Ex Parte Hernandez

Board of Patent Appeals and Interferences

Jul 25, 2007

10686069 (B.P.A.I. Jul. 25, 2007)

The opinion in support of the decision being entered today is
not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ISMAEL A. HERNANDEZ
____________

Appeal 2007-1381
Application 10/686,069
Technology Center 1700
____________

Decided: July 25, 2007
____________

Before BRADLEY R. GARRIS, CHARLES F. WARREN, and
CATHERINE Q. TIMM, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1, 3-8, and 10-18. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

Appeal 2007-1381
Application 10/686,069

I. BACKGROUND
The invention relates to a glass forming tube. Claim 5 is illustrative
of the subject matter on appeal:
5. A glass forming tube about which newly formed and coated glass
fiber is wound to form a cake of glass fiber, the forming tube comprising:

a plurality of paperboard plies spirally wound one upon another about
an axis of the forming tube and adhered together to form a tubular body
wall, the paperboard plies being free of silicone coating, wherein at least an
outermost one of the plies comprises paperboard treated with a sizing
compound so as to render the paperboard substantially impervious to liquid
coating composition applied to the glass fiber but pervious to vapors
generated during curing and drying of a cake of glass fiber.

The Examiner relies on the following prior art references to show
unpatentability:
McClellan US 4,026,690 May 31, 1977
Von Hoessle US 5,710,853 Jan. 20, 1998
Pauley US 6,165,321 Dec. 26, 2000

Specifically, the Examiner rejects claim 5 under 35 U.S.C. § 103(a) as
unpatentable over McClellan in view of Von Hoessle and Pauley.

II. DISCUSSION
A. Issue
The issue before us is: Has the Examiner properly established a prima
facie case of obviousness within the meaning of 35 U.S.C § 103(a)?

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B. Facts
The following facts are supported by a preponderance of the evidence:
1. McClellan is directed to a forming tube for winding glass fibers
that, like the claimed tube, is formed from spirally wound
paperboard plies (McClellan, col. 2, ll. 23-36).
2. The process of winding involves winding glass fibers treated
with binder onto the forming tube, and drying the binder. After
drying, the forming tube is removed from the glass fiber
winding by partially collapsing the tube and extracting it
(McClellan, col. 3, l. 3-col. 4, l. 1).
3. The outer ply of McClellan’s tube is treated with a conventional
release agent to facilitate release of the tube from the glass fiber
winding (McClellan, col. 2, ll. 42-47). The only release agent
taught in McClellan as conventional for this use is silicone
release agent (McClellan, col. 1, ll. 31-35; col. 5, ll. 36-39).
4. McClellan is silent with respect to the use of a sizing agent or
any other agent that provides liquid impermeability but vapor
permeability to the paperboard of the forming tube.
5. Von Hoessle is directed to a coil form. This coil form has a coil
support with up to 100 km of a fiber-optic waveguide wound
upon it. In use, the coil form is carried on board an airplane or
missile and the fiber-optic wave guide is unwound from the coil
support (Von Hoessle, col. 1, ll. 10-20). The coil support is not
removed from the winding by collapsing it as in the McClellan
process.
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Application 10/686,069

6. During the winding process of Von Hoessle, the fiber-optic
waveguide is provided with a binding agent. The binding agent
contains a volatile solvent that is removed during drying (Von
Hoessle, col. 1, ll. 22-26).
7. The coil support of Von Hoessle is made from a porous
ceramic. The pores allow diffusion of the solvent through the
support during drying (Von Hoessle, col. 2, ll. 17-31).
8. Pauley is directed to a sizing agent for use on various substrates
including paperboard (Abstract). The sizing agent imparts
water resistance, but allows the substrate to breathe (Pauley,
col. 1, ll. 7-9; col. 4, ll. 23-25 and 31-36; col. 6, ll. 40-43).
9. The substrates treated with the sizing agent of Pauley are
imparted with stain resistance to aqueous fluids (Pauley, col. 6,
ll. 54-56).
C. Principles of Law
The examiner bears the initial burden of presenting a prima facie case
of obviousness. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992). In order to establish a prima facie case of obviousness, the
examiner must show that each and every limitation of the claim is described
or suggested by the prior art or would have been obvious based on the
knowledge of those of ordinary skill in the art. In re Fine, 837 F.2d 1071,
1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988).
D. Analysis
In the present case, the Examiner has not established that it would
have been obvious to one of ordinary skill in the art of making glass forming
tubes to eliminate the silicone release coating conventionally used on the
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forming tube and to add a sizing compound that provides the claimed
impermeability to the liquid coating composition but remains pervious to
vapors. This is because McClellan specifically requires the addition of a
release agent, silicone being the only such agent disclosed (FF 3), and there
is no suggestion in the art that a sizing agent such as that disclosed in Pauley
would provide the required release property.
The Examiner relies upon the disclosure in Pauley that the sizing
agent imparts stain resistance to aqueous fluids as a basis for concluding the
sizing agent would serve as a release agent because staining is a type of
bonding (Answer 6). The Examiner states that:
As stated by applicant at page 2, lines 1-5 of the instant
specification, it is conventional in the art of paper tubes used in
glass fiber production, to coat the paper tubes with silicone to
render them impervious to the liquid of the aqueous binder that
coats the glass fiber during production. The conventional
silicone coatings thus serve the purpose of preventing
penetration of the aqueous coating into the paper to preserve
strength as admitted by appellant and also the purpose of
preventing bonding of the aqueous coating with the paper tube
to allow release and removal of the coated glass fiber from the
paper tube as taught by McClellan.

The position of the examiner is that the size of Pauley et
al. would serve similar dual purposes since it excludes wetting
of the paperboard as well as resists staining, which is a type of
bonding. A prevention of the formation of any bond between
the size and paper of the tube would aide in release and removal
of the dried glass fiber. Thus use of the size of Pauley et al. as
an agent to resist water but still allow vapor permeability,
instead of a silicone coating that blocks both, would not destroy
the function of release of the glass fiber from the paper tube of
McClelland [sic, McClellan].

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We cannot agree that Pauley’s disclosure that the sizing agent imparts
stain resistance (FF 8) shows that one of ordinary skill in the art would have
had a reasonable expectation that the sizing agent would have the necessary
release properties when used on the forming tube of McClellan. The
function of stain resistance is not sufficiently analogous to the function of
releasing coated fibers from paperboard to support the Examiner’s
determination.
Von Hoessle does not remedy the deficiency in the rejection. While
Von Hoessle indicates that, in the art of making coil forms including coil
supports wound with very long windings of optical fiber waveguides, the
problem of trapping of the solvent and uneven drying near the coil support
was a known problem, this problem was addressed in a different way than
Appellant addressed it. Von Hoessle addresses the problem by using a
porous ceramic support. The Examiner does not provide adequate evidence
that using a sizing agent impermeable to the liquid solvent, but permeable to
the liquid vapor of the binder, as claimed by Appellant, was a known way of
solving the uneven drying problem.

III. CONCLUSION
We conclude that the Examiner has not properly established a prima
facie case of obviousness within the meaning of 35 U.S.C § 103(a).

IV. DECISION
With respect to the decision of the Examiner rejecting claim 5 as
unpatentable under 35 U.S.C. § 103(a), we reverse.
REVERSED
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