Ex Parte Butterfield et al

Patent Trial and Appeal Board

Jun 30, 2014

11269469 (P.T.A.B. Jun. 30, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/269,469 11/08/2005 William S. Butterfield 5690-174 5567
20792 7590 07/01/2014
MYERS BIGEL SIBLEY & SAJOVEC
PO BOX 37428
RALEIGH, NC 27627
EXAMINER
OMGBA, ESSAMA
ART UNIT PAPER NUMBER
3726
MAIL DATE DELIVERY MODE
07/01/2014 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte WILLIAM S. BUTTERFIELD, DILIP DE,
BALAJI SRINIVASAN and GARY KILBOURNE
____________

Appeal 2012-005781
Application 11/269,469
Technology Center 3700
____________

Before EDWARD A. BROWN, MICHAEL L. HOELTER and
ANNETTE R. REIMERS, Administrative Patent Judges.

REIMERS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
William S. Butterfield et al. (Appellants) appeal under 35 U.S.C.
§ 134(a) from the Examiner’s decision to reject claims 1-7, 10-13 and 15-24
under 35 U.S.C. § 103(a) as unpatentable over Lutz (US 2003/0224917 A1;
pub. Dec. 4, 2003), Gajewski (US 5,895,689; iss. Apr. 20, 1999) and Volkert
(US 4,013,806; iss. Mar. 22, 1977).1 Appellants present additional evidence

1 The Examiner includes independent claim 16 in the heading of the
rejection but does not include claim 16 in the body of the rejection. See Ans.
4-6. We consider this an inadvertent error by Examiner. Claim 16 recites
the same limitations as independent claim 1 and further includes the coating
hardness limitation of independent claim 18.
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Application 11/269,469

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in the Declaration of William S. Butterfield (hereafter the “Butterfield
Declaration”) filed under 37 C.F.R. § 1.132 on February 16, 2010.2 Claims
8, 9 and 14 have been canceled. We have jurisdiction under 35 U.S.C.
§ 6(b). An oral hearing was conducted on June 19, 2014.
We AFFIRM-IN-PART.

CLAIMED SUBJECT MATTER
The claimed subject matter “relates generally to industrial rolls, and
more particularly to covers for industrial rolls.” Spec. 1, ll. 10-11; Figs.1-2.
Claims 1, 16, 17 and 18 are independent.
Claims 1 and 18 are illustrative of the claimed subject matter and
recite:
1. An industrial roll, comprising:
a substantially cylindrical metallic core;
a rubber base layer that is adhered to and
circumferentially overlies the core;
a rubber top stock layer that circumferentially overlies
the base layer; and
a polyurethane coating that circumferentially overlies the
top stock layer;
wherein the thickness of the coating is between about
0.05 and 0.25 inches.

18. An industrial roll, comprising:
a substantially cylindrical metallic core;
a rubber base layer that is adhered to and
circumferentially overlies the core;
a rubber top stock layer that circumferentially overlies
the base layer, wherein the top stock layer has a hardness that is
lower than a hardness of the base layer; and

2 The Declarant, William S. Butterfield, is also a co-inventor in the instant
application.
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Application 11/269,469

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a polyurethane coating that circumferentially overlies the
top stock layer;
wherein the coating has a hardness of between about 3
and 70 P&J.

