Ex Parte Duke et al

Board of Patent Appeals and Interferences

May 24, 2012

11446005 (B.P.A.I. May. 24, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/446,005 06/01/2006 Joseph Raleigh Duke JR. B00-126A 9336
26683 7590 05/25/2012
THE GATES CORPORATION
IP LAW DEPT. 10-A3
1551 WEWATTA STREET
DENVER, CO 80202
EXAMINER
REESE, ROBERT T
ART UNIT PAPER NUMBER
3654
MAIL DATE DELIVERY MODE
05/25/2012 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOSEPH RALEIGH DUKE JR. and TAO YU
____________

Appeal 2010-007273
Application 11/446,005
Technology Center 3600
____________

Before STEFAN STAICOVICI, GAY ANN SPAHN, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Joseph Raleigh Duke Jr. and Tao Yu (Appellants) appeal from the
Examiner’s decision to reject under 35 U.S.C. § 102(b), claims 1-14 and 16-
21 as anticipated by Gibson (US 2002/0179228 A1, published Dec. 5, 2002)
and under 35 U.S.C. § 103(a), claims 15 and 22 as unpatentable over Gibson
and Feeney (US 2007/0213446 A1, published Sep. 13, 2007). We have
jurisdiction over this appeal under 35 U.S.C. § 6.

THE INVENTION
Appellants’ invention relates to a power transmission belt and a
method for producing it . Spec. 4, ll. 11-12 and 18-19 and fig. 1.
Claims 1 and 13 are illustrative of the claimed invention and read as
follows:
1. A power transmission belt, selected from a toothed belt, a
flat belt, a V-belt or a multi-V -ribbed belt, comprising;
a) a flexible body portion;
b) a fabric element disposed along at least a power
transmitting surface of the belt, the fabric element possessing a
thickness defined by a distance between a first fabric element
surface and an opposite second fabric element surface, said first
surface being proximal at least said power transmitting surface
of the belt and said second surface being proximal said flexible
body portion, and;
c) an internal lubricating agent within at least a
portion of the total thickness of the fabric element, and
characterized in that:
d) at least a portion of the internal lubricating agent is
in the form of at least one cluster within said fabric element.

13. A method for producing a power transmission belt
possessing a belt length and a flexible body portion, comprising
the steps of:
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a) applying to a fabric element possessing a first
surface and a second, opposite surface an internal lubricating
agent to form a treated fabric, and;
b) disposing said treated fabric against a material for
forming said flexible body portion; characterized in that the
method further comprises the step of;
c) causing at least a portion of said internal
lubricating agent to form at least one cluster of said internal
lubricating agent within at least a portion of the total thickness
of the fabric.

SUMMARY OF DECISION
We AFFIRM-IN-PART and ENTER NEW GROUNDS OF
REJECTION PURSUANT TO OUR AUTHORITY UNDER 37 C.F.R.
§ 41.50(b).

OPINION
The anticipation rejection
Claims 1-5, 7-14 and 16-20
Appellants present the same arguments with respect to the rejection of
independent claims 1, 12 and 13 under 35 U.S.C. § 102(b) as anticipated by
Gibson. See App. Br. 11-17. As such, the following analysis applies
equally to independent claims 1, 12 and 13.
Each of independent claims 1 and 12 recites a belt device that requires
“at least a portion of the internal lubricating agent is in the form of at least
one cluster within said fabric element.” App. Br., Claims Appendix.
Similarly, independent claim 13, which recites a method for producing a
power transmission belt, requires a method step of “causing at least a portion
of said internal lubricating agent to form at least one cluster of said internal
lubricating agent within at least a portion of the total thickness of the fabric.”
Id.
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Appellants argue that Gibson fails to teach or suggest “the existence
of or formation of a cluster.” App. Br. 13. According to Appellants,
because Gibson teaches “that the friction-modifying component is dispersed
or suspended in a resin,” Gibson teaches dispersion rather than clustering of
the friction modifying component of the wear resistant composite. Id. See
also, Gibson, paras. [0030] and [0031].
In response, pointing to paragraph [0031] of Gibson, the Examiner
takes the position that because Gibson teaches dispersal of particles (i.e., the
friction modifying component) within the power transmission belt and
“dispersal requires that there be more than one lubricant particle,” (see Ans.
11), “a ‘cluster’ would be achieved the moment that two particles of the
lubricant were emplaced within the power transmission belt, since the two
particles would be a ‘group’ within in (sic.) the confines of the belt.” Ans.
10.
We begin our analysis by interpreting the term “cluster.” Claims are
to be given their broadest reasonable interpretation consistent with the
specification. See In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004). At the outset, we note that Appellants’ Specification
expressly defines the term “cluster” to mean “two or more particles grouped
together but not necessarily bonded chemically or mechanically to one
another to form at least a temporary lubricating agent-rich aggregate or
domain.” Spec., 9, ll. 20-23. Where an explicit definition is provided by the
applicant for a term, [the] definition will control interpretation of the term as
it is used in the claim. Toro Co. v. White Consolidated Industries Inc., 199
F.3d 1295, 1301 (Fed. Cir. 1999).
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In this case, like the Examiner, we find that Gibson teaches a
transmission belt 10 that includes a flexible body portion 12, a fabric
element 22, and an internal lubricating agent 20 (i.e., wear-resistant friction-
modifying composite) within at least a portion of the total thickness of the
fabric element 22. Ans. 3. See also Gibson, para. [0026] and fig. 1). We
further agree with the Examiner that Gibson teaches that the friction-
modifying component of the internal lubricating agent 20 (i.e., wear-
resistant friction-modifying composite) is dispersed throughout a binder
matrix. Ans. 11. See also Final Rejection, 9 and Gibson, para. [0031].
Moreover, in paragraph [0031], Gibson specifically teaches that the friction-
modifying component may be dispersed as “groups of particles” throughout
the binder matrix. Emphasis added. As such, because the friction-
modifying components are organized in “groups of particles” and the term
“cluster” requires “two or more particles grouped together,” we find that
Gibson’s “groups of particles” of the friction-modifying component
constitute a “cluster,” as required by each of independent claims 1, 12, and
13.
Regarding dependent claims 2-5, 7-11, 14, and 16-20, Appellants do
not present any additional arguments separate from those presented above in
regard to the rejection of independent claims 1, 12 and 13. App. Br. 19.
Consequently, for the reasons presented supra, the rejection of claims 2-5, 7-
11, 14 and 16-20 as anticipated by Gibson is also sustained.

