Ex parte UEKI

Board of Patent Appeals and Interferences

Jun 28, 2001

08858564 (B.P.A.I. Jun. 28, 2001)

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for publication and is not binding precedent of the Board.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. 27
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte AKIO UEKI
____________
Appeal No. 1999-0702
Application No. 08/858,564
____________
ON BRIEF
____________
Before COHEN, FRANKFORT, and NASE, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 10 to 22, which are all of the claims
pending in this application.
We REVERSE.
BACKGROUND
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Application No. 08/858,564
The examiner and the appellant have referred to this1
reference by the inventor's first name, Takashi.
In determining the teachings of Kiyohara, we will rely2
on the translation provided by the USPTO. A copy of the
translation is attached for the appellant's convenience.
The appellant's invention relates to a disposable body
warmer for use in footwear (specification, p. 1). A copy of
the claims under appeal is set forth in the appendix to the
appellant's brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Mitchell 3,802,951 April 9,
1974
Valenta 3,828,792 Aug. 13,
1974
Haley 4,434,565 March 6,
1984
Shiraki et al. 4,628,072 Dec.
9, 1986
(Shiraki)
Schroer, Jr. et al. 5,282,326 Feb.
1, 1994
(Schroer)
Sinclair-Day et al. 5,470,893 Nov.
28, 1995
(Sinclair-Day)
Kiyohara JP 5-176951 July 20, 19931 2
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Application No. 08/858,564
Claims 10 to 16 stand rejected under 35 U.S.C. § 102(a)
as being anticipated by Kiyohara.
Claim 18 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Kiyohara in view of Valenta.
Claim 21 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Kiyohara in view of Mitchell.
Claims 19 and 20 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Kiyohara in view of Shiraki.
Claim 17 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Kiyohara in view of Haley.
Claims 10 to 16 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Kiyohara in view of Schroer.
Claim 18 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Kiyohara in view of Schroer and Valenta.
Appeal No. 1999-0702 Page 4
Application No. 08/858,564
Claim 21 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Kiyohara in view of Schroer and Mitchell.
Claims 19 and 20 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Kiyohara in view of Schroer and
Shiraki.
Claim 17 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Kiyohara in view of Schroer and Haley.
Claim 22 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Kiyohara in view of Schroer and
Sinclair-Day.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejections, we make reference to the answer (Paper No. 24,
mailed October 21, 1998) for the examiner's complete reasoning
in support of the rejections, and to the brief (Paper No. 23,
filed September 30, 1998) and reply brief (Paper No. 25, filed
December 21, 1998) for the appellant's arguments thereagainst.
Appeal No. 1999-0702 Page 5
Application No. 08/858,564
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the
examiner. As a consequence of our review, we make the
determinations which follow.
The anticipation rejection
We will not sustain the rejection of claims 10 to 16
under 35 U.S.C. § 102(a).
To support a rejection of a claim under 35 U.S.C. §
102(a), it must be shown that each element of the claim is
found, either expressly described or under principles of
inherency, in a single prior art reference. See Kalman v.
Kimberly-Clark Corp., 713 F.2d 760, 772, 218 USPQ 781, 789
(Fed. Cir. 1983), cert. denied, 465 U.S. 1026 (1984).
All the claims under appeal are drawn to a body warmer
comprising, inter alia, an air-permeable bag accommodating an
Appeal No. 1999-0702 Page 6
Application No. 08/858,564
exothermic composition capable of generating heat in the
presence of air wherein the air-permeable bag is formed with a
non-slip layer in at least a portion thereof, the non-slip
layer being an outermost layer of the air-permeable bag; and
an airtight bag sealingly enveloping the air-permeable bag.
Kiyohara discloses a disposable foot warmer. As shown in
Figures 1-2, the foot warmer includes an air-permeable bag 10
accommodating an exothermic composition 16 capable of
generating heat in the presence of air and an airtight bag 20
sealingly enveloping the air-permeable bag. The air-permeable
