Source: USPQ, 2d Series (1986 - Present) > U.S. Patent and Trademark Office, Board of Patent Appeals and
`Interferences > Ex parte The Successor In Interest Of Robert S. McGaughey, 6 USPQ2d 1334 (Bd. Pat. App. & Int. 1988)
`
`6 USPQ2d 1334
`Ex parte The Successor In Interest Of Robert S. McGaughey
`U.S. Patent and Trademark Office, Board of Patent Appeals and
`Interferences
`No. 87-3396
`
`Headnotes
`
`Released March 4, 1988
`
`PATENTS
`[1] Practice and procedure in U.S. Patent and Trademark Office -- Re-examination -- Prior art considered
`(► 110.1505)
`
`Consideration of request for re-examination made pursuant to 35 USC 302 is limited to review of prior patents
`and printed publications, which must be construed in light of record to determine whether substantial new
`question of patentability has been raised.
`
`[2] Practice and procedure in U.S. Patent and Trademark Office -- Re-examination -- Prior art considered
`(► 110.1505)
`
`Any unequivocal admission, defined as acknowledged, declared, conceded, or recognized fact or truth, which
`would be considered in initial examination under 35 USC 132 and 133 should also be considered, pursuant to 35
`USC 305, in re-examination proceedings, and thus prior art admissions established in record are to be
`considered during re-examination.
`
`[3] Patentability/Validity -- Obviousness -- Relevant prior art (► 115.0903)
`
`Patentability/Validity -- Obviousness -- Evidence of (► 115.0906)
`
`Decision of examiner holding claims 1 through 26 of invention unpatentable under 35 USC 103 upon re-
`examination is affirmed, since review of record, including prior art admissions, shows that subject matter of
`invention as whole would have been obvious to person having ordinary skill in art at time invention was made.
`
`Particular Patents -- General and Mechanical -- Composite Structural Materials
`
`3,646,651, McGaughey, abrasion and corrosion resistant composite structural materials and the like, decision on
`re-examination holding all 26 claims unpatentable affirmed.
`Case History and Disposition
`Appeal from decision of Mark Rosenbaum, primary examiner.
`
`Request for re-examination filed March 10, 1986, control no. 90/000,965, for re-examination of patent no.
`3,646,651, issued March 7, 1972, based on application serial no. 505,692, filed October 29, 1965. From decision
`holding claims 1 through 26 unpatentable, appellants appeal. Affirmed, with dissenting opinion by Henon, Stahl,
`Craig and Pendegrass, examiners-in-chief.
`Attorneys
`Walter J. Blenko, Jr. and Eckerty, Seamans, Cherlin & Mellot, Pittsburgh, Pa., and Paul, Lorusso & Loud, Boston,
`Mass. for appellants. 1
`
`1 Hereafter appellant.
`
`Judge
`Before Quigg, commissioner of patents and trademarks; Peterson, deputy commissioner; Tegtmeyer, assistant
`commissioner; Serota, chairman; Calvert, vice chairman;
`
`Page 1 of 14
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`Biogen Exhibit 2019
`Coalition v. Biogen
`IPR2015-01136
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`

`
`and Henon, Torchin, Stahl, Craig, Steiner, Pendegrass, Lynch, and W. Smith, examiners-in-chief.
`
`Page 1335
`
`Opinion Text
`
`Opinion By:
`Lynch, Examiner-in-Chief.
`
`This is an appeal from the holding of the examiner that claims 1 to 26 are unpatentable under 35 USC §103. There
`are no other claims pending in this reexamination. The panel considering this appeal has been expanded in view of
`the importance of the legal issues involved. A definitive ruling on these issues is necessary for the orderly
`administration of reexamination cases within the PTO.
`
`The patent upon which this reexamination proceeding is conducted is directed to a corrosion resistant structure and,
`in particular, to a corrosion resistant roll such as used in a steel mill. A resin containing a mat or cloth of fibers is
`applied to a metal roll and then an elastomer cover is bonded to the resin. The choice of materials to be used as the
`resin and mat are set forth in the patent in column 2, lines 22-39. The materials for the elastomer are set forth in
`column 2, lines 61-76.
