCGEE, Administrative Patent Judges. DENNETT, Administrative Patent Judge. DECISION ON APPEAL1 1 In our Decision, we refer to the Specification (“Spec.”) of Application 14/216,444 filed Mar. 17, 2014; the Amendment filed July 12, 2019 (“Amend.”); the Final Office Action dated Feb. 7, 2020 (“Final Act.”); the Appeal Brief filed Sept. 8, 2020 (“Appeal Br.”); the Examiner’s Answer dated Oct. 1, 2020 (“Ans.”); and the Reply Brief filed Dec. 1, 2020 (“Reply Br.”). Appeal 2021-001088 Application 14/216,444 2 STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 1-6 and 12 of Application 14/216,444, which constitute all the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b). For the reasons set forth below, we AFFIRM. BACKGROUND The subject matter of the invention relates to nonwoven materials and to their methods of construction. Spec. ¶ 2. The Specification describes constructing structural nonwoven materials at least partially from natural fibers. Id. According to the Applicants, the described nonwoven materials possess a high strength to weight ratio. Id. ¶ 2. The nonwoven materials are molded to form a vehicle door bolster or other structural parts. Id. ¶ 9. Claim 1, reproduced below from Exhibit A of the Appeal Brief, represents the claimed subject matter with key limitations italicized: 1. A nonwoven material, comprising: at least one nonwoven web formed from natural cellulosic fibers and modified polypropylene fibers containing polypropylene blended with Maleic Anhydride grafted Polypropylene with said natural cellulosic fibers being bonded to said modified polypropylene fibers and having voids; a scrim layer bonded to an outer surface of said at least one nonwoven web, said scrim layer being melted and diffused into said voids of said at least one nonwoven web to fill said voids thereby preventing formation of stress risers and to form 2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Federal-Mogul Powertrain, Inc. as the real party in interest. Appeal Br. 1. Appeal 2021-001088 Application 14/216,444 3 an alloy region containing material from said at least one nonwoven web and solidified material of the melted portion of said scrim layer, said alloy region enhancing the flexural strength across machine direction of said nonwoven web; and wherein said at least one nonwoven web and said scrim layer is molded to form a vehicle door bolster having a total density between about 300-1200gsm and a thickness between about l-3mm. Appeal Br. 13 (Claims App.)3 (emphases added). Figure 2 of the Specification illustrates several of the limitations at issue in this Appeal and is reproduced below: Figure 2 above shows an enlarged fragmentary cross-sectional view of nonwoven material 12, including thermoplastic scrim 16, which is melt- bonded and diffused into the interstices of nonwoven mat 14 to form alloy region 18. Spec. ¶¶ 20, 21. The Specification describes that alloy region 18 includes material from mat 14 and scrim 16 “thereby filling voids within []mat 14 that would otherwise create stress risers, and thus, location[s] of weakness.” Id. ¶ 21. 3 Appellant did not number the pages of Exhibit A in the Claims Appendix. For ease of reference, we have carried the page numbering from the Appeal Brief through Exhibit A. Appeal 2021-001088 Application 14/216,444 4 REFERENCES The Examiner relies on the following prior art in rejecting claims 1-6 and 12 as obvious under 35 U.S.C. § 103(a): Name Reference Date Tilton US 2004/0023586 A1 Feb. 5, 2004 Thompson et al. (“Thompson”) US 2007/0275180 A1 Nov. 29, 2007 Gross US 2010/0066121 A1 Mar. 18, 2010 Complete Textile Glossary, Celanese Acetate LLC (2001) 103-04 (“Complete Textile Glossary”). REJECTION The Examiner maintains the rejection of claims 1-6 and 12 as obvious over Tilton in view of Thompson, as evidenced by Complete Textile Glossary, and further in view of Gross. Final Act. 3-10.4 DISCUSSION Appellant argues that claims 1, 3, and 12 are allowable, and claims 2 and 4-6 are allowable as being dependent from claim 1. Appeal Br. 4-10; Reply Br. 1-6. Therefore, we limit our discussion to independent claims 1 and 12 and dependent claim 3. Claims 2 and 4-6 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv) (2019). We review the appealed rejection for error based upon the issues identified by Appellant and in light of the arguments and evidence produced 4 Although the Examiner’s statement of the rejection includes claim 7, we view the inclusion of this canceled claim as a clerical error. Final Act. 3; see Amend. 3. Appeal 2021-001088 Application 14/216,444 5 thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential), (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the [E]xaminer’s rejections.”). After considering the evidence presented in this Appeal and each of Appellant’s arguments, we are not persuaded that Appellant identifies reversible error. Thus, we affirm the Examiner’s rejection for the reasons expressed in the Final Office Action and the Answer. We add the following primarily for emphasis. Claim 1 The Examiner finds that Tilton’s fibrous blanket, as modified by Thompson and Gross, describes each of the nonwoven material’s limitations recited in claim 1. Final Act. 3-6. The Examiner finds that Tilton’s fibrous layer corresponds to the claimed nonwoven web because this layer includes a blend of polypropylene