Ex parte Cederblad

Board of Patent Appeals and Interferences

Mar 30, 2001

08533366 (B.P.A.I. Mar. 30, 2001)

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publication and is not binding precedent of the Board.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. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte HANS O. CEDERBLAD
____________
Appeal No. 1998-2534
Application No. 08/533,366
____________
ON BRIEF
____________
Before GARRIS, WALTZ and JEFFREY T. SMITH, Administrative
Patent Judges.
WALTZ, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the
examiner’s refusal to allow claims 15 through 17 as amended
subsequent to the final rejection (see the amendment dated May
27, 1997, Paper No. 6, entered as per the Advisory Action
dated June 5, 1997, Paper No. 7). Claims 15-17 are the only
claims remaining in this application.
According to appellant, the invention is directed to a
method of stretch modifying an extruded net containing
elastomeric strands to produce desired predetermined
Appeal No. 1998-2534
Application No. 08/533,366
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beneficial properties (Brief, pages 2-3). A copy of
illustrative claim 15 is reproduced below:
15. The method of modifying elastic properties of
extruded net containing elastomeric strands, comprising:
providing extruded net having extruded strands, at least
some of which are elastomeric strands;
selecting end use performance criteria for desired final
elastic properties for the elastomeric material making up the
elastomeric strands in the net;
determining, based on hysteresis performance data, the
stretch conditions necessary to achieve the desired final
properties, and
stretching the elastomeric stands under the determined
conditions to achieve the desired final properties in the
elastomeric strands.
The examiner has relied upon Himelreich, Jr.
(Himelreich),
U.S. Patent No. 4,469,738, issued on Sep. 4, 1984, as evidence
of obviousness. Accordingly, the claims on appeal stand
rejected under 35 U.S.C. § 103 as unpatentable over Himelreich
Appeal No. 1998-2534
Application No. 08/533,366
Claims 15-17 were rejected under 35 U.S.C. § 112, ¶2, in1
the Final Rejection dated Mar. 4, 1997, Paper No. 5, page 2.
Contrary to appellant’s statement on page 2, paragraph (3), of
the Brief, the examiner’s Advisory Action dated June 5, 1997,
Paper No. 7, fails to discuss the rejection under section 112,
much less remove the rejection. However, this rejection under
the second paragraph of section 112 has not been repeated in
the Answer and thus we consider it as withdrawn. See
Paperless Accounting v. Bay Area Rapid Transit Sys., 804 F.2d
659, 663, 231 USPQ 649, 652 (Fed. Cir. 1986).
3
(Answer, page 3). We reverse this rejection for reasons1
which follow.
OPINION
The examiner finds that Himelreich discloses a net
support material made from a thermoplastic elastomer where the
net is prepared by extruding a plurality of monofilaments,
placing the monofilaments into a net-like configuration, and
then orienting the net in both the machine and transverse
directions (Answer, page 3). The examiner finds that
Himelreich does not disclose using hysteresis data to
determine the stretch conditions as required by claim 15 on
appeal (id.). The examiner concludes that “[t]he use of such
data, however, would have been obvious to one of ordinary
skill in the art at the time the invention was made” since
Appeal No. 1998-2534
Application No. 08/533,366
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hysteresis data shows the behavior of a material under cyclic
loading conditions and Himelreich does disclose using cyclic
testing to determine dynamic creep of the net (id., citing
col. 12, l. 8 et seq.).
Appellant agrees with the examiner that Himelreich does
not disclose any determinations based on hysteresis
performance data and furthermore argues that there is no
teaching or suggestion in the reference to alter the method by
adding hysteresis analysis to achieve desired elasticity and
recovery properties of the extruded net strands (Brief, pages
7-9). Appellant also argues that the general statement by the
examiner that “hysteresis data shows the behavior of a
material under cyclic loading conditions” cannot substitute
for a specific suggestion in the reference (Brief, page 11).
Appellant submits that the dynamic creep testing taught by
Himelreich measures totally different properties than those
analyzed with hysteresis data (Reply Brief, page 2).
It is well settled that the initial burden of presenting
evidence to support a prima facie case of obviousness rests
with the examiner. See In re Oetiker, 977 F.2d 1443, 1445, 24
Appeal No. 1998-2534
Application No. 08/533,366
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USPQ2d 1443, 1444 (Fed. Cir. 1992). In appropriate
circumstances, a single prior art reference can render a claim
obvious. See, e.g., B.F. Goodrich Co. v. Aircraft Braking
Sys. Corp., 72 F.3d 1577, 1582, 37 USPQ2d 1314, 1318 (Fed.
Cir. 1996); In re O’Farrell, 853 F.2d 894, 902, 7 USPQ2d 1673,
1680 (Fed. Cir. 1988). However, there must be a showing of a
suggestion or motivation to modify the teachings of that
reference to the claimed invention in order to support a
conclusion of obviousness. This suggestion or motivation may
be derived from the prior art reference itself, from the
knowledge of one of ordinary skill in the art, or from the
nature of the problem to be solved. See Pro-Mold & Tool Co.
v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1573, 37 USPQ2d
1626, 1630 (Fed. Cir. 1996).
Himelreich does disclose the determination of the stretch
conditions necessary to achieve the final desired properties
but, as stated by the examiner, this reference does not
disclose using hysteresis data to determine these stretch
conditions (see Himelreich, col. 9, ll. 29-45; Answer, page
3). The examiner has not presented any convincing evidence or
Appeal No. 1998-2534
Application No. 08/533,366
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reasoning to support the legal conclusion of obviousness
(Answer, page 3). A general statement that hysteresis data
shows the behavior of a material under cyclic loading
conditions (id.) is not sufficient evidence alone as to why
one of ordinary skill in the art would have used hysteresis
data analysis to determine the stretch conditions to achieve
the desired final properties of Himelreich. See In re
Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir.
1999)(The showing of evidence of a suggestion, teaching, or
motivation must be clear and particular). The examiner’s
finding that Himelreich teaches cyclic testing to determine
dynamic creep (Answer, pages 3-4) similarly provides no
evidence that the analysis of hysteresis data would have been
suggested to one of ordinary skill in the art. Appellant
submits that dynamic creep measures totally different
properties than those analyzed with hysteresis data (Reply
Brief, page 2). The examiner has not challenged this
statement.
The examiner has not presented any evidence or reasoning
that hysteresis data was ever known or considered by one of
Appeal No. 1998-2534
Application No. 08/533,366
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ordinary skill in this art. Thus there is no factual basis on
this record for the examiner’s statement that “[t]he use of
hysteresis data in the design of elastomeric parts is
widespread in the elastomer art.” Answer, page 4.
For the foregoing reasons, we determine that the examiner
has not met the initial burden of presenting a prima facie
case of obviousness. Accordingly, the rejection of claims 15-
17 under 35 U.S.C. § 103 as unpatentable over Himelreich is
reversed.
The decision of the examiner is reversed.
REVERSED
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
THOMAS A. WALTZ ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY T. SMITH )
Administrative Patent Judge )
Appeal No. 1998-2534
Application No. 08/533,366
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jg
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