`
`The request for reexamination was directed solely to claims 12, 22 and 26. That is, the requestor, S.W. Industries,
`Inc. (Stowe Woodward), cited prior art patents and printed publications that raised a new question of patentability
`with regard to claims 12, 22 and 26. However, all claims now stand rejected. Important legal issues have arisen due
`to the nature of that rejection. During prosecution of this reexamination application, claims 12 and 22 were
`amended. All other claims, including claim 26, remain unchanged from the corresponding patent claims.
`
`Claims 12, 22 and 26, are representative of the claimed subject matter at issue and read as follows:
`
`12. A composite abrasion and corrosion resistant structure comprising a base member, a relatively hard
`acid-resistant resin layer selected from the group consisting of polyester, phenolic and epoxy resins adhered
`to said base member, a substantially coextensive mat of fibrous material adhered to and embedded in said
`layer selected from the group consisting of fiber glass and fibers of polyvinyl chloride copolymer,
`polyacrylonitrile, polyester, polyamide, asbestos, and crocidilite, and an erosion-resistant elastomeric
`material covering adhered to said resin layer.
`22. A composite abrasion and corrosion resistant structure comprising a base member, a relatively hard
`acid-resistant resin layer adhered to said base member, a coextensive reinforcing mat of fibrous material
`adhered to and partially embedded in said resin layer, a second resin layer bonded to said reinforcing mat
`and to said first-mentioned resin layer, and an erosion-resistant elastomeric material bonded to said second
`resin layer.
`26. A polyurethane rubber covered roll, comprising a metal roll core, a fiber layer impregnated with a
`thermosetting resin and wrapped on and united to the periphery of said core, and a polyurethane rubber
`layer encircling and united to said fiber layer.
`
`We note that claims 24 and 25 are claims copied from U.S. Patent No. 3,451,112, issuing June 24, 1969, to Karmell
`et al. and appellant was awarded priority in interference proceedings (Interference No. 97,088). Claim 26, copied
`from U.S. Patent No. 3,490,119, issuing January 20, 1970, to Fukuyama et al. was the count of another interference
`proceeding in which appellant was awarded priority (Interference No. 97,504). 2
`
`2 The issue of patentability now before us could not have been raised at final hearing in either of these
`interference proceedings because, prior to the amendment of 35 USC §135 (Pub.L. 98-6222, §202,
`effective February 8, 1985), the question of patentability was not “ancillary to priority.” Glass v. DeRoo ,
`239 F.2d 402, 112 USPQ 62 (CCPA 1956).
`
`The patent involved herein is also involved in litigation in the United States District Court for the District of
`Massachusetts (Civil Action No. 85-3750-S) and in the United States District Court for the Western District of Virginia
`(Civil Action No. 85-0149-H). Reference is made to pages 6 and 7 of the brief for further details regarding those
`litigations. 3 The United States District Court for the Western District of Virginia has granted a stay of three months,
`beginning October 8, 1987, in order that this Board may render a decision on the examiner's final rejection.
`
`3 Other litigations in the United States District Court for the District of South Carolina (Civil Action Nos. 84-
`1379-6 & 83-1735-6) have been settled.
`
`The references of record relied on by the examiner are:
`
`Pigott et al. (Pigott) 3,352,955 November 14, 1967
`
`Dunn, “Epoxy Resins In Anti-Corrosive Applications,” Corrosion Technology , August, 1959, pages 223 to 226.
`Page 1336
`
`Page 2 of 14
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`

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`The examiner further relies on an admission of prior art 4 set forth in the patent under reexamination. The examiner
`refers to column 1, line 37 through column 2, line 13 of the patent as setting forth the admission of prior art.
`
`4 The examiner refers to the admitted prior art by the acronym APA.
`
`Additional evidence of record:
`
`The affidavit of Borge Wahlstrom, submitted under 37 CFR 1.132 on December 22, 1986.
`
`The affidavit of Brendan W. Kelly, submitted under 37 CFR 1.132 on December 22, 1986.
`
`Birkin 3,042,995 July 10, 1962 (cited during the original prosecution of the McGaughey patent)
`
`Claims 1 to 26 stand rejected as being unpatentable under 35 USC §103 in view of prior art. With respect to all of
`the claims, the examiner cites the admitted prior art in view of Dunn as evidence of obviousness. Alternatively, with
`respect to claim 26 only, the examiner cites the admitted prior art in view of Dunn and further in view of Pigott as
`evidence of obviousness.
