Ex Parte Masumura et al

Board of Patent Appeals and Interferences

Jun 17, 2012

10508788 (B.P.A.I. Jun. 17, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte NOBUYUKI MASUMURA, KAZUKI TOMITA,
AKIRA TOCHIGI, YUJI KOKUNO, SEIICHI OHIRA,
HIDEKAZU MICHIOKA, and KATSUYA IIDA
____________________

Appeal 2010-004209
Application 10/508,788
Technology Center 3600
____________________

Before: JENNIFER D. BAHR, WILLIAM V. SAINDON, and
MICHAEL J. FITZPATRICK, Administrative Patent Judges.

SAINDON, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 17-26, 34-44, and 46-51. We have jurisdiction
under 35 U.S.C. § 6(b).
Claim 17, reproduced below, is illustrative of the claimed subject
matter.
17. A belt comprising:
a tape-shaped product including
(i) a tape of synthetic resin having longitudinal edges,
and
(ii) extending along each of said longitudinal edges and
integral with said tape, a stretched fibrous member of
thermoplastic resin including oriented molecular chains of said
thermoplastic resin oriented longitudinally along said stretched
fibrous member, said stretched fibrous member obtained by
stretching a yet-unstretched fibrous member to provide said
stretched fibrous member with a tensile strength greater than a
tensile strength of the yet-unstretched fibrous member,
wherein said thermoplastic resin and said synthetic resin
comprise substantially identical resins, and
wherein each said stretched fibrous member is positioned
inwardly of a corresponding said each of said longitudinal
edges.

The Examiner relies upon the following prior art references:
Kavesh
Kanai
Kojima
Matsumoto
Kitamura
US 4,536,536
US 5,852,135
US 6,103,805
EP 1,083,347 A2
US 6,610,766 B1
Aug. 20, 1985
Dec. 22, 1998
Aug. 15, 2000
Mar. 14, 2001
Aug. 26, 2003
Donald R. Askeland, The science and engineering of materials, 540-43
(1994) (hereinafter “Askeland”).

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The Examiner makes the following rejections under 35 U.S.C. §
103(a):
I. Claims 17-26, 34-43, and 49-51 as unpatentable over Matsumoto,
Askeland, and Kavesh.
II. Claims 44 and 48 as unpatentable over Matsumoto, Askeland,
Kavesh, and Kanai.
III. Claim 46 as unpatentable over Matsumoto, Askeland, Kavesh, and
Kojima.
IV. Claim 47 as unpatentable over Matsumoto, Askeland, Kavesh, and
Kitamura.

SUMMARY OF DECISION
We AFFIRM-IN-PART.

OPINION
Independent Claim 17
Sole independent claim 17 requires, in relevant part, a belt comprising
a tape of synthetic resin and a stretched fibrous member of thermoplastic
resin, wherein the stretched fibrous member includes longitudinally-oriented
molecular chains and wherein the synthetic resin and the thermoplastic resin
comprise substantially identical resins.
The Examiner found that Matsumoto describes a belt substantially as
claimed. Ans. 3-4. The Examiner found that Matsumoto does not teach a
stretched fiber with longitudinally-oriented molecular chains, but that
Askeland and Kavesh teach and render obvious incorporation of these
features in Matsumoto. Ans. 4-5. The Examiner also found that both resins
in Matsumoto are identical because (1) both resins can have carbon filler and
(2) both resins are synthetic. Ans. 4, 8-9.

