Ex Parte Kawka et alDownload PDFBoard of Patent Appeals and InterferencesJul 31, 200710261862 (B.P.A.I. Jul. 31, 2007) Copy Citation The opinion in support of the decision being entered today is not binding precedent of the Board. UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte DARIUSZ WLODZIMIERZ KAWKA, DAVID WAYNE ANDERSON and MICHAEL JOSEPH BROWN ____________________ Appeal 2007-2181 Application 10/261,8621 Technology Center 1700 ____________________ Decided: July 31, 2007 ____________________ Before TEDDY S. GRON, CAROL A. SPIEGEL and MARK NAGUMO, Administrative Patent Judges. SPIEGEL, Administrative Patent Judge. DECISION ON APPEAL I. Introduction Dariusz Wlodzimierz Kawka, David Wayne Anderson and Michael Joseph Brown (hereinafter "Appellants") seek our review under 35 U.S.C. 1 The Application on appeal was filed October 1, 2002. The real party-in- interest is said to be E.I. du Pont de Nemours and Company. Appeal 2007-2181 Application 10/261,862 § 134(a) of the Examiner's final rejection of claims 1-13 and 16-20. Claims 14 and 15, the only other pending claims in this Application, have been withdrawn from consideration as being directed to a non-elected invention. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. A. The invention Appellants' invention is directed to a method of forming an aramid paper/polymer/aramid paper laminate using a calendering step which allows each opposing surface of the aramid paper to have a different porosity. 1. Appellants' specification According to the specification, laminates of aramid paper(s) and polymer(s) are known to be useful as dielectric insulation materials in transformers (Specification, 1:22-24). Further according to the specification, aramid paper can be calendered with high temperature and pressure rolls to increase the bond strength of the paper (id., 3:29-31). However, calendering aramid paper is said to result in decreased porosity of the aramid paper and poorer adhesion between the aramid paper and polymer layers in laminates (id., 3:31-33). This adhesion problem is said to be solved by a calendering method which allows opposing surfaces of aramid paper to have a different porosity (id., 4:2-5). The specification describes preparing an aramid paper having a compact, denser outer surface and a more porous opposing inner surface by calendering the two surfaces at temperatures which differ by at least 20oC. The denser surface results from contact with the higher temperature roll and the more porous surface results from contact with the lower temperature roll (id., 4:2-4; 5:7-30; 6:24-28). The opposing surfaces of the aramid paper may be calendered between heated rolls having different temperatures or by first calendering one surface of the paper at one 2 Appeal 2007-2181 Application 10/261,862 temperature and then its opposing surface at a second temperature (id., 5:10- 14). In one embodiment, described in Example 1 of the specification, aramid paper A was calendered between two rolls with one roll operating at a surface temperature of 360oC and the other roll operating at a surface temperature of 300oC (id., 6:22-24). The surface of paper A contacted with the lower temperature roll was said to be more porous than the surface contacted with the higher temperature roll (id., 6:24-27). A heated press operating at 288oC was used to laminate a layer of poly(ethylene terephthalate) polyester (PET) polymer between two sheets of differentially calendered paper A with the polymer contacting the more porous surface of each sheet of calendered aramid paper (id., 7:9-11). 2. Representative claim Claim 1 is illustrative of the subject matter on appeal. 1. A process for forming a laminate comprising in order a layer of an aramid paper, a layer of polymer and a layer of an aramid paper comprising the steps of a) calendering an aramid paper between two heated rolls which differ by a temperature of at least 20 degrees centrigrade wherein a surface of the paper exposed to a lower roll temperature is more porous than an opposite surface exposed to a higher roll temperature, b) calendering an aramid paper between two heated rolls which differ by a temperature of at least 20 degrees centrigrade wherein a surface of the paper exposed to a lower roll temperature is more porous than an opposite surface exposed to a higher roll temperature, 3 Appeal 2007-2181 Application 10/261,862 c) applying polymer to the more porous surface of the aramid paper from step a) and d) laminating the aramid paper from step