Ex Parte Wawsczyk et al

Board of Patent Appeals and Interferences

Mar 29, 2012

11106210 (B.P.A.I. Mar. 29, 2012)

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.
11/106,210 04/14/2005 Christopher J. Wawsczyk GIPH 0110 PUSP 4379
22045 7590 03/30/2012
BROOKS KUSHMAN P.C.
1000 TOWN CENTER
TWENTY-SECOND FLOOR
SOUTHFIELD, MI 48075
EXAMINER
NAKARANI, DHIRAJLAL S
ART UNIT PAPER NUMBER
1787
MAIL DATE DELIVERY MODE
03/30/2012 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 CHRISTOPHER J. WAWSCZYK,
Christian G. Mayville, and Jeffrey S. Hutchison
________________

Appeal 2010-008018
Application 11/106,210
Technology Center 1700
________________

Before CHUNG K. PAK, CATHERINE Q. TIMM, and MARK NAGUMO,
Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-008018
Application 11/106,210

2
A. Introduction1
Christopher J. Wawsczyk, Christian G. Mayville, and Jeffrey S.
Hutchison (“Wawsczyk”) timely appeal under 35 U.S.C. § 134(a) from the
final rejection2 of claims 18-36, which are all of the pending claims. We
have jurisdiction. 35 U.S.C. § 6. We AFFIRM-IN-PART.
The subject matter on appeal relates to multilayer extruded polymeric
films useful as pigmented outer surfaces of articles. Whereas prior art films
using pigmented thermoplastic ionomers are said to exhibit imperfections
(Spec. 2 [0005]), the film prepared according to the invention is said to be
“essentially free from discoloration and discontinuity such as ambering and
gel-induced imperfections” (id. at 1 [0002]; cf. id. at 4 [0017], indicating that
a film according to the invention “lacks ionic contaminants that function as
gel formation foci”). According to the 210 Specification, the inventors
discovered that “a significant number of gel formations are focused on
impurities introduced into the ionomeric matrix during film formation.”
(Id. at 18 [0059].) It is hypothesized that “the ionomeric material and/or
ionomeric precursors used in the various layers adhere to iron surfaces
located in the extrusion device.” (Id.) The 210 Specification explains that,

1 Application 11/106,210, Article having a multilayer film outer skin
including at least one layer containing a pigmented layer and method of
making the same, filed 14 April 2005, claiming the benefit of a provisional
application filed 14 April 2004. The specification is referred to as the
“210 Specification,” and is cited as “Spec.” The real party in interest is
listed as NJT Enterprises, LLC. (Appeal Brief, filed 30 November 2009
(“Br.”), 1.)
2 Office action mailed 14 July 2009 (“Final Rejection”; cited as “FR”).
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Application 11/106,210

3
“[t]hrough continued use, the ionomeric/iron complex thus formed breaks
off from the surface of the extrusion device and is introduced into the
process stream where it initiates cross-linking and generates a polymeric
region having thermosetting or quasi-thermosetting characteristics.” (Id.)
The iron inclusion-induced gel regions can also lead to surface irregularities,
anomalies in layer texture and thickness, and “ambering” discoloration of
the materials, all of which are undesirable in finish coats. (Id. at [0060].)
In order to solve this problem, the inventors teach that
the polymeric materials that make up the various layers are
processed in a manner that eliminates or minimizes contact
with any iron surfaces. Thus ionomeric containing polymeric
layers can be processed in an iron free environment. Thus all
polymer contacting elements of the extrusion device such as
the barrel and mixing screw are composed of a nonferrous
metal or alloy.
(Id. at 19 [0062].)
Wawsczyk confines its arguments to the rejections of multilayer film
claim 18 (Br. 6-10), and process claims 31 and 36 (Br. 10-14).
Process claim 31 reads:
31. A process for producing a pigmented polymeric film
from polymeric material comprising the steps of:
co-extruding at least one polymeric layer from a co-
extrusion device,
the co-extrusion device having metallic processing
components having non-ferrous metal surfaces
which contact the polymeric material wherein
contact of the polymeric material by any iron
surface of the device is eliminated to reduce or
minimize polymeric regions having trace
quantities of iron as the foci of the regions
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Application 11/106,210

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having thermosetting or quasi-thermosetting
characteristics,
the metallic components consisting essentially
of a metal selected from the group consisting of
non-ferrous metal,
the co-extrusion step occurring with extrusion of at
least one additional polymeric layer.
(Br., Claims App. 3-4; indentation, paragraphing, and emphasis added.)
Multilayer film claim 18 reads:
18. A multilayer film comprising:
a clear coat layer comprising at least one extruded
optically transmissive thermoplastic polymer; and
a pigment layer comprising
at least one extruded thermoplastic material and
at least one particulate pigment interposed within
the thermoplastic material,
wherein the extruded thermoplastic is uniform in
polymerization;
wherein the clear coat layer and the pigment layer are
essentially free of iron-induced imperfections
including iron/ionomer complexes and are free of
polymeric regions having trace quantities of iron
as the foci of the regions and having thermosetting
or quasi-thermosetting characteristics.
(Br., Claims App. 1; indentation and paragraphing added.)
We restrict out attention to claims 18, 31, and 36. The remaining
dependent claims stand or fall with claims 18 and 31, respectively.
37 C.F.R. § 41.37(c)(1)(vii) (2007).
Appeal 2010-008018
Application 11/106,210

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The Examiner maintains the following grounds of rejection:3
A. Claims 18-30 stand rejected under 35 U.S.C. § 102(b) in view
of Vogel.4
B. Claims 31-36 stand rejected under 35 U.S.C. § 103(a) in view
of the combined teachings of Vogel and Sukai.5
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
The claimed invention
Initially, we note that although independent claim 26 (article) and thus
corresponding dependent claims 27-30 require a thermoplastic comprising
an ionomer or an ionomeric precursor,6 independent claims 18 and 31 do
not. Indeed, of claims 19-25, which depend from claim 18, only claims 19
and 20 require the presence of an ionomer or an ionomeric precursor. In
contrast, claims 32-26, which depend from claim 31, all require the presence

3 Examiner’s Answer mailed 18 February 2010 (“Ans.”).
4 Randall Allen Vogel et al., Multilayer Co-Extruded, Ionomeric Decorative
Surfacing, U.S. Patent Application Publication 2002/0055006 A1 (2002).
5 Kiyoshi Sukai et al., Screw Type Extruding or Kneading Machine and
Screw Used Therein, U.S. Patent 4,746,220 (1988).
6 The 210 Specification defines the term “ionomeric precursor” as meaning
“homopolymers, acid co-polymers, monomeric compounds, and various
constituents used to prepare ionomeric materials.” (Spec. 10 [0032].)
Examples of suitable ionomers include alkylene-unsaturated carboxylic acid
and anhydride copolymers neutralized with at least one of sodium, lithium,
or zinc. (Id. at 9 [0028].)
Appeal 2010-008018
Application 11/106,210

6
of an ionomer or an ionomeric precursor.7 In any event, the Examiner has
relied only on prior art teachings of extruded ionomers in the rejections
before us.
For economy of exposition, we begin with process claims 31 and 36.
Claim 31 requires that a pigmented polymeric film be co-extruded from a
device having non-ferrous metal surfaces that contact the polymeric
material. All metallic processing components of the co-extruder that contact
the polymeric material to be extruded must “consist[] essentially of a . . .
non-ferrous metal.” The co-extrusion step must occur with extrusion of at
least one additional polymeric layer.
Giving meaning to all the words of the claim, claim 31 requires that at
least two polymeric layers be extruded, and that at least one of the layers be
pigmented. As for the co-extruding device, although at least one processing
element must consist essentially of a non-ferrous metal, the claims do not
require that all processing elements be metallic. Moreover, giving due
significance to the requirement that the surface of the components that
contact the polymer be non-ferrous, we hold that the requirement that the
metallic components “consist essentially of” a non-ferrous metal is fully met
if the surfaces of the metallic elements are covered by a non-ferrous metal.8
This analysis is not yet complete, however, as it begs the question,
“what is a processing component?” as that term is used in the claims.

