Ex Parte Kim

Board of Patent Appeals and Interferences

Jan 31, 2005

09783392 (B.P.A.I. Jan. 31, 2005)

1Claims 5 and 8 were amended to correct informalities in an
amendment subsequent to the final rejection (see the amendment
dated Sep. 11, 2003, entered as per the Advisory Action dated
Oct. 2, 2003; and the Brief, page 2, ¶(IV)).
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for publication and is not binding precedent of the Board.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 SUNG-SOO KIM
____________
Appeal No. 2005-0182
Application No. 09/783,392
____________
ON BRIEF
____________
Before WARREN, OWENS, and WALTZ, 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 1 through 7, 9 and 10.1 Claim 8 is the
only other claim pending in this application and stands withdrawn
from further consideration as directed to a non-elected invention
(Brief, page 2, ¶(III); final Office action dated Mar. 11, 2003,
page 1). We have jurisdiction pursuant to 35 U.S.C. § 134.
Appeal No. 2005-0182
Application No. 09/783,392
2
According to appellant, the invention is directed to a seat
belt with a printed face at the outer side, where the printed face
is a character, a mark or a pattern which prevents the user’s hands
from slipping while maintaining the general function of the seat
belt (Brief, page 2). Appellant states that the claims “are deemed
to be individually patentable” (Brief, page 3). To the extent
appellant has presented specific, substantive arguments for the
patentability of individual claims, we will consider these claims
separately. See 37 CFR § 1.192(c)(7)(2003); In re McDaniel, 293
F.3d 1379, 1383, 63 USPQ2d 1462, 1465 (Fed. Cir. 2002).
Representative independent claim 1 is reproduced below:
1. A seat belt with a printed face for a vehicle, in which a
printed face of a character, a mark and a pattern is formed on one
face of the seat belt formed [sic] a band shape woven with
polyester at a location selected to be grasped by a user when
fastening the seat belt, the printed face being embossed to prevent
slippage from the user’s grip and to facilitate the putting on and
taking off of the seat belt.
Appeal No. 2005-0182
Application No. 09/783,392
2The examiner incorrectly lists this document as “2,623,321"
on page 3 of the Answer. However, appellant correctly lists this
document on page 3 of the Brief. Therefore we hold this error to
be harmless.
3
The examiner has relied upon the following references as
evidence of obviousness:
Cave 2623212 Feb. 06, 1964
(published Australian Patent Specification)
Miyamoto 2186612 A Aug. 19, 1987
(published Great Britain Patent Application)
Claims 1-7, 9 and 10 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over either Cave or Miyamoto (Answer, page 3). We
affirm both of these rejections on appeal essentially for the
reasons stated in the Answer and those reasons set forth below.
OPINION
The examiner finds that both Cave (figure 1) and Miyamoto
(figure 4) teach the use of characters, marks or patterns on a seat
belt, and thus provide a “printed face” that may be readily grasped
and inherently prevents or at least lessens to some degree slippage
from the user’s grip due to the nature of the “printed face”
(Answer, page 3). The examiner further finds that the material
that forms the seat belt, as well as the type and color of the
Appeal No. 2005-0182
Application No. 09/783,392
3In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA
1977), quoting In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ
226, 229 (CCPA 1971); see also In re Skoner, 517 F.2d 947, 950,
186 USPQ 80, 82 (CCPA 1975)(Merely choosing to describe the
invention in terms of certain physical characteristics does not
render patentable an otherwise obvious method); In re Spada, 911
(continued...)
4
characters or marks on the belt, would have been obvious to one of
ordinary skill in the art (id.).
Appellant first argues that “inherency” cannot be applied
under section 103 but is limited only to anticipation rejections
(Brief, page 4; Reply Brief, page 2). Then appellant argues that
the examiner has not established that the belt treatments in each
reference would necessarily produce less slippage in each and every
case (id.).
These arguments are not persuasive. As held by a predecessor
of our reviewing court:
[I]t is elementary that the mere recitation of a newly
discovered function or property, inherently possessed by
things in the prior art, does not cause a claim drawn to
those things to distinguish over the prior art.
Additionally, where the Patent Office has reason to
believe that a functional limitation asserted to be
critical for establishing novelty in the claimed subject
matter may, in fact, be an inherent characteristic of the
prior art, it possesses the authority to require the
applicant to prove that the subject matter shown to be in
the prior art does not possess the characteristic relied
on. [Citation omitted]. This burden ... is applicable to
product and process claims reasonably considered as
possessing the allegedly inherent characteristics.3
Appeal No. 2005-0182
Application No. 09/783,392
3(...continued)
F.2d 705, 708, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
4“Embossed” is defined in the specification as “solidly
displayed, stands out on the seat belt” (page 7, l. 20, and page
8, ll. 19-22). The ordinary meaning of “embossed” is “to raise
in relief from a surface ... either by carving or handiwork, or
... mechanical means.” Webster’s Third New International
Dictionary, p. 740, Gove, ed., G. & C. Merriam Co., 1971.
5
We determine that the examiner has established a reasonable belief
that the seat belts of Cave and Miyamoto possess the characteristic
