Ex parte Kikuchi

Board of Patent Appeals and Interferences

Jun 24, 1999

08267049 (B.P.A.I. Jun. 24, 1999)

Application for patent filed June 28, 1994. 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journal and (2) is not binding precedent of the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. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte SHUICHI KIKUCHI
____________
Appeal No. 96-4193
Application No. 08/267,0491
____________
HEARD: June 8, 1999
____________
Before JOHN D. SMITH, WALTZ and SPIEGEL, Administrative Patent
Judges.
WALTZ, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the examiner’s refusal to allow
claims 1 through 4 as amended after the final rejection (see
the amendment dated Sept. 7, 1995, Paper No. 8, entered as per
the Advisory Action dated Sept. 29, 1995, Paper No. 9).
Appeal No. 96-4193
Application No. 08/267,049
The examiner apparently relies upon an English abstract2
of this reference (see the PTO-892 accompanying the rejection
dated Jan. 24, 1995, Paper No. 4, and the Brief dated Apr. 29,
1995, Paper No. 13, page 11). We refer to and cite from an
English translation of the entire document provided as
Appendix B to appellant’s Brief.
2
According to appellant, the invention is directed to a
disc cartridge liner for wiping off the dust deposited on a
recording disc where the liner includes a thermoplastic fiber
entangling body and a cellulose fiber entangling body (Brief,
pages 2 and 4). Claim 1 is illustrative of the subject matter
on appeal and is reproduced below:
1. A disc cartridge liner comprising: a thermoplastic
fiber entangling body composed of entangled thermoplastic
fibers, and a cellulose fiber entangling body composed of
entangled regenerated cellulose fibers and refined cellulose
fibers, the thermoplastic fiber entangling body and the
cellulose fiber entangling body being heated and pressed to be
attached to each other.
The examiner has relied upon the following references as
evidence of obviousness:
Howey 5,060,105 Oct. 22, 1991
Takemae et al. (Takemae) 5,122,919 Jun. 16, 1992
Vogt 2 325 715 Dec. 19, 1974
(Published German Offenlegungsschrift)2
Claims 1 through 3 stand rejected under 35 U.S.C. § 103
as unpatentable over Takemae in view of Vogt (Answer, pages 3-
Appeal No. 96-4193
Application No. 08/267,049
3
5). Claim 4 stands rejected under 35 U.S.C. § 103 as
unpatentable over Takemae in view of Vogt and Howey (Answer,
page 5). We reverse both of the examiner’s rejections for
reasons which follow.
Appeal No. 96-4193
Application No. 08/267,049
4
OPINION
The disc cartridge liner of appealed claim 1 comprises
entangled thermoplastic fibers and entangled regenerated
cellulose fibers and refined cellulose fibers. The examiner
finds that Takemae discloses a disc cartridge liner comprising
a thermoplastic fiber and a regenerated cellulose fiber
(Answer, page 3). The examiner recognizes that Takemae does
not disclose refined cellulose fibers as required by appealed
claim 1 (Answer, page 4). The examiner cites Vogt (M1159V/52)
for the disclosure of “a protective sleeve of a video record
comprising fibers made by plastics or semi-synthetic material
consisting of a modified cellulose (a refined cellulose fiber
inherently).” (Id.). The examiner concludes that it would
have been obvious to make the disc liner of Takemae with both
a regenerated cellulose fiber and a refined cellulose fiber
“as inherently taught by M1159V/52 [Vogt].” (Id.).
The examiner does not provide any factual support for the
finding that the “modified cellulose” of Vogt is “inherently”
a refined cellulose fiber. See the specification, page 9,
where appellant discloses the preparation and characteristics
Appeal No. 96-4193
Application No. 08/267,049
See Hawley, The Condensed Chemical Dictionary, 10th ed.,3
pp. 210-211, Van Nostrand Reinhold Co., 1981, a copy of which
is attached to this decision.
5
of “refined cellulose fibers”. The term “modified cellulose”
is well known in the art and has not been shown by the3
examiner to necessarily include the “refined cellulose fibers”
taught in appellant’s specification and recited in appealed
claim 1.
Even assuming that “modified cellulose fibers” are the
same as “refined cellulose fibers”, the examiner has failed to
show any reasoning, motivation or suggestion for combining the
teachings of Takemae and Vogt in the manner proposed (see the
Brief, pages 11-12). The examiner must specifically identify
the reasons one of ordinary skill in the art would have been
motivated to select the references and combine them. See In
re Dembiczak, __ F.3d __, __, 50 USPQ2d 1614, 1617-1618 (Fed.
Cir. 1999); In re Rouffet, 149 F.3d 1350, 1359, 47 USPQ2d
1453, 1459 (Fed. Cir. 1998). The examiner sets forth a
sweeping rationale that it would have been obvious to make a
disc liner with regenerated and refined cellulose fibers “to
avoid scratching disc surface in order to protect disc surface
Appeal No. 96-4193
Application No. 08/267,049
6
without damage” (Answer, page 4). However, the examiner does
not specifically identify why the artisan would have used the
protective “modified cellulose fiber” lining of Vogt in
addition to the two lining materials of Takemae while keeping
both types of cellulose fibers together and entangled.
The examiner additionally applies the Howey reference
against claim 4 for the disclosure of using a rubber based
binder but this reference does not cure the deficiencies noted
above. Howey discloses a web of nonwoven synthetic fibers
which are thermally spot welded to form the basic liner fabric
(column 3, lines 59-62). Howey exemplifies many types of
fibers including cellulosic fibers but does not disclose or
teach refined cellulose fibers (see column 4, lines 6-10;
lines 31-33; and column 6, lines 9-25).
For the foregoing reasons, we determine that the examiner
has not established a prima facie case of obviousness in view
of the applied prior art. Accordingly, the rejection of
claims 1 through 3 under 35 U.S.C. § 103 as unpatentable over
Takemae in view of Vogt is reversed. The rejection of claim 4
under § 103
Appeal No. 96-4193
Application No. 08/267,049
7
as unpatentable over Takemae in view of Vogt and Howey is also
reversed. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443,
1444 (Fed. Cir. 1992).
The decision of the examiner is reversed.
REVERSED
JOHN D. SMITH )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
THOMAS A. WALTZ ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
CAROL A. SPIEGEL )
Administrative Patent Judge )
jrg
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