Ex Parte Hoshino

Board of Patent Appeals and Interferences

Nov 21, 2011

10558038 (B.P.A.I. Nov. 21, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SHIGEO HOSHINO
____________

Appeal 2010-005970
Application 10/558,038
Technology Center 1700
____________

Before ADRIENE LEPIANE HANLON, CHUNG K. PAK, and
CATHERINE Q. TIMM, Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1 through 8, all of the claims pending in the above-
identified application.1 We have jurisdiction under 35 U.S.C. § 6.
STATEMENT OF THE CASE
The subject matter on appeal is directed to “a hot-press sheet used as a
release sheet or a cushion material when an object product is hot pressed or
thermally compression bonded, in a process of manufacturing a precision

1 See Appeal Brief (“App. Br.”) filed October 6, 2009, 3; and Examiner’s
Answer (“Ans.”) filed January 4, 2010, 2.

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equipment component having a laminated structure (referred to as the
laminated board hereinafter) such as a printed circuit board…an IC card, a
ceramic laminated board, a liquid crystal display panel and the like” (Spec.
1, ll. 5-13) (emphasis added). The purpose of the appealed subject matter is
to provide a uniformly thick release or heat-resistant coating layer (i.e.,
without “dried, thin parts called sinks or dents,”) on the surface of a sheet-
shaped base material (Spec. 2, l. 12 to 3, l. 26). According to page 5, line 30
to page 7, line 3 of the Specification, the sheet-shaped base material is
“preferably” made from “a material selected from woven fabric, non-woven
fabric, and paper comprising heat-resistant organic fibers or inorganic fibers
on its surface.” (See also dependent claim 7 reciting the preferred base
material.) Details of the appealed subject matter are recited in representative
claims 1, 4, and 72 reproduced from the Claims Appendix to the Appeal
Brief as shown below:
1. A hot-press sheet comprising a sheet-shaped base material
and a release coating film formed on said base material, wherein said
coating film comprises a resin composition in which 5 to 55% by
weight of organic powder and 5 to 55% by weight of inorganic
powder are mixed in 100% by weight of the resin composition so that
the mixture of the organic powder and the inorganic powder becomes
30 to 60% by weight in total.
4. The hot-press sheet according to claim 1, wherein said base
material has irregularities over an entire surface and the irregularities
appear on a surface of said coating film.

2 Appellant has separately argued the patentability of three groups of claims,
namely claims 1-3, claims 4-6, and claims 7-8, respectively. (See App. Br.
5-20.) Therefore, for purposes of this appeal, we select claims 1, 4, and 7
and decide the propriety of the Examiner’s rejections based on these claims
alone consistent with 37 C.F.R. § 41.37(c)(1)(vii) (2007).

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7. The hot-press sheet according to claim 1, wherein base
material includes a woven fabric, a non-woven, a paper, or a
combination thereof.

As evidence of unpatentability of the claimed subject matter, the
Examiner relies on the following prior art references at page 2 of the
Answer3:
Nakamoto CN 1135379 Nov. 13, 19964
Yoshida JP 09-182998 A Jul. 15, 1997
Yamasaki US 2003/0143407 A1 Jul. 31, 2003

Appellant seeks review of the following grounds of rejection set forth
by the Examiner in the Answer:
1. Claims 1 through 3 under 35 U.S.C. § 103(a) as unpatentable
over Nakamoto;
2. Claims 4 through 6 under 35 U.S.C. § 103(a) as unpatentable
over Nakamoto in view of Yamasaki; and
3. Claims 7 and 8 under 35 U.S.C. § 103(a) as unpatentable over
Nakamoto in view of Yoshida (App. Br. 5).
RELEVANT FACTUAL FINDINGS, PRINCIPLES OF LAW, ISSUE,
ANALYSIS, AND CONCLUSION
I. CLAIMS 1-3
As correctly found by the Examiner at page 3 of the Answer,
Nakamoto teaches coating a resin film on the surface of a metal plate, such
as a steel sheet, corresponding to the claimed based material, wherein the

