Ex parte Beer et al.

Board of Patent Appeals and Interferences

Apr 15, 1999

08014136 (B.P.A.I. Apr. 15, 1999)

Application for patent filed February 5, 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publication in a law journal and (2) is not binding precedent of the Board.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. 24
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte EKKEHARD BEER, KARL-HEINZ KOCHEM and MICHAEL SCHMIDT
__________
Appeal No. 96-0044
Application 08/014,1361
___________
ON BRIEF
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Before DOWNEY, GARRIS and OWENS, Administrative Patent Judges.
DOWNEY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. §134 from the final rejection of claims 1, 3-8, 10-
16, 30-31 and 33-42, all the claims pending in the application.
Appeal No. 96-0044
Application 08/014,136
2
The subject matter on appeal is directed to a coating composition comprising an
intrinsically electrically conductive polymer, a binder, a solvent and an additive having low
adhesion to metal. The coating composition is said to be useful in metal transferration
processes to coat a transfer metallization plastic film whereby a metal layer deposited on
the coated plastic film is transferred to a second carrier, thus allowing the coated plastic
film to be reused.
Appellants indicate and argue that the claims do not stand or fall together. For
purposes of this decision, we find it necessary to address claim 1, which is the only
independent claim. Claim 1 reads as follows:
1. A coating composition for a transfer metallization plastic film comprising an intrinsically
electrically conductive polymer in an amount effective to provide antistatic properties when
coated onto the plastic film;
one or more additives which have a low adhesion to a metal layer in an amount
effective to allow release of the metal layer from the plastic film;
one or more binders in an amount effective to improve the adhesion of the coating
to the surface of the plastic film, wherein the binder is other than the conductive polymer
and the additive; and
a solvent to dissolve, swell, or disperse the electrically conductive polymer, binder,
and the additive.
The references relied upon by the examiner are:
Kampf 5,286,414 Feb. 15, 1994
Schildknecht, C., Polymer Processes, pp. 329 and 685-686, 1956
Appeal No. 96-0044
Application 08/014,136
Claims 3 and 4 refer to concentrations as based on the dry weight of the coating2
“agent”. The term agent does not have any antecedent support. It would appear that
appellants are referring to the coating or coating composition. These claims should be
corrected.
3
Textbook of Polymer Science, 3rd. edition, Billmeyer F. Jr., pp. 401 and 449, 1984
Claims 1, 3-8 , 10-16, 30-31 and 33-42 stand rejected under 35 U.S.C.§ 103 as2
unpatentable over Kampf in view of either the Textbook of Polymer Science or Polymer
Processes.
After careful consideration of the arguments of appellants and the examiner and of
the record before us, we find that we cannot sustain the examiner’s rejection. Accordingly,
we reverse. Our reasons follow.
The instant claims are directed to a coating composition that comprises , at a
minimum, four (4) ingredients, to wit, (1) an intrinsically electrically conductive polymer in an
amount effective to provide antistatic properties when coated onto the plastic film (5-90%
by weight to dry weight of coating composition), (2) a binder other than a conductive
polymer and additive in an amount effective to improve the adhesion of the coating to the
plastic film (1-90% by weight to dry weight of coating composition), (3) a solvent, and (4)
an additive having low adhesion to a metal layer in an amount effective
Appeal No. 96-0044
Application 08/014,136
4
to allow release of the metal layer from the plastic film (1-85% by weight to dry weight of
coating composition). The additive as defined by appellants in their specification includes
so-called release resins composed of fluorine-containing and/or fluorine-modified
polymers, silicone resins, silicone oils, polysiloxane and also conventional release agents
and lubricants, such as, for example, fatty acids and their metal salts, alkylamines, fatty
acid esters, fatty acid amides and sulfonates.
Kampf describes a coating composition comprising 10-100% by weight of an
intrinsically electrically conductive polymer, 0-90% by weight of a binder, a solvent and an
lubricant additive. The secondary references, the Textbook of Polymer Science and
Polymer Processes, describe known lubricants useful in plastics. It is the examiner’s
position that it would have been obvious to employ the lubricants of the secondary
references as the lubricant in Kampf. The examiner alleges that Kampf clearly teaches
percentages of lubricant additives which overlap with the instantly claimed percentages
(Answer, page 7, lines 7-9). However, the examiner fails to point out, and we fail to find,
where in Kampf this teaching can be found. Accordingly, we find no basis in fact for the
examiner’s allegation.
Appeal No. 96-0044
Application 08/014,136
5
Even if we were to assume for purposes of argument that one of ordinary skill in the
art would have found it obvious to add the known lubricants of the secondary references to
the coating composition of Kampf, contrary to the examiner’s allegation,
Kampf fails to disclose the amount of lubricant used. Kampf also does not explain the
purpose for the lubricant. In general, the concentration and choice of lubricants are
viewed as important because excessive lubricant can nullify the intended effects or
properties. Here, Kampf indicates that an object of his invention is to produce
electroconductive coatings which do not have certain known disadvantages, one
disadvantage being that metal coatings vapor deposited on plastic films often exhibit poor
coating adhesion. Hence on this record, since Kampf’s coating composition aids in the
adhesion of the metal layer to the plastic film base, we must presume that the amount used
is different from the amount used by appellants to “allow release of the metal layer from the
plastic film”. Moreover, on this record, the examiner has not presented any evidence to
establish that the amount of lubricant is a result effective
Appeal No. 96-0044
Application 08/014,136
6
variable with respect to adhesion. See In re Antonie, 559 F.2d 618, 620, 195 USPQ 6,
8-9 (CCPA 1977); cf. In re Yates, 663 F.2d 1054, 1056, 211 USPQ 1149, 1151 (CCPA
1981). The determination of a specific parameter can be an obvious expedient only when
the art appreciates that said parameter is a result effective variable.
On this record, the examiner’s rejection is reversed.
REVERSED
MARY F. DOWNEY )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
BRADLEY R. GARRIS )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
TERRY J. OWENS )
Administrative Patent Judge )
Appeal No. 96-0044
Application 08/014,136
7
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