Ex Parte Sato et al

Board of Patent Appeals and Interferences

Aug 16, 2010

10523708 (B.P.A.I. Aug. 16, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/523,708 09/06/2005 Yoshitaka Sato GUA-UTO-318 8392
26683 7590 08/16/2010
THE GATES CORPORATION
IP LAW DEPT. 10-A3
1551 WEWATTA STREET
DENVER, CO 80202
EXAMINER
PILKINGTON, JAMES
ART UNIT PAPER NUMBER
3656
MAIL DATE DELIVERY MODE
08/16/2010 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte YOSHITAKA SATO, MASAMI SATO,
TSUTOMU TOKUNAGA, and SATOSHI FURUKAWA
____________________

Appeal 2009-005955
Application 10/523,708
Technology Center 3600
____________________

Before JOHN C. KERINS, STEFAN STAICOVICI, and KEN B.
BARRETT, Administrative Patent Judges.

BARRETT, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-005955
Application 10/523,708

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STATEMENT OF THE CASE
Yoshitaka Sato et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the final rejection of claims 1-11 and 13-15. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

THE INVENTION
Appellants’ claimed invention pertains to a belt for transmitting
rotational force in, for example, a scooter transmission. Spec. 1:6-8.
Claim 1, reproduced below, is representative of the subject matter on appeal.
1. A transmission belt comprising:
a belt body which is molded from a stock rubber;
chopped aramid fibers that are intermixed in said belt
body and oriented in a predetermined direction of said belt
body; and
chopped polyester fibers that are intermixed in said belt
body and oriented in said predetermined direction;
wherein chopped polyester fibers are longer than said
chopped aramid fibers.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Kumazaki US 5,674,143 Oct. 7, 1997
Kodama US 5,908,520 Jun. 1, 1999
Kinoshita US 6,132,328 Oct. 17, 2000
Ito US 2001/0039226 A1 Nov. 8, 2001
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The following Examiner’s rejections are before us for review:
1. Claims 1-7, 9-11, 13, and 14 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Ito and Kumazaki;
2. Claim 8 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ito, Kumazaki, and Kodama; and
3. Claim 15 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ito, Kumazaki, and Kinoshita.

ANALYSIS
1. Claims 1-7, 9-11, 13, and 14 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Ito and Kumazaki
Claims 1, 3, 6, and 9
Appellants set forth arguments pertaining to independent claim 1, but
do not offer separate arguments regarding dependent claims 3, 6, and 9. See
App. Br. 6-14. We select claim 1 as the representative claim, and claims 3,
6, and 9 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2009).
Independent claim 1 recites a transmission belt comprising aramid
fibers and polyester fibers intermixed in a rubber belt body “wherein
chopped polyester fibers are longer than said chopped aramid fibers.”
The Examiner made the undisputed findings that Ito discloses a belt
body having aramid fibers and a belt body having polyester fibers, but does
not disclose a belt having both. Ans. 3; App. Br. 7. The Examiner further
found that Ito discloses that the polyester fibers are longer than the aramid
fibers. Ans. 3. Although Appellants contend that this finding is based on an
unreasonable interpretation of Ito, Appellants concede that Ito discloses a
fiber length of 1 to 10 mm, with aramid fibers, when used, having a
preferred length of 3 to 5 mm, and polyester fibers, when used, having a
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preferred length of 5 to 10 mm. App. Br. 7; see also Ito 3, para. [0052]. We
agree with, and adopt as our own, the Examiner’s finding that Ito discloses
polyester fibers longer than aramid fibers.
The Examiner further found that Kumazaki teaches a belt made of a
combination of aramid and polyester fibers. Ans. 3. Again, this finding is
undisputed.2 See App. Br. 7; see also Kumazaki, col. 4, ll. 44-55. The
Examiner, relying on Kumazaki, concluded that it would have been obvious
to modify Ito for the purpose of noise reduction in the belt and for the
purpose of increased durability. Ans. 4. Appellants concede that Kumazaki
addresses the problem of noise abatement, but contend that Kumazaki fails
to address the problem of improved durability. App. Br. 11-12.
As an initial matter, we note that most of Appellants’ arguments
appear to be based on the premise that “[t]he problem confronted by the
inventor(s) must be considered in determining whether it would have been
obvious to combine references in order to solve that problem.” App. Br. 12
(citing Northern Telecom Inc. v. Datapoint Corp., 908 F.2d 931 (Fed. Cir.
1990)); see also id. at 11-12 (Appellants arguing that neither reference is
directed to the durability problem addressed by the claimed invention).
However, the Court in KSR clarified that, in analyzing obviousness, it is
erroneous to “look only to the problem the patentee was trying to solve.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007) (citation omitted).
One way to show obviousness is to note that there existed a known problem
for which there was an obvious solution encompassed by Appellants’ claims.
Id. at 419-20.

