Ex Parte Binder

Board of Patent Appeals and Interferences

Feb 23, 2007

10636964 (B.P.A.I. Feb. 23, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHAEL BINDER
____________

Appeal 2007-0142
Application 10/636,964
Technology Center, 1700
____________

Decided: February 23, 2007
____________

Before PETER F. KRATZ, JEFFREY T. SMITH, and
LINDA M. GAUDETTE, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF CASE
Applicants appeal from a final rejection of claims 7 to 25 under
35 U.S.C. § 134 (2002). 1 We have jurisdiction under 35 U.S.C. § 6(b)
(2002).

1 An oral hearing was held on January 11, 2007.
Appeal 2007-0142
Application 10/636,964

We AFFIRM
Appellant’s invention relates to a paraffin ring adapted to be fitted
onto a spindle-like pin holder of a textile spinning machine. The paraffin is
applied to a length of yarn as it is conveyed by the spinning machine during
the manufacturing process. According to Appellant, the improvement in the
paraffin ring resides in the wear indicator or a taphole that extends into the
cylindrical paraffin member from a first end and is substantially parallel to
the insertion bore. (Specification, page 2, lines, 6-10). Claims 7 and 16, as
presented in the Brief, appear below:
7. A paraffin ring for paraffining yarn, said paraffin ring comprising:

a) a paraffin cylindrical member, said cylindrical member
having a first end and a second end, said second end adapted to
engage a yarn to be paraffined;

b) an insertion bore for receiving said cylindrical member
on a holder when paraffining yarn, said insertion bore extends
concentrically through said cylindrical member and along a central
longitudinal axis thereof; and

c) at least one taphole, said at least one taphole extends into
said cylindrical member at said first end and substantially parallel to
said insertion bore but not to said second end so that when said
cylindrical body member second end is caused to engage a yarn to
paraffin the same, said second end is worn away and said at least one
taphole is caused to extend to the worn second end and provide a
visual signal.

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16. A paraffin ring for paraffining yarn, said paraffin ring
comprising:

a) a paraffin cylindrical member, said cylindrical member
having a first end and a second end, said second end adapted to
engage a yarn to be paraffined;

b) an insertion bore for receiving said cylindrical member
on a holder when paraffining yarn, said insertion bore extends
concentrically through said cylindrical member and along a central
longitudinal axis thereof; and

c) at least one wear indicator, said at least one wear
indicator extends into said cylindrical member at said first end and
substantially parallel to said insertion bore but not to said second end
so that when said cylindrical body member second end is caused to
engage a yarn to paraffin the same, said second end is worn away and
said at least one wear indicator is exposed at the worn second end.

The Examiner relies on the following reference in rejecting the
appealed subject matter:
Stahlecker US 5,879,455 Mar. 9, 1999

The Examiner has entered the following grounds of rejection:
Claims 7, 8, 10-12, 14-18, 20-22, 24, and 25 stand rejected under 35 U.S.C.
§ 102 (b) as anticipated by Stahlecker. Claims 9, 13, 19, and 23 stand
rejected under 35 U.S.C. § 103(a) as obvious over Stahlecker.

ISSUE
I.
The Examiner contends that Stahlecker describes a paraffin
cylindrical member that comprises first and second tips (from a paraffining
machine) extending into the cylindrical member at the first end and
substantially parallel to the insertion bore. The Examiner contends that the
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Application 10/636,964

tips inserted into the paraffin cylindrical member create bores that are
equivalent to the claimed wear indicator and taphole (Answer 3-4).
The Appellant contends that Stahlecker does not explicitly or
inherently disclose all the elements of the claimed invention. Specifically
Appellant contends that the region that surrounds the tips (spikes) of
Stahlecker are not tapholes because tapholes do not contain metal spikes
(Br. 8).
The first issue before us is whether Applicant has shown that the
Examiner erred in rejecting the claims 7, 8, 10-12, 14-18, 20-22, 24, and 25
under 35 U.S.C. § 102 (b). The issue turns on whether the Examiner has
established a reasonable belief that the property or characteristic recited in
the claims would have been inherent to the product of Stahlecker, and
whether the Appellant has adequately rebutted the Examiner’s position by
showing that the characteristic or property is not possessed in the cited
reference. Specifically, the issue is: Does the paraffin described in the prior
art contains voids that serve to provide a visual signal that the second end of
the paraffin has been reached? We answer this question in the affirmative.
II.
Appellant contends that Stahlecker does not suggest or provide the
motivation for producing a paraffin ring containing wear indicators/tapholes
that have different depths (Br. 11-12 ).
The Examiner contends that Stahlecker describes “that the size and
location of the tapholes are used for taking-along connection with the
paraffin ring (column 4, lines 2 – 5), and therefore discloses that the length
of the tapholes are selected depending on the desired depth of the
connection.” (Answer 5).
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The second issue is whether the Examiner erred in rejecting claims 9,
13, 19, and 23 under 35 U.S.C. § 103(a). The issue turns on whether there is
some teaching, suggestion or motivation to modify the invention of
Stahlecker to meet the claimed invention. Specifically, the issue is:
Has the Examiner identified a justifiable basis for varying the lengths of the
projection tips that are inserted into the paraffin ring? We answer this
question in the negative.
FINDINGS OF FACT
Appellant invented a paraffin ring for paraffining yarn. The paraffin
ring is adapted to fit on a spindle-like pin holder of a textile spinning
machine. The holder, or insertion bore, runs concentric to a central
longitudinal axis of the paraffin ring. (Specification 1, ll. 14-17). The
paraffin is applied to a length of yarn as it is conveyed by the spinning
machine during the manufacturing process. (Specification 1, ll. 25-28).
The improvement in the paraffin ring resides in the wear indicator or a
taphole that extends into the cylindrical paraffin member from a first end
and is substantially parallel to the insertion bore. (Specification 2, ll. 6-10).
In operation of the spinning machine, the length of the paraffin ring
wears away to visibly expose the taphole/wear indicator indicating that the
paraffin ring will soon need to be changed. (Specification 2, ll. 13-20).
Stahlecker describes a cylindrical paraffin body (4) for paraffin
waxing yarn. (Col. 3, ll. 42-44; Fig. 3).
Stahlecker discloses the paraffin body(4) is placed on a carrier (28)
that comprises projection tips (28A) that are inserted into the paraffin body
(4). The projection tips (28A) extend into the cylindrical paraffin body (4)
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from a first end and are substantially parallel to the sliding section (25) on
which the paraffin body (4) is arranged. (Col. 3, l. 55 – Col. 4, l. 7; Fig. 3).
Stahlecker discloses the waxing of yarn is performed by placing the
yarn (12) against the front surface of the paraffin body (5). (Col. 3, ll.
47-48; Fig. 2).