7 This follows the subject matter of original claims 1-17.
8 Although the 210 Specification does not define the term, for this Opinion
we may assume, without deciding, that a “non-ferrous metal” is any metal
other than iron.
Appeal 2010-008018
Application 11/106,210

7
To answer this question, we turn to the 210 Specification, which, although it
does not use the phrase “processing component,” states that “all polymer
contacting elements . . . such as the barrel and mixing screw are composed
of a nonferrous metal or alloy.” (Spec. 19 [0062]; emphasis added.) The
purpose is to process the various layers “in a manner that eliminates or
minimizes contact with any iron surfaces.” (Id., emphasis added.) “Thus,”
the 210 Specification explains, “ionomeric containing polymeric layers can
be processed in an iron free environment.” (Id.) These teachings include
both absolute (“eliminates”) and relative (“minimizes”) conditions, and so
are not dispositive of the scope of the term “processing elements.”
The 210 Specification also teaches, however, that ionomers and
ionomer precursors are thought to adhere to iron surfaces, and that
eventually (“[t]hrough continued use”) ionomeric/iron complexes break off
from the surfaces of the extrusion device and enter the process stream.
(Id. at 18 [0059].) Given the high processing temperatures of the extrusion
process,9 it appears that the troublesome iron comes primarily from the
mixing screw and barrel where the temperatures and operating conditions
are most harsh.
Thus, giving the claims the broadest reasonable interpretation, the
metallic processing elements that must be coated with a nonferrous metal are
those that are susceptible to attack by ionomeric resins under extrusion

9 The 210 Specification indicates that suitable polyolefins have process
temperatures up to about 600°F [315°C]. (Spec. 11 [0032].) Similarly,
Vogel indicates processing temperatures for ionomer containing extrudates
as high as 510°F [265°C]. (Vogel 12 [0185], Extruder B in Example 2,
Table 4).
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Appeal 2010-008018
Application 11/106,210

9
and mixing zone (5), and is then extruded through throttling gate 4 to form a
desired profile. (Id. at ll. 20-27 and ll. 36-37, correcting the mislabeling of
zone (4) at l. 23.) Members 5-10 of the screw and 11-16 of the barrel, which
are expected to come into contact with the material to be worked in the
compressing, melting, and metering zones, are advantageously made of
ceramic. (Id. at ll. 33-40.) Members 17-20 of the screw 1, body 2, hopper 3
are made of metal, generally steel, to handle the torsional stress. (Id.
at ll. 45-52.) However, Sukai indicates that if the materials to be extruded
allow, members 17 and 18 may be made of ceramics. (Id. at ll. 52-54.)
The Examiner finds further that Sukai teaches that conventional
extruders have a steel screw and a steel barrel that are plated with hard
chromium. (OA 3 and Ans. at sentence bridging 4-5, both citing Sukai,
col. 7, ll. 38-39.) Specifically, Sukai teaches that
if melt extrusion of the composite material was carried out
under the same conditions as the above in a conventional
extruder suing a steel screw and a steel barrel plated with
hard chromium, the mixing quality of a product deteriorated
and the amount of extruder output was reduced to 80% or
less after continuous operation for 24 hours. After 3 week
continuous operation, the extruder became inoperable.
(Sukai, col. 7, ll. 36-43.) The Examiner takes notice that chromium is a
nonferrous metal, and concludes that conventional extruders have nonferrous
surfaces that contact the polymeric material. (Ans. 5, l. 1.)
The Examiner holds that it would have been obvious to modify the
ionomer extrusion processes taught by Vogel by using “either conventional
extruder or Sukai et al[.]’s disclosed extruder to minimize abrasion and
product variation between start-up and shut-down extrusion.” (Id. at first
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Application 11/106,210

