Ex parte Weinberg

Board of Patent Appeals and Interferences

Aug 31, 2001

08052671 (B.P.A.I. Aug. 31, 2001)

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publication and is not binding precedent of the Board.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. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte MARTIN WEINBERG

_____________
Appeal No. 1998-0215
Application No. 08/052,671
______________
ON BRIEF
_______________
Before PAK, TIMM, and PAWLIKOWSKI, Administrative Patent
Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134
from the examiner’s refusal to allow claims 1 through 4 and
18, which are all of the claims pending in the above-
identified application.
APPEALED SUBJECT MATTER
Appellant states that “[t]he claims all stand or fall
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2
together.” See Brief, page 3. However, appellant also
provides
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substantive arguments for the separate patentability of the
subject matter recited in claims 4 and 18 in response to the
examiner’s separate rejections of the same. Compare Answer,
pages 3-5, with Brief, page 8 and Reply Brief, page 6. Under
these circumstances, we interpret appellant’s above statement
to mean that the claims in each rejection stand or fall
together. Therefore, for purposes of this appeal, we will
consider the propriety of the examiner’s rejections of claims
1, 4, and 18 consistent with 37 CFR § 1.192(c)(7)(1997).
Claims 1, 4, and 18 are reproduced below:
1. An electrical insulating material in sheet or tape
form, said material having a woven fiberglass cloth
component and a heat-bondable component consisting
essentially of a thermoplastic resin, said resin having a
melting point of less than about 525 degrees F, and said
resin being bonded to the fiberglass strands and being
present in amounts operable to bond overlapping knuckles
of the woven fiberglass together, and to prevent
significant fraying of cut edges of said sheet or tape,
and to form a remeltable and resolidifiable bondable
thermoplastic surface on the cloth.
4. The insulating material of Claim 3 further comprising
a surfactant saturating the cloth component fiberglass
strands to enhance the bond between the resin and the
fiberglass strands.
18. An electrical insulating material in sheet or tape
form, said material having a woven cloth component which
includes fiberglass strands, and a bondable component
consisting essentially of polyethylene terephthalate
Appeal No. 1998-0215
Application No. 08/052,671
Our reference to the published Kokai Japanese1
application is to the corresponding English translation of
record.
The examiner refers to it as “Nihon Radiator” at page 22
of the Answer.
The examiner has withdrawn § 112 rejections set forth in3
the final Office action dated March 3, 1994 (Paper No. 6) and
the first Supplemental Examiner’s Answer dated August 8, 1996
(Paper No. 16), respectively. See page 2 of the Answer dated
September 18, 1995 (Paper No. 13) and page 1 of the second
Supplemental Examiner’s Answer dated July 8, 1997 (Paper No.
4
glycol thermoplastic resin, said resin being bonded to
the fiberglass strands and being present in amounts
operable to bond overlapping knuckles of the woven
fiberglass together, and to prevent significant fraying
of cut edges of said sheet or tape, and to form a
remeltable and resolidifiable bondable thermoplastic
surface on the cloth.
PRIOR ART
In support of her rejections, the examiner relies on the
following prior art references :1
Pedlow 4,018,962 Apr. 19,
1977
Wade, Jr. et al. (Wade) 4,761,520 Aug. 2,
1988
Mater et al. (Mater) 5,118,558 Jun. 2,
1992
Yoshimi et al. (Yoshimi ) 63-7602 Jan. 13, 19882
(published Japanese Kokai Patent Application)
REJECTION
The appealed claims stand rejected as follows:3
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Application No. 08/052,671
18). The examiner has also withdrawn the § 102 rejection of
claims 1 and 3 as anticipated by Yoshimi newly set forth in
the Answer. See page 2 of the first Supplemental Examiner’s
Answer.
5
1) Claims 1 through 3 under 35 U.S.C. § 102(b) as
anticipated by or, in the alternative, 35 U.S.C. § 103 as
unpatentable over the disclosure of Pedlow;
2) Claim 4 under 35 U.S.C. § 103 as unpatentable over
the disclosure of Pedlow;
3) Claim 18 under 35 U.S.C. § 103 as unpatentable over
the combined disclosures of Pedlow and Mater;
4) Claims 1 through 4 under 35 U.S.C. § 103 as
unpatentable over the disclosure of Wade;
5) Claim 18 under 35 U.S.C. § 103 as unpatentable over
the combined disclosures of Wade and Mater;
6) Claims 1 and 3 under 35 U.S.C. § 102(b) as
anticipated by or, in the alternative, 35 U.S.C. § 103 as
unpatentable over the disclosure of Yoshimi; and
7) Claims 4 and 18 under 35 U.S.C. § 103 as
unpatentable over the disclosure of Yoshimi.
