Ex parte Yamakawa et al.

Board of Patent Appeals and Interferences

Sep 29, 2000

08308639 (B.P.A.I. Sep. 29, 2000)

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publication and is not binding precedent of the Board.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. 40
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte YUKIO YAMAKAWA,
SOICHIRO TANAKA,
KOJI ITONAGA,
and
YASUSHI NAKAI
_____________
Appeal No. 1997-2073
Application No. 08/308,639
______________
ON BRIEF
_______________
Before JOHN D. SMITH, PAK, and ROBINSON, Administrative Patent
Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s
refusal to allow claims 3, 5 through 8, 10, 27 and 28 which
are all of the claims pending in the application. Claims 12
through
Appeal No. 1997-2073 2
Application No. 08/308,639
23 stand withdrawn from consideration by the examiner as being
directed to a non-elected invention.
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Application No. 08/308,639
Our reference to the foreign prior art patent1
applications cited herein is to their corresponding English
translations of the record.
The examiner refers to this German prior art as “Fincke.” 2
See Answer, pages 2 and 3. We will refer to it in our
decision as “Price.”
The examiner refers to this Japanese prior art as3
“Kanebo.” See Answer, pages 2 and 3. We will refer to it in
According to appellants, “[c]laims 3, 5-8, 10, 27 and 28
all stand or fall together.” Therefore, for purposes of this
appeal, we only need to consider the propriety of the
examiner’s rejection of claim 27 consistent with 37 CFR §
1.192(c)(7) and (c)(8) (1995). Claim 27 is reproduced below:
27. A composite filament yarn which comprises a
filament having a polyamide sheath component and a
polyurethane core component arranged eccentrically
within said polyamide sheath component so that said
polyamide sheath component has a thinnest portion,
said polyurethane core component having a neck
portion extending radially through the thinnest portion
of said polyamide sheath component to the surface
of the filament where it is exposed at a substantially
uniform width of between 2% and 25% of the circumference
of the filament and having a standard deviation about
a mean value not exceeding 2.0%.
As evidence of obviousness, the examiner relies on the
following prior art:1
Price et al. (Price) 2032912 Jan. 21, 19712
(Published German Patent Application)
Tanaka et al. (Tanaka) 63-256719 Oct. 24,3
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Application No. 08/308,639
our decision as “Tanaka.”
1988
(Published Japanese Kokai Patent Application)
Claims 3, 5 through 8, 10, 27 and 28 stand rejected under
35 U.S.C. § 103 as unpatentable over the combined disclosures
of Tanaka and Price.
This is the second appeal of claimed subject matter which
is directed to a composite filament drawn yarn. In comparison
with the claims considered by the previous merits panel in
the decision entered July 21, 1994 (Paper No. 23), the
appealed claims as represented by claim 27 now require (1) the
polyurethane core exposed to the filament surface to have “a
substantially uniform width” rather than “a constant width
along the length thereof” as required by previous claim 25.
In accordance with page 8 of the specification, we interpret
the term “a substantially [exposed] uniform width” as an
exposed width having a standard deviation of not exceeding 2%.
It then follows that the appealed claims as represented by
claim 27 are a little broader or identical to previous claim
25 which was considered in the decision entered July 21, 1994.
Appellants, however, have submitted two Rule 132 declarations
to clarify the showing in the specification and bolster
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Application No. 08/308,639
nonobviousness of the claimed subject matter.
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Application No. 08/308,639
Having evaluated the claims, specification and applied
prior art, including all of the arguments and evidence
advanced by both the examiner and appellants in support of
their respective
positions, we agree with the examiner that the claimed subject
matter as a whole would have been obvious to one of ordinary
skill in the art. Accordingly, we will sustain the examiner’s
§ 103 rejection for essentially those reasons set forth in
both the Board’s decision entered on July 21, 1994, and the
Answer mailed on June 14, 1996. We add the following
primarily for emphasis and completeness.
The previous merits panel determined (pages 3 and 4)
that:
Both [Tanaka] and Price are directed to
self-crimping composite yarns wherein the core
component is arranged so as to occupy a similar
portion of the surface of the filament. We agree
with the examiner that it would have been obvious
to provide [Tanaka's] composite filament in the
configuration of Price's filament. The similar
purpose of the two references in providing self-
crimping filaments, coupled with the similar
extent of providing the core component at the