`QUESTIONS RAISED
`The legal questions which have arisen in this appeal are: (1) What materials can be relied upon in rejecting claims
`once a reexamination proceeding has been ordered? (2) With specific regard to this appeal, can an admission
`established in the record (such as the description of the prior art given in appellant's patent at column 1, line 37 to
`column 2, line 13), be relied upon by the examiner?
`
`The dissent argues that a fair reading of the reexamination statute, 35 USC §§301-307, clearly limits the evidence
`which may be considered in the rejection of claims in a reexamination proceeding only to prior patents and printed
`publications. The dissent further implies that 37 CFR 1.106(c), 1.550(a) and 1.552(a) as well as M.P.E.P. §§2209,
`2254 and 2258 are confusing and may be in conflict with the statute. Finally, the dissent maintains that the legal
`issues in this case have already been decided in the previous expanded panel decision in Ex parte Horton , 226 USPQ
`697 (BPAI 1985).
`
`Initially we point out that we are not reviewing a request for reexamination. We are reviewing a rejection which has
`arisen in a reexamination proceeding after a request for reexamination was ordered based on prior patents and
`printed publications. It appears that the decision in Ex parte Horton , supra , and the dissent have confused the
`requirements followed when a request for reexamination is under consideration with the requirements to be followed
`after the request has been made and granted. 5
`
`5 To the extent Horton held an admission is not prior art which can be used in a reexamination, the holding
`is dicta. In point of fact, the panel held that the examiner failed to establish that the photographic evidence
`relied upon was prior art at all! See 226 USPQ at 700.
`
`The reexamination statute is remedial in nature since its function is to correct longstanding problems in the existing
`statute. 6 A basic purpose of the statute is to provide a
`
`Page 1337
`more efficient resolution of validity issues without recourse to the expensive and time consuming patent litigation
`which was often necessary under the existing provisions of the patent statute. 7 A further purpose was to provide an
`aid to the courts and to the public by providing the examiner's input as to patentability in light of new information on
`preexisting technology which has arisen since the particular patent under reexamination issued. 8 It is axiomatic that
`statutes which are remedial in nature are to be construed liberally. Tcherepnin v. Knight , 389 U.S. 332 (1967);
`Rettig v. Pension Benefit Guaranty Corp ., 744 F.2d 133 (D.C. Cir. 1984); and International Union, U.A.W. v.
`Marshall , 584 F.2d 390 (D.C. Cir. 1978). Consequently, a narrow interpretation of the reexamination statute which
`would frustrate the basic purposes of the statute is to be avoided.
`
`6 As Commissioner Diamond testified--
`Reexamination is a long-overdue improvement for a patent system struggling to
`promote innovation and entrepreneurship in a nation facing economic problems that
`technology must help solve.
`Under the present law, only the patent owner can obtain a reevaluation of patent
`validity by the PTO on the basis of newly discovered prior art. The PTO has a special
`reissue procedure for this purpose, but it cannot be initiated by a member of the
`public or even by the PTO itself.
`Members of the public today have only two ways of contesting patent validity, no
`matter how affected or concerned they may be about the validity of a particular
`patent. A person may either wait to be sued for patent infringement and then raise
`the defense of invalidity or, if a business interest is directly threatened, bring a
`declaratory judgment suit.
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`Page 3 of 14
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`Both of these remedies must be sought in a Federal court, and they are almost
`always expensive, protracted, and uncertain as to outcome. They place special
`hardships on small businesses and individual inventors, those least able to finance
`and await the outcome of litigation. Reexamination would provide a simpler, far less
`expensive, and prompter administrative procedure for evaluating the effect of newly
`discovered patents and publications on patent validity.
`It would allow patent claims to be tested in the same way they were originally
`tested for patentability; that is, through examination by an expert patent examiner.
`All of the Office's procedures available to patent applicants would be available in
`reexamination cases.
`Industrial Innovation and Patent and Copyright Law Amendments: Hearings Before
`The Subcommittee On Courts, Civil Liberties, And The Administration Of Justice Of
`The House Comm. On The Judiciary , 96 Cong., 2nd Sess., pages 590-606, at pages
`591-593 (1980) (Statement of the Honorable Sidney A. Diamond, Commissioner of
`Patents and Trademarks).
`7 Legislative History, P.L. 96-517, 1980 U.S. Code Congressional & Administrative News, pages 6460-6467,
`at 6462-6463.
