Ex Parte JAPP et al

Board of Patent Appeals and Interferences

Apr 30, 2004

09046105 (B.P.A.I. Apr. 30, 2004)

-1- The opinion in support of the decision being entered today was not written for publication in a law journal and is not binding precedent of the Board. Paper No. 24 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES Ex parte ROBERT MAYNARD JAAP, PAMELA LULKOSKI, JEFFREY McKEVENY, JAN OBRZUT and KENNETH LYNN POTTER Appeal No. 2004-1073 Application No. 09/046,105 ON BRIEF Before KIMLIN, JEFFREY T. SMITH and PAWLIKOWSKI, Administrative Patent Judges. KIMLIN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal from the final rejection of claims 1, 3, 4, 6-9, 11, 12, 14, 23-25, 28-30, 33 and 34. Claim 1 is illustrative: 1. A woven fiberglass cloth comprising an oxide or salt of at least one member selected from the group consisting of Cu, Cr, and mixtures thereof in an amount sufficient to reduce the glass transmittance of UV light having a wavelength of 365 nanometers; Appeal No. 2004-1073 Application No. 09/046,105 -2- and wherein the oxide or salt is present in an amount of about 0.1 to 2% by weight of the fiberglass cloth; and wherein the oxide or salt is incorporated in a glass composition selected from the group consisting of D glass, S glass and E glass. The examiner relies upon the following references as evidence of obviousness: Loughridge 3,531,677 Sep. 29, 1970 Miyauchi et al. (Miyauchi) 5,942,331 Aug. 24, 1999 Shioura et al. (JP ‘552) Sho 63-225552 Sep. 20, 1988 (Japanese patent) Naka et al. (JP ‘633) 03-261633 Nov. 21, 1991 (Japanese patent) Appellants' claimed invention is directed to a woven fiberglass cloth comprising a glass composition having an oxide or salt of copper or chromium therein. The compounds of copper and chromium allow the glass to absorb UV light and be used in substrates for printed circuit boards and the like. According to appellants, "[t]he present invention provides for significantly reducing, if not entirely eliminating, UV light transmission through a reinforced substrate" (page 4 of Brief, second paragraph). All the appealed claims stand rejected under 35 U.S.C. § 103 as being unpatentable over either JP ‘552 or JP ‘633 in combination with Loughridge and Miyauchi. Appeal No. 2004-1073 Application No. 09/046,105 -3- We have thoroughly reviewed the respective positions advanced by appellants and the examiner. In so doing, we find ourselves in agreement with appellants that the examiner has failed to establish a prima facie case of obviousness for the claimed subject matter. Accordingly, we will not sustain the examiner's rejections. JP ‘552 and JP ‘633, like appellants, are directed to an ultraviolet-absorbing glass fiber composition, but both references fail to teach or suggest the use of either of the claimed copper or chromium compounds as UV-absorbing agents in the glass composition. As emphasized by appellants, both references teach very specific combinations of compounds in specific amounts to provide the function of UV absorption. In particular, JP ‘633 discloses a glass fiber composition comprising Fe2O3, CeO2 and TiO2. JP ‘552 teaches a UV-absorbing glass composition comprising the same three components in addition to MnO2 and As2O5. To remedy the deficiencies in the primary references the examiner cites Loughridge and Miyauchi for teaching the equivalence of the claimed chromium and copper oxides and the disclosed oxides of iron, cerium, titanium, cobalt, manganese and nickel as UV absorbing agents. However, Loughridge is directed Appeal No. 2004-1073 Application No. 09/046,105 -4- to a radiation-absorbing glaze on a quartz glass envelope and Miyauchi is directed to a colored film-coated glass article. Neither Loughridge nor Miyauchi provides any teaching or suggestion that the oxides of copper and chromium can be effectively used in glass fiber compositions. Likewise, neither of the primary references provides any general teaching that a variety of known UV-absorbing agents can be effectively used in making glass fiber compositions. Hence, in the absence of the requisite teaching or suggestion in either the primary or secondary references, we must concur with appellants that the examiner's conclusion of obviousness is based more upon the use of impermissible hindsight than the teachings of the applied prior art. In our view, based on the prior art as a whole, we agree with appellants that it cannot be reasonably presumed that the use of the claimed copper and chromium oxides "would effectively absorb UV light without adversely affecting other important characteristics required of a woven cloth" (page 7 of Brief, first paragraph). Appeal No. 2004-1073 Application No. 09/046,105 -5- In conclusion, based on the foregoing, we are constrained to reverse the examiner's rejections. REVERSED EDWARD C. KIMLIN ) Administrative Patent Judge ) ) ) ) ) JEFFREY T. SMITH ) BOARD OF PATENT Administrative Patent Judge ) APPEALS AND ) INTERFERENCES ) ) ) BEVERLY PAWLIKOWSKI ) Administrative Patent Judge ) ECK:clm Appeal No. 2004-1073 Application No. 09/046,105 -6- Burton A. Amernick Pollock, Vande Sande & Priddy P.O. Box 19088 Washington, DC 20036-3425