Ex Parte Muzumura

Board of Patent Appeals and Interferences

Jan 5, 2007

09816774 (B.P.A.I. Jan. 5, 2007)

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for publication and is not binding precedent of the Board.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

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte YOSHINORI MUZUMURA
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Appeal 2006-3312
Application 09/816,774
Technology Center 1700
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Decided: January 5, 2007
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Before CHUNG K. PAK, CATHERINE Q. TIMM, and LINDA M.
GAUDETTE, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL
This appeal involves claims 1-7, the only claims pending in this
application. We have jurisdiction over the appeal pursuant to 35 U.S.C.
§ 134.
Appeal 2006-3312
Application 09/816,774

INTRODUCTION
The subject matter on appeal relates to a lubricating member for use in
the lubrication of rolling bearing, linear motion devices (ball screw, linear
guide, etc.) or the like for food-processing equipment (Specification 1:5-8).
Conventionally, such lubricating members include a base resin and a
lubricant (Specification 1:9 to 2:3). While the materials are selected to be
non-toxic, at high operating temperatures the base resin may be eluted from
the lubricating member and become harmful to human beings (Specification
2:3-6). The claims are directed to a process of operating the lubricating
member at temperatures low enough to prevent elution of the resin. Claim 1
is illustrative:
1. A method of using a lubricating member for food-processing
equipment, said method comprising:

preparing a food-processing equipment lubricating member
made of a polyolefin resin and a lubricant; and

using said lubricating member at a temperature in the range
from the pour point of said lubricant to not higher than 70ºC.

The Examiner relies on the following prior art references to show
unpatentability:
ASO (as translated) JP 10-36875 Feb. 10, 1998
YABE US 6,119,813 Sep. 19, 2000

The Examiner rejects claims 1-7 under 35 U.S.C. § 103(a) as
unpatentable over either Yabe or Aso.1
We affirm substantially for the reasons advanced by the Examiner in
the Answer and add the following primarily for emphasis.

1 The Examiner and Appellant refer to Aso as JP ‘875.
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Application 09/816,774

OPINION
There is no dispute that both Yabe and Aso suggest the use of a
lubricating member made of a polyolefin resin and a lubricant in a food-
processing operation as found by the Examiner (Answer 3-4). The
Examiner acknowledges that neither reference specifically discloses the
temperatures at which the member is used. However, the Examiner finds
that the disclosures of the references provide evidence that normal operating
temperatures for such equipment include temperatures within the claimed
range of from the pour point to not higher than 70°C (Answer 3-6). It
follows that it would have been obvious for the ordinary food processor to
operate the food processing equipment at such normal operating
temperatures.
Appellant seems to believe that the Examiner’s rejection is based on a
theory of inherency (Br. 11). That is not the case. The rejection is based
upon the knowledge of one of ordinary skill in the art with regard to food-
processing applications and the key question is: Would it have been obvious
to one of ordinary skill in the art to operate the lubricating member of the
references at temperatures in the claimed range in the ordinary course of a
food-processing operation. Given that food-processing applications include
such things as mixing, kneading, cooling, and filling (Aso, p. 3, ¶ 0002),
operations usually conducted at room temperature (20°C) or below, it is
evident that employing the lubricant member in food-processing equipment
for such uses would result in operation at temperatures below 70°C. We
find no evidence to support Appellant’s assertion that friction would cause
the lubricating member to heat up to such an extent, during operation at
normal operating temperatures, such as 20°C, that the lubricating member
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Appeal 2006-3312
Application 09/816,774

would reach the much higher temperature of 70°C (Br. 11). Appellant’s
assertion appears to be contrary to the purpose of the lubricating member,
which is to reduce friction.
In the above context of the rejection, it matters not that the references
are silent regarding a temperature limitation (Br. 10) or that the references
do not discuss an elution problem at high temperatures (Br. 9 and Reply Br.
5). Nor must the reference preclude every high temperature operation
(Reply Br. 6-7). The references suggest using the lubricating member in
food processing equipment. The consideration of the question of
obviousness includes the consideration of how one of ordinary skill in the art
would have used that food-processing equipment given the knowledge in the
art at the time of the invention. At least some food processing applications
such as mixing and cooling take place at ambient or lower temperatures,
temperatures within the claimed range.
We conclude that the Examiner has established a prima facie case of
obviousness with respect to the subject matter of claims 1-7 that Appellant
has not sufficiently rebutted.

CONCLUSION
In summary, the Examiner rejected claims 1-7 under 35 U.S.C. § 103(a).
We affirm the decision of the Examiner.
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Appeal 2006-3312
Application 09/816,774

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

tf/cam

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