Ex Parte Eagles

Board of Patent Appeals and Interferences

Aug 23, 2011

10740126 (B.P.A.I. Aug. 23, 2011)

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.
10/740,126 12/17/2003 Dana Eagles 930007-2190 2092
20999 7590 08/23/2011
FROMMER LAWRENCE & HAUG
745 FIFTH AVENUE- 10TH FL.
NEW YORK, NY 10151
EXAMINER
CHOI, PETER Y
ART UNIT PAPER NUMBER
1786
MAIL DATE DELIVERY MODE
08/23/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte DANA EAGLES
________________

Appeal 2010-006665
Application 10/740,126
Technology Center 1700
________________

Before TERRY J. OWENS, PETER F. KRATZ, and
MARK NAGUMO, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-10 and 22-31. Claims 11-21, which are all of the other
pending claims, stand withdrawn from consideration by the Examiner. We
have jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellant claims an industrial fabric. Claim 1 is illustrative:
1. An industrial fabric comprised of:
Appeal 2010-006665
Application 10/740,126

2
a base structure having a glazed surface formed by fusion
or gap calendaring, said surface having distinctly different
wetability characteristics as compared to the structure prior to
fusion or gap calendaring;
at least one layer of a fluoropolymer material applied on
top of and in contact with said glazed surface,
wherein the layer of fluoropolymer material is heated
above its melting point and bonded to said glazed surface of
said base structure by fusion or gap calendaring, said bonding
resulting in a fused surface that results in localizing the
fluoropolymer.
The References
Quehl 4,165,404 Aug. 21, 1979
Lydon WO 99/61130 A1 Dec. 2, 1999
Kawano 6,149,702 Nov. 21, 2000
The Rejections
The claims stand rejected as follows: claims 1-10, 22, 24 and 28 under
35 U.S.C. § 102(b) or, in the alternative, under 35 U.S.C. § 103 over
Kawano, claims 23, 25-27 and 29-31 under 35 U.S.C. § 103 over Kawano,
claims 1-10, 22, 24 and 28 under 35 U.S.C. § 103 over Lydon in view of
Quehl, and claims 23, 25-27 and 29-31 under 35 U.S.C. § 103 over Lydon in
view of Quehl and Kawano.
OPINION
We reverse the rejections over Kawano and affirm the rejections over
Lydon in view of Quehl and over Lydon in view of Quehl and Kawano.
Rejections over Kawano
We need to address only the independent claims, i.e., claims 1 and 22.
Those claims require a base structure having a glazed surface formed by
fusion or gap calendaring, and at least one layer of a fluoropolymer material
Appeal 2010-006665
Application 10/740,126

3
applied on top of and in contact with the glazed surface by heating the
fluoropolymer material above its melting point and bonding it to the glazed
surface by fusion or gap calendaring, thereby localizing the fluoropolymer.1
Kawano discloses “a filtering medium for air filters, which comprises
a laminate of a porous PTFE [polytetrafluoroethylene] membrane and an
air-permeable supporting member, wherein at least one of the two exposed
surfaces comprises a surface of the air-permeable supporting member having
a maximum frictional resistance of 25 gf or less” (col. 1, ll. 60-65). In one
embodiment the laminate is formed by passing the porous PTFE membrane
and the air-permeable support member between opposed heating and
smoothing rolls (col. 5, ll. 49-57). In another embodiment the air-permeable
support member is smoothed using a calendar roll and then is laminated onto
the porous PTFE membrane (col. 6, ll. 12-16).
The Examiner argues that “Kawano teaches that the layer of
fluoropolymer material is heated above its melting point ([Kawano]
column 3 lines 43-50), and bonded to the smoothed surface of the base
structure by calendaring and/or heating and pressing ([Kawano] column 4
lines 14-53, column 5 line 40 to column 6 line 16)” (Ans. 19). The
Examiner argues that “the scope of the claimed invention does not require
the fluoropolymer material to be heated above its melting point and bonded
while heated above its melting point to the base structure” (Ans. 23-24).
“[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.” In re Translogic
Tech. Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007), quoting In re Hyatt, 211

1 The Appellant states that “the fused surface results in localizing the
anti-contaminant material [i.e., fluoropolymer material], thus minimizing the
amount used and thus its effect on the fabric’s permeability” (Spec. 11:1-3).
Appeal 2010-006665
Application 10/740,126

