Ex Parte Nakano

Board of Patent Appeals and Interferences

Mar 13, 2000

08217079 (B.P.A.I. Mar. 13, 2000)

1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is not
binding precedent of the Board.
Paper No. 29
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte YOSHIHITO NAKANO
__________
Appeal No. 1997-1332
Application 08/217,079
__________
ON BRIEF
__________
Before THOMAS, MARTIN, and FRAHM, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant has appealed to the Board from the examiner's
final rejection of claims 26 through 46, which constitute all the
claims pending in the application.
Representative claim 26 is reproduced below:
26. An electric noise absorber for surrounding a cord of an
electronic device comprising:
two bodies of a magnetic substance, each said body having a
hemi-cylindrical groove for receiving the cord;
two case members for covering the cord when interlocked,
each case member having two opposed end walls and containing one
said body; and
Appeal No. 1997-1332
Application 08/217,079
1 Our understanding of this reference is based upon a translation provided by the
Scientific and Technical Information Center of the Patent and Trademark Office. A copy of the
translation is enclosed with this decision.
2
means for selectively interlocking said case members with
one another such that said bodies surround said cord;
means integrally formed in said case members, during
manufacture of said case members, for resiliently retaining each
body in its associated case member even when said case members
are separated from one another; and
wherein a hemi-hole is formed on each of the opposed end
walls of the case members for passage of the cord to and from the
groove;
teeth are integrally formed along on edge of at least one of
the hemi-holes of each opposed end of said noise absorber for
directly securing the cord when the case members are closed, at
least a root portion of said teeth of said at least one of the
hemi-holes lies in a plane defined by one of said end walls of
said case member and said teeth extend from said root portion;
and
said means for resiliently retaining each body within the
associated case member allows the body to move freely relative to
the associated case member while preventing the body from being
inadvertently removed from the associated case member when said
case members are separated from one another.
The following references are relied on by the examiner:
Wahl 3,325,591 Jun. 13, 1967
Mears, Jr. (Mears) 3,846,725 Nov. 5, 1974
Heilmann et al. (Heilmann) 4,005,380 Jan. 25, 1977
Hamisch, Jr. (Hamisch) 4,049,357 Sep. 20, 1977
Nakano 4,885,559 Dec. 5, 1989
(effective filing date Mar. 12, 1987)
Onishi (Japan) 55-12829 Apr. 4, 19801
Kashiwabuchi (Japan) 56-3561 Jan. 14, 19811
Iritani et al. (Iritani)
(Japan) 61-34705 Mar. 3, 19861
Appeal No. 1997-1332
Application 08/217,079
2 Both appellant's translation of Konno submitted on April 28, 1994 as well as the one
obtained through the Patent and Trademark Office, indicate a publication date of Konno of April
15, 1987. We note further, however, that the top of page 1 of appellant's translation further
indicates that the underling application was laid-open on May 27, 1982 under [another serial
number]." Therefore, appellant does not argue that this reference is not prior art to him.
3
Konno et al. (Konno) (Japan) 62-14770 Apr. 15, 19871,2
All claims on appeal, claims 26 through 46, stand rejected
under the judicially created doctrine of obviousness-type double
patenting as being unpatentable over claims 1 through 10 of the
appellant's earlier patent, U.S. Patent 4,885,559, as well as
provisionally rejected under the same doctrine as being
unpatentable over claims 44 through 63 of copending application
Serial No. 08/217,078, filed on March 24, 1994. The present
application, the just noted patent, and the pending application
all stem from common parent applications.
Additionally, all claims on appeal, claims 26 through 46,
stand rejected under 35 U.S.C. § 103. As evidence of
obviousness, the examiner relies upon the collective teachings
of Konno, Heilmann, Mears, Wahl, Kashiwabuchi, and Onishi as to
claims 26 through 29, 33, 34, 36, 37 and 39 through 46. To this
basic rejection, the examiner adds Iritani as to claims 30, 35,
and 38. Similarly, to the basic combination of references, the
examiner adds Hamisch as to claims 31 and 32.
Appeal No. 1997-1332
Application 08/217,079
4
Rather than repeat the positions of the appellant and the
examiner, reference is made to the brief and the answer for the
respective details thereof.
OPINION
Turning first to the two obviousness-type double patenting
rejections, we sustain both of them. As to both rejections
appellant states at the top of page 21 of the brief "that the
filing of any necessary terminal disclaimer(s) be held in
abeyance until such time as this application otherwise recites
allowable subject matter." The appellant also asserts
substantially the same thing at page 23, the end of the brief.
It is thus apparent that appellant does not traverse the two
of these rejections on the merits. Therefore, the examiner
correctly points out at pages 8 and 9 of the answer that
appellant "does not dispute this rejection," where the examiner
discusses each of them separately.
