Ex Parte Ueda

Patent Trials and Appeals Board

Jan 27, 2016

12084953 - (D) (P.T.A.B. Jan. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/084,953 05/14/2008 Takahisa Ueda
23364 7590 01/29/2016
BACON & THOMAS, PLLC
625 SLATERS LANE
FOURTH FLOOR
ALEXANDRIA, VA 22314-1176
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
UEDA3005 /FJD 3945
EXAMINER
WYROZEBSKI LEE, KATARZYNA I
ART UNIT PAPER NUMBER
1789
NOTIFICATION DATE DELIVERY MODE
01129/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
MAIL@BACONTHOMAS.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte T AKAHI SA UEDA 1
Appeal2014-002735
Application 12/084,953
Technology Center 1700
Before BRADLEY R. GARRIS, JEFFREY W. ABRAHAM, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellant appeals from the Examiner's
rejection under 35 U.S.C. § 103(a) of claims 4, 8, and 9 as unpatentable over
Ueda et al. (JP63-308275 A, published Dec. 15, 1988, as translated)
(hereinafter "Ueda") in view of Saito et al. (JP9280379, published Oct. 28,
1997, as translated) (hereinafter "Saito"). We have jurisdiction under
35 U.S.C. § 6.
1 Nippon Pillar Packing Co., Ltd. is identified as the real party in interest.
App. Br. 2.
Appeal2014-002735
Application 12/084,953
We AFFIRM.
Appellant claims a yam comprising a tubular member 3 defining an
interior filled with fiber strips 4 having an aspect ratio (i.e., width divided by
thickness) in the range of 1 to 3 (independent claim 8, Fig. 1) and having a
length of about 200 mm (dependent claim 9).
A copy of representative claim 8, taken from the Claims Appendix of
the Appeal Brief, appears below.
Claim 8. A yam comprising:
a knitted or braided fibrous material in the form of a tubular
member defining an interior; and
fibrous expanded graphite filling said interior of the tubular
member and comprising a plurality of fiber strips each having end
portions, and a section in which an aspect ratio is in the range of 1 to
3, the aspect ratio being obtained by dividing a width by a thickness
of each of said plurality of fiber strips; wherein:
the fibrous expanded graphite fibers are inserted into said
interior of the tubular member to fill said interior while shifting the
end portions of said fiber strips from one another; and
the thickness of said fiber strips of said fibrous expanded
graphite set to 0.25 mm to 0.50 mm.
Appellant presents arguments specifically directed to claims 8 and 9
only (App. Br. 10-15). Therefore, claim 4 will stand or fall with
independent claim 8.
We sustain the above rejection based on the findings of fact,
conclusions of law, and rebuttals to arguments well expressed by the
Examiner in the Final Action and in the Answer. The following comments
are added for emphasis and completeness.
As more thoroughly explained by the Examiner (Ans. 4--5),
Appellant's nonobviousness arguments regarding the aspect ratio of claim 8
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Appeal2014-002735
Application 12/084,953
(App. Br. 11-12) are completely undermined by Appellant's calculations
showing Saito' s aspect ratio ranges from 3 to 25 (id. at 11) which overlaps
and thereby renders obvious the 1 to 3 range defined by claim 8 and showing
Saito's width ranges from 1.14 to 9.5 mm (id.) which overlaps the 5 mm or
less range of Ueda.
We emphasize that these overlapping width ranges vitiate Appellant's
unembellished contention that Saito teaches away from the claimed
invention and Examiner's proposed combination of Ueda and Saito (Reply
Br. 2-3). We also emphasize that Appellant fails to identify any credible
evidence supporting the implication that the claimed aspect ratio yields
unexpected results (id.).
Appellant further argues that the about 200 mm length of claim 9
would not have been obvious over the about 25 mm length disclosed by
Ueda because the longer length possesses advantages over the shorter length
(App. Br. 13-15; Reply Br. 3-7). However, Appellant does not offer any
evidence in an attempt to show that the stated advantages are factually
accurate and unexpected as correctly indicated by the Examiner (Ans. 6).
Based on the record before us, the advantages described in the Appeal and
Reply Briefs are nothing more than unsupported attorney-statements. See In
re Geisler, 116 F.3d 1465, 1470-71 (Fed. Cir. 1997) (holding that
unexpected results must be established by factual evidence and that an
attorney-statement (i.e., improved results were "surprising") is insufficient to
establish unexpected results).
For the reasons given by the Examiner and above, Appellant's
arguments fail to reveal error in the rejection before us.
The decision of the Examiner is affirmed.
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Appeal2014-002735
Application 12/084,953
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
cdc
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