Ex parte Bartocci

Board of Patent Appeals and Interferences

Jun 15, 2000

08343965 (B.P.A.I. Jun. 15, 2000)

THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the
Board.
Paper No. 27
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MARCEL BARTOCCI
____________
Appeal No. 1998-2119
Application No. 08/343,965
____________
HERAD : April 18, 2000
____________
Before COHEN, FRANKFORT, and NASE, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
According to appellant (Paper No. 14), this is an appeal
from the examiner’s final rejection of claims 1-11 and 13-20.
However, we note that amendments (Paper Nos. 12 and 17) filed
subsequent to the final rejection and approved for entry by
the examiner have amended claims 1 and 13, and canceled claims
Appeal No. 1998-2119
Application No. 08/343,965
2
10-12, 16 and 18-20. Accordingly, the appeal as to claims 10,
11, 16,
Appeal No. 1998-2119
Application No. 08/343,965
While the amendments filed by appellant on December 30,1
1996 (Paper No. 12) and on April 28, 1997 (Paper No. 17) have
been approved for entry by the examiner (see Paper Nos. 13 and
18), they have not as of yet been properly clerically entered.
During any further prosecution of this application before the
examiner, this oversight should be corrected. In addition, in
claims 14, 15 and 17 the spelling of calendering should be
corrected.
3
and 18-20 is dismissed. This leaves for our consideration on
appeal only claims 1-9, 13-15 and 17 as amended subsequent to
the final rejection. 1
Appellant’s invention relates to a method of fabricating
a reinforced foil coating material with a low frictional
coefficient including contacting an expanded metal sheet (2)
and at least one polytetrafluoroethylene (PTFE) strip (1 or 3)
to form a stack, calendering the stack to at least partially
crush the expanded-metal sheet, and then heating the
calendered stack to sinter the PTFE strip, thereby forming the
foil-type material. During the calendering step, pressure
greater than 200 kg/cm , and preferably approximately 5002
kg/cm , is applied. A copy of representative independent2
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Application No. 08/343,965
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claim 1, reproduced from appellant’s brief, is attached to
this decision.
Appeal No. 1998-2119
Application No. 08/343,965
A copy of an English translation of French Patent 2
2,445,210 obtained by the USPTO and relied upon by this panel
of the Board in deciding this appeal is appended to the
decision for appellant’s convenience.
We have also relied upon a copy of an English3
translation of Japan 4-101,845 provided by appellant in
deciding this appeal.
5
The prior art references of record relied upon by the
examiner in rejecting claims 1-9, 13-15 and 17 are:
French Patent 2,445,210 Jul.2
25, 1980

Japanese Kokai 4-101845 Apr. 3, 19923

Claims 1-9, 13-15 and 17 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over French ‘210 in view of
Japanese ‘845.
Rather than attempt to reiterate the examiner’s full
explanation with regard to the above noted rejection and the
conflicting viewpoints advanced by the examiner and appellant
regarding the rejection, we make reference to the final
rejection (Paper No. 10, mailed August 29, 1996) and the
examiner’s answer (Paper No. 21, mailed September 15, 1997)
Appeal No. 1998-2119
Application No. 08/343,965
6
for the reasoning in support of the rejection, and to
appellant’s brief (Paper No. 20, filed May 28, 1997) and reply
brief (Paper No. 23, filed
November 17, 1997) for the arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to appellant’s specification and claims,
to the applied prior art references, and to the respective
positions as set forth by appellant and the examiner.
In rejecting claims under 35 U.S.C. § 103, the examiner
bears the initial burden of presenting a prima facie case of
obviousness (see In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d
1955, 1956 (Fed. Cir. 1993); In re Oetiker, 977 F.2d 1443,
1446, 24 USPQ2d 1443, 1445 (Fed. Cir. 1992)), which is
established when 2the teachings of the prior art itself would
appear to have suggested the claimed subject matter to one of
ordinary skill in the art (see In re Bell, 991 F.2d 781, 783,
26 USPQ2d 1529, 1531 (Fed. Cir. 1993)). The conclusion that
the claimed subject matter is prima facie obvious must be
Appeal No. 1998-2119
Application No. 08/343,965
7
supported by evidence, as shown by some objective teaching in
the prior art or by knowledge generally available to one of
ordinary skill in the art that would have led that individual
to combine the relevant teachings of the references to arrive
at the claimed invention. See In re Fine, 837 F.2d 1071,
1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988).
With this as our background, we turn to the examiner’s
rejection of claims 1-9, 13-15 and 17 under 35 U.S.C. § 103 as
being unpatentable over French ‘210 in view of Japanese ‘845.

The primary reference, French ‘210, was discussed by
appellant on page 1 of his specification and discloses a
method for fabricating a foil-type material wherein expanded
metal is coated on each face with a polytetrafluoroethylene
(PTFE) strip. The assembly is formed in a mold by hot-pressing
at a pressure of between 20 and 200 kg/cm2.
Japanese ‘845 teaches a method for producing a laminated
sheet wherein a precuring step involving heating without
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Application No. 08/343,965
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pressure is carried out on a laminated base material before
heat-pressing the base material and a metal foil together in a
molding machine. This precuring step eliminates wrinkles or
waves, which results from the difference in the thermal
expansion coefficient between the laminated base material and
the metal foil. The preferred embodiment of Figure 1
discloses four layers of impregnated cloth sheets (1)
laminated through a set of squeeze rollers (2), laying
polyethylene terephthalate films (4) on the cloth sheets and
laminating the films to the cloth layer via rollers (3). This
product is then heated in a hot air heating furnace (5)
without applying any pressure to carry out the precuring step.
Then, the polyethylene terephthalate films (4) are removed by
using wind-up rollers (6). To create the final laminate
assembly, metal
foils (8) are laid on the precured laminated cloth sheet by
rollers (7) and the composite is then subjected to a double
belt press (9) which provides heat and pressure to the
assembly for bonding the metal foils and the impregnated cloth
sheets together.
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The examiner takes the position that French ‘210
discloses all but the separate steps of calendering and
heating which is rectified by Japanese ‘845. On page 3 of the
examiner’s answer, the examiner states that "’calendering and
heating’ is deemed to be the functional equivalent of ’heating
under pressure’, insofar as the final product is concerned."
It is also the examiner’s position that "when the expanded
metal sheet of French ‘210 is subjected to a calendering
operation, it will be at least partially crushed" (answer, pg.
4). The examiner also concludes (answer, pg. 7) that Japanese
‘845 "fairly suggests that when a composite product is to be
made by an applicant [sic] of pressure and heat, the
application of pressure and heat could be separate from one
another" and that "a reasonable inference that the artisan
would logically draw from Japan ‘845 is that the
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Application No. 08/343,965
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process thereof would work with all composite structures
produced form [sic] strip-like material by applying heat and
pressure thereto" (answer, pg. 7).
Appellant argues that neither French ‘210 nor Japanese
‘845 teaches nor suggests calendering the stack to at least
partially crush the expanded-metal sheet. As set forth in
appellant’s reply brief on page 4, the PTFE would be in a
gelatinous state during the hot pressing step taught in French
‘210 and would not result in any crushing of the metal.
Appellant finds support for this conclusion in Dupont Teflon
Compression Molding,
pages 13-15. Appellant also argues that Japanese ‘845 does
not disclose the separate calendering step as recited in the
claims on appeal.
Referring to Japanese ‘845, it cannot be determined
whether the examiner is suggesting that the calendering step
occurs during the precuring phase (at 1-6) or during the
laminating step (at 7-9) in Figure 1 of the reference. We
find no suggestion that calendering to at least crush the
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11
metal sheet occurs anywhere during the entire process of
Japanese ‘845 or French ‘210. Japanese ‘845 (page 2, last two
paragraphs of the translation provided by the appellant) state
that a cover film is merely "laid" on the impregnated
laminated base material, with no suggestion of applying
pressure. The process also describes "laying" the metal
foils (8) onto the laminated base material with no reference
of applying any amount of pressure before the composite
