Ex Parte Adam et alDownload PDFPatent Trial and Appeal BoardJul 29, 201310490849 (P.T.A.B. Jul. 29, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 10/490,849 09/16/2004 Achim Adam 71010-012 2104 59582 7590 07/29/2013 DICKINSON WRIGHT PLLC 2600 WEST BIG BEAVER ROAD SUITE 300 TROY, MI 48084-3312 EXAMINER ANGADI, MAKI A ART UNIT PAPER NUMBER 1713 MAIL DATE DELIVERY MODE 07/29/2013 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 ACHIM ADAM, STEFAN FUCHSBERGER, and JOACHIM SCHLUTER ____________ Appeal 2012-003713 Application 10/490,849 Technology Center 1700 ____________ Before ANDREW HAROLD METZ, TERRY J. OWENS, and GRACE KARAFFA OBERMANN, Administrative Patent Judges. METZ, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from the Examiner's decision rejecting claims 2 through 5, 7 through 21, 24, and 25, which are all the claims remaining in the application. We have jurisdiction under 35 U.S.C. § 6. We REVERSE. Appeal 2012-003713 Application 10/490,849 2 THE INVENTION Claim 24, the only independent claim before us, is believed to be adequately representative of the appealed subject matter and is reproduced below for a more facile understanding of the claimed invention. 24. A method of making a sliding element, comprising: preparing a metallic backing material of the sliding element having a roughened or porous surface; forming an overlay on the roughened porous backing material having a thickness greater than 50 µm by applying a paste made up of a composition of 40 to 70 vol% of a fluoropolymer material including at least PTFE and 60 to 20 vol% of at least one high temperature polymer relative to the total volume of the composition of the overlay, wherein the at least one high temperature polymer is selected to have a melting point or glass transition point of not less than 327ºC, and wherein the paste is heat treated to cure and bond the overlay to the backing material and wherein the high temperature polymer is selected to comprise at least one material selected from the group consisting of: polyphenylene sulfone (PPSO2), poly(p-phenylene terephthalamide) (PPTA), polyaramid (TWA) or poly(p-benzamide) (PBA). The references of record which are being relied on by the Examiner as evidence of obviousness are: Pratt et al. (Pratt) 4,732,818 Mar. 22, 1988 Grünthaler et al. (Grünthaler) 6,077,815 Jun. 20, 2000 Adam (II)1 6,376,061 B1 Apr. 23, 2002 Adam et al. (Adam I)2 6,528,143 B1 Mar. 04, 2003 1 We adopt the practice of Appellants and the Examiner from their Brief and Answer, respectively, of denominating this reference as Adam II. 2 We adopt the practice of Appellants and the Examiner from their Brief and Answer, respectively, of denominating this reference as Adam I. Appeal 2012-003713 Application 10/490,849 3 Griffin et al. (Griffin)3 EP 0 470 446 A1 Feb. 12, 19924 THE REJECTIONS Claims 2 through 5, 7 through 13, 15, 18 through 20, 24, and 25 stand rejected as being unpatentable under 35 U.S.C. § 103(a) as the subject matter claimed therein would have been obvious at the time Appellants made their invention from the disclosure of Adam I considered with Adam II, Norman and Pratt. Claims 14, 16, 17, and 21 stand rejected as being unpatentable under 35 U.S.C. § 103(a) as the subject matter claimed therein would have been obvious at the time Appellants made their invention from the disclosure of Adam I considered with Adam II, Norman, Pratt, and Grünthaler. OPINION The Adams I reference describes a sliding element comprising a “plastic overlay” on a metallic backing (column 2, lines 54 through 59) wherein the “plastic overlay” is prepared from a powder with a high polyvinylidene difluoride (PVDF) content of from 60 to 95 vol.% and having a second component not exceeding 40 vol.%. The second component may consist exclusively of polytetrafluoroethylene (PTFE) or PTFE and at least one other component (col. 2, ll. 59-62). When one “other component” is present in addition to the PTFE, it should be selected from the group of 3 The Examiner incorrectly identifies the Griffin reference as Norman. 4 The Examiner incorrectly represents the date of publication to be “12- (December) 1992.” The date indicated on the reference, “12.02.92” represents February 12, 1992. Appeal 2012-003713 Application 10/490,849 4 fully or partially aromatic polymers such as PI (polyimide), PAI (polyamide- imide), polyamides, PPS (polyphenylene sulfide), PES (polyether sulfone), PEEK (polyether ether ketone), PSU (polysulfone) or polyester (col. 3, ll. 7- 13) and may be present in an amount up to 5 vol.