Ex Parte Knox

Patent Trial and Appeal Board

Sep 30, 2014

11394838 (P.T.A.B. Sep. 30, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/394,838 03/31/2006 John Graeme Knox B04-061A 9834
26683 7590 10/01/2014
THE GATES CORPORATION
IP LAW DEPT. 10-A3
1551 WEWATTA STREET
DENVER, CO 80202
EXAMINER
LIU, HENRY Y
ART UNIT PAPER NUMBER
3654
MAIL DATE DELIVERY MODE
10/01/2014 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOHN GRAEME KNOX
____________

Appeal 2012-007753
Application 11/394,838
Technology Center 3600
____________

Before EDWARD A. BROWN, MICHAEL L. HOELTER, and THOMAS
F. SMEGAL, Administrative Patent Judges.

SMEGAL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
John Graeme Knox (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s final rejection of claims 1−24, the only claims
pending in the application on appeal. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
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CLAIMED SUBJECT MATTER
An understanding of the invention can be derived from a reading of
independent claim 1, which is reproduced below.
1. A toothed belt comprising:
an elastomeric body;
at least one tooth formed of said body;
a jacket comprising fabric and disposed along a
peripheral surface of said at least one tooth and having a
compressed jacket thickness in the range from 0.5 mm to about
0.8 mm;
at least one cord embedded in said body and having a
cord diameter;
said at least one cord and said jacket having a ratio of
said cord diameter to said jacket thickness of less than 1.8;
and said cord diameter and said jacket thickness
describing an optical belt pitch line differential of about 1.2 mm
or less.

Appeal Br. 45, Clms. App.

REJECTIONS ON APPEAL

The following Examiner’s rejections are before us for review.
1. Claims 1, 8, 9, 11, and 19 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Osako1 (US 6,220,983 B1, issued Apr. 24, 2001), Yokoi
(US 5,209,961, issued May 11, 1993), and Skura (US 4,632,665, issued Dec.
30, 1986).
2. Claims 2−5, 10, and 12 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Osako, Skura, Yokoi, and Oyama (US 4,643,938, issued
Feb. 17, 1987).

1We correct the inadvertent misspelling of “Osako” throughout the Answer.
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3. Claim 6 is rejected under 35 U.S.C. § 103(a) as unpatentable over Osako,
Skura, Yokoi and Oyama, and Fidan (US 6,539,698 B2, issued Apr. 1,
2003).
4. Claim 7 is rejected under 35 U.S.C. § 103(a) as unpatentable over Osako,
Skura, Yokoi, and Knutson (US 2002/0132692 A1, pub. Sept. 19, 2002).
5. Claims 13−15 and 24 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Marsh (US 4,295,837, issued Oct. 20, 1981), Osako, Skura, and Yokoi.
6. Claims 16 and 17 are rejected under 35 U.S.C. § 103(a) as unpatentable over
Marsh, Osako, Skura, Yokoi, and Oyama.
7. Claim 18 is rejected under 35 U.S.C. § 103(a) as unpatentable over Marsh,
Osako, Skura, Yokoi, and Knutson.
8. Claims 20 and 21 are rejected under 35 U.S.C. § 103(a) as unpatentable over
Osako, Yokoi, Skura, and Knutson.
9. Claims 22 and 23 are rejected under 35 U.S.C. § 103(a) as unpatentable over
Knutson, Skura, and Yokoi.

ANALYSIS
Obviousness of claims 1, 8, 9, 11, and 19 over Osako, Yokoi, and
Skura.
We are persuaded by Appellant’s contentions that the Examiner failed
to establish a prima facie showing of obviousness in rejecting claims 1, 8, 9,
11, and 19 over Osako, Yokoi, and Skura.
The Examiner relies on Osako as disclosing several of the limitations
appearing in claim 1, acknowledging that “OSAK[O] does not teach ‘and
having a compressed jacket (30) (Fig. 1) thickness in the range from 0.5 mm
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to about 0.8 mm,’”2 but determining that “SKURA teaches a belt cover with
a belt cover fabric of approximately .019 in. (Col. 11 lines 1-15) with a
rubber coat layer between 0.003 and 0.012 in (Col. 6 lines 12-20).
Depending on the thickness of the rubber coat layer, the jacket thickness is
within the range of 0.5 mm to about 0.8 mm.” Ans. 5.
The Examiner also acknowledges that “OSAK[O] as modified by
SKURA does not teach ‘and having a cord diameter; said at least one cord
and said jacket having a ratio of said cord diameter to said jacket thickness
of less than 1.8.’” Ans. 6. However, the Examiner continues by finding that
YOKOI teaches a tensile member (4) with a diameter
from 0.63 mm to 0.85 mm (Abstract). A belt cord with a
diameter of 0.63 mm would provide OSAK[O] as modified by
YOKOI with a cord diameter to jacket thickness ratio of 1.17 if
the jacket thickness is taken to be 0.54 mm[3]. This ratio falls
within applicant's claimed range of “less than 1.8.”
Id. at 6.
Appellant points out that Yokoi and Osako
teach two cord diameter ranges that do not even overlap, and
they each explain the problems with each other's ranges. E.g.,
YOKOI says small diameter (0.63-0.85 mm) is needed to
suppress heat generation, col. 6 lines 29-36, while OSAKO says
too small (˂ 1.1mm) makes tensile strength too low and
elongation too high, resulting in improper engagement with the
pulley, col. 5 lines 7-13.
Appeal Br. 19.

