Page 1
`
`Ex parte Raychem Corporation
`
`Appeal No. 91-2888 from Art Unit 1307.
`
`Request for Reexamination of Patent filed May 11, 1987, Control No. 90/001,240;
`and Request filed March 2, 1987, Control No. 90/001,178 for the Reexamination of Patent
`No. 4,426,339, issued January 17, 1984, based on application Serial No. 06/251,910 filed
`April 7, 1981. Method Of Making Electrical Devices Comprising Conductive
`PolymerCompositions.
`
`Board of Patent Appeals and Interferences
`
`1992 Pat. App. LEXIS 21; 25 U.S.P.Q.2D (BNA) 1265
`
`June 30, 1992, On Reconsideration
`
`NOTICE:
`
`ROUTINE OPINION. Pursuant to the Patent Trial and Appeal Board Standard Operating Procedure 2, the opinion
`below has been designated a routine opinion.
`
`[*1]
`
`Before Seidleck, Tarring and W. Smith, Examiners-in-Chief.
`
`COUNSEL:
`
`Timothy H. P. Richardson for Patent Owner.
`
`Charles M. Cox et al. for Third Party Requestor.
`
`Primary Examiner - James Derrington.
`
`OPINION:
`
`Smith, William F.
`
`Smith, Examiner-in-Chief.
`
`ON REQUEST FOR RECONSIDERATION
`
`Patent owner Raychem asks reconsideration of our decision of April 24, 1992, in which we affirmed the examiner's
`rejection of claims 1 through 100, all the claims pending in this merged reexamination proceeding.
`
`Raychem first questions the statement at page 16 of our opinion where we set forth that Gale can be considered
`
`Page 1 of 11
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`Biogen Exhibit 2020
`Coalition v. Biogen
`IPR2015-01136
`
`

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`1992 Pat. App. LEXIS 21, *1; 25 U.S.P.Q.2D (BNA) 1265, **
`
`Page 2
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`cumulative to the other references relied upon by the examiner and that the examiner's conclusion of obviousness can
`stand absent reliance upon Gale. Specifically, Raychem questions whether this amounts to a new ground of rejection.
`
`We do not find that this observation amounts to a new ground of rejection. One of the issues raised by Raychem in
`this appeal is whether Gale is properly relied upon by the examiner under the circumstances of this reexamination
`proceeding. We agreed with the examiner that Gale is available as evidence of obviousness. Having reached this
`conclusion, we also determined that Gale [*2] can be considered as cumulative to the remaining references relied upon
`by the examiner. The fact that the examiner's conclusion of obviousness can be seen to be proper when based upon
`fewer references than relied upon in the rejection does not necessarily amount to a new ground of rejection. In re
`Kronig, 539 F.2d 1300, 190 USPQ 425 (CCPA 1976). The fact that Gale may be viewed as cumulative does not change
`the thrust of the rejection. Therefore, we decline to remove this passage from our opinion as requested by Raychem.
`
`The second point raised by Raychem is that the term "current-carrying device" used in the Appeal Brief was meant
`to denote a device of the type defined in claim 1. The basis for this new argument is not understood since this term does
`not appear in claim 1. Arguments made by Raychem in the Appeal Brief that references such as Griff or Richart do not
`disclose "current-carrying devices" were inaccurate since the devices of these references clearly are current-carrying.
`While Griff and Richart do not explicitly disclose that current-carrying devices within the generic disclosures of these
`references can be the specific electrical devices encompassed by the [*3] claims on appeal, the teachings of these
`references are clearly relevant to such devices. The relevant disclosures of Griff and Richart are applicable to the
`electrical devices of Bedard and Smith-Johannsen which are essentially the same as those claimed.
`
`We have considered Raychem's request for reconsideration, but decline to change our decision in any manner.
`
`DENIED
`
`This is an appeal from the final rejection of claims 1 through 101. Claim 101 has been cancelled per the request on
`pages 2-3 of the Appeal Brief which leaves claims 1 through 100 for our consideration in this appeal.
`
`Claims 1, 2, 42, and 75 are illustrative of the subject matter involved in this appeal. A copy of these claims as they
`appear in the appendix to the Appeal Brief is attached to this decision.