ANALYSIS

Obviousness over Lutz, Gajewski and Volkert - Claims 1-7, 10-13 and 15
Appellants do not present arguments for dependent claims 2-7, 10-13
and 15 separate from those presented for independent claim 1. App. Br. 3-8.
Accordingly, Appellants have argued claims 1-7, 10-13 and 15 as a group
for purposes of the rejection of those claims under § 103(a). Claim 1 is
representative of the group and is selected for review, with claims 2-7, 10-13
and 15 standing or falling with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii)
(2011).
Independent claim 1 calls for an industrial roll including a
polyurethane coating that circumferentially overlies a rubber top stock layer.
App. Br. 10, Clms. App’x. The Examiner found that Lutz discloses the
limitations of claim 1 except, among other things, a polyurethane coating
that circumferentially overlies a rubber top stock layer. See Ans. 4-5. The
Examiner further found that “it is known [in the art] to apply soft protective
layers of abrasion resistant polyurethane to rolls in order to afford surface
protection [to] the rolls as attested by Gajewski (col. 1, lines 26-33) and
Volkert et al. (col. 1, lines 15-19).” Ans. 5 (emphasis added). The
Examiner concluded that it would have been obvious to provide “a
polyurethane coating that circumferentially overlies the top stock layer [of]
the roll of Lutz, in light of the teachings of Gajewski and Volkert et al., in
order to afford surface protection [to] the roll.” Id.
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Appellants contend that modification of Lutz would destroy Lutz’s
intended purpose. App. Br. 4. Specifically, Appellants contend that
in order for the thermochromic and/or
piezochromic materials [of Lutz] to be of value,
they should be visible in operation. Adding a
polyurethane layer, such as that disclosed in either
Gajewski or Volkert[3] (neither of which is
transparent), over the rubber top stock layer that
contains piezochromic and/or thermochromic
material would hide the rubber top stock layer,
thereby destroying its value to the roll cover.
Id. at 5; see also Reply Br. 1. Appellants further contend that (1) there is no
“indication that a transparent polyurethane would be suitable for use in a
typical environment for an industrial roll”; and (2) “the ordinarily skilled
artisan would not have been motivated to add a clear polyurethane layer over
the roll of Lutz because it would have been known that such a layer would
not have been appropriate for an industrial roll environment.” Reply Br. 1-
2.4
Appellants’ arguments are not persuasive. First, Appellants’
contentions that a transparent polyurethane would not be suitable for use in a
typical industrial roll environment, and that it would have been known that a
clear polyurethane layer would not have been appropriate for an industrial
roll environment amount to unsupported attorney argument, and thus are
entitled to little, if any, weight. See In re De Blauwe, 736 F.2d 699, 705

3 Volkert discloses that “[t]he present invention relates to a process for the
manufacture of elastomeric polyurethane layers from a liquid mixture of . . .
materials, [including] an uncolored or colored liquid mixture of reactive
polyurethane. . . components.” Volkert, col. 1, ll. 5-9 (emphasis added).
4 We note that claim 1 does not require a “clear” polyurethane coating. App.
Br. 10, Clms. App’x.
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(Fed. Cir. 1984) (Arguments and conclusions unsupported by factual
evidence carry no evidentiary weight.). Second, in response to Appellants’
arguments, the Examiner found and concluded that
[a]s disclosed by Lutz, the topcoat or cover layer
may include tie-in or other intermediate layer that
comprises a thermochromic or piezochromic
material as long as the top layer is transparent to
permit the visual examination on the intermediate
layer (paragraph [0032]); therefore it is obvious
that the thermochromic or piezochromic material
does not have to be on the outermost layer as
suggested by Appellant[s’] argument. Providing
another layer on top of the layer containing the
thermochromic or piezochromic would therefore
not destroy the intended purpose of the Lutz roll,
as long as that layer is transparent. The [E]xaminer
submits that transparent polyurethane coatings are
well known in the art, and the use of such
transparent polyurethane coating would not hinder
reading of the visual information of the roll of
Lutz.

Ans. 6. Appellants have not presented any persuasive evidence or
arguments apprising us of error regarding the Examiner’s findings or
conclusions.
Appellants contend that
Gajewski is limited to the disclosure of a
typical polyurethane roll cover applied over a
metal core, and it is clear from Gajewski that the
materials are to be applied in a thickness that is
typical for a roll cover, not an additional coating
layer. Gajewski is also completely silent regarding
advantages that can be gained from a roll cover
having a rubber base layer and a rubber top stock
layer covered with a polyurethane coating, such as
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improved abrasion resistance, sheet release
properties, and/or toughness as compared to a
rubber roll cover, but at a lower hardness level
more typical of a rubber roll cover.