Claims 6 and 21
Pointing to paragraph [0030] of Gibson, the Examiner found that
because Gibson specifically teaches that “’the wear resistant composite . . .
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comprises a dispersion of one or more friction-modifying components in the
form of fluoropolymers in a carrier or a binder’ . . . . a binder is not
required for the emplacement of the lubricant particles within the belt.”
Ans. 12. In other words, according to the Examiner, “where the lubricant
particles are emplaced in the belt by a carrier, . . . the process of creating the
belt can be done in ‘the substantial absence of a binder constituent’ meeting
this limitation in the claims.” Id.
Appellants argue that because (1) Gibson’s composite requires both a
lubricant (i.e., friction-modifying component) and a binder resin and (2) both
the lubricant (i.e., friction-modifying component) and the binder resin
collectively as the composite are contained in a carrier solution, Gibson does
not teach excluding a binder resin, as the Examiner proposes. App. Br. 18.
See also, Gibson, para. [0029]. Rather, according to Appellants, paragraph
[0030] of Gibson merely refers to the nature of the friction-modifying
element and does not positively exclude the presence of a binder resin. App.
Br. 19.
At the outset, we agree with Appellants that paragraph [0030] cannot
be read in isolation from the remainder of Gibson’s teachings. As noted by
Appellants, Gibson teaches on various occasions that its composite requires
both a lubricant (i.e., friction-modifying component) and a binder resin. See
e.g,, Gibson, paras. [0029], [0031], and [0032]. Although we appreciate the
Examiner’s position that in paragraph [0030] Gibson teaches the dispersion
of one or more friction-modifying components in a carrier or a binder,
nonetheless, we do not agree that this lone sentence means that Gibson’s
composite excludes a binder resin. At most, we understand that although in
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Gibson’s composite the one or more friction-modifying component is
dispersed in the carrier, nonetheless, the composite includes a binder resin.
Thus, in a first instance, we agree with Appellants that Gibson fails to
teach or suggest the “absence of a binder,” as called for by claims 6 and 21.
App. Br. 18.
However, in paragraph [0031] Gibson also teaches that “the friction-
modifying constituent [i.e., the lubricant] . . . is at least partially separated
from the binder constituent by gaps or boundaries.” See Gibson, para.
[0031]. Gibson further teaches that “the gaps or boundaries between
portions of frictional modifier particles and the surrounding binder matrix
allow for some degree of movement of the particles within the matrix.”
Gibson, para. [0031].
Hence, we find that Gibson teaches that the friction modifying
constituent (i.e., internal lubricating agent) within the fabric cover element is
“present in the substantial absence of a binder constituent,” as called for by
claim 6. Accordingly, we shall sustain the rejection of claim 6 as anticipated
by Gibson. However, we denominate the affirmance of this rejection as new
grounds of rejection pursuant to 37 C.F.R. § 41.50(b), because our
interpretation of the disclosure of Gibson is different from that of the
Examiner.
In contrast to claim 6, claim 21 requires that the “mixture comprising
said internal lubricating agent is applied to said fabric element in the
substantial absence of a binder constituent.” App. Br., Claims Appendix.
Emphasis added. Although we found that Gibson teaches that the friction
modifying constituent is “present” in the fabric “in the substantial absence of
a binder constituent,” since the composite of Gibson includes a binder, we
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do not find that Gibson teaches that it is “applied” to the fabric “in the
substantial absence of a binder constituent.” Accordingly, we cannot sustain
the rejection of claim 21.

The obviousness rejection
Regarding dependent claims 15 and 22, Appellants do not present any
additional substantive arguments separate from those presented above with
respect to the rejection of independent claim 13. App. Br. 20. Therefore,
the rejection of claims 15 and 22 under 35 U.S.C. § 103(a) as unpatentable
over Gibson and Feeney is also sustained.

DECISION
The decision of the Examiner is affirmed as to claims 1-20 and 22 and
reversed as to claim 21.
For the reasons discussed above, we denominate our affirmance of the
rejection of claim 6 as new grounds of rejection pursuant to 37 C.F.R.
§41.50(b).
Regarding the affirmed rejection(s) that have not been denominated as
new grounds of rejection, 37 C.F.R. § 41.52(a)(1) provides “Appellant[s]
may file a single request for rehearing within two months from the date of
the original decision of the Board.”
In addition to affirming the Examiner’s rejection(s) of one or more
claims, this decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
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37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an
appropriate amendment of the claims so rejected or
new evidence relating to the claims so rejected, or
both, and have the matter reconsidered by the
examiner, in which event the proceeding will be
remanded to the examiner. . . .
(2) Request rehearing. Request that the
proceeding be reheard under § 41.52 by the Board
upon the same record. . . .
Should Appellants elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellants elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Board of Patent Appeals and Interferences for
final action on the affirmed rejection, including any timely request for
rehearing thereof.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

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