OPINION
We have carefully reviewed the claims, specification, and
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applied prior art, including all of the arguments advanced by
both the examiner and appellant in support of their respective
positions. As a result of this review, we affirm only the
following examiner’s rejections:
1) The rejection of claims 1 through 3 under § 102(b) as
anticipated by, or in the alternative under 35 U.S.C. § 103 as
unpatentable over, the disclosure of Pedlow; and
2) The rejection of claims 1, 3, and 4 under 35 U.S.C. §
103 as unpatentable over the disclosure of Yoshimi. Our
reasons for this determination follow.
REJECTION BASED ON PEDLOW
As evidence of obviousness of the subject matter defined
by claims 1 through 3 under 35 U.S.C. § 103, the examiner
relies on the disclosure of Pedlow. Appellant acknowledges
(Brief, page 5) that:
The Pedlow tape includes a fabric base sheet 102 which
may be woven glass (Col. 6, line 26). This woven glass
sheet 102 has a resinous base flexible coating 104
applied thereto. The resinous base coating is a
thermoplastic which may be fluid at ambient temperatures
(Col. 2, lines 67-68); or it may be solid at ambient
temperatures and plasticized to melt at temperatures
below about 300 degrees C (Col[.] 3, lines 1-2). The
thermoplastic coating has incorporated therein a high
melting point fiber substance. The thermoplastic coating
also has incorporated therein intumescing or heat
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foamable substances, which, upon heat activation, under
high temperature such as fire, or arcing conditions, tend
to flame and fire-proof the insulating tape (Col[.] 2,
lines 43-55). When the tape is exposed to temperatures
above about 350 degrees C., a foamy charred residue of
the thermoplastic resin results (Col. 2, lines 57-58).
However, appellant argues that the phrase “a heat-
bondable component consisting essentially of a thermoplastic
resin” recited in claim 1 precludes the presence of the high
melting
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It appears that appellant erroneously states that the4
phrase “consisting essentially of” precludes those materials
which materially affect the basic and novel characteristics of
the invention described in the prior art, i.e., Pedlow. See
Brief, page 5.
8
fiber and intumescing substances described in Pedlow. See,
e.g., Brief, page 5 and Reply Brief, page 2. However, we are
not persuaded by this argument.
We note that this phrase only limits the claimed heat-
bondable component to a thermoplastic resin and other
substances that do not materially affect the basic and novel
characteristics of the claimed invention. See In re4
Janakirama-Rao, 317 F.2d 951, 954, 137 USPQ 893, 896 (CCPA
1963). The claimed electrical insulation material itself,
however, does not exclude those additional substances which
affect its basic and novel characteristics. In re Herz, 537
F.2d 549, 551-52, 190 USPQ 461, 463 (CCPA 1976)(“It is
axiomatic that claims are given their broadest reasonable
construction consistent with the specification. [Citation
omitted.] This complements the statutory requirement for
particularity and distinctness (35 U.S.C. [§] 112, second
paragraph), so that an applicant who has not clearly limited
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his claims is in a weak position to assert a
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10
narrow construction.”) The transitional phrase “consisting
essentially of” is not used in the context of the claimed
electrical insulation material.
As pointed out by appellant (e.g., Brief, page 5 and
Reply Brief, page 2), Pedlow describes an electrical
insulation material which includes, inter alia, high melting
point fiber and intumescing substances. However, these
substances are not employed as heat-bondable components. See
also Reply Brief, page 2. Rather, Pedlow uses thermoplastic
resins as heat-bondable components (component bondable to
woven glass upon heating). See column 6. Thus, we do not
agree with appellant that the phrase in question precludes the
presence of the high melting point fiber and intumescing
substances described in Pedlow.
Even if we were to interpret the phrase in question as
limiting the resulting thermoplastic coating (not the claimed
heat-bondable component) as consisting essentially of a
thermoplastic resin, our conclusion would not be altered. In
this regard, it is important to note that appellant has the
burden of showing that the high melting point fiber and
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intumescing substances described in Pedlow materially affect
the basic and novel characteristics of the claimed invention.
