Ex parte Akiba

Board of Patent Appeals and Interferences

Mar 30, 2001

08845282 (B.P.A.I. Mar. 30, 2001)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of
the Board.
Paper No. 30
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte MASARU AKIBA
__________
Appeal No. 2000-0693
Application 08/845,282
___________
HEARD: November 28, 2000
___________
Before COHEN, STAAB, and NASE, Administrative Patent Judges.
STAAB, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the final rejection
of claims 1-59, all the claims then pending in the
application. Subsequent to the final rejection, appellant
filed an amendment seeking to cancel claims 1-3, 5-7, 16, 20
and 58, and to make minor changes to claims 44, 45, and 52,
which amendment was entered by the examiner (see the advisory
letter mailed July 23, 1999 (Paper No. 22)). Accordingly,
Appeal No. 2000-0693
Application 08/845,282
1 The claims as reproduced in the appendix to appellant’s
brief contain several errors. For example, in the penultimate
line of claim 1 “contact are” should be --contact area--.
Suffice it to say, in considering the obviousness issues
raised in this appeal, we have considered the claims in their
proper form.
2 Our understanding of these Japanese language patent
documents is derived from translations obtained by the Patent
and Trademark Office. Copies of these translations are
attached to this decision.
2
only claims 4, 8-15, 17-19, 21-57 and 59 remain before us for
review.
Appellant’s invention pertain to an “inter-line” fishing
rod, that is, a fishing rod “in which a fishing line is
introduced into the inside of the fishing rod and laid therein
in the longitudinal direction of the rod” (specification, page
1). A substantially correct copy of the claims on appeal is
found in the appendix to appellant’s brief.1
The references of record relied upon by the examiner in
final rejection are:2
Barnett 56-127032 Oct. 5, 1981
(Japanese Patent Application)
Harada 63-169871 Apr. 25, 1987
(Japanese Patent Application)
Kure 1-304836 Dec. 8, 1989
Appeal No. 2000-0693
Application 08/845,282
3 The final rejection (Paper No. 17) also included a
rejection of all the then pending claims under the judicially
created doctrine of obviousness-type double patenting. This
rejection was subsequently withdrawn by the examiner. See
section 6 (“Issues”) on page 2 of the answer.
4 The procedure followed by the examiner here of
incorporating by reference more than one previous office
action in explaining the rejection is not in compliance with
Section 1208 of the Manual of Patent Examining Procedure
(MPEP), which expressly provides that incorporation by
reference may be made only to a single other action.
3
(Japanese Patent Application)
Claims 4, 8-15, 17-19, 21-57 and 59 stand rejected under
35 U.S.C. § 103 as being unpatentable over Japanese patent
document 63-169871 to Harada (JA ‘871) in view of Japanese
patent document 1-304836 to Kure (JA ‘836) and further in view
of Japanese patent document 56-127032 to Barnett (JA ‘032).3
According to the examiner, “[t]his rejection is set forth
in prior Office action, Paper No. 7 and Paper No. 17” (answer,
page 4).4 As it turns out, the examiner’s position as set
forth in the “Response to Argument” section of the answer
regarding a very relevant feature of the claimed invention is
substantially different than the positions taken in previous
office actions. Accordingly, our focus will be on the
Appeal No. 2000-0693
Application 08/845,282
5 Submitted concurrently with the reply brief is the
declaration (improperly labeled “Affidavit”) of Tomoyoshi
Tsurufuji. In that the examiner has not considered this
declaration, it is not properly before us and will not be
considered. Based on our reading of 37 CFR § 1.195 and MPEP
§§ 1210 and 1211.02, it would appear that the examiner had
authority to consider this declaration, notwithstanding his
views to the contrary as expressed in the letter mailed
February 15, 2000 (Paper No. 27). In any event, in view of
our disposition of this appeal, appellant has not been
prejudiced by the examiner’s action in this regard.
4
examiner’s explanation of the rejection as found on pages 4
and 5 of the examiner’s answer.
Reference is made to appellant’s brief and reply brief
(Paper Nos. 23 and 26) for appellant’s arguments regarding the
merits of the standing § 103 rejection.5
Discussion
As explained on pages 1-2 of the specification, an
objective of appellant is to improve upon the performance of
the inter-line fishing rod disclosed in JA ‘871. To this end,
appellant’s provide a coating film on the inner surface of the
inter-line fishing rod that is water-repellant and has a low
coefficient of friction. In order to further improve the
performance of the coating film, the thickness of the film is
provided with inner annular projections to reduce the area of
Appeal No. 2000-0693
Application 08/845,282
5
contact between the fishing rod and the fishline
(specification; page 6, lines 4-19).
