Ex parte Smith et al.

Board of Patent Appeals and Interferences

Apr 19, 1999

08081744 (B.P.A.I. Apr. 19, 1999)

Application for patent filed June 23, 1993.1
1
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not binding precedent of the Board.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. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte ROBERT W. SMITH, DAVID S. COBBLEDICK, CHARLES S.
KAUSCH, DONALD F. REICHENBACH, SATISH C. SHARMA and RICHARD
SIMMONS
__________
Appeal No. 96-1320
Application 08/081,7441
___________
ON BRIEF
___________
Before DOWNEY, ELLIS and OWENS, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the examiner’s refusal to allow
Appeal No. 96-1320
Application 08/081,744
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claims 1, 2, 5-9 and 19 as amended after final rejection.
Claims 3 and 4 stand objected to as being dependent upon a
rejected claim, and claims 10-18 and 20-22 stand withdrawn
from consideration by the examiner as being directed toward a
nonelected invention.
THE INVENTION
Appellants’ claimed invention is directed toward a
process for decreasing paint pops and craters in a surface
coating on a molded fiber reinforced thermoset plastic part
having one or more surfaces which have been machined by
cutting or abrading. The method includes heating the part to
a temperature within a specified range, then applying a
specified liquid epoxy composition to one or more machined
surfaces of the part, and then curing the epoxy composition,
thereby reducing paint pops and craters in a surface coating
which is to be formed after the claimed process by coating the
part and heating the coated part. Claim 1 is illustrative and
reads as follows:
1. A process for decreasing defects on a molded fiber
reinforced thermoset plastic part which part is, subsequent to
being subjected to said process, surface coated and subjected
Appeal No. 96-1320
Application 08/081,744
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to an elevated temperature said defects being caused by
emanating subsurface gases, said process comprising:
first heating said molded thermoset fiber reinforced
plastic part, said part having one or more machined surfaces
formed by cutting or abrading, to a temperature of from about
120EF (49EC) to 400EF (204EC),
then applying a coating of a liquid epoxy composition to
one or more the machined surfaces of said part, wherein said
liquid epoxy composition has a Brookfield viscosity at 25EC of
less than 4,000 poise,
and thereafter allowing said liquid epoxy composition to
cure into a thermoset coating,
wherein said liquid epoxy composition comprises at least
one oligomer having two or more reactive epoxy end groups and
a hardener component reactive with said epoxy end groups, and
wherein said defects are paint pops and paint craters in
subsequently applied surface coatings.
THE REFERENCES
Smock et al. (Smock) 4,024,304 May 17,
1977 Holmes et al. (Holmes) 4,235,952 Nov.
25, 1980
THE REJECTION
Claims 1, 2, 5-9 and 19 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Holmes taken with Smock.
OPINION
We have carefully considered all of the arguments
Appeal No. 96-1320
Application 08/081,744
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advanced by appellants and the examiner and agree with
appellants that the aforementioned rejection is not well
founded. Accordingly, we do not sustain this rejection.
Holmes discloses a method for joining two fiberglass
reinforced plastic (FRP) parts such that the seam line is not
visible or is barely visible and such that a coating over the
joined parts does not have defects such as paint pops and
sinks (col. 1, lines 38-43). According to this method, the
parts are joined by use of a polyester or polyurethane
adhesive, and a cured epoxy resin/polyamide resin/amine
composition is formed
over the seam at which the parts are joined (col. 1, lines 50-
58; col. 3, lines 44-47; col. 3, line 65 - col. 4, line 17).
In an example, the adhesive used to join the parts was cured
(col. 4, lines 50-57) and then "sanded to remove the remaining
hill or rounded bond portion at the seam to obtain the best
finish so as to retain the originally desired contour and
surface finish" (col. 4, lines 61-64). A polyepoxy
resin/polyamide resin/amine composition then was applied to
the seam and was cured, cooled, and sanded to restore the
Appeal No. 96-1320
Application 08/081,744
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original contour (col. 5, lines 38-45). After a white acrylic
lacquer was applied over a sealer, the seam was nearly
invisible and did not show any sink marks or paint pops (col.
5, lines 45-54). Holmes states that "[i]nstead of sanding the
parts as described above, grinders, cutters and other devices
may be used to remove extraneous material and obtain the
desired contour, care being observed not to harm the surface
of the FRP part" (col. 6, line 66 - col. 7, line 2).
The examiner is of the view that an abraded surface as
recited in appellants’ claim 1, which is appellants’ only
independent claim, is formed during Holmes’ step of sanding
the adhesive. The examiner argues that "logically it is
unclear how an adhesive mass, as shown in Fig.1, could be
‘sanded to remove the remaining hill . . . to retain the
original contour’, with the result pictured in Fig.2, without
inherently causing some abrasion to the underlying molded
surface. Further, the admonition to take care not to harm the
surface of the FRP part supports the logic that the part is
very likely to be at least slightly abraded by the sanding"
(answer, pages 5-6).
When an examiner relies upon a theory of inherency, "the
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Application 08/081,744
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examiner must provide a basis in fact and/or technical
reasoning to reasonably support the determination that the
allegedly inherent characteristic necessarily flows from the
teachings of the applied prior art." Ex parte Levy, 17 USPQ2d
1461, 1464 (Bd. Pat. App. & Int. 1990). Inherency "may not be
established by probabilities or possibilities. The mere fact
that a certain thing may result from a given set of
circumstances is not sufficient." Ex parte Skinner, 2 USPQ2d
1788, 1789 (Bd. Pat. App. & Int. 1986).
The examiner has not provided the required evidence or
technical reasoning which reasonably shows that abrasion of
the FRP surface, which Holmes clearly indicates is to be
avoided (col. 7, lines 1-2), necessarily results from the
sanding of Holmes’ adhesive. Instead, the examiner has merely
asserted that such abrasion is possible or probable.
Smock is relied upon by the examiner for a disclosure of
preheating an FRP part so that there is less air in the part
when a sealing liquid containing suspended particles is
applied to the
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Application 08/081,744
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part (answer, page 4). The examiner has not pointed out, and
we do not find, any teaching in Smock which remedies the
aforementioned deficiency in the disclosure of Holmes.
For the above reasons, we conclude that the examiner has
not set forth a factual basis which is sufficient to support a
conclusion of obviousness of appellants’ claimed invention.
Consequently, we do not sustain the examiner’s rejection.
DECISION
The rejection of claims 1, 2, 5-9 and 19 under 35 U.S.C.
§ 103 as being unpatentable over Holmes taken with Smock is
reversed.
REVERSED
)
MARY F. DOWNEY )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOAN ELLIS )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
TERRY J. OWENS )
Appeal No. 96-1320
Application 08/081,744
8
Administrative Patent Judge )
TJO/pgg
Steven L. Permut
Post Office Box 4390
Troy, Michigan 48099