Ex parte Koch

Board of Patent Appeals and Interferences

Mar 25, 2002

08801676 (B.P.A.I. Mar. 25, 2002)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte RUSSELL W. KOCH
____________
Appeal No. 1999-2492
Application No. 08/801,676
____________
ON BRIEF
____________
Before,GARRIS, KRATZ and JEFFREY T. SMITH, Administrative Patent
Judges.
KRATZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner’s refusal
to allow claims 1-5 and 10-15, which are all of the claims
pending in this application.
BACKGROUND
Appellant’s invention relates to an adhesive laminate
containing a rubber priming layer, an adhesive layer and a
metal priming layer. Moreover, appellant is concerned with a
rubber vehicle air spring bonded to a support sleeve with the
adhesive laminate. An understanding of the invention can be
Appeal No. 1999-2492 Page 2
Application No. 08/801,676
derived from a reading of exemplary claim 10, which is
reproduced below.
10. An adhesive laminate for adhering a rubber to a
metal, comprising;
a reacted rubber primer layer, a metal primer layer,
and a cured adhesive layer located between said rubber
primer layer and said metal primer layer, wherein said
rubber primer is a halogen donating compound, or a
trichlorotriazinetrione, or a N-halonydantoin, or a N-
haloamide, or a N-haloimide, or an acetamide, or
combinations thereof; wherein said metal primer is a
mixture comprising a chlorosulfonated polyethylene, a
chlorinated paraffin, and a polydinitrosobenzene; or an
aqueous composition comprising a polyvinyl alcohol
stabilized aqeous phenolic resin dispersion; and wherein
said adhesive is an epoxy based resin, or a polyurethane
adhesive, or a polymer containing an acid halide group or
a haloformate group, or a polymer containing an anhydirde
group which upon reaction with a diamine yields and
amine-acid linkage.
In addition to alleged admitted prior art, the following
prior art references of record are relied upon by the examiner
in rejecting the appealed claims:
Geyer et al. (Geyer) 2,226,605 Dec. 31,
1940
Ruggeri et al. (Ruggeri) 2,711,383 Jun.
21, 1955
Schubert et al. (Schubert) 4,029,305 Jun. 14,
1977
White et al. (White) 4,327,150 Apr. 27,
1982
Iwasa et al. (Iwasa) 4,755,548 Jul. 05,
1988
Appeal No. 1999-2492 Page 3
Application No. 08/801,676
All references to FR 2,376,666 in this decision are to1
the English language translation of record.
While the source of the alleged prior art admission is2
not repeated in the answer, the examiner refers to appellant’s
specification at page 4, line 15 through page 5, line 36, page
6, line 4 through page 7, line 5 and page 9, line 33 through
page 12, line 11 at page 3 of the final rejection mailed June
22, 1998 as representing admitted prior art.
Societe Europeenne De Propulsion (FR 2,303,843 ), French1
Published Patent Application No. 2,303,843, Oct. 08, 1976.
Claims 1-5, 14 and 15 stand rejected under 35 U.S.C. §
103 as being unpatentable over Schubert in view of FR
2,303,843, either of White or Iwasa, and alleged admitted
prior art. Claims 1-5, 14 and 15 also stand rejected under2
35 U.S.C. § 103 as being unpatentable over Geyer in view of
Ruggeri, further in view of FR 2,303,843, either of White or
Iwasa, and the alleged admitted prior art. Claims 10-13 stand
rejected under 35 U.S.C. § 103 as being unpatentable over FR
2,303,843 in view of White or Iwasa, and the alleged admitted
prior art.
We refer to appellant’s brief and reply brief and to the
examiner’s answer for an exposition of the respective
Appeal No. 1999-2492 Page 4
Application No. 08/801,676
viewpoints expressed by appellant and the examiner concerning
the rejections.
OPINION
Upon careful review of the record, we find ourselves in
agreement with appellant that the examiner has failed to carry
the burden of establishing a prima facie case of obviousness.
See In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992); In re Piasecki, 745 F.2d 1468, 1471-1472,
223 USPQ 785, 787-788 (Fed. Cir. 1984). Accordingly, we will
not sustain the examiner’s rejections, as stated.
The obviousness, within the meaning of 35 U.S.C. § 103,
of combining the teachings of FR 2,303,843 with White or
Iwasa, and the alleged admitted prior art in a manner to