and cellulosic fibers. Id. at 3. The Examiner finds that Tilton’s polypropylene melt-blown layer teaches the claimed scrim layer. Id. The Examiner finds that Tilton’s melt-blown layer is “joined to the fibrous blanket by heating ‘sufficiently to cause the two layers to bond together along an interface.’” Id. (quoting Tilton ¶ 28). According to the Examiner, “some level of melting can be understood to be occurring, particularly as there is polypropylene in both the scrim and blanket layers.” Id. at 4. The Examiner concludes that “some amount of the material from the scrim layer would be entering the interstitial (void) regions between the fibers of the blanket layer, thus forming the claimed ‘alloy’ region, and minimizing or mitigating the claimed potential stress risers.” Id. Appeal 2021-001088 Application 14/216,444 6 Appellant disputes that Tilton’s interlayer bonding would have necessarily resulted in a scrim layer melted and diffused into a nonwoven web’s voids such that these voids are filled. Appeal Br. 4. Appellant contends that Tilton merely discloses the presence of voids in melt-blown layer 14, but is silent with respect to the voids’ presence in the nonwoven fibrous layer, as required by claim 1. Id. at 4-5. In response, the Examiner argues Tilton teaches that the nonwoven web may be “first needle-punched” and that “fabrics, including needle[- ]punched fabrics, are going to have some innate amount of porosity/voids.” Ans. 10. According to the Examiner, “melt-bonding the scrim layer to the needle-punched fabric layer is going to result in at least some material from the scrim layer engaging with the natural voids of the base fabric.” Id. In the Reply Brief, Appellant counters that Tilton describes needling as only “an alternative mechanism for bonding . . . , which unto itself does not result in any melting, let alone an alloy layer, but rather, only a mechanical bond.” Reply Br. 2. Appellant’s arguments lack persuasive merit. Even assuming that a non-needle-punched fabric layer and melt-blown layer 14 “are . . . joined together by heating sufficiently to cause the two layers to bond together along their interface” (Tilton ¶ 28), we agree with the Examiner that such fabrics possess some inherent amount of porosity or voids. Ans. 10. The Examiner’s findings are thus persuasive that melt-bonding Tilton’s scrim layer to the fabric layer would have resulted in at least some material from the scrim layer engaging with the voids between the fibers of the blanket layer. Compare Final Act. 4 with Spec. ¶ 21 (disclosing that “scrim 16 which when bonded to the mat 14, melts and diffuses at least in part into the Appeal 2021-001088 Application 14/216,444 7 interstices of the mat 14 . . . , thereby filling voids within the mat 14.”) (emphasis added). Appellant also argues that Tilton’s interface between fabric layer 12 and melt-blown layer 14 fails to describe the claimed alloy region. Appeal Br. 5. Appellant argues that the described interface would have resulted in “simply separate materials fixed to one another in other than an alloy composition.” Id. at 6. Appellant contends that the Examiner’s rejection is reversibly erroneous because “the claimed ‘alloy region’ is not necessarily present in the teachings of Tilton.” Id. at 7. However, Appellant does not dispute that Tilton, as modified by Thompson and Gross, teaches the same nonwoven web and scrim layer materials or that these materials are bonded in the same way as recited in claim 1. See generally Appeal Br. 4-7; Reply Br. 1-5. Our predecessor reviewing court’s long-established law holds “[w]here, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product.” In re Best, 562 F.2d 1252, 1256 (CCPA 1977) (emphasis added). Therefore, given the findings discussed supra, that support the substantial identity of the claimed and prior art products, Appellant was required to prove that bonding Tilton’s scrim layer to the nonwoven web by heat does not necessarily or inherently result in: (i) voids in the nonwoven web filled with melted and diffused scrim layer and (ii) a formed alloy region at the interface. Appellant has not done so. Appellant argues that one of ordinary skill in the art would not have been motivated to reduce the 5 mm minimum thickness of Tilton’s blanket Appeal 2021-001088 Application 14/216,444 8 “by nearly half, simply because another reference (Gross) discloses a nonwoven layer having such thickness.” Appeal Br. 7. Appellant argues that the Examiner’s proposed thickness reduction would have contradicted Tilton’s aim of providing a material with “enhanced acoustic dampening.” Id. We disagree. Tilton’s minimum thickness is not a required threshold. Rather, Tilton discloses that the nonwoven material’s thickness range at the lower end is “typically . . . about” 5 mm. Tilton ¶ 23. Gross teaches nonwoven structures, having a thickness of 1-3 mm, for use in vehicles. Gross ¶¶ 15, 160. Gross teaches that these nonwoven structures are directed to providing a desired level of acoustic insulation and reduced weight for improving gas mileage. Id. ¶ 15. The claimed range (l-3mm) overlaps the range disclosed by Gross, thus there is a presumption of obviousness of the claim. See In re Boesch, 617 F.2d 272, 275 (CCPA 1980) (where ranges overlap, a prima facie case of obviousness is made out); see also