Application of Ehrreich
| Decision Date | 11 January 1979 |
| Docket Number | 784.,Appeal No. 78-561. Serial No. 379 |
| Citation | 590 F.2d 902 |
| Parties | Application of John E. EHRREICH and Donald Avery. |
| Court | U.S. Court of Customs and Patent Appeals (CCPA) |
David G. Conlin, Sewall P. Bronstein, Donald Brown, Dike, Bronstein, Roberts, Cushman & Pfund, Boston, Mass., attorneys for appellants.
Joseph F. Nakamura, Washington, D. C., for the Commissioner of Patents; William H. Beha, Jr., Washington, D. C., of counsel.
Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE and MILLER, Judges.
This appeal is from the decision of the Patent and Trademark Office (PTO) Board of Appeals (board) affirming the rejection of claims 1-45, all of the claims in application serial No. 379,784, filed July 16, 1973, for reissue of U. S. Patent No. 3,583,930, entitled "Plastics Made Conductive With Coarse Metal Fillers." The board affirmed the examiner's rejection of all claims as obvious under 35 U.S.C. § 103. In addition, the examiner's rejection of claims 1-8, 12-24, 26-31, 33-36, 38-43, and 45 under 35 U.S.C. § 112 was sustained by the board. We reverse.
Appellants' invention pertains to improved electrically-conductive coatings, gaskets, and caulking compounds useful for waveguide assemblies, weathertight R.F. (radio frequency) enclosures, and other applications requiring environmental sealing and electromagnetic radiation (EMR) shielding. A compressible or resilient plastic material is loaded with silver-coated metal particles which are held in electrically-conductive, metal-to-metal contact by the plastic binder or matrix. Appellants' improvement resides in their discovery that high-volume loadings of the plastic material, in the order of 35 to 80 volume percent, utilizing large particles (0.5 to 40 mils) having a high surface area per unit volume, i. e., between 450 to 200,000 square feet/cubic foot, results in a product having high conductivity, and, hence, good EMR shielding capability. The invention may be better understood from an examination of claims 1, 9, and 12, the only independent appealed claims. Claim 12 is the broadest claim:
12. In an electromagnetic energy shield having a volume resistivity to be effective as an electromagnetic shield comprising a resin matrix loaded with particles coated with silver in an amount of about 40 to 80 volume percent, the improvement being that the silver coated particles are of a maximum size in the range of from 0.5 to 40 mils and wherein the resin in sic compressible.
Claim 1 is the same except for being limited to an EMR shield "in the form of a gasket or caulking compound." Claim 9 is limited to an EMR shield in the form of a gasket wherein the particles are spherical:
9. An electromagnetic energy shield in the form of a gasket having a volume resistivity to be effective as an electromagnetic energy shield comprising a compressible resin matrix loaded with substantially spherical particles coated with a layer of silver and ranging in size from 0.5 to 40 mils.
The following references were cited by the examiner and relied on in various combinations to support the rejection of the claims under § 103:
Wood 2,313,379 March 9, 1943
McGrath 2,506,728 May 9, 1950
Coleman et al. 2,771,380 Nov. 20, 1956
Price 3,030,237 April 17, 1962
Ueda 3,083,169 March 26, 1963
Hunter 3,099,578 July 30, 1963
Cuming, W. R., "Materials for R. F. Shielded Chambers and Enclosures,"
Symposium Digest, 4th National Symposium on
Radio Frequency Interference, June 28-29, 1962
Ueda discloses thermally and electrically-conductive plastics made by mixing a water-soluble phenolic resin with ultra-fine (approximately 0.1 µ) powders of carbon in combination with similarly sized powders of various metals. His normally hard product may be made flexible by the addition of polyvinyl alcohol to the phenolic resin mixture. Ueda states that the superior conductivity of his composition is due largely to the presence of the water in the phenolic mixture. In that way, Ueda claims to overcome the prior art dilemma of how to increase conductivity without adverse effect on mechanical properties caused by addition of too large a proportion of conductive particles in the compositions. Otherwise, he is silent as to the amount of powdered mixture to be added to the resin.
