Ex Parte Nakanishi

Patent Trial and Appeal Board

Sep 28, 2016

12087896 (P.T.A.B. Sep. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/087,896 07/17/2008
513 7590 09/30/2016
WENDEROTH, LIND & PONACK, LLP,
1030 15th Street, N.W.,
Suite 400 East
Washington, DC 20005-1503
FIRST NAMED INVENTOR
Shigeru Nakanishi
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
2008_1096A 3889
EXAMINER
LOPEZ, RICARDO E.
ART UNIT PAPER NUMBER
1786
NOTIFICATION DATE DELIVERY MODE
09/30/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
ddalecki@wenderoth.com
eoa@wenderoth.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE
THE PA TENT TRIAL AND APPEAL BOARD
Ex parte SHIGERU NAKANISHI1
Appeal2015-003868
Application 12/087,896
Technology Center 1700
Before TERRY J. OWENS, MARK NAGUMO, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
NAGUMO, Administrative Patent Judge.
DECISION ON APPEAL
Shigeru Nakanishi ("Yoz-Ami") timely appeals under
35 U.S.C. § 134(a) from a non-final rejection2 of claims 15 and 20-23,
which are all of the pending claims. We have jurisdiction. 35 U.S.C. § 6.
We reverse.
1 The real party in interest is identified as Yoz-Ami Corporation. (Appeal
Brief, filed 5 September 2014 ("Br."), 2.)
2 Office action mailed 27 February 2014 ("Office Action"; cited as "OA"),
in response to a Request for Continued Examination (37 C.F.R. §113)
filed 24 January 2014.
Appeal2015-003868
Application 12/087,896
A. Introduction3
OPINION
The subject matter on appeal relates to a tapered multifilament yam
comprising a plurality of ultra-high molecular weight polyethylene4
filaments. Such yams are said to be useful as lines and leaders for fly
fishing. (Spec. 1, 11. 6-8.) Prior art tapered yams are said to have impaired
smoothness, resulting in snags, reduced slipperiness of the line through the
guides of a fishing rod, and greater tendency for the line to be cut.
(Id. at 11. 25-29.) The '896 Specification describes prior art methods
(JP-2002-339184) in which tapered multifilament yams are produced by
varying the take-over speed relative to the feed speed while the yam is
drawn during processing. (Id. at 2, 11. 5-20.) According to the
Specification, however, the drawing rate was set between about 1.01 to 15,
for previously undrawn filaments, and between about 1.01 to about 5,
preferably between about 1.01 to 3. (Id. at 2, l. 24, to 3, l. 2.) As a
consequence, the Specification teaches, "[i]t was not easy to increase the
ratio of the thickness of the thickest part [of the yam] to the thickness of the
thinnest part of a tapered multifilament yam." (Id. at 3, 11. 2--4.)
3 Application 12/087,896, Tapered multifilament yarn and process for
producing the same, filed 17 July 2008 as the national stage under
35 U.S.C. § 371 of PCT/JP2006/326213, filed 28 December 2006, and
claiming the benefit of Jan application filed in Japan on 18 January 2006.
We refer to the '"896 Specification," which we cite as "Spec."
4 The Specification defines ultra-high molecular weight polyethylene as
ethylene homopolymers or ethylene-lower a-olefins copolymers having a
molecular weight of not less than about 200,000. (Spec. 14, 11. 13-14.)
2
Appeal2015-003868
Application 12/087,896
This problem is said to be overcome by providing "a process in which
a filament is subjected to a drawing treatment and a part of the filament in
the longitudinal direction is subjected to a shrinking treatment." (Id. at 6,
11. 11-15.) This new process is said to be "unlike a conventional process in
which a filament is subjected to only a drawing treatment when the filament
is formed into a tapered shape by a drawing apparatus." (Id. at 11. 15-17.)
Claim 15 is representative and reads:
A tapered multifilament yam comprising a plurality of ultra-
high molecular weight polyethylene filaments and
not comprising metal particles or a synthetic resin coating,
wherein the plurality of ultra-high molecular weight
polyethylene filaments are tapered by a process
comprising: subjecting an ultra-high molecular weight
polyethylene filament to a tapering process comprising
feeding the filament into a drawing apparatus wherein:
a first portion of the filament is subjected to taking-
over on the drawing apparatus at a take-over speed
faster than a feed speed and
thereby stretching and thinning the first portion of
the filament, and
a second portion of the filament is subjected to taking-
over on the drawing apparatus at a take-over speed
slower than a feed speed at a ratio of the take-over
speed to the feed speed of not less than 0.5 and less
than 1. 0 under heating and
thereby shrinking and thickening the second portion
of the filament to a thickness greater than a thickness
of the second portion of the filament prior to the
tapering process,
wherein a ratio of a cross section area of a thickest part to
a cross section area of a thinnest part of the tapered
multifilament yarn is not less than about 6. 0, and
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Appeal2015-003868
Application 12/087,896
wherein if the ultra-high molecular weight polyethylene
filament is subjected to a drawing process prior to the
tapering process,
then a value 11 of the tapered filament equal to (highest
