Ex Parte Kobayashi et al

Patent Trial and Appeal Board

Nov 13, 2012

09914033 (P.T.A.B. Nov. 13, 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.
09/914,033 08/22/2001 Ieyasu Kobayashi 8235
7590 11/13/2012
Rader Fishman & Grauer
1233 20th Street N W Suite 501
Washington, DC 20036
EXAMINER
RIVERA, WILLIAM ARAUZ
ART UNIT PAPER NUMBER
3654
MAIL DATE DELIVERY MODE
11/13/2012 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte IEYASU KOBAYASHI, MITSUO TOJO, TSUYONARI
NOHIRA, SHINJI MURO and HIROFUMI MUROOKA
____________

Appeal 2011-012036
Application 09/914,033
Technology Center 3600
____________

Before STEVEN D.A. McCARTHY, STEFAN STAICOVICI, and
MICHAEL L. HOELTER, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE1
Ieyasu Kobayashi et al. (Appellants) appeal under 35 U.S.C. § 134
from the Examiner’s decision rejecting under 35 U.S.C. § 103(a) claims 25-
38 as unpatentable over Sasaki (US 4,576,344, iss. Mar. 18, 1986);2 claims
39-42 as unpatentable over Sasaki and Endo (US 5,106,681, iss. Apr. 21,
1992); claims 43-46 as unpatentable over Sasaki and Ogawa (US 4,911,951,
iss. Mar. 27, 1990); and claims 47 and 48 as unpatentable over Sasaki and
Leckey (US 3,427,723, iss. Feb. 18, 1969). Claims 1-24 have been
canceled. We have jurisdiction over this appeal under 35 U.S.C. § 6.

THE INVENTION
Appellants’ invention is drawn to a polyester film roll rolled onto a
crown shaped core that has a diameter difference between the central portion
and the end portions in the range of 0 to 300 x 10-6 m. Spec. 1, ll. 5-7 and
Spec. 6, ll. 15-17.
Claim 25, the sole independent claim, is representative of the claimed
invention and reads as follows:
25. A polyester film roll comprising:
a roll of polyester film, said polyester film being rolled onto a
core,

1 This is Appellants’ second appeal before the Patent Trial and Appeal
Board. In the first appeal (2009-000473, Decision mailed April 30, 2009)
(hereafter “Decision”), the Examiner’s decision to reject claims 1-3 and 16-
18 under 35 U.S.C. § 102(b) as anticipated by Sasaki and claims 4-15 and
19-24 under 35 U.S.C. § 103(a) as unpatentable over Sasaki was reversed.
2 The upper bound on the rejected claims in the Examiner’s statement
on page 6 of the Answer that “[c]laims 25-28 are rejected under 35 U.S.C.
103(a) as being unpatentable over Sasaki et al.” appears to be a
typographical error. See Ans. 11.
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wherein said core has a maximum outer diameter and a
minimum outer diameter, the difference between said maximum and
minimum outer diameters of the core being not more than 300 x 10-6
m.

SUMMARY OF DECISION
We REVERSE.

ANALYSIS
The Examiner found that, “Sasaki et al. teach a polyester film roll
wound onto a core.” Ans. 6. On page 2 of the Final Rejection from which
this appeal is taken, the Examiner found that “Sasaki et al teach all of the
elements of the roll but it is unclear as to the difference between the
maximum outer diameter and the minimum outer diameter.” Apparently for
the first time in the Response to Argument section of the Answer, the
Examiner found for various reasons “that there is enough evidence to
suggest that the core maximum diameter [of Sasaki] does not exceed 300
microns.” Ans. 13. Presumably, the Examiner intended to find that the
difference between the maximum and minimum outer diameters of Sasaki’s
core does not exceed 300 m.
In a first instance, the Examiner notes that like Appellants’ film roll3,
the film roll of Sasaki is wrinkle-free. Ans. 12. See also, Sasaki, col. 5, ll.
28-30.