`
`The references relied upon by the examiner are:
`Richart et al. (Richart)
`3,503,823
`Bedard et al. (Bedard)
`3,858,144
`Smith-Johannsen et al.
`(Smith-Johannsen)
`Gale et al. (Gale)
`
`3,861,029
`4,444,708
`
`Mar. 31, 1970
`Dec. 31, 1974
`
`Jan. 21, 1975
`Apr. 24, 1984
`
`Metals Handbook, "Properties and Selection of Metals", Vol. 1, 8th Edition, page 41 (1961).
`
`Griff, Plastic Extrusion Technology, "Wire [*4] And Cable Covering", 2nd Edition, Chapter 7, pages 192-233 (1968).
`
`Claims 1 through 100 stand rejected under 35 USC § 103 as unpatentable over Bedard in view of Griff, Gale,
`Richart and Smith-Johannsen. We affirm.
`
`BACKGROUND
`
`This is the second appeal in this merged reexamination of U.S. Patent No. 4,426,339 ('339 patent). In our first
`decision, Ex parte Raychem Corp., 17 USPQ2d 1417 (BPAI 1990), we concluded that the subject matter of claims 1
`through 41 would have been obvious to one of ordinary skill in the art at the time of the invention under 35 USC § 103.
`
`Page 2 of 11
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`

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`1992 Pat. App. LEXIS 21, *4; 25 U.S.P.Q.2D (BNA) 1265, **
`
`Page 3
`
`In reaching this conclusion, we relied upon two patents, Smith-Johannsen and Richart, which were not relied upon by
`the examiner.
`
`Accordingly, we denominated our affirmance of the examiner's rejection as a new ground under 37 CFR § 1.196(b).
`
`In response to the new ground of rejection, Raychem elected to reopen prosecution before the examiner during
`which claims 42 through 100 were added and additional evidence was submitted.
`
`THE INVENTION
`
`The claims on appeal are directed to a process for preparing an electrical device which comprises at least two
`electrodes which are in physical and electrical contact with [*5] a conductive polymer composition. Preferably, the
`electrical device is a self-regulating strip heater where the conductive polymer composition comprises carbon black and
`exhibits so-called Positive Temperature Coefficient (PTC) behavior. As set forth in the prior art section of the '339
`patent, prior to the present invention devices of this kind were manufactured by methods which comprised extruding or
`molding the molten conductive polymer composition around or against the electrodes. In these known methods, the
`electrode(s) was not heated prior to contact with the polymer composition or it was heated only to a limited extent.
`
`As claimed, the invention revolves around the discovery that minimizing the initial contact resistance between the
`electrode and the conductive polymer composition will result in a smaller increase in total resistance with time. While
`the '339 patent sets forth several alternative methods of decreasing the initial contact resistance of these electrical
`devices, the claims on appeal are directed to only one of these embodiments, i.e., heating each electrode in the absence
`of the conductive polymer composition to a temperature above the melting point of the [*6] conductive polymer
`composition and bringing the electrodes, while they are at a temperature above the melting point of the conductive
`polymer composition, into direct physical contact with the molten conductive polymer composition as the device is
`being extruded.
`
`OPINION
`
`We have carefully considered the respective positions of the examiner and Raychem n1 [**1267] and find that the
`examiner's conclusion that the subject matter of claims 1 through 100 would have been obvious to one ofordinary skill
`in the art from a consideration of the references relied upon is correct.
`
`n1 We have considered the arguments and record citations set forth in Raychem's Appeal Brief and Reply
`Brief in reaching this decision. The paper dated January 31, 1992, received at the Board February 11, 1992,
`amounts to a post-hearing brief which was not requested by the Board. Accordingly, this paper has not been
`considered. Ex parte Cillario, 14 USPQ2d 1079 (BPAI 1989).
`
`Bedard discloses the basic process for preparing electrical devices including self-regulating strip heaters called for
`by the claims on appeal. The most significant difference between the method disclosed in Bedard and that set forth in
`the [*7] claims on appeal is the present requirement that each electrode be preheated in the absence of the conductive
`polymer composition to a temperature above the melting point of the conductive polymer composition prior to the
`electrodes contacting the molten conductive polymer composition.