Each of the independent claims on appeal include
limitations directed to this annular projection feature of the
coating film. More specifically, independent claim 4 calls
for a film layer on the inner circumferential surface of the
tubular member
[having] a varied thickness to define a plurality of
projections . . . to reduce contact area between
said film layer and said fishline,
independent claim 8 requires a coating film on the inner
circumferential surface of the tubular member
[having] a varied thickness to define a plurality of
annular projections having a longitudinal length,
said annular projections being spaced apart from an
adjacent annular projection by a longitudinal
distance,
independent claim 10 sets forth a tubular member
[having] an inner circumferential surface defined by
a recessed portion and a protruding portion
alternately arranged in a sectional view, . . .
wherein at least a portion of said inner
circumferential surface defined by said recessed
portion has a water repellant property,
Appeal No. 2000-0693
Application 08/845,282
6
independent claim 17 calls for a film layer provided on the
inner circumferential surface of the tubular member that
defines a plurality of longitudinal spaced apart
projections extending circumferentially with respect
to said tubular member to reduce contact area
between said film layer and said fishline,
and independent claim 21 requires
an inner circumferential surface of said tubular
main body . . . formed with recessed and protruding
portions alternately arranged in a longitudinal
direction . . . wherein surface portions defined by
said recessed portions have a water repellant
property.
In prosecution before the examiner leading up to this
appeal, the examiner employed a number of theories in an
attempt to account for claim limitations directed to the inner
surface of the fishing rod being provided with projections.
For example, in the parent case of the present application,
the examiner took the
position (office action mailed January 21, 1997 (Paper No. 7),
pages 3-4) that
it would have been further obvious to provide the
interior surface of the inner-line fishing rod with
annular projections within the rod in view of the
Japanese patent (‘032) to reduce the contact area
between the line and the interior surface of the
fishing rod and to thereby reduce the wear to the
Appeal No. 2000-0693
Application 08/845,282
6 In that we have available to us a translation of the JA
‘032 reference, it is unnecessary for us to resort to the U.S.
equivalent thereof in order to determine the teachings of this
7
fishing line and to enable the fishing line to slide
through the interior of the fishing rod more easily.
Thereafter, the examiner contended (final rejection
(Paper No. 17), page 5) that “[t]he varied thickness
limitation is deemed to be a matter of choice since the
function is the same and no showing of unexpected results was
made.”
The examiner’s present position with respect to the above
noted limitations of the independent claims is found on pages
4-5 of the answer and reads as follows:
The Office Action mailed on Jan. 21, 1997 states
near the bottom of page 3, that it would have been
obvious to provide annular projections within the
rod to reduce the contact area between the line and
the interior of the rod. The annular projections
are interpreted to be a film layer of varied
thickness. Also, as shown in the JA ‘836 patent in
Fig. 6, a tape layer 51 is wound around a mandrel
(in the production of the rod using bundled filament
yarns such as glass fibers or carbon fibers) in an
overlapping spiral fashion which produces a layer of
varied thickness to define a plurality of
projections as can be viewed in the Fig. The tape
produces a film layer of varied thickness because
the tape is overlaid and the overlapped areas are
thicker than a single layer of tape. See US ‘126 to
Barnett which is the English equivalent to JA ‘032
in column 4, lines 52-58.[6] This discloses an end
Appeal No. 2000-0693
Application 08/845,282
reference. The relevant portion of the translation of JA ‘032
is found on page 11, lines 14-19, and reads as follows:
When the final span of the end section 3 of
stem has too smaller [sic] inner diameter to provide
feed rings, this section can be lined with an
antifriction material such as
polytetrafluoroethylene, and this is most readily
carried out by winding a polytetrafluoroethylene
tape on an arbor for forming the stem before the
section is molded.
7 It is not entirely clear what constitutes the “proposed
combination” referred to here by the examiner, although
presumably it would involve providing a
polytetrafluoroethylene tape lining of the type taught by JA
‘032 on the inner circumferential surface of the tubular
member of JA ‘871, and in so doing initially apply the tape to
a forming mandrel in the manner illustrated in JA ‘836 in
Figure 6 for tape 51 (i.e., with the edges of the wrapped tape
overlapping).
8
section of the rod which would be adjacent the rod
tip as having lining of ptfe tape (a fluoroplastic)
which is a low friction material. This tape would
substantially cover an inner circumferential surface
of the tubular member and the ptfe tape is [a] water
repelling substance. To cover the inside of
Barnett’s rod with ptfe tape the tape is wound
around a mandrel prior to molding the rod section
and one skilled in the art would expect it to be
wound in the manner shown by JA ‘836. In regard to
claims 10-15, 17-19, 21-57 and 59, the result of the
proposed combination[7] for the reasons stated above
is that the inner circumference is defined by
recessed and protruded portions since the wrapping
of the tape on a mandrel in the manner stated
produces alternate sections of protrusions and
recesses having a water repellant property.