`8 Id. at page 6462.
`
`A. The Reexamination Request
`[ 1 ] Turning to the specific provisions of the statute, we note that section 302 states that a request for
`reexamination may be filed on the basis of any prior art cited under section 301 of Title 35. Section 301 states that
`the prior art “ . . . consist[s] of 9 patents or printed publications --.” Thus, it is clear, on the basis of section 302,
`that a consideration of a request for reexamination is limited to prior patents and printed publications which are then
`construed in light of the record 10 to determine whether a substantial new question of patentability has been raised.
`This is consistent with the further intent of the statute that a reexamination proceeding is to be ordered under
`prescribed conditions to prevent the undue expense and harassment experienced with similar foreign reexamination
`and protest proceedings. 11
`
`9 The question of whether the language “consist[s] of” constitutes a closed term, as such language is
`construed in the patent sense, is irrelevant to the issues in-involved in this appeal, since section 301 limits
`the requestor's submission, not the reexamination proceeding, which is controlled by section 305 as will be
`explained below.
`10 This is not to say that a requestor can effectively ask the PTO to relitigate issues already decided by a
`court. See In re Pearne , 212 USPQ 466 (Comm'r PTO 1981); In re Hunter , 213 USPQ 211 (Comm'r. PTO
`1982); and In re Wechterle , 213 USPQ 868 (Comm'r PTO 1982). Thus, the PTO should also be made aware
`of prior litigation along with prior patents and printed publications so that the full record may be accurately
`considered.
`11 Commissioner's statement, supra , note 5, at page 594.
`
`B. The Reexamination Proceeding
`[ 2 ] After the Commissioner has determined that a substantial new question of patentability has been established
`by the requestor under section 303(a) and a reexamination order has been issued pursuant to section 304, the
`actual conduct of the reexamination proceedings is dictated by section 305 of the statute. Section 305 specifically
`provides that “-- reexamination will be conducted according to the procedures established for initial examination
`under the provisions of sections 132 and 133 of this title.” Section 305 does not narrowly limit the Commissioner to
`the same restrictions recited in sections 301 and 302. Contrary to the position taken by the dissent, section 132 of
`Title 35 is not wholly procedural. 12 This section provides that “[w]henever -- any claim -- is rejected -- the
`Commissioner shall notify the applicant thereof, stating the reasons for such rejection -- together with such
`information and references as may be useful in judging of the propriety of continuing the prosecution of his
`application --.” We hold that it would be contrary to sections 132 and 305 and that it would frustrate the intent of
`the reexamination statute if we were to rule that the examiner cannot state
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`Page 1338
`valid reasons for a rejection based upon information established in the record together with other references as may
`be useful to the reexamination patentee in determining how to proceed further.
`
`12 The dissent relies on certain dicta in In re Etter , 765 F.2d 852, 225 USPQ 1 (Fed.Cir. 1985) in support of
`its position that section 305 is procedural. No issue as to section 305 arose in that case. The evidence in
`that case was restricted solely to prior patents. The issue in that case was whether the presumption of
`validity of 35 USC §282 was applicable to a reexamination proceeding. Therefore, the Court's comments
`regarding reexamination, as quoted by the dissent, merely represent a generalized summary of what the
`reexamination process is, and do not address the issue of what evidence the examiner may consider under
`section 305.
`
`Page 4 of 14
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`The dissent's reliance on In re Lanham , 1 USPQ2d 1877 (Comm'r. PTO 1986) is also misplaced. Much of
`the commentary in Lanham is merely dicta which is irrelevant to the issue therein, and again appears to
`confuse the requirements followed when a request for reexamination is under consideration with that to be
`followed after the request has been granted. The real issue of Lanham was simply whether the PTO may
`consider further submissions by a requestor after the patentee's reply to the request for reexamination has
`been filed.
`
`This is not to say that the Office has been willing to open reexamination to any type of evidence that is available to
`the examiner during initial examination. The Commissioner has construed section 305 conservatively. Facts,
`including admissions which have already been established in the record, have been authorized for use in
`reexamination proceedings. See 37 CFR 1.106(c) and M.P.E.P. §2258. 13 The PTO has not authorized other types of
`evidence such as on-sale bars, public use issues or issues relating to fraud. Thus, the implication by the dissent that
`this decision will result in such issues being authorized is unfounded. For purposes of this appeal, we need not and
`do not consider whether other facts besides admissions established in the record are authorized under section 305.