3 Appellants’ Specification states that a core having a difference in the
outer diameters larger than 300 microns is not preferable due to the
formation of wrinkles and slacks. Spec. 6, ll. 7-10. See also, Ans. 12.
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Secondly, the Examiner notes that any variations in the core diameter,
which would transmit themselves through the film layers, “would be
detrimental to the film of Sasaki because such would increase the chances of
adjacent film slipping upon one another and therefore, the film roll would be
easily deformed thereby rendering the roll useless.” Ans. 11-12. See also,
Ans. 6 (“Sasaki discusses the disadvantages of the film layers slipping on
each other.”) and Ans. 7 (“[I]t would have been obvious to one of ordinary
skill in the art that any variations in the core diameter would be detrimental
to the film of Sasaki because such would increase the chances of adjacent
film slipping upon one another and therefore, the film roll is easily deformed
thereby rendering the roll useless.”).
Lastly, the Examiner quotes from page 11 of our Decision, where we
stated that “there exists a prima facie basis for finding that Sasaki’s working
examples necessarily have maximum and minimum diameters sufficiently
close to meet the relationships of claims 1, 16[,] and 24,” because the
“polyester film roll of Sasaki has the same film length, width, thickness, and
rolling hardness as the Appellants’ polyester film roll, and achieves the same
result of a wrinkle free film.” Ans. 13.
At the outset, it appears that the Examiner is relying on a theory of
inherency to establish that the core of Sasaki’s wrinkle-free polyester film
roll has a difference between the maximum and minimum outer diameters of
“not more than 300 x 10-6 m.” In relying upon the theory of inherency, the
Examiner here must prove that the allegedly inherent characteristic
necessarily flows from the teachings of the applied prior art. Ex parte Levy,
17 USPQ2d 1461, 1464 (BPAI 1990). In this case, the question raised is
whether the core of Sasaki’s wrinkle-free polyester film roll necessarily has
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a difference between the maximum and minimum outer diameters of “not
more than 300 x 10-6 m.”
While the Examiner correctly points out that Sasaki discloses a
wrinkle-free polyester film roll having the same film length, width,
thickness, and rolling hardness as Appellants’ wrinkle-free polyester film
roll, this in no way demonstrates that Sasaki’s core has a difference between
the maximum and minimum outer diameters of “not more than 300 x 10-6
m,” as the Examiner contends. Decision 11. See also, Sasaki, col. 8, l. 62
through col. 9, l. 46. Just because the polyester film roll of Sasaki is
wrinkle-free and variations in the core diameter transmit themselves through
the film layers, it does not necessarily mean that its core also has a
difference between the maximum and minimum outer diameters of “not
more than 300 x 10-6 m.” In other words, just because the polyester film roll
of Sasaki is wound to be wrinkle-free, it does not necessarily mean that this
is due to a core having a difference between the maximum and minimum
outer diameters of “not more than 300 x 10-6 m.”
Here, Sasaki specifically discloses that the wrinkle free polyester film
roll is obtained by adjusting the hardness of the film roll and the centerline
average surface roughness of the polyester film to satisfy a given
relationship between them. Sasaki, col. 3, ll. 47-51 and col. 7, ll. 14-25.
Sasaki further discloses that the hardness of the film is adjusted by varying
“[t]he pressures applied to the surface of the film roll [4] by the touch roll
[3] and the tension applied to the film.” Sasaki, col. 6, ll. 56-60 and fig. 1.
See also, Sasaki, col. 5, ll. 7-11. Thus, by adjusting the tension and
pressures applied to film roll 4, Sasaki’s polyester film roll may be
simultaneously wrinkle-free and, in contrast to independent claim 25, have a
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difference between the maximum and minimum outer diameters of “more
than 300 x 10-6 m.”
Lastly, we find the Examiner’s reliance on our Decision to be
misplaced because the diameters recited in canceled claims 1, 16, and 24
were the diameters of the claimed polyester film roll and not the diameters
of the core, as called for by currently appealed independent claim 25.
In conclusion, the Examiner’s finding that the core of Sasaki’s
wrinkle-free polyester film roll has a difference between the maximum and
minimum outer diameters of “not more than 300 x 10-6 m” is mere
speculation and conjecture based on an unfounded assumption that because
variations in the core diameter transmit themselves through the film layers
Sasaki’s wrinkle-free polyester film roll necessarily has a difference between
the maximum and minimum outer diameters of “not more than
300 x 10-6 m.”
Alternatively, the Examiner concludes that the subject matter of
claims 1, 16, and 24 would have been obvious because Sasaki teaches “the
disadvantages of the film layers slipping on each other thereby deforming
the roll;” one of ordinary skill would have recognized as a matter of
common sense that the “Sasaki roll must be able to maintain its form over a
long period of time;” and one of ordinary skill in the art would have
recognized that “any variations in the core diameter would be detrimental to
the film of Sasaki because such would increase the chances of adjacent film
slipping upon one another and therefore, the film roll is easily deformed
thereby rendering the roll useless.” (Ans. 6-7). This conclusion raises an
issue separate from whether Sasaki inherently discloses a film roll having a
core meeting all of the dimensional limitations of claims 1, 16 and 24, see
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Schering Corp. v. Geneva Pharmas., Inc., 339 F.3d 1373, (Fed. Cir. 2003)
(recognition by one of ordinary skill in the art is not required for inherent
anticipation). Nevertheless, the Examiner has not shown that one of
ordinary skill in the art would have recognized variations in the outer
diameter of a core as a factor contributing to the wrinkling or slippage of
film rolled on the core.
Since speculation and conjecture cannot form the basis for concluding
obviousness, the rejection of independent claim 25 and dependent claims 26-
38 under 35 U.S.C. § 103(a) as unpatentable over Sasaki cannot be
sustained. See In re Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988) (If an
independent claim is nonobvious under 35 U.S.C. § 103, then any claim
dependent therefrom is nonobvious).
The Examiner applied the disclosure of Endo to show “the use of
inactive particles;” the disclosure of Ogawa to show “a
ferromagnetic/coating layer;” and the disclosure of Leckey to show a
“plurality of diameters being represented by a curved line.” Ans. 9-10. The
addition of Endo, Ogawa, and Leckey does not remedy the deficiencies of
Sasaki as described supra. Thus, we cannot sustain the rejections of claims
39-42 as unpatentable over Sasaki and Endo; of claims 43-46 as
unpatentable over Sasaki and Ogawa; and of claims 47 and 48 as
unpatentable over Sasaki and Leckey.

SUMMARY
The decision of the Examiner to reject claims 25-48 is reversed.

REVERSED
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