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full para.) Such processes, in the Examiner’s view, meet the limitations of
claims 31-36. (Id.)
Wawsczyk acknowledges the passage cited by the Examiner, and
points to several other passages at columns 7 and 8 that use the term
“chromium plating.”12 “In these instances,” Wawsczyk argues, “the terms
‘chromium’ and ‘chromium plating’ refer to a known feature of the
extruders wherein steel screw and steel barrel are plated with hard chromium
to increase wearability of steel, and in particular, to assist in withstanding
acid contamination and corrosive vapors found in oils and fuels.” (Br. 11,
2d full para.) However, Wawsczyk points out, many components of Sukai’s
extruder, such as the hopper 3, the throttling gate 4, and cap 17, “may be
made of steel, generally iron.” (Id. at 1st full para., citing Sukai, col. 3,
ll. 45-56, and col. 4, ll. 2-6.)
Fundamentally, Wawsczyk argues that the Examiner erred because “a
reference which does not recognize Applicant’s problem cannot suggest its
solution.” (Br. 12, ll. 2-3.) In Wawsczyk’s view, “[t]he unrestricted use of
iron-containing extruding equipments and materials, such as those used in
Sukai or Vogel, is a prima facie showing that the art is simply devoid of any
recognition with respect to the source of problems as set forth herein or the
solutions developed thereupon.” (Id., 2d full para.)

12 E.g., “[t]he thus-machined axle [21], cap member [17], and cylindrical
member [18] were subject to hard chromium plating on the surfaces thereof”
(Sukai col. 7, ll. 15-18; bracketed labels to Fig. 1 added); “the above
composite material was melt extruded under the same conditions as the
above in a conventional melt extruder made of steel with a hard chromium
plating and having the same profile as the above” (id. at col. 8, ll. 18-22).
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Application 11/106,210

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We reject Wawsczyk’s implicit argument that claim 31 excludes
chromium plated steel components in contact with polymeric materials in
the extruder. This argument overlooks the claim requirement that the
metallic processing components have non-ferrous metal surfaces.
Wawsczyk does not dispute the Examiner’s finding that hard chromium
provides a nonferrous metal surface on top of the underlying steel.
Wawsczyk has not directed our attention to harmful error in the Examiner’s
holding that it would have been obvious to use hard-chromium plated steel
components in a conventional extruder.13
As Wawsczyk also points out (Br. 11, 2d full para.), Sukai teaches
embodiments in which the machined axle [21], the cap member [17], and the
cylindrical member [18] were subjected to hard chromium plating. (Sukai
col. 7, ll. 15-17.) Cylindrical screw members 5-10 and barrel lining

13 Although Wawsczyk has not cited it, we have not overlooked Sukai’s
report (Sukai col. 7, ll. 36-43) that product extruded from the chromium-
plated conventional extruder showed signs of deterioration within 24 hours
of continuous operation. The appealed claims, however, are not limited by
an express minimum duration of polymer contact with the non-ferrous metal
surfaces of the processing components. Moreover, in this regard, Sukai was
testing materials containing short-cut glass fibers, which Sukai characterizes
as a “hard fibrous material” (id. at col. 1, ll. 25-30) known to cause abrasion
damage to the extruder (id. at ll. 36-41), including incorporation of metal
from the extruder into the working material (id. at ll. 34-59). Wawsczyk has
not directed our attention to evidence of record that the pigments or metallic
particulates such as “aluminum, silver, tin, graphite, or the like” that may be
added to the pigmented polymeric layer (Spec. 11 [0035]) are nearly so
abrasive. The hard chromium coating would be expected to last longer when
used under milder conditions.
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Application 11/106,210

12
members 11-26 were made from alumina.14 Extruding pigmented ionomers
such as those taught by Vogel through such an extruder to form bi- or multi-
layer films, would meet claim 31 because claim 31 does not require that all
polymer-contacting extruding members be metallic. Thus, we conclude that
Wawsczyk has not shown harmful error in the Examiner’s holding that it
would have been obvious to use such embodiments of Sukai’s extruder in
the processes taught by Vogel.
We also reject Wawsczyk’s implicit argument (Br. 11, 2d full para.)
that claim 31 excludes components such as hopper 3 from being made of
ferrous metals such as steel. This interpretation is not the broadest
interpretation of the claim that is consistent with the specification.
Wawsczyk has not directed our attention to disclosure in
the 210 Specification (or to evidence in the prior art) showing that ferrous
metal contact with the [ionomeric] polymer at any temperature, including
room temperature, leads to iron-induced gel formation and ambering.
We therefore AFFIRM the rejection of claims 31-35 in view of the
combined teachings of Vogel and Sukai.
Claim 36
Claim 36 depends, through claims 35, 34, and 32, on independent
process claim 31. In the process of claim 36, a pigment masterbatch is
prepared by placing particulate pigment in a concentrated form in a resin

