Ex parte Brinley

Board of Patent Appeals and Interferences

Dec 20, 1999

08353916 (B.P.A.I. Dec. 20, 1999)

Application for patent filed December 12, 1994. 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for publication in a law journal and (2) is not binding precedent of the Board.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. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte CHARLES E. BRINLEY
____________
Appeal No. 1997-0533
Application No. 08/353,9161
____________
ON BRIEF
____________
Before JOHN D. SMITH, PAK, and WALTZ, Administrative Patent
Judges.
WALTZ, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the
examiner’s final rejection of claims 1 through 20, which are
all of the claims in this application.
Appeal No. 1997-0533
Application No. 08/353,916
All reference to the Brief is from the substitute Brief2
dated July 12, 1996, Paper No. 10.
2
According to appellant, the invention is directed to a
process for preparing an embossed metal foil laminate which
may be used as an automotive or architectural decorative panel
(Brief, page 3). Claim 1 is illustrative of the subject2
matter on appeal and is reproduced below:
1. A process for preparing an embossed metal foil laminate,
comprising:
providing a web of paper;
providing a metal foil;
extrusion coating a layer of molten resin onto the web of
paper;
contacting the metal foil to the layer of molten resin,
to form a layered structure comprising consecutively, the web
of paper, the layer of molten resin, and the metal foil, and
passing the layered structure between a nip roll and an
engraved chill roll, to laminate the layered structure,
conduct heat from the molten resin quickly through the metal
foil to the chill roll to solidify the resin, and emboss the
metal foil.
The examiner has relied upon the following references as
evidence of obviousness:
Anderson 3,075,864 Jan. 29,
1963
Appeal No. 1997-0533
Application No. 08/353,916
3
Andersson 4,657,614 Apr. 14,
1987
Brinley 5,098,497 Mar. 24,
1992
Webster’s New Collegiate Dictionary, p. 577, G. & C. Merriam
Co., 1973.
Claims 1 through 20 stand rejected under 35 U.S.C. § 103
as unpatentable over Anderson in view of Andersson and Brinley
or alternatively under § 103 as unpatentable over Anderson,
Andersson and Brinley (Answer, page 3). We reverse this
rejection for reasons which follow.
OPINION
The process of claim 1 on appeal recites, inter alia,
contacting metal foil to a layer of molten resin to form a
layered structure of paper, molten resin, and metal foil, and
then passing the layered structure between a nip roll and an
engraved chill roll to laminate the layered structure,
solidify the resin, and emboss the metal foil.
The examiner finds that Anderson discloses a laminate
comprising a metal foil bonded by an adhesive to a paper base
where the metal foil is embossed after lamination and the
adhesive resin is applied by coating (Answer, paragraph
Appeal No. 1997-0533
Application No. 08/353,916
In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 14423
(Fed. Cir. 1991).
4
bridging pages 3-4). The examiner further finds that it is
conventional in the art to extrude a tie layer to bond a metal
foil to a paper web, citing Andersson as support for this
conventional bonding process step (Answer, page 4). Finally,
the examiner finds that Brinley teaches embossing and
laminating a polymer web to a paper film simultaneously (Id.).
Accordingly, the examiner concludes that it would have been
obvious “to perform the laminating and embossing steps
simultaneously as suggested by Brinley to eliminate the
separate lamination step in Anderson” as well as use the
conventional extrusion method to tie layers as shown by
Andersson (Id.).
Our reviewing court has stated the proper analysis under
§ 103 as follows:3
Where claimed subject matter has been rejected as
obvious in view of a combination of prior art
references, a proper analysis under § 103 requires,
inter alia, consideration of two factors: (1)
whether the prior art would have suggested to those of
ordinary skill in the art that they should make the
claimed composition or device, or carry out the claimed
process; and (2) whether the prior art would
also have revealed that in so making or carrying out,
Appeal No. 1997-0533
Application No. 08/353,916
The examiner has applied Webster’s New Collegiate4
Dictionary, p. 577, to show the definition of "imprint"
includes any mark or depression made by pressure and thus is
equivalent to the claimed "embossing" step (Answer, page 5).
5