Finally, as to these rejections, we note that "[c]laims may
be provisionally rejected for obviousness-type double patenting
over claims in a commonly assigned, copending patent application.
In re Wetterau, 356 F.2d 556, 557-58, 148 USPQ 499, 501 (CCPA
1966). This is true even if the claims in the copending
application stand rejected. Ex parte Karol, 8 USPQ2d 1771, 1773
(Bd. Pat. App. & Int. 1988).
Appeal No. 1997-1332
Application 08/217,079
5
We now turn to the rejection of the claims under 35 U.S.C.
§ 103. Firstly, we address the rejection of claims 26 through
29, 33, 34, 36, 37 and 39 through 46 in light of the collective
teachings and showings of Konno, Heilmann, Mears, Wahl,
Kashiwabuchi, and Onishi. Included within this claim grouping
are independent claims 26, 40, and 43.
We reverse this rejection.
Each of independent claims 26, 40, and 43 on appeal recite
in part the following:
means integrally formed in said case members, during
manufacture of said case members, for resiliently
retaining each body in its associated case member even
when said case members are separated from one another;
. . .
said means for resiliently retaining each body
within the associated case member allows the body to
move freely relative to the associated case member
while preventing the body from being inadvertently
removed from the associated case member when said case
members are separated from one another.
The principal argument presented by appellant relates to
these features recited in the above noted quoted material. Two
characteristics of this quoted material are that the magnetic
bodies are freely movable relative to the case members and that
the magnetic bodies are not disconnected from the case member
once assembled therewith as noted by the examiner at the middle
of page 5 of the answer. To these we add that each body is
Appeal No. 1997-1332
Application 08/217,079
6
resilently retained in each case member even when the case
members are separated from one another.
The combined teachings and suggestions of the six references
relied upon by the examiner in the initially stated rejection
would not have led the artisan to the claimed subject matter.
The examiner has provided little reasoning to persuade us that
the artisan would have found it obvious to have combined the
teachings of the references to yield the features of the above
quoted material of each independent claim on appeal.
The principal references to Konno and Heilmann appear to be
presumptively combined by the examiner. From our study of each
of them, we find first that Konno's ferrite members 4 and 5
appear to be fixedly retained within their respective cover
portions 13, 14 with no free movability therewithin. On the
other hand, Heilmann's inductive clip-on pulse pick-up device
permits the assembled ferrite members 18 and 19, which are
adhesively attached to their respective synthetic resin holders
20 and 21, to move freely within each of the handle portions of
the device in Figure 1 by means of the bias spring means 24, 25
and the projections 22 which allow the assembled holders 20, 21
to move somewhat freely within the jaw shells 10 and 11. We are
unpersuaded by the examiner's reasons for utilizing the teachings
of Heilmann in the device of Konno and we can find none of our
own from the teachings and suggestions of both references.
Appeal No. 1997-1332
Application 08/217,079
7
Similarly, the teaching value of Kashiwabuchi and Onishi,
both of which indicate various manners in which ferrite magnets
may be retained within a small motor housing, also do not
persuade us of the obviousness of the requirements of each
independent claim that the two bodies of magnetic material be
both resiliently retained within each claimed case member but
also do so in such a manner that the magnetic bodies are allowed
to move freely relative to their respective case members at the
same time as not being inadvertently removed when the case
members are separated from one another as required by the claims
on appeal. These features would be highly undersirable in small
DC motors. Neither Wahl nor Mears bear on the noted features
because they appear to be relied upon and contain teachings only
relative to the location and the shape of the claimed teeth
members.
In view of the foregoing, we have reversed the examiner's
basic rejection of each independent claim 26, 40, and 43 on
appeal and some of the dependent claims therefrom. As such, we
also must reverse the rejection of the remaining dependent claims
utilizing the additional references to Iritani and Hamisch as
well.
Although we reverse the three stated rejections of all the
claims on appeal under 35 U.S.C. § 103, the decision of the
examiner is affirmed because we have sustained both obviousness-
Appeal No. 1997-1332
Application 08/217,079
8
type double patenting rejections of all the claims on appeal.
Therefore, the decision of the examiner is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR §
1.136(a).
AFFIRMED
)
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOHN C. MARTIN )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
ERIC FRAHM )
Administrative Patent Judge )
JDT/cam
Appeal No. 1997-1332
Application 08/217,079
9
Anthony G.M. Davis
Davis, Bujold & Steck
Fourth Floor
500 Commercial Street
Manchester, NH 03101