Ex parte OHMI et al.

Board of Patent Appeals and Interferences

Jan 16, 2001

08022199 (B.P.A.I. Jan. 16, 2001)

1
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not written for publication and is not binding precedent of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. 29
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte HIROSHI OHMI and HIROSHI SHIMIZU
__________
Appeal No. 1998-1571
Application No. 08/022,199
__________
ON BRIEF
__________
Before GARRIS, LIEBERMAN, and JEFFREY T. SMITH, Administrative
Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the refusal of the
examiner to allow claims 9, 12, 20 and 21 as amended
subsequent to the final rejection. These are all of the
claims pending in the application.
Appeal No. 1998-1571
Application No. 08/022,199
2
The subject matter on appeal relates to a method for
producing a cylindrical coil comprising the steps of imparting
a catalyst to the surface of a cylindrical substrate having a
particular range of heat conductivity, deactivating portions
of the catalyst via irradiation with a laser beam whereby
groove portions are formed by removing a part of the substrate
corresponding to the groove portions, and applying a plating
solution to the substrate which reacts with the catalyst
remaining on the substrate. Further details of this appealed
subject matter are set forth in representative independent
claim 9, a copy of which taken from the appellants’ brief is
appended to this decision.
The references relied upon by the examiner as evidence of
obviousness are:
Arima et al. (Arima) 4,361,597 Nov. 30,
1982
Halliwell et al. (Halliwell) 4,686,114 Aug.
11, 1987
Antoon 4,870,751 Oct. 3,
1989
Liu et al. (Liu) 4,882,200 Nov. 21,
1989
Morita et al. (Japanese) 62-218580 Sep.
25, 1987
All of the claims on appeal are rejected under 35 U.S.C.
Appeal No. 1998-1571
Application No. 08/022,199
In fact, we agree with the appellants that Antoon’s1
teaching at lines 52 through 58 in column 1 militates against
such a provision.
3
§ 103 as being unpatentable over Liu or Halliwell or Antoon in
view of the Japanese reference or Arima.
We cannot sustain this rejection.
As correctly argued by the appellants, the applied prior
art contains no teaching or suggestion of the groove formation
feature required by the independent claim on appeal. The
examiner urges that it would have been obvious to provide the
method of Liu, Halliwell or Antoon with this feature in view
of the Japanese reference. However, the method of the
Japanese reference is completely different from the respective
methods of the primary references (as well as the here claimed
method). For this reason, we perceive no reason and the
examiner proffers none for providing any of the primary
reference methods with the groove formation feature of the
Japanese reference method.1
With further regard to the appellants’ claimed groove
formation feature, the examiner makes the following comments
on page 5 of his answer:
Appeal No. 1998-1571
Application No. 08/022,199
4
It is the Examiner position that the formation
of grooves in the substrate are not necessary for
the invention to produce the desired results. In
support of the Examiner position, the specification
(pg. 16, lines 26-29), discloses that groove
formation by the laser is not necessary for the
invention to work, but merely to have the catalyst
deactivated.
It is not immediately apparent to us what point the
examiner is attempting to make with these comments.
Regardless, we consider it appropriate to respond to these
comments by clarifying that the appealed claims expressly
require the formation of groove portions and that these groove
portions are disclosed in the appellants’ specification as
serving a desirable purpose (e.g., see the last full paragraph
on specification page 7).
The decision of the examiner is reversed.
REVERSED
Bradley R. Garris )
Administrative Patent Judge )
)
)
)
Paul Lieberman ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
Appeal No. 1998-1571
Application No. 08/022,199
5
)
)
Jeffrey T. Smith )
Administrative Patent Judge )
BRG:tdl
Appeal No. 1998-1571
Application No. 08/022,199
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CUSHMAN, DARBY & CUSHMAN
1100 New York Avenue, N.W.
Ninth Floor
Washington, DC 20005-3918
Appeal No. 1998-1571
Application No. 08/022,199
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APPENDIX
9. A method for producing a cylindrical coil comprising
the steps of:
(i) imparting an electroless plating reaction catalyst to
at least an outside surface of an insulation cylindrical
substrate having a heat conductivity of 4.5 to 8.4 W/mEC;
(ii) deactivating the electroless plating reaction
catalyst in the form of a continuous winding on a side surface
of the insulation cylindrical substrate by irradiating a
predetermined portion of the electroless plating reaction
catalyst by a laser beam, whereby groove portions are formed
by removing a part of the substrate corresponding to the
groove portions, from which the electroless plating reaction
catalyst is removed, and the electroless plating reaction
catalyst of sides of the groove portions are deactivated;
(iii) applying an electroless plating solution to the
insulation cylindrical substrate; and
(iv) allowing the electroless plating reaction catalyst
to react with an electroless plating solution.
Appeal No. 1998-1571
Application No. 08/022,199
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