Hunter discloses an electrically conductive, heat-producing coating composition made from finely powdered (particle size less than 4 mils) conductive substances, viz., carbon, silver iron, in combination with a flexible resin, wherein the concentration of the powdered conductive component is between 22-53% by volume. It is disclosed as having a resistance sufficient to enable its use as a heating element. Hunter teaches that a mixture of finely powdered carbon, granular silver, and granular iron particles must be used, and that the granule form of metal particles is superior to the flake form. In Example X, Hunter teaches that when the concentration exceeds 53% the coating becomes deficient in mechanical properties such as adherence and flexibility.
Coleman et al. disclose a method of coating copper particles with silver. The particles to be coated may be as large as 40 mils, and Coleman et al. state that such particles may be used in applications calling for electrically-conductive compositions or paints. The disclosure is not limited to any particular particle shape.
Wood discloses a thermally and electrically-conductive sponge rubber composition, used as a heat dissipator or electrostatic shield, in a mounting for electrical components. Particles, preferably in "fine dust" form (no size range is specified), are added to the sponge rubber in an amount determined by the degree of conductivity desired. Wood states that there is "no definite upper limit" to the amount of conductive material which may be added to the rubber and suggests he may use "50% or even more" but discloses no more than 20% by weight of powdered aluminum in any composition which he has "used successfully."
Price discloses the use of substantially spherical particles of gold, silver, copper, or aluminum in combination with flake-type particles of the same materials in conductive resinous coatings. The maximum particle size taught is approximately 44 microns, and Price directs that specified portions of the two different shapes of particles must be used to achieve the desired result.
McGrath discloses a conductive sealing compound for metal joints which sets or vulcanizes when the surfaces to which it has been applied are heated by spot-welding. The compound is made conductive by inclusion of iron or copper filings, carbon black, and the like. The vulcanized composition forms a substantially gas and liquid-impervious seam or joint.
Symposium Digest discloses that silver-coated particles can be added to plastic binders to make gaskets and caulking compounds with good R.F. shielding properties. Only the use of "finely divided" particles (size unspecified) is discussed, and no ingredient portions are given.
Appellants' problems under § 112 stem from the language in claims 1 and 12 which define the particle size as being "of a maximum size in the range of from 0.5 to 40 mils." The board agreed with the examiner that this language defined only the largest particles and did not define the lower limit of particle size. Although the board opinion is not explicit, we read it as affirming the examiner's rejection under both paragraphs 1 and 2 of § 112.1 Since the specification discloses the necessity of using coarse particles, this interpretation of the language of claims 1 and 12 causes the specification to be at variance with the claims, resulting in the rejection under paragraph 2 of § 112 as not being what applicants regard as their invention. In addition, this language makes the claims read on the ultra-fine prior art particles and results in a rejection under paragraph 1 of § 112 as broader than the specification — i. e., lacking support therein.
The rejections under 35 U.S.C. § 103 were made by considering the claims in three groups. The group I claims, drawn to a shield in the form of a gasket or caulking compound, comprising claims 1-3, 7, 12-15, 17, 21-22, 25, 30-31, 33-36, 39, 41, and 45, were rejected as obvious from Ueda or Hunter in view of Coleman et al. and Wood. The examiner reasoned that, in view of the teachings of Ueda and Hunter that electrically-conductive plastic materials could be made from silver particles:
It would be obvious to replace the silver particles of Ueda or Hunter with silver coated copper particles since Coleman et al., teaches sic using such particles in conductive compositions and that such compositions will have superior conductivity. Wood teches sic that when metal particles are dispersed in rubber there is no upper limit on the amount of metal that can be added, the amount chosen depending on the conductivity desired. In view of Wood it would be obvious to one skilled in the art to choose a volume percent depending on the conductivity desired.
The group I claims were also found obvious from Symposium Digest in view of Wood. The examiner's rejection was simply stated in these words:
5. Claims 1-3, 7, 12-15, 17, 21-22, 25, 30-31, 33-36, 39, 41 and 45 are rejected as being unpatentable over Symposium Digest in view of Wood under 35 U.S.C. 103. Symposium Digest discloses that silver coated copper particles can be added to plastic to make either a gasket or caulking compound with good R.F. shielding properties. Wood teaches that in adding metal particles to rubber there is no upper limit on the percent added, the amount added depending on the conductivity desired. In view of Wood it would be obvious to choose the volume percent as desired.
The group II claims, drawn to...
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