`
`In reaching his conclusion of obviousness, the examiner found that at the time of the present invention those of
`ordinary skill in the art were aware of the importance of allowing the conductive polymer composition to completely
`wet the surface of the electrodes during the extrusion process. As set forth at column 2, lines 5-12 of Bedard,
`incomplete wetting of the electrode with the conductive polymer composition can, under certain conditions, create
`"regions of high localized current density leading to degradation and a concomitant increase of resistance at the
`interface [between the electrodes and the conductive polymer composition]."
`
`Page 3 of 11
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`

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`1992 Pat. App. LEXIS 21, *7; 25 U.S.P.Q.2D (BNA) 1265, **1267
`
`Page 4
`
`To this end, the specific invention of Bedard is directed to improving the wetting of the electrodes by the
`conductive polymer composition. As set forth at column 3, lines 24-34 of Bedard, the use of the specific processes
`disclosed in that reference does result [*8] in improved wetting n2 of the electrode by the conductive polymer
`composition.
`
`n2 The use of the word "setting" instead of "wetting" in this portion of Bedard is agreed to be a
`typographical error. The word "setting" is to be read as "wetting."
`
`Smith-Johannsen is also directed to methods of making electrical devices including self-regulating strip heaters in
`which the electrically conductive polymer coating exhibits PCT behavior. This reference provides further evidence that
`at the time of the present invention those of ordinary skill in the art were aware of the need to assure that the electrodes
`in such devices were adequately wetted by the conductive polymer composition. To this end, Smith-Johannsen discloses
`that an electrical device, such as a self-regulating heater, which is formed by an otherwise conventional extrusion of a
`conductive polymer composition around an electrode(s) will have improved electrode wetting when the extruded
`product is annealed. See column 2, lines 38-54 and column 4, lines 37-43 of Smith-Johannsen.
`
`The examiner has relied upon a definition of "wetting" which appears in the Metals Handbook. n3 As seen from
`this definition, the problem concerning [*9] wetting of the electrodes in the electrical devices of Bedard and
`Smith-Johannsen would be recognized by those of ordinary skill in the art as involving the degree of adhesion of the
`conductive polymer composition to the metal electrode as well as the degree of continuity of contact between the
`conductive polymer composition and the metallic electrode.
`
`n3 "A phenomenon involving a solid and a liquid in such intimate contact that the adhesive force between
`the two phases is greater than the cohesive force within the liquid. Thus a solid that is wetted, on being removed
`from the liquid bath, will have a thin continuous layer of liquid adhering to it. Foreign substances such as grease
`may prevent wetting. Addition agents, such as detergents, may induce wetting by lowering the surface tension of
`the liquid. For a contrast, see water break."
`
`Griff is a textbook directed to plastic extrusion technology, Chapter 7 of which is directed to Wire and Cable
`Covering. Griff is relevant to the present inquiry since Bedard and Smith-Johannsen disclose that the electrical devices
`of concern herein are formed by conventional extrusion technology.
`
`On pages 197-198, Griff discloses that [*10] preheating the conductor prior to its contact with the molten plastic
`composition to be extruded about it "prevents premature shrinkage of the hot plastic away from the metal surface." Griff
`specifically states that this premature shrinkage of the hot plastic away from the metal electrode surface causes stresses
`that make the plastic "more susceptible to cracking when warmed." Griff also observes that preheating the conductor in
`this manner affects adhesion and that another benefit of preheating is the removal of substances such as moisture or oil
`on the conductor surface. These latter observations are of interest in that the definition of "wetting" [**1268] relied
`upon by the examiner stresses the role that the adhesive force between the metal substrate and the coated material has in
`this regard and discloses that foreign substances such as grease may prevent wetting.
`
`Gale is further evidence that the problem addressed in Bedard involves a "breakdown in the already poor adhesion
`between the electrode and the bulk material in the accelerated oxidation and reaction of the PCT material at the
`electrode interface." See Gale, column 1, lines 43-60 where Bedard is cited as prior art in the reference [*11] and
`Bedard's attempts to "deal with these problems" are discussed. n4
`
`n4 While Gale is not prior art to the claims on appeal, it is proper to consider this reference in determining
`the patentability of the claims on appeal under 35 USC § 103. Gale is relevant evidence as to (1) characteristics
`of prior art products, i.e., the electrical devices formed in Bedard, In re Wilson, 311 F.2d 266, 135 USPQ 442
`
`Page 4 of 11
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`

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`1992 Pat. App. LEXIS 21, *11; 25 U.S.P.Q.2D (BNA) 1265, **1268
`
`Page 5
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`(CCPA 1962), and (2) the knowledge possessed by and the level of skill of the ordinary person in this art,
`Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 308, 227 USPQ 657, 671 (Fed. Cir. 1985);
`In re Farrenkopf, 713 F.2d 714, 219 USPQ 1 (CCPA 1983).