PRINCIPLES OF LAW
A claimed invention is anticipated under 35 U.S.C. § 102 when all of
the elements of the claimed invention are found in one reference. See
Scripps Clinic & Research Found. V. Genentech Inc., 927 F.2d 1565, 1576,
18 USPQ2d 1001, 1010 (Fed. Cir. 1991). The prior art reference must
disclose every limitation of the claimed invention, either explicitly or
inherently. In re Schreiber, 44 USPQ2d 1429, 1433 (Fed. Cir. 1997).
Under 35 U.S.C. § 103, a prima facie case of obviousness can be
established based upon some teaching, suggestion, and/or motivation in the
applied prior art reference(s) and/or knowledge generally available to a
person having ordinary skill in the art to arrive at the claimed subject matter.
Pro-Mold & Tool Co. v. Great lakes Plastics, Inc., 75 F.3d 1568, 1573,
37 USPQ2d 1626, 1629-30 (Fed. Cir. 1996); ACS Hosp. Sys., Inc. v.
Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir.
1984).
The Examiner must explain why the prior art would have suggested to
one of ordinary skill in the art the desirability of the modification. See
In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783 (Fed. Cir. 1992).
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The Examiner must provide evidence to support allegations of
obviousness. In re Lee, 277 F.3d 1338, 1343, 61 USPQ2d 1430, 1434 (Fed.
Cir. 2002)
ANALYSIS
I.
Stahlecker describes a paraffin body that comprises projection tips
(28A) that are inserted into the paraffin body. The projection tips (28A)
extend into the soft cylindrical paraffin body displacing the paraffin from
these areas to create a connection between the carrier (28) and the paraffin
body. In the spinning machine of Stahlecker, the waxing of yarn is
performed by placing the yarn against the front surface of the paraffin body
(5). The paraffin body is worn down towards the projection tips (28A). As
such, it is apparent that the displaced paraffin voids created by the projection
tips (28A) would be reached before the second end of the paraffin and the
carrier (28) and provide a visual indicator that the end of the paraffin is near.
The structure of the paraffin containing the projection tips is the same as the
claimed paraffin having a wear indicator/taphole. The projection tips of
Stahlecker are not part of the paraffin body. However, these projection tips
create voids in the paraffin body, which are the same as the claimed
invention. Thus we uphold the Examiner’s anticipation rejection.
II.
The mere fact that the prior art could be modified as proposed by the
Examiner is not sufficient to establish a prima facie case of obviousness.
See In re Fritch, 972 F.2d at 1266, 23 USPQ2d at 1783-84. The Examiner
must explain why the prior art would have suggested to one of ordinary skill
in the art the desirability of the modification. The Examiner has not
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provided such an explanation. The Examiner takes the additional position
that one of ordinary skill in the art would modify the length of the projection
tips (28A) to adjust the connection between the carrier (28) and the paraffin
ring. The Examiner has not provided any information as to why it would be
desirable to have projection tips of varying lengths. The Examiner has not
directed us to evidence on this record that suggests varying the lengths of the
projection tips would improve or diminish the connection between the
paraffin ring and the carrier. As such, the Examiner has not directed us to
evidentiary support on this record for modifying the projection tips of
Stahlecker to create voids in the paraffin ring that would meet the claimed
invention. See In re Lee. Thus we reverse the Examiner’s obviousness
rejection.
CONCLUSION OF LAW
I.
The Examiner’s rejection is supported by a legally sufficient basis for
holding that the subject matter of claims 7, 8, 10-12, 14-18, 20-22, 24, and
25 would have been anticipated within the meaning of § 102 (b).
II.
On the record before us, the Examiner has not met the require burden
in this case to establish that the claimed subject matter would have been
obvious over the cited prior art. Thus, the Examiner’s rejection is not
supported by a legally sufficient basis for holding that the claimed subject
matter of claims 9, 13, 19, and 23 would have been obvious within the
meaning of § 103(a).
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DECISION.
The Examiner’s rejection of claims 7, 8, 10-12, 14-18, 20-22, 24, and
25 is affirmed. The rejection of claims 9, 13, 19, and 23, is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED IN PART

tf/clj

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