Ex Parte Matsuyama

Patent Trial and Appeal Board

Aug 15, 2016

12864117 (P.T.A.B. Aug. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/864, 117 07/22/2010
23373 7590 08/17/2016
SUGHRUE MION, PLLC
2100 PENNSYLVANIA A VENUE, N.W.
SUITE 800
WASHINGTON, DC 20037
FIRST NAMED INVENTOR
Koji Matsuyama
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.
Ql 19530 2213
EXAMINER
SELF, SHELLEY M
ART UNIT PAPER NUMBER
3725
NOTIFICATION DATE DELIVERY MODE
08/17/2016 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):
PPROCESSING@SUGHRUE.COM
sughrue@sughrue.com
USPTO@sughrue.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KOJI MATSUY AMA
Appeal 2014-005502 1,2
Application 12/864, 117
Technology Center 3700
Before MICHAEL A. ASTORINO, PHILIP J. HOFFMANN, and
BRUCE T. WIEDER, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-8. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
According to Appellant, the "invention relates to a method for
manufacturing steel wire having a brass plating layer on the surface thereof,
which is used for instance as filaments for a tire reinforcement steel cord,
1 Our decision references Appellant's Specification ("Spec.," filed July 22,
2010) and Appeal Brief ("Br.," filed Sept. 30, 2013), as well as the
Examiner's Answer ("Answer," mailed Jan. 31, 2014).
2 According to Appellant, "BRIDGESTONE CORPORATION is the real
party in interest." Br. 2.
Appeal2014-005502
Application 12/864, 117
and an apparatus for drawing such brass-plated steel wire." Spec. ii 1.
Independent claims 1, 3, 5, and 7 are the only independent claims under
appeal. See Br., Claims App. We reproduce independent claim 1, below,
with formatting added, as representative of the appealed claims.
Id.
1. An apparatus for drawing a brass-plated steel wire,
the apparatus comprising a plurality of dies for sequentially
drawing a steel wire having a brass plating layer on the surface
thereof, the plurality of dies comprising:
a most downstream die disposed in the most downstream
position of a final drawing process;
a second most downstream die disposed in the second
most downstream position before the most downstream die;
a third most downstream die disposed in the third most
downstream position before the second most downstream die;
and
anterior dies disposed in anterior positions before the third
most downstream die;
wherein the anterior dies are configured such that the
friction coefficient of the anterior dies with the brass-plated steel
wire is below 0.12, and
wherein the most downstream die, the second most
downstream die, and the third most downstream die are
configured such that the friction coefficient of at least one of the
most downstream die, the second most downstream die, and the
third most downstream die is 0.18 to 0.41.
REJECTIONS AND PRIOR ART
The Examiner rejects the claims as follows:
claims 3, 4, and 7 under 35 U.S.C. § 112, second paragraph, as
indefinite for failing to particularly point out and distinctly claim the subject
matter that Appellant regards as the invention; and
2
Appeal2014-005502
Application 12/864, 117
claims 1-8 as unpatentable over Zelin (US 7,617,713 B2, iss. Nov. 17,
2009), Vijayakar (US 5,535,612, iss. July 16, 1996), or Lionetti
(US 5,189,897, iss. Mar. 2, 1993), and Nakamura (JP 08-024938 A, pub.
Jan. 30, 1996). 3
See Answer 2-5.
ANALYSIS
Indefiniteness rejection
We do not sustain the Examiner's rejection of claims 3, 4, and 7 under
35 U.S.C. § 112, second paragraph. See Answer 2-3, 5-6. The Examiner
rejects the claim 3, stating
[ r ]egarding claim[] 3 . . . , the claim recites "out of the most
downstream die, the second most downstream die, and the third
most downstream die, the friction coefficient of a die or dies
other than the at least one of the most downstream die, the second
most downstream die, and the third most downstream die having
a friction coefficient of 0.18 to 0.41 is below 0.12". See claim 3.
Although the claim recites "a die or dies", the claim does not
recite the die or dies as being structurally connected to the most
downstream, second most downstream[,] or third most
downstream dies. Therefore, it is not clear how the limitation
further limit[ s] the claimed apparatus. It appears the claim does
not positively claim the die or dies in combination with the
claimed apparatus.
Answer 2-3. Claims 4 and 7 are rejected for substantially the same reasons.
See id. Based on our review of the Appeal Brief (see Appeal Br. 10-11 ), we
do not agree with the Examiner that "the claim does not recite the die or dies
3 Appellant filed an English-language translation of Nakamura on April 5,
2013. The citations in the Answer and in this Decision are to the paragraphs
of the translation.
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Appeal2014-005502
Application 12/864, 117
as being structurally connected to the most downstream, second most
downstream[,] or third most downstream dies." Claim 3 recites that the
plurality of dies stated in the preamble "compris[ es]" the most downstream
die, the second most downstream die, and the third most downstream die
recited in the claim body. Br., Claims App. Further, we determine that the
limitations related to the friction coefficients of the dies are clear. See id.
Thus, we do not agree with the Examiner that that the claim is not clear, or
that the claim does not positively recite the dies.
Obviousness rejections
We sustain the Examiner's obviousness rejection of claims 1-8 for the
reasons set forth below.
Appellant argues that none of the references, including Nakamura,
discloses drawing a wire through a die with a friction coefficient between
0.18 to 0.41. See Br. 11-15. Appellant addresses the English-language
translation of Nakamura, which states that the coefficient of friction of the
final die should be limited to 0.03---0.15 (see Br. 13). However, the
Examiner references Nakamura's paragraph 13, which the Examiner finds
describes drawing a wire through a die with a coefficient of friction which
is 0.02---0.20 (see Answer 6---7). Thus, regardless of what is discussed and
shown in Nakamura's paragraph 12 and Drawing 2 regarding the
performance of the final die having the coefficient of friction of less than
0.15 (see Br. 13-14), Nakamura's paragraph 13 teaches an arrangement of
dies in which "the coefficient of friction of the final die [is] 0.02---0.20."
Nakamura i-f 13. Thus, based on the foregoing, we sustain the Examiner's
obviousness rejection of claims 1-8.
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Appeal2014-005502
Application 12/864, 117
DECISION
We REVERSE the Examiner's indefiniteness rejection of claims 3, 4,
and 7.
We AFFIRM the Examiner's obviousness rejection of claims 1-8.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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