3 Our reference to the foreign patent publications is to the corresponding
English translations of record.
4 This publication also corresponds to Japanese Patent Publication 08-
207199 issued to Nakamoto on August 13, 1996 referred to by the Examiner
at page 2 of the Answer.
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resin film contains 5 to 30 weight percent of silica particles (inorganic
powder) and 0.5 to 20 weight percent of polyethylene wax particles (organic
particles). (Compare Nakamoto, CN1135379, abstract and paras. 0001,
0013, 0041, and 0046, and Nakamoto, JP 08-207199, abstract and paras.
001, 0013, 0041 and 0046 with Spec. 3-4.) Consistent with this finding,
Nakamoto also exemplifies forming a resin coated steel sheet with a resin
coating composition containing 35 weight percent of silica particles and 5
weight percent of polyethylene wax particles or containing 10 weight
percent of silica particles and 25 weight percent of polyethylene wax
particles. (See Nakamoto, CN1135379, paras. 0067, 0068, 0073, and 0074
and Nakamoto, JP 08-207199, paras. 0067, 0068, 0073, and 0074.)
Thus, the dispositive question raised by both the Examiner and
Appellant is: Has the Examiner erred in finding that the resin coated steel
sheet taught by Nakamoto constitutes the claimed hot-press sheet? On this
record, we answer this question in the negative.
As is apparent from the Appeal Brief and the Reply Brief, Appellant
does not argue that the resin coated steel sheet taught by Nakamoto is not
capable of being hot-pressed or thermally compression bonded. Nor does
Appellant argue that the resin coated steel sheet taught by Nakamoto is not
suitable for use in a process of manufacturing precision equipment
components having laminated structures, such as the computer or audio
equipment components having laminated structures (bottom plates)
described at paragraph 0002 of Nakamoto. (See App. Br. and Reply Br. in
their entirety.) Although Appellant takes the position that the term “hot-
press sheet” in the preamble of claim 1 requires a base material to be a
cushion material, the Specification does not support such position.
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(Compare App. Br. 7-8 with Spec. in its entirety.) In particular, the
Specification indicates that the claimed “hot-press sheet used as a release
sheet or a cushion material” is capable of being “hot pressed or thermally
compression bonded in a process of manufacturing a precision equipment
component having a laminated structure” (emphasis added) (Spec. 1, ll. 5-
10). The Specification then describes “a conventional hot-press release
sheet” as “a sheet formed of a single synthetic resin film or a sheet formed of
composition material comprising a sheet-shaped base material and a
release coating film formed on the base material” (emphasis added) (Spec.
2, ll. 12-15). The sheet-shaped base material is “preferably” made from “a
material selected from woven fabric, non-woven fabric, and paper
comprising heat-resistant organic fibers or inorganic fibers on its surface.”
(See Spec. 1, ll. 5-10 and 5, l. 30 to 7, l. 3.) The Specification further
exemplifies using a glass cloth (not identified as a cushion material) as the
base material and describes a cushion material as an optional component of
the hot-press sheet. (See Spec. 1, ll. 5-10 and 21-23; 2, ll.12-20 and 34-35;
3, ll. 1-20; 5, ll. 29-35, 6, l. 32 to 7, l. 7, 9, ll. 27-35 and Figs. 1, 2, 3, and 9.)
Nowhere does the Specification limit the sheet-shaped base material to a
cushion material or limit the hot-press sheet to a cushion material as
indicated supra. As our reviewing court stated in In re Morris, 127 F.3d
1048, 1056 (Fed. Cir. 1997), “[i]t is the applicants’ burden to precisely
define the invention, not the PTO’s,” to distinguish the claimed invention
from that disclosed in a prior art reference. Nothing in the Specification
shows that Appellant has precisely defined the term “hot-press sheet” in the
preamble of claim 1 to include a cushion material as alleged or any other
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structure that distinguishes the claimed hot-press sheet from the resin coated
steel sheet taught by Nakamoto.
Under these circumstances, the Examiner has correctly found that the
resin coated steel sheet taught by Nakamoto constitutes the claimed hot-
press sheet within the meaning of 35 U.S.C. § 103(a).
II. CLAIMS 4-6:
In addition to the arguments addressed above, Appellant contends that
there is no apparent reason to combine the teachings of Nakamoto and
Yamasaki since they are drawn to different purpose surface resin coating
layers, i.e., the corrosion resistant resin layer taught by Nakamoto versus the
hydrophilic resin layers taught by Yamasaki (App. Br. 17). On the other
hand, the Examiner states that one of ordinary skill in the art would have
been led to provide desired surface roughness, such as that recited in claim
4, to both the base and coating layers taught by Nakamoto, with a reasonable
expectation of successfully improving their adhesion properties (Ans. 4 and