`
`Richart is directed to methods for improving the adhesion of thermoplastic coatings to, inter alia, metal wire. This
`reference is relevant to the present inquiry in that the electrical devices of Bedard and Smith-Johannsen are formed
`using conventional extrusion techniques such as those disclosed in Richart. Richart sets forth at column 1, lines 56-66
`that the performance and utility of coatings applied around metal substrates such as wires is largely dependent upon the
`"tenacity with which [*12] the coating adheres to its substrate." To this end, Richart discloses a number of adhesion
`promoting heat treatment steps to be used during or after the step of extruding a thermoplastic coating onto a metal
`wire.
`
`Among the treatment steps disclosed in this reference are a post extrusion annealing of the coated wire as preferred
`by Bedard and Smith-Johannsen, as well as preheating the conductor prior to the molten thermoplastic coating material
`being applied as disclosed in Griff and used in the present invention. See column 3, lines 6-63 of Richart.
`
`Richart discloses that in order to promote adhesion between the metal substrate and the thermoplastic polymer
`coating it is only necessary to provide the required temperatures at the interface between the coating and the substrate.
`See column 3, lines 63-70. Therefore, it is preferred that the heating be confined to the surface boundaries in order that
`an absolute minimal of energy will be required to "perfect adhesion in accordance with this invention."
`
`That the techniques used in Richart are applicable to processes such as that of Bedard which involve an electrically
`conductive thermoplastic polymer coating is seen from column [*13] 2, lines 6-11 of the reference where it is stated
`that "if the coating is electrically nonconductive" (emphasis added). Since Richart specifically states if the coating is
`electrically nonconductive, the reference is in essence stating that the coating may be electrically conductive as in the
`electrical devices disclosed in Bedard and/or Smith-Johannsen.
`
`As previously stated, we agree with the examiner that the disclosures of these references provide an adequate basis
`for concluding that the subject matter on appeal would have been obvious to one of ordinary skill in the art at the time
`of the present invention. Specifically, knowing that wetting of the electrodes in the electrical devices of Bedard by the
`conductive polymer composition is a concern, one of ordinary skill in the art would have had ample reason or
`motivation to preheat the electrodes in the manner required by the claims on appeal as disclosed by Griff and Richart in
`order to prevent premature shrinkage of the hot conductive polymer composition away from the metal electrode surface,
`remove any moisture or oil on the electrode surface and/or provide an even stronger adhesiveness of the conductor
`polymer composition [*14] to the metal electrode per Griff and Richart.
`
`Smith-Johannsen and Gale confirm that those of ordinary skill in the art were aware of and concerned with the
`ability of the conductive polymer composition to adequately wet the metal electrodes of the electrical devices of Bedard
`at the time of the present invention. As set forth in Smith-Johannsen, one prior art method of enhancing the wetting of
`the metal electrodes by the conductive polymer composition involved the use of an annealing operation after the
`extrusion process. Richart discloses that those of ordinary skill in the art were aware at the time of the present invention
`that preheating the conductor was a known alternative to such an annealing step in order to improve the adhesion of a
`thermoplastic polymer to a metal conductor.
`
`Raychem separately argues claims 2 through 22, 15, through 28, 43 through 53, 57 through 63, and 70 through 100
`on page 64 of the Appeal Brief. In so doing, Raychem has only pointed out that these claims are directed to processes
`in which a PCT conductive [**1269] polymer containing carbon black is melt-extruded over at least two electrodes to
`produce a self-regulating strip heater. Since Bedard and Smith-Johannsen [*15] clearly disclose the formation of such
`products, these limitations do not serve as a distinction from the applied prior art.