2 Kumazaki discloses para-aramid fibers, which Appellants identify as a
preferred aramid fiber. See Spec. 3:20-21; see also Claim 9.
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In this case, the Examiner identified two problems, noise reduction
and increased durability. Appellants only specifically allege error
concerning the increased durability problem. See, e.g., App. Br. 9-10
(arguing that Kumazaki fails to provide a reasonable expectation of success
of obtaining improved durability with blends of fibers, and that Kumazaki
fails to provide a teaching that blends of fibers will improve durability); id.
at 19-20. Appellants do not contest the Examiner’s findings regarding
Kumazaki’s noise reduction teachings and do not offer any persuasive
argument or evidence as to why the conclusion of obviousness based on the
known problem of noise reduction is erroneous. As such, we are not
persuaded that the Examiner failed to set forth articulated reasoning with
rational underpinning to support the conclusion of obviousness. Contra
App. Br. 8 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Further,
we determine that the Examiner did not rely on impermissible hindsight, as
Appellants suggest (App. Br. 8), but rather relied on the knowledge of those
skilled in the art at the time of the invention.
To the extent that Appellants argue that one of ordinary skill would
not combine the two cited references because they purportedly “address
distinct and separate problems” (App. Br. 11), we do not find this argument
persuasive. “Common sense teaches … that familiar items may have
obvious uses beyond their primary purposes, and in many cases a person of
ordinary skill will be able to fit the teachings of multiple patents together
like pieces of a puzzle.” KSR Int’l Co., 550 U.S. at 420. As Appellants note
(App. Br. 11), both references pertain to power transmission belts, and we
fail to see why one of ordinary skill in the art of such belts would ignore the
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teachings of those cited references simply because they are directed to
different types of belts or different problems.
We conclude that the Examiner has set forth a prima facie case of
obviousness of claim 1, and of claims 3, 6, and 9, for which Appellants offer
no separate arguments.

Claim 2
Dependent claim 2 limits the fiber orientation to that of a width
direction of the belt body. For this limitation, the Examiner relies on Ito’s
statement that the fibers may be aligned in a direction orthogonal to a
longitudinal line L of the belt. Ans. 4 (citing Ito 3, para. [0053]). The
Examiner reasons that the width direction is a direction perpendicular
(orthogonal) to the longitudinal line. Id. at 9. However, as Appellants note
(App. Br. 12), there are an infinite number of directions that are orthogonal
to the longitudinal line, including vertical. The Examiner does not
adequately explain why one of ordinary skill would have found it obvious to
select the width direction from all the possible orthogonal orientations. We
cannot sustain the rejection.

Claim 4
Claim 4 limits the length of the aramid fibers to less than 3 mm. Ito
discloses that the length of the fibers is selected based upon the fiber type,
and is generally within the range of 1 to 10 mm. Ito 3, para. [0052]. Ito
further teaches that the preferred length of the aramid fibers is 3 to 5 mm.
Id. We are not persuaded by Appellants’ argument (App. Br. 13) that one of
ordinary skill in the art reading this disclosure of a preferred range would be
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directed to use an aramid fiber with a length greater than 3 mm. One of
ordinary skill in the art would understand Ito to teach that lengths outside the
preferred range, e.g., 1-3 mm, may also be used.

