Ex Parte Honma et al

Patent Trial and Appeal Board

Oct 27, 2016

13410576 (P.T.A.B. Oct. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/410,576 03/02/2012
7055 7590 10/31/2016
GREENBLUM & BERNSTEIN, P.L.C.
1950 ROLAND CLARKE PLACE
RESTON, VA 20191
FIRST NAMED INVENTOR
Y oshiteru HONMA
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
P41217 1062
EXAMINER
CHRISS, JENNIFER A
ART UNIT PAPER NUMBER
1786
NOTIFICATION DATE DELIVERY MODE
10/31/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
gbpatent@gbpatent.com
greenblum.bernsteinplc@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YOSHITERU HONMA, HIDEAKI KUNISADA, and
FUMITOSHI AKAIKE
Appeal 2015-003639
Application 13/410,576
Technology Center 1700
Before MARK NAGUMO, GEORGE C. BEST, and
JENNIFER R. GUPTA, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision2 finally rejecting claims 1-3. We have jurisdiction under
35 U.S.C. § 6(b). We affirm-in-part.
The subject matter of the appeal relates to a fabric material provided
with an insulating core yam and a conductive sheath yam. Spec. i-f 2. A
copy of the claims on appeal are reproduced below:
1 Appellants identify the real party in interest as Toyota Boshoku Kabushiki
Kaisha. Appeal Brief filed October 6, 2014 ("App. Br."), 3.
2 Final Office Action mailed May 6, 2014 ("Final Act.").
Appeal2015-003639
Application 13/410,576
1. Fabric material comprising:
insulating core yam; and
conductive sheath yam arranged in a spiral pattern around the
core yam,
wherein the sheath yam has at least five strands of conductive
first yam, and second yam, and the strands of the first yam are
arranged close-packed together while being twisted around the
second yam.
2. The fabric material according to claim 1, wherein the second yam
is wire that has an initial tensile resistance of at least 4.9 GPa, and
that has a higher degree of elongation than the first yam.
3. The fabric material according to claim 1, wherein a number of
twists of the first yam set to at least 1000 T Im.
Appeal Br. (Claims Appendix) 18.
REJECTIONS ON APPEAL
1. Claims 1and3 stand rejected under 35 U.S.C. § 103(a) as obvious
over Leschen (US 975,541, issued Nov. 15, 1910) (hereinafter
"Leschen");
2. Claim 2 stands rejected under 35 U.S.C. § 103(a) as obvious over
Leschen in view ofRoebling (US 1,260,582, issued Mar. 26, 1918)
(hereinafter "Roehling"); and
3. Claim 2 stands rejected under 35 U.S.C. § 103(a) as obvious over
Leschen in view of Howe (US 1,779,471,3 issued Oct. 28, 1930)
(hereinafter "Howe").
3 In the Final Action, the Examiner inadvertently refers to US 1,779,471 by
the inventor's middle name, Forrest, rather than the inventor's last name,
Howe.
2
Appeal2015-003639
Application 13/410,576
Claim 1
DISCUSSION
Appellants argue the Examiner reversibly erred in finding that
Leschen teaches or suggests a sheath yam arranged in a spiral pattern around
the core yam, as recited in claim 1. See App. Br. 6-9.
The Examiner finds that Leschen discloses or suggests all the
elements of claim 1. See Final Act. 2-3.
The invention described in Leschen relates to wire ropes with
cushions of fibrous material underneath the outermost wires or strands for
minimizing the friction of the wires against each other. Leschen 1:9-23.
Figures 3 and 6 of Leschen are reproduced below.
Figure 3, above, illustrates a cross section of a rope with composite
strands B formed around round core 4. Leschen 1 :37-39.
Figure 6, above, illustrates a side cut-away view of a rope outer layer of
wires 2 and inner layer of wires 5 shown in spiral patterns.
3
Appeal2015-003639
Application 13/410,576
In the rope illustrated in Figure 3, composite strands B (i.e.,
conductive sheath yam) are formed around central core 4 of hemp or other
suitable fibrous material. Leschen 1:99-104. A person of ordinary skill in
the art would have understood that, although not depicted in the rope cross
section shown in Figure 3, Leschen's composite strands B would ordinarily
be twisted (i.e., arranged in a spiral pattern) around central core 4 as shown
in the cut-away view of the rope shown in Figure 6, which appears to be a
side view of the rope shown in Figure 3, where wires 2 are shown twisted
about insulated core 3, and round wires 5 are shown twisted, presumably
