Ex parte Watts et al.

Board of Patent Appeals and Interferences

May 29, 1998

08306797 (B.P.A.I. May. 29, 1998)

Application for patent filed September 15, 1994.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte KEITH A. WATTS and
ROBERT W. HOSTETLER
__________
Appeal No. 97-2715
Application 08/306,7971
__________
ON BRIEF
__________
Before ABRAMS, NASE, and CRAWFORD, Administrative Patent
Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 97-2715
Application No. 08/306,797
2
This is an appeal from the decision of the examiner
finally rejecting claims 1-7, which constitute all of the
claims of record in the application.
The appellants’ invention is directed to a method and
apparatus for treating a shirred food casing, and to the
shirred food casing. The subject matter before us on appeal
is illustrated by reference to claim 1, which reads as
follows:
1. A method for treating a shirred food casing strand,
having a diameter, a circumference, a longitudinal axis, a
length, an external surface and a hollow bore along at least a
portion of said longitudinal axis, which comprises providing
an opening space between at least three parallel rollers which
space is large enough to insert the strand, closing the space
so that all three rollers contact the strand and smoothing
said exterior surface by rolling said strand between the at
least three rollers, all of which simultaneously contact said
external surface at different lines of contact along the
entire length of the strand.
THE REFERENCES
The references relied upon by the examiner to support the
final rejection are:
Kostner et al. (Kostner) 3,798,302 Mar.
19, 1974
Moret de Rocheprise 5,207,960 May
4, 1993
Appeal No. 97-2715
Application No. 08/306,797
This is expressed in two separate rejections in the2
Examiner’s Answer, one directed to claims 1-6 and the other to
claim 7.
3
(de Rocheprise)
THE REJECTION
Claims 1-7 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Kostner in view of de Rocheprise.2
The statement of the rejection can be found in Paper No.
12 (the final rejection), with further explanation being
provided in the Examiner's Answer.
The opposing viewpoints of the appellants are set forth
in the Brief and the Reply Brief.
OPINION
The Examiner’s Rejections
In rejecting claims under 35 U.S.C. § 103, the examiner
bears the initial burden of presenting a prima facie case of
obviousness (In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d
1955, 1956 (Fed. Cir. 1993)), which is established when the
teachings of the prior art itself would appear to have
suggested the claimed subject matter to one of ordinary skill
Appeal No. 97-2715
Application No. 08/306,797
4
in the art (In re Bell, 991 F.2d 781, 783, 26 USPQ2d 1529,
1531 (Fed. Cir. 1993)). If the examiner fails to establish a
prima facie case, the rejection is improper and will be
overturned (In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596,
1598 (Fed. Cir. 1988)).
The appellants’ invention is concerned with acting upon
the surface of a shirred food casing strand in order to smooth
the exterior surface and to provide uniformity to the strand
so that the strand is not curved. According to the method
described in claim 1, this is accomplished by the steps of (1)
providing an opening space between at least three parallel
rollers large enough to insert the strand, (2) closing the
space so that all three rollers contact the strand, and (3)
smoothing the exterior surface of the strand by simultaneously
contacting the strand with the three rollers at different
lines of contact along its entire length.
This claim stands rejected on the basis of the combined
teachings of Kostner and de Rocheprise. Kostner discloses a
machine for improving the shape of a shirred food casing
strand. It has essentially the same objectives as the
Appeal No. 97-2715
Application No. 08/306,797
5
appellants’ invention (column 1, line 66 et seq.). Kostner
discloses two embodiments of the invention, both of which show
the strand mounted on a mandrel. The first comprises a block
having a round passage (5), through which the strand is pushed
(column 2, lines 41-48; Figure 1). The second utilizes “one
or more rolls” (column 2, lines 27 and 28; Figure 2), with two
rolls (14 and 15) being shown and described. Kostner is
silent as to how the strand is placed between the opposed
rollers. It is our view, based upon the absence of any
mention of moving the rollers apart, that one of ordinary
skill would have been taught by Kostner to fixedly mount the
two rollers with respect to one another with an appropriately
sized gap therebetween, and to push the mounted strand through
the gap either longitudinally (as in the first embodiment) or
laterally.
Kostner fails to explicitly disclose or teach contacting
the strand with three rollers, and providing an opening space
between the rollers to receive the strand and then closing the
space to smooth the strand along three different lines of
contact.
Appeal No. 97-2715
Application No. 08/306,797
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The secondary reference is directed to the manufacture of
thin tubes of resin which are constructed by wrapping a ribbon
around a mandrel and heating the assembly to fuse the ribbon
into a thin-walled tube. In order to facilitate the removal
of the tube from the mandrel, it is rolled under pressure by
three wheels, which causes the tube wall to be thinned, the
length to increase, and the interior diameter to expand
(column 1, line 66 et seq.). The axes of the wheels are
inclined, which causes the tube to be rotated as well as moved
axially (column 2, lines 16-18; Figure 2). There is no
explicit teaching in this reference of providing an opening