Claim 5
Claim 5 recites that the length of the polyester fibers is less than
5 mm. For the same reason given above for claim 4, we are not persuaded
by Appellants’ argument that, because Ito discloses a preferred length of 5 to
10 mm, utilizing a length of less than 5 mm would not have been obvious.

Claim 7
Claim 7 recites that the polyester fibers are subjected to a resorcinol-
formalin-latex (RFL) coating treatment. We are not persuaded by
Appellants’ argument (App. Br. 13-14) that Ito’s disclosure is solely related
to an RFL treatment of canvas reinforcing fabric 90 rather than the
individual embedded reinforcing fibers 114. The Examiner found, and we
agree, that Ito discloses a fabric cloth made from polyester fibers, that the
fabric is subject to an RFL treatment, and that, therefore, Ito discloses
treating polyester fibers with an RFL coating. Ans. 4, 10 (citing Ito 3, para.
[0055]). We further note that Ito discloses friction coating the canvas with
rubber after the RFL treatment. Ito 3, para. [0055]. Appellants have not
persuaded us that one of ordinary skill would fail to find it obvious to apply
Ito’s RFL teachings to polyester fibers intermixed in a rubber belt body.

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Claims 10 and 11
Dependent claims 10 and 11 limit the transmission belt to a V-belt and
a cogged V-belt, respectively. Appellants concede that Ito discloses both
such belts, but assert that Kumazaki is directed to a problem germane to a
V-ribbed belt rather than the claimed types of belts. App. Br. 14. Thus,
argue Appellants, one attempting to solve the durability problem of V- or
cogged V-belts “would not turn to another belt patent that is directed to a
different category or genus of belt ….” Id. However, the obviousness
inquiry is not limited to looking only at the durability problem sought to be
solved by Appellants. See KSR Int’l Co., 550 U.S. at 420. We are not
persuaded that one of ordinary skill in the transmission belt art would fail to
recognize the applicability of the references’ teachings even if they are
directed to different types of belts. See id. at 421 (“A person of ordinary
skill is also a person of ordinary creativity, not an automaton.”)

Claims 13 and 14
The preamble of independent claim 13 recites: “A power
transmission belt of the single strand cogged V-belt type comprising ….”
The Examiner construed the preamble as a mere statement of purpose or
intended use. Ans. 10. The Examiner determined that the phrase “single
strand cogged V-belt” was not to be given any patentable weight and
admittedly did not address that language in rejecting claim 13. Id.
We disagree with the Examiner’s interpretation of the claim. In this
case, the preamble does not merely state a purpose or intended use, but
structurally defines the claimed invention by limiting it to a particular type
of transmission belt. As the Examiner has not addressed this limitation, we
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are constrained to reverse the rejection of independent claim 13 and of claim
14, which depends therefrom.

In summary, for the first rejection, we conclude that the Examiner has
set forth a prima facie case of obviousness for claims 1, 3-7, and 9-11, but
not for claims 2, 13, and 14.

2. Claim 8 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Ito, Kumazaki, and Kodama
Claim 8 defines the chopped polyester fiber as one of a several types
of fiber, including chopped PET fiber. Appellants argue that Kodama
discloses a PET cord for a tire rather than a short, chopped PET fiber for a
transmission belt. App. Br. 16. We are not persuaded by this argument.
The Examiner relied on Kodama for the specific teaching that a PET fiber is
a polyester fiber. Ans. 6; see also Kodama, col. 2, ll. 12 (referring to
“polyester fibers such as PET fiber or the like”). Appellants do not present
persuasive arguments or evidence why the ordinary artisan having this
knowledge would fail to find it obvious to utilize PET as the material for the
chopped polyester fiber of Ito and Kumazaki. Thus, we conclude that the
Examiner has set forth a prima facie case of obviousness for claim 8.

