Ex parte Locotos

Board of Patent Appeals and Interferences

Jul 19, 1999

08366985 (B.P.A.I. Jul. 19, 1999)

Application for patent filed December 30, 1994. 1
According to the appellant, the application is a continuation
of Application No. 07/765,374, filed September 25, 1991, now
U.S. Patent No. 5,378,087.
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for publication in a law journal and (2) is not binding precedent of the Board.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. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte FRANK M. LOCOTOS
____________
Appeal No. 1999-1529
Application No. 08/366,9851
____________
ON BRIEF
____________
Before McCANDLISH, Senior Administrative Patent Judge, COHEN and
NASE, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1, 38, 39 and 41 to 49. Claims 50 to 52
have been objected to as depending from a non-allowed claim.
Claims 2 to 37, 40 and 53 have been canceled.
Appeal No. 1999-1529
Application No. 08/366,985
We REVERSE.
Appeal No. 1999-1529 Page 3
Application No. 08/366,985
In determining the teachings of Harding, we will rely on2
the translation provided by the PTO. A copy of the
translation is attached for the appellant's convenience.
BACKGROUND
The appellant's invention relates to a mining support and
a method of supporting rock in a mine. An understanding of
the invention can be derived from a reading of exemplary
claims 1, 38 and 39, which appear in the appendix to the
appellant's brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Yokota et al. (Yokota) 3,899,892 Aug. 19,
1975
Scott 4,265,571 May 5,
1981
Harding et al. (Harding) 1,143,471 Feb. 14,2
1963
(Germany)
Cranko et al. (Cranko) 0 126 534 Nov. 28,
1984
(European Patent Application)
Claim 39 stands rejected under 35 U.S.C. § 102(b) as
being anticipated by Scott.
Appeal No. 1999-1529 Page 4
Application No. 08/366,985
Since the obviousness-type double patenting rejection3
set forth in the final rejection (Paper No. 15, mailed
December 17, 1997) was not set forth in the examiner's answer
we conclude that this ground of rejection has been withdrawn
by the examiner. See Ex parte Emm, 118 USPQ 180, 181 (Bd.
App. 1957).
Claims 1 and 41 to 49 stand rejected under 35 U.S.C. §
103 as being unpatentable over Scott in view of Harding or
Yokota.
Claim 38 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Cranko.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejections, we make reference to the answer (Paper No. 20,
mailed December 7, 1998) for the examiner's complete reasoning
in support of the rejections, and to the brief (Paper No. 19,
filed October 26, 1998) for the appellant's arguments
thereagainst.3
OPINION
Appeal No. 1999-1529 Page 5
Application No. 08/366,985
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the
examiner. As a consequence of our review, we make the
determinations which follow.
The anticipation rejection
We will not sustain the rejection of claim 39 under
35 U.S.C. § 102(b) as being anticipated by Scott.
To support a rejection of a claim under 35 U.S.C. §
102(b), it must be shown that each element of the claim is
found, either expressly described or under principles of
inherency, in a single prior art reference. See Kalman v.
Kimberly-Clark Corp., 713 F.2d 760, 772, 218 USPQ 781, 789
(Fed. Cir. 1983), cert. denied, 465 U.S. 1026 (1984).
Claim 39 recites a method of supporting rock in a mine
comprising, inter alia, the steps of (1) drilling a first bore
hole and a second bore hole; (2) inserting a resin cartridge
Appeal No. 1999-1529 Page 6
Application No. 08/366,985
into each bore hole; (3) orienting a first and second end of a
cable within a separate bore hole, each end having a wire
strand positioned about it for mixing the resin cartridges and
a drive ferrule; (4) forcing the ends of the cable into their
respective bore holes; (5) puncturing the respective resin
cartridges with the respective cables [sic, ends of the
cable]; (6) mixing the resin in the resin cartridges so the
resin will harden the respective ends of the cable as the ends
of the cable move through the ruptured resin cartridges; and
(7) tightening the cable between the bore holes.
The appellant argues (brief, pp. 14-15) that (1) Scott
does not teach the claimed "resin cartridge" since Scott
teaches a cement capsule and cement is not a resin, and (2)
Scott does not teach the claimed "mixing" step. We agree. In
that regard, while Scott may suggest using an anchor material
other than cement (see column 4, lines 48-52), Scott does not
teach the use of resin as the anchor material. Accordingly,
claim 39 is not anticipated by Scott. Likewise, Scott does
not teach the claimed "mixing" step since Scott does not teach
mixing resin with the ends of his cable 16.
Appeal No. 1999-1529 Page 7
Application No. 08/366,985
Since all the limitations of claim 39 are taught by Scott
for the reasons stated above, the decision of the examiner to
reject claim 39 under 35 U.S.C. § 102(b) is reversed.
The obviousness rejections
We will not sustain the rejection of claims 1, 38 and 41
to 49 under 35 U.S.C. § 103.
In rejecting claims under 35 U.S.C. § 103, the examiner
bears the initial burden of presenting a prima facie case of
obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28
USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie case of
obviousness is established by presenting evidence that would
have led one of ordinary skill in the art to combine the
relevant teachings to arrive at the claimed invention. See In