space between the wheels and then closing it about the tube
and its mandrel, and such would seem not to be inherent in its
operation.
Since both references are devoid of any suggestion to
open a space between the rollers to receive the article to be
treated and thereafter close it to begin operation, as is
required by claim 1, it is our conclusion that the teachings
of these references fail to establish a prima facie case of
obviousness with regard to the claim on this basis and we will
Appeal No. 97-2715
Application No. 08/306,797
7
not sustain the rejection. It follows that the rejection of
dependent claim 2 also will not be sustained.
Another reason for not sustaining this rejection is
grounded in our view that one of ordinary skill in the art
would not have been motivated to combine the teachings of the
references in the manner proposed by the examiner. The
peripheral surfaces of the wheels of the de Rocheprise
apparatus are not flat, and their purpose is not to smooth and
straighten the surface of the tube, but to alter its structure
in such a manner as to cause the inside diameter to increase
as they concurrently cause the tube to move longitudinally.
Therefore, even conceding, arguendo, de Rocheprise to be
analogous art, we are of the opinion that there would have
been no suggestion derived from this reference to modify
Kostner so that it had three rollers instead of two. We are
not persuaded by the examiner’s argument that the mere mention
by Kostner of “one or more rolls” is sufficient. From our
perspective, the only suggestion to combine the references is
Appeal No. 97-2715
Application No. 08/306,797
8
found via the luxury of hindsight, which is not a proper
basis. See In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780,
1783-84 (Fed. Cir. 1992).
The reasoning set forth above for not sustaining the
rejection of method claim 1 also applies to claim 3, which is
directed to an apparatus for practicing the method of claim 1,
and which requires at least three rollers arranged so as to
contact the surface of the strand and “means for separating
the rollers to permit placement of the strand between them and
for causing said contact after said placement.” The rejection
of claims 3-6 will not be sustained.
Claim 7 is drawn to a shirred food casing strand “rolled
at three simultaneous lines of contact extending along the
entire length of the casing.” While this is a product-by-
process claim, the examiner’s reasoning in rejecting it is the
same as that which we found fatally defective above. The same
holds true here, and therefore the rejection of claim 7 also
will not be sustained.
New Rejection Under 37 CFR 1.196(b)
Appeal No. 97-2715
Application No. 08/306,797
In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed.3
Cir. 1985).
9
Pursuant to our authority under Rule 1.196(b), we make
the following new rejection:
Claim 7 is rejected under 35 U.S.C. § 103 as being
unpatentable over Kostner.
Claim 7 is a product-by-process claim. The guidance that
has been provided to us by our reviewing court on this matter
is
[i]f the product in a product-by-process claim is
the same as or obvious from a product of the prior
art, the claim is unpatentable even though the prior
product was made by a different process. 3
Applying this direction, the process limitations in claim 7
fall by the wayside, which leaves for our consideration only
“[a] shirred food casing strand having a length and an
external surface.”
Both the appellants and Kostner have directed their
inventive efforts to solving the same problems present in
shirred food casing strands, and they have done so by methods
which include contacting the outer surface with a plurality of
rollers. While the methods differ, as we have pointed out
Appeal No. 97-2715
Application No. 08/306,797
10
above, it would appear from the descriptions of the strands
provided in the specifications of the pending application and
the reference that the shirred food casing strands which
result therefrom are indistinguishable from one another. No
evidence has been provided from which the conclusion can be
established that the shirred food casing strand of claim 7
patentably differs from the shirred food casing strand
disclosed in Kostner.
This being the case, the product recited in claim 7
would, in our view, have been prima facie obvious in view of
the teachings of Kostner.
SUMMARY
The examiner’s rejection of claims 1-7 as being
unpatentable over Kostner in view of de Rocheprise is not
sustained.
Pursuant to 37 CFR 1.196(b) claim 7 is rejected under 35
U.S.C. § 103 as being unpatentable over Kostner.
The decision of the examiner is reversed.
This decision contains a new ground of rejection pursuant
to 37 CFR § 1.196(b)(amended effective Dec. 1, 1997, by final
Appeal No. 97-2715
Application No. 08/306,797
11
rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997), 1203
Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)).
37 CFR
§ 1.196(b) provides that, “A new rejection shall not be
considered final for purposes of judicial review.”
37 CFR § 1.196(b) also provides that the appellants,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of
the following two options with respect to the new ground of
rejection to avoid termination of proceedings (§ 1.197(c)) as
to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED; 1.196(b)
Appeal No. 97-2715
Application No. 08/306,797
12
Neal E. Abrams )
Administrative Patent Judge )
)
)
)
Jeffrey V. Nase ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Murriel E. Crawford )
Administrative Patent Judge )
Appeal No. 97-2715
Application No. 08/306,797
13
Dunn & Associates
P.O. Box 96
Newfane, NY 14108