In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005) (a prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art); In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (same). The presumption may be rebutted if Appellant shows: (1) the prior art taught away from the claimed invention, In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997); or (2) there are new and unexpected results relative to the prior art, In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). Here, Appellant does neither. For the reasons above, we sustain the rejection of claim 1 as obvious over Tilton, Thompson, and Gross. We sustain the rejection of claims 2 and 4-6 over Tilton, Thompson, and Gross for the same reasons. Appeal 2021-001088 Application 14/216,444 9 Claim 3 Claims 2 and 3 are reproduced below from Exhibit A of the Appeal Brief: 2. The nonwoven material of claim 1 wherein said scrim layer forms an outer surface of said nonwoven material. 3. The nonwoven material of claim 2 wherein said nonwoven material has a flexural strength across machine direction of about 76N. Appeal Br. 13 (Claims App.). The Examiner acknowledges that Tilton, as modified by Thompson and Green, does not explicitly disclose the claimed flexural strength recited in claim 3. Final Act. 6. The Examiner finds that Tilton’s modified nonwoven material would have possessed the claimed mechanical properties because the relied-upon references “teaches the same materials treated in the same way.” Id. Appellant argues “the Examiner’s contention that Tilton teaches the same materials treated in the same way” is reversibly erroneous. Appeal Br. 8. Appellant argues that because the applied prior art fails to teach the claimed “alloy region,” as recited in claim 1, there can similarly be no teaching for the claimed “flexural strength” provided by the alloy region. Id. at 9. However, the findings discussed supra support the substantial identity of the claimed and prior art products. Appellant has not met the burden of proving that bonding Tilton’s scrim layer to the nonwoven web by heat does not necessarily or inherently result in a formed alloy region at the interface. For the reasons above, we sustain the rejection of claim 3 as obvious over Tilton, Thompson, and Gross. Appeal 2021-001088 Application 14/216,444 10 Claim 12 Appellant proffers substantially similar arguments in support of the patentability of claims 1, 3, and 12. Appeal Br. 9-10 (“Without repeating the arguments made above in support of claims 1 and 3 in their entirety, similar arguments as made above . . . are believed to support reversal of the rejection of claim 12). However, these arguments are unavailing to support reversal of the rejection of claim 12 for the reasons discussed supra. Appellant also argues that Tilton’s teachings “are expressly directed to facings for acoustical applications.” Id. at 10. Appellant contends that the Examiner’s proposed modifications would have “result[ed] in diminishing the acoustical performance of the facing by destroying the porosity in the thin melt[-]blown layer 14 of Tilton touted as being ideally suited for improving the acoustical performance.” Id. (citing Tilton ¶ 33). Tilton’s disclosure of advantages in its nonwoven material approach for providing a facing suited for improved acoustical performance does not negate combining Tilton’s materials with those disclosed by Thompson and Gross. The Examiner explains that it was known in the art that Thompson’s maleic anhydride modified polypropylene yields improved mechanical properties by increasing the compatibility between the natural fibers and the polypropylene fibers. Final Act. 5. The Examiner finds Gross evinces that it was known that the overall thickness and the weight of acoustical dampening layers can be reduced by the inclusion of a scrim. Id. at 6. “Evidence of a motivation to combine prior art references ‘may flow from the prior art references themselves, the knowledge of one of ordinary skill in the art, or, in some cases, from the nature of the problem to be solved.’” Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (quoting Brown & Williamson Tobacco Corp. v. Philip Morris Inc., 229 Appeal 2021-001088 Application 14/216,444 11 F.3d 1120, 1125 (Fed. Cir. 2000). The Examiner’s explanation of the reasons a person of ordinary skill in the art would have had to combine the prior art teachings is sufficient when an allowance is made for “the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). A given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine. See Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 at n. 8 (Fed. Cir. 2000) (“The fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another.”). The prior art must be considered as a whole for what it teaches. In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991). Although the combination of teachings in Tilton, Thompson, and Gross may have associated costs, the combination provides the advantage of fabricating a lighter and thinner acoustical facing with improved mechanical properties. We sustain the rejection of claim 12 as obvious over Tilton, Thompson, and Gross. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-6, 12 103(a) Tilton, Thompson, Complete Textile Glossary, Gross 1-6, 12 Appeal 2021-001088 Application 14/216,444 12 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