`
`Claims 75 through 98 are also separately argued at this section of the Appeal Brief. Specifically, it is argued that
`
`Page 5 of 11
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`

`
`1992 Pat. App. LEXIS 21, *15; 25 U.S.P.Q.2D (BNA) 1265, **1269
`
`Page 6
`
`these claims are directed to a process in which the product is a self-regulating heater having a linearity ratio of less than
`1.2.
`
`As explained at column 3, lines 13-29 and column 4, lines 9-33 of the '399 patent, the so-called linearity ratio
`between a pair of electrodes in the electrical devices of the present invention can be correlated with the contact
`resistance of the device, i.e., the lower the contact resistance of the electrical device, the more stable it will be over its
`useful life. In this regard, we also point out that the '339 patent discloses that contact resistance can be correlated with
`the force needed to pull the electrode out of the polymer composition. An increase in pull strength reflects a decrease in
`contact resistance. See column 2, line 65-column 3, line 12 and column 4, lines 43-62 of the '339 patent. The increase in
`pull strength is expected since Griff and Richart discloses that the adhesiveness [*16] of the coating will increase if the
`wire substrate is preheated as in the present invention.
`
`Raychem is correct in stating that neither Bedard or Smith-Johannsen disclose any values of the linearity ratio of
`the electrical devices and strip heaters of those references. However, this does not end the inquiry since, where the
`Patent and Trademark Office is not equipped to perform the needed testing, it is reasonable to shift the burden of proof
`to Raychem to establish that (1) the argued difference exists and (2) that any such difference would be considered
`unexpected by those of ordinary skill in the art. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Cir. 1990); In re
`Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). Such evidence has not been relied upon in this appeal.
`
`Claims 3 through 8, 15, 19 through 21, 45, 46, 77, 78, 99, and 100 are separately argued in the paragraph bridging
`pages 64-65 of the Appeal Brief where it is stated that these claims require that the electrodes are stranded wire
`electrodes. Raychem argues that Gale is not relevant to these claims since such electrodes are not useful in making
`electrical blanket heaters to which Gale is stated to be exclusively [*17] directed.
`
`We first point out that Bedard and Smith-Johanssen clearly disclose the use of stranded electrodes in the manner
`required by the present invention. The fact that Gale may or may not use stranded electrodes for the purposes of that
`invention is of no moment since Gale is only relied upon to provide evidence in regard to the manner in which those of
`ordinary skill in the art view Bedard.
`
`The separate arguments of claims 42 through 74 and 83 on page 65 of the Appeal Brief lose sight of the clear
`disclosure on page 208 of Griff that the specific temperature to which a conductor is preheated is correlated to the
`temperature of the molten polymer composition to be extruded about the preheated conductor. Clearly, those of ordinary
`skill in the art recognize this precise relationship to be a result effective variable. Under these circumstances, a person
`of ordinary skill in the art would be expected to routinely optimize this relationship. In re Boesch, 617 F.2d 272, 205
`USPQ 215 (CCPA 1980). Thus, one of ordinary skill in the art, when modifying the disclosure of Bedard to preheat the
`electrodes in accordance with the teachings of Griff and Richart in order to improve [*18] the wetting of the electrode
`by the conductive polymer composition would routinely optimize the precise temperature relationship between the
`temperature to which the conductor is to be preheated and the optimal temperature for melt extruding the specific
`conductive polymer composition.
`
`The same analysis is applied to the separate argument of claims 29 through 33, 36 through 40, 64 through 68, 70
`through 74, 94 through 98 on pages 65-66 of the Appeal Brief where it is argued that Griff teaches away from
`temperatures above 150 degrees C. However, Griff explains that this upper limit is desirable only in that exceeding this
`temperature does not result in further improvement in adhesion but only causes more heat to be removed in the cooling
`through. Raychem has not presented any objective evidence which establishes that the specific temperature relationship
`called for in these dependent claims gives any results that can be termed unexpected over the references relied upon.
`
`Raychem also separately argues claims 23, 24, 34, 41, 58 through 61, 90, and 91 which require that the carbon
`black content of the conductive polymer composition be at least 15 percent by weight, at least 17 percent [*19] by
`weight or 22 percent or less by weight. It is argued that these limitations are inconsistent with the references relied
`upon. We disagree.