surface of the filament (i.e.[sic, ,] the core
component provides less than 25% of the filament
surface) would have provided ample suggestion of
the interchangeability of the respective filament
cross-section configurations. In re Winslow, 365
F.2d 1017, 151 USPQ 48 (CCPA 1966); In re Antle,
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Application No. 08/308,639
444 F.2d 1168, 170 USPQ 285 (CCPA 1971); In re
Wood, 582 F.2d 638, 199 USPQ 137 (CCPA 1978).
Moreover, it would have been apparent to a worker
of ordinary skill in the art that the Price
configuration, wherein the sheath effectively
grips
the core, would also provide the improved adhesion
between polyamide and polyurethane components
attributed to [Tanaka's] configuration. Appellants
acknowledge that the Price components are recognized
to not be compatible and to share the problem
of poor adhesion as addressed by the Kanebo
composite filament (Appellants' Brief, page 7).
We adopt this determination as our own. Moreover, we note
that Tanaka teaches that its crimped composite fiber has a
boiling water shrinkage rate of 5-17%, the property disclosed
and recited in one of the claims. See page 6.
Appellants argue that Tanaka is incapable of producing
the claimed substantially uniform width, i.e., a standard
deviation about a mean value not exceeding 2.0%. Appellants
then go on to rely on the Rule 132 declarations dated November
14, 1994, and November 6, 1995. We are not persuaded by
either appellants’ argument or declarations. As is apparent
from page 24 of the appellants’ own specification, Tanaka’s
method is capable of forming a crimped composite fiber having
an exposed polyurethane core component having the claimed
substantially uniform width, i.e., a standard deviation about
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Application No. 08/308,639
Appellants have evinced that Tanaka cannot produce a4
crimped composite fiber comprising the polyurethane core
component exposed on its surface having a substantially
uniform width of between 2 and 25% of the circumference of the
filament with a standard deviation about a mean value not
exceeding 1.3%. See specification, page 24, together with Ex
parte Jackson, 110 USPQ 561, 562 (Bd. App. 1956). However,
the claims on appeal are not limited to these types of crimped
composite fibers.
a mean value of 1.7% and 2.1%, respectively. See comparative4
Y and Y . Appellants have not 6 7
demonstrated that one of ordinary skill in the art desiring to
obtain a crimped composite fiber having the consistent
property along its length, i.e., a substantially uniform
width, would not have been led to the claimed crimped
composite fiber in view of the combined disclosures of Tanaka
and Price.
Appellants argue that the claimed subject matter as whole
imparts unexpected results. In support of their position,
appellants rely on the Rule 132 declarations dated November
14, 1994 and November 6, 1995, together with the examples and
Table
1 of the specification. Having evaluated the showing in the
declarations and the specification, we conclude that
Appeal No. 1997-2073 9
Application No. 08/308,639
appellants have not carried their burden of proof. In re
Klosak, 455 F.2d 1077, 1080, 173 USPQ 14, 16 (CCPA 1972) (the
burden of proving unexpected results rests on the party who
asserts them). In other words, appellants have not
demonstrated that the showing is commensurate in scope with
the degree of protection sought by the appealed claims. In re
Greenfield, 571 F.2d 1185, 1189, 197 USPQ 227, 230 (CCPA
1978). While the showing is limited to a crimped composite
fiber comprising the polyurethane core component exposed on
its surface having a substantially uniform width of between 2
and 25% of the circumference of the filament with a standard
deviation about a mean value not exceeding 1.3% or those
fibers produced by the specific method and spinneret used in
the
showing, the appealed claims are not so limited. On this
record, there is no evidence that the desired properties
attributable to
those fibers produced by the specific method and spinneret are
attributable to the claimed crimped composite fiber.
Determining patentability on the totality of the record,
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Application No. 08/308,639
after due consideration of appellants’ arguments and evidence,
we find that the preponderance of evidence weighs in favor of
obviousness within the meaning of 35 U.S.C. § 103.
Accordingly, we affirm the examiner’s decision rejecting all
of the appealed claims under 35 U.S.C. § 103.
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Application No. 08/308,639
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
JOHN D. SMITH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHUNG K. PAK ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
DOUGLAS W. ROBINSON )
Administrative Patent Judge )
CKP:hh
Appeal No. 1997-2073 12
Application No. 08/308,639
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