Ex Parte Knauf

Board of Patent Appeals and Interferences

Mar 29, 2007

09978524 (B.P.A.I. Mar. 29, 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is not binding precedent of the Board.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 GARY H. KNAUF
____________________

Appeal No. 2007-0419
Application No. 09/978,524
Technology Center 1700
____________________

Decided: March 29, 2007
____________________

Before: SPIEGEL, LANE and NAGUMO, Administrative Patent Judges.

SPIEGEL, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal under 35 U.S.C . § 134 from the Examiner's
final rejection of claims 1-12. Claims 13-21 are also pending, but are withdrawn
from consideration as being directed to a non-elected invention. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part, reverse-in-part and add a
new ground of rejection.
1
2
3
4
5
6
7
I. Introduction
Claim 1 is illustrative of the subject matter on appeal and reads as follows:
Appeal No. 2007-0419 Page 2
Application No. 09/978,524
A method for extrusion coating a lightweight
web comprising:
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
feeding a length of a lightweight web along with
a length of carrier web to an extruder with the
lightweight web atop the carrier web;
extruding a polymer film coating onto the
lightweight web and carrier web in the extruder so that
a surface of the lightweight web is coated by the
extruded coating to provide an extrusion-coated
lightweight web; and
separating the extrusion-coated lightweight
web from the carrier web.
The dependent claims further limit the lightweight web, carrier web and
polymer film coating recited in the method of claim 1. Specifically, the lightweight
web is limited to a web which deforms when subjected to a tension of about 0.5
pli or less (claim 3) or has an MD curl of less than about 3 inches as measured
by TAPPI UM 427 (claim 8) or has insufficient strength to withstand forces
imposed upon it by an extruder coating station in the absence of the underlying
carrier web (claim 9). The lightweight web may be a nonwoven fabric (claim 5), a
paper web (claim 6) or a metal foil (claim 7). The carrier web may be a
heavyweight web (claim 10) or a second lightweight web (claim 11). The
polymer film coating may comprise a coextrusion of at least two layers of polymer
film (claim 12) or may be made of certain types of polymers (claim 4).
In reaching our decision, we have given careful consideration to the
Appellant's specification and claims and to the respective positions articulated by
the Appellant and the Examiner. We make reference to the Examiner's Answer
("Answer," mailed 26 July 2006) for the Examiner's reasoning in support of the
Appeal No. 2007-0419 Page 3
Application No. 09/978,524
rejections and to Appellant's Appeal Brief ("Brief," filed 05 June 2006) for the
Appellant's arguments thereagainst.
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
The Examiner relies on the following references in her rejections:
Backwell 3,620,872 16 November 1971
Peterson 3,840,421 08 October 1974
Anderson 4,963,303 16 October 1990
Marrocco, III et al. (Marrocco) 5,646,231 08 July 1997
Enlow et al. (Enlow) 6,254,712 03 July 2001
II. Issues
Claims 1, 3, 4 and 6-11 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Backwell in view of Marrocco. Claim 5 stands rejected under
35 U.S.C. § 103(a) over Backwell in view of Marrocco as applied to claim 1 and
further in view of Anderson. Claim 12 stands rejected under 35 U.S.C. § 103(a)
over Backwell in view of Marrocco as applied to claim 1 and further in view of
Enlow.
Claims 1-4 and 8-11 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Peterson in view of Backwell, further in view of Marrocco.
III. Discussion
A. Rejections based on Backwell and Marrocco
1. claims 1, 3-4 and 6-11
Appellant has not argued that claims 4 and 9-11 are separately patentable
from claim 1 upon which they depend. Therefore, the patentability of claims 4
and 9-11 rise or fall with the patentability of claim 1.
Backwell discloses a method of processing a web material supported on a
carrier and subsequently separating the processed web and carrier to obviate
Appeal No. 2007-0419 Page 4
Application No. 09/978,524
extensibility and heat distortion of the web material (col. 1, ll. 6-27). The carrier
may be a web of polyester film, a paper-foil laminate, synthetic rubber, stainless
steel (col. 1, ll. 28-40). A coating of non-self-supporting polymeric material, e.g.,
vinylidene chloride copolymers, polyolefins, wax/copolymer blends and cellulosic
derivatives, is applied to the carrier, e.g., by melt extrusion, aqueous dispersion
coating, solvent-based lacquering or hot melt coating (col. 1, ll. 47-52). The
polymeric coating is subsequently processed to add a print layer, an adhesive
layer and one or more supporting layers of web-forming materials, thereby
producing a self-supporting assembly (col. 1, ll. 54-58). The supporting layers
may be applied by extrusion coating (col. 1, ll. 54-58; col. 2, ll. 10-11 and 45-46)
and may be made of polymers, e.g., polyethylene, polypropylene, ethylene-vinyl
acetate copolymer or vinylidene chloride copolymers, or may be paper or metal
foil (col. 1, ll. 59-65; col. 2, ll. 10-11 and 45-46). The coated assembly is then
separated from the carrier (col. 1, ll. 13-27).
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
