Ex Parte WORF et al

Board of Patent Appeals and Interferences

Apr 30, 2003

09297527 (B.P.A.I. Apr. 30, 2003)

1 Claim 1 is incorrectly reproduced in appellants' brief.
Claim 1 of record appears in appellants' Amendment C, filed
September 8, 2000 (Paper No. 8).
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The opinion in support of the decision being entered
today was not written for publication in a law journal
and is not binding precedent of the Board.
Paper No. 23
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte GUNTHER WORF, MICHAEL SAALMANN,
SVEIN SUNDE and TOM THORMODSEN

Appeal No. 2002-2277
Application No. 09/297,527

ON BRIEF

Before KIMLIN, PAK and WALTZ, Administrative Patent Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-8,
10, 11 and 15. Claims 9, 12 and 13, the other claims remaining
in the present application, have been objected to by the examiner
as being dependent on the rejected claims. Claim 1 is
illustrative:1
Appeal No. 2002-2277
Application No. 09/297,527
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1. A longline comprising at least one polyamide monofil
with at least one stopper secured on the polyamide monofil
surface, wherein said stopper consists essentially of a
thermoplastic elastomer having a Shore D hardness of at least 50.
The examiner relies upon the following references as
evidence of obviousness:
Keller 4,428,143 Jan. 31, 1984
Sunline (JP '010) JP 40111010 Jan. 16, 1992
(Japanese Patent Publication)
Appellants' claimed invention is directed to a longline
comprising a polyamide monofil with a stopper secured thereon.
The stopper consists essentially of a thermoplastic elastomer
having a Shore D hardness of at least 50. According to
appellants, "[l]onglines are used to produce angling lines, fish
lines and continuous lines for catching fish" (page 2 of
principal brief, third paragraph). Also, we are told that "[t]he
improvement over the prior art embodied in the instant claims is
that the hollow bodies (also known as stoppers), which are
generally used to limit the mobility of rotors or clips to which
hook lines and hooks are attached, have better adhesion to the
filament than prior art constructions" (page 2 of principal
brief, last paragraph).
Appealed claims 1-8, 10, 11 and 15 stand rejected under
35 U.S.C. § 103 as being unpatentable over Keller in view of
JP '010.
Appeal No. 2002-2277
Application No. 09/297,527
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We have thoroughly reviewed the respective positions
advanced by appellants and the examiner. In so doing, we find
that the examiner has failed to establish a prima facie case of
obviousness for the claimed subject matter. Accordingly, we will
not sustain the examiner's rejection.
Keller, the primary reference, discloses a longline having
nylon stoppers, and the examiner has accepted appellants'
evidence that there is a difference between the nylon stoppers of
Keller, a thermoplastic polymer, and the claimed stopper made
from a thermoplastic elastomer. The examiner reasons, however,
that since thermoplastic elastomers are well known materials and
are found in the Polymer Technology Dictionary (page 4 of Answer,
first paragraph), it would have been obvious for one of ordinary
skill in the art to employ a thermoplastic elastomer to make the
stopper of Keller.
We cannot subscribe to the examiner's reasoning. More is
required for a finding of obviousness under § 103 than evidence
that a particular material, claimed for a specific purpose, was
known in the art. There must be some teaching or suggestion in
the art that would have motivated one of ordinary skill in the
art to substitute the claimed thermoplastic elastomer for the
nylon stopper of Keller. This, however, has not been established
Appeal No. 2002-2277
Application No. 09/297,527
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by the examiner on this record. Accordingly, we must conclude
that the examiner has not made out a prima facie case of
obviousness for the claimed subject matter. In addition, we are
not satisfied that the examiner has satisfied his burden of
analyzing the specification evidence of unexpected results relied
upon by appellants.
In conclusion, based on the foregoing, we are constrained to
reverse the examiner's rejection.
REVERSED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
)
CHUNG K. PAK ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
)
THOMAS A. WALTZ )
Administrative Patent Judge )
ECK:clm
Appeal No. 2002-2277
Application No. 09/297,527
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