b) on the polymer wherein the more porous surface of the aramid paper contacts the polymer. B. The rejections The Examiner rejected claims 1-13 and 16-20 under 35 U.S.C. § 103(a). The following prior art2 was relied upon by the Examiner: Seth US 5,888,067 Mar. 30, 1999 Nakaishi JP 70325493 Feb. 3, 1995 Yamamoto JP 81994944 Aug. 6, 1996 J. Shields, ADHESIVES HANDBOOK, CRC Press (1970), pp. 252- 253. Seth, Nakaishi, Yamamoto and Shields qualify as prior art under 35 U.S.C. § 102(b). The rejections under review in this appeal are:5 Claims 1-3, 5-6, 8-10 and 16-19 stand rejected under 35 U.S.C. § 102(a) as obvious over Nakaishi in view of Yamamoto and Shields. Claims 4, 7, 11-13 and 20 stand rejected under 35 U.S.C. § 103(a) as obvious over Nakaishi in view of Yamamoto 2 The reader should know that no references to et al. are made in this opinion. 3 This opinion relies on and cites the U.S. Patent and Trademark Office November 2006 translation of Nakaiski by the McElroy Translation Company. 4 This opinion relies on and cites the U.S. Patent and Trademark Office February 2006 translation of Yamamoto by the McElroy Translation Company. 5 The Examiner withdrew the rejection of claim 16 under 35 U.S.C. § 102(b) as anticipated by Yamamoto and the rejection of claims 16-18 under 35 U.S.C. § 103(a) as obvious over Yamamoto (Answer, 2). 4 Appeal 2007-2181 Application 10/261,862 and Shields, as applied to claims 1-3, 5-6, 8-10 and 16-19, and further in view of Seth. Appellants have not argued the separate patentability of any of claims 1-13 or 16-20. Therefore, we decide this appeal on the basis of claim 1. 37 CFR § 41.37(c)(1)(v). II. Obviousness A claimed invention is not patentable if its subject matter would have been obvious to a person of ordinary skill in the art. 35 U.S.C. § 103(a); KSR Int'l Co. v. Teleflex, Inc., 127 S.Ct. 1727, 1734, 82 USPQ2d 1385, 1391 (2007); Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 3 (1966). Facts relevant to a determination of obviousness include (1) the scope and content of the prior art, (2) any differences between the claimed invention and the prior art, (3) the level of ordinary skill in the art and (4) relevant objective evidence of obviousness. KSR, 127 S.Ct. at 1734, 82 USPQ2d at 1389; Graham, 383 U.S. at 17-18. All claim limitations must be taught or suggested by the prior art. In re Royka, 490 F.2d 981, 985, 180 USPQ 580, 583 (CCPA 1974). A. Findings of Fact 1. Nakaishi [1] Nakaishi describes a heat bonded aramid paper/PET/aramid paper laminate said to have good flexibility, mechanical characteristics, heat resistance, electrical insulating properties and chemical resistance and to be useful in transformers, motors, generators, etc. (¶¶ 7-8, 24-25). [2] According to Nakaishi, the aramid paper can be calendered "to realize the desired mechanical characteristics, thickness and density" (¶ 19). 5 Appeal 2007-2181 Application 10/261,862 [3] Nakaishi is silent as to the use of any specific type of aramid paper and any temperature differential between calendering rolls. 2. Yamamoto [4] Yamamoto describes a composite aramid paper comprising (a) a high density layer comprising aramid fiber alone and (b) an air permeable, highly porous layer comprising a mixture of aramid fiber and a heat- resistant organic fiber, wherein the composite aramid paper is said to have heat resistance and electrical insulating properties superior to single layer aramid papers (¶¶ 1, 7, 9). [5] According to Yamamoto, when porosity is too low, processability and impregnation, e.g., with resin, is less efficient (¶ 11). [6] The composite paper is produced by (a) forming aramid fiber alone into a wet paper, (b) forming a mixture of aramid fiber and a heat- resistant organic fiber into a wet paper, (c) laminating the two wet papers into a single composite wet paper, (d) drying, (e) preheating at a temperature of 250o - 380o C, and (f) thermally compressing the composite paper using a calender roll at a temperature lower than the preheating temperature and in the range of 200o to 300o C (¶¶ 12, 19). [7] According to Yamamoto, [a]s for the temperature condition used for the aforementioned calender treatment, it is desirable when the temperature at the surface of the roll that comes in contact with the layer comprising m- aramid fibrid alone [i.e., the high density layer] is reduced at least 20oC below the temperature of the surface of the roll that comes in contact with the mixed m-aramid fibrid and heat-resistant organic fiber layer [i.e., the highly porous layer] and in some cases, it is further desirable when the aforementioned calender temperature condition is 6 Appeal 2007-2181 Application 10/261,862 used in combination. [¶ 19, bracketed text and emphasis added.] [8] Thus, Yamamoto appears to teach that the composite aramid paper's dense layer is calendered at a lower temperature, while its porous layer is calendered at a higher temperature, i.e., "the lower temperature roll is used for the layer comprising the m-aramid fibrid alone" (¶ 24). 