Appeal No. 1996-2050
Application 08/146,779
respect to the applied prior art in this appeal by finding that, prima facie, one of
ordinary skill in this art would have modified the apparatus of Thiele by exchanging the “hard rubber or
other like semi-resilient material” surfaced coating rolls thereof (e.g., page 1, left col., lines 44-45) with
the non-woven surfaced coating rolls disclosed in Lux, which reference teaches that such fabric
surfaced coating rolls “are superior and have a longer lifetime than the rubber” (answer, pages 3-4; see
Thiele, page 1, left col., lines 43-45; see Lux, col. 2, lines 30-36, with col. 1, lines 27-34).
Appellants submit, inter alia, that “neither Thiele nor Lux disclose a motivation for making such
a combination” (brief, page 10) because “there is nothing in Thiele which would lead one to use
anything other than a roller of semi-resilient material,” such as rubber (id., page 13). They further point
out that while Lux “discusses the use of rubber rolls for treatment of metal sheet or metal coil, and the
benefit of wear resistance by using non-woven rolls . . . metal sheet or metal coil,” Thiele “relates to an
apparatus for coating paper web (Col. 1, lines 3-7), where damage to the rubber is unlikely” (id., page
14).
The examiner responds that while Thiele teaches “an apparatus for coating sheet material . . .
specifically . . . paper, one of ordinary skill in the art knows that the Thiele apparatus would coat any
sheet material whether paper, plastic, metal, etc. via the use of rubber applicator rolls” or “some other
material having some degree of resiliency” (answer, page 6; emphasis supplied). Thus, the examiner
contends that “[w]hile Thiele et al do not explicitly teach using non-woven applicator rollers, it was
known in the coating art, at the time the invention was made, to use non-woven applicator rollers in
place of rubber rollers to coat sheet material because the non-woven material lasted longer than the
rubber as evidenced by [Lux]” and, therefore, it would have been obvious to used non-woven rollers of
Lux in place of rubber applicator rollers of Thiele “since the non-woven rollers have 1) some degree of
resiliency and 2) have a longer lifetime” (id.).
We find that Thiele does provide an apparatus for coating paper in which the surfaces of the
coating rolls are preferably “a surface layer of medium hard rubber or other like semi-resilient material”
(page 1, left col., lines 43-45) so that the
coating material applied to the surface of [the] coating rolls 2 and 3 is smoothed and the films
carried on said rolls have uniform thickness. The [paper] web 1 in passing between the rolls
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