Ex parte REO

Board of Patent Appeals and Interferences

Nov 29, 2000

08137056 (B.P.A.I. Nov. 29, 2000)

1
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not written for publication and is not binding precedent of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. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte NED J. REO
__________
Appeal No. 1999-2242
Application No. 08/137,056
__________
ON BRIEF
__________
Before CALVERT, Administrative Patent Judge, MCCANDLISH,
Senior Administrative Patent Judge, and GONZALES,
Administrative Patent Judge.
GONZALES, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the examiner’s final rejection of
claims 11 through 14. Claims 1 through 6 and 10 have been
canceled. Claims 7 through 9, the only other claims in the
application, stand withdrawn from consideration under 37 CFR
§ 1.142(b).
Appeal No. 1999-2242
Application No. 08/137,056
2
We AFFIRM.
The subject matter on appeal is directed to a windshield
wiper (claims 11 and 14) and to a method of making a
windshield wiper (claims 12 and 13). An understanding of the
invention can be derived from a reading of exemplary claims 12
and 14, which are reproduced below.
12. A method of making a windshield wiper exhibiting a
low coefficient of friction comprising a body portion and
blade portion, which method comprises:
(1) providing a windshield wiper mold with at least a
portion of its inside surface permanently coated with
polytetrafluoroethylene,
(2)coating the permanent polytetrafluoroethylene coating
on the inside surface of the mold of (1) with a transferable
overcoat of polytetrafluoroethylene,
(3) placing a heat curable rubber mix into the mold,
(4) and molding the heat curable rubber mix.
14. A product produced by the method of claim 12.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Church 3,898,314 Aug. 05,
1975
Mohiuddin 4,350,739 Sep. 21,
1982
Yasukawa et al. 4,912,803 Apr. 03,
1990
(Yasukawa)
Appeal No. 1999-2242
Application No. 08/137,056
The reference to canceled claims 2-4 in the examiner’s1
statement of this ground of rejection (answer, p. 3) is an
obvious inadvertent error.
Technically, there is no antecedent basis for the2
language “the blade surface” in claim 11. For purposes of our
review, we consider the quoted language to read --a surface of
said blade portion--. Correction of this informality is in
order upon return of the application to the jurisdiction of
the examiner.
3
Claims 11 and 14 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Yasukawa.1,2
Claims 12 through 14 stand rejected under 35 U.S.C. § 103
as being unpatentable over Yasukawa in view of Church and
Mohiuddin.
The full text of the examiner's rejections and response
to the arguments presented by the appellant appears in the
answer (Paper No. 20), while the complete statement of the
appellant’s arguments can be found in the main and reply
briefs (Paper Nos. 19 and 21, respectively).
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant’s specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the
Appeal No. 1999-2242
Application No. 08/137,056
4
examiner. As a consequence of our review, we have made the
determinations which follow.
The 35 U.S.C. § 102(b) rejection
Initially, we note that at page 5 of the main brief, the
appellant has identified claims 11 through 14 as a single
group and that the patentability of claims 11 and 14 has not
been separately argued. Accordingly, we select claim 14 for
review and claim 11 will stand or fall with representative
claim 14. See 37 CFR § 1.192(c)(7).
Claim 14 is a product-by-process claim. The lack of
physical description in a claim of this type makes the
determination of the patentability of the claim more
difficult, since in spite of the fact that the claim may
recite only process limitations, it is the patentability of
the product claimed and not of the recited process steps which
must be established. As stated by the Court in In re Brown,
459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972)
. . . when the prior art discloses a product which
reasonably appears to be either identical with or
only slightly different than a product claimed in a
product-by-process claim, a rejection based
alternatively on either section 102 or section 103
of the statute is eminently fair and acceptable. As
a practical matter, the Patent Office is not
equipped to manufacture products by the myriad of
Appeal No. 1999-2242
Application No. 08/137,056
5
processes put before it and then obtain prior art
products and make physical comparisons therewith.
Yasukawa discloses a method of making a windshield wiper
comprising (1) forming a starting article from a mixture of an
elastomer, e.g., a natural or synthetic rubber (see col. 3,
ll. 58-68), and a vulcanization agent, e.g., sulfur, (2)
coating the starting article with a dispersion liquid
comprising a mixture of elastomer, solvent,
polytetrafluoroethylene (hereinafter “PTFE”) (see col. 4, ll.