App. Br. 6. Appellants further contend that (1) Volkert discloses a
polyurethane unsuitable for industrial rolls (Id. at 7); and (2) “soft
polyurethane such as that of Volkert would not provide any advantage to a
rubber roll cover” (Id. at 8).
Appellants’ arguments are not persuasive. At the outset, Appellants’
contentions that Volkert discloses a polyurethane unsuitable for industrial
rolls and soft polyurethane, such as that disclosed in Volkert, would not
provide any advantage to a rubber roll cover amount to unsupported attorney
argument, and thus are entitled to little, if any, weight. The Examiner relied
on both Gajewski and Volkert to establish that it is known in the art to apply
a polyurethane coating to a roll. Ans. 5.5 The Examiner relied on Volkert
further for disclosure of the thickness of the polyurethane coating. Id. at 5;
Volkert, col. 8, ll. 48-61. We agree with Appellants that Gajewski’s
disclosure is directed to “a polyurethane layer over a metallic core.” App.
Br. 6; see also Gajewski, col. 1, ll. 26-30. However, Volkert discloses that
(1) “[i]t is known to apply soft protective layers of abrasion resistant
polyurethane to . . . conveyor belts or the inner surface of receptacles for
mechanically aggressive materials. . . to afford surface protection” (Volkert,
col. 1, ll. 15-19; Ans. 5); (2) “[t]he process is . . . suitable . . . for coating

5 Appellants acknowledge that (1) “Gajewski describes a polyurethane
material that can be employed in covers for rolls in paper machines” (App.
Br. 5); and (2) “Volkert is directed to a polyurethane formulation that is
suitable for lined metal vessels, rollers, conveyor belts, carpet backing, and
the like” (Id. at 7).
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conveyor belts, carpet backings and webs of leather, i.e.[,] for general
application of uniform polyurethane layers required to show good flexibility,
adequate mechanical strength and, in particular, good abrasion resistance”
(Id. at col. 8, ll. 53-61; Id. at 5); and (3) “the reaction mixture [polyurethane
layers] may be poured onto substrates such as rollers, panels and bands. . . .
Suitable substrates are for example of paper, rubber, textiles, plastics and
metals and are generally in the form of curved or flat objects or in web
form” (Id. at col. 7, ll. 40-46 (emphasis added)). In other words, Volkert’s
disclosure includes a polyurethane coating overlying a rubber substrate
(layer). Because the Examiner relied on both Gajewski and Volkert to
establish that it is known in the art to apply a polyurethane coating to a roll,
we agree with the Examiner that it would have been obvious to provide “a
polyurethane coating that circumferentially overlies the [rubber] top stock
layer [of] the roll of Lutz, in light of the teachings of Gajewski and Volkert
et al., in order to afford surface protection [to] the roll.” See Ans. at 5.
Appellants contend that the Examiner has failed to a provide reason
with rational underpinnings to support the conclusion of obviousness. App.
Br. 7-8. Appellants’ argument is not persuasive. The Examiner found that
Lutz discloses the limitations of claim 1 except a polyurethane coating
overlying the rubber top stock layer of the roll and the thickness of the
polyurethane coating. See Ans. 4-5. The Examiner found that both
Gajewski and Volkert disclose that “it is known [in the art] to apply soft
protective layers of abrasion resistant polyurethane to rolls in order to afford
surface protection [to] the rolls.” Id. at 5; see also Gajewski, col. 1, ll. 26-
33; Volkert, col. 1, ll. 15-19, col. 8, ll. 48-61. The Examiner relied on
Volkert further for the thickness of the polyurethane coating. Ans. 5. The
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Examiner concluded that it would have been obvious to provide “a
polyurethane coating that circumferentially overlies the top stock layer [of]
the roll of Lutz, in light of the teachings of Gajewski and Volkert et al., in
order to afford surface protection [to] the roll.” Id. The Examiner’s findings
and stated reasoning are based on rational underpinnings. Appellants have
not provided any persuasive evidence or arguments to the contrary.
Accordingly, for the foregoing reasons, the Examiner’s rejection of
independent claim 1 and of claims 2-7, 10-13 and 15, which fall with claim
1, as unpatentable over Lutz, Gajewski and Volkert is sustained.6
Obviousness over Lutz, Gajewski and Volkert - Claims 16-24
Each of independent claims 16, 17 and 18 calls for an industrial roll
including a polyurethane coating having a hardness of between about 3 and
70 P&J (Pusey and Jones scale). App. Br. 11-12. The Examiner found that
(1) “Volkert et al. teaches a preferred hardness range of between 20 to 40°
for the polyurethane coating (column 5, lines 44-47). It should be noted that
the upper limit of 40° falls within the claimed range of 3 to 70 P&J” (Ans.
5); and (2) “Volker[t] contemplates using polyurethane coatings having a 70
Shore A hardness which is approximately 75 P&J” (Id. at 8).
Appellants contend that
[t]he Examiner appears to misunderstand that,
while harder materials have higher Shore A
measurements, harder materials have lower P&J

