Ex Parte Adam et al

Patent Trial and Appeal Board

Jul 29, 2013

10490849 (P.T.A.B. Jul. 29, 2013)

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

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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

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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

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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
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Application 10/490,849

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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”
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Application 10/490,849

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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

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