Ex parte BARBEE et al.

Board of Patent Appeals and Interferences

May 29, 1998

07955671 (B.P.A.I. May. 29, 1998)

Application for patent filed June 29, 1992. According to appellants, the1
application is a continuation of Application 07/703,542, filed May 21, 1991, now
abandoned.
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for publication in a law journal and (2) is not binding precedent of the Board.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. 29
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte EUGENE H. BARBEE, JOHN D. LANG,
GIFFORD J. LEWIS and WILLIAM A. TORPEY
_____________
Appeal No. 95-2382
Application 07/955,6711
______________
ON BRIEF
_______________
Before STONER, Chief Administrative Patent Judge, and JOHN D.
SMITH and WALTZ, Administrative Patent Judges.
WALTZ, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the examiner’s
final rejection of claims 1 through 6, 8 through 15 and 27
through 32, which are all of the claims remaining in this
application.
Appeal No. 95-2382
Application 07/955,671
2
According to appellants, the invention is directed to a
method of manufacturing coated photographic materials wherein the
chilling and gelling of the photographic liquid materials occur
while the web is horizontal and the materials are on the
underside of the web (brief, page 3).
As stated by appellants on page 4 of the brief, the claims
stand or fall together. Claim 1 is illustrative of the subject
matter on appeal and is reproduced below:
1. A method of manufacturing coated photographic
materials, comprising
feeding a support web through a curtain coating
position;
applying liquid photographic materials to the support
web while at said curtain coating position whereby a layer of
uniform thickness is formed on the web, said liquid photographic
layer including material which is gelable by chilling;
moving the web with the layer of material thereon in a
substantially horizontal direction with the photographic
materials facing downwards; and
chilling said liquid materials while said web is
substantially horizontal with the materials on the underside
thereof whereby the liquid materials gel.
Appeal No. 95-2382
Application 07/955,671
Finnicum is a continuation-in-part of Application No. 07/559,806, filed2
on Jul. 30, 1990. Appellants state that this application is a continuation of
Application No. 07/703,542, filed May 21, 1991. The availability of Finnicum as
prior art against appellants’ claims has not been raised by the examiner or
appellants.
3
The examiner has applied the following references:
Di Mino 3,265,034 Aug. 9, 1966
Finnicum et al. (Finnicum) 5,114,759 May 19, 1992
(filed Jul. 12, 1991)2
Zhongjun (EP ‘493) 0 197 493 Oct. 15, 1986
(European Patent Application)
Claims 1, 5, 6, and (1, 5, 6)/11-13 stand rejected under 35
U.S.C. § 102(b) as anticipated by EP ‘493. Claims 8, 10, 27, 31
and (8, 10, 27, 31)/11-13 stand rejected under 35 U.S.C. § 103 as
unpatentable over EP ‘493. Claims 2-4, 9, 28-30 and (2-4, 9, 28-
30)/11-13 stand rejected under 35 U.S.C. § 103 as unpatentable
over EP ‘493 in view of Di Mino. Claims 15 and 32 stand rejected
under 35 U.S.C. § 103 as unpatentable over EP ‘493 in view of
Finnicum. Claim 14 stands rejected under 35 U.S.C. § 103 as
unpatentable over EP ‘493 in view of Di Mino and Finnicum.
We reverse the rejection of claims 8, 10, 27, 31 and (8, 10,
27, 31)/11-13 under § 103 in view of EP ‘493. Accordingly, the
rejection of claims 9, 28-30 and 32, which depend upon claims 8
and 27, are also reversed. We affirm all other stated rejections
Appeal No. 95-2382
Application 07/955,671
4
involving claims 1-6, 11-14 (as they depend upon claims 1-6), and
15. Our reasons are set forth below.
OPINION
A. The Rejection Under § 102(b)
Under 35 U.S.C. § 102(b), anticipation requires that the
prior art reference disclose, either expressly or under the
principles of inherency, every limitation of the claim. See In
re King, 801 F.2d 1324, 1326, 231 USPQ 136, 138 (Fed. Cir. 1986).
The method of appealed claim 1 requires four steps.