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Appellants argue that Kavesh “does not suggest at all that such a fiber
[(polyethylene)] reinforced through stretching is effective as a reinforcing
material of a tape comprising a matrix of a substantially identical resin.”
App. Br. 6; see also Reply Br. 5. However, the Examiner cites to Kavesh as
evidence that stretching fibers is a known prior art technique to improve the
physical characteristics of a fiber, not to utilize the particular fiber of
Kavesh. Ans. 10. See KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 417
(2007) (“if a technique has been used to improve one device, and a person of
ordinary skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill”). Appellants do not offer technical
reasoning or evidence suggesting that the teachings of Kavesh are not
applicable in the manner suggested by the Examiner. Accordingly, this
argument is not persuasive.
Appellants also argue that claim 17 requires that the molecular chains
are oriented longitudinally, not the fibers. Reply Br. 3. While we agree that
Askeland does not specify whether the molecular chains of the
longitudinally-oriented fibers are also longitudinally oriented, we note that
the Examiner’s rejection is predicated on the combined teachings of
Matsumoto, Askeland, and Kavesh. As mentioned above, Kavesh teaches
stretching of fibers. Thus, the fibers in the Examiner’s proposed
combination are stretched and longitudinally oriented. Because the fibers
are stretched, they contain longitudinally-oriented molecular chains. See,
e.g., Spec. 12:5-7. Accordingly, Appellants’ argument is not persuasive.
Appellants argue that the Examiner’s position that the synthetic resin
and the thermoplastic resin of Matsumoto are substantially identical does not
properly consider how one of ordinary skill in the art would interpret a
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requirement for “substantially identical resins.” App. Br. 5; Reply Br. 3-4.
Appellants argue that resins are generally classified according to their basic
chain structures and functional groups (App. Br. 5, Reply Br. 3) or their
moldability and adhesion to each other (Reply Br. 4). See also Spec., 13:8-
15 (providing examples of the ways resins may be “not … entirely
identical”).
We agree that both of the Examiner’s interpretations of “substantially
identical resins” are unduly broad. The Examiner offers no evidence that
one of ordinary skill in the art would consider resins that accept the same
filler to be “substantially identical” or that all synthetic resins are
“substantially identical” to each other. See also Spec., 13:20-22 (listing
various synthetic resins of different types). Given that the Examiner offers
no evidence supporting his or her interpretation, that the Specification
provides some explanation as to what “substantially identical” means, and
that the Examiner’s interpretation does not appear to fit within this
disclosure, we cannot sustain the Examiner’s rejection of claim 17. The
Examiner’s rejection of dependent claims 18-26, 34-43, and 49-51 contains
the same deficiency and cannot be sustained.
Dependent Claims 44 and 46-48
Dependent claims 44 and 46-48 specify the particular resins for the
tape and the stretched fibrous member. For each claim, the Examiner
concluded that it would have been obvious to use these particular resins, and
provides Kanai, Kojima, and Kitamura as evidence. Ans. 5-7.
These claims are rejected separately and Appellants separately argue
them. See App. Br. 8-9. Appellants do not present new arguments but
rather state that the deficiencies alleged above are not obviated by the
additional references. Id. However, the Examiner’s proposed modification
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provides identical resins, thus remedying the above-noted deficiency.
Appellants fail to apprise us of error in the Examiner’s rejection of these
claims. As such, we sustain Rejections II-IV.
A Holding of Obviousness of a Dependent Claim is Necessarily a Holding of
Obviousness of the Claims from which the Dependent Claim Depends.
The Examiner’s rejection of claims 44 and 46-48 cures the deficiency
identified in the rejection of claim 17, and claims 44 and 46-48 contain all
the subject matter of independent claim 17 and intermediate claim 34.
Consequently, Rejections II-IV served, when made, to provide notice of a
rejection of claims 17 and 34 for the same reasons. See Ormco Corp. v.
Align Tech., Inc., 498 F.3d 1307, 1319 (Fed. Cir. 2007) (when a dependent
claim is “found to have been obvious, the broader claims . . . must also have
been obvious”) (emphasis added).

DECISION
We reverse the Examiner’s decision to reject claims 17-26, 34-43, and
49-51 as unpatentable over Matsumoto, Askeland, and Kavesh.
We affirm the Examiner’s decision to reject claims 17, 34, 44, and 48
as unpatentable over Matsumoto, Askeland, Kavesh, and Kanai.
We affirm the Examiner’s decision to reject claims 17, 34, and 46 as
unpatentable over Matsumoto, Askeland, Kavesh, and Kojima
We affirm the Examiner’s decision to reject claims 17, 34, and 47 as
unpatentable over Matsumoto, Askeland, Kavesh, and Kitamura.

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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