Ex parte Nomura et al.

Board of Patent Appeals and Interferences

Sep 14, 1999

08101999 (B.P.A.I. Sep. 14, 1999)

Application for patent filed August 4, 1993. 1
Claim 5 has been amended after the final rejection (Paper No. 7).2
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written
for publication in a law journal and (2) is not binding precedent of the Board.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 HIROTOSHI NOMURA, KEIJI NAKAYAMA,
HISAKAZU TAKAGISHI and TOKUMI IKEDA
____________
Appeal No. 1996-0345
Application No. 08/101,9991
____________
ON BRIEF
____________
Before COHEN, NASE and BAHR, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 5 through 7, which are all of the claims
pending in this application.2
We REVERSE.
Appeal No. 1996-0345 Page 2
Application No. 08/101,999
A translation of this document, prepared for the PTO, was mailed to3
the appellants with Paper No. 6.
BACKGROUND
The appellants' invention relates to a coater blade and
backing roll combination. An understanding of the invention
can be derived from a reading of exemplary claim 5, which
appears in the appendix to the appellants' brief.
The prior art reference of record relied upon by the
examiner in rejecting the appealed claims is:
Barusten JA 59-88995 May 23, 1984
(Japanese patent document)3
The following rejection is before us for review.
Claims 5 through 7 stand rejected under 35 U.S.C. § 103
as being unpatentable over Barusten.
The complete text of the examiner's rejections and
response to the argument presented by the appellants appears
in the answer (Paper No. 12, mailed May 16, 1995), while the
complete statement of the appellants' argument can be found in
the brief (Paper No. 11, filed May 1, 1995) and reply brief
(Paper No. 13, filed June 19, 1995).
OPINION
Appeal No. 1996-0345 Page 3
Application No. 08/101,999
In reaching our decision in this appeal, we have given
careful consideration to the appellants' specification and
claims, to the applied prior art reference, and to the
respective positions articulated by the appellants and the
examiner. As a consequence of our review, we make the
determinations which follow.
We shall not sustain the examiner's rejection of claims 5
through 7.
Barusten discloses a doctor blade used in combination
with a rubber-coated support roller for smoothing layers of
coating material applied to a paper web (7) conveyed between
the support roller and the blade. The blade is made of
flexible steel and is provided on its surface of operation
(the surface that engages the paper web) with a surface
coating (5) having greater abrasion resistance than that of
the steel blade (translation, page 8). Barusten discloses
that the coating is ideally "made to be round" or "convex"
through polishing (translation, page 11, lines 16 to 19, and
page 12, lines 3 to 6 and 11 to 17). Barusten does not
expressly disclose that the support roller has a concave outer
surface, much less that the surface of operation of the coated
Appeal No. 1996-0345 Page 4
Application No. 08/101,999
blade has a "curvature corresponding to the quadratic equation
which defines the curvature of said backing roll outer
surface" as required by the claims on appeal.
In rejecting the claims, the examiner's position is that
since it was known in the art, at the time the
invention was made, to adapt the blade to the
coating environment via changing the shape or
surface contour of the blade relative [to] the web
disposed on the backing roll, and since all backing
rolls have a curvature corresponding to a quadratic
equation, it would have been obvious to one of
ordinary skill in the art to adapt the shape or
curvature of the blade to correspond with the shape
or curvature of the backing roll, the roll curvature
being based upon the quadratic equation, in order to
effect a uniform coating of a desired amount or
thickness on the web [answer, pages 4 and 5].
If, as the examiner contends, "all backing rolls have a
curvature corresponding to a quadratic equation," the prior
art discussed by Barusten (translation, page 6), which uses an
"originally straight" blade with a backing roll, illustrates
no recognition of the desirability of adapting the contour of
the blade to the curvature of the backing roll. While
Barusten does teach providing rounded contours on the surface
of operation of the coated blade, there is no indication that
Barusten recognized the need or desirability of adapting the
contour of the surface of operation to particularly correspond
Appeal No. 1996-0345 Page 5
Application No. 08/101,999
to the curvature of the backing roll. Rather, Barusten
states:
In order to attain the coating with the best quality
with respect to uniformity in the web coating, the
blade coating before the installation area and/or
within, and on the successive bevelled surface is
formed with a tiled or convex round surface if
possible. This indicates that a curved shape
without any sharp edged areas is provided on the
blade coating in these areas and is suitably
attained through a similar gradual polishing
procedure after coating [translation, page 14,
emphasis added].
This suggests that Barusten's use of rounded surfaces is
intended to avoid sharp edges which could impact on the
uniformity of the coating. In any case, Barusten does not
suggest adapting the contour of the surface of operation of
the blade to the contour of the support roller.
Rejections based on 35 U.S.C. § 103 must rest on a
factual basis. In making such a rejection, the examiner has
the initial duty of supplying the requisite factual basis and
may not, because of doubts that the invention is patentable,
resort to speculation, unfounded assumptions or hindsight
reconstruction to supply deficiencies in the factual basis.
Appeal No. 1996-0345 Page 6
Application No. 08/101,999
In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 177 (CCPA
1967), cert. denied, 389 U.S. 1057 (1968).
The examiner has not supplied the necessary evidence,
that one of ordinary skill in the art would have recognized
the desirability of adapting the shape of the blade to
correspond with the concave curvature of the backing roll in
order to effect a uniform coating, to support the conclusion
of obviousness in this case. Thus, especially in light of the
above-noted deficiencies of Barusten, it is our opinion that
the examiner's conclusion of obviousness stems from
impermissible hindsight reconstruction. Accordingly, we
cannot sustain the examiner's rejection of claims 5 through 7.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 5 through 7 under 35 U.S.C. § 103 is REVERSED.
REVERSED
Appeal No. 1996-0345 Page 7
Application No. 08/101,999
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
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