Ex Parte Ikawa

Board of Patent Appeals and Interferences

Apr 30, 2004

09868911 - (D) (B.P.A.I. Apr. 30, 2004)

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for publication and is not binding precedent of the Board.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. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MIKIHIRO IKAWA
____________
Appeal No. 2004-1099
Application No. 09/868,911
____________
ON BRIEF
____________
Before OWENS, WALTZ, and PAWLIKOWSKI, Administrative Patent Judges.
WALTZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the primary examiner’s
final rejection of claims 15 through 26, which are the only claims
pending in this application. We have jurisdiction pursuant to
35 U.S.C. § 134.
According to appellant, the invention is directed to a method
and an apparatus for processing a linear groove in a resin skin
(Brief, page 3). A more detailed understanding of the invention
may be gleaned from representative independent claims 15 (method)
and 18 (apparatus) as found in the Appendix to appellants’ Brief.
Appeal No. 2004-1099
Application No. 09/868,911
1We rely upon and cite from a full English translation of
each Japanese document (JP ‘971, JP ‘118, and JP ‘811),
previously made of record.
2
The examiner has relied upon the following references as
evidence of obviousness:
Lenander et al. (Lenander) 5,202,065 Apr. 13, 1993
Bauer 5,744,776 Apr. 28, 1998
Ito (JP ‘971) S52-971 Jan. 06, 1977
(published Japanese Kokai Patent Application)
Otani (JP ‘118) H4-355118 Dec. 09, 1992
(published Japanese Kokai Patent Application)
Ono (JP ‘811) H6-218811 Aug. 09, 1994
(published Japanese Kokai Patent Application)1
Anonymous, Derwent Abstract of RD 422045A (Derwent ‘045A), “Method
to create hidden tear seams in hidden airbag deployment doors -
using ultrasonic activation of knife to cause localised heating and
melting of cover material as it is being cut by blade,” two pages,
published June 10, 1999.
The following rejections are before us for review in this
appeal, all based on 35 U.S.C. § 103(a):
(1) claims 15 and 18-20 stand rejected over JP ‘811 in view
of Lenander and JP ‘118 (Answer, page 3);
(2) claims 16-17 and 21-22 stand rejected over the references
applied in rejection (1) further in view of JP ‘971 (Answer, page
5);
Appeal No. 2004-1099
Application No. 09/868,911
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(3) claims 23 and 25 stand rejected over the references
applied in rejection (1) further in view of Bauer (Answer, page 6);
(4) claims 24 and 26 stand rejected over the references
applied in rejection (2) further in view of Bauer (Answer, page 7);
(5) claims 15 and 18-19 stand rejected over Derwent ‘045A in
view of JP ‘118 (Answer, page 7);
(6) claims 16-17 and 21-22 stand rejected over the references
applied in rejection (5) further in view of JP ‘971 (Answer, page
8);
(7) claims 23 and 25 stand rejected over the references
applied in rejection (5) further in view of Bauer (Answer, page 9);
and
(8) claims 24 and 26 stand rejected over the references
applied in rejection (5) further in view of JP ‘971 and Bauer
(Answer, page 10).
We reverse all of the rejections on appeal essentially for the
reasons stated in the Brief and those reasons set forth below.
OPINION
With respect to rejection (1) which includes independent
claims 15 and 18, the examiner finds that JP ‘811 teaches the basic
claimed apparatus and process for forming a linear groove in an air
Appeal No. 2004-1099
Application No. 09/868,911
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bag portion of a resin skin (Answer, pages 3-4). The examiner
finds that JP ‘811 does not teach an adjusting mechanism for a step
of adjusting the ultrasonic tool, and therefore applies Lenander
for the teaching of using an adjustment device to position the
ultrasonic tool to improve thickness control of the score line
(Answer, page 4). From these findings, the examiner concludes that
it would have been obvious to one of ordinary skill in this art to
have provided an adjustment device to position the ultrasonic tool
in the process and apparatus of JP ‘811, since Lenander teaches
that adjusting the ultrasonic tool provides for improved thickness
control of the score line (id.). The examiner further finds that
JP ‘811 and Lenander do not teach a device for blowing cool air
after processing the linear groove, and therefore applies JP ‘118
for the teaching of an ultrasonic process where a compressor and
a pipe are provided for blowing cool air onto the processed area
(id.). From these findings, the examiner concludes that it would
