Ex Parte Haraguchi

Board of Patent Appeals and Interferences

Jun 23, 2006

09926029 (B.P.A.I. Jun. 23, 2006)

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for publication and is not binding precedent of the Board.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 MANABU HARAGUCHI
____________

Appeal No. 2006-1281
Application No. 09/926,029
____________

HEARD: JUNE 6, 2006
____________

Before FRANKFORT, CRAWFORD, and BAHR, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal from the examiner's rejection of claims 8 and 9.
We AFFIRM.
Appeal No. 2006-1281 Page 2
Application No. 09/926,029

BACKGROUND
The appellant's invention relates to a packaging paper roll for use in a solid
preparation packaging apparatus. According to appellant (specification, page 1) the
terminology “solid preparation” refers to “all solidified preparations such as a tablet,
capsule, pill, and troche.” Independent claim 8 is representative of the appellant’s
invention and reads as follows:
8. A paper roll for packaging a solid preparation, comprising:

an elongated hollow wall defining a tubular shaft
member having concentrically spaced inside and outside
surfaces, said outside surface being adapted for receiving a
thermally fusible packaging paper wound therearound, said
packaging paper being in a double folded state with a folded
portion thereof being disposed on an end of the shaft
member; and

at least two notches having a limited length from an
end of said shaft member, each said notch being defined by
a recess disposed in the inner surface of said wall of said
shaft member communicating with the end of said shaft
member and extending to a radial depth short of the outside
surface thereof, each said recess forming a thinner, more
flexible portion of the wall than portions of the wall between
at least two of said recesses.
Appeal No. 2006-1281 Page 3
Application No. 09/926,029

Applied Prior Art

Watanabe 4,684,272 Aug. 4, 1987
Haraguchi et al. (Haraguchi) 5,819,500 Oct. 13, 1998
Kanai 5,931,588 Aug. 3, 1999

The Rejections
Claims 8 and 9 stand rejected under 35 U.S.C. § 112, first paragraph, as
containing subject matter which was not described in the appellant’s specification so as
to convey to one of ordinary skill in the art that the appellant, at the time the application
was filed, had possession of the claimed invention.
Claims 8 and 9 also stand rejected as being unpatentable over Watanabe or
Kanai in view of Haraguchi or, in the alternative, as being unpatentable over Haraguchi
in view of Watanabe or Kanai.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding this appeal, we make reference to the examiner's answer
(mailed November 1, 2005) for the examiner's complete reasoning in support of the
rejections and to the appellant's brief (filed August 26, 2005) for the appellant's
arguments thereagainst.
Appeal No. 2006-1281 Page 4
Application No. 09/926,029

OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claims, to the applied prior art, and to the respective
positions articulated by the appellant and the examiner. As a consequence of our
review, we make the following determinations.
We turn first to the rejection of claims 8 and 9 under the first paragraph of 35
U.S.C. § 112 as lacking written description support. In making this rejection, the
examiner contends that the recitation “each said recess forming a thinner, more flexible
portion of the wall than portions of the wall between at least two of said recesses” in
claim 8 lacks written description support in the application as originally filed. The
examiner’s findings that appellant’s specification “is silent regarding the flexibility of the
wall portions located immediately radially outwardly of the recesses” (answer, page 4)
and that “[t]here is no disclosure [in appellant’s specification] that [the wall of the tubular
shaft member 21] is made of a single homogeneous material” (answer, page 6) are
correct.
The test for determining compliance with the written description requirement,
however, is whether the disclosure of the application as originally filed reasonably
conveys to the artisan that the inventor had possession at that time of the later claimed
subject matter, rather than the presence or absence of literal support in the specification
for the claim language. See Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19
Appeal No. 2006-1281 Page 5
Application No. 09/926,029