Appeal No. 2000-0693
Application 08/845,282
9
None of the examiner’s positions persuade us that the
claimed subject matter on appeal here would have been obvious
in light of the teachings of the applied references. In this
regard, we are in substantially agreement with the arguments
made by appellant in the reply brief in response to the
examiner’s positions as set forth in the answer. In
particular, we note, as does appellant, that the tape 51 of JA
‘836 is used solely for the purpose of securing the bundled
filament yarn 49 to the mandrel while curing the bundled
filaments and that thereafter tape 51 is removed and
discarded. Thus, tape 51 does not form any part of the
finished tubular member. Based on the lack of correspondence
between the tape 51 of JA ‘836 and the unillustrated
polytetrafluoroethylene tape mentioned by JA ‘032 on page 11
of the translation at lines 14-19, we conclude that there is
no logical basis for the examiner’s conclusion that “one
skilled in the art would expect it [i.e., the unillustrated
polytetrafluoroethylene tape mentioned of JA ‘032] to be wound
in the manner shown by JA ‘836” (answer, page 5). Moreover,
even if the tape of JA ‘032 was wrapped about the forming
mandrel in the manner shown by JA ‘836 in Figure 6 prior to
Appeal No. 2000-0693
Application 08/845,282
10
being cured, it is at best speculative that the resulting
polytetrafluoroethylene, when cured, would have alternating
recessed and protruded
portions, as called for in the claims. In this regard,
appellant’s argument (reply brief, page 4) that “the PTFE tape
would soften and form a smooth substantially continuous
thickness between the mandrel and outer layer of the fishing
rod during curing” is reasonable and has not been adequately
addressed by the examiner.
In light of the above, the standing § 103 rejection of
independent claims 4, 8, 10, 17 and 21, as well as claims 9-
15, 18, 19 and 22-57 that depend therefrom, shall not be
sustained.
Turning to claim 59, in that this claim depends from
canceled claim 20, its metes and bounds cannot be determined.
When a claim’s metes and bounds cannot be determined, it
should be rejected under 35 U.S.C. § 112, second paragraph,
and not over the prior art. In re Steele, 305 F.2d 859, 862,
134 USPQ 292, 295 (CCPA 1962). Accordingly, we are
constrained to reverse the standing § 103 rejection of claim
59. It should be understood, however, that our reversal of
Appeal No. 2000-0693
Application 08/845,282
11
this rejection is not a reversal on the merits thereof, but
rather a procedural reversal predicated upon the failure of
the claim to particularly point out and distinctly claim the
subject matter sought to be patented.
Rejection under 37 CFR § 1.196(b)
Pursuant to 37 CFR § 1.196(b), we enter the following new
rejection.
Claim 59 is rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite. In that claim 59 depends from
a canceled claim, its metes and bounds cannot be determined.
Remand
Pursuant to 37 CFR § 1.196(a) and MPEP § 1211, this case
is remanded to the examiner for consideration of the following
matter.
Claims 10 and 21 appear to allow for the recessed and
protruded portions to be formed in the inner surface of the
tubular member. However, it is not immediately apparent where
in appellant’s original disclosure there is descriptive
support for this construction as opposed to, for example, the
Appeal No. 2000-0693
Application 08/845,282
12
arrangement shown in Figure 4 where the recessed and protruded
portions are formed on the film layer applied to the tubular
member.
The examiner should consider whether there is proper
descriptive support in the disclosure as originally filed for
the subject matter of claims 10 and 21, as well as the claims
that depend therefrom. If descriptive support for the subject
matter of any such claim is found to be lacking, the examiner
should enter a rejection thereof under the first paragraph of
35 U.S.C. § 112.
Summary
The rejection of claims 4, 8-15, 17-19 and 21-57 is
reversed on the merits.
The rejection of claim 59 is reversed on procedural
grounds.
Under the provisions of 37 CFR § 1.196(b), a new
rejection of claim 59 has been made.
Under the provisions of 37 CFR § 1.196(a), this case is
remanded to the examiner for the reason noted above.
This decision contains a new ground of rejection pursuant
to 37 CFR § 1.196(b)(amended effective Dec. 1, 1997, by final
Appeal No. 2000-0693
Application 08/845,282
13
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 ground of rejection shall not
be considered final for purposes of judicial review.”
37 CFR § 1.196(b) also provides that the appellant,
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 and Remanded; 37 CFR § 1.196(b)
Appeal No. 2000-0693
Application 08/845,282
14
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
) BOARD OF PATENT
)
) APPEALS AND
LAWRENCE J. STAAB )
Administrative Patent Judge ) INTERFERENCES
)
)
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
LJS/kis
LONGACRE & WHITE
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