14 Sukai’s disclosure that the barrel “was machined to receive aluminum
barrel members inside the barrel” (Sukai col. 7, ll. 19-21; emphasis added) is
clearly a typographical error for “alumina,” the ceramic material used for the
other protected surfaces: cf. id. at l. 46, reciting “ceramics barrel members.”
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Application 11/106,210

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carrier (claim 35), along with a specified amount (0.5 to 10 wt%) of a
suitable compatibilizer comprising acid copolymer ionomeric precursors
(claim 36). Next, the pigment masterbatch is melted, “providing a
polymeric process stream of melted thermoplastic containing particulate
pigment,” and that melted stream is introduced into a polymeric process
stream to produce a pigmented layer, which is then coextruded. (Claim 34;
Br., Claims App. 4.) We need not discuss the remaining process steps to
resolve this appeal.
The Examiner, in rejecting the process claims, does not discuss
claim 36 separately from any other claim. However, the Examiner does
refer (Ans. 4, 1st full para.) to the discussion of Vogel presented in the
rejection of claims 18-30. In the rejection of multilayer film claims 18-30,
the Examiner cites Vogel paragraphs [0170] and [0171] as teaching that
pigments are generally formulated into a pigment masterbatch. (OA 2, last
para.; Ans. 3.) The Examiner further cites Vogel paragraph [0152] as
evidence that the degree of neutralization of an ethylene-methacrylic acid
copolymer affects the melt viscosity. (Id.) From these teachings, the
Examiner concludes that it would have been obvious to use a blend of
ethylene acid copolymer and its ionomer for the desired melt viscosity to
disperse pigment. (Id.)
Wawsczyk argues inter alia that, whereas claim 36 requires “relatively
low amounts of ionomeric precursors . . . the process in Vogel uses a
sufficiently high amount of acid copolymer, 14% or greater, for the
drastically different purpose of increasing viscosity of the polymer blend.”
(Br. 14, 1st full para.) Increasing the viscosity, in Wawsczyk’s view, would
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Application 11/106,210

14
“deter a homogenous and uniform distribution of the pigment materials
rather than facilitate pigment incorporation.” (Id. at 2d full para.)
Wawszcyk’s arguments are not persuasive of harmful error. First, as
the Examiner argues (Ans., para. bridging 8-9), the (meth)acrylic acid units
are neutralized, which reduces the amount of acid units, which correspond to
the “suitable compatibilizer” that includes acid copolymer ionomeric
precursors required by claim 36. As Wawsczyk points out (Br. 13), the acid
content of the ethylene-methacrylate copolymers ranges from about 14-25%.
(Vogel 8 [0144].) The ratio of ionomer15 to polyamide ranges from 60
to 40 wt. % ionomer to 40-60 wt. % polyamide. (Id. at 9 [0149].) Vogel
teaches that neutralization should be about 60% or greater (id. at [0153]) to
achieve an ionomer having a viscosity that would be sufficiently high that
the ionomer would be dispersed in a continuous or co-continuous polyamide
phase (id. at [0151]). Taking mid-range values, the amount of acid moieties
remaining after about 60% neutralization of a 50:50 ionomer-polyamide
mixture in which the ionomer is based on about 18% acid monomers is
roughly 60% × 50% × 18% = 5.4%, which is within the range required by
claim 36.
As for Wawsczyk’s viscosity arguments, we note first that Wawsczyk
has not supported these arguments with evidence. Moreover, we note
(cf. Ans. 3, last line) that Vogel, in the Examples, provides pigment
concentrates of 5% pigment in 95% Bexloy® W720 (Vogel 12 [0179]) and
of 10% pigment in Surly® 9910 (id. at [0184] and at 13 [0190]).

