Ex parte Ikeda

Board of Patent Appeals and Interferences

Oct 31, 2000

08837350 (B.P.A.I. Oct. 31, 2000)

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for publication and is not binding precedent of the Board.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. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte TOMOHIRO IKEDA
____________
Appeal No. 1999-2047
Application No. 08/837,350
____________
HEARD: OCTOBER 25, 2000
_______
Before COHEN, McQUADE, and LAZARUS, Administrative Patent
Judges.
COHEN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1
through 3. Claims 4 through 13, the only other claims in the
application, stand withdrawn from consideration pursuant to
37 CFR § 1.142(b).

Appellant’s invention pertains to a shield-plated
corrugated tube. A basic understanding of the invention can
be derived from a reading of exemplary claim 1, a copy of
Appeal No. 1999-2047
Application No. 08/837,350
Our understanding of this document is derived from a1
reading of a translation thereof prepared for the United
States Patent and Trademark Office. A copy of the translation
is appended to this opinion.
2
which appears in the APPENDIX to the brief (Paper No. 14).
As evidence of obviousness, the examiner has applied the
documents listed below:
Takagi et al. 5,325,893 Jul. 5,
1994
(Takagi)
Kijima et al. HEI 6-[1994]286053 Oct. 11, 1994
(Kijima)(Japanese Kokai Patent Application)1
The following rejections are before us for review.
Claims 1 and 3 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Takagi.
Claim 2 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Takagi in view of Kijima.
The full text of the examiner’s rejections and response
to the argument presented by appellant appears in the answer
Appeal No. 1999-2047
Application No. 08/837,350
Appellant’s disclosure informs us that, at the time of2
the present invention, a conventional shielded corrugated tube
(Fig. 7) employed electroless plating but that "bubbles
generated during a plating process are collected in concave
portions in the corrugated tube, or a plating solution
remains, so that it is easy to produce a failure in plating."
(specification, pages 3 and 4)
In our evaluation of the applied prior art, we have3
considered all of the disclosure of each document for what it
would have fairly taught one of ordinary skill in the art.
See In re Boe, 355 F.2d 961, 965, 148 USPQ 507, 510 (CCPA
1966). Additionally, this panel of the board has taken into
account not only the specific teachings, but also the
inferences which one skilled in the art would reasonably have
been expected to draw from the disclosure. See In re Preda,
401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968).
3
(Paper No. 15), while the complete statement of appellant’s
argument can be found in the main and reply briefs (Paper Nos.
14 and 16).

OPINION
In reaching our conclusion on the issues raised in this
appeal, this panel of the board has carefully considered
appellant’s specification and claims, the applied teachings,2 3
and the respective viewpoints of appellant and the examiner.
Appeal No. 1999-2047
Application No. 08/837,350
4
As a consequence of our review, we make the determination
which follows.
We cannot sustain any of the examiner’s rejections under
35 U.S.C. § 103.
Independent claim 1 is drawn to a shield plated
corrugated tube for covering an electric wire to mechanically
protect and electromagnetically shield the electric wire
accommodated therein comprising, inter alia, a flexible tube
body including a tube wall corrugated by repetition of convex-
concave portions having a plurality of inner and outer grooved
portions, wherein the size of the tube body is set at least so
that each of the inner grooved portions satisfies a condition
of 0.5 < D/W < 1.6 (D and W being respectively the depth and
width of each inner grooved portion), and an electromagnetic
shielding metal layer formed on the inner surface of the tube
wall by electroless plating.
The examiner applies the patent to Takagi as the basis
for rejecting independent claim 1 under 35 U.S.C. § 103.
Appeal No. 1999-2047
Application No. 08/837,350
5
Takagi teaches a spiral air duct (Fig. 6) wherein paper
23 is disposed on the outer periphery thereof to prevent
condensation dripping.
The Takagi document does not teach or suggest a shield-
plated corrugated tube, the invention being claimed. Further,
this patent provides drawings that are not to scale and makes
no mention whatsoever of any relationship between the width
and depth of the inner grooves of the spiral tube. See In re
Antonie, 559 F.2d 618, 620, 195 USPQ 6, 9 (CCPA 1977). It is
quite apparent to us that the examiner has focused upon width
and depth as it pertains to the inner grooves of the spiral
tube of Takagi only because of appellant’s teaching in this
application. The circumstances before us exemplify a classic
case of inappropriate reliance upon an appellant’s own
teaching as a basis for concluding obviousness. Only
appellant has informed us as to the importance of a
specifically claimed condition that addresses the width and
depth of inner grooved portions of a shield-plated corrugated
tube to overcome the disclosed bubble and plating problems
that accrue during electroless plating. Since the Takagi
Appeal No. 1999-2047
Application No. 08/837,350
6
reference does not teach and would not have been suggestive of
the shield-plated corrugated tube of claim 1, the rejection
thereof must be reversed. As to the Kijima reference, also
relied upon by the examiner, we conclude that the teaching
thereof clearly fails to overcome the deficiency of the Takagi
document.
In summary, this panel of the board has not sustained the
two obviousness rejections on appeal.
The decision of the examiner is reversed.
Appeal No. 1999-2047
Application No. 08/837,350
7
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
RICHARD B. LAZARUS )
Administrative Patent Judge )
ICC/sld
Appeal No. 1999-2047
Application No. 08/837,350
8
SUGHRUE MION ZINN MACPEAK & SEAS
2100 PENNSYLVANIA AVENUE, N.W.
WASHINGTON, DC 20037
APPEAL NO. 1999-2047 - JUDGE
COHEN
APPLICATION NO. 08/837,350
APJ COHEN
APJ McQUADE
APJ LAZARUS
DECISION: REVERSED
Prepared By:
DRAFT TYPED: 20 Dec 01
FINAL TYPED: