Ex Parte Morimoto et al

Board of Patent Appeals and Interferences

Jun 21, 2002

08486494 (B.P.A.I. Jun. 21, 2002)

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written for publication and is not binding precedent of the Board.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 KAZUYA MORIMOTO,
NOBUYOSHI UTSUNO,
and
TOKUDA ISAMU
_____________
Appeal No. 2001-0112
Application No. 08/486,494
______________
ON BRIEF
_______________
Before STAAB, McQUADE, and NASE, Administrative Patent Judges.
STAAB, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s final
rejection of claims 1-3, 10-17, 21 and 22. Claims 6-8, the only
other claims currently pending, have been allowed.
Appellants’ invention pertains to a hollow fishing rod
having protrusions affixed to the inner surface thereof to hold
the fishing line away from the inner surface of the rod, wherein
the protrusions are formed from the inner surface of the fishing
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rod itself, and wherein the protrusions include reinforcing
fibers oriented in the circumferential direction. The appealed
claims are reproduced in the appendix to appellants’ brief.
The references applied in the final rejection are:
Cushman 2,777,239 Jan. 15, 1957
Suzue et al. (Suzue) 5,245,779 Sep. 21, 1993
Tukihara 5,328,742 Jul. 12, 1994
Claims 1-3, 10, 11, 21 and 22 stand rejected under 35 U.S.C.
§ 102(b), as being anticipated by Tukihara.
Claim 14 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Tukihara.
Claims 12, 13, and 17 stand rejected under 35 U.S.C. § 103
as being unpatentable over Tukihara in view of Suzue.
Claims 15 and 16 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Tukihara in view of Cushman.
Reference is made to appellants’ brief (Paper No. 26) and to
the examiner’s answer (Paper No. 27) for the respective positions
of appellants and the examiner regarding the merits of these
rejections.
DISCUSSION
We take up first for consideration the anticipation
rejection of claims 1-3, 10, 11, 21 and 22 based on Tukihara. As
stated on page 3 of the brief, “[t]he heart of the present
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invention is that reinforcing fibers are included in the
protrusive portions of the inner surface of the fishing rod.” To
this end, independent claim 1 calls for a pass-through fishing
rod
having an inner circumferential surface, wherein
notched surface portions and protrusive surface
portions are formed in said inner circumferential
surface of said rod body, and wherein said reinforcing
fibers are disposed in said protrusive surface portions
in the circumferential direction.
Independent claim 6 is directed to a pass-through fishing
rod comprising a rod body having first and second layers,
said rod [body] having an inner circumferential
surface, wherein said first layer comprises a narrow
prepreg tape containing reinforcing fibers set in the
circumferential direction, said tape being placed along
the circumferential direction . . . and wherein said
second layer comprises prepreg tape made from
reinforcing fibers and resin . . . wherein differences
in level between said first layer and said second layer
form notched surface portions and protrusive surface
portions on the inner circumferential surface of the
fishing rod.
Independent claim 17 sets forth a pass-through fishing rod
comprising a rod body
having an inner circumferential surface wherein a
plurality of notched surface portions and protrusive
surface portions are formed, wherein said rod body
comprises a thermoplastic or thermosetting resin and
reinforcing fibers, and wherein said reinforcing
fibers are oriented in the circumferential direction
within said protrusive surface portions.
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Tukihara, the alleged anticipatory reference, is directed to
a rod and method of manufacturing the same. The object of
Tukihara is to provide a rod which has appropriate degrees of
flexibility and rigidity throughout its length (column 1, lines
48-53). This is achieved
by the feature that a prepreg tape is wound to have
adjacent winds partly overlapping each other in a tip
end region of the rod, and spaced from each other
axially of the rod in a butt end region of the rod.
[Column 1, lines 55-58.]
Tukihara discloses a number of embodiments of the invention
for accomplishing the stated objective. These include a Figures
1-3 embodiment (column 2, line 67, through column 3, line 16)
wherein first a prepreg sheet 6 having reinforcing fibers
oriented axially of the rod and having a width extending over the
length of the rod is wound on a mandrel 4, whereafter a prepreg
tape 5 having reinforced fibers oriented longitudinally thereof
is wound on the mandrel, and wherein the tape is wound such that
its winding partly overlap each other at the tip end of the rod
and are spaced from each other at the opposite end of the rod.
Also disclosed is a Figures 4(a)-4(b) embodiment (column 3, lines
27-31) wherein a prepreg tape 5’ is wound on the mandrel prior to
prepreg sheet 6, a Figures 5(a)-5(b) embodiment wherein prepreg
sheets 6a and 6b having reinforcing fibers laid out on the bias
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are utilized, and a Figures 6(a)-6(b) embodiment wherein a
plurality of prepreg sheets having fibers oriented respectively
in the longitudinal direction and the circumferential direction
are employed. Finally, Figure 7 illustrates a “still further
embodiment” (column 2, lines 59-60). Although not further
described in the specification, it appears that this drawing
figure corresponds to the situation described at column 4, lines
9-13, where an additional pattern winding is applied to the butt
end region of the rod.
Insofar as we can determine, the examiner has advanced
alternate theories of anticipation. The examiner’s first theory
of anticipation is set forth in the paragraph spanning pages
3 and 4 of the answer and is based on Tukihara’s Figure
7 embodiment, wherein a prepreg tape is spirally wound about a
mandrel, whereafter a pattern winding 7 having reinforcing fibers
running in both axial and circumferential directions is applied
thereover at the butt end of the rod. This theory of
anticipation appears to be premised on considering the inner
surface of the winding layer 7 as corresponding to the claimed
inner circumferential surface of the rod. According to the
examiner (answer, page 4), the appealed claims would then read on
the Figure 7 construction because
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[the] sheet [7] composed of both axially aligned as
well as circumferentially aligned carbon fibers is
wrapped filling in the spaces between the adjacent
convolutions of the spirally wound reinforcing prepreg
tape material. This inherently forms a rod body having
an inner circumferential surface with protrusive
surface portions (between the spaced prepreg wraps [of
the spirally wound tape]) and notched surface portions
which are filled with circumferentially oriented
reinforcing fibers [of the spirally wound tape] . . . .
The examiner’s position in this regard is based on a
strained and unreasonable interpretation of what constitutes the
inner surface of the rod of Tukihara. Terms in a claim should be
interpreted in a manner consistent with the specification and
construed as those skilled in the art would construe them (see In
re Bond, 910 F.2d 831, 833, 15 USPQ2d 1566, 1567 (Fed. Cir.
1990), Specialty Composites v. Cabot Corp., 845 F.2d 981, 986,
6 USPQ2d 1601, 1604 (Fed. Cir. 1988) and In re Sneed, 710 F.2d
1544, 1548, 218 USPQ 385, 388 (Fed. Cir. 1983)). Here, we can
think of no circumstance where the artisan, consistent with the
appellants’ specification, would construe the inner surface of
winding layer 7 of Tukihara’s Figure 7 embodiment as
corresponding to the claimed inner surface of the rod.
Accordingly, we cannot support the examiner’s first theory of
anticipation.
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The examiner’s alternate theory of anticipation appears to
be based on considering the inner surface of the spirally wound
prepreg tape layer 5’ of Figure 4(a) as corresponding to the
claimed inner surface of the rod. The examiner explains:
The inner surface [of the rod] may also be considered
to be the inner surface of the [spirally wound] prepreg
layer [5’] where adjacent prepreg tape wraps partially
overlap their neighbors. This structure would
necessarily form a stepped inner surface in which the
adjacent tape convolution cannot completely fill and
form a perfectly smooth inner surface thereby
inherently forming protrusions and notches in the inner
surface of this layer. Moreover, this prepreg layer
may be the innermost layer of all of the layers . . .
of the fishing rod as is clearly set forth in column 3,
lines 23-31 [of Tukihara] . . . . [Answer, page 6.]
The examiner’s alternate theory lacks any reasonable support
in Tukihara and is based on speculation and conjecture.
Concerning layer 5’, we note column 3, lines 27-31, of Tukihara
where it is stated that “prepreg tape 5’ may be wound on the
mandrel 4 in advance as shown in FIG. 4(a) . . . [t]hen, a
prepreg tape 5 is wound to form the rod as shown in FIGS. 2 and
3” (emphasis added). Based on this description, we consider
layer 5’ to be an additional layer separate and distinct from the
prepreg tape described at column 1, lines 55-58, which prepreg
tape is at the heart of Tukihara’s invention. Accordingly, it is
not clear to what extent tape layers 5 and 5’ share the same
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structural characteristic. While it is certainly possible that
tape layer 5’ (1) might comprise reinforcing fibers oriented
axially of the tape such that when wrapped about the mandrel the
fibers are disposed in a circumferential direction, and (2) in
wrapping said tape layer around the mandrel the turns might
overlap adjacent turns, and (3) if adjacent turns overlap, void
spaces might result that might create notched surface portions
and protrusive surface portions on the inner circumferential
surface of the rod as set forth, in one form or another, in each
of the independent claims on appeal, it is well settled that
inherency may not be established by probabilities and
possibilities, but must instead be “the natural result flowing
from the operation as taught.” See In re Oelrich, 666 F.2d 578,
581, 212 USPQ 323, 326 (CCPA 1981). In the present case, the
disclosure of Tukihara does not provide an adequate factual basis
to establish that the natural result flowing from following the
teachings of that reference would be a pass-through fishing rod
comprising a rod body having an inner circumferential surface
with the characteristics disclosed and claimed by appellants.
Accordingly, we also cannot sustain the examiner’s alternate
theory of anticipation.
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In light of the above, the standing rejection of 1-3, 10,
11, 21 and 22 as being anticipated by Tukihara is not
sustainable.
The Section 103 rejection of claim 14 based on Tukihara has
also been considered. Even if we were to agree with the examiner
that the dimensions called for in dependent claim 14 are obvious
matters of design choice, the subject matter as a whole of claim
14, which depends from claim 1, would not result for the reasons
discussed above. Therefore the rejection of claim 14 also cannot
be sustained.
The Suzue reference additionally applied in the Section 103
rejection of 12, 13, and 17, and the Cushman reference
additionally applied in the Section 103 rejection of claims
15 and 16 have been considered, but do not make up for the
deficiencies of Tukihara discussed in our treatment of claims 1-
3, 10, 11, 21 and 22. Therefore, the Section 103 rejections of
these claims likewise cannot be sustained.
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The decision of the examiner is reversed.
REVERSED
LAWRENCE J. STAAB )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
LJS:hh
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