Ex parte CASTELLI et al.

Board of Patent Appeals and Interferences

Jul 29, 1998

07857216 (B.P.A.I. Jul. 29, 1998)

Application for patent filed March 25, 1992. 1
Administrative Patent Judge Thiersten participated in2
the hearing but has retired. Administrative Patent Judge
Schafer has been substituted. Note, In re Bose Corp., 772
F.2d 866, 227 USPQ 1 (Fed. Cir. 1985).
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journal and (2) is not binding precedent of the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. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte FRANCESCO CASTELLI and GIANPIERO INVERNIZZI
____________
Appeal No. 94-4489
Application No. 07/857,2161
____________
HEARD: May 7, 1997
____________
Before JOHN D. SMITH, SCHAFER and PAK, Administrative Patent2
Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
Francesco Castelli et al. (appellants) appeal from the
examiner’s refusal to allow claims 1 through 8, 12 through 20,
Appeal No. 94-4489
Application No. 07/857,216
The examiner has withdrawn the rejection of claims 9,3
10, 21, 22, 45, 48 and 50 subsequent to the final rejection.
See Answer, page 1.
U.S. Patent No. 4,770,928 issued to Gaworowski et al. on4
September 13, 1988 (hereinafter referred to as “Gaworowski”).
2
23, 24, 26 through 29, 44, 46, 47, 49 and 51. Claims 1, 13 3
and 14 have been amended subsequent to the final rejection.
Claim 1 is representative of the subject matter on appeal
and reads as follows:
1. A process for forming a compressible printing blanket
which comprises:
dispersing a plurality of thermoplastic microspheres
having a melting temperature of 135°C or above substantially
uniformly throughout an elastomeric matrix;
applying at least one coating of said microsphere
containing matrix at a substantially uniform thickness to a
surface of a base fabric ply to form a coated base fabric ply;
and
vulcanizing said coated base fabric ply at a temperature
of 80-150°C for a time of between about 1 and 6 hours to
substantially fix the position of said high melting
thermoplastic microspheres within said matrix and form a
compressible layer such that said microspheres provide
substantially uniform compression characteristics to said
layer.
Claims 1 through 8, 12 through 20, 23, 24, 26 through 29,
44, 46, 47, 49 and 51 stand rejected under 35 U.S.C. § 103 as
unpatentable over the disclosure of Gaworowski .4
Appeal No. 94-4489
Application No. 07/857,216
3
We have carefully reviewed the entire record before us,
including all of the arguments advanced by the examiner and
appellants in support of their respective positions. This
review leads us to conclude that the examiner’s rejection is
well-founded. Accordingly, we will sustain the examiner’s
rejection for essentially those reasons expressed in the
Answer and the Supplemental Answer. We add the following
primarily for emphasis.
At the outset, we note that appellants have grouped the
above appealed claims together. See Brief, page 4 and Reply
Brief, page 1. Accordingly, we will focus on claim 1 only,
the broadest claim on appeal. See 37 CFR § 1.192(c)(5)(1993).
In the Background of the Invention, appellants state (see
specification, page 4, lines 15-24) that:
More recently, it has been found preferable to
produce printing blankets having a compressible layer
comprising a cellular resilient polymer having
cells or voids in the compressible layer formed
with the use of discrete microspheres. It has
been found particularly advantageous to produce
a compressible layer by incorporating hollow
thermoplastic microspheres in the polymer, as
illustrated by Larson U.S. patent No. 4,042,743.
Appeal No. 94-4489
Application No. 07/857,216
4
These microspheres are resilient and thus impart
good compressibility properties to the layer.
Appellants then go on to state (see the paragraph bridging
pages 4 and 5 of the specification) that:
However, in prior art methods of producing a
compressible layer employing thermoplastic
microspheres for a printing blanket, it has been
found that the thickness of the compressible layer
to be formed is not easily controlled since typical
thermoplastic microspheres will melt at normal
processing and vulcanizing temperatures. Since the
microspheres melt before the vulcanization is
complete, and before the compressible layer achieves
a set structure, agglomeration of the voids created
by the microspheres occurs, and size variations in
the voids also occur. This can affect the overall
performance properties of the blanket. Also, the
variations in the sizes of the voids can weaken the
printing blanket, causing it to wear out
prematurely.
To avoid the melting of thermoplastic microspheres during
vulcanization, appellants employ thermoplastic microspheres
having a higher melting temperature, i.e., a temperature
higher than vulcanization temperatures, in a process for
forming a compressible printing blanket. Specifically, the
claimed process requires employing “thermoplastic microspheres
having a melting temperature of 135°C or above” and a
vulcanizing temperature of 80-150°C . See claim 1.
Appellants acknowledge (Brief, page 5) that:
Appeal No. 94-4489
Application No. 07/857,216
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The Gaworowski patent discloses a two-stage
curing cycle in which the compressible elastomeric
layer is cured in a first operation, thus fixing the
microcapsules in set positions within the layer,
followed by a second curing stage to form the
laminate structure.
The Gaworowski patent also states (column 4, lines 50-64)
that:
[C]onventional resinous microcapsules that are known
in the art may be used in the intermediate layer.
Any microcapsules having the properties described
herein will be suitable for use in the present
invention. Microcapsules having a melting point of
about 165°F. to 270°F can be used. Preferably, the
microcapsules will melt at about 180°F. Some of the
materials suitable for use in the microcapsules are
phenolic resin, and thermoplastic materials such as
polyvinylidene chloride. Preferably, the materials
used in making the microcapsules will be
thermoplastics. Examples of such materials are
vinylidene chloride, methacrylate, polyvinyl
chloride, acrylonitrile, and copolymers thereof.
Preferably, a copolymer of acrylonitrile and
vinylidene chloride will be used.
Although a vulcanization temperature of 110° to 170EF is
specifically mentioned, the Gaworowski reference indicates
that any “sufficient heat” can be used to vulcanize (cure) the
layer. See column 5, lines 55-63. Sufficient heat embraces
any temperature below the melting point temperature of the
microcapsules. See column 8, lines 3-8. In other words, when
the Gaworowski reference employs microcapsules having a
Appeal No. 94-4489
Application No. 07/857,216
6
melting temperature of about 270°F (about 132.5°C), a
vulcanization temperature used is below 132.5°C, which
embraces the claimed vulcanization temperature.
The dispositive question is, therefore, whether the
Gaworowski reference teaches, or would have suggested,
employing thermoplastic microspheres having the claimed
melting temperature of 135°C or higher. We answer this
question in the affirmative.
Initially, we find that Gaworowski describes
thermoplastic microspheres having a melting temperature of
about 132.5°C
(270°F) which can be used in forming compressible printing
blanket. See column 4, lines 50-56. The term “about” allows
some tolerance, thus embracing the claimed microspheres having
a melting temperature of 135°C. See e.g., In re Pappas, 214
F.2d 172, 176-77, 102 USPQ 298, 301 (CCPA 1954); In re De
Vaney 185 F.2d 679, 683, 88 USPQ 97, 101 (CCPA 1950); compare
also Titanium Metals Corp. v. Banner, 778 F.2d 775, 783, 227
USPQ 773, 779
(Fed. Cir. 1985)(the closeness of the properties of the
claimed and prior art products renders the claimed product
Appeal No. 94-4489
Application No. 07/857,216
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prima facie obvious). Moreover, appellants have not disputed
the examiner’s finding (see Supplemental Answer, page 2) that:
High temperature thermoplastic microcapsules of the
type claimed by the applicant were not only
available at the time of the invention of Gaworoski
et al. but were specifically disclosed for use in
the printing blanket of Gaworowski et al.
Compare also Gaworowski’s microcapsule material relating to
copolymers of vinylidene chloride, methacrylate, polyvinyl
chloride and acrylonitrile at column 4, lines 61-63, with
appellants’ microsphere materials listed at page 11, lines 1
and 2, of the specification. Accordingly, we agree with the
examiner that it would have been obvious to employ
thermoplastic microspheres having a melting temperature of
135°C with a reasonable expectation of obtaining a desired
compressible printing blanket.
In any event, we note that the Gaworowski reference, like
appellants, recognizes the importance of using thermoplastic
microspheres and avoiding the melting of thermoplastic
microspheres during vulcanization at conventional
vulcanization temperatures in a process for making a
compressible printing blanket. See column 2, lines 44-68.
Upon recognizing the importance of using thermoplastic
Appeal No. 94-4489
Application No. 07/857,216
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microspheres and avoiding the melting of thermoplastic
microspheres, we find that it is well within the level of one
of ordinary skill in the art to utilize thermoplastic
microspheres having higher melting temperatures than
conventional vulcanization temperatures and/or utilize, as
shown by the Gaworowski reference, lower vulcanization
temperatures than the melting temperatures of thermoplastic
microspheres. See In re Sovish, 769 F.2d 738, 743, 226 USPQ
771, 774 (Fed. Cir. 1985) (obviousness requires consideration
of the level of one of ordinary skill in the art who is
presumed to have skill); see also at page 7, lines 22-26, of
the specification for the kind of high skill and significant
knowledge imputed to one of ordinary skill in the art by
appellants. It is no more than common sense to employ
thermoplastic microspheres having a melting point temperature
higher than conventional vulcanization temperatures to avoid
the melting of the microspheres during vulcanization.
Accordingly, we agree with the examiner that it would have
been obvious to vulcanize thermoplastic microspheres having
higher melting point temperatures, such as those claimed, at
conventional vulcanization conditions, including the claimed
Appeal No. 94-4489
Application No. 07/857,216
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vulcanization temperatures. One of ordinary skill in the art
would have had a reasonable expectation of avoiding the
melting of the thermoplastic microsphere during vulcanization
to form improved compressible printing blankets.
In view of the foregoing, we affirm the examiner’s
decision rejecting all appealed claims under 35 U.S.C. § 103.
Appeal No. 94-4489
Application No. 07/857,216
10
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
JOHN D. SMITH
)
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
RICHARD E. SCHAFER ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
CHUNG K. PAK )
Administrative Patent Judge )
Appeal No. 94-4489
Application No. 07/857,216
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Pennie & Edmonds
1155 Avenue of the Americas
New York, NY 10036-2711
Appeal No. 94-4489
Application No. 07/857,216
12
CKP/jrg
JENINE GILLIS
Appeal No. 94-4489
Serial No.
07/857,216
Judge PAK
Judge JOHN D. SMITH

Judge SCHAFER
Typed: 14 Jul 98
Revision: 16 Jul 98

DECISION: AFFIRMED

Send Reference(s): Yes No
or Translation(s)
Panel Change: Yes No
3-Person Conf. Yes No
Heard: Yes No
Remanded: Yes No
Index Sheet-2901 Rejection(s): ___________
Acts 2: ____
Palm: ____
Mailed: Updated Monthly Disk: ____
Updated Monthly Report: ___
Appeal No. 94-4489
Application No. 07/857,216
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