Ex parte HIROO INABA

Board of Patent Appeals and Interferences

Aug 29, 1997

07903353 (B.P.A.I. Aug. 29, 1997)

Application filed June 24, 1992, for Reissue of U.S.1
Patent No. 5,051,320, issued September 24, 1991, based on
Application 07/309,580, filed February 9, 1989.
Administrative Patent Judge (APJ) McFarlane participated2
in the hearing of the appeal but resigned before this decision.
APJ John D. Smith has been substituted on this merits panel.
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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journal and (2) is not binding precedent of the Board.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. 31
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte HIROO INABA, SHINJI SAITO,
and HIROSHI OGAWA
________________
Appeal No. 96-2941
Application 07/903,3531
________________
HEARD: August 6, 1996
________________
Before KIMLIN, JOHN D. SMITH and WARREN, Administrative Patent2
Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-12,
14, 17-23, 25, 32, 41-43, 45, 46, 48, 49 and 51-59. Claims 70,
71, 73, 75, 77, 79 and 80 have been allowed by the examiner.
Claims 31, 35 and 40, the other claims remaining in the present
Appeal No. 96-2941
Application 07/903,353
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application, have been objected to by the examiner. Claim 1 is illustrative:
1. A magnetic recording medium comprising a non-magnetic
support having provided thereon a lower magnetic layer [having a
thickness of 2.5 µm or higher] and an upper magnetic layer having
a thickness of 2 µm or lower [in this order], wherein both the
upper and lower magnetic layers contain [ferromagnetic] magnetic
particles and a binder, and the lower magnetic layer contains
carbon black having an average primary particle diameter of less
than 20 mµ in an amount of from 1.0 to 20 parts by weight per 100
parts by weight of the [ferromagnetic] magnetic particles present
in the lower magnetic layer, and the upper magnetic layer
contains carbon black having an average primary particle diameter
of at least 40 mµ but less than 80 mµ in an amount of from 0.1 to
10.0 parts by weight per 100 parts by weight of the
[ferromagnetic] magnetic particles present in the upper magnetic
layer[, but less than the amount of carbon black used in the
lower magnetic layer].
The examiner does not rely upon prior art in the rejection
of the appealed claims.
Appellants’ claimed invention in this Reissue application is
directed to a magnetic recording medium which finds utility as a
video tape. The claimed magnetic recording medium comprises a
non-magnetic support, a lower magnetic layer and an upper
magnetic layer having a thickness of 2 µm or lower. Both the
lower and upper magnetic layer contain carbon black, but the
carbon black in the lower layer has an average primary particle
diameter less than the average primary particle diameter of the
carbon black in the upper layer.
Appeal No. 96-2941
Application 07/903,353
Although the examiner’s statement of the rejection at3
page 3 of the Answer includes claims 35 and 40, the examiner
acknowledges in the paragraph bridging pages 3 and 4 of the
Answer that the inclusion of claims 35 and 40 in the statement of
the rejection is “an inadvertent oversight.” Claims 35 and 40
are objected to by the examiner.
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Appealed claims 1-12, 14, 17-23, 25, 32, 41-43, 45, 46, 48,
49 and 51-55 stand rejected under 35 U.S.C. § 112, first
paragraph.3
Upon careful consideration of the opposing arguments
presented on appeal, we will not sustain the examiner’s
rejection.
The examiner states at page 3 of the Answer that the
appealed claims stand rejected under 35 U.S.C. § 112, first
paragraph, “as the disclosure is enabling only for claims limited
to one in which the upper magnetic layer is 2.0 micro or lower
and the content of carbon black in the upper layer is 0.1-10
parts and the content of carbon black in the lower layer is
1.0-20 parts.” As pointed out by appellants, the features of the
invention referred to by the examiner are, in fact, recited in
the appealed claims. Acknowledging this, the examiner states at
page 4 of the Answer that “[a]ppellants amended to put back the
limitation for the upper magnetic layer but not for the lower
magnetic layer.” Thus, it is the examiner’s position that the
present specification does not enable recording mediums within
Appeal No. 96-2941
Application 07/903,353
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the scope of the appealed claims which do not limit the lower
magnetic layer to those having a thickness of 2.5 µm or higher.
It is well settled that the examiner has the initial burden
of establishing lack of enablement by compelling reasoning or
objective evidence. In re Strahilevitz, 668 F.2d 1229, 1232, 212
USPQ 561, 563 (CCPA 1982); In re Armbruster, 512 F.2d 676, 677,
185 USPQ 152, 153 (CCPA 1975); In re Marzocchi, 439 F.2d 220,
223-24, 169 USPQ 367, 369-70 (CCPA 1971). In the present case,
as urged by appellants, the patented specification expressly
discloses that when the lower magnetic layer is thinner than
2.5 µm, the lower layer contributes less to the improvement of
electroconductivity and, therefore, the thickness of the lower
magnetic layer is preferably 2.5 µm or higher (column 4, lines
53-56). On the other hand, the examiner has merely pointed out
other portions of the specification which indicate that a
thickness of 2.5 µm or higher for the lower magnetic layer is
part of the present invention, which, of course, is true.
However, when such portions relied upon by the examiner are read
in context with the disclosure at column 4, lines 53-56, the
inescapable conclusion, absent compelling reasoning or objective
evidence to the contrary, is that, prima facie, the present
specification enables recording mediums wherein the lower
magnetic layer is less than 2.5 µm.
Appeal No. 96-2941
Application 07/903,353
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Since the examiner has not established a prima facie case of
non-enablement, we find no need to evaluate appellants’
declaration evidence of enablement.
In conclusion, based on the foregoing, the examiner’s
decision rejecting the appealed claims is reversed.
REVERSED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
JOHN D. SMITH ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
CHARLES F. WARREN )
Administrative Patent Judge )
Appeal No. 96-2941
Application 07/903,353
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