4
F.3d 1367, 1372 (Fed. Cir. 2000). The Appellant’s claims 1 and 22 require
that “the layer of fluoropolymer material is heated above its melting point
and bonded to said glazed surface of said base structure by fusion or gap
calendaring”. The Appellant’s Specification indicates that the heating of the
fluoropolymer material above its melting point is part of the bonding process
(Spec. 10:22-29).
Thus, the broadest reasonable interpretation of the Appellant’s claim
language “heated above its melting point and bonded” consistent with the
Specification is that the fluoropolymer material is heated above its melting
point during the bonding process. Consequently, the Examiner’s
interpretation of the Appellant’s claims as encompassing Kawano’s heating
of the porous PTFE membrane to its melting point or above while the porous
PTFE membrane is being prepared, not while it is being bonded to the
air-permeable support member (col. 3, ll. 46-50), is unreasonably broad.
Kawano discloses that “[i]n the heat lamination method, an
air-permeable supporting member such as a non-woven fabric is partly
molten by heating and then laminated” (col. 4, ll. 39-41). Hence, it is the
air-permeable supporting member, not the porous PTFE membrane, that is
partly molten during bonding. As pointed out by the Appellant, Kawano
does not disclose a heating roll temperature above 160 ºC, which is below
the 327 ºC melting point of PTFE (Br. 14).2
The patentability of a claim in product-by-process form is determined
based on the product itself, not on the method of making it. See In re
Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985) (“If the product in a product-by-

2 Citations herein are to the combined Brief/Reply Brief filed March 24,
2010.
Appeal 2010-006665
Application 10/740,126

5
process claim is the same as or obvious from a product of the prior art, the
claim is unpatentable even though the prior art product was made by a
different process”). The Examiner has not established that the Appellant’s
laminate formed by heating a fluoropolymer material above its melting point
and bonding it to a base structure is the same as or obvious from Kawano’s
laminate made by bonding a fluoropolymer material to a partly molten
air-permeable support member (col. 4, ll. 39-41).
Accordingly, we do not sustain the rejections over Kawano.
Rejections over Lydon in view of Quehl, and over
Lydon in view of Quehl and Kawano
The Appellant states that the dependent claims stand or fall with
independent claims 1 and 22 (Br. 44), and the Appellant argues claims 1
and 22 together (Br. 22-30, 41-44). We therefore limit our discussion to one
of claims 1 and 22, i.e., claim 1. See 35 U.S.C. § 41.37(c)(1)(vii) (2007).
Lydon discloses a phase separation member, which can be a
papermaking fabric, comprising a porous substrate at least partially and
preferably completely impregnated with a coagulated polymer material and
coated on both of its major surfaces with the coagulated polymer material,
and a fluoropolymer layer applied to an outer surface of the coagulated
polymer material and remaining predominately at that outer surface (p. 1,
ll. 1-6; p. 2, ll. 3-9; p. 3, ll. 4-7). “Consolidation of the fluoropolymer
coating can be improved by calendaring the coated fabric to consolidate the
structure, thereby improving retentivity (i.e. capture of filtrate particles) and
smoothness (for better cake resistance)” (p. 5, ll. 3-6).
Quehl discloses a laminate, which can be a conveyor belt, made by
1) placing between a fabric and a thick sheet of fluorocarbon copolymer a
Appeal 2010-006665
Application 10/740,126

6
thin interlayer sheet of fluorocarbon copolymer having a specific melt
viscosity which is lower than that of the thick sheet of fluorocarbon
copolymer and is sufficiently low to enable the fluorocarbon copolymer to
wet and penetrate the fabric at fabrication temperatures, and 2) integrally
bonding the laminate using heat and pressure (col. 1, ll. 55-63; col. 7,
ll. 25-30). The thick sheet and interlayer sheet fluorocarbon copolymers can
be the same copolymer with different specific melt viscosities due to the use
of different amounts of initiator during their copolymerizations (col. 2,
ll. 34-65). In one embodiment the fabric and interlayer sheet are
prelaminated using heat and pressure and then laminated to the thick sheet
using heat and pressure (col. 4, l. 66 – col. 5, l. 2). “The temperature used
during lamination will usually be at least as high as the crystalline melting
temperature of the fluorocarbon copolymer of the thick sheet and will further
depend on the pressure and dwell time of the heat and pressure operation”
(col. 5, ll. 7-11). The interlayer sheet penetrates the fabric sufficiently to
provide a mechanical bond between the fabric and the interlayer sheet but
not enough to deprive the laminate of exposed fabric loops for anchoring the
laminate to a castable material backing (col. 5, ll. 28-46). “The bond
between the two sheets of fluorocarbon copolymer, which may have the
same melting point but have different melt viscosities, is a fused bond”
(col. 5, ll. 48-51).
The Appellant argues that “neither Lydon nor Quehl, alone or in
combination, disclose a glazed surface” (Br. 27). The Appellant argues that
Quehl’s prelamination apparently does not result in a glaze (Br. 29).
Quehl laminates the interlayer sheet and the fabric using heat and
pressure, which appear to be what provides the glaze resulting from the
Appeal 2010-006665
Application 10/740,126

7
Appellant’s fusion or gap calendaring. Hence, it reasonably appears that
Quehl’s prelaminate has a glazed surface as that term is used by the
Appellant. “[W]hen the PTO shows sound basis for believing that the
products of the applicant and the prior art are the same, the applicant has the
burden of showing that they are not.” In re Spada, 911 F.2d 705, 708 (Fed.
Cir. 1990). The Appellant has not provided that showing.
The Appellant argues that “Quehl’s fluoropolymers are not fused”
(Br. 29).
Quehl discloses that “[t]he bond between the two sheets of
fluorocarbon copolymer, which may have the same melting point but have
different melt viscosities, is a fused bond” (col. 5, ll. 48-51).
The Appellant argues that “Quehl actively discourages bonding such
that the bonding results in a fused surface that results in locating [sic,
localizing] the fluoropolymer, as Quehl states ‘when the copolymer of the
thick sheet is FEP, the temperature . . . can be at any temperature high
enough so that the interlayer copolymer can flow into the fabric.’ Quehl,
col. 5, lines 11-16, emphasis added” (Br. 29).
Quehl discloses that the fabric penetrates into the interlayer sheet at
least sufficiently to form a mechanical bond between them (col. 5, ll. 28-31).
Thus, the fabric can penetrate partially into the interlayer sheet such that a
portion of the interlayer sheet covers the fabric and, as indicated above,
reasonably appears to have a glazed surface due to the heat and pressure to
which the interlayer sheet is exposed during prelamination (col. 4, l. 66 –
col. 5, l. 2). Hence, it appears that like the Appellant’s glazed surface,
Quehl’s glazed surface localizes the thick fluoropolymer layer which is
applied and fusion bonded to that surface (col. 5, ll. 48-51).
Appeal 2010-006665
Application 10/740,126

8
The Appellant argues (Br. 28):
On one hand, the Examiner asserts that Lydon teaches that the
polymer penetrates the substrate entering the voids or
interstices between the fibers and, on the other hand, the
Examiner contends that it would be obvious to provide a glazed
surface on Lydon that localizes the polymer in view of Quehl.
The very purpose of the glazed surface according to the claims
is to localize, thus prevent penetration, of the fluoric polymer.
Lydon’s polymer that enters the porous substrate’s void spaces is the
coagulated polymer, not the fluoropolymer (p. 2, ll. 4-9; p. 3, ll. 4-7). The
fluoropolymer remains predominately at the surface of the coagulated
polymer (p. 2, ll. 8-9), i.e., it is localized at the coagulated polymer surface.
Thus, any localizing of the fluoropolymer provided by the apparently glazed
surface of Quehl’s prelaminate would have been desired by Lydon.
Moreover, Quehl discloses, in accord with the Appellant’s claims, that the
fluorocarbon copolymer is heated above its melting point and bonded using
pressure to the prelaminate’s apparently glazed surface (col. 4, l. 66 – col. 5,
l. 2; col. 5, ll. 7-11).
The Appellant argues that “an ordinarily skilled artisan would have no
reason whatsoever to prelaminate in Lydon’s disclosure because it would
add an unnecessary additional step” (Br. 30).
Establishing a prima facie case of obviousness of an invention
comprising a combination of known elements requires “an apparent reason
to combine the known elements in the fashion claimed.” KSR Int’l. Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007). The Examiner has found (Ans. 32)
that an apparent reason for using Quehl’s prelamination to make Lydon’s
laminate would have been to obtain the increased level of adhesion between
the fluoropolymer and the fabric disclosed by Quehl (abstract), and the
Appeal 2010-006665
Application 10/740,126

9
Appellant does not argue that the Examiner’s finding is wrong (Br. 42).
Because the Examiner’s finding is reasonable and the Appellant has not
challenged it, we accept it as fact. See In re Kunzmann, 326 F.2d 424, 425
n.3 (CCPA 1964).
The Appellant argues that “heating a layer of fluoropolymer material
above its melting point and bonding it to a glazed surface resulting in a fused
surface that results in localizing the fluoropolymer is neither taught nor
expected” (Br. 30).
A showing of unexpected results must not merely show an
unrecognized property but, rather, must show an unexpected difference in a
property between the claimed invention and the prior art. See In re
Freeman, 474 F.2d 1318, 1324 (CCPA 1973). The Appellant has not
provided a side-by-side comparison of the claimed invention with the closest
prior art which is commensurate in scope with the claims, and explained
why the results would have been unexpected by one of ordinary skill in the
art. See In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991); In
re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); In re Grasselli, 713 F.2d
731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA
1980); Freeman, 474 F.2d at 1324; In re Klosak, 455 F.2d 1077, 1080
(CCPA 1972).
Thus, we are not persuaded of reversible error in the Examiner’s
rejections over Lydon in view of Quehl and over Lydon in view of Quehl
and Kawano.
DECISION/ORDER
The rejections of claims 1-10, 22, 24 and 28 under 35 U.S.C. § 102(b)
over Kawano and claims 1-10 and 22-31 under 35 U.S.C. § 103 over
Appeal 2010-006665
Application 10/740,126

10
Kawano are reversed. The rejections of claims 1-10, 22, 24 and 28 under
35 U.S.C. § 103 over Lydon in view of Quehl and claims 23, 25-27 and 29-
31 under 35 U.S.C. § 103 over Lydon in view of Quehl and Kawano are
affirmed.
It is ordered that the Examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED

bar