3. Claim 15 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Ito, Kumazaki, and Kinoshita
Claim 15 depends from independent claim 13. For the reasons set
forth above, we cannot sustain the rejection of claim 13, and therefore the
rejection of claim 15 is also reversed.

Appeal 2009-005955
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Appellants’ Evidence of Secondary Considerations
Appellants have furnished a declaration of Paul N. Dunlap as
evidence of secondary indicia of non-obviousness.
We are not persuaded by Appellants’ argument (App. Br. 22) that the
Examiner committed clear error by disregarding or discrediting the
declaration evidence. The Declaration, which was submitted after the Final
Rejection, was entered into the record by the Examiner in the Advisory
Action, mailed July 6, 2007. In that Advisory Action, the Examiner’s stated
reason for maintaining the rejections was “the applicant has failed to
overcome the fact that Kumazaki clearly teaches that the aramid fibers can
be used in combination with polyester.” Advisory Action at 2 (citation
omitted). As such, we cannot conclude that the Examiner ignored the
declaration as Appellants suggest. We now turn to the substance of the
declaration.
Appellants contend that the Declaration evidences unexpected and
superior results of the claimed invention that rebuts the Examiner’s prima
facie case of obviousness. See App. Br. 22-23. Appellants contend that the
results of combining longer polyester fibers and shorter aramid fibers yields
unexpected improvements in tensile strength, which according to
Appellants, leads to increased durability. App. Br. 20.
Evidence of secondary considerations, such as that presented
by the Appellants, must be considered en route to a determination of
obviousness/nonobviousness under 35 U.S.C. § 103. Accordingly, we
consider anew the issue of obviousness under 35 U.S.C. § 103, carefully
evaluating and weighing both the evidence relied upon by the Examiner and
the objective evidence of non-obviousness provided by Appellants.
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Dr. Dunlap testifies as an expert in the field of rubber compounding
for belts. Decl., para. 6. Dr. Dunlap opines that “tensile strength of short-
fiber rubber composites is not easily predicted and subject to many process-
specific and material-specific uncertainties.” Id. at para. 12. Dr. Dunlap’s
opinion is limited to the unpredictability of composite tensile strength, and
does not address any other property or characteristic of transmission belts.
Notably, the declaration does not address noise reduction in belts and thus
does not show that the claimed invention would have yielded results that
would have been considered unexpected by one of ordinary skill in the art
addressing the known problem of noise reduction.
While Dr. Dunlap’s declaration discusses the tensile strength test
results shown in Specification Figures 3 and 4 (see Decl., para. 6),
Appellants also argue that the Specification Figures 5, 6, and 9-12 disclose
dramatic improvements in other durability factors. App. Br. 20-21.
Appellants, however, do not direct our attention to any evidence that such
improvements would have been unexpected by those of ordinary skill in the
art. Thus, Appellants’ arguments regarding these other durability factors do
not rise to the level of evidence of secondary considerations. See In re
Mayne, 104 F.3d 1339, 1343 (Fed. Cir. 1997) (Appellants may show that the
claimed invention has an unexpected property over the prior art “with
evidence that the claimed invention exhibits some superior property or
advantage that a person of ordinary skill in the relevant art would find
surprising or unexpected.”).
We find that Appellants’ declaration evidence regarding unexpected
improvements in tensile strength is entitled to some weight. However, on
the totality of the evidence, weighing all evidence of obviousness against all
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evidence of non-obviousness, we hold that claims 1, 3-7, and 9-11 are
unpatentable over Ito and Kumazaki; and that claim 8 is unpatentable over
Ito, Kumazaki, and Kodama.

DECISION
The decision of the Examiner to reject claims 2 and 13-15 is reversed.
The decision of the Examiner to reject claims 1 and 3-11 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED-IN-PART

mls

THE GATES CORPORATION
IP LAW DEPT. 10-A3
1551 WEWATTA STREET
DENVER, CO 80202