10 and 11 and col. 9, TABLE, Sample No. 6) and a vulcanization
agent, (3) placing the coated starting article into a
windshield wiper mold, and (4) vulcanizing the coated starting
article by applying heat and pressure to the mold. See, e.g.,
col. 7, ll. 32 through col. 8, l. 17. Yasukawa teaches that
the starting article may be coated with the dispersion liquid
by dipping, brushing or spraying (see col. 7, ll. 3-10).
Yasukawa also teaches that the elastomer used in the
dispersion liquid may be any elastomer which is able to be
bonded to the starting article (see col. 6, ll. 31-35).
The windshield wiper product produced by the method
taught by Yasukawa comprises a base or body portion 82 and a
lip or sliding portion 81 having a surface layer 51 made up of
Appeal No. 1999-2242
Application No. 08/137,056
6
more than 50% by volume of lubricant (e.g., PTFE) and being
integrally bonded to the sliding portion 81 and is described
as having excellent durability and a low coefficient of
friction. See “Abstract.”
The examiner determined (answer, p. 4) that Yasukawa
discloses a product which reasonably appears to be identical
with the product claimed in appealed claim 14. We agree. The
end product of the method recited in appealed claim 12 is an
elastomer windshield wiper having a PTFE coated blade portion.
Likewise, the end product of the method disclosed by Yasukawa
is an elastomer windshield wiper having a lip or sliding
portion 81 with a surface layer 51 of PTFE. Thus, in our
opinion, it was reasonable for the examiner to conclude that
the prior art discloses a product which is identical with the
product claimed in product-by-process claim 14.
Once the examiner provides a rationale tending to show
that the claimed product appears to be the same or similar to
that of the prior art, although produced by a different
process, the burden shifts to the appellant to come forward
with evidence establishing an unobvious difference between the
claimed product and the prior art product. In re Marosi, 710
Appeal No. 1999-2242
Application No. 08/137,056
The reply brief (p. 2) clarifies that the “transient3
release agent” referred to in the main brief is the TEFLON or
PTFE overcoat.
7
F.2d 799, 803, 218 USPQ 289, 292-293 (Fed. Cir. 1983). Our
review of the record reveals that the appellant has not
advanced any objective evidence or compelling line of
reasoning which establishes that there is a meaningful
difference.
The only argument specifically directed to the 35 U.S.C.
§ 102 rejection of claims 11 and 14 is found at page 6 of the
main brief, namely, that the appellant’s windshield wiper is
made by a one step molding of a heat curable rubber mixture
which has
been surface treated prior to cure with a “transient release
agent” and does not require a subsequent integral press3
forming step to form the wiper.
Frankly, we are not certain what the appellant means by
the language “one step molding” or how this language
distinguishes the appellant’s windshield wiper from the
windshield wiper taught by Yasukawa. We remind the appellant
that appealed claim 14 is directed to a windshield wiper,
Appeal No. 1999-2242
Application No. 08/137,056
8
i.e., a product, not to a process of making a windshield
wiper. Thus, even if differences do exist between the process
recited in appealed claim 12 and the prior art process, it
does not necessarily follow that differences exist between a
product made by the process of appealed claim 12 and a product
made by the prior art process.
The arguments presented in the main brief beginning on
page 5 and continuing to page 6, line 13, are not directed to
any
particular claim or rejection, but to the extent that they
apply to the § 102(b) rejection of claims 11 and 14, the
arguments are not persuasive.
The appellant first argues (main brief, p. 5) that there
is no teaching in the cited references of a permanent TEFLON
(PTFE) coating on the inside surface of the windshield wiper
mold. We acknowledge, as does the examiner (see answer, p.
6), that Yasukawa does not teach a permanent PTFE coating on
the inside surface of the windshield wiper mold illustrated in
Figure 2. However, claim 14 is directed to a windshield
wiper, not to a process of making a windshield wiper or to a
mold used in such a process. Thus, even if differences do
Appeal No. 1999-2242
Application No. 08/137,056
9
exist between the process of making a windshield wiper or to
the mold used in such a process, it does not necessarily
follow that differences exist between a product made using a
mold having a permanent PTFE coating on the inside surface
thereof and a product made by the prior art process taught by
Yasukawa.
