Ex parte Saito et al.

Board of Patent Appeals and Interferences

Nov 30, 2001

08128740 (B.P.A.I. Nov. 30, 2001)

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publication and is not binding precedent of the Board.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. 46
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte KAZUO SAITO
and
TAKASHI HIRONAKA

_____________
Appeal No. 1998-2920
Application No. 08/128,740
______________
ON BRIEF
_______________
Before PAK, WARREN, and OWENS, Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134
from the examiner’s final rejection of claims 21 through 23
and 26 through 31, which are all of the claims pending in the
above-identified application.
Claim 21 is representative of the subject matter on
Appeal No. 1998-2920
Application No. 08/128,740
2
appeal and reads as follows:
21. An article of manufacture comprising a heat-
resistant adhesive provided between two surfaces, said
adhesive comprising a carbonized resin prepared by firing
a resin in a vacuum or an inert atmosphere, wherein the
carbonized resin is a carbonized polycarbodiimide resin.
In support of his rejection, the examiner relies on the
following prior art references:
Merry 4,513,173 Apr. 23,
1985
Takabatake 4,975,261 Dec. 4,
1990
Claims 21 through 23 and 26 through 31 stand rejected
under 35 U.S.C. § 103 as unpatentable over the combined
disclosures of Takabatake and Merry.
We reverse the aforementioned § 103 rejection. Our
reasons for this determination follow.
Takabatake is directed to a high density, high strength
carbon-carbon composite which is useful for machine parts, and
electrical and electronic instrument parts. See column 1,
lines 7-20, together with abstract. To form this composite,
an aggregate, such as a bundle of carbon fiber, is initially
Appeal No. 1998-2920
Application No. 08/128,740
3
immersed in a liquid carbonizable material selected from the
group consisting of a thermosetting resin, such as a phenolic
resin, furan resin or the like and a pitch. See column 3,
lines 15-41. The impregnated aggregate is carbonized under
inert
Appeal No. 1998-2920
Application No. 08/128,740
4
atmosphere or pressurized inert atmosphere. See column 5,
lines 26-34. Takabatake’s composite is said (column 3, lines
1-11) to
overcome the problem of loss of mechanical
strength of composite material due to formation
of a large number of cracks and detachment caused
by insufficiency of adhesivity on the interfacial
surface of a reinforcement material and a matrix
at the time of shaping and carbonization of
carbon[-]carbon composite materials . . . .
The examiner acknowledges that Takabatake does not teach
employing a polycarbodiimide. See Answer, page 5. To remedy
this deficiency, the examiner relies on the disclosure of
Merry. Id. According to the examiner (Id.), “Merry discloses
that polycarbodiimide or phenolic resins may be used as a
carbon source (col. 1, line 31).” Relying on this disclosure,
the examiner concludes (Answer, page 5) that:
It would have been obvious to one having ordinary
skill in the art at the time of the invention
to substitute polycarbodiimide for the resin
of Takabatake in view of the teaching in
Merry that these materials are functional
equivalents.
We are not convinced by the examiner’s assertion. On
this record, we determine that the examiner has not
demonstrated that the applied prior art references as a whole
Appeal No. 1998-2920
Application No. 08/128,740
5
would have suggested the claimed subject matter within the
meaning of 35 U.S.C. § 103. Merry, for example, is directed
to intumescent fire protective sheaths for electrical cables.
See column 1, lines 5-8. Although Merry describes both
polycarbodiimide and phenolic resins as char-forming resins,
they are used as active fire retardant materials for
intumescent fire protective sheaths. See column 1, lines 29-
32. In other words, they are not shown to be functionally
equivalent for the purpose of forming the high density, high
strength carbon-carbon composite described in Takabatake. The
examiner simply has not established that the polycarbodiimide
described in Merry is useful for forming the high density,
high strength carbon-carbon composite described in Takabatake.
See Answer in its entirety. That is, nowhere does the
examiner evince that the polycarbodiimide described in Merry
is useful for avoiding “formation of a large number of cracks
and detachment caused by insufficiency of adhesivity on the
interfacial surface of a reinforcement material and a matrix”
(Takabatake, col. 3, ll. 3-6). The examiner has not even
asserted that the polycarbodiimide described in Merry is a
thermosetting resin having similar properties as phenolic and
Appeal No. 1998-2920
Application No. 08/128,740
6
furan resins as required by Takabatake.
Appeal No. 1998-2920
Application No. 08/128,740
7
Given this record, we concur with appellants that the
examiner has not established a prima facie case of obviousness
regarding the claimed subject matter within the meaning of 35
U.S.C. § 103. Accordingly, we reverse the examiner’s decision
rejecting all of the appealed claims under 35 U.S.C. § 103.
REVERSED
CHUNG K. PAK )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHARLES F. WARREN ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
TERRY J. OWENS )
Administrative Patent Judge )
CKP:hh
Appeal No. 1998-2920
Application No. 08/128,740
8
KUBOVCIK AND KUBOVCIK
THE FARRAGUT BLDG.
900 17 STREET, N.W.TH
SUITE 710
WASHINGTON, DC 20006