take-over speed to the feed speed ratio of the tapering
process )/(lowest take-over speed to the feed speed ratio
of the tapering process) is not more than 0.8 times a
value 11 of a tapered filament which is not subject to a
drawing process prior to the tapering process.
(Claims App., Br. 19; some indentation, paragraphing, and emphasis added.)
The Examiner maintains the following ground of rejection5 :
Claims 15 and 20-23 stand rejected under 35 U.S.C. § 103(a) in
view of Nakanishi. 6
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
Yoz-Ami urges, inter alia, that the Examiner erred harmfully because
"Nakanishi fails to teach or suggest filaments having a shrunken and
thickened portion." (Br. 12, 11. 4-5 (title capitalization omitted).) "Instead,"
according to Yoz-Ami, "Nakanishi only teaches a filament is subjected to
taking-over on the drawing apparatus at a take-over speed faster than a feed
speed and thereby stretching and thinning the filament." (Id. at 11. 25-28.)
5 Examiner's Answer mailed 8 December 2014 ("Ans.").
6 Shigeru Nakanishi, Specific gravity-adjustable yarns with low elongation
rate and excellent abrasion resistance, U.S. Patent Application Publication
2003/0082381 Al (2003) (assigned to Yoz-Ami Corp., the real-party-in-
interest in this appeal).
4
Appeal2015-003868
Application 12/087,896
Yoz-Ami quotes a passage in Nakanishi [0154] in support of its
argument (Br. 12, 1. 29, to 13, 1. 4), which reads:
To be more specific, the drawing rate is, for example, within
the range from about 1.01 to 15. More specifically, in the
case that filament which has already been drawn in the
manufacturing process is used as a constituting filament like
a commercially available filament, the drawing rate is from
about 1.01 to 5, preferably from about 1.01 to 3, more
preferably from about 2.2 to 3. On the other hand, when said
non-drawn filament is used as constituting filament, the
drawing rate is from about 1.01 to 15, preferably from
about 2 to 10, more preferably from about 4 to 8.
(Nakanishi 8 [0154].) All of the drawing rates, as Yoz-Ami points out, are
greater than 1, indicating stretching and thinning, not shrinking and
thickening, of the filament. (Br. 13, 11. 5-8.)
The Examiner finds that "[t]he particular settings for takeover and
feeding speeds would be a result effective variable related to the final
application of the tapered filament." (OA 5, 11. 16-18.) From this premise,
the Examiner reasons that it would have been obvious "to select a particular
combination of drawing speeds (that is feed and takeover speeds) depending
upon the types of constituting filaments or the thickness of yams as taught
by Nakanishi at [0152], in order to obtain a desired cross section or diameter
ratio for the tapered filament." (Id. at 11. 13-16.)
While the Examiner recognizes-correctly-that the recitation of
process limitations in a claim to a product does not exclude products made
by other processes, the Examiner fails to give proper weight to the properties
arising from the "shrinking and thickening of the second portion" that occur
when the take-over speed is less than the feed speed.
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Appeal2015-003868
Application 12/087,896
The Specification explains that "even in the case of an undrawn
filament, the filament has oriented molecules [the long ultra-high molecular
weight polyethylenes] because of its fibrous texture." (Spec. 8, 11. 2--4.) In
the words of the Specification, "[ w ]hen the ... drawable filament is heated,
molecular orientation thereof tries to relax and then shrink, and therefore the
filament shrinks and gets thickened in the lengthwise direction depending on
the ratio of the take-over speed to the feed speed of the filament." (Id. at 7,
11. 23-27.) Clearly, this shrinking and thickening occurs only when the take-
up speed is less than the feed speed, i.e., when the filament is not under
tension. In contrast, when the take-up speed is greater than the feed speed,
the heated filament is under tension, the molecular orientation cannot relax,
and the filament shrinks in diameter as it stretches in response to the
extensional force.
The Examiner does not make any findings of fact regarding
limitations recited in any of the dependent claims that cure this :thndamental
flaw in the rejections of record.
In conclusion, the weight of the evidence supports Yoz-Ami's
arguments that filaments that are stretched and thinned when the take-over
speed is larger than the feed speed are physically different from filaments
that are shrunken and thickened when the take-over speed is lower than the
feed speed. Moreover, the weight of the evidence supports Yoz-Ami's
arguments that Nakanishi does not describe any process in which filaments
are shrunken and thickened. We conclude that the Examiner erred harmfully
in concluding that Nakanishi would have suggested a tapered multifilament
yam within the scope of the appealed claims.
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Appeal2015-003868
Application 12/087,896
We need not consider Yoz-Ami's arguments for patentability based
on unexpected results.
C. Order
It is ORDERED that the rejection of claims 15 and 20-23 is reversed.
REVERSED
7