Ex Parte Kolb

Board of Patent Appeals and Interferences

Sep 24, 2010

11565353 (B.P.A.I. Sep. 24, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WILLIAM BLAKE KOLB
____________

Appeal 2010-001609
Application 11/565,353
Technology Center 3700
____________

Before JENNIFER D. BAHR, STEFAN STAICOVICI, and
KEN B. BARRETT, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2010-001609
Application 11/565,353

STATEMENT OF THE CASE
William Blake Kolb (Appellant) appeals under 35 U.S.C. § 134
(2002) from the Examiner’s decision finally rejecting claims 52-61. Claims
1-51 have been canceled. Appellant’s representative presented oral
argument on September 14, 2010. We have jurisdiction over this appeal
under 35 U.S.C. § 6 (2002).

THE INVENTION
Appellant’s invention relates to a device and method for coating a
moving substrate of indefinite length. Spec. 1, ¶ [0002].
Claims 52 and 58 are representative of the claimed invention and read
as follows:
52. A process for coating a moving substrate of indefinite length,
which process comprises:

a) conveying the substrate past a coating applicator through a
close-coupled enclosure comprising a gap drying system and into a
dryer or curing station;

b) applying a coating composition to the substrate;

c) evaporating and condensing solvent from the coating
composition within the close-coupled enclosure;

d) solidifying the coating in the dryer or curing station; and

e) supplying the close-coupled enclosure with one or more
streams of conditioned gas which flow from the close-coupled
enclosure into the dryer or curing station at a rate sufficient to reduce
condensation in the close-coupled enclosure.

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58. An apparatus for coating a moving substrate of indefinite
length, which apparatus comprises a coating applicator, gap dryer,
dryer or curing station, and substrate-handling equipment for
conveying the substrate past the coating applicator and through the
dryer or curing station, the substrate being enveloped from at least the
coating applicator to the dryer or curing station in a closed-coupled
enclosure supplied with one or more streams of conditioned gas
flowing from the close-coupled enclosure into the dryer or curing
station at a rate sufficient to reduce condensation in the close-coupled
enclosure.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
O’Connor US 4,287,240 Sep. 1, 1981
Arter US 4,365,423 Dec. 28, 1982
Huelsman US 5,581,905 Dec. 10, 1996

The following rejections are before us for review:2
The Examiner rejected claims 52-61 under 35 U.S.C. § 103(a) as
unpatentable over Arter and Huelsman.
The Examiner rejected claims 52-61 under 35 U.S.C. § 103(a) as
unpatentable over O’Connor, Huelsman, and Arter.

SUMMARY OF DECISION
We REVERSE.

2 The rejections of claims 52-54, 56, and 58-61 under 35 U.S.C. §
103(a) as unpatentable over Yonkoski and Huelsman and claims 55 and 57
over Yonkoski, Huelsman, and Arter have been withdrawn by the Examiner.
Ans. 3.
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ANALYSIS
The obviousness rejection over Arter and Huelsman
The Examiner found that Arter discloses all the limitations of
independent claims 52 and 58 “with the exception of a gap drying system,
reduce condensation, condensation, oven.” Ans. 5. As such, the Examiner
turned to the teachings of Huelsman to show “a gap drying system (figs.),
reduce condensation, condensation, oven (16, figs, col. 2, lines 40-50, col. 4,
lines 57-col. 5, line 5).” Id. The Examiner then concluded that:
It would have been obvious to one of ordinary
skill in the art to modify Arter et al by including a
gap drying system, reduce condensation,
condensation as taught by Huelsman et al for the
purpose of improving efficiency of the
condensation vapor recovery system.
Id.
Appellant argues that that the combined teachings of Arter and
Huelsman do not disclose the “flow [of] one or more streams of conditioned
gas ‘at a rate sufficient to reduce condensation in the close-coupled
enclosure,’” as called for by each of independent claims 52 and 58. App. Br.
20.
At the outset, the Examiner admits that the teachings of Huelsman
were used to show the limitation of flowing a stream of condition gas
“to reduce condensation in the close-coupled enclosure,” as called for by
independent claims 52 and 58. Ans. 5 and 8. Although the Examiner points
to col. 2, ll. 40-50; col. 4, l. 57-col. 5, line 5; and the Figures of Huelsman as
evidence that Huelsman discloses the disputed limitation, we could not find
where exactly in these portions Huelsman discusses a reduction of the
condensation by supplying conditioned gas. At most, we find that the cited
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Application 11/565,353

portions of Huelsman disclose eliminating the need for applied convection
when drying liquid coatings on a substrate so as to improve the efficiency of
the vapor condensation recovery system. In other words, in contrast to the
claimed limitation of reducing condensation, we find that the system of
Huelsman actually increases condensation by improving the efficiency of the
system. See e.g., Huelsman, col. 6, ll. 12-17. Accordingly, we agree with
Appellant that the combined teachings of Arter and Huelsman do not render
obvious a flowing conditioned gas “at a rate sufficient to reduce
condensation in the close-coupled enclosure,” as called for by each of
independent claims 52 and 58.
Moreover, while a proposed combination of teachings does not
necessarily require that the structure taught by one of the references be
bodily incorporated into the structure of the other reference, we fail to see
how or in what manner the embodiment presented in Figure 4 of Arter is
proposed to be modified to include the gap drying system of Huelsman, a
modification asserted by the Examiner as something that would have been
obvious to a person of ordinary skill in the art. Specifically, it is unclear
how the Examiner is proposing to modify the system of Arter with the gap
drying system of Huelsman such that the flow rate of the conditioned gas is
“sufficient to reduce condensation in the close-coupled enclosure,” as called
for by independent claims 52 and 58.
Lastly, although claim 58 is drawn to an apparatus, and it is well
established that “apparatus claims cover what a device is, not what a device
does” (see Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464,
1468 (Fed. Cir. 1990)), nonetheless, the Examiner has failed to show that the
apparatus of Arter as modified by Huelsman is capable of flowing
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conditioned gas “at a rate sufficient to reduce condensation in the close-
coupled enclosure,” as called for independent claim 58.
In conclusion, for the foregoing reasons, we cannot sustain the
rejection of claims 52-61 under § 103 as unpatentable over Arter and
Huelsman.

The obviousness rejection over O’Connor, Huelsman, and Arter
The Examiner once more relies on the disclosure of Huelsman
to show the limitation of flowing a stream of condition gas “to reduce
condensation in the close-coupled enclosure,” as called for by independent
claims 52 and 58. Ans. 7 and 10. For the reasons describe supra, the
combined teachings of Arter and Huelsman do not render obvious the flow
of one or more streams of conditioned gas “at a rate sufficient to reduce
condensation in the close-coupled enclosure,” as called for by each of
independent claims 52 and 58. The addition of O’Connor does not remedy
the deficiencies of Arter and Huelsman as described above. Accordingly,
the rejection of claims 52-61 under 35 U.S.C. § 103(a) as unpatentable over
O’Connor, Huelsman, and Arter is likewise sustained.

SUMMARY
The decision of the Examiner to reject claims 52-61 is reversed.

REVERSED

JRG
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Appeal 2010-001609
Application 11/565,353

3M INNOVATIVE PROPERTIES COMPANY
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