bag 10 is coated with an acrylic resin tackifier in at least a
portion thereof for securing the air-permeable bag 10 in place
during use after the air-permeable bag 10 has been removed
from the airtight bag 20. The tackifier coating layer 14 is
covered with a piece of peelable paper 15 which is removed to
expose the tackifier coating layer 14 after the air-permeable
bag 10 has been removed from the airtight bag 20.
The appellant argues (brief, pp. 3-4; reply brief, p. 1)
that claims 10 to 16 are not anticipated by Kiyohara.
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Application No. 08/858,564
We understand this claimed limitation to require, in3
light of the underlying disclosure, that the air-permeable bag
is free of any layer, covering, etc. overlaying the non-slip
layer of the air-permeable bag (e.g., no release layer such as
Kiyohara's peelable paper 15) while the air-permeable bag is
sealingly enveloped by an airtight bag. That is, there is no
layer, covering, etc. between the outermost non-slip layer of
the air-permeable bag and the inside surface of the airtight
bag while the air-permeable bag is sealingly enveloped by the
airtight bag.
Specifically, the appellant points out the warmer of Kiyohara
does not have an airtight bag sealingly enveloping an
air-permeable bag having a non-slip layer as an outermost
layer of the air-permeable bag as recited in claims 10 to 16.
We agree. The examiner's position (answer, p. 4) that since
the peelable paper 15 is removed prior to use of the air-
permeable bag 10 thus establishing the tackifier coating layer
14 as the outermost layer of the air-permeable bag 10 during
use is without merit with regard to the subject matter of
claims 10 to 16. In that regard, the claimed subject matter
requires the non-slip layer to be an outermost layer of the
air-permeable bag while the air-permeable bag is sealingly
enveloped by an airtight bag. Clearly, Kiyohara does not3
teach or suggest the subject matter of claims 10 to 16.
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Application No. 08/858,564
For the reasons set forth above, the decision of the
examiner to reject claims 10 to 16 under 35 U.S.C. § 102(a) is
reversed.
The obviousness rejections
We will not sustain the rejection of claims 10 to 22
under 35 U.S.C. § 103.
The test for obviousness is what the combined teachings
of the references would have suggested to one of ordinary
skill in the art. See In re Young, 927 F.2d 588, 591, 18
USPQ2d 1089, 1091 (Fed. Cir. 1991) and In re Keller, 642 F.2d
413, 425, 208 USPQ 871, 881 (CCPA 1981).
With regard to the rejection of claims 10 to 16 as being
unpatentable over Kiyohara in view of Schroer, we have
reviewed the references to Schroer and Kiyohara and fail to
find any teaching, suggestion or motivation therein for a
person having ordinary skill in the art at the time the
invention was made to have modified Kiyohara's tackifier
coating layer 14 and peelable paper 15 so as to arrive at the
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Application No. 08/858,564
Hindsight knowledge derived from the appellant's own4
disclosure to support an obviousness rejection under 35 U.S.C.
§ 103 is impermissible. See, for example, W. L. Gore and
Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ
303, 312-13 (Fed. Cir. 1983), cert. denied, 469 U.S. 851
(1984).
claimed invention, absent the use of impermissible hindsight. 4
It follows that we cannot sustain the examiner's rejection of
claims 10 to 16 under 35 U.S.C.
§ 103.
We have also reviewed the references to Valenta,
Mitchell, Shiraki, Haley and Sinclair-Day additionally applied
in the respective rejections of claims 17 to 22 but find
nothing therein which makes up for the deficiency of Kiyohara
or the deficiency in the combined teachings of Kiyohara and
Schroer discussed above. Accordingly, we cannot sustain the
examiner's rejection of appealed claims 17 to 22 under 35
U.S.C. § 103.
CONCLUSION
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Application No. 08/858,564
To summarize, the decision of the examiner to reject
claims 10 to 16 under 35 U.S.C. § 102(a) is reversed and the
decision of the examiner to reject claims 10 to 22 under 35
U.S.C. § 103 is reversed.
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 1999-0702 Page 11
Application No. 08/858,564
ARMSTRONG, WESTERMAN, HATTORI,
MCLELAND & NAUGHTON, LLP
1725 K STREET, NW, SUITE 1000
WASHINGTON, DC 20006
Appeal No. 1999-0702 Page 12
Application No. 08/858,564
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