The appellant next argues (main brief, p. 5) that he has
found that enhanced penetration of a release agent into the
surface of the wiper as it forms during molding can be
achieved by having in place, prior to molding, an additional
release agent between the surface of the permanent PTFE
coating on the mold and the exterior surface of the uncured
rubber mixture. However, the appellant has not identified
this “enhanced penetration” as constituting a distinction over
the applied prior art. Further, the appellant has not
submitted any objective evidence to support the allegation
regarding “enhanced penetration.” In this regard, it is well
settled that the arguments of counsel in a brief cannot take
the place of evidence in the record. In re Pearson, 494 F.2d
1399, 1405, 181 USPQ 641, 646 (CCPA 1974).
Appeal No. 1999-2242
Application No. 08/137,056
10
Finally, the appellant argues (main brief, p. 6) that
Yasukawa’s method for making the wiper blade requires the
simultaneous cure of two separate and different EPDM mixtures.
We disagree. The disclosed examples and preferred embodiments
set forth in Yasukawa do not constitute the entire disclosure
of the reference. As previously indicated, supra, Yasukawa
also teaches that the elastomer present in the dispersion
liquid may be any elastomer having the ability to be bonded to
the starting article. Further, the presence of EPDM in the
layer 51, which layer also includes more than 50% by volume of
PTFE, does not distinguish the PTFE coating on the surface of
the appellant’s wiper blade portion from the layer 51 on the
blade portion of Yasukawa’s windshield wiper. Claim 12 calls
for “a transferable
overcoat of polytetrafluoroethylene.” The language is open-
ended and includes within its scope overcoats of PTFE and
other components, e.g., EPDM.
Accordingly, we will sustain the examiner's rejection of
claim 14 under 35 U.S.C. § 102(b). Since claim 11 stands or
falls with claim 14, supra, we will also sustain the
Appeal No. 1999-2242
Application No. 08/137,056
11
examiner's rejection of claim 11 under 35 U.S.C. § 102(b).
The 35 U.S.C. § 103(a) rejection
We have indicated above that we will sustain the
examiner’s rejection of claim 14 under 35 U.S.C. § 102(b) as
being anticipated by Yasukawa. Thus, we find the examiner's
use of the Church and Mohiuddin patents to be mere surplusage
and sustain the § 103(a) rejection of claim 14 on the basis of
Yasukawa alone, noting that anticipation or lack of novelty is
the epitome of obviousness. Jones v. Hardy, 727 F.2d 1524,
1529, 220 USPQ 1021, 1025 (Fed. Cir. 1984). See also In re
Fracalossi, 681 F.2d 792, 794, 215 USPQ 569, 571 (CCPA 1982);
In re Pearson, 494 F.2d 1399, 1402, 181 USPQ 641, 644 (CCPA
1974).
Claims 12 and 13 are grouped by the appellant with claim
14, supra. Accordingly, claims 12 and 13 fall with claim 14.
See
37 CFR § 1.192(c)(7).
In addition, even if it is assumed for the sake of
argument that claim 14 is not anticipated by Yasukawa, we have
considered the collective teachings of Yasukawa, Church and
Appeal No. 1999-2242
Application No. 08/137,056
12
Mohiuddin and agree with the examiner that the invention set
forth in claims 12 through 14 would have been obvious to one
of ordinary skill in the art at the time of the appellant’s
invention.
The test for obviousness is what the combined teachings
of the references would have suggested to one of ordinary
skill in the art. See In re Young, 927 F.2d 588, 591, 18
USPQ2d 1089, 1091 (Fed. Cir. 1991) and In re Keller, 642 F.2d
413, 425, 208 USPQ 871, 881 (CCPA 1981).
The teachings of Yasukawa have been set forth above.
Church discloses a method of molding rubber articles in
which the press components, e.g., the bottom surface 23 of
plunger 7 and the interior walls of cavity 5, which contact an
uncured rubber charge, are coated with TEFLON (PTFE) to
provide a generally permanent non-sticking coating thereto.
