Ex Parte TOJO et al

Board of Patent Appeals and Interferences

Jan 15, 2002

08398881 (B.P.A.I. Jan. 15, 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for publication and is not binding precedent of the Board.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. 46
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte HIDEAKI TOJO, HIDEO ISHIDA, HISAHI KUROTA,
HIDEO HIROE, TAKAO ARASAWA, SATORU YAMADA,
and NOBUYUKI OKITA
____________
Appeal No. 1998-2804
Application No. 08/398,881
____________
HEARD: October 25, 2001
____________
Before HAIRSTON, LALL, and BLANKENSHIP, Administrative Patent
Judges.
LALL, Administrative Patent Judge.
Appeal No. 1998-2804
Application No. 08/398,881
There were numerous amendments after the final rejection filed as amendment1
D(paper no. 13), amendment E (paper no. 18), amendment F (paper no. 26), amendment G
(paper no. 35), amendment H (paper no. 39), amendment I (paper no. 40), and amendment
J (paper no. 42). Only amendment E, amendment I and amendment J were entered into the
record. See paper no. 19 and paper no. 43. All the other amendments after the final
This is a decision on appeal under 35 U.S.C. § 134 from the
examiner’s final rejection of claims 8-13, 17-18, 21 and 35-39,1
all the pending claims in the application.
The disclosed invention is directed to an efficient method of
forming a high quality, strippable protective film on the surface
of a sprayed coated (painted) finish of a large-sized product such
as an automobile. The strippable protective film is formed using a
strippable liquid paint, and the method may preferably be
implemented such that certain regions of the large-sized product’s
surface which need no protective film (such as windshield washer
ejecting nozzles and lens covers for exterior lights) are covered
with peelable masking materials to prevent fouling of same by the
strippable paint. The strippable paint is applied before the
automobile is shipped by the manufacturer or dealer to a
Appeal No. 1998-2804
Application No. 08/398,881
destination. At the destination the strippable paint is removed by
washing the automobile before the automobile is sold to a customer.
Further illustration of the invention can be obtained by the
following claim.
Claim 8. A method of forming a protective film on a surface of a
large-sized product finished with a sprayed coating by applying a
strippable paint to a surface of said sprayed coating, said method
comprising the steps of:
applying strippable paint to said product;
partially drying said strippable paint applied to said
product; and
then finally drying said product.
The examiner relies on the following reference:
Swidler 5,281,436 Jan. 25, 1994
Claims 8-13, 17-18, 21 and 35 to 39 stand rejected under
35 U.S.C. § 103 as being unpatentable over Swidler.2
Appeal No. 1998-2804
Application No. 08/398,881
Rather than repeat the arguments of appellants and the
examiner we make reference to the briefs and the answer for the3 4
respective details thereof.
OPINION
We have considered the rejections advanced by the examiner and
the supporting arguments. We have, likewise reviewed the
appellants’ arguments set forth in the briefs.
We affirm.
At the outset, we note that of all the issues stated on pages
8 and 9 of the brief only issue number III remains for this appeal.
Moreover, only claims 8-13, 17-18, 21 and 35-39 are left for
appeal. We will only discuss these claims in our decision. We
also note that appellants elect these claims not to stand or fall
together (brief at page 9). We will analyze the claims as
necessitated by the arguments in the brief and the reply briefs.
The examiner’s position regarding claims 8-13, 18 and 35-39 is
that Swidler teaches cleaning and applying a strippable coating to
Appeal No. 1998-2804
Application No. 08/398,881
objects such as automobiles. The examiner contends, answer at page
3, that “[w]ashing and drying are conventional means of cleaning an
automobile. Infrared and air drying are conventional methods of
drying wet articles. To use one or both to dry wet articles would
have been considered obvious....” Regarding claims 17 and 21, the
examiner again notes Swidler’s teachings as before. The examiner
further asserts, answer at page 4, that “[it] is well known to use
masking tape during painting to prevent coatings from being applied
to undesired portions and to coat only the desired portions of an
article. Thus, it would have been considered obvious ... to mask
the portions not to be coated in Swidler.”
Appellants argue, brief at page 17, that “the alleged
conventional ... washing and drying steps are not supported by any
evidence of record and are in fact taught away from by Swidler’s
actual disclosure.” Appellants continue, id., that “[a]lthough
vehicle owners may conventionally wash and dry their own vehicles
via car washes and hand washes, the Swidler’s reference does not
generally pertain to care of individual vehicles by vehicle owners,
Appeal No. 1998-2804
Application No. 08/398,881