`
`Page 6 of 11
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`

`
`1992 Pat. App. LEXIS 21, *19; 25 U.S.P.Q.2D (BNA) 1265, **1269
`
`Page 7
`
`Smith-Johanssen discloses that prior art electrical devices containing electrically conductive polymer compositions
`contained as much as 25- 75 percent carbon black. The specific [**1270] invention disclosed in Smith-Johannsen is
`that the annealing step disclosed therein allows the use of lower black loading while still obtaining resistivities in the
`useful range. Smith-Johannsen prefers not to use more than 15 percent carbon black in the conductive polymer
`compositions of that reference. Thus, it appears that those of ordinary skill in the art at the time of the present invention
`were well aware that electrical devices, including [**1419] self-regulating strip heaters of the type involved in the
`present invention, may be formed using conductive polymer compositions which include 15 percent or less of carbon
`black or as much as 75 percent carbon black. To optimize the precise amount of carbon black used in the conductive
`polymer coating of any individual device would have been prima facie obvious to one of ordinary skill in the art. In re
`Boesch, [*20] supra.
`
`Raychem argues that Gale is not proper evidence to be relied upon in this reexamination proceeding since it is not
`prior art. We first point out that Gale can be considered cumulative to the other references relied upon since Gale is
`relied upon only to confirm that those of ordinary skill in the art regarded Bedard as being directed to solving problems
`associated with wetting of the electrodes by the conductive polymer composition. The examiner's conclusion of
`obviousness can stand absent reliance upon Gale.
`
`Gale is of interest because it is of a later date than the present invention and in discussing Bedard, states that it was
`directed to solving problems such as increased resistance at the electrode interface due to breakdown in the already poor
`adhesion between the electrode and the conductive polymer composition. In re Wilson, supra.
`
`To the extent Raychem argues that Gale may not be relied upon in this reexamination proceeding under 35 USC §§
`301 and 302, we refer to Ex parte McGaughey, 6 USPQ2d 1344 (BPAI 1988), where the difference between requesting
`reexamination under 35 USC § 302 and the conduct of reexamination proceedings if the request is granted [*21] under
`35 USC § 305 is discussed. From this discussion, it is apparent that conduct of reexamination proceedings under 35
`USC § 305 differs from the granting of requests under 35 USC § 302. Once reexamination was granted under § 302, the
`examiner was correct in relying upon Gale while conducting this proceeding under 35 USC § 305 as he would be in
`making a rejection under 35 USC § 103 in any other case.
`
`Raychem's arguments that two of the three inventors named in Gale have stated in declarations that they were
`unaware of the specific disclosure of Bedard at the time of their work which led to the Gale patent is of little relevance
`since they signed the original declaration in the U.S. parent application of Gale in which this statement appears. The
`fact that these two individuals may not have had knowledge of Bedard prior to that time does not detract from the fact
`that their patent specifically states that Bedard is directed to these problems.
`
`We are not persuaded by Raychem's argument that the specific statements in Gale concerning Bedard are in relation
`only to the heaters disclosed in U.S. Patent No. 3,410,984 referenced at column 1, lines 32-34 of Gale. The entire
`paragraph [*22] as well as the subsequent two paragraphs when read in context indicate that Bedard is directed to
`solving the problems which the prior art perceived to exist in the specific heaters of U.S. Patent No. 3,410,984.
`Keeping in mind that Bedard is directed specifically to electrical devices, including the self-regulating strip heaters of
`the present invention, the most that can be gained from this argument is that problems concerning the ability of the
`conductive polymer composition to adequately wet the electrode in these devices was a shared problem with the
`specific heaters of U.S. Patent No. 3,410,984.
`
`We disagree with the argument on page 24 of the Appeal Brief that Richart "has nothing to do with
`currenty-carrying devices." Richart discloses that the preheated substrate may be a wire. Wires are certainly
`current-carrying devices.
`
`Raychem makes much of the fact that Richart prefers annealing the coated substrate in order to achieve improved
`adhesion of the thermoplastic polymer coating rather than the embodiment in which the wire is preheated prior to
`contact with the molten coating. The fact that Richart may not prefer the preheating embodiment does not militate
`
`Page 7 of 11
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`

`
`1992 Pat. App. LEXIS 21, *22; 25 U.S.P.Q.2D (BNA) 1265, **1419
`
`Page 8
`
`against [*23] a conclusion of obviousness since all disclosures in a reference must be considered including those
`which are non-preferred. In re Mills, 470 F.2d 649, 176 USPQ 196 (CCPA 1972).