The Examiner only relies on Marrocco for its disclosure that art recognized
coating techniques include "coating from solution, spray coating of solution, spin
coating, coating from a latex, powder coating, laminating preformed films, spray
coating molten droplets, and coating from the melt" (col. 21, ll. 5-9).
According to the Examiner, the claimed lightweight web reads on either
the non-self-supporting polymeric material layer or the laminated non-self-
supporting polymeric material and adhesion layers of Backwell. The Examiner
maintains that the limitations of claim 1 are met by the carrier web moving either
the non-self-supporting polymeric material layer or the laminated layers to the
Appeal No. 2007-0419 Page 5
Application No. 09/978,524
extruder ("feeding a length of a lightweight web along with a length of carrier web
to an extruder with the lightweight web atop the carrier web") where a supporting
layer made of polymeric material is extrusion coated thereon to produce a self-
supporting assembly ("extruding a polymer film coating onto the lightweight web
and carrier web in the extruder so that a surface of the lightweight web is coated
by the extruded coating to provide an extrusion-coated lightweight web") which is
then separated from the carrier web ("separating the extrusion-coated lightweight
web from the carrier web"). [Answer, ¶ bridging pp. 4-5.]
1
2
3
4
5
6
7
8
9
10
11
12
Appellant does not dispute that Backwell teaches the coating of
lightweight webs. Rather, Appellant argues that claim 1 requires the lightweight
web to be formed separately from the carrier web. [Brief, p. 4, ¶ 2.]
When examining claims for patentability, claims are interpreted as broadly
as is reasonable and consistent with the specification. In re Hyatt, 211 F.3d
1367, 1372, 54 USPQ2d 1664, 1667 (Fed. Cir. 2000). Here, the plain language
of claim 1 does not require that the lightweight web exist independently of the
carrier web at the beginning of the method. Claim 1 simply requires that "a
lightweight web along with a ... carrier web" be fed into an extruder. The claimed
methods are open as to how the lightweight web comes to be on top of the
carrier web and the "comprising" language of the claimed methods does not
exclude the presence of additional steps or layers. We find that the Examiner
has shown that Backwell describes a method of coating lightweight webs
meeting all the limitations of claim 1. Thus, the broad language of claim 1 is
anticipated by Backwell. Since anticipation is the epitome of obviousness (
13
14
15
16
17
18
19
20
21
22
In re 23
Appeal No. 2007-0419 Page 6
Application No. 09/978,524
Fracalossi, 681 F.2d 792, 794, 215 USPQ 569, 571 (CCPA 1982)), we sustain
the Examiner's rejection of claim 1, as well as of claims 4 and 9-11, under §
103(a) over Backwell in view of Marrocco. Moreover, since claim 1 is anticipated
by Backwell, the Examiner's reliance on Marrocco is harmless. Accordingly, it is
unnecessary to consider the Examiner's argument that Marrocco teaches "that
laminating preformed films is functionally equivalent to coating from melt, solution
or latex" (Answer, p. 5, ¶ 2).
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
Claims 3 and 8 limit the lightweight web treated in the method of claim 1 to
a web which deforms when subjected to a tension of about 0.5 pli or less (claim
3) or has an MD curl of less than about 3 inches as measured by TAPPI UM 427
(claim 8). The specification broadly defines "lightweight" webs, in relevant part,
as "webs which ... have insufficient strength to allow them to be effectively
extrusion coated using existing ... known extrusion systems and methods or
which ... have not heretofore been deemed suitable to be extrusion coated." For
example, according to the specification, webs which deform when subjected to
tensions of about 0.5 pli or less are generally considered "lightweight," while
"[w]ebs which may be subjected to tensions of over about 0.5 pli without
exhibiting undesirable deformations can generally be extrusion coated using
known systems and methods." [Specification ¶ bridging pp. 4-5.] Further
according to the specification, failed attempts to extrusion laminate lightweight
webs in the prior art "have resulted in the substrate being highly distorted if not
destroyed and having measured curls far in excess of 3 inches" (p. 6, ¶ 4). In
other words, webs which exhibit deformations when subjected to tensions of
Appeal No. 2007-0419 Page 7
Application No. 09/978,524
about 0.5 pli or less or which have an MD curl of less than about 3 inches as
required by claims 3 and 8, respectively, have been generally considered as not
being amenable to extrusion coating using known extrusion systems because the
webs cannot withstand the forces applied to them in these systems.
1
2
3
4
The Examiner argues that since Backwell shows how to treat any type of
lightweight web without breakage or deformation, the burden has shifted to
Appellant to show that lightweight webs having the specifically recited property
could not be treated using the Backwell method (Answer, p. 5, ¶ 4; p. 10, ¶ 4).
Essentially, the Examiner contends that the limitations recited in claims 3 and 8
are inherent in the definition of a lightweight web. Indeed, Backwell discloses
methods for coating webs that cannot support themselves. In particular,
Backwell discloses "applying to the said carrier a coating of polymeric material,
