Ex parte NELSON et al. - Page 4


                     Appeal No. 1996-2050                                                                                                                                              
                     Application 08/146,779                                                                                                                                            

                     have suggested to one of ordinary skill in this art that fabric rolls are used for squeegeeing action to                                                          
                     remove material from the metal strip as there is no express statement in or inference that may be drawn                                                           
                     from this reference that the fabric rolls disclosed therein or those known in the prior art are used to                                                           
                     apply solutions to the surface or a metal sheet.                                                                                                                  
                                We note that appellants acknowledge the following prior art in their specification:                                  4                                 
                                Efforts to achieve uniform coating of the medium on the [metal] strip and avoid buildup                                                                
                           of the medium have included the use of different materials and difference surface configurations                                                            
                           or textures. Different materials tried have progressed from rubber, to nylon, to urethane and                                                               
                           more recently to composite “non-woven” rolls comprising non-woven synthetic fiber discs that                                                                
                           are stacked and/or bonded together, with a tough, yet flexible binders resin.                                                                               
                                The use of non-woven rolls in place of rubber, urethane or felt rolls in ringer, oiler,                                                                
                           tension/bridle or support roll applications has been known for at least 10 years. Unlike dense,                                                             
                           closed surface rollers such as those made of rubber or nylon, the non-woven rolls such as made                                                              
                           by use of 3M material for example in various sizes and materials offer a high percentage void                                                               
                           volume that provides a degree of absorption which aids in squeegeeing and tension                                                                           
                           functions during the rolling process.                                                                                                                       
                                One of the problems associated with the use of the direct rotary method particularly on                                                                
                           non-woven rolls has been “wet-edges.” . . . The medium builds up in these areas and forms                                                                   
                           annular bands on the porous roll faces. At the exit side of the roll bite, some of this medium                                                              
                           ends up being redeposited on the strip. [Page 3, lines 12; to page 4, line 14; emphasis                                                                     
                           supplied.]                                                                                                                                                  
                     Thus, we find that appellants admit that while non-woven surfaced coating rolls have been used to                                                                 
                     apply coatings to metal strips, such coating rolls have “voids” which “aids in squeegeeing” but which                                                             
                     also causes “wet-edges” that result in redeposited medium, that is, a non-uniform coating.                                                                        
                                We are of the opinion that the term “material” in appealed claim 1 encompasses “paper” as that                                                         
                     term is used in Thiele and thus the apparatus of this reference is applicable prior art.  Even though it                                                          
                     would appear that the apparatus of Thiele could be modified by the substitution of a non-woven                                                                    
                     surfaced roll, such as a non-woven surfaced roll as disclosed in Lux or as otherwise known as admitted                                                            
                     by appellants, for a rubber or other semi-resilient material, that fact alone does not make a prima facie                                                         
                     case of obviousness in the absence of a suggestion to one of                                                                                                      

                     4It is axiomatic that our consideration of the prior art must, of necessity, include consideration of the                                                         
                     admitted state of the art. In re Nomiya, 509 F.2d 566, 184 USPQ 607 (CCPA 1975).                                                                                  
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