Ex Parte Nelges

Patent Trial and Appeal Board

May 27, 2016

12747212 (P.T.A.B. May. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
121747,212 06/10/2010
26671 7590 06/01/2016
Driggs, Hogg, Daugherty & Del Zoppo Co,, LP,A,
38500 CHARDON ROAD
DEPT. ABB Germany
WILLOUGHBY HILLS, OH 44094
hrgNelges
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
07/689US_ABA107018USPCT 5416
EXAMINER
HUANG, CHENG YUAN
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
06/01/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
usptocommunications@driggslaw.com
cgiacomazzo@driggslaw.com
mwheeler@driggslaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JORG NELGES 1
Appeal2014-007843
Application 12/747,212
Technology Center 1700
Before CHUNG K. PAK, N. WHITNEY WILSON, and
WESLEY B. DERRICK, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner's maintained final rejection2 under 35 U.S.C. § 103(a) of claims 5,
6, and 9-13 over Hosoda3 in view of Tanimoto4 and Patterson. 5 We have
jurisdiction pursuant to 35 U.S.C. § 6. We REVERSE.
1 Appellant identifies ABB AG as the Real Party in Interest. Appeal Brief
("App. Br."), 3.
2 Prior pending rejections under 35 U.S.C. § 112, first paragraph have been
withdrawn by the Examiner in light of amendments to the claims entered by
the Examiner. Examiner's Answer issued May 6, 2014 ("Ans."), 2;
Advisory Action issued February 5, 2014, 2.
3 Hosoda et al. (US 5,468,461, issued November 21, 1995).
4 Tanimoto et al. (US 3,616,164, issued October 26, 1971).
5 Patterson et al. (US 6,793,599 B2, issued September 21, 2004).
Appeal2014-007843
Application 12/747,212
CLAIMED SUBJECT MATTER
Appellant's invention relates to a conveyer belt with an insulative core
that can be used to convey sheets of materials that are joined by high-
frequency welding. Spec. 1, 11. 5-7; 1, 1. 25 to 2, 1. 2.
As explained in the Specification, the subject invention conveyor belt
according to original claim 1 includes an insulation material of lacquer,
silica, and polyethylene to provide a surface with the particular surface
roughness needed to accept the melt produced during welding of foils
located on the conveyor belt. Spec. 1, 1. 29 to 2, 1. 1; 2, 11. 22-30; see also
Spec. Fig. 1; 4, 11. 5-25. It follows that the insulation layer set forth in claim
5 overlays the layer of cellulosic pulp such that the insulation layer overlays
an insulative core comprising two layers bounding a polyester foil. In re
Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010) (Even in giving
claims their broadest reasonable construction, the "claims should always be
read in light of the specification and teachings in the underlying patent.").
Independent claim 5 is illustrative:
5. A conveyor belt, comprising:
an insulative core comprising a polyester foil that is
surrounded on two sides by a layer of cellulosic pulp; and
a layer of insulation material on at least one of the two
sides, the insulation material consisting of a gloss lacquer, silica
and polyethylene wax, wherein a proportion by weight of the
silica in the insulation material is from 9% to 14%, and a
proportion by weight of the polyethylene wax in the insulation
material is from 0.5% to 4%.
Appeal Brief filed March 21, 2014 ("App. Br."), 13 (Claims Appendix).
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Appeal2014-007843
Application 12/747,212
DISCUSSION
We have reviewed the Examiner's rejections and Appellant's
arguments that the Examiner has erred. 6 We find that the Examiner has
failed to meet the required burden to establish unpatentability of the claims.
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) ("[T]he Examiner bears
the initial burden, on review of the prior art or on any other ground, of
presenting a prim a facie case of unpatentability. ").
Hosoda is directed to an anticorrosive primer composition. Hosoda
Abstract. The Examiner relies on Hosoda's disclosure that plastic materials
can be coated with the anticorrosive primer as teaching an insulative core
with two sides-the plastic material-and an insulation material consisting
of lacquer, silica, and polyethylene wax-the anticorrosive primer-applied
on at least one of the two sides of a plastic substrate. Ans. 2-3 (citing
Hosoda col. 5, 11. 38--41, col. 6, 11. 14-15, col. 7, 11. 34-38; col. 8, 11. 6-9).
Tanimoto is directed to a conveyor belt. Tanimoto Abstract. The
Examiner relies on Tanimoto's disclosure of a conveyor belt with a
filamentary layer 3-that can be formed of polyester fibers-bounded on two
sides by web layers 2 as teaching a conveyor belt comprising an insulative
innermost core comprising a polyester foil surrounded on two sides by a
layer of filaments. Ans. 3 (citing Tanimoto col. 2, 11. 31-32, 47-50). The
Examiner concludes it would have been obvious to include polyester foil in
