Ex Parte Yanagi

Board of Patent Appeals and Interferences

Nov 21, 2003

09888445 (B.P.A.I. Nov. 21, 2003)

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written for publication and is not binding precedent of the Board.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. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte TOSHIKI YANAGI
_____________
Appeal No. 2004-0071
Application No. 09/888,445
______________
ON BRIEF
_______________
Before CAROFF, GARRIS, and MOORE, Administrative Patent Judges.
CAROFF, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal from the examiner’s final
rejection of claim 1. As acknowledged in appellant’s reply
brief, claim 2, the only other claim in appellant’s application,
stands withdrawn from consideration as being drawn to a non-
elected invention and, thus, is not before us on appeal.
Claim 1, the sole claim on appeal, is directed to a porous
sheet substrate from which pieces are to be cut or removed. In
order to facilitate later removal of the pieces from the
Appeal No. 2004-0071
Application No. 09/888,445
1A previously applied rejection under 35 U.S.C. § 112,
second paragraph, is not mentioned in the examiner’s answer and,
thus, presumably has been withdrawn by the examiner on appeal.
2
substrate, cut and non-cut portions are formed in the substrate
along outlines defining the pieces.
The invention is more particularly described in claim 1 as
follows:
1. A porous sheet substrate for cutting off porous
sheet pieces, which comprises a polytetrafluoroethylene
porous material or a composite sheet comprising the
polytetrafluoroethylene porous material and a gas-permeable
reinforcing member laminated on at least one side of the
porous material, wherein cut portions and non-cut portions
are formed along outlines of porous sheet pieces to be cut
in a manner which permits the porous sheet pieces to be cut
off against the non-cut portions by pushing the porous sheet
pieces to be cut.
Claim 1 stands rejected for obviousness under 35 U.S.C.
§ 103 in view of admitted prior art (as described on page 1 of
appellant’s specification) taken with the following prior art
reference:1
Wilk 5,322,521 Jun. 21, 1994
We have carefully evaluated the entire record on appeal in
light of the opposing positions taken by the appellant and the
examiner. Having done so, we conclude that the admitted prior
art taken with Wilk supports a prima facie case of obviousness.
Accordingly, we shall affirm the examiner’s rejection.
Appeal No. 2004-0071
Application No. 09/888,445
3
As explained by the examiner, appellant’s specification
describes the prior art as encompassing, inter alia, a porous
sheet substrate composed of polytetrafluoroethylene (PTFE) from
which pieces are to be cut using a punching machine.
Wilk shows a technique for removing pieces of material from
a PTFE substrate by providing perforations (cut and non-cut
portions) along the outlines defining the pieces of material to
be later sheared from the substrate.
The primary issue in this appeal is whether Wilk is
analogous art, viz., whether the teachings of Wilk are reasonably
pertinent or applicable to the particular problem with which the
appellant was concerned. We answer this question in the
affirmative.
There is no question that, in determining whether a
reference is applicable to an appellant’s claims for purposes of
establishing obviousness, a two-fold analysis is made. First,
one decides if the reference is within the field of the
appellant’s endeavor. If it is not, one next determines whether
the reference is reasonably pertinent to the particular problem
with which the appellant was concerned.
Here, we can agree with the appellant that Wilk is not
within the field of appellant’s endeavor for the reasons
Appeal No. 2004-0071
Application No. 09/888,445
4
presented in the appellant’s brief. However, this does not end
our inquiry. In agreement with the examiner, we find that the
teachings of Wilk are reasonably pertinent to the problem
addressed by appellant’s claimed invention. To wit, both the
appellant and Wilk are concerned with facilitating the removal of
pieces of material (PTFE) from a larger substrate of that
material. In other words, in our opinion Wilk represents
analogous art in the sense that it evidences that it is known to
facilitate such removal by providing perforations (cut and non-
cut portions) along the outlines defining the pieces in order to
make it easier or more convenient to shear off the pieces from
the substrate at some later time.
Appeal No. 2004-0071
Application No. 09/888,445
5
For the foregoing reasons, the decision of the examiner is
affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
MARC L. CAROFF )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
BRADLEY R. GARRIS ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JAMES T. MOORE )
Administrative Patent Judge )
MLC/hh
Appeal No. 2004-0071
Application No. 09/888,445
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