Kunze, Ulrich E. et al.

Patent Trials and Appeals Board

Oct 11, 2019

14134538 - (D) (P.T.A.B. Oct. 11, 2019)

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.
14/134,538 12/19/2013 Ulrich E. Kunze 63641US011 5553
32692 7590 10/11/2019
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
PIZIALI, ANDREW T
ART UNIT PAPER NUMBER
1789
NOTIFICATION DATE DELIVERY MODE
10/11/2019 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):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ULRICH E. KUNZE, LAHOUSSAINE LALOUCH,
CLAUS MIDDENDORF, and HARALD H. KRIEG

____________

Appeal 2018-006273
Application 14/134,538
Technology Center 1700
____________

Before LINDA M. GAUDETTE, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 requests our review under 35 U.S.C. § 134 of the
Examiner’s decision rejecting claims 4–6, 9, 11, 15, and 17 under 35 U.S.C.
§ 103 as unpatentable over at least the combined prior art of Hornbak ( WO
2007/047273 A2, published Apr. 26, 2007) and Andersen (US

1 We use the word “Appellant” to refer to the “Applicant” as defined in 37
C.F.R. § 1.42(a). Appellant is 3M Innovative Properties Company, which is
also identified as a real party in interest (Appeal Br. 2).

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2005/0098910 A1, published May 12, 2005).2 The Examiner also rejected
claims 4−6 under 35 USC § 112(a) as lacking written description support. A
hearing was held on October 1, 2019. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We AFFIRM.

Claim 15 is illustrative of the subject matter on appeal (emphasis
added to highlight key disputed limitation):
15. A method of making mounting mats for use in a pollution
control device, said method comprising:
(i) heat-treating glass fibers comprising A12O3 in an amount of
10 to 30% by weight and SiO2 in an amount of 52 to 65% by weight
based on the total weight of the glass fibers with a temperature of
between 300°C and about 50°C below the softening point of the glass;
(ii) supplying the heat treated glass fibers through an inlet of a
forming box having an open bottom positioned over a forming wire to
form a mat of fibers on the forming wire, the forming box having a
plurality of fiber separating rollers provided in at least one row in the
housing between the inlet and housing bottom for breaking apart
clumps of fibers and an endless belt screen;
(iii) capturing clumps of fibers on a lower run of the endless
belt beneath fiber separating rollers and above the forming wire;
(iv) conveying captured clumps of fibers on the endless belt
above fiber separating rollers to enable captured clumps to release
from the belt and to contact and be broken apart by
the rollers;
(v) transporting the mat of fibers out of the forming box by the
forming wire; and