re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir.
1988) and In re Lintner, 458 F.2d 1013, 1016, 173 USPQ 560,
562 (CCPA 1972).
Claims 1 and 41 to 49
Appeal No. 1999-1529 Page 8
Application No. 08/366,985
Independent claim 1 recites a mining support for
supporting rock within a mine comprising, inter alia, a cable,
a bending restrictor, and "means for mixing resin in a resin
cartridge as the cable is inserted into a bore hole drilled in
the rock in which the resin cartridge is disposed, said mixing
means positioned about the cable."
The examiner implicitly found (answer, pp. 3-4) that the
only difference between Scott and claim 1 was the bending
restrictor limitation. With regard to this difference, the
examiner determined that it would have been obvious to one of
ordinary skill in the art at the time the invention was made
to have substituted a bending restrictor such as taught by
Harding or Yokota for the tube 21A of Scott.
The appellant argues (brief, pp. 17-20) that the
examiner's implicit finding that the only difference between
Scott and claim 1 was the bending restrictor limitation is in
error. Specifically, the appellant contends that Scott does
not teach or suggest a resin cartridge as explained above.
Appeal No. 1999-1529 Page 9
Application No. 08/366,985
While Scott does suggest the use of material other than4
cement as the anchor material, Scott does not specifically
suggest the use of resin as the anchor material.
Scott's reinforcing bar (see Figure 7) is not considered5
by us to be an equivalent of the claimed "mixing means" since
the spiral portion thereof is not positioned about the cable.
Additionally, the appellant argues that Scott does not teach
or suggest the recited "mixing means."
We agree with the appellant that Scott does not teach or
suggest a resin cartridge or mixing means as set forth in
claim 1. In our view, Scott does not teach or suggest the use
of resin as the anchor material. Likewise, Scott does not4
teach or suggest the claimed "mixing means" since Scott does
not teach mixing resin in a resin cartridge with the ends of
his cable 16 and Scott does not disclose a mixing means
positioned about the cable 16. In addition, we have reviewed5
the references to Harding and Yokota but find nothing therein
which makes up for the deficiencies of Scott discussed above.
Appeal No. 1999-1529 Page 10
Application No. 08/366,985
For the reasons stated above, the decision of the
examiner to reject independent claim 1, and claims 41 to 49
dependent thereon, under 35 U.S.C. § 103 is reversed.
Claim 38
Claim 38 recites a method of supporting rock in a mine
comprising, inter alia, the steps of (1) digging a bore hole
in rock; (2) inserting a resin cartridge into the bore hole;
(3) inserting a cable into the bore hole; (4) mixing the resin
with the cable to form an anchor with the rock; and
(5) tensioning the cable.
The examiner implicitly found (answer, pp. 4-5) that the
only difference between Cranko and claim 38 was the tensioning
step. With regard to this difference, the examiner determined
that it would have been obvious to one of ordinary skill in
the art at the time the invention was made to have tensioned
Cranko's anchor cable since it was old and well known in the
art.
Appeal No. 1999-1529 Page 11
Application No. 08/366,985
The appellant argues (brief, p. 24) that the examiner's
implicit finding that the only difference between Cranko and
claim 38 was the tensioning step is in error. Specifically,
the appellant contends that Cranko does not teach or suggest a
resin cartridge. Additionally, the appellant argues that
Cranko does not teach or suggest the recited mixing step.
We do not agree with the appellant that Cranko does not
teach or suggest a resin cartridge as set forth in claim 38.
In that regard, the two compartment capsule shown in Figures 3
and 4 is clearly disclosed on pages 9-10 as containing a
resin. Thus, it is our opinion that the claimed "resin
cartridge" is readable on Cranko's two compartment capsule.
We agree with the appellant, however, that Cranko does
not teach or suggest the claimed mixing step. In that regard,
Cranko does not teach or suggest that the resin in Cranko's
two compartment capsule is mixed with a cable to form an
anchor with the rock. Instead, in the embodiment of Figures 3
and 4, Cranko teaches that the resin in Cranko's two
compartment capsule is mixed with a bolt B to form an anchor,
Appeal No. 1999-1529 Page 12
Application No. 08/366,985
not the rope R (i.e., cable) which is anchored by a cement
capsule in the embodiment of Figures 1 and 2.
For the reasons stated above, the decision of the
examiner to reject claim 38 under 35 U.S.C. § 103 is reversed.
Appeal No. 1999-1529 Page 13
Application No. 08/366,985
CONCLUSION
To summarize, the decision of the examiner to reject
claim 39 under 35 U.S.C. § 102(b) is reversed and the decision
of the examiner to reject claims 1, 38 and 41 to 49 under 35
U.S.C.
§ 103 is reversed.
REVERSED
HARRISON E. McCANDLISH )
Senior Administrative Patent Judge
)
)
)
)
) BOARD OF PATENT
IRWIN CHARLES COHEN ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 1999-1529 Page 14
Application No. 08/366,985
ANSEL M. SCHWARTZ
ONE STERLING PLAZA
201 NORTH CRAIG STREET
SUITE 304
PITTSBURGH, PA 15213
APPEAL NO. 1999-1529 - JUDGE NASE
APPLICATION NO. 08/366,985
APJ NASE
APJ COHEN
SAPJ McCANDLISH
DECISION: REVERSED
Prepared By: Gloria Henderson
DRAFT TYPED: 08 Jul 99
FINAL TYPED: