Ex Parte Morita

Board of Patent Appeals and Interferences

Jul 27, 2006

10020956 (B.P.A.I. Jul. 27, 2006)

The opinion in support of the decision being entered today
was not written for publication in
and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
___________

Ex parte KIYOO MORITA
___________

Appeal No. 2006 - 1622
Application No. 10/020,956
___________

HEARD: JULY 11, 2006
___________

Before FRANKFORT, BAHR, and FETTING, Administrative Patent Judges.

FETTING, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal under 35 U.S.C. §134 from the examiner's final
rejection of claims 1 through 3, which are all of the claims pending in this application.

We REVERSE.
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Appeal No. 2006-1622
Application No. 10/020,956

BACKGROUND

The appellant's invention relates to a tape reel. An understanding of the
invention can be derived from a reading of exemplary claim 1, which is reproduced
below.
1. A tape reel comprising:
a hub having a cylindrical shape; and
an upper flange and a lower flange respectively provided at an upper
end and a lower end of said hub,
wherein a magnetic tape is wrapped around an outer peripheral
surface of said hub, and
means for gradually decreasing a distance between said upper flange
and said lower flange outside the outer peripheral surface of the hub, as
said magnetic tape is being wrapped around said hub, by deflecting said
upper and lower flanges towards each other over an entire circumference
thereof.

PRIOR ART
The prior art reference of record relied upon by the examiner in rejecting the appealed
claims is:
Iwahashi 4,807,826 Feb. 28, 1989

REJECTIONS
Claims 1-3 stand rejected under 35 U.S.C. § 102(b) as being anticipated by
Iwahashi.
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Application No. 10/020,956
Rather than reiterate the conflicting viewpoints advanced by the examiner and
appellant regarding the above-noted rejection, we make reference to the examiner's
answer (mailed March 31, 2005) and supplemental answer (mailed January 10, 2006)
for the reasoning in support of the rejection, and to appellant's brief and affidavit (filed
January 10, 2005) and first reply brief (filed May 25, 2005) and second reply brief (filed
January 31, 2006) for the arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to the
appellant's specification and claims, to the applied prior art reference, and to the
respective positions articulated by the appellant and the examiner. As a consequence of
our review, we make the determinations that follow.

Claims 1-3 rejected under 35 U.S.C. § 102(b) as being anticipated by Iwahashi.

We note that the appellant argues these claims as a group. Accordingly, we select
claim 1 as representative of the group.
The examiner argues that the means element of claim 1 is met in Iwahashi by the
force of the tape on the hub. Specifically, the examiner states that Iwahashi shows that
the
means for gradually decreasing a distance between said upper flange
(17) and said Iower flange outside an outer peripheral surface of the hub,
as said magnetic tape is being wrapped around said hub (when the
magnetic tape wrapping force in a radial direction is so great that both the
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Appeal No. 2006-1622
Application No. 10/020,956
hub (11) and the inner rib (12) are deformed which would inherently
deflect both flanges), by deflecting said upper and Iower flanges toward
each other over an entire circumference thereof [See Final Rej. at p. 2]
The appellant responded
In the present case, the Examiner appears to set forth a hypothetical
situation where the magnetic tape wrapping force in a radial direction is
“greater than the hub and the inner rib structures” so that the magnetic
tape wrapping force would inherently deform both the hub and the inner
hub. However, as noted above, Iwahashi expressly discloses that the ribs
21 prevent the outer cylindrical section from radially and inwardly bending
by the pressure exerted from the tape wound therearound, so that this
hypothetical situation described by the Examiner would never happen in
Iwahashi. [See Brief at p. 13]
The examiner then responded
The invention of Iwahashi ‘826 is designed to prevent the inward radial
deformation, but the prior art teaches Appellant's claimed invention by its
recognition of the deformation and an attempt to prevent it. The reference
as a whole teaches the concept of means for gradually decreasing a
distance between the flanges and the hub as the magnetic tape is
wrapped around the hub. Iwahashi '826 recognizes the problem with an
inward radial bending to the hub caused by the tape tightly wrapped
around the hub. As the hub deforms radially, both of the flanges deflect
inwardly to the hub. Iwahashi '826 attempts to solve the problem by
shortening the length of the rib which prevents the outer cylindrical section
from an inward radial deformation when the tape is tightly wound around
the outer cylindrical section, see column 2, lines 1-17. [See Answer at p.
5]
The appellant finally responded regarding this bending in the prior art
Thus, the radially inward bending or deformation is at an upper portion
of the outer cylindrical section of the tape reel. Quite clearly, nothing is
ever mentioned about the upper and lower flanges of the tape reel
deflecting towards each other over an entire circumference thereof let
alone “means for gradually decreasing a distance between said upper
flange and said lower flange outside the outer peripheral surface of the
hub, as said magnetic tape is being wrapped around said hub, by
deflecting said upper and lower flanges towards each other over an entire
circumference thereof” as recited in Appellant's independent claim 1.
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Appeal No. 2006-1622
Application No. 10/020,956
Thus, the Examiner's assertion that as the hub deforms radially (in
Iwahashi ‘826), both of the flanges deflect inwardly to the hub is sheer
speculation and finds no support in the portion cited by the Examiner (i.e.,
column 2, lines 1-17), nor any other part of the reference. [See Reply Brief
at p. 7]
As to the examiner’s original premise that given sufficient force, the tape would
inherently deform the hub sufficiently to cause the deflection of the flanges as claimed,
the examiner has shown no evidence that such force would be present in operation of
the tape reel, let alone that such force would be present before the tape would break, in
the hub as used in Iwahashi or its described prior art. This structural feature, of
designing the flexing of the hub so that such deformation may occur during operation, is
precisely the structural characteristic described as being provided by the claimed
means. In this regard, the appellant’s specification explains:
In order to keep the distances H3 and H4 always within the certain
range, rigidity of the hub 11, manner of fixing the upper and the lower
flanges 12, 13 to the hub 11, material of the tape reel 10 and so on are
established. Preferably, the rigidity is determined by setting the thickness
T of the outer peripheral wall 11a, by setting shape and thickness of the
center part 11b and the support walls 11c and so on.
Wrapping torque for wrapping the magnetic tape 20 around the tape
reel 10 is also established so that the distances H3 and H4 may be always
within the certain range. [See Specification at p. 10]
As to the examiner’s argument in the answer that the prior art in Iwahashi described
such deflection of both flanges, we note that the appellant is correct in interpreting this
prior art as creating less strength near one of the flanges than the other, and would only
cause one flange to deflect, if it deflected at all. We further note that Iwahashi does not
explicitly recite such deflection, but this deflection was inferred by the examiner based
on its explicit description of hub deformation near one, but not both, of the flanges.
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Application No. 10/020,956
Therefore, since the examiner has presented no evidence that either the invention or
the prior art described in Iwahashi deflects their upper and lower flanges towards each
other over an entire circumference thereof, we find the examiner's arguments to be
unpersuasive.
Accordingly, we do not sustain the examiner’s rejection of claims 1-3 as rejected
under 35 U.S.C. § 102(b) as being anticipated by Iwahashi.
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Appeal No. 2006-1622
Application No. 10/020,956
CONCLUSION
To summarize, the rejection of claims 1-3 under 35 U.S.C. § 102(b) as being
anticipated by Iwahashi, is not sustained.
REVERSED

CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JENNIFER D. BAHR ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ANTON W. FETTING )
Administrative Patent Judge )

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Appeal No. 2006-1622
Application No. 10/020,956
Sughrue, Mion, Zinn, Macpeak & Seas
2100 Pennsylvania Avenue, N.W.
Washington, DC 20037

AWF/ki
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