% (col. 3, ll. 35-36). The sliding element is prepared by: producing a powder mixture with a PVDF content as described above and having a second component in the powder mixture not exceeding 40 vol.% PTFE or PTFE with up to 5 vol.% one other component present; scattering the powder mixture on the metallic backing material; heating the powder mixture above the melting point of the PVDF/PTFE component powder mixture with up to 5 vol.% of one “other component” added and then rolling the plastic overlay smooth (col. 3, ll. 27- 36). The Examiner concedes that Adam I does not teach or suggest the use of a paste to prepare its sliding member or Appellants’ specifically claimed “high temperature polymer” and relies on the disclosure from Adam II at column 2, lines 46 through 48 for the disclosure of using PPTA and/or PBA in a composite, multilayer material useful in sliding elements. The Examiner relies on the disclosure in Pratt at column 2, lines 20 through 23 of preparing a sliding element from either a powder or a paste. The Examiner concludes it would have been obvious to include the claimed “high temperature polymers” from Adam II’s disclosure in the powder of Adam I and to have prepared the sliding element of Adam I from a paste rather than a powder based on Pratt’s disclosure. As correctly argued by Appellants, Adam I does not teach or suggest preparing an overlay by applying a paste to a metallic backing material, let Appeal 2012-003713 Application 10/490,849 5 alone a paste having the compositional makeup required by claim 24. We agree with Appellants that the Examiner’s reliance on Adam II as evidence that it would have been obvious to use one of Appellants’ particularly claimed “high temperature polymers” based on the disclosure of Adam II in the powder of Adam I is poorly taken. As correctly argued by Appellants in their Brief, Adam II uses the aromatic polyaramid in an amount of from 2 to 10 vol.% while Appellants process requires at a minimum at least twice that amount, that is, from 20 to 60 vol.% of “high temperature polymer.” Likewise, Adam I discloses even smaller amounts, “up to 5 vol.%” of other components, may preferably be added (col. 3, ll. 36-37) to the powder mixture. The Examiner’s reliance on Pratt in his Answer at page 5 for its alleged “general teaching that either powder mixture or paste” can be used to prepare useful sliding elements (col. 2, ll. 20- 23) is factually erroneous. The disclosure at column 2, lines 13 through 23 in Pratt describes applying a paste obtained by the coagulation of a dispersion of PTFE particles in water. Pratt describes further adding metallic fillers or non-metallic fillers in powder form to the powdered PTFE before coagulating the mixture to form a paste to apply to the backing material as a paste not a powder mixture. In responding to Appellants’ arguments concerning the differences in the amounts of polyaramids used by Adam I, compared to the amounts used in Adam II, the Examiner opines “one who is skilled in the art should be able to combine teachings of Adam I and Adam II to optimize the volume percentage of polyaramids in the composition.” Ans. 9. Such a statement evidences a misunderstanding of the inquiry under Section 103. The question is not whether the routineer in the art “should be able to combine” Appeal 2012-003713 Application 10/490,849 6 or could combine the references and in so combining them obtain the invention claimed by Appellants. Rather, the question is whether there is evidence that establishes that the routineer would have been motivated to combine the references in the manner proposed by the Examiner and in so doing obtain the subject matter claimed by Appellants. We find no such evidence in the record before us. To the extent the Examiner relies on a theory of optimization as the motivation, there must first be evidence that the variable in question is a so-called “result effective variable.” The Examiner has failed to provide such evidence here. For all the above noted reasons, we find the Examiner has failed to establish that the subject matter claimed by Appellants would have been obvious, in the sense of the statute, at the time Appellants made their invention from the prior art of record on which the Examiner has relied to reject the appealed claims. Accordingly, we reverse the Examiner’s rejections. The decision of the Examiner is reversed. REVERSED cam Copy with citationCopy as parenthetical citation