2While Osako does not specifically disclose any range of jacket thickness,
Osako discloses a pitch line differential (PLD) of 0.75−1.00 and a cord
diameter of 1.1−1.5 mm, from which a jacket thickness in the range of
0.0−0.45 mm can be calculated. See Osako, col. 2, ll. 42−61.
3The Examiner offers no explanation for arbitrarily selecting a jacket
thickness of 0.54 mm from the range of 0.5−0.8 mm, the range the Examiner
previously asserted was disclosed in Sukoi. Ans. 5.
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The Examiner does not respond to Appellant’s contention that the
cord diameter ranges of Yokoi and Osako do not overlap, merely observing
“though the references each teach different combinations of PLD, with
[different] cord diameters and jacket thicknesses than applicant's belt, the
references do not teach away from combining their components.” Ans. 25.
It is incumbent upon the examiner to establish a factual basis to
support the legal conclusion of obviousness. See KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007). In so doing, the examiner is expected to
make the factual determinations set forth in Graham v. John Deere Co., 383
U.S. 1, 17 (1966), viz., (1) the scope and content of the prior art; (2) the
differences between the prior art and the claims at issue; and (3) the level of
ordinary skill in the art. A conclusion of obviousness must be supported by
explicit findings and analysis establishing an apparent reason to combine the
known elements in the manner required in the claim at issue. KSR, 550 U.S.
at 418.
In addition to the Examiner not giving proper consideration to the
express teachings of Osako and Yokoi, it remains unclear as to why a person
of ordinary skill in the art would have been motivated to modify the cord
diameter in Osako (1.1−1.5 mm) using the seemingly opposite teachings of
Yokoi (0.63 mm), when there is no disclosure in either Osako or Yokoi, or
any other evidence provided by the Examiner, that would lead one of
ordinary skill in the art to do as the other discloses. Thus, the Examiner has
not provided an adequate reason with rational underpinning to combine the
reference teachings to result in the claimed subject matter. We agree with
Appellant that the
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claimed combination of ranges is not taught by the references
either individually or if properly combined (if that were
possible), considering the teaching of the references as a whole
and what one of skill in the art would consider in designing a
toothed belt to properly run on a toothed pulley.
Appeal Br. 19.
Thus, we agree that the Examiner fails to establish a prima facie case
of obviousness of the subject matter of claims 1, 8, 9, 11, and 19 over
Osako, Yokoi, and Skura. For the foregoing reasons, we do not sustain the
rejection of claims 1, 8, 9, 11, and 19 over Osako, Yokoi, and Skura.

Obviousness of claims 2−5, 10, and 12 based on Osako, Skura, Yokoi,
and Oyama; claim 6 based on Osako, Skura, Yokoi, Oyama, and Fidan;
claim 7 based on Osako, Skura, Yokoi, and Knutson; and claims 20 and 21
based on Osako, Yokoi, Skura, and Knutson.
The rejections are directed to claims 2–7, 10, 12, 20, and 21, which
depend either directly or indirectly from independent claim 1. The
Examiner’s application of the additional references for the rejections of
these dependent claims do not cure the deficiencies of the rejection of claim
1, discussed supra. See Ans. 8–14 and 20−22. Thus, for the same reasons
as those stated above for claim 1, we will not sustain the rejections of claims
2–7, 10, 12, 20, and 21 over the cited prior art. Cf. In re Fritch, 972 F.2d
1260, 1266 (Fed. Cir. 1992) (“[D]ependent claims are nonobvious if the
independent claims from which they depend are nonobvious.”).

