Ex parte BATE et al.

Board of Patent Appeals and Interferences

Mar 30, 1999

08001192 (B.P.A.I. Mar. 30, 1999)

Application for patent filed January 7, 1993.1
1
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(2) is not binding precedent of the Board.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. 26
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte THOMAS J. BATE
and HUGH C. WILSON
__________
Appeal No. 95-4577
Application 08/001,1921
__________
HEARD: Mar. 11, 1999
__________
Before GARRIS, WEIFFENBACH, and KRATZ, Administrative Patent
Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 95-4577
Application No. 08/001,192
As pointed out by the examiner in his answer and noted2
by the appellants' attorney during the oral hearing, claims 8
and 10 inappropriately depend from canceled claims. This
informality should be corrected upon return of the application
to the jurisdiction of the examiner.
2
This is a decision on an appeal which involves claims 3
through 6, 8, 10 through 17 and 25 through 29. The only2
other claims remaining in the application, which are claims 18
through 24, have been allowed.
The subject matter on appeal relates to a non-stick
coating which comprises refractory fibres mixed with at least
one fluorocarbon resin and to a cooking article having such a
non-stick coating. This appealed subject matter is adequately
illustrated by independent claims 25, 27, 28 and 29, a copy of
which taken from the appellants' brief is appended to this
decision.
The sole reference relied upon by the examiner as
evidence of obviousness is:
Yoshimura et al. 4,248,763 Feb. 3, 1981
(Yoshimura)
All of the claims on appeal are rejected under 35 U.S.C.
§ 103 as being unpatentable over Yoshimura.
Appeal No. 95-4577
Application No. 08/001,192
3
We refer to the brief and to the answer for a complete
exposition of the opposing viewpoints expressed by the
appellants and the examiner concerning this rejection.
OPINION
Because the examiner has failed to carry his initial
burden of establishing a prima facie case of obviousness, the
above noted rejection can not be sustained.
According to the examiner, the non-stick characteristic
recited in the appealed claims would be inherently possessed
by the composition of Yoshimura. It is well settled, however,
that an examiner must provide some evidence or scientific
reasoning to establish the reasonableness of his or her belief
that the functional limitation of a claim, such as the here
claimed non-stick feature, is an inherent characteristic of
the prior art. Ex parte Skinner, 2 USPQ2d 1788, 1789 (Bd.
Pat. App. & Int. 1986). In the case before us, the examiner
has advanced no such evidence or reasoning and thus has failed
to establish a prima facie case for his inherency position.
With regard to the here claimed coating thickness
limitation of up to 50 microns, the examiner simply states
that "[t]he [Yoshimura] composition can be applied such as
Appeal No. 95-4577
Application No. 08/001,192
4
coatings having thickness of a film of 50 microns" (answer,
page 7; emphasis added). The mere fact that patentee's
"composition can be applied" at a thickness of 50 microns is,
by itself, inadequate to establish obviousness. This is
because the capability of so modifying the prior art would not
have made the modification obvious unless the prior art
suggested the desirability of the modification. In re Gordon,
733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). In
this latter regard, the appellants are correct that the
Yoshimura reference would have militated against rather than
for such a thickness (e.g., see the last full paragraph in
column 1 and the paragraph bridging columns 1 and 2 of the
patent).
Finally, the examiner has failed to establish a prima
facie case with the respect to the cooking article feature of
appealed claim 29. While the examiner seems to appreciate
that claim 29 contains such a feature (see the second full
sentence on page 8 of the answer), he has offered no evidence
or reasoning in support of a conclusion that it would have
been obvious to so modify the subject matter of Yoshimura as
to result in a cooking article as required by the claim under
Appeal No. 95-4577
Application No. 08/001,192
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review. In the absence of even an attempt to provide the
requisite evidence or reasoning to
support an obviousness conclusion, it appears to us that the
examiner has failed to even shoulder much less carry his
initial burden.
In light of the foregoing, the examiner's section 103
rejection of the appealed claims as being unpatentable of
Yoshimura can not be sustained.
The decision of the examiner is reversed.
REVERSED

Bradley R. Garris )
Administrative Patent Judge )
)
)
)
Cameron Weiffenbach ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Peter F. Kratz )
Administrative Patent Judge )
Appeal No. 95-4577
Application No. 08/001,192
6
tdc
Appeal No. 95-4577
Application No. 08/001,192
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James H. Patterson
Patterson & Keough
4800 IDS Center
80 South 8th Street
Minneapolis, MN 55402-2100
Appeal No. 95-4577
Application No. 08/001,192
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APPENDIX
25. A coating composition for providing a non-stick coating
which comprises refractory fibres mixed with at least one
fluorocarbon resin, wherein said refractory fibres represent 1
to 25% by weight of a final coating derived from said
composition and said refractory fibres have diameters in the
range of about 1 Fm to 20 Fm and lengths in the range of about
70 Fm to 150 Fm, and wherein said at least one fluorocarbon
resin represents 40 to 90% by weight of said final coating,
wherein said final coating is adapted to be a non-stick
coating.
27. A coating formulation for providing a non-stick coating
on a metal substrate for the manufacture of cookware, said
coating composition comprising: a liquid medium present as
about 40 to 60% by weight of said coating formulation, said
liquid medium being selected from the group consisting of
water, xylene, toluene, N-methyl pyrrolidine, dimethyl
formamide, glycol and alcohol, refractory fibres dispersed in
said liquid medium, said refractory fibres representing about
1 to 25% by weight of a final coating derived from said
Appeal No. 95-4577
Application No. 08/001,192
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formulation, said refractory fibres being selected from the
group consisting of aluminum fibres, glass fibres and carbon
fibres; said refractory fibres having a diameters in the range
of about 1 Fm to 20 Fm and having lengths in the range of
about 70 Fm to 150 Fm; and at least one fluorocarbon resin
dispersed or dissolved in said liquid medium, said
fluorocarbon resin being selected from the group consisting of
polytetrafluoroethylene, fluorinated ethylene propylene,
perfluoroalkoxy and combination thereof, said fluorocarbon
representing about 40 to 90% by weight of said final coating.
28. A non-stick coating comprising a film of thickness
up to about 50 Fm, said film comprising at least one
fluorocarbon resin and refractory fibres, said refractory
fibres having diameters in the range of about 1 Fm to 20 Fm
and lengths in the range of about 70 Fm to 150 Fm.
29. A cooking article comprising a substrate and non-
stick coating, said non-stick coating comprising a film of
thickness up to about 50 microns, said film comprising at
least one fluorocarbon resin and fibres.
Appeal No. 95-4577
Application No. 08/001,192
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