Appellants do not contest that the first three steps are
disclosed by EP ‘493 (brief, pages 5-7). Appellants argue that
EP ‘493 fails to discuss the chilling of liquid coating materials
on a support with the materials facing downwards and horizontal
until the materials gel (brief, sentence bridging pages 6-7).
Appellants recognize that Figures 5, 7 and 8 of EP ‘493 show
chilling chambers wherein the web enters the chamber with the
coated photographic materials facing downward but argues that
these drawings are “truncated”, i.e., the web is not shown
leaving the chilling chamber (brief, pages 5 and 6). Appellants
submit that Figure 9 of EP ‘493 shows the only complete chilling
chamber and this figure shows the support at an angle with the
Appeal No. 95-2382
Application 07/955,671
5
photographic materials facing upwards (brief, page 6).
Appellants conclude that, since the only complete chilling
chamber is shown with the photographic materials facing upwards,
it is likely that this is the true construction of the apparatus
(brief, page 7).
Appellants’ arguments are not well taken for several
reasons. As noted by the examiner on page 11 of the answer,
Figure 9 of EP ‘493 is specifically disclosed as “an embodiment”
of the invention, not as further description of the embodiment in
Figures 5, 7 and 8 (see page 15, lines 13-16). The embodiment of
Figure 9 is completely different than the embodiment of Figures
5, 7 and 8, with Figure 9 directed to “an embodiment of a new
coating machine” with an angled chilling chamber (page 18, lines
16-25) while Figures 5, 7 and 8 have a horizontal chilling
chamber. In fact, Figure 9 specifically requires a turning
roller 24 to reverse the web so that the photographic material
faces upwards before the web enters the angled chilling chamber
(see page 18, lines 21-22, and Figure 9). No such turning roller
is depicted or taught for the embodiments of Figures 5, 7 and 8.
There is no evidence that any such turning roller was
contemplated in EP ‘493 for the embodiment of Figures 5, 7 and 8.
The photographic material clearly faces downward from the web in
Appeal No. 95-2382
Application 07/955,671
6
Figures 5, 7 and 8 as it moves through the chilling chamber 17
(page 16, line 23-page 18, line 15). EP ‘493 teaches that the
liquid material adheres to the surface of the web before “then
slowly gelling in a chilling chamber” (page 12, lines 3-7).
Therefore EP ‘493, in the embodiment shown in Figures 5, 7 and 8,
discloses every limitation set forth in appealed claim 1. As
noted above, the claims stand or fall together. Accordingly, the
rejection of claims 1, 5, 6 and (1, 5, 6)/11-13 under 35 U.S.C.
§ 102(b) in view of EP ‘493 is affirmed.
B. The § 103 Rejection in view of EP ‘493
The examiner states that, in addition to the features
discussed in the rejection under § 102(b), EP ‘493 further
teaches the conventional use of a bead coater and curtain coater
to apply photographic coatings, referring to Figures 2 and 3 and
pages 1 and 15. The examiner concludes that it would have been
obvious to use the chilling of coated layers while facing
downwards from EP ‘493 with conventional bead coating “because
‘493 teaches that photographic layers can be chill set in a
downwards facing manner in order to help provide a smooth and
defect free coating and that it is conventional to apply
photographic layers by bead coating or curtain coating methods.”
Appeal No. 95-2382
Application 07/955,671
The examiner has referred to Figure 3 on page 5 of the answer3
presumably for its depiction of conventional curtain coating. See EP ‘493, page
14, lines 21-23.
7
(answer, page 5). Appellants admit that the substitution of bead
coating for curtain coating is well known in the photographic
industry but submit that EP ‘493 does not teach or suggest
chilling the liquid material in a downward horizontal facing
direction until the liquid materials gel (brief, page 7).
The examiner’s reasoning is deficient for several reasons.
