Ex parte Uhlenhuth et al.

Board of Patent Appeals and Interferences

Dec 18, 2001

08603719 (B.P.A.I. Dec. 18, 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for publication and is not binding precedent of the Board.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. 31
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte GUENTHER UHLENHUTH and MARTIN LOCZENSKI
____________
Appeal No. 2001-0560
Application No. 08/603,719
____________
ON BRIEF
____________
Before McQUADE, NASE and BAHR, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 50, 54-84 and 99-103. No other claims
remain pending in this application, claims 85-96 having been
canceled subsequent to the final rejection (Paper Nos. 17 and
20).
BACKGROUND
Appeal No. 2001-0560 Page 2
Application No. 08/603,719
We derive our understanding of this reference from the translation1
prepared by the PTO, a copy of which is appended to this decision.
The appellants’ invention relates to a method for the
longitudinal application of an elongated retainer element onto
a traversing traveling or moving bundle having a plurality of
electrical and/or optical transmission elements
(specification, page 1). A copy of the claims under appeal is
set forth in the appendix to the appellants’ brief.
The examiner relied upon the following prior art
references of record in rejecting the appealed claims:
Jore et al. (Jore) 3,405,443 Oct. 15,
1968
Heymann et al. (Heymann) 256,881 May 25,
19881
(German patent document)
The following rejection is before us for review.
Claims 50, 54-84 and 99-103 stand rejected under 35
U.S.C. § 103 as being unpatentable over Heymann in view of
Jore.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellants regarding the above-noted
rejection, we make reference to the final rejection and answer
(Paper Nos. 16 and 22) for the examiner's complete reasoning
Appeal No. 2001-0560 Page 3
Application No. 08/603,719
in support of the rejection and to the brief and reply brief
(Paper Nos. 21 and 23) for the appellants' arguments
thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellants' specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the
examiner. As a consequence of our review, we make the
determinations which follow.
Each of claims 99 and 100, the only independent claims on
appeal, recites, inter alia, a step of “continuously supplying
a plurality of [at least two (claim 100)] elongated retainer
elements” to said continuously moving bundle. Appellants
argue on page 4 of their brief that Heymann provides no
teaching or suggestion to use more than one retaining element,
as recited in appellants’ claims. Indeed, Heymann discloses a
method of stabilizing a round composite of linear structures 1
(polyamide ropes) between paired guide rollers 3 and 4 with
the aid of a mesh structure (translation, page 7) and further
teaches that the mesh structure consists of only one thread
Appeal No. 2001-0560 Page 4
Application No. 08/603,719
It is elementary that to support an obviousness rejection, all of the2
claim limitations must be taught or suggested by the prior art applied (see In
re Royka, 490 F.2d 981, 984-85, 180 USPQ 580, 582-83 (CCPA 1974)) and that all
(continued...)
(translation, pages 5 and 8). Based on this disclosure, we
share appellants’ view that Heymann fails to teach or suggest
the use of more than one retaining element. Referring to
Exhibit A attached to the answer, the examiner characterizes
several portions of the mesh structure as six retaining
elements (answer, page 5), but has not provided any evidence
or explanation to support the position that these portions of
the mesh are separate elements, rather than simply parts of a
single thread, as the written disclosure of Heymann seems to
indicate.
Jore discloses a method of wrapping a cable 19 with an
open helical winding 21 of binder ribbon. However, like
Heymann, Jore neither teaches nor suggests continuously
supplying more than one elongated retainer element to a
continuously moving bundle as required by claims 99 and 100 on
appeal. It follows then that the combined teachings of
Heymann and Jore are insufficient to establish a prima facie
case of obviousness of the subject matter of claims 99 and 100
within the meaning of 35 U.S.C. § 103.2
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Application No. 08/603,719
(...continued)2
words in a claim must be considered in judging the patentability of that claim
against the prior art (In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496
(CCPA 1970)).
On page 1 of the brief, appellants request that claim 50, which3
depends from canceled claim 49, be amended to depend from claim 100. Although
appellants have not filed a proper amendment changing the dependency of claim
50, for purposes of this appeal, we shall treat claim 50 as depending from
claim 100. Upon return of this application to the primary examiner, the
examiner should take appropriate action to ensure that such an amendment is
made.
For the foregoing reasons, we shall not sustain the
examiner’s rejection of claims 99 and 100 or of claims 50 ,3
54-84 and 101-103 which depend from claims 99 and 100.
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Application No. 08/603,719
CONCLUSION
To summarize, the decision of the examiner to reject
claims 50, 54-84 and 99-103 under 35 U.S.C. § 103 is reversed.
REVERSED
JOHN P. McQUADE )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
Appeal No. 2001-0560 Page 7
Application No. 08/603,719
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