Ex Parte Okuzono et al

Patent Trial and Appeal Board

Oct 22, 2013

10596724 (P.T.A.B. Oct. 22, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte NORIYOSHI OKUZONO, HIROSHI MIYAJI,
and YOICHI TANAKA
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Appeal 2011-012770
Application 10/596,724
Technology Center 3700
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Before: PHILLIP J. KAUFFMAN, CHARLES N. GREENHUT, and
BART A. GERSTENBLITH, Administrative Patent Judges.

KAUFFMAN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-012770
Application 10/596,724

2
STATEMENT OF THE CASE
Appellants seek review of the Examiner’s decision to reject claims 1
and 3-6 under 35 U.S.C. § 103(a) as unpatentable over Dickey (US
6,240,588 B1; iss. Jun. 5, 2001). We have jurisdiction under 35 U.S.C.
§ 6(b).
We reverse.

The Invention
Appellants’ claimed invention “relates to a core for a cleaning sponge
roller, and more particularly, to a core attached to a cleaning sponge roller
for use in a cleaning process of the manufacture of substrate.” Spec. para.
[0001].1 Claim 1, reproduced below, is the sole independent claim on
appeal:
1. A core for a cleaning sponge roller, the core being in a
substantially cylindrical shape comprising:
a bore extending in an axial direction and a plurality of
small holes communicating between the bore and a
circumferential outer surface of the core, the plurality of small
holes are distributed both in a circumferential direction and in
an axial direction of the core and aligned along straight lines in
the axial direction, small holes in one of the straight lines and
small holes in a straight line adjacent to the one of the straight
lines are arranged on one and the same circumference of the
core; and
grooves recessed in the circumferential outer surface of
the core and extending in the axial direction of the core, the
small holes opening into the grooves,

1 We refer to the Pre-grant Publication (US 2007/0163066 A1; pub. Jul. 19,
2007) of the application at hand because Appellant references by paragraph
number rather than Specification page and line number. See, e.g., Reply Br.
2.
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Application 10/596,724

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wherein:
a diameter of the bore is 10 to 20 mm;
a diameter of the small holes is 2.5 to 5 mm; and
a total of cross-sectional areas of the plurality of
the small holes is 1.2 to 5 times larger than a cross-
sectional area of the bore.

OPINION
Independent claim 1 calls for a plurality of small holes aligned along
straight lines in the axial direction of the core, with the small holes in one of
the straight lines and the small holes in an adjacent straight line on the same
circumference of the core.
The Examiner initially found that Dickey discloses a core (tubular
core 250) having a bore (bore 270) diameter of between 0.060 and .35 inches
(1.524 - 8.98 mm), and a plurality of small holes (plurality of holes 260),
each of a diameter between .005 to .092 inches (0.12 to 2.34 mm), with the
plurality of small holes aligned along straight lines in the axial direction of
the core (core 270). Ans. 4; Office Action dated Jun. 15, 2010, at 2-3. The
dimensions of bore 270 and holes 260 relied upon by the Examiner
correspond to Dickey’s Figures 5A-C. Dickey, col. 7, ll. 16-32.
The Examiner failed to make a finding that the small holes (plurality
of holes 260) of one of the straight lines and the small holes of an adjacent
straight line are on the same circumference of the core (tubular core 250) as
called for in claim 1. Ans. 4-5. Appellants correctly observe that the
Examiner has not addressed this limitation. App. Br. 12.
Appeal 2011-012770
Application 10/596,724

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In response, the Examiner found that Dickey discloses in Figure 1A2
“the arrangement in which the small holes are arranged on one and the same
circumference of the core has been used in the prior art,” and further,
Brunelli3 discloses such an arrangement. Ans. 5 (citing Brunelli, col. 3,
ll. 45-54; figs. 1-3). Following this, the Examiner reiterates the findings
regarding the dimensions of Dickey’s bore (bore 270) and plurality of small
holes (plurality of holes 270) that correspond to Dickey’s Figures 5A-C.
Ans. 5-6.
In light of this, the Examiner has made two versions of the rejection:
one that relies upon two embodiments in Dickey, and a second that relies
upon, but does not positively include, Brunelli. The first version is deficient
in that the Examiner mixes the embodiments of Dickey’s Figures 1A and
Figures 5A-C without providing a reason for such modification of the
reference. The second version of the rejection is also deficient because the
Examiner rejected claim 1 as obvious over Dickey and did not positively
include Brunelli. See Ans. 4; In re Hoch, 428 F.2d 1341, 1342, n.3 (CCPA
1970) (“Where a reference is relied on to support a rejection, whether or not
in a ‘minor capacity,’ there would appear to be no excuse for not positively
including the reference in the statement of the rejection.”); see also Manual
of Patent Examining Procedure (MPEP) § 706.02(j) (8th Ed., Rev. 9, Aug.
2012). Even if the Examiner had positively included Brunelli, the Examiner
does not provide a reason for modifying Dickey’s small holes (plurality of
holes 260) so that small holes in one of those straight axial lines and those of

2 Figure 1A of Dickey depicts a prior art brush core. Dickey, col. 4, ll. 18-
19; fig. 1A.
3 US 6,076,217; iss. Jun. 20, 2000.
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an adjacent straight axial line are on the same circumference of the core as
claimed.
Consequently, we do not sustain the rejection of independent claim 1
and its dependent claims 3-6.

DECISION
We reverse the Examiner’s decision to reject claims 1 and 3-6.

REVERSED

mls