Ex Parte Pylant

Board of Patent Appeals and Interferences

Jan 27, 2004

09767359 (B.P.A.I. Jan. 27, 2004)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
Paper No. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JOHN D. PYLANT
__________
Appeal No. 2004-0063
Application 09/767,359
___________
ON BRIEF
___________
Before COHEN, FRANKFORT, and McQUADE, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 15, which are all of the claims
pending in this application.
Appeal No. 2004-0063
Application 09/767,359
2
Appellant’s invention relates to a carrier tape system used
for packaging, transporting, and automatically taking out
components that are placed in pockets formed in the carrier tape.
More particularly, the invention addresses an apparatus and
method for uniformly sealing and peeling a cover tape that is
used to protect components placed in the pockets of the carrier
tape by employing means on the carrier tape for minimizing or
eliminating surface irregularities and distortions of the carrier
tape in the region of the bonding zones of the cover tape to the
carrier tape. Claims 1, 7 and 14 are representative of the
subject matter on appeal and a copy of those claims can be found
in the Appendix to appellant’s brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Kaneko et al. (Kaneko) 4,736,841 Apr. 12, 1988
Ball 4,781,953 Nov. 1, 1988
Appeal No. 2004-0063
Application 09/767,359
3
Claims 1 through 3, 5 through 11 and 13 through 15 stand
rejected under 35 U.S.C. § 102(b) as being anticipated by Kaneko.
Claims 1 through 3, 6 through 11, 14 and 15 stand rejected
under 35 U.S.C. § 102(b) as being anticipated by Ball.
Claims 1 through 15 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Kaneko.
Rather than reiterate the conflicting viewpoints advanced by
appellant and the examiner regarding the above-noted rejections,
we refer to the final rejection (Paper No. 6, mailed May 9,
2002), the examiner's answer (Paper No. 14, mailed April 8, 2003)
and appellant’s brief (Paper No. 13, filed February 20, 2003) for
a full exposition thereof.
Before turning to the merits of the rejections on appeal, we
note that appellant’s brief (at page 4) indicates that claims 1
through 15 “stand or fall together.” Thus, we have selected
independent claim 1 as being representative of the issues on
Appeal No. 2004-0063
Application 09/767,359
4
appeal and will decide the appeal with regard to that claim
alone. In accord with appellant’s grouping of claims, claims 2
through 15 will stand or fall with our determination regarding
independent claim 1.
0PINION
Having carefully reviewed the anticipation and obviousness
issues raised in this appeal in light of the record before us, we
have come to the conclusion that the examiner's various
rejections of the appealed claims under 35 U.S.C. § 102(b) and
35 U.S.C. § 103(a) will be sustained. Our reasoning in support
of this determination follows.
The embodiment best reflective of appellant’s claimed
subject matter is that seen in Figures 5A and 5B of the
application, which figures show a carrier tape (302), a plurality
of pockets (304), depressed portions (306) formed in between each
of the plurality of pockets, and longitudinally extending bonding
zones exemplified by (330) where a cover tape (not shown) will be
bonded to the carrier tape on opposite sides of the plurality of
Appeal No. 2004-0063
Application 09/767,359
5
pockets. It is indicated on page 14 of the specification that,
when depressed portions (306) are present, surface irregularities
and distortions are minimized in the bonding zones (330) of the
carrier tape.
The only argument raised by appellant in this appeal (brief,
pages 5-7) is that both Kaneko and Ball fail to teach or suggest
bonding zones on a carrier tape having depressed portions that
assist in providing a substantially uniform surface on the
bonding zones and are spaced apart from the bonding zones. More
specifically, looking at the carrier and cover tapes seen in
Figures 1 and 2 of both Kaneko and Ball, appellant contends that
the prior art teaches stepped or depressed portions (19, 21 of
Kaneko and 30 of Ball) forming boundaries with the heat sealed
portions therein (e.g., 20 of Kaneko), which appellant urges is
totally contrary to what is claimed in appellant’s invention. In
particular, appellant argues that neither Kaneko nor Ball teaches
that the depressed portions are spaced apart from the bonding
zones (answer, page 7).
Appeal No. 2004-0063
Application 09/767,359
6
We find appellant’s argument to be unpersuasive of any error
on the examiner’s part. While each of the independent claims on
appeal includes a limitation regarding the depressed portions
being “spaced apart from the bonding zones,” we observe that the
exact nature of the spacing is not specified in the claims.
Again looking to Figures 1 and 2 of Kaneko and Ball, we note that
in each of the applied patents the depressed portions are
vertically spaced apart from the bonding zones of the cover tape
to the carrier tape, thus meeting the broad language of
appellant’s claims on appeal. From Figures 5A and 5B of the
application, it appears that appellant’s bonding zones are
intended to be both vertically and laterally spaced apart from
the depressed portions (306) of the carrier tape, however, the
claims on appeal do not bring out this distinction.
An anticipation under 35 U.S.C. 102(b) is established when a
single prior art reference discloses, either expressly or under
principles of inherency, each and every element or limitation of
a claimed invention. See In re Schreiber, 128 F.3d 1473, 1477,
44 USPQ2d 1429, 1431 (Fed Cir 1997) and RCA Corp. v. Applied
Digital Data Systems, Inc., 730 F.2d 1440, 1444, 221 USPQ 385,
388 (Fed. Cir. 1984).
Appeal No. 2004-0063
Application 09/767,359
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However, we observe that the law of anticipation does not require
that the reference teach what the appellant has disclosed but
only that the claims on appeal "read on" something disclosed in
the reference, i.e., all limitations of the claim are found in
the reference. See Kalman v. Kimberly Clark Corp., 713 F.2d 760,
772, 218 USPQ 781, 789 (Fed. Cir. 1983). In the present case,
claim 1 on appeal clearly reads on the apparatus for storing a
plurality of components seen in Figures 1 and 2 of both Kaneko
and Ball.
For the above reasons, we will sustain the examiner’s
rejections of claim 1 under 35 U.S.C. § 102(b) as being
anticipated by each of Kaneko and Ball, and the rejection of
claim 1 under 35 U.S.C. § 103(a) as being unpatentable over
Kaneko. In accord with appellant’s grouping of claims (brief,
page 4), claims 2 through 15 are considered to fall with claim 1.
In light of the foregoing, the decision of the examiner
rejecting claims 1 through 15 of the present application is
affirmed.
Appeal No. 2004-0063
Application 09/767,359
8
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JOHN P. McQUADE )
Administrative Patent Judge )
CEF:pgc
Appeal No. 2004-0063
Application 09/767,359
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