USPQ2d 1111, 1116-17 (Fed. Cir. 1991) and In re Kaslow, 707 F.2d 1366, 1375, 217
USPQ 1089, 1096 (Fed. Cir. 1983). In this case, appellant’s specification indicates, on
page 12, that the packaging paper roll 19 is constituted of a hollow tubular shaft
member 21 “of a boxboard (a hard synthetic resin may be used)” and does not indicate
that the shaft member material lacks homogeneity in any portion thereof. In the
absence of any such disclosure in appellant’s specification or drawings, one of ordinary
skill in the art would have immediately envisaged a homogeneous shaft member
material and, hence, increased flexibility, at least to some degree, in the notched or
engaged portions 21A as compared to the portions between such engaged portions.
We find nothing in the appellant’s description (specification, pages 22-23) of the Figure
8 embodiment, wherein the outer portion of the lower edge of the shaft is uncut, as
preventing or inhibiting collapse of the lower edge of the shaft member by pressure
during winding of the packaging paper 20 that indicates or implies that the uncut
portions should be made of a less flexible material, as contended by the examiner on
page 6 of the answer.
In light of the above, despite the lack of literal support in appellant’s application
as originally filed for the “each said recess forming a thinner, more flexible portion of the
wall” limitation, we conclude that appellant’s specification would have conveyed such to
one of ordinary skill in the art. Accordingly, the examiner’s rejection under 35 U.S.C. §
112, first paragraph, is not sustained.
Appeal No. 2006-1281 Page 6
Application No. 09/926,029

We turn our attention now to the rejection of claims 8 and 9 as being
unpatentable over Watanabe or Kanai in view of Haraguchi or Haraguchi in view of
Watanabe or Kanai. The appellant’s only argument as to why the subject matter of
claims 8 and 9 is not unpatentable over these references is that none of the cited
references “teaches, mentions or suggests” the feature “each said recess forming a
thinner, more flexible portion of the wall than portions of the wall between at least two of
said recesses” (brief, page 10). The same reasoning that supports appellant’s position
with regard to the written description rejection, discussed above, supports the
examiner’s position with respect to the obviousness rejection, as explained below.
Watanabe discloses a tubular ribbon-winding core 5 provided with grooves 5a
extending inwardly from one end thereof into which key-like projections 16 on the core-
engaging portion 6 of the spool shaft 2 are inserted. The grooves 5a are formed only
part-way into the wall of the ribbon-winding core 5.
Kanai discloses a winding core in a ribbon cassette, the winding core 1 being
formed generally in a cylindrical shape and having an inner peripheral surface 2 formed
with a plurality of engaging grooves 7 for engagement with a plurality of engaging
projections 37 formed on the outer peripheral surface of a winding bobbin 35A. The
engaging grooves are formed such that three engaging grooves have insertion sides on
one axial end side of the winding core and three engaging grooves have insertion sides
Appeal No. 2006-1281 Page 7
Application No. 09/926,029

on the opposite end side. As best seen in Figure 5, the grooves 7 extend only part-way
into the wall of the winding core.
Much like the appellant’s specification, there is no indication in either Watanabe
or Kanai that the core 5 of Watanabe or 1 of Kanai is made from a non-homogeneous
material. Accordingly, the examiner’s determination that it would have been obvious to
form the cores from a single substantially uniform (i.e., homogeneous) material for
reasons of efficiency since there is nothing in the references to suggest the need to do
otherwise (answer, page 6) is well-reasoned. Just as in the case of appellant’s
disclosure, we find that one of ordinary skill in the art would have immediately
envisioned that the thinner regions of the grooves 5a of Watanabe or 7 of Kanai would
have increased flexibility relative to the portions of the wall between the grooves. The
appellant’s argument thus is unpersuasive of any error on the part of the examiner in
rejecting claims 8 and 9 under 35 U.S.C. § 103 as being unpatentable over the applied
references. The rejection is sustained.

CONCLUSION
To summarize, the rejection of claims 8 and 9 under the first paragraph of 35
U.S.C. § 112 is reversed and the rejection of claims 8 and 9 under 35 U.S.C. § 103 is
sustained. A rejection of each of the claims on appeal having been sustained, the
decision of the examiner is AFFIRMED.
Appeal No. 2006-1281 Page 8
Application No. 09/926,029

No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a).
AFFIRMED

CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MURRIEL E. CRAWFORD ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
Appeal No. 2006-1281 Page 9
Application No. 09/926,029

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