have been obvious to one of ordinary skill in this art to have
provided a cooling device to blow cooling air in the process and
apparatus of JP ‘811 and Lenander to reduce processing time, hence
increasing productivity and reducing production costs, as taught by
JP ‘118 (Answer, paragraph bridging pages 4-5). The examiner also
states that a reason for the combination of references with JP
Appeal No. 2004-1099
Application No. 09/868,911
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‘811, with regard to both Lenander and JP ‘118, is that all of the
references teach ultrasonic processing of polymeric materials. We
disagree for the following reasons.
JP ‘118 is directed to the ultrasonic sealing of two
superposed polymeric films (¶ [0010] and [0011]; see also Figure
1). This reference teaches that the connection part of the
sealed film is rapidly cooled by blowing compressed air either
simultaneously with or immediately after the connection of the film
by the ultrasonic waves (page 1, claims 1 and 2). JP ‘118 teaches
that the natural cooling and solidification of the connection part
causes the connection part to become fragile and easily ruptured
(¶ [0002] and [0003]). The inventor of JP ‘118 has found that
if the film part which is melted by ultrasonic energy is rapidly
cooled, it becomes amorphous and there is no deterioration of
mechanical strength (¶ [0006]). Because the ultrasonic welding
part of the film is rapidly cooled, “fragility is not generated,
and remarkably good welding strength can be obtained.”
¶ [0016][sic]. The result of the teaching of JP ‘118 is that
“where repeated bending stress is present, the connection part
does not rupture.” Id.
Therefore we determine that the teachings of JP ‘118 are
directly contrary to the expressed desires of JP ‘881 and Lenander,
Appeal No. 2004-1099
Application No. 09/868,911
2See In re Kemps, 97 F.3d 1427, 1430, 40 USPQ2d 1309, 1311
(Fed. Cir. 1996).
6
both of which are directed to creating score lines which are meant
to weaken the resin skin or thermoplastic film, not strengthen it
so that it does not rupture. Accordingly, we determine that the
examiner has not established any convincing motivation, suggestion
or incentive for combining the references as proposed. See In re
Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir.
1999). Although the examiner is correct that the suggestion or
motivation to combine the references does not have to be the same
as appellant’s motivation to establish obviousness (Answer, pages
16-17),2 the examiner must establish some convincing motivation or
suggestion for combining the references as proposed. The general
statement that “all references teach ultrasonic processing of
polymeric materials” (e.g., Answer, page 13) is not sufficient (see
the Brief, page 6; In re Dembiczak, supra). As correctly argued by
appellants (Brief, pages 6-7), JP ‘118 is concerned with preventing
the welded portions of superposed resin films from becoming fragile
while the claimed invention (and JP ‘811) is directed to the
removal of resin material that is fused by ultrasonic vibration to
the sides of a groove, with appellant further teaching that this
removed material is hardened by blown cooling air. The examiner
Appeal No. 2004-1099
Application No. 09/868,911
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has not presented a convincing reason for the combination of the
different methods of JP ‘118 and JP ‘811.
The examiner has applied JP ‘118 as the sole reference for the
teaching of providing a cooling apparatus or cooling step in every
rejection on appeal (see the Answer in its entirety). The
remaining secondary references (JP ‘971 and Bauer) and primary
reference (Derwent ‘045A) do not remedy the deficiencies in JP ‘118
discussed above. For the foregoing reasons and those stated in the
Brief, we determine that the examiner has not established a prima
facie case of obviousness in view of the reference evidence of
record. Therefore we cannot sustain any rejection on appeal.
Appeal No. 2004-1099
Application No. 09/868,911
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The decision of the examiner is reversed.
REVERSED

TERRY J. OWENS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
THOMAS A. WALTZ ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
BEVERLY A. PAWLIKOWSKI )
Administrative Patent Judge )
TAW/jrg
Appeal No. 2004-1099
Application No. 09/868,911
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Felix J. D'Ambrosio
Jones Tullar & Cooper
PO Box 2266 Eads Station
Arlington, VA 22202