those of ordinary skill would have a reasonable
expectation of success. [Citation omitted].
Accordingly, our analysis of the examiner’s rejection under §
103 must first consider whether the prior art would have
suggested to one of ordinary skill in the art that the claimed
process should be carried out.
As noted by the examiner, Anderson teaches
that the metal foil may be “imprinted” after its lamination
(Answer, sentence bridging pages 3-4, citing Anderson, column
3, lines 33-35). The examiner applies Brinley for the4
teaching of embossing and laminating the layers simultaneously
(Answer, page 4). However, we do not agree with the
examiner’s analysis of these references. Anderson teaches
that the backing layer 10 (which can be a metal foil or foil
laminated to a paper backing) must be impervious and smooth
(column 1, lines 71-72; column 2, lines 71-72; column 3, lines
5-7). Anderson also teaches that the applied polyethylene
film should be embossed by contact with the scored or
Appeal No. 1997-0533
Application No. 08/353,916
6
patterned surface of the chilled roller 19 with the exposed
surface of the polyethylene having a smooth configuration
(column 4, lines 31-43). In the process disclosed by
Anderson, any metal foil used never comes in contact with the
surface of the chilled roller 19 (see Figure 3; column 3,
lines 40-61).
Brinley is directed to the same process as the claimed
subject matter on appeal except that the polymer film 5 of
Brinley is embossed while the claimed process embosses a metal
foil (compare Figure 1 of Brinley with the Figure of this
application). The examiner has not pointed to any disclosure
or suggestion of a metal foil in Brinley. The process of
Brinley forms sequential layers of paper, molten resin, and
polymeric film, where the heat of the molten resin is
transferred to the outer polymeric film to raise the film
above its plastic set temperature, i.e., the temperature above
which an applied stress will cause permanent deformation of
the film. Therefore the exposed surface of the polymeric film
is able to assume the pattern of the engraved chill roll 7
(column 4, lines 16-27).
Appeal No. 1997-0533
Application No. 08/353,916
7
Brinley is directed to embossing and laminating layers
simultaneously so that the outermost polymeric film can reach
its plastic set temperature and be easily and permanently
deformed by the pattern on the chill roll. The examiner has
not presented any evidence or reasoning as to why one of
ordinary skill in the art would have expected the metal foil
of Anderson to behave in a similar manner to the polymeric
films of Brinley. Furthermore, the examiner has not presented
any reasoning as to why one of ordinary skill in the art would
have modified the method of Anderson by having the metal foil
deformed by any engraved chill roll when Anderson does not
show or suggest that the metal foil contacts the chill roll.
The examiner also has not explained or presented reasons why
Anderson teaches embossing the polyethylene layer by contact
with a patterned chill roll but does not teach any process for
“imprinting” the metal foil. Accordingly, the examiner has
not established that the applied prior art would have
suggested to one of ordinary skill in the art that the claimed
process should be carried out. Vaeck, 947 F.2d at 493, 20
USPQ2d at 1442.
Appeal No. 1997-0533
Application No. 08/353,916
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For the foregoing reasons, we determine that the examiner
has failed to establish a prima facie case of obviousness in
view of the reference evidence on this record. Therefore, the
examiner’s rejection of claims 1 through 20 under 35 U.S.C. §
103 over Anderson in view of Andersson and Brinley is
reversed.
The decision of the examiner is reversed.
REVERSED
JOHN D. SMITH )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHUNG K. PAK ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
THOMAS A. WALTZ )
Administrative Patent Judge )
lp
Appeal No. 1997-0533
Application No. 08/353,916
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DONALD R. FRASER
132C WEST SECOND STREET
PERRYSBURG, OH 43551-1401
Leticia
Appeal No. 97-0533
Application No. 08/353,916
APJ WALTZ
APJ JOHN D. SMITH
APJ PAK
DECISION: REVERSED
Send Reference(s): Yes No
or Translation (s)
Panel Change: Yes No
Index Sheet-2901 Rejection(s):
Prepared: December 4, 2000
Draft Final
3 MEM. CONF. Y N
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PALM /ACTS 2/BOOK
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