Ex Parte Friske et al

Board of Patent Appeals and Interferences

May 31, 2012

11106404 (B.P.A.I. May. 31, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/106,404 04/14/2005 Gordon W. Friske 67,010-119; B05919-AT1 3457
26096 7590 05/31/2012
CARLSON, GASKEY & OLDS, P.C.
400 WEST MAPLE ROAD
SUITE 350
BIRMINGHAM, MI 48009
EXAMINER
CAPOZZI, CHARLES
ART UNIT PAPER NUMBER
1717
MAIL DATE DELIVERY MODE
05/31/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GORDON W. FRISKE
and DAVID WIDMAN
__________

Appeal 2011-000970
Application 11/106,404
Technology Center 1700
____________

Before ADRIENE LEPIANE HANLON, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL

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Appellants appeal under 35 U.S.C. § 134 the final rejection of claims
1, 4-8, 17, 19, and 21-29. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appellants’ invention is said to be directed to a coating apparatus and
method for applying adhesive coating to a work piece (Spec. para. [0001]).
Claims 1 and 7 are illustrative:
1. A coating apparatus comprising:
a coating transfer roll having a cylindrical surface
extending between two axial sides;
a flexible blade adjacent to said coating transfer roll;
a fluid source;
a pressurizable chamber for selectively deflecting said
flexible blade, and said pressurizable chamber is in fluid
communication with said fluid source;
a pair of reservoir wall members, one of said pair of
reservoir wall members being sealed against one of the two
axial sides of said coating transfer roll and the other of said pair
of reservoir wall members being sealed against the other of the
two axial sides of said coating transfer roll; and
a reservoir located above said flexible blade.
7. A coating apparatus comprising:
a coating transfer roll having a cylindrical surface
extending between two axial sides;
a flexible blade adjacent to said coating transfer roll; and
a pair of reservoir wall members, one of said pair of
reservoir wall members being sealed against one of the two
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axial sides of said coating transfer roll and the other of said pair
of reservoir wall members being sealed against the other of the
two axial sides of said coating transfer roll to form a reservoir
between said coating transfer roll and said flexible blade.
Appellants appeal the following rejections:
1. Claims 7 and 8 are rejected under 35 U.S.C. § 102(b) as being
unpatentable over Cappel ‘775 (US 4,393,775 issued July 19, 1983).
2. Claims 7, 8, 17, 19, and 25 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Dougan (US 2,837,026 issued June 3, 1958)
in view of Cappel ‘788 (US 3,978,788 issued Sept. 7, 1976).
3. Claims 1, 4-6, 21-24, 26, and 27 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Dougan in view of Cappel ‘788, Faeber
(US 3,026,842 issued Mar. 27, 1962), Metzler (US 5,738,724 issued
Apr. 14, 1998), and Sommer (US 4,899,687 issued Feb. 13, 1990).
4. Claims 28 and 29 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dougan in view of Cappel ‘788, Faeber, Metzler,
Sommer and Feathers (US 4,411,614 issued Oct. 25, 1983).

Rejection (1)
With regard to rejection (1), Appellants argue claim 7 (App. Br. 5).

ISSUE
Did the Examiner reversibly in err in finding that Cappel ‘775 teaches
forming a reservoir “between” the doctor blade and the roller? We decide
this issue in the affirmative.
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FINDINGS OF FACT AND ANALYSES
The Examiner finds that Cappel ‘775 teaches forming a coating
reservoir between the coating transfer roll 18 and the flexible blade 62b with
a pair of end wall members (23 & 24) on either side of the roller (Ans. 5).
Appellants argue that Cappel ‘775 does not teach a reservoir formed
between a coating transfer roller and the doctor blade (App. Br. 4).
Appellants contend that the space in Cappel ‘775’s Figure 7 between blade
62b and roller 18 does not hold fluid. Id.
The preponderance of the evidence favors the Appellants’ argument
of novelty. The plain meaning of “between” is “in or through the space that
separates (two things).”1 Cappel ‘775 discloses that the reservoir or trough
is formed by end walls 23 and 24, metering assembly 15 and fountain roller
18 (Cappel ‘775, col. 2, ll. 41-66). However, the Examiner has not
explained how Cappel ‘775’s reservoir is formed between the flexible
portion 62b of blade 60b on the metering device 15 and fountain roller 18.
Cappel ‘775’s Figure 1 depicts metering assembly 15 as being part of the
trough structure, but the Examiner has not explained how Cappel ‘775’s
reservoir is formed in or through the space that separates the flexible portion
62b of blade 60b and fountain roller 18. Rather, it appears that the space
between the flexible portion 62b of blade 60b and the roller 18 is filled with
air or a layer of the coating fluid that is attached to the roller surface, not a
reservoir.
On this record, we reverse the Examiner’s § 102(b) rejection of claims
7 and 8.

1 WEBSTER’S NEW WORLD COLLEGE DICTIONARY 140 (4th ed. 1999).
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Rejection (2)
With regard to rejection (2), Appellants argue the following claim
groupings: claims 7 and 17 and claims 8 and 25 (App. Br. 5-7). We select
claims 7 and 8 as representative of each grouping.
ISSUE
Did the Examiner reversibly err in concluding that Dougan in view of
Cappel ‘788 would have rendered obvious the subject matter of claims 7 and
8? We decide this issue in the negative.

FINDINGS OF FACT & ANALYSIS
CLAIM 7
The Examiner finds that Dougan teaches all the features of claim 7
except for sealing the end walls of the reservoir against the axial sides of the
coating transfer roll (Ans. 5). The Examiner finds that Cappel ‘788 teaches
using screws 25 and 26 to bias end walls against the axial sides of the
coating transfer roller to prevent coating leakage from the coating reservoir
(id. at 6). The Examiner concludes that it would have been obvious to seal
by biasing the end walls against the axial ends of the roller in light of Cappel
‘788’s teaching to use screws to bias the end walls in a sealed fashion. Id.
Appellants argue that applying a biasing force against Dougan’s end
walls 18 as taught by Cappel ‘788 would likely cause Dougan’s blade
member 11 to laterally rotate about the fixed ends and would thereby destroy
the operation of the device for its intended purpose (App. Br. 5-6).
We begin our analysis by construing claim 7. Claim 7 recites that
each reservoir wall member is sealed against one of the two axial sides of
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the coating transfer roll (Claim App’x). Claim 7 does not specifically recite
biasing or biasing means for reservoir wall members. Id.
With this proper claim construction in mind, Appellants’ arguments
regarding “biasing” the wall members against the blade do not specifically
address the subject matter of claim 7.
Moreover, Appellants mischaracterize the Examiner’s rejection as
modifying Dougan’s structure by biasing the wall members 18 as taught by
Cappel ‘788 against the blade 11 (App. Br. 6). To the extent the Examiner
relies on Cappel ‘788 to modify Dougan and arrive at the subject matter of
claim 7, the Examiner simply relies on Cappel ‘788 to teach sealing the
reservoir end walls against the axial ends of the roller (Ans. 5-6).
Appellants’ argument fails to address the Examiner’s rejection and
Appellants do not explain why biasing to seal the end walls against the axial
ends of the roller would have affected Dougan’s blade. We are not
persuaded by such argument. .

CLAIM 8
Claim 8 recites that the each pair of reservoir wall members comprises
a bias member that biases said pair of reservoir wall members towards said
coating transfer roll and said flexible blade.
Appellants argue that Dougan’s wall members 18 are laterally offset
from the spacers 25 and the roll 10 and are not adjacent the fountain body 20
or other structure capable of engaging screws 25 and 26 to bias the wall
member against the roll 10 (App. Br. 7). Appellants argue that using the
screws 25 and 26 of Cappel ‘788 to bias the wall member 18 toward the roll
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10 of Dougan would destroy operation of the device by either preventing
rotation of the roll 10 or adjustment of the spacers 25 (id.).
The Examiner finds that Cappel ‘788 is silent regarding biasing its
end walls against the axial sides of the coating transfer roller preventing
rotation of the roller (Ans. 10). In other words, the Examiner finds that
Cappel ‘788’s teaching to bias successfully the end walls against the axial
ends of the roller so as to create a seal between the end walls and the roller
indicates that it would have been within the skill of one of ordinary skill in
the art to configure the screws to bias the end walls but not prevent roller
movement or interfere with other features required by the coating apparatus
and method. We agree.
In light of the foregoing, we are unpersuaded by Appellants’ argument
regarding the destruction of Dougan’s functionality by the proposed
combination. Rather, one skilled in the art would have reasonably been
expected to design end walls and screw locations in the modified Dougan
coating device to bias and seal successfully the end walls to the axial ends of
the roller as taught by Cappel ‘788. Appellants have not presented any
evidence that such a modification would have been beyond the skill of one
of ordinary skill in the art.
For these reasons, we affirm the Examiner’s § 103 rejection (2).

Rejection (3)
With regard to rejection (3), Appellants separately argue claims 1 and
27 (App. Br. 8). With regard to claim 1, Appellants rely on arguments made
regarding claim 8 of rejection (2) (id.). However, we note that claim 1, like
claim 7 discussed supra, does not recite biasing the end walls to the axial
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ends of the roller (Claim App’x). Accordingly, Appellants’ arguments
regarding the subject matter of claim 8 are not germane to the subject matter
of claim 1. On this record, we affirm the Examiner’s § 103 rejection of
claims 1, 4-6, 21-24, and 26 over Dougan in view of Cappel ‘788, Faeber,
Metzler, and Sommer.

ISSUE
Did the Examiner reversibly err in failing to address Appellants’
arguments rebutting the Examiner’s findings regarding the subject matter of
claim 27? We decide this issue in the affirmative.
FINDINGS OF FACT & ANALYSIS
The Examiner determines that the spring loaded biasing member of
claim 27 would have been an obvious, well known alternative to Cappel
‘788’s screws for the obvious reason to expect similar end results (Ans. 8).
Appellants argue that the spring loaded biasing members permit end
walls to track the movement of the roller and thus provide a different result
from Cappel ‘788’s screws that would rigidly secure the roller between the
end walls (App. Br. 8).
Appellants have presented a reasonable argument that addresses and
rebuts the Examiner’s reason for using the spring loaded biasing means in
lieu of Cappel ‘788’s screws. The Examiner has not provided any argument
or reasoning to rebut Appellants’ argument.
On this record we are constrained to reverse the Examiner’s § 103
rejection of claim 27.

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Rejection (4)
ISSUE
Did the Examiner reversibly err in finding that Feathers is analogous
art because it is directed to a coating die for coating a work piece (i.e., same
field of endeavor)? We decide this issue in the negative.

FINDINGS OF FACT & ANALYSIS
Appellants contend that Feathers is non-analogous art because it is
directed to a removable insert for die molds which is a different field of
endeavor than coating from a transfer roller to a work piece (App. Br. 8).
Appellants further argue that the problem they address by the claimed
invention is continuously applying a coating to a transfer roll, which
Feathers is not reasonably pertinent to that problem. (Id. at 8-9). Appellants
do not specifically argue the Examiner’s reason for combining Feathers’
teachings with the combination of prior art. Id.
The Examiner finds that Feathers teaches an extrusion coating die for
coating a work piece with a variety of coating fluids (Ans. 10). In other
words, the Examiner finds that Feathers is in the same field of endeavor as
Appellants (i.e., coating apparatus).
Appellants do not respond to this finding of the Examiner (Reply Br.
3). Rather, Appellants focus on the problem solved by Feathers’ invention
as being different than Appellants’ problem. Id.
On this record, we agree with the Examiner’s unrefuted finding that
Feathers’ extrusion coating die is analogous art in that it is in the same field
of endeavor as Appellants’ claimed invention. Therefore, we affirm the
Examiner’s § 103 rejection of claims 28 and 29.
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DECISION
The Examiner’s decision is affirmed-in-part.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.

ORDER
AFFIRMED-IN-PART

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