Ex Parte LEGRAND

Board of Patent Appeals and Interferences

Mar 27, 2003

09037584 (B.P.A.I. Mar. 27, 2003)

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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today was not written for publication and is not binding
precedent of the Board.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. 31

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte EMMANUEL LEGRAND

______________

Appeal No. 2002-0794
Application 09/037,584
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HEARD: March 20, 2003
_______________

Before WARREN, WALTZ and DELMENDO, Administrative Patent Judges.

WARREN, Administrative Patent Judge.
Decision on Appeal and Opinion
We have carefully considered the record in this appeal under 35 U.S.C. § 134, including
the opposing views of the examiner, in the answer, and appellant, in the brief and reply brief, and
based on our review, find that we cannot sustain the rejection of appealed claims 11 through 13
and 15 under 35 U.S.C. § 103(a) as being unpatentable over Boland in view of Young, Sr., et al.
(Young), and the rejection of appealed claim 14 under 35 U.S.C. § 103(a) as being unpatentable
over Boland in view of Young as applied to appealed claims 11 through 13 and 15 above, and
further in view of Harbeke et al. (Harbeke). 1,2

1 Appealed claims 11 through 15 are all of the claims in the application. See the amendment of
April 10, 2000 (Paper No. 11) and of November 29, 2002 (Paper No. 17).
2 Answer, pages 4-5.
Appeal No. 2002-0794
Application 09/037,584
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In order to establish a prima facie case of obviousness, the examiner must show that some
objective teaching, suggestion or motivation in the applied prior art taken as a whole and/or
knowledge generally available to one of ordinary skill in this art would have led that person to
the claimed invention as a whole, including each and every limitation of the claims, without
recourse to the teachings in appellant’s disclosure. See generally, In re Rouffet, 149 F.3d 1350,
1358, 47 USPQ2d 1453, 1458 (Fed. Cir. 1998); Pro-Mold and Tool Co. v. Great Lakes Plastics
Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1629-30 (Fed. Cir. 1996); In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Fritch, 972 F.2d 1260, 1265-66,
23 USPQ2d 1780, 1783-84 (Fed. Cir. 1992); In re Laskowski, 871 F.2d 115, 10 USPQ2d 1397
(Fed. Cir. 1989); In re Fine, 837 F.2d 1071, 1074-76, 5 USPQ2d 1596, 1598-1600 (Fed. Cir.
1988); In re Dow Chem. Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531-32 (Fed. Cir. 1988).
The requirement for objective factual underpinnings for a rejection under § 103(a) extends to the
determination of whether the references can be combined. See In re Lee, 277 F.3d 1338, 1343,
61 USPQ2d 1430, 1433-34 (Fed. Cir. 2002), and cases cited therein.
As appellant points out (e.g., brief, pages 2, 4 and 5), when considered in light of the
written description in the specification as interpreted by one of ordinary skill in this art, see, e.g.,
In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997), the plain
language of appealed claim 11, and appealed claims dependent therein, requires that the claimed
cutting line comprises at least “a layer of adhesive . . . bonded all over” the monofilament core,
thus securing a granular coating “entirely covering an outer surface of” the core. Appellant
contends that the applied prior art would not have suggested to one of ordinary skill in this art a
cutting line having a granular coating “which completely covers the” monofilament core as
required for the claimed “cutting line for a rotary head brush cutter and edge trimmer”
encompassed by the appealed claims (brief, pages 4 and 5).
We find that Boland discloses a “composite cutting line [that] includes a nylon blend
carrier which is impregnated from 1%-30% (preferably 6%-15%) with an inorganic grit material”
which “provides a superior balance between line integrity and cutting ability” (col. 1,
lines 60-62, and col. 3, lines 64-66; emphasis supplied). Thus, one of ordinary skill in this art
would have found it apparent from this disclosure and from Boland FIG. 1 that the “grit material”
Appeal No. 2002-0794
Application 09/037,584
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is not carried on the surface of the monofilament core and does not entirely cover an outer
surface of the core as required by the appealed claims.3 The reference further teaches that
“[h]igher concentrations of grit improves cutting ability but decreases line integrity” (col. 3, lines
66-67).
The examiner recognizes that the cutting line of Boland is limited by line integrity and
relies on Young, in particular, col. 16, lines 20-35, to show that a fiber can be continuously
coated by an adhesive which is then covered by abrasive particles to continuously coat “the entire
outer surface . . . to maximize coating properties such as abrasion” (answer, pages 4-5). The
examiner further takes the position “that using particles joined by a binder to the surface of
Boland would not destroy the function of Boland” (answer, page 7).
On this record, we must agree with appellant. It is well settled that the examiner must
point to some teaching, suggestion or motivation in the prior art to support the combination of
references. See Lee, supra; Smith Industries medical Systems, Inc. v. Vital Signs, Inc., 183 F.3d
1347, 1356, 51 USPQ2d 1415, 1420-21 (Fed. Cir. 1999); In re Mayne, 1043 F.3d 1339, 1342,
41 USPQ2d 1451, 1454 (Fed. Cir. 1997); Fritch, 972 F.2d at 1266, 23 USPQ2d at 1783; ACS
Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ 9292, 933 (Fed. Cir.
1984); In re Keller, 642 F.2d 413, 425-26, 208 USPQ 871, 881-82 (CCPA 1981); see also Dow
Chem., 837 F.2d at 473, 5 USPQ2d at 1531 (“The consistent criterion for determination of
obviousness is whether the prior art would have suggested to one of ordinary skill in the art that
[the claimed process] should be carried out and would have a reasonable likelihood of success,
viewed in the light of the prior art. [Citations omitted] Both the suggestion and the expectation of
success must be founded in the prior art, not in the applicant’s disclosure.”).
While we agree with the examiner that Young would have reasonably suggested to one of
ordinary skill in the art that a fiber entirely coated with abrasive particles through an adhesive
would be more abrasive than a fiber which contains a lower concentration of such particles, the
examiner has not established with evidence that this person would have reasonably substituted a