3. Shields [9] According to Shields, "[t]he high porosity of paper . . . makes it a suitable adherend for almost any adhesive without pretreatment" (p. 253, col. 1, ¶ 3). B. The Examiner's position The Examiner found Yamamoto to disclose a method of forming an aramid paper having good resin impregnation ability useful in electric insulation windings for electric motors comprising providing an aramid and calendering the aramid paper by passing the aramid paper through a nip of two heated rolls wherein there is an at least 20 oC temperature difference between the rolls (Answer, 3). As to claim 1, the Examiner essentially concluded that it would have been obvious to one of ordinary skill in the art to use Yamamoto's composite aramid paper in the aramid paper/PET/aramid paper laminate of Nakaishi because the highly porous layer of Yamamoto's composite paper would have been expected to have a good resin impregnation ability (Answer, 4-5). The Examiner further concluded that it would have been obvious to apply the PET polymer to the more porous surface of Yamamoto's aramid paper 7 Appeal 2007-2181 Application 10/261,862 because it was said to be well known in the art that bond strength is directly related to porosity as shown by Shields (Answer, 5). We note that the Examiner relied upon Seth as disclosing conventional techniques for applying a polymer to a pair of bonding nip rolls in either a film or molten form (Answer, 4). C. Appellants' position Appellants argue a lack of motivation to combine Nakaishi and Yamamoto (Appeal Br., 5-6; Reply Br., 4-5), especially since Nakaishi does not teach that aramid papers have poor resin impregnation ability (Reply Br., 4). Appellants further argue that neither Shields nor Seth cure the deficiencies of Nakaishi and Yamamoto (Appeal Br., 6; Reply Br., 5). D. Analysis The claimed method on appeal requires a step of "calendering an aramid paper between two heated rolls which differ by a temperature of at least 20 degrees centrigrade wherein a surface of the paper exposed to the lower roll temperature is more porous than an opposite surface exposed to a higher roll temperature." Yamamoto appears to describe the diametrically opposite process, i.e., a calendering process wherein the surface of the aramid paper exposed to the higher roll temperature is more porous after treatment. The Examiner has not explained, and it is not apparent to us, how the differential calendering of Yamamoto teaches or suggests the differential calendering step of the claims on appeal. In other words, even if the aramid layer was more porous prior than the mixed layer of aramid and heat- resistant organic fiber prior to Yamamoto's calendering process, it is not apparent to us on this record that it remains the more porous layer after treatment. In short, the Examiner has not carried his evidentiary burden. 8 Appeal 2007-2181 Application 10/261,862 None of Nakaishi, Shields or Seth appear to cure the deficiency in Yamamoto's disclosure. Since the Examiner has not established that the prior art, i.e., Nakaishi, Yamamoto, Shields and/or Seth, teach or suggest all the limitations of claim 1, the Examiner has failed to satisfy his burden of establishing a prima facie case of obviousness. Therefore, we reverse the Examiner's rejections of claims 1-13 and 16-20. In re Royka, 490 F.2d at 985, 180 USPQ at 583. CONCLUSION In summary, the decision of the Examiner (i) to reject claims 1-3, 5-6, 8-10 and 16-19 under 35 U.S.C. § 102(a) as obvious over Nakaishi in view of Yamamoto and Shields and (ii) to reject claims 4, 7, 11-13 and 20 under 35 U.S.C. § 103(a) as obvious over Nakaishi in view of Yamamoto and Shields, as applied to claims 1-3, 5-6, 8-10 and 16-19, and further in view of Seth is reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 CFR § 1.136(a). REVERSED E.I. DU PONT DE NEMOURS AND COMPANY Legal Patent Records Center Barley Mill Plaza 25/1128 4417 Lancaster Pike Wilmington, DE 19805 mg 9 Copy with citationCopy as parenthetical citation