Ex parte GOTO

Board of Patent Appeals and Interferences

Jul 30, 1999

08330672 (B.P.A.I. Jul. 30, 1999)

Application for patent filed October 28, 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(2) is not binding precedent of the Board.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. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte YASUO GOTO

_____________
Appeal No. 97-4084
Application 08/330,6721
______________
ON BRIEF
_______________
Before COHEN, PATE and CRAWFORD, Administrative Patent Judges.
PATE, Administrative Patent Judge.
Appeal No. 97-4084
Application 08/330,672
2
DECISION ON APPEAL
This is an appeal from the final rejection of claims
1 through 3, 12, 15 and 17 through 19, and the examiner's
refusal to allow claims 4, 10, 14 and 16 as amended after
final rejection. Claims 6 through 9, 11 and 20 through 22
stand withdrawn from consideration as subject to a restriction
requirement. Claim 13 has been indicated as directed to
allowable subject matter. It stands objected to. These
are all the claims remaining in the application.
The claimed invention is directed to a hollow elon-
gated tubular member for use in connecting two structural
elements at a joint. The hollow elongated member has an
interior passage which receives adhesive injected therein. At
the distal end of the passage, a radial passage is configured
to allow the adhesive to escape from the tubular member and
fill the bore hole that the elongated tubular member is placed
in. A further understanding of the subject matter on appeal
can be garnered from the appealed claims which are appended to
appellant's Appeal Brief.
Appeal No. 97-4084
Application 08/330,672
3
The references of record relied upon by the examiner
as evidence of obviousness are:
Titus et al. (Titus) 4,516,608 May 14,
1985
Lancelot 5,383,740 Jan. 24,
1995
THE REJECTION
Claims 1 through 4, 10, 12 and 14 through 19 stand
rejected under 35 U.S.C. § 103 as unpatentable over Lancelot
in view of Titus. According to the examiner, Lancelot shows
the features of the claimed subject matter except Lancelot is
not made of a laminated structure of two or more materials.
The examiner is further of the opinion that Titus teaches the
use of a laminated structure for increasing the strength of
the laminated article. Therefore, the examiner is of the
opinion that
[i]t would have been obvious to a person
having ordinary skill in the art at the
time of appellant's invention to modify the
tubular member to have a laminated struc-
ture in view of Titus et al. in order to
provide a means of increasing the compres-
sive strength of the tubular member so as
to prevent buckling of the tubular member
Appeal No. 97-4084
Application 08/330,672
Given our construction of the independent claim as2
calling for two or more differing materials, we have construed
4
in the embedded concrete (Examiner's An-
swer, page 5).
OPINION
We have carefully reviewed the prior art in light of
the arguments of the appellant and the examiner. As a result
of this review, we have reached the determination that the
applied prior art does not establish a prima facie case of
obviousness with respect to the claims on appeal. Therefore,
the obvious- ness rejection of the claims on appeal will be
reversed.
Before we begin our obviousness analysis, we raise
the issue of claim construction. We construe the claim limi-
tation of "two or more materials" consistent with the specifi-
cation as calling for two or more differing materials. See,
for example, specification at page 11, lines 3-10.2
Appeal No. 97-4084
Application 08/330,672
claim 10 as calling for a laminated structure comprising a
first layer made from a member of a group consisting of metal,
plastic, ceramic, and wood, and a second layer made from a
member of a group consisting of metal, plastic, ceramic and
wood differing in composition from the first layer.
5
While we are in agreement with the examiner as to
many of his findings of fact with respect to the Lancelot
reference, we find ourselves in agreement with the appellant
that there is no motivation in the applied prior art or a
convincing line of reasoning from the examiner that would have
suggested the combination of Lancelot and the Titus disclo-
sure. The examiner can point to no express or implied teach-
ing in the prior art, and the examiner's reasoning with re-
spect to compressive strength found on page 5 of the Exam-
iner's Answer is not convincing. It is clear to us that the
connector disclosed in Lancelot is designed to carry tensile
forces from one concrete reinforcement bar to the other. The
teaching of Titus of improving the
compressive strength of an oil well sucker rod or an oil well
casing simply does not transfer over to the problem that
concerns Lancelot. Having found that the examiner's rejection
Appeal No. 97-4084
Application 08/330,672
6
lacks the requisite motivation or suggestion for combining
prior art references, we are constrained to reverse the obvi-
ousness rejection on appeal.
SUMMARY
The rejection of claims 1 through 4, 10, 12 and 14
through 19 under 35 U.S.C. § 103 is reversed.
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
) BOARD OF
PATENT
WILLIAM F. PATE, III ) APPEALS AND
Administrative Patent Judge ) INTERFER-
ENCES
)
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
WFP:psb
Appeal No. 97-4084
Application 08/330,672
7
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