Ex parte Schneid

Board of Patent Appeals and Interferences

Sep 26, 2001

09207766 (B.P.A.I. Sep. 26, 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and is not binding precedent of the Board.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. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte JOSEF SCHNEID
_____________
Appeal No. 2001-1405
Application No. 09/207,766
______________
HEARD: September 13, 2001
_______________
Before CALVERT, COHEN, and NASE, Administrative Patent Judges.
CALVERT, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1 to 3, 10 to 22, 27 to 30 and
32. The other claims in the application, 4 to 9, 23 to 26, 31 and 33 to 40, stand withdrawn
from consideration under 37 CFR §1.142(b) as being directed to nonelected inventions.
The claims on appeal are drawn to a process for production of fittings, and are
reproduced in the appendix of appellant’s brief.
The prior art applied in the rejection before us is:
Appeal No. 2001-1405
Application No. 09/207,766
On page 3 of the answer, the examiner identifies AAPA-1 as being at page 3, lines 5 to 9, of1
appellant’s specification, but at page 4 of the answer, states that AAPA-1 is from page 1, lines 10 to 14 and
20 to 25 of the specification. In view of this discrepancy, we have considered both these parts of the
specification in evaluating the rejection.
Three additional grounds of rejection under § 103(a) have been withdrawn by the examiner2
(answer, pages 2 and 3).
2
Tillenburg 4,240,530 Dec. 23, 1980
The admitted prior art on page 1, lines 10 to 14 and 20 to 25, and on page 3, lines
5 to 9 of appellant’s specification (AAPA-1).1
All the appealed claims stand finally rejected under 35 U.S.C. § 103(a) as
unpatentable over AAPA-1 in view of Tillenburg.2
First considering claim 1, the only independent claim on appeal, the salient portion
of AAPA-1 appears to be at page 3, lines 5 to 9, where appellant discloses:
A process for production of fittings is known from DE 196 03 548 A1, in
which the fittings are assembled from separately manufactured parts.
However, this publication only very generally discusses a bonding means
that is applied between the base and processing element, but specifically
identifies the very expensive high-temperature vacuum welding process or
gluing processes.
The examiner states that this disclosure teaches all the subject matter recited in claim 1
except for placing elastic bonding material between contact surfaces of the base and
processing element and elastically bonding the base and processing element.
Appeal No. 2001-1405
Application No. 09/207,766
3
Tillenburg discloses a method for producing a brake pad for a disc brake which will
dampen or absorb vibration. The carrier plate 1 is made of two metal parts 2, 3 which
have a resilient bonding and dampening material 4 interposed between them, the friction
lining 5 of the brake pad being attached to part 3. The bonding material 4 between parts 2
and 3 is “slightly compressible, vibration-damping, heat-insulating, elastic and non-
swellable” (col. 4, lines 18 and 19), and may be cyclized rubber (col. 4, lines 34 and 35) or
other rubber related materials (col. 5, lines 9 to 17).
The examiner takes the position that (answer, page 5):
It would have been obvious to one of ordinary skill in the art, at the time of the
invention, to have provided the invention of [AAPA-1] with the steps of
placing an elastic bonding material between contact surfaces of the at least
one base and the at least one fibrous material processing element and
elastically bonding the at least one base and the at least one fibrous material
processing element, in light of the teachings of Tillenburg, in order to reduce
vibration between the fibrous material processing element and the base.
Appellant argues on pages 7 to 9 of the reply brief that Tillenburg constitutes
nonanalogous art. However, under the view we take of this case, it is unnecessary to
decide this issue, and we will assume for the purpose of argument that it is analogous art.
While we appreciate the examiner’s position, we do not consider the rejection of
claim 1 to be well taken. The examiner contends that if one of ordinary skill were
faced with the problem of reducing vibration between a base and a fibrous material
Appeal No. 2001-1405
Application No. 09/207,766
At the oral hearing, we pointed out to appellant’s counsel that the relationship of the step recited3
in claim 10 to parent claim 1 was not clear, and that the meaning of the recitation “the remaining gap . . .
the elastic bonding material” in claim 20 was not apparent. These matters should be attended to upon
return of the application to the examiner.
4
processing element, that person would look to plural (other) technologies, not just the
fibrous material processing element art, in order to determine how to reduce vibration
(answer, page 11). While this may be so, however, we do not consider that one of ordinary
skill would derive from Tillenburg a teaching or suggestion to elastically bond the separate
parts, i.e., the base and processing element(s), of a fitting for mechanical processing of
fibrous material as disclosed by AAPA-1. As appellant notes at pages 5 to 7 of the reply
brief, Tillenburg discloses resiliently bonding two parts (2 and 3) of a carrier (base)
member, on which the friction material 5 is mounted, rather than between the carrier and
the friction material carried thereon. Thus, we do not perceive any teaching in Tillenburg to
resiliently (elastically) bond the processing element(s) to the base in the AAPA-1 fitting.
Any such modification of AAPA-1 would appear to be based on impermissible hindsight
derived from appellant’s own disclosure.
We therefore conclude that claim 1 is unobvious over the combination of AAPA-1
and Tillenburg. The other claims on appeal, being dependent on claim 1, are likewise
unobvious.3
Conclusion
Appeal No. 2001-1405
Application No. 09/207,766
5
The examiner’s decision to reject claims 1 to 3, 10 to 22, 27 to 30 and 32 is
reversed.
REVERSED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
IRWIN CHARLES COHEN ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
/vsh
Appeal No. 2001-1405
Application No. 09/207,766
6
GREENBLUM & BERNSTEIN
1941 ROLAND CLARKE PLACE
RESTON, VA 20191