the insulative core of Hosoda for strength and flexibility. Ans. 3 (citing
Tanimoto col. 2, 11. 57-60).
6 We refer to the Final Office Action (mailed October 25, 2013, "Final
Act."), the Appeal Brief (filed March 21, 2014), the Examiner's Answer
(mailed May 6, 2014), and the Reply Brief (filed July 7, 2014, "Reply Br.").
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Appeal2014-007843
Application 12/747,212
Patterson is directed to a power transmission belt. Patterson Title.
The Examiner relies on non-woven region 5 in Patterson's belt that
comprises an outer layer of cellulosic pulp as teaching an insulative core.
Ans. 4 (citing Patterson col. 2, 11. 9-11, 38-39, 66-67, Fig. 1). The
Examiner concludes it would have been obvious to include a layer of
cellulosic pulp on both sides of the polyester foil of Rosada in view of
Tanimoto for frictional characteristics, permeation, and thermal resistance.
Ans. 4 (citing Patterson col. 2, 11. 51-54).
Based on the above, or alternatively on Patterson teaching a belt with
an insulative core with a layer of material comprising wax, the Examiner
further concludes that "[g]iven that belts are known to comprise insulative
cores, it would have been obvious to one of ordinary skill in the art at the
time of the invention to include the insulative core and material of Rosada[]
in a belt in order to provide good coatability and formability." Ans. 4-5
(citing Patterson Title, col. 2, 11. 39--40, 56-60, Fig. 1; Rosoda col. 5, 11. 35-
37, col. 6, 11. 12-13).
Appellant disputes that the combination of Rosoda, Tanimoto, and
Patterson set forth by the Examiner discloses or would have suggested all
claim limitations. App. Br. 6. Appellant highlights that Rosoda is directed
to an anticorrosive primer composition to provide a paintable surface and
that the properties of good coatability and formability relevant to function as
a primer are not shown to be relevant for providing an insulation material
surface on a conveyor belt as claimed. App. Br. 6-8.
On this record, we concur with Appellant that the Examiner has failed
to establish that the claimed subject matter would be prima facie obvious.
Critically, the requisite reason, suggestion, or motivation that would have led
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Appeal2014-007843
Application 12/747,212
one of ordinary skill in the art to combine the teachings of the prior art to
arrange their elements in the same manner recited in claim 5 is lacking from
the rejection. For example, the Examiner relies on Patterson to include its
layer of cellulosic pulp (non-woven material) on both sides of the polyester
foil of Hosoda in view of Tanimoto for improving frictional characteristics,
permeation, and thermal resistance. Ans. 4 (citing Patterson col. 2, 11. 51-
54 ). However, the relied on non-woven material 5 of Patterson is the
"[p ]ulley engaging non-woven region 5" (Patterson col. 2, 1. 32). On this
record, the Examiner fails to adequately explain how Patterson's relied on
teaching would have led one of ordinary skill in the art to place the non-
woven material as a layer between the polyester foil and the anticorrosive
primer composition taught by Hosoda to arrive at the claimed arrangement
of layers. Further, the Examiner relies on Hosoda to include its plastic (an
insulative core according to the Examiner) and anticorrosive primer material
in or on the belt taught by Tanimoto and/or Patterson to provide good
coatability and formability. Ans. 4-5 (citing Hosoda col. 5, 11. 35-37, col. 6,
11. 12-13). The Examiner, however, again fails to adequately explain how
one of ordinary skill in the art would have been led to place a polyester foil
between two layers of cellulosic pulp to arrive at the insulative core and/or
to provide a layer of insulative material-using Ho soda's anti corrosive
primer (not taught as an insulative material in Hosoda)-on the cellulosic
pulp layers of the insulative core (Ans. 4-5, 8-9).
For these reasons, we find the Examiner has failed to provide
sufficient reasoning and/or adequate evidence to support a conclusion that
one of ordinary skill in the art at the time of the invention would have
combined the cited prior art to provide the conveyor belt according to the
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Appeal2014-007843
Application 12/747,212
claims. See, e.g., Belden Inc. v. Berk-TekLLC, 805 F.3d 1064, 1073 (Fed.
Cir. 2015) ("obviousness concerns whether a skilled artisan not only could
have made but would have been motivated to make the combinations or
modifications of prior art to arrive at the claimed invention").
It follows that we are constrained to reverse the obviousness rejections
of claims 5, 6, and 9-13.
CONCLUSION
The Examiner's rejections of claims 5, 6, and 9-13 are REVERSED.
REVERSED
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