Although bead coating is conventional in the art, as admitted by
appellants and shown in Figure 2 of EP ‘493, the reference only
discloses chilling coated photographic liquid materials in a
downward facing position for curtain coating (see Figures 5, 7
and 8). The conventional bead coating as shown in Figure 2 does
not result in the liquid material being in a downward facing
manner. The coating layer 3 is on top of the moving web 1 (see3
Figure 2). There is no motivation or suggestion to use the
coating and chilling method of the curtain coating embodiment of
Figures 5, 7 and 8 in the conventional bead coating depicted in
Figure 2. See Arkie Lures, Inc. v. Gene Larew Tackle, Inc., 119
F.3d 953, 957, 43 USPQ2d 1294, 1297 (Fed. Cir. 1997)(“It is
insufficient to establish obviousness that the separate elements
Appeal No. 95-2382
Application 07/955,671
8
of the invention existed in the prior art, absent some teaching
or suggestion, in the prior art, to combine the elements.”). The
examiner’s finding that EP ‘493 “teaches that photographic layers
can be chill set in a downwards facing manner in order to help
provide a smooth and defect free coating” is not supported by the
record before us. EP ‘493 does not teach any benefits of
chilling in a downwards facing manner. Where the legal
conclusion of obviousness is not supported by facts, it cannot
stand. See In re Warner, 379 F.2d 1011, 1016-17, 154 USPQ 173,
177-78 (CCPA 1967). Accordingly, the rejection of claims 8, 10,
27, 31 and (8, 10, 27, 31)/11-13 under 35 U.S.C. § 103 as
unpatentable over EP ‘493 is reversed.
C. The Remaining Rejections Under § 103
Appellants have not contested the applicability of the
references in the remaining three rejections of dependent claims
under § 103 except for the arguments discussed above regarding
the primary reference EP ‘493 and the argument that Di Mino is
nonanalogous art (brief, pages 7-9). Thus we will only address
appellants’ argument regarding Di Mino. We find Di Mino to be
analogous art and properly combinable with EP ‘493 substantially
for the reasons set forth by the examiner on pages 15 and 16 of
Appeal No. 95-2382
Application 07/955,671
9
the answer. We add the following comments primarily for
emphasis.
Di Mino is not limited to coating paper webs but teaches
that “it will be clear to those skilled in the art that [the]
invention may also be used for applying many different types of
coating materials to many different types of webs” (column 2,
lines 60-64). As discussed by the examiner, Di Mino meets both
tests for analogous art. See In re GPAC, Inc., 57 F.3d 1573,
1577, 35 USPQ2d 1116, 1120 (Fed. Cir. 1995). Di Mino is related
to the field of endeavor of the inventors, i.e., coating of
liquid materials onto a web with subsequent chilling. Di Mino is
also concerned with the particular problem confronting
appellants, i.e., to immobilize the liquid material on the web as
soon as possible after coating to achieve thickness uniformity
before the final set by the chilling rolls or chamber (see column
4, lines 17-24 and 50-54, and appellants’ specification, page 4,
lines 1-8, and page 8, lines 28-29). Accordingly, Di Mino is
analogous prior art and properly combinable with EP ‘493.
For the foregoing reasons, the rejection of claims 2-4 and
(2-4)/11-13 under 35 U.S.C. § 103 as unpatentable over EP ‘493 in
view of Di Mino is affirmed. The rejection of claim 15 under 35
U.S.C. § 103 as unpatentable over EP ‘493 in view of Finnicum is
Appeal No. 95-2382
Application 07/955,671
10
affirmed. The rejection of claim 14 as it depends upon claims 1-
6 under 35 U.S.C. § 103 as unpatentable over EP ‘493 in view of
Di Mino and Finnicum is affirmed.
D. Summary
The rejection of claims 8, 10, 27, 31 and (8, 10, 27,
31)/11-13 under § 103 is reversed, as are the rejections
involving claims 9, 28-30, and 32, since these claims depend upon
claims 8 and 27. The rejections of claims 1, 5, 6 and (1, 5,
6)/11-13 under § 102(b), claims 2-4 and (2-4)/11-13 under § 103,
claim 15 under § 103, and claim 14 as it depends upon claims 1-6
under § 103 are affirmed. Accordingly, the decision of the
examiner is affirmed-in-part.
Appeal No. 95-2382
Application 07/955,671
11
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
)
BRUCE H. STONER, Jr., Chief )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOHN D. SMITH )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
THOMAS WALTZ )
Administrative Patent Judge )
Appeal No. 95-2382
Application 07/955,671
12
Sarah Meeks Roberts
Eastman Kodak Company
Patent Legal Staff
Rochester, New York 14650-2201