In re De Lajarte, 337 F.2d 870, 874, 143 USPQ 256, 258 (CCPA
1964). However, appellant has not proffered any objective
evidence showing that the presence of these substances
materially affects the electrical insulation property of the
claimed electrical insulation materials. See Brief and Reply
Brief in their entirety. The fact that these substances can
improve the fireproofing and non-flow properties of the
claimed electrical insulation material does not support
appellant’s contention that they materially affect the claimed
electrical insulation material. See, e.g., Herz, 537 F.2d at
551-52, 190 USPQ at 463.
Appellant argues that “the Pedlow reference does not
suggest the use of a thermoplastic resin that is remeltable
and resolidifiable to form a bondable surface on the
fiberglass component of the fireproofing tape.” See, e.g.,
Brief, page 5. In support of this argument, appellant refers
to column 2, lines 55-60, of Pedlow, which relates the
property of the insulation tape composition under the high
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arcing or applied fire temperature above about 350 C. Thiso
position, however, is without merit.
We find that Pedlow states (column 2, lines 19-35 and 55-
60) that:
One primary difficulty of ordinary insulating tape
having a low melting resin base, such as polyvinyl
chloride plastisol, most conveniently used, and even
other low melting thermoplastics is that the resin melts
and flows away under the applied heat, and will not
therefore, protectively insulate the site where it is
needed. The present fireproofing tape, while using an
easy flowing and easily applied thermoplastic resinous
composition, includes a heat resistant fiber distributed
therein which both inhibits the resin from flowing away
from the site of high heat, but also includes
fireproofing and intumescing substances which foam and
release fireproofing vapors, so that both serve to
restrain the composition from flowing under heat. Under
the flaming or arcing heat it chars to a heat insulating
coating fixed protectively about the lead cable usually
to be protected.
. . . .

. . . . The insulating tape composition is
converted at the high arcing or applied fire temperatures
above about 350 C to a foamy charred residue of theo
thermoplastic resin, which remains as a protective
charred and foamy thick insulating coating upon the
cable.
The above-mentioned low melting thermoplastics include
polyethylene, polypropylene, and polyvinyl chloride. Compare
appellant’s preferred polypropylene resin in claim 3 with
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Pedlow, column 1, lines 59-64. These thermoplastics, even
after being homogeneously mixed with heat stabilizers, are
soft at a temperature of 150 C to 300 C. See Pedlow, column 6,o o
lines 39-60. To firmly bond the thermoplastics to the
fiberglass cloth, thermoplastics are heated at a temperature
of thermoplasticity. See column 7, lines 1-10.
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Given the above teachings, it is reasonable to conclude
that the claimed “remeltable and resolidifiable bondable
thermoplastic surface on the cloth” embraces Pedlow’s
thermoplastic resin having at least one surface thermally
bonded to a fiberglass cloth. Although Pedlow’s flowable
thermoplastic resin can be converted to a foamy charred
residue at a temperature above
662 F (350 C), there is ample evidence that it is “remeltableo o
and resolidifiable” at a temperature between 150 and 300 C aso
indicated supra.
Appellant argues that “the Pedlow reference provides
absolutely no suggestion that [its] thermoplastic resin must
be present in amounts operable to bond overlapping knuckles of
the woven fiberglass [cloth] . . . . ” See Brief, page 5.
However, as is apparent from Pedlow’s Figure 1, Pedlow’s
thermoplastic coating fully envelops and bonds the entire
upper surface of a woven fiberglass cloth. Thus, we agree
with the examiner that Pedlow necessarily employs a
thermoplastic resin in the claimed amounts, i.e., amounts
sufficient to cover the entire surface, including knuckles, of
the claimed woven fiberglass cloth.
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Even if we agreed with appellant that Pedlow does not
necessarily employ the thermoplastic resin in the claimed
amounts, it would have been at least obvious to one of
ordinary skill in the art to employ the thermoplastic resin in
sufficient amounts to overlap and bond the entire surface of a
woven fiberglass cloth and to prevent significant fraying of
cut edges. The suggestion can be derived from the readily
recognizable and observable problems associated with
significant fraying of cut edges and insufficient bonding.
