Ex parte Hopfe

Board of Patent Appeals and Interferences

May 27, 1999

08106742 (B.P.A.I. May. 27, 1999)

Application for patent filed August 16, 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(2) is not binding precedent of the Board.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. 11
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte HAROLD H. HOPFE
__________
Appeal No. 95-4091
Application 08/106,7421
__________
ON BRIEF
__________
Before PAK, WARREN, and LIEBERMAN, Administrative Patent
Judges.
LIEBERMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the final
rejection of claims 6 and 7, which are all of the claims
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Application No. 08/106,742
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remaining in the application. Claims 1 through 5 and 8
through 9 have been canceled.
THE INVENTION
Appellant’s invention is directed to a method of
preparing a prelaminate for a safety glazing containing a
thermoplast sandwiched between layers of glass. Each side of
the thermoplast has a different surface pattern. One side has
a regular roughness pattern. The other side has a random
roughness pattern. The required process steps of the claimed
subject matter, air removal and heat, result in a partial
transfer of the regular roughness pattern to the other side of
the interlayer having a random roughness pattern. The
prelaminate formed is capable of transmitting at least 85% of
light incident thereon.
THE CLAIMS
Claim 6 is illustrative of appellant’s invention and is
reproduced below.
6. In the method of preparing a prelaminate for a safety
glazing by deairing the interface with glass on each rough-
surfaced side of a thermoplastic interlayer and heating the
interlayer and glass to collapse the rough surfaces, the
Appeal No. 95-4091
Application No. 08/106,742
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improvement facilitating deairing wherein a regular roughness
pattern on one side of the interlayer is partially transferred
to and imposed on a random roughness pattern on the other side
of the interlayer to provide deair paths which are less
obstructed than those of the unmodified random pattern,
thereby providing a prelaminate capable of transmitting at
least 85% of light incident thereon.
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Application No. 08/106,742
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THE REFERENCE OF RECORD
As evidence of obviousness, the examiner relies upon the
following reference of record.
Sato et al. (Sato) 4,452,840 Jun. 5, 1984
THE REJECTION
Claims 6 and 7 stand rejected under 35 U.S.C. § 103 as
unpatentable over Sato.
OPINION
As a preliminary matter, appellant has stated that claims
6 and 7 stand or fall together. See 37 CFR
§1.192(c)(5)(1993). See appellant’s Brief, page 4. Our
opinion will focus on a specific limitation of the claimed
subject matter shared by both claims and dispositive of this
appeal.
We have carefully considered all of the argument
advanced by the appellant and the examiner and agree with
appellant that the aforementioned rejection is not well
founded. Accordingly, we will not sustain the rejection.
The claimed subject matter before us is drawn to a
method which provides, “a prelaminate capable of transmitting
at least 85% of light incident thereon.” See claim 6. The
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Answer, page 3, relies upon and incorporates the rejection set
forth in the final rejection of September 7, 1994 (Paper No.
7). The examiner states therein, page 4, “[i]t is noted that
the property of transmittance depends on several material-
related (i.e., type of interlayer and thickness) and
operational parameters (i.e., the pressure used for deairing
and the vacuum, pressure and temperature used in bonding) in
the recited process which are well known in the art. For
example, the apparent 53%-72% transmittance shown by the Sato
et al reference is clearly dependent upon the temperature of
the laminate just before the pressure bonding step, See Table
I.” The examiner has restated his position in the Answer,
pages 6 and 7 that, “only the operating conditions (more
specifically, pressure and temperature) used during the
mating/lamination of the glass sheets with the plastic
interlayer will determine the percent light transmittance in
the resulting product.”
It is well settled that the initial burden of proof lies
with the examiner to establish a prima facie case of
obviousness under § 103. In re Oetiker, 977 F.2d 1443, 1447-
48, 24 USPQ2d 1443, 1446-47 (Fed. Cir. 1992). The fact that
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Application No. 08/106,742
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the prior art may be modified to reflect a particular feature
of the claimed subject matter, such as the 85% transmittance,
which modification is not made, does not make the claimed
subject matter obvious. The desirability of such modification
must be suggested by the prior art. See In re Fritch, 972
F.2d 1260, 1266, 23 USPQ2d 1780, 1783-1784 (Fed. Cir. 1992).
Specifically, Sato, in Table I, discloses transparency
percentages between 53% and 72%. There is no suggestion in
Sato of obtaining transparency in excess of 72% nor even the
desirability of achieving a transparency of greater than 72%.
Accordingly, even were the examiner correct in his analysis
that the conditions of Sato’s process could be modified to
obtain a transparency of 85% or more, the modification
nonetheless would have been unobvious as the prior art fails
to suggest the desirability of the modification.
Moreover, we disagree with the examiner’s analysis of the
operating conditions for Sato’s process and the conclusions
drawn therefrom. We recognize that in considering the
disclosure of Sato, the examiner may take into account not
only the specific teachings, but also inferences which one
skilled in the art would reasonably have been expected to draw
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therefrom. See In re Preda, 401 F.2d 825, 826, 159 USPQ 342,
344 (CCPA 1968). However, the examiner’s explanation that the
“percent light transmittance in the resulting prelaminate
would clearly depend upon the operating conditions of the
laminating step of the process,” is inadequate to reasonably
draw an inference or conclusion that Sato’s process could be
modified to achieve a transparency of 85%.
Our conclusion is supported by an analysis of Sato’s
operating conditions. Reference to Table I of Sato discloses
an inverse correlation between transparency and temperature
for Exp. I. and a direct correlation between temperature and
transparency for Exp. II. It is accordingly reasonable to
conclude that no inferences can be drawn between the operating
conditions of Sato’s method and transparency.
Based upon the above analysis, we have determined that
the examiner’s legal conclusion of obviousness is not
supported by the facts. “Where the legal conclusion [of
obviousness] is not supported by the facts it cannot stand.”
In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA
1967).
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DECISION
The rejection of claims 6 and 7 as unpatentable over
Sato under 35 U.S.C. § 103 is reversed.
The decision of the examiner is reversed.
REVERSED
Chung K. Pak )
Administrative Patent Judge )
)
)
)
Charles F. Warren ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Paul Lieberman )
Administrative Patent Judge )

tdc
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Application No. 08/106,742
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Michael J. Murphy
Monsanto Company
730 Worcester Street
Springfield, MA 01151