5
6
7
8
9
10
11
12
the coating in itself being nonself-supporting but capable of subsequent
separation from said carrier when the coating has become part of a self-
supporting assembly . . ." (col. 1, ll. 17-20, emphasis added). The Backwell webs
that are "nonself-supporting" appear to meet all the criteria set out by Appellant
for lightweight webs as recited in claims 3 and 8. The burden is on Appellant to
prove otherwise.
13
14
15
16
17
In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Cir. 1990); 18
In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Best, 562 19
20
21
22
F.2d 1252, 195 USPQ 430 (CCPA 1977). Since the Examiner did not cite the
aforementioned passage in Backwell or explain how the disclosure in Backwell
related to the definition of lightweight web in Appellant's specification, we
Appeal No. 2007-0419 Page 8
Application No. 09/978,524
denominate our affirmance of the Examiner's rejection of claims 3 and 8 as
unpatentable under § 103(a) as a new ground of rejection.
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
Claims 6 and 7 require the lightweight web used in the method of claim 1
to be either a paper web or a metal foil, respectively. Instead of the extrusion
coated polymeric supporting layer of Backwell corresponding to the recited
extrusion coated polymer film, the Examiner changes her position and equates
Backwell's supporting layer to the recited lightweight web because Backwell
alternatively discloses that the supporting layer may be made of paper or metal
foil (Answer, p. 10, ¶ 2). For such a process, the Examiner has not pointed to
any evidence or explained why the Backwell paper or foil supporting layers are
"lightweight webs" as Appellant uses that term. Therefore, we reverse the
rejection of claims 6 and 7 under § 103(a) over Backwell in view of Marrocco.
2. claim 5
Acknowledging that neither Backwell nor Marrocco teach or suggest that
the lightweight web used in the method of claim 1 is a nonwoven fabric, the
Examiner looks to Anderson to satisfy this deficiency (Answer, p. 7, ¶ 8 - p. 9,
¶ 2). Anderson is directed to polyimide ultrafiltration membranes useful for the
recovery of dewaxing aids used in solvent dewaxing processes (col. 1, ll. 7-23).
Anderson describes casting porous membranes on various backing (support)
materials, in particular, a non-woven fabric backing for certain uses of the
membrane (col. 3, ll. 56-64). Specifically, using the membrane in high
temperature ultrafiltration processes requires the use of a temperature resistant
backing layer, e.g., Nomex,® a non-woven felt material (col. 3, ll. 59-64).
Appeal No. 2007-0419 Page 9
Application No. 09/978,524
According to the Examiner, it would have been obvious "to have used a non-
woven fabric backing as
1
other material to which it is desired to apply a coated
finish in Backwell in view of Marrocco, III et al since Anderson teaches that metal
plate or moving non-woven fabric backing can be used as a suitable backing for
applying a casting solution in certain applications" (Answer, sentence bridging
pp. 7-8). However, the Examiner has not explained why one of ordinary skill in
the art would have treated a high temperature resistant support backing, e.g., the
non-woven fabric described in Anderson, using a method designed to obviate
heat distortion of the support layer as instantly claimed. It is improper to use
hindsight reconstruction to pick and choose among isolated disclosures in the
prior art to deprecate the claimed invention.
2
3
4
5
6
7
8
9
10
In re Fine, 837 F.2d 1071, 1075, 5
USPQ2d 1596, 1600 (Fed. Cir. 1988). Therefore, we reverse the rejection of
claim 5 under § 103(a) over Backwell in view of Marrocco as applied to claim 1
above and further in view of Anderson.
11
12
13
14
15
16
17
18
19
20
21
22
23
3. claim 12
Acknowledging that neither Backwell nor Marrocco teach applying the
polymer film coating as a coextrusion of at least two layers of polymer film, the
Examiner looks to Enlow to satisfy the deficiency (Answer, p. 8, ¶¶ 4-6). Enlow
discloses that when producing protective and decorative films comprising a clear
coat, a color coat and a size coat, these layers can be extruded in series or
coextruded as a multi-layer film onto the carrier (col. 14, ll. 1-7). Appellant does
not dispute that coextrusion of films is known (Brief, p. 11, ¶ 3). Rather,
Appellant argues that "the prior art does not teach or suggest the ability to apply
Appeal No. 2007-0419 Page 10
Application No. 09/978,524
an extrusion coating to a lightweight web that is separable from a carrier web on
which it resides" (
1
id.). Backwell discloses applying an extrusion coating to a web
that is separable from a carrier web as explained above. Failure to consider the
references together is inappropriate in view of the fact that the rejection was
made under § 103.
2
3
4
Cable Elec. Prods. Inc. v. Genmark, Inc., 770 F.2d 1015,
1025, 226 USPQ 881, 886-87 (Fed. Cir. 1985);
5
In re Keller, 642 F.2d 413, 425,
208 USPQ 871, 881 (CCPA 1981). Therefore, Appellant's argument is not
persuasive. Consequently, we will sustain the Examiner's rejection of claim 12
under § 103(a) over Backwell in view of Marrocco as applied to claim 1 above
and further in view of Enlow.
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
B. Rejection of claims 1-4 and 8-11 based on Peterson, Backwell
and Marrocco