6 The Butterfield Declaration pertains to a rejection by the Examiner of the
combination of Krotchko and Paasonen. See Butterfield Decl., para. 3. The
arguments presented in the Butterfield Declaration are not commensurate in
scope with the Examiner’s rejection before us of the combination of Lutz,
Gajewski and Volkert. Therefore, the arguments presented in the Butterfield
Declaration are moot.
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measurements. Thus, a first material having a
lower Shore A hardness value than a second
material would have a higher P&J hardness than
the second material. As stated previously, the
upper limit of the claimed range (70 P&J)
represents a harder material than the Shore A 70
material disclosed in Volkert (which has a P&J
hardness of about 75). The "preferred range" of
Volkert of 20-40 Shore A noted in the Answer
would be considerably softer (and therefore have a
considerably higher P &J measurement — more in
the 200 to 400 P&J range) than the 70 Shore A
material disclosed in Volkert as the hardest
suitable material. Thus, the Examiner's reliance on
this position is erroneous and unsupportable.

Reply Br. 2; see also App. Br. 7.

Appellants’ arguments are persuasive. Volkert merely discloses
polyurethane coating hardness based on the Durometer (Shore) A hardness
scale. See Volkert, col. 5, ll. 46-47 (the polyurethane coating has “a Shore
hardness A of not more than 70° and preferably of from 20 to 40°.”).
Volkert fails to disclose polyurethane coating hardness based on the P & J
hardness scale, let alone a polyurethane coating having a hardness of
between about 3 and 70 P&J. Moreover, the Examiner has not persuasively
shown any correlation between the two different hardness scales (i.e., the
Durometer (Shore) A hardness scale and the P & J hardness scale).
“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)
(internal citation and quotations omitted). As such, the Examiner has failed
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to establish by a preponderance of the evidence that the combined teachings
of Lutz, Gajewski and Volkert disclose a polyurethane coating having a
hardness of between about 3 and 70 P&J, as required by the claims.
Accordingly, for the foregoing reasons, the Examiner’s rejection of
independent claims 16, 17 and 18 and their respective dependent claims 19-
24 as unpatentable over Lutz, Gajewski and Volkert cannot be sustained.

DECISION
We AFFIRM the decision of the Examiner to reject claims 1-7, 10-13
and 15 as unpatentable over Lutz, Gajewski and Volkert.
We REVERSE the decision of the Examiner to reject claims 16-24 as
unpatentable over Lutz, Gajewski and Volkert.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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