3 It is well settled that a reference stands for all of the specific teachings thereof as well as the
inferences one of ordinary skill in this art would have reasonably been expected to draw
therefrom, see generally, Fritch, 972 F. at 1264-65, 23 USPQ2d at 1782-83, presuming skill on
the part of this person. In re Sovish, 769 F.2d 738, 743, 226 USPQ 771, 774 (Fed. Cir. 1985).
Appeal No. 2002-0794
Application 09/037,584
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monofilament entirely coated with abrasive particles as the cutting line in place of the
monofilament cutting line of Boland in which a lower concentration of abrasive particles are
embedded in the line with a reasonable expectation of avoiding the problem of cutting line
integrity with higher concentrations of abrasive particles taught by Boland. Indeed, on this
record, we find that Boland would have discouraged any expectation that the problem of line
integrity with higher concentration of abrasive particles can be avoided by using a monofilament
line entirely coated with abrasive particles.4
Thus, we conclude that on this record, the examiner has not established that, prima facie,
one of ordinary skill in this art would have combined teachings of Boland and Young to arrive at
the claimed cutting line encompassed by the appealed claims, and that with respect to appealed
claim 14, Harbeke does not add the necessary evidence to support a prima facie case because, as
appellant points out, this reference does not disclose a cutting line that contains abrasive
particles.
Accordingly, we reverse both grounds of rejection.

The examiner’s decision is reversed.
Reversed

4 See In re Gurley, 27 F.3d 551, 552-53, 31 USPQ2d 1130, 1131-32 (Fed. Cir. 1994) (“A
reference may be said to teach away when a person of ordinary skill, upon reading the reference
would be discouraged from following the path set out in the reference, or would be led in a
direction divergent from the path that was taken by the applicant. The degree of teaching away
will of course depend on the particular facts; in general, a reference will teach away if it suggests
that the line of development flowing from the reference’s disclosure is unlikely to be productive
of the result sought by the applicant. [Citations omitted.]”).
Appeal No. 2002-0794
Application 09/037,584
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CHARLES F. WARREN )
Administrative Patent Judge )
)
)
)
THOMAS A. WALTZ ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
ROMULO H. DELMENDO )
Administrative Patent Judge )

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