`
`The evidence relied upon from the cited portions of the record does include any objective evidence of
`nonobviousness which establishesthat the present electrical devices or self-regulating heaters differ in an unexpected
`manner from those disclosed in Bedard whether they are annealed or non-annealed. While reference is made to the
`declaration of record of Mr. Clifford Smith on page 27 of the Appeal Brief, we note that Mr. Smith has only stated that
`the use of the present preheating process results in heaters which are of a "higher quality" than those produced by the
`prior art annealing process. Mr. [**1271] Smith has not substantiated his conclusion with any objective evidence.
`Thus, it is not clear from this record in what manner the present heaters are considered by Mr. Smith to be of a "higher
`quality."
`
`It is argued on page 33 of the Appeal Brief that the disclosure of Griff in regard to semi-conductive coatings on
`wires is not relevant to the present invention since the present wire coating is not semi-conductive. [*24] Howver, we
`point out that both Bedard and Smith-Johannsen describe the conductive polymer composition used in the electrical
`devices of those references as "semi-conductive." See, e.g., Bedard, column 3, lines 6-19 and Smith-Johannsen, column
`1, line 50-column 2, line 3. Raychem has not established on this record why one of ordinary skill in the art would not
`consider the present conductive polymer compositions to be "semi-conductive."
`
`Raychem argues that the disclosure of Griff at page 225 concerning semi-conductive insulation is directed to
`products in which the semi-conductive polymer composition is not adjacent the metal conductor. Raychem is correct in
`stating that this passage does not explicitly describe a product in which the semi-conductive insulation is extruded
`adjacent a metal conductor. However, when this passage is read in the context of the entire reference, it is apparent that
`one of ordinary skill in the art would readily discern that Griff is concerned with such products. Even if it is considered
`that there are products in which a semi-conductive insulation layer is separated from the metal conductor by an
`intermediate insulation layer, this does not detract [*25] from the fact that it was well known at the time of the present
`invention to extrude semi-conductive polymer compositions adjacent to a metal conductor in order to make electrical
`devices including the self-regulating heaters per the present invention. Again, see Bedard and Smith-Johannsen.
`
`It is not clear on what basis Raychem makes arguments such as those on page 35 that Griff has nothing to do with
`current-carrying devices. As seen from the various standards set forth on pages 209-212 of the reference, Griff is
`concerned with current-carrying devices.
`
`The arguments presented in regard to Bedard focus on the reference's preference for forming annealed strip heaters.
`Raychem argues that it is only the annealed strip anneal strip heaters which are commercially available and that such
`annealed heaters do not suffer from inadequate wetting of the electrodes by the polymeric mass. We have carefully
`considered these arguments in the portions of the record cited in support thereof. We again point out that Bedard only
`prefers to anneal the electrical devices formed according to that reference, the reason for which is set forth in
`Smith-Johannsen. Again, the entire disclosure [*26] of a reference must be evaluated when making an obvious
`determination under 35 USC § 103, including the non-preferred embodiments. In re Mills, supra. We also point out that
`the present claims do not preclude the use of a subsequent annealing step.
`
`Since the current which passes through the electrode in the electrical device of Bedard must also pass through the
`conductive polymer coating in order for the device to be functional, it is apparent that the manner and degree in which
`the conductive polymer composition is in contact with the electrical conductor plays an important role in the ability of
`the device to perform its design function. This is one reason why the concept of "wetting" of the electrode by the
`conductive polymer composition appears to be important in this art as documented by the applied references. Whether
`the degree of wetting is measured by the relative lack of shrinkage of the conductive polymer mass away from the
`electrode, i.e., obtaining a uniform wetting of the surface, or by the degree of adhesion of the conductive polymer
`composition to the metal electrode, it is apparent from this record that those of ordinary skill in the art were well aware
`of [*27] how to improve the needed wetting.
`
`Page 8 of 11
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`

`
`1992 Pat. App. LEXIS 21, *27; 25 U.S.P.Q.2D