Moreover, to use the thermoplastic resin as the primary
electrical insulation material as taught by Pedlow, one of
ordinary skill in the art would have been led to use the
thermoplastic in amounts sufficient to cover the entire
surface of a woven fiberglass cloth in a sufficient thickness
for bonding and preventing fraying of cut edges.
In view of the foregoing, we concur with the examiner
that the claimed subject matter as a whole is anticipated by,
or in the alternative would have been obvious over, the
disclosure of Pedlow. Hence, we affirm the examiner’s
decision rejecting claims 1 through 3 under 35 U.S.C. § 102 as
anticipated by, or in the alternative under 35 U.S.C. § 103 as
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16
unpatentable over, the disclosure of Pedlow.
However, the examiner’s § 103 rejection of claim 4 as
unpatentable over the disclosure of Pedlow stands on a
different footing. As acknowledged by the examiner (Answer,
page 3),
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Pedlow does not teach using a surfactant on the cloth prior to
applying a thermoplastic coating. The examiner, however,
asserts (Id.) that:
Such a modification would have been suggested
by the reasoned motivation that such a material
would provide good wetting of the cloth by the
resin and form a more stable laminate.

This assertion is not supported by any objective evidence
relied upon by the examiner. Under these circumstances, we
are constrained to reverse the examiner’s § 103 rejection of
claim 4 as unpatentable over the disclosure of Pedlow.
REJECTION BASED ON PEDLOW AND MATER
As evidence of obviousness of the subject matter defined
by claim 18 under 35 U.S.C. § 103, the examiner relies on the
combined teachings of Pedlow and Mater. See Answer, page 3.
The examiner recognizes that Pedlow does not teach using PETG
as a thermoplastic insulation material. Id.
To remedy this deficiency, the examiner relies on the
disclosure of Mater. See Answer, pages 3 and 4. However,
Mater does not indicate that PETG is useful as an electrical
insulation material. See Mater in its entirety. Since, on
this record, the examiner has not demonstrated that PETG is
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useful as an electrical insulation material, we find no
suggestion to employ PETG in the thermoplastic coating of the
electrical insulation material of the type described in
Pedlow. Accordingly, we reverse this § 103 rejection as well.
REJECTION BASED ON WADE ALONE OR IN COMBINATION WITH MATER
We reverse the examiner’s § 103 rejection of claims
1 through 4 as unpatentable over the disclosure of Wade for at
least one reason expressed by appellant at page 10 of the
Brief. We find that Wade describes wrapping woven glass
fibers in tape form with a multi-layer polyester tape
material. See column 2, lines 42-54. To properly fuse the
polyester tape material to the woven glass fibers, however,
the amorphous layer of the polyester facing the glass fibers
is converted to crystalline. See column 3, lines 17-25.
According to appellant (Brief, page 10), the crystalline
layer of the polyester tape bonded to the woven glass fibers
“will not remelt and resolidify . . . ” as required by the
claims on appeal. The examiner has not disputed this
assertion. See Answer, page 7. Thus, we are constrained to
agree with appellant that the examiner has not established a
prima facie case of obviousness within the meaning of 35
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U.S.C. § 103.
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We also reverse the examiner’s § 103 rejection of claim
18 as unpatentable over the combined disclosures of Wade and
Mater for the reasons indicated above.
REJECTION BASED ON YOSHIMI
As evidence of obviousness of the subject matter defined
by claims 1 and 3 under 35 U.S.C. § 103, the examiner relies
on the disclosure of Yoshimi. We find that Yoshimi discloses
a disk type insulating material for conductive flat coils.
See pages
2 and 3. We find that the disk-type insulating material is
formed by impregnating either one or both sides of a glass
fiber woven fabric with a heat resistant thermoplastic resin
film by thermocompression bonding. See pages 2 and 7. The
heat resistant thermoplastic resin includes, inter alia,
aromatic polyester, polyphenylene sulfide, and polyether
sulfone. See page 5. We find that appellant acknowledges
that the melting points of polyphenylene sulfide and polyether
sulfone are 527 F and 509 F, respectively, which are eithero o
close to or within the claimed melting point requirement. See
Reply Brief, page 5, together with claim 1. We also find that
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appellant does not argue that Yoshimi does not teach or
suggest using the heat-resistant thermoplastic resin in the
claimed amounts (amounts sufficient to “bond overlapping
knuckles of the woven fiberglass together, and to prevent
significant fraying of cut edges of said sheet or tape . . . .