15 Vogel uses the term “ionomer” somewhat loosely here to refer to the
ethylene-acid copolymer, i.e., the “ionomer precursor.”
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Application 11/106,210

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Bexloy® W720 is said to be an HDPE with EMAA copolymer of 10 wt%
acid that is neutralized to approximately 70% (id. at 12 [0178]), which
leaves a residual amount of acid of about 3 wt%. Surlyn® 9910 is said to be
a 15 wt% acid (EMAA copolymer) that is approximately 50% neutralized
(id.), which leaves a residual amount of acid of about 7 wt%. These pigment
carriers have compositions similar to those recommended by Vogel for
blending with polyamides. Their use in pigment concentrate blends
outweighs Vogel’s arguments that the viscosity of such materials would be
inappropriate for a pigment concentrate.
We therefore AFFIRM the rejection of claim 36.
Claims 18-30
To be anticipatory, a reference must describe, either expressly or
inherently, each and every claim limitation, arranged or combined as
required by the claimed invention, and enable one of skill in the art to
practice an embodiment of the claimed invention without undue
experimentation. See, e.g., In re Gleave, 560 F.3d 1331, 1334 (Fed.
Cir. 2009). Our reviewing court has also explained that, “[t]o establish
inherency, the extrinsic evidence must make clear that the missing
descriptive matter is necessarily present in the thing described in the
reference.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999; internal
quotation and citation omitted). It is settled law that “Inherency . . . may not
be established by probabilities or possibilities. The mere fact that a certain
thing may result from a given set of circumstances is not sufficient.” In re
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Application 11/106,210

16
Oelrich, 666 F.2d 578, 581 (CCPA 1981) (internal quotations and citations
omitted).
The Examiner finds that the pigmented ionomeric multilayer films
described by Vogel anticipate films covered by claim 18, even though Vogel
does not “disclose metal details of extruders” (id. at 4, 2d full para.), because
all the required components are present, and because the components were
extruded (Ans. 3-4). The Examiner finds that “Vogel et al[.] clearly state
their product has high quality Class A surface appearance” and that if that
“product has argued imperfections caused by gels and ‘ambers’ or
‘ambering’, Vogel et al[.] would have noticed it and would have disclosed
it.” (Ans. 6.) This silence suffices, in the Examiner’s view, to meet the
Examiner’s burden to come forward with evidence supporting the rejection
for anticipation. (Id.)
The difficulty with the Examiner’s argument is that it stands on an
incomplete evidentiary basis. The mere silence of the prior art as to some
property does not mean that that property is absent. In certain cases, it may
be possible to demonstrate that other properties that have been measured
assure that the required property is present. The Examiner has not, however,
come forward with evidence of such properties regarding the multilayer
films described by Vogel. Alternatively, the Examiner might have shown
that the extrusion device used by Vogel did not have any exposed iron-
containing surfaces, thereby shifting the burden to Appellants. This the
Examiner did not do. Moreover, even though Sukai and Wawsczyk both
indicate that hard chromium plating of steel surfaces in extruders was a
conventional practice, both also indicate that bare steel surfaces were also
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Application 11/106,210

17
conventional. Thus, the preponderance of the evidence of record does not
indicate that the extruders used by Vogel were necessarily coated by hard
chromium.
Due to the lack of evidence demonstrating the absence of iron
inclusions in the extruded multilayer films and the lack of evidence
demonstrating “inherent” chrome plating of the processing surfaces of the
extruder used by Vogel, we REVERSE the rejection for anticipation.
Perhaps a more effective course of action would have been a rejection
of film claims 18-30 under § 103(a) in view of the combined teachings of
Vogel and Sukai. Such a rejection has not, however, been placed before us
for review in this appeal. Given the state of the present record, we decline to
exercise our discretion to enter a new ground of rejection.
C. Order
We REVERSE the rejection of claims 18-30 under 35 U.S.C. § 102(b)
in view of Vogel.
We AFFIRM the rejection of claims 31-36 under 35 U.S.C. § 103(a)
in view of the combined teachings of Vogel and Sukai.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART

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