`
`13 Ex parte Horton, supra , has taken an unduly narrow interpretation of the reexamination statute which
`we find is incompatible with section 305. Curiously the Horton opinion never even mentions section 305. As
`noted above, it appears that the opinion confused the requirements for a request for reexamination with
`the requirements necessary after a reexamination proceeding has been instituted. Thus, the opinion relies
`solely on a narrow interpretation of the rules and the M.P.E.P. rather than considering section 305 to
`support a holding that admissions cannot be utilized in a reexamination proceeding. For example, the
`opinion states:
`While the examiner did not cite this rule [37 CFR 1.106(c)] in support of his
`position, we raise the point here because it appears to open reexamination
`proceedings to any and all issues affecting patentability so long as there is a related
`admission. However, we are compelled to construe the rule in light of the statute
`and other implementing rules which, as we discussed hereinabove, specifically
`restrict reexamination to a consideration of patents and printed publications. Thus,
`for an admission to form some or all of the basis for a prior art rejection in
`reexamination proceedings, such admission must necessarily relate to patents or
`printed publications. Otherwise, patentees or patent owners would be able to
`circumvent the restrictive nature of the statute by making admissions relating to
`prior public use, sale, abandonment, etc. issues which, as we have seen were never
`intended to be resolved by way of reexamination. ( 226 USPQ at 702)
`We do not agree. 37 CFR 1.106(c) is fully supported by section 305 of the statute. There
`is no basis in the reexamination statute for the narrow interpretation of 37 CFR 1.106(c)
`given in Horton .
`
`In the initial examination of patent applications, admissions by the applicant are considered for any purpose
`including evidence of obviousness under section 103. See In re Nomiya , 549 F.2d 566, 184 USPQ 607 (CCPA 1975);
`In re Hellsund , 474 F.2d 1307, 177 USPQ 170 (CCPA 1973); and In re Garfinkel , 437 F.2d 1000, 168 USPQ 659
`(CCPA 1971). Those holdings are clearly in accord with sections 132 and 133 and we hold that they are incorporated
`into section 305. Moreover, in at least one prior decision admissions in the specification of the patent being
`reexamined were considered as part of the prior art under section 305. See Ex parte Seiko Koko Kabushiki Kaisha
`Co ., 225 USPQ 1260, 1262 (Bd. App. 1984).
`An admission is defined as an acknowledged, declared, conceded or recognized fact or truth. 14 Thus, admissions are
`simply facts. In this case the admission is an uncontroverted fact. Moreover, as pointed out in Graham v. John Deere
`Co ., 383 U.S. 1, 148 USPQ 459 (1966), “the scope and content of the prior art are to be determined” as a
`preliminary factual finding prior to deciding a question of patentability under 35 USC §103. We hold that an
`admission relating to prior art is a fact which is part of the scope and content of the prior art which every examiner is
`required to consider whether in an initial examination or in a reexamination proceeding. To ignore such admitted
`facts would constitute an unwarranted restriction on the scope and content of the prior art. Rejections based on such
`a standard would be meaningless. However, as stated in Stratoflex Inc. v. Aeroquip Corp ., 713 F.2d 1530, 1538,
`218 USPQ 871, 879 (Fed.Cir. 1983), “[i]t is jurisprudentially inappropriate to disregard any relevant evidence on any
`issue in any case, patent cases included.” Thus to ignore prior art admissions would handicap any patentability
`determinations rendering them practically useless. How would such determinations aid the courts or the public by
`providing a meaningful input as to patentability? Congress certainly did not intend a useless procedure.
`
`14 C.J.S. 411.
`
`Moreover, admissions take different forms. For instance, the preamble of a Jepson claim 15 is an admission usable
`under 35 USC §103 when that admission relates to the prior art of another. Reading & Bates Const. Co. v. Baker
`Energy , 748 F.2d 645, 223 USPQ 1168 (Fed.Cir. 1984); In re Fout , 675 F.2d 297, 213 USPQ 532 (CCPA
`Page 1339
`1982); In re Ehrreich , 590 F.2d 902, 200 USPQ 504 (CCPA 1979). Certainly, the preamble of a Jepson claim which
`relates to prior art of another should not be ignored in a reexamination. As we read section 305 of the statute, any
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`Page 5 of 14
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`unequivocal admission which would be considered in initial examination under sections 132 and 133 should be
`considered in a reexamination proceeding. 16 To construe section 305 otherwise would be to construe it in such a
`narrow fashion as to change the plain wording of the statute. Such a narrow interpretation finds no basis in the
`legislative history (note 6, supra ), defies common sense and frustrates the purpose of the statute. Thus, we hold
`that prior art admissions established in the record are to be considered in reexamination proceedings. Insofar as Ex
`parte Horton , supra , may conflict with the views expressed herein, it is hereby overruled .