or function “to prevent slippage from the user’s grip” as required
by claim 1 on appeal. Both references teach a “printed face” which
is “embossed”, i.e., a character, mark or pattern is raised from
the surface of the seat belt, as required by claim 1 on appeal.4
Miyamoto discloses a pattern of high visibility material 2 attached
to the surface of the seat belt by stitching or chemical bonding
(page 1, ll. 29-39). As seen from Figure 3, the high visibility
material 2 is raised in relief from the surface 1 of the seat belt.
Similarly, Cave discloses applying a fiber pile in the form of a
pattern to one or both sides of a seat belt (page 2, ll. 1-2, 6-7,
and 21-22). This fiber pile of Cave is disclosed as “upstanding”
(page 3, l. 7) and, as shown by Figures 2 and 3, is raised in
relief from the surface of the seat belt. Accordingly, the
examiner has shown reasonable belief that the embossed “printed
Appeal No. 2005-0182
Application No. 09/783,392
6
faces” of Cave and Miyamoto would prevent, to some extent, slippage
of the seat belt from the user’s grip (see the Answer, sentence
bridging pages 3-4). We note that the extent or amount of slippage
prevented is not recited in claim 1 on appeal. We further note
that the location of any embossed pattern has only been specified
as “a location selected to be grasped by a user” (see claim 1 on
appeal), thus reading on any location on the seat belt (Answer,
page 4).
Appellant argues that the fiber pile of Cave is used for the
purpose of attenuating the normal effect of a seat belt rubbing
abrasively on a user’s clothing, and has no other function (Brief,
page 4). Appellant further argues that there is no disclosure in
Cave that the pile has any effect on the grip and, without any
disclosure as to the coefficient of friction produced by the pile,
it cannot be assumed that a better grip will result (Brief, page
5). Similarly, appellant argues that the purpose of the belt
arrangement taught by Miyamoto is different from that of the
claimed subject matter (Brief, page 6). Appellant alleges that the
coefficient of friction of the high visibility material seat belt
arrangement of Miyamoto “may very well be lower” than the normal
belt surface (id.).
Appeal No. 2005-0182
Application No. 09/783,392
7
These arguments are not persuasive. The examiner has
established that the prior art seat belts with their separate
raised surfaces are identical or substantially identical to the
subject matter as set forth in claim 1 on appeal, namely a seat
belt with an embossed printed face on one side (Answer, pages 3-4).
Merely claiming a new function or purpose of the seat belt
treatments of the prior art does not render the claims patentable
(Answer, page 4; see In re Best, supra). As set forth by the court
in In re Best, 562 F.2d at 1255, 195 USPQ at 433-34:
Where, as here, the claimed and prior art products are
identical or substantially identical, or are produced by
identical or substantially identical processes, the PTO
can require an applicant to prove that the prior art
products do not necessarily or inherently possess the
characteristics of his claimed product. See In re
Ludtke, supra. Whether the rejection is based on
“inherency” under 35 USC 102, on “prima facie
obviousness” under 35 USC 103, jointly or alternatively,
the burden of proof is the same, and its fairness is
evidenced by the PTO’s inability to manufacture products
or to obtain and compare prior art products. [footnote
omitted].
As discussed above, we determine that the examiner has met the
initial burden of proof and shifted this burden to appellant.
Appellant’s assertion that the coefficient of friction of the prior
art seat belt “may very well be lower” is not supported by any
objective evidence.
Appeal No. 2005-0182
Application No. 09/783,392
8
Appellant further argues the various limitations of the
dependent claims (Brief, pages 7-9; Reply Brief, pages 2-4). As
noted by the examiner (Answer, page 4), these various limitations
are considered conventional or well known in the art. The use of
multicolor patterns, as recited in claims 4 and 9, would have been
suggested by the teaching in Cave of differently colored fibers
(page 2, ll. 15-19). It is the product which is being claimed, and
appellant has not established that the process by which it is
formed affects the product as claimed (i.e., silk printing in claim
6 and decalcomania in claim 7). See In re Wertheim, 541 F.2d 257,
271, 191 USPQ 90, 103 (CCPA 1976). Furthermore, the material used
to make the “printed face” would have been well within the ordinary
skill in the art, depending on the properties desired (see claims
2, 3 and 5).
For the foregoing reasons, we determine that the examiner has
established a prima facie case of obviousness in view of the
reference evidence. Based on the totality of the record, including
due consideration of appellant’s arguments, we determine that the
preponderance of evidence weighs most heavily in favor of
obviousness within the meaning of section 103(a). Accordingly, we
affirm the examiner’s rejections of the claims on appeal under
35 U.S.C. § 103(a) over Cave or Miyamoto.
Appeal No. 2005-0182
Application No. 09/783,392
No time period for taking any subsequent action in connection
with this appeal may be extended under 37 CFR §
1.136(a)(1)(iv)(effective Sep. 13, 2004; 69 Fed. Reg. 49960 (Aug.
12, 2004); 1286 Off. Gaz. Pat. Office 21 (Sep. 7, 2004)).
AFFIRMED
Charles F. Warren )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
Terry J. Owens ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
Thomas A. Waltz )
Administrative Patent Judge )
TAW/dm
9
Appeal No. 2005-0182
Application No. 09/783,392
10
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