Obviousness of claims 13−15 and 24 based on Marsh, Osako, Skura,
and Yokoi.
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We are persuaded by Appellant’s contentions that the Examiner failed
to establish a prima facie showing of obviousness in rejecting claims 13−15
and 24 over Marsh, Osako, Skura, and Yokoi.
The Examiner relies on Marsh as disclosing several of the limitations
appearing in claim 13, but acknowledges, ab initio, that “MARSH as
modified [by Skura] does not teach a cord diameter to the jacket thickness
ratio range” (Ans. 16). The Examiner determines that
YOKOI teaches a tensile member (4) with a diameter
from 0.63 mm to 0.85 mm (Abstract). A belt cord with a
diameter of 0.63 mm would provide OSAK[O] as modified by
SKURA with a cord diameter to jacket thickness ratio of 1.17 if
the jacket thickness is taken to be 0.54 mm. This ratio falls
within applicant's claimed ranges.
Id.
As we discuss above regarding claim 1, it remains unclear as to why a
person of ordinary skill in the art would have been motivated to modify the
cord diameter in Osaka to 0.63 mm as disclosed by Yokoi. Furthermore, as
Appellant argues, “combining OSAKO and YOKOI requires overcoming the
teaching away in each reference and reconciling somehow their
contradictory teachings, which the Examiner has failed to do.” Appeal Br.
37.
Thus we agree that the Examiner fails to establish a prima facie case
of obviousness of the subject matter of claims 13−15 and 24 over Marsh,
Osako, Skura, and Yokoi. For the foregoing reasons, we do not sustain the
rejection of claims 13−15 and 24 over Marsh, Osako, Skura, and Yokoi.

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Obviousness of claims 16 and 17 based on Marsh, Osako, Skura,
Yokoi, and Oyama; and claim 18 based on Marsh, Osako, Skura, Yokoi, and
Knutson.
The rejections are directed to claims 16–18, which depend either
directly or indirectly from independent claim 13. These rejections suffer
from the same deficiency as the rejection of claim 13, discussed supra. See
Ans. 18–20. Thus, for the same reasons discussed above for claim 13, will
not sustain the rejection of claims 16–18 over the cited prior art.
Obviousness of claims 22 and 23 based on Knutson, Skura, and Yokoi.
We are persuaded by Appellant’s contentions that the Examiner failed
to establish a prima facie showing of obviousness in rejecting claims 22 and
23 over Knutson, Skura, and Yokoi.
The Examiner finds that “KNUTSON teaches a toothed belt
comprising: an elastomeric body; at least two teeth formed of said body and
having a nominal tooth pitch of about 9.525 mm [0032]” (Ans. 22) but
does not teach a jacket comprising fabric and disposed along a
peripheral surface of said at least one tooth and having a
compressed jacket thickness in the range from 0.57 mm to
about 0.7 mm; and at least one cord embedded in said body and
having a cord diameter in the range from 0.6 mm to about 0.8
mm.
Id.
Although Knutson does not teach any jacket thickness, the Examiner
determines that “it would have been obvious to one having ordinary skill in
the art at the time the invention was made to modify the jacket thickness in
KNUTSON between the range of 0.5 mm to 0.7 mm to create a belt with a
durable cover.” Ans. 22. Furthermore, even though Knutson does not teach
any cord diameter, the Examiner determines “[i]t would have been obvious
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to one having ordinary skill in the art at the time the invention was made to
modify the cord diameter in KNUTSON as modified to 0.63 mm to create a
lighter and more flexible belt.” Id. at 23. The Examiner explains that “it has
been held that where the general conditions of a claim are disclosed in the
prior art, discovering the optimum or workable ranges involves only routine
skill in the art” citing In re Aller, 220 F.2d 454 (CCPA 1955). Id.
In KSR, the Supreme Court stated that “rejections on obviousness
grounds cannot be sustained by mere conclusory statements; instead, there
must be some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.” KSR, 550 U.S. at 418.
However, we find no basis in this rejection that qualifies as articulated
reasoning with some rational underpinnings to support the legal conclusion
of obviousness.
For the foregoing reasons, we do not sustain the rejection of claims 22
and 23 over Knutson, Skura, and Yokoi.

DECISION
We REVERSE the Examiner’s rejections.

REVERSED

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