Ex Parte Mercuri

Board of Patent Appeals and Interferences

Sep 28, 2006

09869094 (B.P.A.I. Sep. 28, 2006)

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written for publication and is not binding precedent of the Board.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

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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte GERVASIO MERCURI
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Appeal 2006-2319
Application 09/869,094
Technology Center 1700
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Decided: September 28, 2006
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Before GARRIS, WARREN, and LINCK, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal from the Examiner’s decision rejecting
claims 45-66.
We REVERSE.
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Application 09/869,094

2
The subject matter on appeal relates to a tubular structure casing for
use with food products. With reference to the Appellant’s drawing, the
tubular structure comprises circumferential threads 16 (see Fig. 3)
comprising an elastic thread 11 in combination with a yarn 12 wrapped
therearound (see Figs. 1-2), whereby the circumferential threads become taut
after a predetermined amount of stretch due to the yarn being straightened to
an extent where the yarn resists tensile force (see Fig. 2), whereupon the
circumferential threads become inextensible before the elastic limit of the
elastic thread is reached. This appealed subject matter is adequately
represented by claim 45, which is the sole independent claim on appeal and
which reads as follows:
45. A tubular structure casing for use with food products,
comprising:

circumferential threads extending around a periphery of a
tubular casing and spaced at intervals along said tubular casing, said
circumferential threads comprising an elastic thread in combination with a
yarn wrapped around and along a length of said elastic thread, wherein a
number of turns of said yarn are provided around said elastic thread for a
given length of said circumferential threads [and] are determined as a
function of an elastic limit of said elastic thread so that said circumferential
threads become taut after a predetermined amount of stretch due to said yarn
being straightened to an extent where said yarn resists tensile force
whereupon said circumferential threads become inextensible before the
elastic limit of said elastic thread is reached.

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Application 09/869,094

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The references set forth below are relied upon by the Examiner as
evidence of anticipation and obviousness:
Krauss US 3,248,905 May 3, 1966
Levin US 3,866,444 Feb. 18, 1975
Mercuri US 5,712,007 Jan. 27, 1998
Mintz US 5,855,231 Jan. 5, 1999

Claims 45-47, 54-57, and 63-66 are rejected under 35 U.S.C. § 102(b)
as being anticipated by either Levin or Krauss.
The remaining claims on appeal are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Levin or Krauss in varying combinations with the
other references relied upon by the Examiner.
We refer to the Brief and Reply Brief and to the Answer for a
complete exposition of the opposing viewpoints expressed by the Appellant
and by the Examiner concerning the rejections before us in this appeal.
Neither Levin nor Krauss contains an express teaching of the claim 45
functional limitation “so that said circumferential threads become taut after a
predetermined amount of stretch due to said yarn being straightened to an
extent where said yarn resists tensile force whereupon said circumferential
threads become inextensible before the elastic limit of said elastic thread is
reached.” It is the Examiner’s basic position that the casings of Levin and
Krauss inherently possess the capability of performing the claim 45 function
(see the Answer in its entirety).
“In relying upon the theory of inherency, the Examiner must provide a
basis in fact and/or technical reasoning to reasonably support the
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Application 09/869,094

4
determination that the allegedly inherent characteristic necessarily flows
from the teachings of the applied prior art.” Ex parte Levy, 17 USPQ2d
1461, 1464 (BPAI 1990). The fact that a certain result or characteristic may
occur or be present in the prior art is not sufficient to establish inherency of
that result or characteristic. In re Rijckaert, 9 F.3d 1531, 1534,
28 USPQ2d 1955, 1957 (CCPA 1955). The mere fact that a certain thing
may result from a given set of circumstances is not sufficient. In re
Robertson, 169 F.3d 743, 745, 49 USPQ2d 1949, 1950-51 (Fed. Cir. 1999).
On the record of this appeal, the Examiner has failed to carry his
burden of providing a basis-in-fact and/or technical reasoning to reasonably
support the determination that the allegedly inherent functional characteristic
under consideration necessarily flows from the teachings of Levin or Krauss.
Levy, 17 USPQ2d at 1464. Contrary to the Examiner’s apparent belief, the
respective casings of Levin and Krauss do not inherently possess the
capability of performing the claim 45 function merely because these casings
include “circumferential threads” which comprise an elastic rubber thread
having yarn wrapped therearound. This is because the “circumferential
threads” of Levin and Krauss may become inextensible as a result of
reaching the elastic limit of the elastic rubber thread (rather than as a result
of the yarn resisting tensile force before the elastic limit of the elastic rubber
thread is reached pursuant to the claim under review).
Indeed, the teachings of Levin and Krauss militate against the
Examiner’s inherency position. For example, Levin teaches that, when his
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“circumferential threads” 12 are extended under tension, the “covering
strands [see elements 12c and 12d in Fig. 5 which the Examiner equates to
the here claimed yarn] become somewhat spaced” (col. 3, ll. 26-30
(emphasis added)). The fact that the strands (or yarns) become only
“somewhat” spaced, when the “circumferential threads” 12 are tensioned,
reflects that the elastic limit of these “circumferential threads” is not
provided by the strands (or yarns) as required by the independent claim on
appeal. Similarly, Krauss teaches that his cords (e.g., see elements 28 and
30 in Fig. 4 which the Examiner equates to the here claimed yarn) are
wrapped around the elastic core in order to “prevent exposure of the elastic
core which tends to contract on exposure to heat” (col. 2, ll. 20-21).
Moreover, claim 1 of Krauss expressly recites that the elastic core has a
covering (i.e., the afore-noted cords) “which affords continuous and
uninterrupted protection for said core under stretch conditions.” The fact
that Krauss’s covering provides the elastic core with continuous and
uninterrupted protection under stretch conditions militates against the
Examiner’s position that this covering of cords becomes straightened to an
extent where the cords resist tensile force as required by claim 45.
In light of the foregoing, it is our determination that the Examiner has
failed to establish a prima facie case of anticipation based on inherency.
Therefore, we cannot sustain the Examiner’s § 102 rejections based on either
Levin or Krauss. We also cannot sustain any of the § 103 rejections
advanced on this appeal since the other references applied in these rejections
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have not been relied upon by the Examiner to supply the above-discussed
deficiencies of Levin and Krauss.
The decision of the Examiner is reversed.
REVERSED

clj

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