Ex parte VAN HAAG

Board of Patent Appeals and Interferences

Jan 28, 2002

08879140 (B.P.A.I. Jan. 28, 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for publication and is not binding precedent of the Board.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. 30
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ROLF VAN HAAG
____________
Appeal No. 2001-1088
Application No. 08/879,140
____________
HEARD: January 10, 2002
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Before FRANKFORT, STAAB, and NASE, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 to 32, which are all of the claims
pending in this application.
We REVERSE.
BACKGROUND
Appeal No. 2001-1088 Page 2
Application No. 08/879,140
In determining the teachings of these four references we1
will rely on the translations of record in the application
file.
The appellant's invention relates to a roll that includes
a roll tube provided with an outer elastic coating. The
sealed interior space may include a vaporizable liquid and a
heat exchanger for cooling heat generated in the roll during
use (specification, p. 1). A copy of the claims under appeal
is set forth in the appendix to the appellant's brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Wolfgang DT 24 00 615 A1 July 17, 1975
(Wolfgang '615)
Teruhisa JP 58061318 A Apr. 12, 1983
Matsuda JP 58034999 Aug. 1983
Wolgang EP 0 567 875 A1 Nov. 3, 19931
(Wolfgang '875)
Claims 1 to 6, 10 to 15, 17, 18 and 20 to 32 stand
rejected under 35 U.S.C. § 103 as being unpatentable over
Wolfgang '875 in view of Matsuda.
Appeal No. 2001-1088 Page 3
Application No. 08/879,140
Claims 7, 8, 9 and 19 stand rejected under 35 U.S.C. §
103 as being unpatentable over Wolfgang '875 in view of
Matsuda Wolfgang '615.
Claim 16 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Wolfgang '875 in view of Matsuda and
Teruhisa.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejections, we make reference to the answer (Paper No. 21,
mailed May 17, 2000) for the examiner's complete reasoning in
support of the rejections, and to the brief (Paper No. 20,
filed March 7, 2000) and reply brief (Paper No. 23, filed July
17, 2000) for the appellant's arguments thereagainst.
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. 2001-1088 Page 4
Application No. 08/879,140
examiner. Upon evaluation of all the evidence before us, it
is our conclusion that the evidence adduced by the examiner is
insufficient to establish a prima facie case of obviousness
with respect to the claims under appeal. Accordingly, we will
not sustain the examiner's rejection of claims 1 to 32 under
35 U.S.C. § 103. Our reasoning for this determination
follows.
In rejecting claims under 35 U.S.C. § 103, the examiner
bears the initial burden of presenting a prima facie case of
obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28
USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie case of
obviousness is established by presenting evidence that would
have led one of ordinary skill in the art to combine the
relevant teachings of the references to arrive at the claimed
invention. See In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d
1596, 1598 (Fed. Cir. 1988) and In re Lintner, 458 F.2d 1013,
1016, 173 USPQ 560, 562 (CCPA 1972).
The appellant argues that the applied prior art does not
suggest the claimed subject matter. We agree.
Appeal No. 2001-1088 Page 5
Application No. 08/879,140
All the claims under appeal require a roll having an
elastic coating and either (1) a vaporizable liquid and a heat
exchanger therein (claims 1 to 21 and 32) or (2) a vaporizable
liquid therein which is vaporized and condensed therein
(claims 22 to 31). However, these limitations are not
suggested by the applied prior art. In that regard, while
Wolfgang '875 does teach a roll having a vaporizable liquid
and a heat exchanger therein (see for example the roll shown
in either Figure 1 or 2, Wolfgang '875 does not teach
providing the roll having a vaporizable liquid and a heat
exchanger therein with an elastic coating. In addition, while
Wolfgang '875 teaches rollers having rubber jackets
(translation, page 1) and Matsuda teaches a roll with rubber 8
wound on the outer surface of a cylindrical iron core 7, there
is no teaching, suggestion or incentive in the applied prior
art references for a person of ordinary skill in the art at
the time the invention was made to have provided the cooling
roll of Wolfgang '875 having a vaporizable liquid and a heat
exchanger therein with an elastic coating. In that regard, we
find ourselves in agreement with the appellant that the
addition of an elastic coating to the cooling roll of Wolfgang
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Application No. 08/879,140
'875 is contrary to the use of the roll of Wolfgang '875
(i.e., to conduct heat through the roller jacket 4 to the
vaporous liquid 7 so that the roll may be used as a cooling
roller in a paper machine).
Instead, it appears to us that the examiner relied on
hindsight in reaching his obviousness determination. However,
our reviewing court has said, "To imbue one of ordinary skill
in the art with knowledge of the invention in suit, when no
prior art reference or references of record convey or suggest
that knowledge, is to fall victim to the insidious effect of a
hindsight syndrome wherein that which only the inventor taught
is used against its teacher." W. L. Gore & Assoc. v. Garlock,
Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir.
1983), cert. denied, 469 U.S. 851 (1984). It is essential
that "the decisionmaker forget what he or she has been taught
. . . about the claimed invention and cast the mind back to
the time the invention was made . . . to occupy the mind of
one skilled in the art who is presented only with the
references, and who is normally guided by the then-accepted
wisdom in the art." Id. Since the claimed subject matter is
Appeal No. 2001-1088 Page 7
Application No. 08/879,140
We have also reviewed the references to Wolfgang '6152
and Teruhisa additionally applied in the rejection of some of
the dependent claims but find nothing therein which makes up
for the deficiencies of Wolfgang '875 and Matsuda discussed
above.
not taught or suggested by the applied prior art, we will not
sustain the 35 U.S.C. § 103 rejection of claims 1 to 32. 2
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Application No. 08/879,140
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1 to 32 under 35 U.S.C. § 103 is reversed.
REVERSED
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 2001-1088 Page 9
Application No. 08/879,140
GREENBLUM & BERNSTEIN, P.L.C.
1941 ROLAND CLARKE PLACE
RESTON, VA 20191
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Application No. 08/879,140
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