According to Church, the permanent PTFE coating eliminates the
use of mold release material during each molding operation and
its resultant cost and contamination of the rubber charge.
See col. 6, ll. 17-28 and claim 4.
Mohiuddin discloses a method for producing a molded
plastic part comprising a plastic substrate and a firmly
Appeal No. 1999-2242
Application No. 08/137,056
13
adherent coating thereon, which creates a smooth, unblemished,
uniform and firmly adherent coating on the molded part and
substantially reduces the number and cost of post-molding
operations. See col. 1, ll. 48-58. The disclosed method
includes the steps of coating the surface of a mold, prior to
molding the plastic part, with a coating composition
containing a reaction promoter for the reactive plastic
molding material, introducing the reactive plastic molding
material into the mold, the reaction promoter being present in
an amount sufficient to transfer the coating
composition from the mold surface and bond it to the substrate
formed by the reactive molding material, molding the part and
removing the part from the mold. Id. at ll. 25-36. Mohiuddin
specifically teaches that the coating composition may be
applied to the mold surface by spraying. See col. 2, ll. 2-5.
Based on our review of the applied prior art, it appears
that the differences between the method recited in appealed
claim 12 and that disclosed in Yasukawa are that Yasukawa’s
disclosed method does not include a permanent PTFE coating on
Appeal No. 1999-2242
Application No. 08/137,056
14
the inside surface of the windshield wiper mold and Yasukawa
coats the
starting material (corresponding to the “heat curable rubber
mix” of claim 12) with the PTFE “overcoat,” rather than the
inner surface of the mold.
With regard to these differences, the examiner determined
(answer, pp. 5 and 6) that
[i]t would have been obvious . . . to provide the
mold of Yasukawa with a permanent coating of TEFLON
therein, as clearly suggested by Church, to provide
permanent non-stick properties to the mold and thus
eliminate possible sticking to the mold as well as
eliminate the need for a spray release
and
[i]t would have been obvious . . . to spray coat the
modified mold of Yasukawa instead of dipping the
body to be molded, as clearly suggested by
Mohiuddin, to provide for a more uniform coating of
the wiper blade.
The appellant argues (main brief, pages 7 and 8) that
neither Church nor Mohiuddin would have suggested to the
artisan the treatment of a permanent release coating (the
claimed permanent PTFE coating) with an additional “transient
release agent” (the claimed transferable overcoat of PTFE)
prior to the introduction of the curable mixture into the
mold.
Appeal No. 1999-2242
Application No. 08/137,056
15
We find the appellant's argument unpersuasive for the
following reason. The appellant's argument is not based upon
the rejection before us. Claim 12 has been rejected based on
the combined teachings of Yasukawa, Church and Mohiuddin. The
appellant has argued that claim 12 is not rendered obvious
from the individual teachings of Church and Mohiuddin. The
appellant has not provided any argument as to why the
rejection under
35 U.S.C. § 103 before us in this appeal based upon the
combined teachings of Yasukawa, Church and Mohiuddin is in
error. Nonobviousness cannot be established by attacking the
references individually when the rejection is predicated upon
a combination of prior art disclosures. See In re Merck &
Co., Inc., 800 F.2d 1091, 1097, 231 USPQ 375, 380 (Fed. Cir.
1986).
For the reasons set forth above, we will sustain the
examiner’s rejection of claims 12 through 14 under 35 U.S.C.
§ 103(a) as being unpatentable over Yasukawa in view of Church
and Mohiuddin.
CONCLUSION
Appeal No. 1999-2242
Application No. 08/137,056
16
To summarize, the decision of the examiner to reject
claims 11 and 14 under 35 U.S.C. § 102(b) is affirmed and the
decision of the examiner to reject claims 12 through 14 under
35 U.S.C.
§ 103(a) is affirmed.
Appeal No. 1999-2242
Application No. 08/137,056
17
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
Ian A. Calvert )
Administrative Patent Judge )
)
)
)
Harrison E. McCandlish, Senior ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
John F. Gonzales )
Administrative Patent Judge )
JFG:tdl
Appeal No. 1999-2242
Application No. 08/137,056
18
Arlen L. Olsen
Schmeiser, Olsen & Watts
3 Lear Jet Lane, Suite 201
Latham, NY 12110