”) See Brief and Reply Brief in their entirety. We find that
appellant does not argue that the heat-resistant thermoplastic
resin surface bonded to the glass fiber woven fabric is not
“remeltable [or] resolidifiable”. Id.
Given the above circumstances, we agree with the examiner
that Yoshimi would have at least rendered the subject matter
of claims 1 and 3 obvious to one of ordinary skill in the art
within the meaning of 35 U.S.C. § 103. Hence, we affirm the
examiner’s § 103 rejection of claims 1 and 3 as unpatentable
over the disclosure of Yoshimi.
With respect to claim 4, we find that Yoshimi teaches a
silane coupling agent, such as N,N-bis($-hydroxyethyl)-(-
aminopropyltriethoxysilane, is mixed into the heat resistant
thermoplastic resin to improve adhesion between the heat
resistant thermoplastic resin film and the glass fiber woven
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fabric. See page 5. The examiner implies that this silane
coupling agent corresponds to the claimed surfactant (silane).
See Answer, page 5. Relying on this implication, the examiner
concludes (Id.) that:
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The reference does suggest inclusion of a surfactant
in the resin, and as such would have suggested
to the skilled artisan that the cloth [would] be
saturated.
Appellant does not dispute the above finding and
conclusion set forth by the examiner. See Reply Brief, page
6. Appellant only argues that the claimed melting point
limitation is not taught by Yoshimi. Id. However, as
indicated supra, we find that Yoshimi teaches at least one
heat-resistant thermoplastic resin having the claimed melting
point. Accordingly, we affirm the examiner’s § 103 rejection
of claim 4 as unpatentable over the disclosure of Yoshimi.
With respect to claim 18, the examiner takes the position
(Answer, page 5) that
the use of any known thermoplastic of the type
suggested by the reference, including PETG
would have been obvious to the skilled artisan as the
use of known, commercially available materials of
the type suggested by the reference.
As argued by appellant (Reply Brief, page 6), we find no
teaching or suggestion that polyethylene terephthalate glycol
(PETG) is useful for the purpose mentioned in Yoshimi. Thus,
we agree with appellant that the examiner has not established
a prima facie case of obviousness regarding the claimed
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subject matter, for there is no suggestion to employ PETG as
the heat resistant thermoplastic of Yoshimi’s device.
Accordingly, we reverse the examiner’s § 103 rejection of
claim 18 as unpatentable over the disclosure of Yoshimi.
As a final point, we note that Yoshimi teaches that its
heat-resistant thermoplastic resin film can be adhered to one
side of the woven fiberglass fabric. See page 2. Thus, in
the event of further prosecution, the examiner is advised to
include claim 2 in her § 103 rejection based on Yoshimi.
We also note that Kirk-Othmer Encyclopedia of Chemical
Technology, Vol. 13 (3 ed., John Wiley & Sons 1981), a copyrd
of which is attached herewith, describes “remeltable and
resolidifiable” thermoplastic resins, such as polyester and
epoxy resins, impregnated on a reinforcing web consisting of
fiberglass. See pages 558-59. Thus, in the event of further
prosecution, the examiner is also advised to review this
literature and determine whether it affects the patentability
of the claimed subject matter.
In summary,
(1) the §§ 102 or 103 rejection of claims 1 through 3
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over the disclosure of Pedlow is affirmed;
(2) the § 103 rejection of claim 4 over the disclosure of
Pedlow is reversed;
(3) the § 103 rejection of claim 18 over the combined
disclosures of Pedlow and Mater is reversed;
(4) the § 103 rejection of claims 1 through 4 over the
disclosure of Wade is reversed;
(5) the § 103 rejection of claim 18 over the combined
disclosures of Wade and Mater is reversed;
(6) the § 103 rejection of claims 1, 3, and 4 over the
disclosure of Yoshimi is affirmed; and
(7) the § 103 rejection of claim 18 over the disclosure
of Yoshimi is reversed.
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Accordingly, the decision of the examiner is affirmed-in-
part.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
CHUNG K. PAK )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CATHERINE TIMM ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
BEVERLY A. PAWLIKOWSKI )
Administrative Patent Judge )
CKP:hh
Appeal No. 1998-0215
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WILLIAM W. JONES
PATENT COUNSEL
6 JUNIPER LANE
MADISON, CT 06443