`
`15 Ex parte Jepson , 1917 C.D. 62, 243 O.G. 525 (Comm'r. Pats. 1917) and 37 CFR 1.75(e).
`16 For instance, why should a Figure labelled “Prior Art,” as in In re Nomiya, supra , be ignored in a
`reexamination?
`
`With respect to any possible conflict between 37 CFR 1.552(a) and 37 CFR 1.106(c), we note that 1.106(c) was
`adopted subsequent to 1.552(a) and that the Commissioner has already interpreted section 1.106(c) as not
`constituting a change in practice but simply as more closely reflecting current practice. In the notice concerning the
`adoption of the rule published at 47 Fed.Reg. 21,748 (May 19, 1982), 1019 0.G. 39 (1982), the following stated:
`
`“Five comments were submitted relating to new paragraph (c) of §1.106. Two of the comments favored the
`paragraph as written and three recommended modification or clarification of the paragraph of ensure that it
`is not inconsistent with In re Ruff , et al., 45 CCPA 1037, 118 USPQ 340 (CCPA 1958), and subsequent
`decisions. No modification or clarification of the paragraph is considered necessary since the intent of the
`paragraph was not to change current practice, but was merely to emphasize the importance placed on
`admissions and to make §1.106 more closely reflect current practice, which includes practice following In re
`Ruff, et al ., and subsequent decisions. The amendments to 1.106 are adopted as proposed.
`Section 1.106 is amended to include a new paragraph (c) which emphasizes the importance placed on
`admissions by the applicant or the patent owner in a reexamination proceeding insofar as matters affecting
`patentability are concerned. Paragraph (c) includes a reference to the use of rejections based upon facts
`within the knowledge of the examiner as provided in §1.107. Paragraph (c) does not constitute a change in
`practice, but does result in §1.106 more closely reflecting current practice” (underlining [italics] added).
`
`In this case, the examiner has consistently asserted the admission as part of the rejection of claims 1 to 26.
`Appellant has never denied that admission, he has never attempted to rebut that admission, nor has he argued that
`consideration of the admission is incorrect. Thus, the admission stands in this case as an uncontroverted fact.
`
`Finally, we note that the admission forms a substantial portion of appellant's patent specification. The dissent would
`apparently have the examiner ignore this portion of appellant's specification simply because there is no prior patent
`or printed publication in the record which conforms with the admission. We hold that to ignore this portion of
`appellant's specification is simply not warranted. Accordingly, we hold that the examiner has properly included
`patentee's admission in his rejection of claims 1 to 26.
`C. The Merits
`In Figure 1 of the patent at issue is disclosed a cutaway isometric view of one embodiment of the invention. A steel
`shaft (12) is provided as the axis about which a corrosion resistant roller is formed. Welded to the shaft (12) are
`steel annular disks (18) and welded to the disks (18) is a steel tubular member (16) (col. 3, lines 46-58).
`
`The steel roller surface (16) is then cleaned and roughened to provide a good surface upon which the corrosion
`resistant coating is applied (col. 3, line 63 to col. 4,line 8). Thereafter, a plurality of resin saturated reinforcement
`layers forming a laminated structure are applied. The resin is either polyester, phenolic or epoxy (col. 4, lines 12-
`14), and the reinforcement materials are either fiber glass (col. 4, line 33), Dynel cloth or crocidilite fiber (col. 5,
`lines 29-35). The reinforcement takes the form of cloth, fiber, chopped fiber or a mat of fibers (col. 4, line 30
`through col. 5, line 54). The reinforcement used may differ from layer to layer (col. 4, line 32 through col. 5, line
`54), and the number of layers employed may be varied (col. 5, lines 12-16).