around wire core 1. 4 Moreover, in each composite strand B, round wire
core 1 (second yam) is surrounded by five closely-packed round wires 5
(first yam). Thus, we are not persuaded the Examiner reversibly erred in
finding Leschen discloses a rope meeting the limitations recited in claim 1.
Accordingly, we sustain the rejection of claim 1.
Claim 3
Appellants argue the Examiner reversibly erred in finding that
Leschen teaches or suggests a first yam having a number of twists of at least
1000 Tim, as recited in claim 3. See App. Br. 10.
The Examiner acknowledges that Leschen does not recite the number
of twists per meter as set forth in claim 3. Final Act. 3. The Examiner finds
that "Leschen teaches a desire to minimize friction of wires against each
other and to protect the interior members of the rope." Ans. 7. The
4 The depiction of a rope in Figure 6 is consistent with the generally
understood meaning of the term "rope," e.g., "a thick, strong cord made of
intertwisted strands of fiber, thin wires, leather strips, etc." See "Rope,"
Webster's New World Dictionary, 1166 (3d coll. ed. 1988).
4
Appeal2015-003639
Application 13/410,576
Examiner therefore concludes that "[i]t would have been obvious to one of
ordinary skill in the art to optimize the number of twists per unit length to
those contemplated by applicant motivated by a desire to achieve optimal
service life as taught by Leschen." Id.
A particular parameter must first be recognized as a result effective
variable, i.e., a variable which achieves a recognized result, before the
determination of the optimum or workable ranges of said variable might be
characterized as routine experimentation. In re Antonie, 559 F.2d 618, 620
(CCPA 1977). The Examiner's optimization explanation in the present case
is deficient because the Examiner has not established that Leschen teaches
that the number of twists of the closely packed round wires 5 (first yam)
have an effect on anything, much less the friction of the wires against each
other. See Final Act. 3; Ans. 7. Thus, we do not sustain the rejection of
claim 3.
Claim 2
Appellants argue the Examiner reversibly erred in finding that
Leschen teaches, explicitly or inherently, a second yam having an initial
tensile resistance of at least 4.9 GPa, and that has a higher degree of
elongation than the first yam, as recited in claim 2. See App. Br. 11-12.
The Examiner acknowledges, albeit not explicitly, that Leschen does
not expressly disclose its round wire core 1 (second yam) has a tensile
strength of at least 4.9 GP a. Final Act. 3. Relying on a theory of inherency,
the Examiner finds that it is reasonable to presume that Leschen's round
wire core 1 (second yam) has a tensile strength of at least 4.9 GPa. See id.
The Examiner contends "the use of like materials (i.e. yams of natural fibers
5
Appeal2015-003639
Application 13/410,576
and metal wires) which would result in the claimed property" as support for
this presumption. Id.
When an Examiner relies upon a theory of inherency, "the examiner
must provide a basis in fact and/or technical reasoning to reasonably support
the determination that the allegedly inherent characteristic necessarily flows
from the teachings of the applied prior art." Ex parte Levy, 17 USPQ2d
1461, 1464 (Bd. Pat. App. & Int. 1990). As the Examiner points out, the
Specification teaches "[h ]ighly elastic yam is wire with an initial tensile
resistance of equal to or greater than 4.9 GPa." Spec. i-f 17. The
Specification further teaches that "[y ]am such as industrial polyester yam or
high-strength polyethylene yam may be used as the highly elastic yam." Id.
i-f 18. The Examiner, however, has failed to point to any disclosure in
Leschen that its round wire core 1 (second yam) could be made of a highly
elastic yam as described in Appellants' Specification. Accordingly, the
Examiner has not provided the requisite factual basis to support the
conclusion that Leschen's round wire core 1 (second yam) has a tensile
strength of at least 4.9 GPa and has a higher degree of elongation than
Leschen's round wires 5 (first yam). Thus, we do not sustain the rejection
of claim 2.
DECISION
For the above reasons, we affirm the rejection of claim 1, and reverse
the rejections of claims 2 and 3.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
6