Ex Parte Schnyder

Patent Trial and Appeal BoardOct 25, 2012

11022881 (P.T.A.B. Oct. 25, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte EUGEN SCHNYDER ____________________ Appeal 2010-007435 Application 11/022,881 Technology Center 3700 ____________________ Before: CHARLES N. GREENHUT, MICHAEL L. HOELTER, and JAMES P. CALVE, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-007435 Application 11/022,881 2 STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1- 7, 10-12, 15, 17, 18, 20, 22, 23, 25-27, 31, 32, and 34. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. The claims are directed to a heatable roll. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A heatable roll for thermal treatment of material webs comprising: a supporting system; and a roll shell revolving around the supporting system, wherein the roll shell comprises a heatable outer shell and a thermally insulating inner shell, and the thermally insulating inner shell is arranged between the outer shell and the supporting system, wherein a thickness of the thermally insulating inner shell is less than a thickness of the heatable outer shell, and the heatable outer shell is inductively heatable. REJECTIONS Claims 1-5, 7, 10-12, 15, 17, 18, 25-27, 32, and 34 are rejected under 35 U.S.C. § 102(b) as being anticipated by Dahl (GB 2178509 A, pub. Feb. 11, 1987). Ans. 4. Claims 6, 22, and 23 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Dahl. Ans. 8. Claims 20 and 31 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Dahl in view of Schnyder (US 5,813,960, iss. Sep. 29, 1998). Ans. 3. Appeal 2010-007435 Application 11/022,881 3 OPINION Dahl contains a layer 11 that is described as “heat-insulating.” Dahl 3:18-20. However, presumably to meet the limitations regarding thickness, in each of the above rejections the Examiner interprets Dahl’s metal layer 10 and temperature resistant elastic intermediate layers 25 as the “thermally insulating inner shell” of Appellant’s claimed combination, as opposed to Dahl’s heat-insulating layer 11. The Examiner believes such an interpretation to be reasonable because “temperature-resistant elastomer (25), although not explicitly disclosed, inherently possesses some insulating characteristics.” Ans. 13. While the insulative properties of a material are a question of degree, the presence of some insulating characteristics, no matter how minimal, does not render a material what one of ordinary skill in the art would consider “thermally insulating.” By the Examiner’s logic, essentially any material could be considered “thermally insulating.” One skilled in the art would not reach such a conclusion, particularly in view of Dahl’s disclosure that layer 11 is “heat-insulating” and layer 25 is “temperature- resistant.” To the extent the Examiner relies on the “temperature-resistant” characteristic of elastomer 25 to conclude elastomer 25 is “thermally insulating,” such reasoning is also flawed. Just because a material is resistant to temperature does not necessarily mean it is resistant to temperature change, or “insulating.” Since this reasoning underlies all of the Examiner’s rejections, these rejections cannot be sustained. Appeal 2010-007435 Application 11/022,881 4 DECISION The Examiner’s rejections are reversed. REVERSED hh