arrive at appellant’s adhesive laminate as recited in claim 10
or so as to arrive at the adhesive laminate component of
appellant’s claim 1 is central to each of the examiner’s
rejections. Concerning this matter, in describing FR
2,303,843 in the carryover paragraph at pages 4 and 5 of the
answer and in the rejections, the examiner makes clear that FR
2,303,843 does not teach the metal primer component or the
specific rubber primer of appellant’s adhesive laminate.
Appeal No. 1999-2492 Page 5
Application No. 08/801,676
Rather FR 2,303,843 describes a rubber/metal bonding system
that includes an adhesive layer that may correspond to
appellant’s adhesive layer and a rubber primer, which rubber
primer the examiner has not clearly established as
corresponding with appellant’s specifically claimed rubber
primer layer.
To make up for those deficiencies of FR 2,303,843, the
examiner relies on White or Iwasa, and the alleged admitted
prior art. However, the examiner has not identified a
particularized suggestion, reason or motivation to combine the
applied references or make the proposed modification of FR
2,303,843 in a manner so as to arrive at the claimed invention
as is required for a sustainable rejection. See In re
Rouffet, 149 F.3d 1350, 1359, 47 USPQ2d 1453, 1459 (Fed. Cir.
1998). Rather, the examiner merely offers conclusory remarks
and makes generalized statements regarding the applied
references and the proposed combination thereof in the answer.
The other references applied by the examiner in rejecting
claims 1-5 and 14 and 15 do not remedy the above-noted
shortcomings. Thus, even if we could agree that the examiner
has established the referred to portions of the specification
Appeal No. 1999-2492 Page 6
Application No. 08/801,676
Where the specification clearly designates something as3
prior art, it is permissible to use that information in the
determination of obviousness. See In re Nomiya, 509 F.2d 566,
571-72, 184 USPQ 607, 612 (CCPA 1975). However, a case of
obvious can not be made on the basis of appellant’s own
statements; that is, we must view the prior art without
reading into that art appellant’s teachings. See In re
Sponnoble, 405 F.2d 578, 585, 160 USPQ 237, 243 (CCPA 1969).
Only what the specification clearly and unambiguously
identifies as prior art can be used as evidence of obviousness
against the claims. Moreover, not all prior knowledge,
written descriptions or prior uses constitute prior art within
the meaning of 35 U.S.C. § 103.
Since we find that the examiner has not furnished an
adequate basis for combining the relied upon teachings of the
references to arrive at appellant’s invention, we need not
decide whether the examiner has met the burden of establishing
that any or all of the specification passages relied upon
constitute an admission of prior art, especially in the face
of appellant’s implied challenge set forth in the brief (page
6).
represent admitted prior art, the stated rejections fall3
short of establishing the obviousness of the claimed subject
matter.
For the foregoing reasons, we will not sustain any of the
examiner’s § 103 rejections.
CONCLUSION
The decision of the examiner to reject claims 1-5, 14 and
15 under 35 U.S.C. § 103 as being unpatentable over Schubert
in view of FR 2,303,843, either of White or Iwasa, and alleged
Appeal No. 1999-2492 Page 7
Application No. 08/801,676
admitted prior art, to reject claims 1-5, 14 and 15 under 35
U.S.C. § 103 as being unpatentable over Geyer in view of
Ruggeri, further in view of FR 2,303,843, either of White or
Iwasa, and the alleged admitted prior art, and to reject
claims 10-13 under 35 U.S.C.
§ 103 as being unpatentable over FR 2,303,843 in view of White
or Iwasa, and the alleged admitted prior art is reversed.
REVERSED
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
PETER F. KRATZ ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY T. SMITH )
Administrative Patent Judge )
Appeal No. 1999-2492 Page 8
Application No. 08/801,676
D A THOMAS DEPUTY GENERAL COUNSEL
BRIDESTONE FIRESTONE INC
1200 FIRESTONE PARKWAY
AKRON, OH 44317
APPEAL NO. - JUDGE KRATZ
APPLICATION NO.
APJ KRATZ
APJ
APJ
DECISION: ED
Prepared By:
DRAFT TYPED: 08 Oct 02
FINAL TYPED: