Ex Parte Gaska et al

Patent Trial and Appeal Board

Aug 30, 2016

13398311 (P.T.A.B. Aug. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/398,311 02/16/2012 Roman Gaska
47988 7590 08/30/2016
Walter Ottesen, P,A,
POBOX4026
GAITHERSBURG, MD 20885-4026
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
P2009-141 5650
EXAMINER
RIEGELMAN, MICHAEL A
ART UNIT PAPER NUMBER
3654
MAILDATE DELIVERY MODE
08/30/2016 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 ROMAN GASKA, AXEL UNRUH,
CLAUS-LUEDER MAHNKEN, THOMAS BALTES, and
REINHARD TEVES
Appeal2014-008784
Application 13/398,311
Technology Center 3600
Before JOHN C. KERINS, STEFAN STAICOVICI, and LEE L. STEPINA,
Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Roman Gaska et al. (Appellants) appeal under 35 U.S.C. § 134(a)
from the Examiner's final decision to reject claims 1-13. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appeal2014-008784
Application 13/398,311
CLAIMED SUBJECT MATTER
Appellants' invention relates to a force transmission belt having an
elastic foundational body provided with a coating, and a process for
producing such a drive belt. Spec. 1, 11. 13-18.
Claims 1 and 10 are independent. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A force transmission belt having an elastic foundational
body, comprising a top ply as belt backing and a substructure
having a force transmission zone, wherein the force transmission
zone and/or the top ply is/are provided with a coating,
wherein the coating on the force transmission zone and/or
the top ply has at least the following layered construction:
a base coating of a textile material, wherein the base
coating combines with the elastic foundational body to form a
bonded assembly, and
a surface coating comprising a mixture A containing at
least a reactive diluent as per DIN 55945:2007-03.
REFERENCE
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Braun1 DE 10 2007 061735 Al July 23, 2009
REJECTION
Claims 1-13 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Braun.
The Examiner provided an English translation (machine translation)
of this German-language reference to Appellants as part of a Non-Final
Action on July 31, 2011, and our citations to text in Braun refer to this
translation, but using the original paragraph numbering in Braun.
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Application 13/398,311
OPINION
Claim 1 recites, in part, a surface coating comprising a mixture A
containing at least a reactive diluent as per DIN 55945:2007-03.
The Examiner finds that Braun discloses most of the limitations of
claim 1 including a transmission belt 1 with a surface coating 14, 15, but that
the surface coating of Braun does not include a mixture A containing at least
a reactive diluent as per DIN 55945:2007-03. See Final Act. 4. The
Examiner takes the position that "[i]t would have been obvious to one
having ordinary skill in the art at the time the invention was made to provide
reactive diluent as per DIN 55945:2007-03," because "it has been held to be
within the general skill of a worker in the art to select a known material on
the basis of the suitability for the intended use as a matter of obvious design
choice. Final Act. 4 (citing In re Leshin, 125 USPQ 416 (CCPA 1960)).
The Examiner also considers that "one having ordinary skill in the art at the
time the invention was made would have been motivated to provide a
reactive diluent to optimize performance properties such as impact strength,
adhesion, flexibility, filler-loading and solvent resistance of the system." Id.
Appellants assert that "the Examiner failed to make a prima facie
showing of obviousness" because the Examiner provides no support for the
Examiner's position. Appeal Br. 8. Specifically, Appellants argue that "Jn
re Leshin is not applicable," because "no showing has been made that a
skilled artisan knew of the existence of reactive diluents, let alone that
reactive diluents are suitable to make any component of the toothed belt in
Braun," and because "no support has been provided that reactive diluents as
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Appeal2014-008784
Application 13/398,311
claimed were known in the art and were suitable for the intended purpose."
Id. at 9-10.
The Examiner responds that "[r]eactive diluents as per the coating
standard DIN 55945:2007-03 are well known and commonly used materials"
that "are typically used as coating to optimize performance properties such
as impact strength, adhesion, flexibility, and solvent resistance," and as such,
"it would have been obvious to one having ordinary skill in the art to apply
this [well-known] material with well-established properties to a belt
surface." Ans. 2-3. The Examiner notes that "Braun discloses coating the
belt with an [Acrylate] based coating," and that "DIN 55945:2007-03
encompasses [Acrylate] based coatings," and as such, "there is no distinction
in coating material between Braun's coating and the claimed coating." Id. at
3.
In response, Appellants assert that the Examiner's reliance on
common knowledge is improper because, "the Examiner failed to provide an
instant and unquestionable demonstration that adding a reactive diluent to
the transmission belt coating composition of Braun would provide for the
optimized properties." Reply Br. 4. Appellants also assert that "Braun
explicitly states that the ACM is an elastomeric material, i.e., a solid, which
cannot reasonably be considered to correspond to a diluent, i.e., a liquid."
Id. at 4 (emphasis added). Appellants argue that there are other distinctions
between Braun's coating and the claimed coating in that there are no
reaction conditions for acrylate rubber (ACM) and "the ACM in Braun does
not suddenly depolymerize to set free the acrylate to then form a coating as
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Appeal2014-008784
Application 13/398,311
claimed," and as such, "the claimed surface coating and the coating in Braun
are structurally different." Id. at 5.
The Examiner's reliance upon design choice as a basis to modify
Braun is in error. Design choice may be an acceptable rationale for an
obviousness rejection when a claimed device uses known elements in a
configuration recognized as functionally equivalent to a known
configuration. However, in the present case, the Examiner has not provided
evidence that a reactive diluent as per DIN 55945:2007-03 as recited in
claim 1 is a known alternative to either fluororubber or acrylate-rubber as
disclosed by Braun. Likewise, the Examiner's reliance upon optimization to
modify Braun is in error, because the Examiner has not sufficiently
established that reactive diluents are used with either fluororubber or
acrylate-rubber as disclosed by Braun "to optimize performance properties
such as impact strength, adhesion, flexibility, filler-loading and solvent
resistance of the system." Final Act. 4. Moreover, the coating of Braun is
formed by either a vulcanization process in which the coating is applied as
part of an injection molding process and bonded to fabric layers 10, 11, or a
vulcanization process in which a tube of material is placed around a belt
blank and then heated. Braun, paras. 35--42. The Examiner does not
adequately explain how a reactive diluent (liquid) would be included in
either of these processes. Specifically, although Braun discloses an acrylate,
not all acrylates are in liquid form and all acrylates do not form coatings in
the same manner. As such, because the Examiner has not adequately
explained how a reactive diluent as per DIN 55945:2007-03 as recited in
claim 1 would be used in the coating of Braun, we agree with Appellants
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Application 13/398,311
that the Examiner has not established a prima facie case of obviousness.
Accordingly, we do not sustain the Examiner's rejection of claims 1-13 as
unpatentable over Braun.
DECISION
We reverse the Examiner's decision to reject claims 1-13.
REVERSED
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