Appellants also argue, brief at page 18, that “Swidler does
not disclose or in any [way] suggest a method in which a strippable
paint as sprayed onto the surface of a large-sized object is
preliminarily dried and then non-preliminarily dried as set forth
in independent claims 8 and 18 and dependent claim 32 (sic, 35)...,
but again Swidler teaches away from the claimed method involving
preliminary and non-preliminary (partial and final) drying steps
because Swidler simply permits the applied coating compositions to
air dry in a single, continuous step as discussed above.”
We do not agree with the appellants’ position. In their
analysis and arguments, appellants have ignored the knowledge of an
artisan relating to the art of applying a strippable paint, or
other type of paint, onto a surface. Instead, appellants have
argued against Swidler as a single reference by itself. We point
here that it has been well established that an artisan must be
presumed to know something about the art apart from what the
references disclose (see In re Jacoby, 309 F.2d 513, 516, 135 USPQ
317, 319 (CCPA 1962)) and the conclusion of obviousness may be made
Appeal No. 1998-2804
Application No. 08/398,881
those practicing in the art. See In re Sovish, 769 F.2d 738, 743,
226, USPQ 771, 774 (Fed. Cir. 1985).
We agree with the examiner that an artisan, having Swidler in
front of him and combining it with the level of knowledge in the
area of applying paints, including strippable paints, would have
found it obvious to supply the steps of preliminary drying and
final drying in the process of applying Swidler’s strippable paint
onto an automobile surface. Moreover, we note that partial drying
in claim 8 does not explicitly recite any specific time duration
for which partial drying takes place; therefore, in any assembly
line where the paint is first applied and then taken to a drying
room or area, the drying process would necessarily have a period of
time, however small, where partial drying will take place before
the main drying starts.
Regarding claim 9, (drying by infrared irradiation), claim 10
(drying by using hot air), claim 11 (drying in the environment of
temperature of 60-90°C), and claim 12 (where the strippable paint
is applied within space isolated from surroundings at a temperature
Appeal No. 1998-2804
Application No. 08/398,881
Swidler gives an example of drying the paint which is different
from the one claimed, however, Swidler does not proscribe an
artisan from drying the strippable paint by using other means which
are within common knowledge of an artisan and are equivalent to
that disclosed by Swidler.
Therefore, we sustain the obviousness rejection of claims
8-13 over Swidler.
Regarding claim 18, the recited limitation of the step of
“washing away contaminations from the surface of said sprayed
coating of said product” is added. Contrary to the appellants’
arguments, we find that an artisan, looking at the disclosure of
Swidler where Swidler teaches that the surfaces are first cleaned
off by washing (column 5, lines 39-47) before the strippable paint
is applied, would have found it obvious to use water or other
equivalent means of cleaning the surface before the strippable
paint is applied. Therefore, we sustain the rejection of claim 18.
Regarding claims 35-39, the limitation of further having the
“resulting temperatures of the surface of the large-sized product
Appeal No. 1998-2804
Application No. 08/398,881
washed with water. We, therefore, sustain the obviousness
rejection of claims 35-39 over Swidler.
Regarding claims 17 and 21, appellants argue that Swidler
teaches away from the application of masking tape to the portions
of the surfaces which are not desired to be painted. See second
reply brief at pages 2 to 4 (paper no. 29) and the third reply
brief at pages 2 to 4 (paper no. 34). We agree with appellants
that Swidler does not show the use of masking tape to prevent the
strippable paint from getting on the unwanted portions of the
surface of the object. However, Swidler does not exclude a
procedure of using masking tape to protect the unwanted portions of
the surface from the paint. In our view, to use masking tape to
prevent the painting of an unwanted portion of a surface, would
have been obvious to an artisan, rather than first painting such a
portion of the surface and then removing the paint. Therefore, we
sustain the obviousness rejection of claims 17 and 21.
In conclusion, we have sustained the obviousness rejection of
claims 8-13, 17-18, 21 and 35-39 over Swidler. Accordingly, the
Appeal No. 1998-2804
Application No. 08/398,881
No time period for taking any subsequent action in connection
with this appeal may be extended under 37 CFR § 1.136(a).
AFFIRMED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
PARSHOTAM S. LALL ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
HOWARD B. BLANKENSHIP )
Administrative Patent Judge )
Appeal No. 1998-2804
Application No. 08/398,881
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