Ex Parte UedaDownload PDFPatent Trial and Appeal BoardJan 27, 201612084953 (P.T.A.B. Jan. 27, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/084,953 05/14/2008 Takahisa Ueda 23364 7590 01/29/2016 BACON & THOMAS, PLLC 625 SLATERS LANE FOURTH FLOOR ALEXANDRIA, VA 22314-1176 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. UEDA3005 /FJD 3945 EXAMINER WYROZEBSKI LEE, KATARZYNA I ART UNIT PAPER NUMBER 1789 NOTIFICATION DATE DELIVERY MODE 01129/2016 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): MAIL@BACONTHOMAS.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte T AKAHI SA UEDA 1 Appeal2014-002735 Application 12/084,953 Technology Center 1700 Before BRADLEY R. GARRIS, JEFFREY W. ABRAHAM, and CHRISTOPHER C. KENNEDY, Administrative Patent Judges. GARRIS, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134, Appellant appeals from the Examiner's rejection under 35 U.S.C. § 103(a) of claims 4, 8, and 9 as unpatentable over Ueda et al. (JP63-308275 A, published Dec. 15, 1988, as translated) (hereinafter "Ueda") in view of Saito et al. (JP9280379, published Oct. 28, 1997, as translated) (hereinafter "Saito"). We have jurisdiction under 35 U.S.C. § 6. 1 Nippon Pillar Packing Co., Ltd. is identified as the real party in interest. App. Br. 2. Appeal2014-002735 Application 12/084,953 We AFFIRM. Appellant claims a yam comprising a tubular member 3 defining an interior filled with fiber strips 4 having an aspect ratio (i.e., width divided by thickness) in the range of 1 to 3 (independent claim 8, Fig. 1) and having a length of about 200 mm (dependent claim 9). A copy of representative claim 8, taken from the Claims Appendix of the Appeal Brief, appears below. Claim 8. A yam comprising: a knitted or braided fibrous material in the form of a tubular member defining an interior; and fibrous expanded graphite filling said interior of the tubular member and comprising a plurality of fiber strips each having end portions, and a section in which an aspect ratio is in the range of 1 to 3, the aspect ratio being obtained by dividing a width by a thickness of each of said plurality of fiber strips; wherein: the fibrous expanded graphite fibers are inserted into said interior of the tubular member to fill said interior while shifting the end portions of said fiber strips from one another; and the thickness of said fiber strips of said fibrous expanded graphite set to 0.25 mm to 0.50 mm. Appellant presents arguments specifically directed to claims 8 and 9 only (App. Br. 10-15). Therefore, claim 4 will stand or fall with independent claim 8. We sustain the above rejection based on the findings of fact, conclusions of law, and rebuttals to arguments well expressed by the Examiner in the Final Action and in the Answer. The following comments are added for emphasis and completeness. As more thoroughly explained by the Examiner (Ans. 4--5), Appellant's nonobviousness arguments regarding the aspect ratio of claim 8 2 Appeal2014-002735 Application 12/084,953 (App. Br. 11-12) are completely undermined by Appellant's calculations showing Saito' s aspect ratio ranges from 3 to 25 (id. at 11) which overlaps and thereby renders obvious the 1 to 3 range defined by claim 8 and showing Saito's width ranges from 1.14 to 9.5 mm (id.) which overlaps the 5 mm or less range of Ueda. We emphasize that these overlapping width ranges vitiate Appellant's unembellished contention that Saito teaches away from the claimed invention and Examiner's proposed combination of Ueda and Saito (Reply Br. 2-3). We also emphasize that Appellant fails to identify any credible evidence supporting the implication that the claimed aspect ratio yields unexpected results (id.). Appellant further argues that the about 200 mm length of claim 9 would not have been obvious over the about 25 mm length disclosed by Ueda because the longer length possesses advantages over the shorter length (App. Br. 13-15; Reply Br. 3-7). However, Appellant does not offer any evidence in an attempt to show that the stated advantages are factually accurate and unexpected as correctly indicated by the Examiner (Ans. 6). Based on the record before us, the advantages described in the Appeal and Reply Briefs are nothing more than unsupported attorney-statements. See In re Geisler, 116 F.3d 1465, 1470-71 (Fed. Cir. 1997) (holding that unexpected results must be established by factual evidence and that an attorney-statement (i.e., improved results were "surprising") is insufficient to establish unexpected results). For the reasons given by the Examiner and above, Appellant's arguments fail to reveal error in the rejection before us. The decision of the Examiner is affirmed. 3 Appeal2014-002735 Application 12/084,953 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal maybe extended under 37 C.F.R. § 1.136(a)(l). AFFIRMED cdc 4 Copy with citationCopy as parenthetical citation