structure is moved on to the continuous heat-pressure molding
machine. We find the precuring step to be irrelevant to the
issue at hand since the cover film (4) is intended to be
removed instead of being permanently laminated thereon, as in
appellant’s invention. Regarding the process for bonding the
metal foil (8) to the laminated base material, we agree with
the appellant that this process also uses heating under
pressure, similar to that of French ‘210, since there is no
suggestion that the rollers (7) of Japanese ‘845 necessarily
apply any significant pressure. The pressure during this
phase is applied at the belt press (9), which also provides
combined heating. We also agree with appellant’s statement
(reply brief, pg. 3) that "there is no indication in the cited
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prior art that ’calendering and heating’ is the functional
equivalent of ’heating under pressure’," since the examiner
has not provided adequate explanation or evidence to support
such an assertion. To the contrary, as pointed out in the
rely brief on page 3 by the appellant, Japanese ‘845 uses
pressing and then heating without pressure in some steps of
the process (1-6) and heating under pressure in another step
of the process (9), which suggests to us that these processes
are not equivalent.
In this case, we find that neither the primary nor the
secondary reference includes key features of the claimed
invention, the key features being partial crushing of the
expanded metal sheet during the calendering phase, and then
heating the calendering stack to sinter the PTFE sheet,
thereby forming the composite self-lubricating foil-type
material.
It is our view that the examiner has engaged in
speculation and conjecture, as well as impermissible
hindsight, in attempting to combine the disparate teachings of
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French ‘210 and Japanese ‘845 to meet the limitations of
appellant’s claims on appeal. Even if French ‘210 and
Japanese ‘845 are considered to be analogous prior art, the
combined teachings of the applied references, in our opinion,
would not have suggested calendering the stack to at least
partially crush the expanded metal and then heating the
calendered stack to sinter the PTFE and thereby form the foil-
type material. Therefore, the examiner’s rejection of
independent claim 1 will not be sustained. Since claims 2-9
depend from 1 and thus include all of the limitations thereof,
we will also not sustain examiner’s rejection of these claims
under 35 U.S.C. § 103(a).
Independent claim 13 includes all of the limitations of
independent claim 1 as well as requiring a calendering
pressure "greater than 200 kg/cm ". Since we have determined2
that a prima facie case of obviousness was not set forth by
the examiner with regard to broader independent claim 1, it
follows that the rejection of independent claim 13 on the same
basis (i.e., French ‘210 in view of Japanese ‘845) will also
not be sustained. Since claims 14, 15 and 17 depend from 13
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and thus includes all of the limitations thereof, we will also
not sustain examiner’s rejection of these claims under 35
U.S.C. § 103(a).
In light of the foregoing, we cannot sustain the
examiner’s rejection of claims 1-9, 13-15 and 17 under 35
U.S.C. § 103(a) as being unpatentable over French ‘210 in view
of Japanese ‘845.
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Application No. 08/343,965
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Thus, the decision of the examiner to reject claims 1-9,
13-15 and 17 under 35 U.S.C. § 103(a) is reversed. In
addition, this application is REMANDED back to the examiner
since claim 4, which depends from independent claim 1 appears
to be a duplicate of independent claim 13. Therefore, the
examiner should consider this issue and take appropriate
action pursuant to M.P.E.P. § 706.03(k) and 37 CFR § 1.75.
REVERSED and REMANDED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
CEF/sld
Appeal No. 1998-2119
Application No. 08/343,965
16
OLIFF & BERRIDGE
P.O. BOX 19928
ALEXANDRIA, VA 22320
Shereece
Appeal No. 1998-2119
Application No. 08/343,965
APJ FRANKFORT
APJ NASE
APJ COHEN
REVERSED AND REMANDED
Prepared: December 22, 2000