11).
Thus, the dispositive question is: Has the Examiner erred in
determining that one of ordinary skill in the art would have been led to
provide surface roughness, such as that recited in claim 4, to both the base
and coating layers taught by Nakamoto, with a reasonable expectation of
successfully improving their adhesion properties, within the meaning of 35
U.S.C. § 103(a)? On this record, we answer this question in the negative.
Although both Nakamoto and Yamasaki are directed to forming
different purpose resin layers as indicated by Appellant, the fact remains that
there is no dispute that Yamasaki teaches providing a substrate and/or a
coating film with surface roughness and irregularities to enhance their
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adhesion properties. (Compare Ans. 4 and 11 with App. Br. 5-20 and Reply
Br. 1-6.) Nor is there any dispute that Nakamoto is interested in improving
adhesion properties. (Compare Ans. 11 with App. Br. 5-20 and Reply Br. 1-
6.) Moreover, Appellant has not challenged the Examiner’s official notice
that “[i]t is very well known in the art that providing a surface roughness on
the base or substrate will make the coating easily adhere to the surface.”
(Compare Ans. 11 with App. Br. 5-20 and Reply Br. 1-6.)
Under the above circumstances, the Examiner has not erred in
determining that one of ordinary skill in the art would have been led to
provide surface roughness, such as that recited in claim 4, to both the base
and coating layers taught by Nakamoto, with a reasonable expectation of
successfully improving their adhesion properties, within the meaning of 35
U.S.C. § 103(a).
III. CLAIMS 7 AND 8
Appellant contends that there is no apparent reason to employ the
woven fabric, non-woven fabric, or paper taught by Yoshida, in lieu of the
metal plate or sheet taught by Nakamoto (App. Br. 18-20). On the other
hand, the Examiner contends that the collective teachings of Nakamoto and
Yoshida would have suggested substituting the metal plate (sheet) of the
resin coated metal plate taught by Nakamoto with the fabric and/or paper
taught by Yoshida (Ans. 12).
Thus, the dispositive question is: Has the Examiner erred in
determining that the collective teachings of Nakamoto and Yoshida would
have suggested substituting the metal plate (sheet) of the resin coated metal
plate taught by Nakamoto with the fabric and/or paper taught by Yoshida
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within the meaning of 35 U.S.C. § 103(a)? On this record, we answer this
question in the affirmative.
As correctly stated by Appellant at pages 18 through 20 of the Appeal
Brief, the purpose of Nakamoto’s invention is to improve a metal plate, such
as a steel sheet, used in a home appliance, building materials, and a bottom
plate of audio, computer, and microwave oven equipment (para. 0001 and
0002). In that regard, Nakamoto teaches that its metal plate can be improved
by employing a particular resin coating (paras. 0001-0013). The particular
resin coating is said to impart certain desired properties on the metal plate
such that the metal plate can be used in various applications (id). It follows
that substituting such metal plate taught by Nakamoto with the fabric and/or
a paper taught by Yoshida as proposed by the Examiner would destroy the
invention on which Nakamoto is based. Ex parte Hartman, 186 USPQ 366,
367 (Bd. App. 1974) (“Reynold cannot properly be combined with Graham
et al relative to the employment of continuous monofilaments since to do so
would destroy that on which the invention of Graham et al is based, namely,
the use of very short fibers.”); see also In re Fritch, 972 F.2d 1260, 1265-66
n. 12 (Fed. Cir. 1992) (citing In re Gordon, 733 F.2d 900, 902 (Fed. Cir.
1984) (“This court has previously found a proposed modification
inappropriate for an obviousness inquiry when the modification rendered the
prior art reference inoperable for its intended purpose.”)
Accordingly, we concur with Appellants that the Examiner has erred
in determining that the collective teachings of Nakamoto and Yoshida would
have suggested substituting the metal plate of the resin coated metal plate
taught by Nakamoto with the fabric and/or paper taught by Yoshida within
the meaning of 35 U.S.C. § 103(a).
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ORDER
In view of the foregoing, it is
ORDERED that the decision of the Examiner to reject claims 1
through 3 under 35 U.S.C. § 103(a) as unpatentable over Nakamoto is
AFFIRMED;
FURTHER ORDERED the decision of the Examiner to reject claims
4 through 6 under 35 U.S.C. § 103(a) as unpatentable over Nakamoto in
view of Yamasaki is AFFIRMED;
FURTHER ORDERED the decision of the Examiner to reject Claims
7 and 8 under 35 U.S.C. § 103(a) as unpatentable over Nakamoto in view of
Yoshida is REVERSED; and
FURTHER ORDERED that no time period for taking any subsequent
action in connection with this appeal may be extended under 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED -IN-PART

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