Ex parte Valarik

Board of Patent Appeals and Interferences

Jul 25, 2001

08809315 (B.P.A.I. Jul. 25, 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written for publication and is not binding precedent of the Board.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. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte KAMIL VALARIK
____________
Appeal No. 1999-2727
Application No. 08/809,315
____________
HEARD: JULY 10, 2001
____________
Before CALVERT, FRANKFORT, 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 1 and 3-5, which are all of the claims
pending in this application.
BACKGROUND
The appellant's invention relates to a hockey stick blade
having an adhesive layer on at least one side thereof, the
adhesive layer comprising grains of corundum, ceramics,
Appeal No. 1999-2727
Application No. 08/809,315
We remind the examiner that the Manual of Patent1
Examining Procedure (MPEP) § 1208 expressly provides that
incorporation by reference in an answer may be made only to a
single other action.
2
limestone, glass, rubber, textiles and plastics (claim 1) and
methods of applying the adhesive layer of claim 1 to a hockey
stick blade (claims 3-5). 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 the following
Canadian patents:
Saytar 909814 Sep. 12, 1972
Spratt 984420 Feb. 24, 1976
Claims 1, 3 and 4 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Spratt.
Claim 5 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Spratt in view of Saytar.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejections, we make reference to the examiner's answer (Paper
No. 14) and two prior Office actions (Paper Nos. 7 and 12)1
for the examiner's complete reasoning in support of the
Appeal No. 1999-2727
Application No. 08/809,315
While appellant’s original claims provide written2
descriptive support for the adhesive layer comprising all
seven of the recited grains, the remainder of appellant’s
specification does not appear to provide clear support or
antecedent basis for the combination of all of the recited
(continued...)
3
rejections, and to the appellant's brief (Paper No. 13) and
reply brief (Paper No. 15) for the appellant's arguments
thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims, to the applied Spratt and Saytar 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.
There does not appear to be any dispute that each of the
claims before us on appeal requires that the adhesive layer
comprise grains of each of the seven materials (corundum,
ceramics, limestone, glass, rubber, textiles and plastics)
recited in the claims. In other words, an adhesive layer2
Appeal No. 1999-2727
Application No. 08/809,315
(...continued)2
materials in the adhesive layer as required by 37 CFR §
1.75(d)(1). We leave this issue to be addressed by the
primary examiner in the event of further prosecution.
4
comprising grains of some, but not all, of the seven recited
materials would not meet the limitations of the claims on
appeal.
Spratt discloses a hockey stick blade having an abrasive
material bonded or secured to the blade by an appropriate
adhesive and a method of applying the abrasive material and
adhesive to the blade. The method includes the steps of
applying a quick-drying thermosetting non-absorbent adhesive
to a wooden hockey stick blade and spraying a moisture-
absorbing abrasive grit on the adhesive. Spratt teaches that
“the abrasive grit may be carborundum, sand, aluminum oxide
(alumina [also known as corundum]), silicon carborundum or
even a glass grit” (page 3). For quick repairs during a
hockey game, Spratt prefers a grit which absorbs moisture from
the adhesive, particularly an alumina grit such as Alundum
oxide, because the alumina grit absorbs the moisture in the
epoxy, thus providing a quick-drying technique (page 3). On
page 4, Spratt teaches that, if the abrasive grit is to be
Appeal No. 1999-2727
Application No. 08/809,315
5
applied to the blade during the original manufacture of the
stick, the blade is typically dipped into an epoxy, coated
with fiberglass, and again dipped into an epoxy. After the
second dipping in the epoxy adhesive resin, “the grit may be
applied to the blade ... by dipping, sprinkling, spraying or
the like.”
The examiner recognizes that Spratt discusses only two
(corundum and glass) of the seven grain materials recited in
the claims and, further, appears to teach use of these
materials in the alternative, rather than in combination.
However, the examiner asserts that “[a]ll of the materials
[recited in the claims] are commonly known, and to the
ordinarily skilled artisan any or all of them would have been
suitable for use as the grit material for Spratt’s coating”
(Paper No. 7, page 2). The examiner adds, on pages 3-4 of the
answer, that
[t]he ordinarily skilled artisan considering
Spratt would have obviously recognized that all
manner of grain materials would have been suitable
for Spratt’s grit. The fact that Spratt only
denotes several, when literally thousands would
suggest themselves, does not indicate that
appellant’s particular grit would have been
unobvious. The choice of a known material suitable
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for the disclosed purpose is not unobvious. In re
Leshin 125 USPQ 416.
While appellant does not dispute that the materials
recited in the claims were all known materials at the time of
appellant’s invention, appellant points out that Spratt does
not teach or suggest that all of these materials are suitable
for use as grit in the abrasive coating (brief, page 9).
Appellant further contends, especially with respect to rubber
and textiles, that the examiner has made no showing that the
claimed grains are abrasive (reply brief, page 3).
Rejections based on 35 U.S.C. § 103 must rest on a
factual basis. In making such a rejection, the examiner has
the initial duty of supplying the requisite factual basis and
may not, because of doubts that the invention is patentable,
resort to speculation, unfounded assumptions or hindsight
reconstruction to supply deficiencies in the factual basis.
In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA
1967), cert. denied, 389 U.S. 1057 (1968).
In this case, the examiner has not provided any evidence
that one skilled in the art at the time of appellant’s
invention would have recognized all of the materials, in
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Application No. 08/809,315
7
particular rubber and textiles, recited in appellant’s claims
as abrasive and suitable for use in an adhesive grit layer
with adhesive as taught by Spratt. Thus, it is not apparent
to us why one of ordinary skill in the art would have been
motivated, in the absence of appellant’s disclosure, to
provide grains of all seven materials recited in appellant’s
claims in combination in the abrasive grit layer of Spratt.
The examiner (answer, page 4) has also asserted that
appellant has not demonstrated that the particular combination
of materials recited by appellant yields unexpected results.
While this is true, we also observe that the test of
obviousness is not whether appellant’s invention yields
unexpected results. Rather, 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).
Indeed, a prima facie case of obviousness is established where
the reference teachings would appear to be sufficient for one
of ordinary skill in the art having those teachings before him
to make the proposed combination or modification. See In re
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Application No. 08/809,315
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Lintner, 458 F.2d 1013, 1016, 173 USPQ 560, 562 (CCPA 1972).
As the evidence adduced by the examiner is insufficient to
have suggested to one of ordinary skill in the art appellant’s
claimed invention so as to establish a prima facie case of
obviousness of the subject matter of the claims on appeal, the
burden has not shifted to appellant to present evidence of
unobviousness, such as unexpected results.
Accordingly, we shall not sustain the examiner’s
rejection of claims 1, 3 and 4 as being unpatentable over
Spratt.
We have reviewed the additional teachings of Saytar but
find nothing therein which cures the above-noted deficiency of
Spratt. Accordingly, we shall also not sustain the examiner’s
rejection of claim 5 as being unpatentable over Spratt in view
of Saytar.
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Application No. 08/809,315
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CONCLUSION
To summarize, the decision of the examiner to reject
claims 1 and 3-5 under 35 U.S.C. § 103(a) is reversed.
REVERSED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
Appeal No. 1999-2727
Application No. 08/809,315
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