Peterson discloses a method of printing and/or embossing a continuous
web of stretchable thermoplastic material ("lightweight web") (col. 1, ll. 49-52)
comprising feeding a relatively non-stretchable carrier belt, e.g., stainless steel
("carrier web") (col. 3, ll. 10-11), through a first work station where adhesive is
applied to the belt (col. 3, ll. 25-34) and then through a second work station
where a web of stretchable material, e.g., vinyl, is pressed into contact with the
adhesive to firmly adhere the web to the belt (col. 3, ll. 50-60). Preferably, the
web has a width less than the width of the belt (col. 3, ll. 61-62). The adhered
web is carried to various processing stations for printing (col. 4, ll. 3-28). After
print processing, a sheet of protective clear vinyl material ("polymer film coating")
can be applied to the surface of the web (col. 4, ll. 53-61) and the completed web
Appeal No. 2007-0419 Page 11
Application No. 09/978,524
passes through a stripping station where it is separated from the carrier belt (col.
5, ll. 23-28).
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
Backwell and Marrocco have been discussed above.
According to the Examiner, Peterson differs from claim 1 in failing to
disclose applying the protective clear vinyl material by extrusion coating (Answer,
p. 6, ¶ 4). The Examiner relies on Marrocco as teaching that coatings may be
formed by laminating preformed films or by extrusion onto substrates and
Backwell as teaching that a coating of vinyl material maybe formed on a printed
vinyl material by extrusion (Answer, p. 6, ¶¶ 5 and 7). The Examiner concludes
that it would have been obvious to apply the protective clear vinyl material layer
of Peterson by extrusion coating instead of by laminating a preformed sheet in
view of Marrocco's disclosure that coatings may be formed by laminating
preformed films or by extrusion onto substrates and, as necessary, further in
view of Backwell's disclosure of applying a coating of vinyl material onto a printed
vinyl material by extrusion (Answer, p. 6, ¶¶ 6 and 8). As to claims 3-4 and 8-11,
the Examiner reiterates her arguments above based on the disclosures of
Backwell and Marrocco without Peterson.
On the one hand, Appellant contends that adding Peterson to the above
obviousness rejection of claims 1, 3-4 and 8-11 over Backwell and Marrocco is
unnecessary and duplicative (Brief, p. 7, ¶ 3). However, we view the rejection
based on Peterson as an essentially independent rejection from that based on
Backwell insofar as the Examiner's rationale, which we found to be tantamount to
anticipation, is based on an entirely different logic than the obviousness of
Appeal No. 2007-0419 Page 12
Application No. 09/978,524
substituting one method of coating (extruding) for another (lamination). On the
other hand, Appellant contends that the addition of Peterson to the previous
rejection does not rectify the alleged deficiencies of Backwell and Peterson. The
Examiner responds that Peterson adds a teaching of coating width which
Backwell and Marrocco lack (Answer, p. 11, ¶ 1). However, coating width
limitations are only recited in claim 2.
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
We will sustain the rejection of claims 1, 3-4 and 8-11 under § 103(a) over
Peterson, Backwell and Marrocco because the ordinary worker would have
substituted the known method of applying a protective coating by extrusion,
taught by Backwell, for the lamination coating method exemplified by Peterson.
We find that Peterson's stretchable thermoplastic material also appears to meet
