Ex Parte Yonezawa et al

Board of Patent Appeals and Interferences

Jul 27, 2007

10681413 (B.P.A.I. Jul. 27, 2007)

The opinion in support of the decision being entered today is not binding
precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte AKIRA YONEZAWA, KAZUYA WATANABE
and MASAHIKO ONO
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Appeal 2007-2419
Application 10/681,4131
Technology Center 3600
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Decided:
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Before FRED E. McKELVEY, Senior Administrative Patent Judge, and
RICHARD E. SCHAFER, and SALLY C. MEDLEY, Administrative Patent
Judges.

MEDLEY, Administrative Patent Judge.

DECISION ON APPEAL

A. Statement of the Case 1
Applicants appeal under 35 U.S.C. § 134 from a final rejection of 2
claims 1-3. We have jurisdiction under 35 U.S.C. § 6(b). 3

1 Application for patent filed 7 October 2003. The real party in interest is
Fujicopian Co., Ltd.
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The prior art relied upon by the Examiner in rejecting the claims on 1
appeal is: 2
Masahiko JP 6-127774 May 10, 1994 3
(as translated) 4
Hofmann US 5,328,510 Jul. 12, 1994 5
Stevens US 6,568,450 May 27, 2003 6
Claims 1-3 stand rejected under 35 U.S.C. § 103(a) as being 7
unpatentable over Stevens in view of Masahiko and Hofmann (Final 8
Rejection 2 and Answer 3). 9
BACKGROUND 10
The invention relates to a coating film transfer tool for transferring a 11
covering film, an adhesive film or decorative film to a receiving surface. 12
An embodiment of the film transfer tool, Figure 1 of the Specification, 13
is as shown below: 14

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The transfer tool includes a supply reel 3 on shaft 13, a take up reel 4 1
on shaft 14, and a rubber belt 5 for cooperatively connecting the supply reel 3 2
and take up reel 4. A transfer tape 6, formed by coating one surface of a base 3
tape 8 with a coating film 7, is wound around the supply reel 3. 4
In operation, the tape 6 is unwound from the supply reel 3 and pressed 5
against a receiving surface by tip 10 of transfer head 9, transferring coating 7 6
to the receiving surface. The invention differs from the prior art in that a 7
guide member 2 is positioned between the supply reel 3 and take-up reel 4. 8
The guide member 2 is described as preventing the portion of the belt 5 9
between the supply reel 3 and take-up reel 4 from sagging (Specification 10
¶ 9). 11
B. Issue 12
The issue is whether Applicant has shown that the Examiner erred in 13
determining claims 1-3 to be unpatentable under 35 U.S.C. § 103(a) over the 14
prior art. 15
C. Findings of fact (“FF”) 16
The record supports the following findings of fact as well as any other 17
findings of fact set forth in this opinion by at least a preponderance of the 18
evidence. 19
1. Applicants’ claims 1-3 are the subject of this appeal. 20
2. Applicants characterize claim 1, the sole independent claim as a 21
Jepson-type claim (Appeal Br. 6). 22
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3. Applicants acknowledge that the preamble and the first four 1
paragraphs that follow the preamble encompass the known prior art (Id.). 2
4. The improvement is defined by the last paragraph, e.g., essentially a 3
belt guide member 2 shown in the above figure (Id.). 4
5. Claim 1, the sole independent claim2 is as follows with the 5
improvement highlighted: 6
1. A coating film transfer tool comprising: 7
a supply reel 3 having a transfer tape 6 wound thereon, the 8
transfer tape 6 comprising a base tape 8 coated with a coating film 7; 9
a transfer head 9 for pressing the transfer tape 6 against a 10
receiving surface to transfer the coating film 7 thereto; 11
a take-up reel 4 for taking up used base tape 8, said base tape 8 12
extending from the supply reel 3, past the transfer head 9, to the take-13
up reel 4 and being capable of exerting a pulling force tending to 14
unwind base tape from the supply reel 3 when the transfer head 9 is 15
moved over a receiving surface and thereby causing the supply reel 3 16
to rotate in a first direction; and 17
a driving mechanism comprising a first belt-engaging pulley on 18
the supply reel 3, a second belt-engaging pulley on the take-up reel 4, 19
and an endless belt 5 frictionally engaged with both pulleys, capable of 20
slipping on the belt-engaging pulley on the take-up reel 4, and 21
cooperatively connecting the supply reel 3 in driving relationship with 22

2 References to Fig. 2 are for illustrative purposes.
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the take-up reel 4, the diameter of the first pulley being greater than the 1
diameter of the second pulley, whereby the rate of rotation of the take-2
up reel 4, when driven through the belt 5 by the supply reel 3 would be 3
greater than the rate of rotation of the supply reel 3, if the take-up reel 4
were not constrained by the base tape extending from the supply reel 3, 5
past the transfer head 9, to the take-up reel 4; 6
wherein a belt guide 2 for guiding said belt is disposed between 7
the supply reel 3 and the take-up reel 4, in contact with a section of 8
the belt 5 which moves from the pulley of the supply reel to the pulley 9
of the take-up reel when the supply reel 3 rotates in said first direction. 10
Stevens 11
6. The Examiner found that Stevens (Fig. 1) describes a coating film 12
transfer tool with a supply reel 6, a take up reel 7, a transfer tape 18 with 13
coated base tape 18’, a transfer head 11, and a belt-driving mechanism (belt – 14
8). (Final Rejection 2 and Answer 3). 15
7. The Examiner found that the claimed subject matter of claim 1 16
differs from Stevens in that Stevens does not describe a belt guide. (Id.). 17

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Masahiko 1
8. Figure 1 of Masahiko is shown below: 2
3
4
9. The Examiner found that Masahiko describes a coating film transfer 5
tool with a belt guide 17 (pressing roller) used for accommodating tension of 6
the endless belt 12. (Final Rejection 2-3 and Answer 4). 7
10. The Examiner found that it would have been obvious to use a belt 8
guide on the Stevens belt as taught by Masahiko, since Masahiko describes 9
using the belt guide to vary the tension in the belt. 10
11. The Examiner found, however, that the claimed subject matter of 11
claim 1 differs from the combination of Stevens and Masahiko in that the 12
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combination (Masahiko) fails to show the belt guide 17 contacting the belt as 1
it travels from the supply reel to the take-up reel. 2
12. Instead, the Masahiko belt guide 17 contacts the belt as it travels 3
from the take-up reel to the supply reel. (Final Rejection 3 Answer 4). 4
13. Masahiko describes a torque varying mechanism 14 which can 5
change the rotary torque of the delivery core 3 (“slip torque”) by adjusting 6
the tension of belt 12. (Masahiko ¶ 9). 7
14. Masahiko describes adjusting the tension of the belt 12 by 8
controlling a knob 15, which in turn forces a pressing roller 17 into belt 12. 9
(Id.). 10
15. The amount of pressure applied to belt 12 from pressing roller 17 11
is adjustable. (Id.). 12
16. Masahiko contemplates placing the roller 17 in alternative 13
locations on the belt. 14
17. Masahiko describes that the press roller 17 may be arranged at the 15
inner circumference side of the round-head belt 12, so that the slip torque can 16
be increased as the round belt 12 is pressed towards the outer circumference 17
side with the press roller 17. (Masahiko ¶ 11). 18
18. Masahiko describes with respect to the Fig. 5 embodiment, 19
adjusting the slip torque using a v-shaped swinging arm 21 with a roller 20 to 20
press roller 17 into the belt 12. 21
19. Masahiko describes that “due to the large tension of round belt 12, 22
the still friction force between the round belt 12 and large-diameter/small-23
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diameter pulleys 10, 11 becomes greater, providing a large slip torque M.” 1
(Masahiko ¶ 12). 2
Hofmann 3
20. The Examiner found that Hofmann describes a belt drive 4
mechanism with a belt guide (Figures 6-7, tension roll 55) for controlling 5
slack and tension in the belt 72. (Final rejection 3 and Answer 4). 6
21. The Examiner further found that the belt guide 55 contacts the 7
portion of the belt 72 as it travels from the pulley with the large diameter 8
(analogous to the supply reel) toward the pulley with the small diameter 9
(analogous to the take up reel). (Id.). 10
22. The Examiner found that it would have been obvious to locate the 11
belt guide along the belt as it travels from the supply reel to the take-up reel, 12
since Hofmann shows the arrangement to be functionally equivalent to the 13
placement of the Masahiko belt guide. (Id.). 14
Applicants’ arguments 15
23. Applicants agree with the Examiner’s findings with respect to 16
Stevens (Appeal Br. 7). 17
24. Applicants’ argue that the Masahiko torque varying mechanism 14 18
is mounted on a rotatable plate for adjustment of slip torque and that: 19
If the torque varying mechanism were instead placed on the side 20
of the belt that moves from the supply reel to the take-up reel, 21
part of its range of motion would be utilized merely in taking up 22
the slack created when the transfer tool is operated. In that 23
position, the torque varying mechanism would be less effective 24
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in controlling slippage of the belt on the pulleys, and would not 1
be expected to adjust slip satisfactorily. 2
3
25. The Examiner responded and maintained that: 4
Although Masahiko shows the tensioning roller to be disposed 5
in contact with the section of the belt which moves from the 6
pulley of the take-up reel to the pulley of the supply reel, the text 7
is silent as to a required location of the roller. Because the 8
tensioning roller of Masahiko would increase the travel path of 9
the transfer belt and consequently increase the tension in the 10
transfer belt regardless of whether the tensioning roller contacts 11
the belt as it moves from the pulley of the take-up reel to the 12
pulley of the supply reel or as it moves from the pulley of the 13
supply reel to the pulley of the take-up reel, one of ordinary skill 14
in the art would realize that the tensioning roller could be 15
effective in the location shown by Hofmann. 16
17
D. Principles of Law 18
A claimed invention is not patentable if the subject matter of the 19
claimed invention would have been obvious to a person having ordinary skill 20
in the art. 35 U.S.C. § 103(a); KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 21
82 USPQ2d 1385 (2007); Graham v. John Deere Co. of Kansas City, 383 22
U.S. 1 (1966). 23
Facts relevant to a determination of obviousness include (1) the scope 24
and content of the prior art, (2) any differences between the claimed 25
invention and the prior art, (3) the level of skill in the art and (4) any relevant 26
objective evidence of obviousness or non-obviousness. KSR, 82 USPQ2d at 27
1388, Graham, 383 U.S. at 17. 28
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E. Analysis 1
Applicants argue claims 1-3 together as a group. Applicants 2
acknowledge that Stevens describes everything but the claimed belt guide 3
(FF 23). Applicants apparently agree that Masahiko describes a “belt guide,” 4
but that the belt guide is on the wrong side of the belt (FF 24). Applicants 5
argue that one of ordinary skill in the art would not have been motivated to 6
put the Masahiko “belt guide” 17 on the side of the belt that moves from the 7
supply reel to the take-up reel. Applicants opine that if the Masahiko torque 8
varying mechanism were placed on the side of the belt that moves from the 9
supply reel to the take-up reel, that part of “its range of motion would be 10
utilized merely in taking up the slack created” when the tool is operated. 11
Applicants argue that as a result, the torque varying mechanism would be less 12
effective in controlling slippage of the belt and would not be expected to 13
adjust slip satisfactorily (FF 24). 14
Applicants have failed to direct us to evidence to support the assertions 15
made. The Examiner found that there is nothing in the Masahiko reference 16
itself that would tend to support Applicants’ theory (FF 25). Although 17
Masahiko does not appear to expressly describe placing the roller 17 on the 18
side of the belt that travels from supply reel to take-up reel, Masahiko 19
describes placing the roller in different locations along the belt (FFs 16 and 20
17). One having ordinary skill in the art would understand the interplay of 21
the forces involved in tensioning the belt and balancing the forces between 22
the supply reel and the take-up reel in the Masahiko transfer tool. Therefore, 23
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one of ordinary skill in the art would have known how to use the Masahiko 1
adjustable roller 17 to adjust and achieve the desired tension in the belt and 2
therefore balance the forces between the supply reel and take-up reel (FF 19). 3
One of ordinary skill in the art would have known that placing pressure on 4
the belt in any location along the belt would effect the belt tension and 5
achieve the desired result, e.g., change the slip torque. 6
Applicants have not demonstrated whether the placement of the roller 7
along one side of the belt versus another is better or performs some new 8
function or achieves some unexpected result. To the extent applicants 9
maintain there is some new function, better performance or an unexpected 10
result, they must show so. In re Klosak, 455 F.2d 1077, 173 USPQ 14 11
(CCPA 1972). The showing must be clear and convincing. McClain v. 12
Ortmayer, 141 U.S. 419, 429 1891) (conclusive evidence need to show 13
invention performs some new and important function not performed by the 14
prior art); In re Heyna, 360 F.2d 222, 228, 149 USPQ 692, 697 (CCPA 1966) 15
(applicant required to submit clear and convincing evidence to support an 16
allegation of unexpected property). See also In re Passal, 426 F.2d 409, 412, 17
165 USPQ 702, 704 (CCPA 1970) and In re Lohr, 317 F.2d 388, 392, 137 18
USPQ 548, 550-51 (1963) (conclusive proof of unexpected results not 19
submitted by applicant). 20
We will not credit Applicants’ unsupported argument. Rohm & Haas 21
Co. v. Brotech Corp., 127 F.3d 1089, 1092, 44 USPQ2d 1459, 1462 (Fed. 22
Cir. 1997) (Nothing in the rules or in jurisprudence requires trier of fact to 23
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credit unsupported or conclusory assertions). Based on the record before us, 1
it would have been obvious to locate the Masahiko roller in any location 2
along the belt, including on the side of the belt that moves from the supply 3
reel to the take-up reel. 4
This case, while not identical, is reminiscent of Sakraida v. AG Pro, 5
Inc., 425 U.S. 273, 189 USPQ 449 (1976) (known elements rearranged to 6
make new, but obvious, water flush system) and Graham v. John Deere Co., 7
383 U.S. 1 (1966) (farm plow spring clamp changed from above hinge plate 8
to below hinge plate to make new, but obvious, farm plow implement). 9
For these reasons, we sustain the Examiner’s rejection of claims 1-3. 10
F. Decision 11
Upon consideration of the record, and for the reasons given, the 12
Examiner’s rejection of claims 1-3 under 35 U.S.C. § 103(a) as being 13
unpatentable over Stevens, Masahiko and Hofmann is affirmed. 14
No time period for taking any subsequent action in connection with 15
this appeal may be extended under 37 C.F.R. § 1.136(a). 16
AFFIRMED
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