`
`The composite surface is then roughened by sanding and is machined to ensure symmetry and to expose some of
`the reinforcing fiber (40) for good adhesion to the cover. The elastomeric resilient cover (44) is then ap
`Page 1340
`plied (cols. 5-6, bridging par.). Depending on the elastomer used, different treatment of the resin surface is required
`(col. 6, line 3 et seq.). Neoprene is mentioned as one of the elastomers used for the covering (col. 6, lines 8-14).
`
`Figure 3 discloses an embodiment where the composite corrosion resistant materials are placed on other steel
`structures such as tanks, ducts, conveyors, weirs, fan blades or ventilating systems (col. 1, lines 13-30).
`
`Many of the claims, such as claims 1 to 10, 16 to 18, and 24 to 26, are specific to the roller structure. However,
`claims 11 to 15 and 19 to 23 are not specific to rollers, and thus, read on any structure layered with such laminated
`corrosion resistant materials.
`
`The admission appears in the patent beginning at column 1, line 37. The examiner maintains that the admission
`continues from line 37 through column 2, line 13. From our review of this subject matter, it is clear that the portion
`in column 2, lines 6 to 13 does not form part of the admission. Furthermore, we question whether the material from
`column 1, line 73 through column 2, line 6 relates to the admission or is a lead in to appellant's invention. Even
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`
`though appellant does not question the admission, in an abundance of caution, we construe the admission as being
`limited to the material beginning at column 1, line 37 through column 1, line 72.
`
`Patentee admits that roll bodies are usually fabricated from a hollow steel shell covered with an acid resistant cover
`such as Neoprene or other elastomeric material (col. 1, lines 50 to 56). Small ruptures in the Neoprene, which are
`not initially noticed and apparently do not affect the structural integrity of the roller, allow the corrosive liquids to
`seep into the steel core and to destroy it before excessive Neoprene damage is noted (col. 1, lines 58 to 66). Thus,
`the patentee acknowledges that the problem with the prior art rollers is that the steel core structure is destroyed by
`the seepage of corrosive material through the elastomeric cover prior to wearing out of the cover.
`
`The Dunn article is a general purpose reference which discloses a variety of uses for epoxy resins especially in
`anticorrosive and strengthening applications. The Dunn reference was not before the examiner when the original
`patent was under consideration. Dunn states (page 223, center col.) that epoxy resins adhere well to most
`materials, provide excellent electrical and mechanical properties and are resistant to chemical attack. Dunn further
`states that when epoxy resins are used for surface coatings (page 223, right-hand col.), they are abrasion resistant
`(page 224, right-hand col.), they have excellent anti-corrosion properties (page 224, center column) and they
`provide a hard, tough, corrosion-resistant surface. Dunn further states (pages 225-226, bridging par.) that chemical
`engineers use epoxy casting resins for components which must possess mechanical toughness combined with
`chemical resistance.
`
`With respect to chemical reaction vessels, Dunn states that in the past the metal sheeting protecting such vessels is
`often penetrated by the chemicals which attack the lagging 17 behind the protective outer surface so that it had to be
`replaced often (page 225, left-hand col.). By applying an epoxy resincalico 18 coating such problems are prevented.
`Thus, Dunn addresses and solves the same essential problem recited in the prior art admission, supra .
`
`17 A lag is defined, among other things, as “1: a barrel stave 2a: a wooden stave or slat forming part of a
`covering for a cylindrical object b: a strip of any of various materials . . . used in making a covering or
`casing . . . 3; a bearing strip in an arch or vault --“ WEBSTER'S THIRD NEW INTERNATIONAL DICTIONARY,
`1981, page 1264.
`18 Calico is defined among other things as “cotton cloth . . .” “any of various cotton stuffs of European
`make,” “. . . a plain white cotton fabric which is heavier than muslin.” WEBSTER'S THIRD NEW
`INTERNATIONAL DICTIONARY, 1981, page 316.
`
`Dunn also states that epoxy resins are excellent in laminated structures because interlaminar adhesion is strong and
`since epoxy resins adhere strongly to glass fibers. Thus, he continues, their strong adhesive properties enable
`composite assemblies incorporating metal, rubber or other plastic components (page 225 left & center cols.). The
`surface qualities of such laminates are excellent with an absence of cracking or crazing (page 225, center col.). Dunn
`states that laminating with glass fiber is a most appropriate method for making tanks, hoppe