Ex parte Tuominen et al.

Board of Patent Appeals and Interferences

Jul 13, 2000

08198936 (B.P.A.I. Jul. 13, 2000)

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(2) is not binding precedent of the Board.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. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte OLLI P. TUOMINEN,
MATTHEW B. HOYT, DAVID F. MITCHELL, CAROL W. MORGAN,
CLYDE G. ROBERTS, and ROBERT A. TYLER
__________
Appeal No. 1997-1797
Application No. 08/198,936
__________
ON BRIEF
__________
Before WINTERS, KIMLIN, and GARRIS, Administrative Patent
Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the final rejection
of claims 1 through 10 which are all of the claims pending in
the application.
Appeal No. 1997-1797
Application No. 08/198,936
2
The subject matter on appeal relates to a process for the
production of filaments of potentially superconducting
material which comprises preparing a liquid suspension of
potential superconducting material and forming multicomponent
filaments having a core of the suspension and a viscose sheath
which contains cellulose xanthate. Further details of this
appealed subject matter are set forth in representative
independent claim 1 which reads as follows:
1. A process for the production of filaments of
potentially superconducting material comprising:
(a) preparing a liquid suspension which contains at least
10 weight percent potential superconducting material;
(b) forming multicomponent filaments having a core of the
suspension and a viscose sheath which contains cellulose
xanthate; and
(c) thereafter, regenerating cellulose form [sic, from]
the cellulose xanthate to form a rayon matrix.
The references relied upon by the examiner as evidence of
obviousness are:
Cass, “Fabrication of Continuous Ceramic Fiber by the Viscous
Suspension Spinning Process,” Ceramic Bulletin, Vol. 70, No.
3, pp. 424, 426, 428 and 429 (1991).
Japanese 63-308812 December 1988
Appeal No. 1997-1797
Application No. 08/198,936
1The statement of rejection which appears on page 5 of the
answer reflects that less than all of the appealed claims are
included in the rejection before us. However, this appears to
be an inadvertent error on the examiner’s part, and,
particularly in light of our disposition of this appeal, the
error is harmless.
3
All of the claims on appeal1 stand finally rejected under
35 U.S.C. § 103 as being unpatentable over Cass in view of the
Japanese reference.
We refer to the brief and to the answer for a complete
exposition of the opposing viewpoints expressed by the
appellants and by the examiner concerning the above noted
rejection.
OPINION
For the reasons set forth below, we cannot sustain this
rejection.
The pivotal consideration on this appeal involves claim
interpretation and in particular the proper interpretation to
place upon step (b) of appealed independent claim 1 which
requires “forming multicomponent filaments having a core of
the suspension and having a viscose sheath which contains
cellulose xanthate.” According to the examiner’s
interpretation of this claim, “the core need not have a
Appeal No. 1997-1797
Application No. 08/198,936
4
composition different from the sheath” and “[t]hus a uniform
composition fiber . . . could anticipate the claims” (answer,
page 8). It is the examiner’s basic position that, when so
interpreted, the independent claim requirements relating to a
“core of the suspension” and a “viscose sheath” are satisfied
by the uniform filament composition resulting from the Cass
and Japanese reference combination. We share the appellants’
view, however, that this claim interpretation by the examiner
is improper.
It is axiomatic that, in proceedings before the Patent
and Trademark Office, claims in an application are to be given
their broadest reasonable interpretation consistent with the
specification and that claim language should be read in light
of the specification as it would be interpreted by one of
ordinary skill in the art. In re Sneed, 710 F.2d 1544, 1548,
218 USPQ 385, 388 (Fed. Cir. 1983).
The examiner’s claim interpretation is certainly broad.
Pursuant to this interpretation, step (b) of the appellants’
independent claim is satisfied even when forming filaments or
fibers from a uniform composition of suspension material in
homogenous admixture with viscose (i.e., in accordance with
Appeal No. 1997-1797
Application No. 08/198,936
5
the Cass process) because “one can call the outer layer . . .
a sheath and the remaining portion of the fiber the core”
(answer, page 7). The problem with this interpretation is
that it is not a reasonable interpretation consistent with the
appellants’ specification. For example, the first full
paragraph on page 3 of the subject specification discusses the
Cass process as being unsatisfactory and thereby makes it
clear that the examiner’s claim interpretation is unreasonable
and inconsistent with the specification. Moreover, we
perceive merit in the appellants’ argument that one of
ordinary skill in the art would not interpret appealed claim 1
as the examiner has done.
In light of the foregoing, it is our determination that,
even if the applied references were combined in the manner
proposed by the examiner, the process resulting from this
combination would not correspond to the process defined by
appealed claim 1 when given its broadest reasonable
interpretation consistent with the appellants’ specification
as it would be interpreted by one of ordinary skill in the
art. We cannot sustain, therefore, the examiner’s section 103
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Application No. 08/198,936
6
rejection of the claims on appeal as being unpatentable over
Cass in view of the Japanese reference.
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Application No. 08/198,936
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The decision of the examiner is reversed.
REVERSED
Sherman D. Winters )
Administrative Patent Judge )
)
)
)
Edward C. Kimlin ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Bradley R. Garris )
Administrative Patent Judge )
Appeal No. 1997-1797
Application No. 08/198,936
8
Karen M. Dellerman
BASF Corporation
Sand Hill Road
Enka, NC 28728
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