Ex parte Takizawa

Board of Patent Appeals and Interferences

May 10, 1999

08084097 (B.P.A.I. May. 10, 1999)

Application for patent filed July 1, 1993. 1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the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 TADAO TAKIZAWA
____________
Appeal No. 96-0141
Application No. 08/084,0971
____________
ON BRIEF
____________
Before GARRIS, OWENS, and WALTZ, Administrative Patent Judges.
WALTZ, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the
examiner’s final rejection of claims 5 through 10. Claims 1
through 4, the only other claims in this application, stand
Appeal No. 96-0141
Application No. 08/084,097
2
withdrawn from consideration by the examiner as being drawn to
a nonelected invention (Brief, page 1).
According to appellant, the invention is directed to a
method of manufacturing an integrally molded pointer by a
process comprising a sequential series of specific
manipulative steps (Brief, page 2). Claim 5 is illustrative
of the subject matter on appeal and is reproduced below:
5. A process of manufacturing a pointer by molding a resin
in a mold comprising an upper die having a plurality of
cavities and a lower core die comprising forming a first
molding space with said core die and a first cavity
corresponding to a weight section of said pointer, injecting a
mixture of resin material and metal powder into said first
molding space, forming a second molding space with said core
containing said weight section and a second cavity, and
injecting the resin material into the second molding space
corresponding to an indicating section of said pointer thereby
integrally molding said weight section and said indicating
section of said pointer.
The examiner has relied upon the following references as
evidence of obviousness, in addition to the admitted prior art
cited by appellant on page 3 of the specification:
Linne 4,269,802 May 26, 1981
Patel 4,885,121 Dec. 5, 1989
Hirota et al. (Hirota) 5,167,896 Dec. 1, 1992
Pasco 0 411 799 A1 Feb. 6, 1991
(Published European Patent Application)
Appeal No. 96-0141
Application No. 08/084,097
3
Claims 5 through 7 stand rejected under 35 U.S.C. § 103
as unpatentable over Linne in view of Pasco, "the admitted
prior art as discussed on page 3 of the instant
specification", and Hirota (Answer, page 3). Claims 8 through
10 stand rejected under 35 U.S.C. § 103 as unpatentable over
the references applied against claims 5 through 7 further in
view of Patel (Answer, page 5). We reverse both of the
examiner’s rejections for reasons which follow.
OPINION
Conventional manufacturing techniques in this particular
art comprise the installation of an independent balance weight
separately from the pointer body after completion of the
pointer (Brief, page 2; specification, page 3, last paragraph;
and Pasco, column 1, line 42-column 2, line 2; column 3, lines
11-14).
The process of manufacture recited in appealed claim 5
comprises integrally molding the pointer body with the balance
weight section comprising resin and metal powder, thereby
making it unnecessary to install and fix the balance weight
Appeal No. 96-0141
Application No. 08/084,097
4
separately from the pointer body (Brief, page 3;
specification, page 5).
The examiner applies the Linne reference to show the
conventionality of using a set of molding dies to create
multiple molding spaces, the Pasco reference and the admitted
prior art to show conventional pointers made from injection
molding and from two different resins, the admitted prior art
for the teaching of mixing metal powder and resin for molding
weights for a pointer, and Hirota for a multilayered article
made from a layer of resin and a layer of reinforced resin
(Answer, pages 3-4). From these teachings, the Examiner
concludes that it would have been obvious to the artisan "to
use the above process as set forth in the primary reference
for making any number of composite articles using two
different resins" (Answer, page 4).
"When a rejection depends on a combination of prior art
references, there must be some teaching, suggestion, or
motivation to combine the references. [Citation omitted]." In
re Rouffet, 149 F.3d 1350, 1355, 47 USPQ2d 1453, 1456 (Fed.
Cir. 1998). When determining the patentability of a claimed
Appeal No. 96-0141
Application No. 08/084,097
5
invention which combines numerous elements, "the question is
whether there is something in the prior art as a whole to
suggest the desirability, and thus the obviousness, of making
the combination. [Citations omitted]." In re Rouffet, 149
F.3d at 1356, 47 USPQ2d at 1456. We do not find, on this
record, that the examiner has shown that the prior art, as a
whole, would have suggested the desirability of making the
combination claimed by appellant. The examiner has not shown
on this record why one of ordinary skill in the pointer art
would have combined the molding process for making a unitary
seal disclosed by Linne with the conventional methods of
making pointers taught by Pasco and the admitted prior art
while adding the reinforced sandwiched structure of a display
cabinet of Hirota.
It is noted that evidence of a suggestion, teaching or
motivation to combine may come from the prior art references
themselves, the knowledge of one of ordinary skill in the art,
or from the nature of the problem to be solved. See Pro-Mold
& Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1573,
37 USPQ2d 1626, 1630 (Fed. Cir. 1996). In our view, the
Appeal No. 96-0141
Application No. 08/084,097
The examiner generally refers to "composite pointers" in2
relation to Pasco (Answer, pages 3 and 4) but Pasco merely
forms a pointer by molding with subsequent insertion of a
weight or "mass" or molds the pointer "around" the weight or
"mass" as it is held in place (Pasco, column 3, lines 11-14).
6
examiner has not particularly identified any suggestion,
teaching or motivation to combine the applied references in
the manner proposed (see the Answer, pages 8-9). The examiner
has not identified any disclosure or suggestion in the applied
prior art which is directed to composite pointers, much less2
composite pointers needing adhesives (Linne teaches avoiding
the use of adhesives by integral molding, see the Answer,
sentence bridging pages 8-9).
The process of making a pointer as set forth in appealed
claim 5 would not have been prima facie obvious even if the
applied prior art was combined in the manner proposed by the
examiner. The examiner does not identify any reference which
discloses or suggests the use of metal powder and resin in
only a part of any pointer, much less an integral pointer, to
act as a balancing weight (see the specification, page 3,
Examined Japanese Utility Model Laid-Open No. SHO 60-143,366).
Furthermore, the examiner’s assumption that metal powder can
Appeal No. 96-0141
Application No. 08/084,097
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be used in place of the fiber reinforcing material of Hirota
is not supported by any evidence (see the Answer, page 4, last
paragraph).
Patel is applied by the examiner to show the
conventionality of rotating core dies (Answer, page 5). We
find that Patel does not remedy any of the deficiencies of the
examiner’s rejection noted above.
For the foregoing reasons, we determine that the examiner
has not presented a prima facie case of obviousness in view of
the applied prior art. Accordingly, the rejection of claims
5-7 under 35 U.S.C. § 103 as unpatentable over Linne in view
of Pasco, the admitted prior art on page 3 of the
specification, and Hirato is reversed.
The rejection of claims 8-10 under § 103 over the same
references further in view of Patel is also reversed.
The decision of the examiner is reversed.
Appeal No. 96-0141
Application No. 08/084,097
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REVERSED
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
TERRY J. OWENS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
THOMAS A. WALTZ )
Administrative Patent Judge )
lp
Appeal No. 96-0141
Application No. 08/084,097
9
LOWE, PRICE, LEBLANC, BECKER & SHUR
99 CANAL CENTER PLAZA
SUITE 300
ALEXANDRIA, VA 22314
Leticia
Appeal No. 96-0141
Application No. 08/084,097
APJ WALTZ
APJ GARRIS
APJ OWENS
DECISION: REVERSED
Send Reference(s): Yes No
or Translation (s)
Panel Change: Yes No
Index Sheet-2901 Rejection(s): _____
Prepared: January 30, 2001
Draft Final
3 MEM. CONF. Y N
OB/HD GAU
PALM / ACTS 2 / BOOK
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