2 The Examiner applied an additional reference, Kaneko (WO 2005/021945
A1, published Mar., 10, 2005), to dependent claim 11 as well as all the other
claims (Ans. 4). A discussion of this reference is not needed for disposition
of this appeal.
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(vi) compressing the mat of fibers and restraining the mat of
fibers in its compressed state thereby obtaining a mounting mat
having a desired thickness suitable for mounting a pollution
control element in the housing of a catalytic converter.
ANALYSIS
Upon consideration of the evidence of record and each of Appellant’s
contentions as set forth in the Appeal Brief, as well as the Reply Brief, we
determine that Appellant has not demonstrated reversible error in the
Examiner’s rejections (e.g., generally Ans.). In re Jung, 637 F.3d 1356,
1365–66 (Fed. Cir. 2011) (explaining the Board’s long-held practice of
requiring Appellant(s) to identify the alleged error in the Examiner’s
rejection.). We sustain the rejections for the reasons expressed by the
Examiner in the Final Office Action and the Answer.
We add the following primarily for emphasis.
Rejection under 35 U.S.C. § 112(a)
Dependent claims 4−6 each recite the use of “unleached fibers.” The
Examiner finds the originally-filed application does not contain written
description support for this limitation. Final Act. 2.
The written description “must clearly allow persons of ordinary skill
in the art to recognize that [the inventor] invented what is claimed.” Ariad
Pharm., Inc. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc)
(citation and quotations omitted, alteration in the original). The test is
whether the disclosure “conveys to those skilled in the art that the inventor
had possession of the claimed subject matter as of the filing date.” Id.
Appellant contends that paragraph 11 of the originally-filed
application describes that leached fibers are expensive and therefore one of
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ordinary skill in the art would have recognized that the invention uses only
unleached fibers to save money. Appeal Br. 10–11; Reply Br. 1, 2.
Contrary to Appellant’s position that one of ordinary skill in the art would
understand that the present invention “would not include leached fibers”
(Reply Br. 1), the leached glass fibers of WO 2004/031544 (WO ’544),
relied upon by Appellant and discussed in paragraph 11 of the Specification,
may include any glass fibers that “contain more silica than any other
compositional ingredient in the fibers” (see WO ’544 at p. 10:6-9). By this
definition, the recited glass fibers of claim 15 which include a range of silica
from 52 to 65% by weight appear to be leached fibers, as opposed to
unleached fibers. Cf., Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344,
1350–51 (Fed. Cir. 2012) (“Negative claim limitations are adequately
supported when the specification describes a reason to exclude the relevant
limitation.” In Santarus, the court found that claims reciting the negative
limitation “wherein the composition contains no sucralfate” satisfied the
written description requirement, because the specification described
sucralfate as having adverse effects and described omeprazole as an
advantageous alternative.).
We do not find, however, nor does Appellant identify, a disclosure in
the Specification that properly describes using unleached fibers.
Appellant’s remarks regarding the obviousness of using leached or
unleached fibers is not persuasive (Reply Br. 2). The test is not whether one
of ordinary skill in the art would find the invention obvious after reading the
disclosure, it is whether the disclosure itself conveys that Appellant had
possession of the later-claimed subject matter. A disclosure that merely
renders the later-claimed subject matter obvious is not sufficient to meet the
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written description requirement; the disclosure must describe the claimed
invention with all its limitations. Tronzo v. Biomet, Inc., 156 F.3d 1154,
1158 (Fed. Cir. 1998); Lockwood v. American Airlines, Inc., 107 F.3d 1565,
1572 (Fed. Cir. 1997). “That a person skilled in the art might realize from
reading the disclosure that such a step is possible is not a sufficient
indication to that person that the step is part of appellants’ invention.” In re
Barker, 559 F.2d 588, 593 (CCPA 1977) (quoting In re Winkhaus, 527 F.2d
637, 640 (CCPA 1975)).
In sum, Appellant has not persuaded us of reversible error in the
Examiner’s determination that the originally-filed application does not
provide written description support for the use of “unleached fibers” as
recited in claims 4–6, and/or excluding the use of leached fibers as urged by
Appellant (Reply Br. 1). Accordingly, we sustain the rejection of claims 4–6
under 35 U.S.C. § 112(a).
Rejections under 35 U.S.C. § 103
Appellant’s arguments in support of patentability as to all appealed
claims are based on limitations found in claims 15.
It has been established that “the [obviousness] analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of 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); see also In re Fritch, 972 F.2d 1260, 1264–
65 (Fed. Cir. 1992) (a reference stands for all of the specific teachings
thereof as well as the inferences one of ordinary skill in the art would have
reasonably been expected to draw therefrom).
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Appellant’s arguments all focus on the alleged failure of Hornback to
teach or suggest heat treating “glass fibers” as recited in claim 15 (e.g.,
Appeal Br. 5–7; Reply Br. 3-5). Appellant admits that glass is a ceramic.
Appellant’s claims recite ranges for the amount of silica and alumina for its
glass fibers that overlap the ranges Hornback describes for the disclosed heat
treated ceramic fibers (Hornbach pg 27, ll. 1−8). Thus, the broadest
reasonable interpretation of “glass fibers” as used in claim 15 encompasses
Hornback’s refractory ceramic fibers. Appellant has not directed our
attention to any persuasive reasoning or credible evidence to establish that
the use of Hornback’s ceramic fibers is not within the scope of Appellant’s
“glass fibers.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379
(Fed. Cir. 2007) (it is well established that “the PTO must give claims their
broadest reasonable construction consistent with the specification” and if the
specification does not provide a definition for claim terms, the PTO applies a
broad interpretation).
In any event, we also agree with the Examiner’s position that it would
have been obvious to treat glass fibers as recited in claim 15 (see, e.g.,
¶¶ 92–95, Fig. 23). One of ordinary skill in the art would have immediately
inferred, using no more than ordinary creativity, that the use of Hornback’s
heat treatment would encompass glass fibers having the compositional make
up as recited in claim 15. An attorney’s arguments in a brief cannot take the
place of evidence. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974).
In summary, Appellant has not directed our attention to any
persuasive reasoning or credible evidence to establish that the Examiner’s
interpretation that the claim encompasses the method described in the
Hornback/Andersen combination is unreasonable. ICON, 496 F.3d at 1379.
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Appellant has not adequately explained why one skilled in the art would not
have combined the teachings of the applied prior art as set forth by the
Examiner. Thus, on this record, Appellant has not shown error in the
Examiner’s obviousness determination. See KSR, 550 U.S. at 417 (the
predictable use of known prior art elements or steps performing the same
functions they have been known to perform is normally obvious; the
combination of familiar elements/steps is likely to be obvious when it does
no more than yield predictable results); Ball Aerosol and Specialty
Container, Inc. v. Limited Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009)
(under the flexible inquiry set forth by the Supreme Court, the PTO must
take account of the “inferences and creative steps,” as well as routine steps,
that an ordinary artisan would employ).
Accordingly, we sustain the Examiner’s prior art rejections under 35
U.S.C. § 103 of all the claims on appeal for the reasons given above and
presented by the Examiner.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
4–6 § 112(a)

4–6

4–6, 9, 15, 17 § 103(a) Hornback,
Andersen

4–6, 9, 15,
17

4–6, 9, 11,
15, 17
§ 103(a) Hornback,
Andersen, Kaneko
4–6, 9, 11,
15, 17

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Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed

Overall
Outcome
4–6, 9, 11,
15, 17

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)(1).

AFFIRMED