inherently the additional limitations of claims 3 and 4 and we again designate our
affirmance of the rejection of claims 3 and 8 as a new ground of rejection. As to
claim 2, the Examiner acknowledges that Peterson fails to disclose the width of
the protective clear vinyl material as being greater than the width of the
lightweight web (Answer, p. 7, ¶ 1). However, the Examiner concludes that it
would have been obvious to use a protective clear vinyl material having a width
greater than the width of the lightweight web with the expectation of "protecting"
the edges of the web (id., p. 7, ¶¶ 2-3). Appellant responds that "this proffered
justification is not the reason for Appellant overlapping the coating onto the
carrier web and has no basis" (Brief, p. 10, ¶ 3).
19
20
21
"Obviousness is not to be determined on the basis of purpose alone." In 22
re Graf, 343 F.2d 774, 777, 145 USPQ 197, 199 (CCPA 1965). However, when 23
Appeal No. 2007-0419 Page 13
Application No. 09/978,524
relying on multiple references or a modification of the prior art, it is incumbent on
the Examiner to identify some suggestion to combine references or make the
modification.
1
2
In re Jones, 958 F.2d 347, 351, 21 USPQ2d 1941, 1943 (Fed. Cir.
1992) (stating that there must be some suggestion to combine, “either in the
references themselves or in the knowledge generally available to one of ordinary
skill in the art”). Here, the Examiner has provided a reason for the modification,
which we find sensible and which Appellant has not materially challenged, to
modify the prior art, i.e., to protect the edges of the lightweight web. The fact that
the Examiner's reason is not the same as Appellant's is insufficient to rebut the
prima facie conclusion of obviousness presented by the Examiner.
3
4
5
6
7
8
9
In re Dillon,
919 F.2d 688, 693-94, 16 USPQ2d 1897, 1901-02 (Fed. Cir. 1990). Therefore,
we will sustain the rejection of claim 2 under § 103(a) over Peterson, Backwell
and Marrocco.
10
11
12
13
14
15
16
17
18
19
20
IV. Conclusion
To summarize, the rejection of claims 1, 2, 4 and 9-12 under 35 U.S.C. §
103(a) is AFFIRMED; the rejection of claims 3 and 8 under 35 U.S.C. § 103(a) is
AFFIRMED ON NEW GROUNDS; and, the rejection of claims 5-7 under 35
U.S.C. § 103(a) is REVERSED.
37 CFR § 41.50(b) (2004) provides “[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review.” 37 CFR §
41.50(b) also provides that the appellant, WITHIN TWO MONTHS FROM THE 21
DATE OF THE DECISION, must exercise one of the following two options with 22
Appeal No. 2007-0419 Page 14
Application No. 09/978,524
respect to the new ground of rejection to avoid termination of the appeal as to the
rejected claims:
1
2
3
4
5
6
7
8
9
10
11
12
13
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence
relating to the claims so rejected, or both, and have
the matter reconsidered by the examiner, in which
event the proceeding will be remanded to the
examiner. . . .
(2) Request rehearing. Request that the proceeding
be reheard under § 41.52 by the Board upon the
same record. . . .
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 CFR § 1.136(a).

AFFIRMED-IN-PART; REVERSED-IN-PART; NEW GROUNDS OF REJECTION

/Carol A. Spiegel/ )
Carol A. Spiegel )
Administrative Patent Judge )
)
)
/Sally G. Lane/ ) BOARD OF PATENT
Sally G. Lane ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
/Mark Nagumo/ )
Mark Nagumo )
Administrative Patent Judge )

Appeal No. 2007-0419 Page 15
Application No. 09/978,524
Jack M. Cook, Esq.
QUARLES & BRADY LLP
411 E. Wisconsin Avenue
Suite 2040
Milwaukee, WI 53202-4497