Ex Parte Akiba et al

Patent Trial and Appeal BoardAug 29, 2017

13767617 (P.T.A.B. Aug. 29, 2017)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/767,617 02/14/2013 Masaru Akiba NNN.1093Cont 3468 21254 7590 08/29/2017 MCGINN INTELLECTUAL PROPERTY LAW GROUP, PLLC 8321 OLD COURTHOUSE ROAD SUITE 200 VIENNA, VA 22182-3817 EXAMINER TSANG, LISA L ART UNIT PAPER NUMBER 3643 MAIL DATE DELIVERY MODE 08/29/2017 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MASARU AKIBA, EIJI SUGAYA, HIDEYUKI NAITOU, ATSUSHI SAITOU, HIROYUKI MORI, TOMOYOSHI TURUFUJI, and MASAYUKI WATANABE ____________ Appeal 2015-003294 Application 13/767,617 Technology Center 3600 ____________ Before WILLIAM A. CAPP, GEORGE R. HOSKINS, and BRANDON J. WARNER, Administrative Patent Judges. HOSKINS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Masaru Akiba et al. (“Appellants”)1 appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1–20 in this application. The Board has jurisdiction over the appeal under 35 U.S.C. § 6(b). We REVERSE. 1 The Appeal Brief identifies Globeride, Inc. as the real party in interest. Appeal Br. 1. Appeal 2015-003294 Application 13/767,617 2 CLAIMED SUBJECT MATTER Claims 1 and 7 are independent. Claim 1 illustratively recites: 1. A plurality of fishline guides which are configured to be attached to a rod in an axial direction of the rod, each of the plurality of fishline guides comprising: a frame including a fixing portion configured to be attached to an outer surface of the rod, a ring holding portion to which a guide ring through which a fishline passes is attached, and a support leg connecting the fixing portion to the ring holding portion, the fixing portion being in a plane transverse to a plane of the ring holding portion, wherein the frame includes a plurality of fiber-reinforced resin layers formed by laminating a plurality of fiber-reinforced prepregs in which a reinforcing fiber is impregnated with a synthetic resin, wherein a normal line to a plane of each of the fiber- reinforced resin layers, which forms the ring holding portion, is aligned with an axial direction of the ring holding portion, wherein, when the frame is viewed in a direction which is perpendicular to a first direction from the fixing portion toward the ring holding portion and perpendicular to a second direction from the normal line, the plurality of fiber-reinforced resin layers are bent along a shape of the frame, and wherein at least one of the fiber-reinforced resin layers extends through an entirety of said each of the plurality of fishline guides. Appeal Br. 13 (Claims App.) (emphases added). Appeal 2015-003294 Application 13/767,617 3 REJECTIONS ON APPEAL2 Claims 1–203 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Inoue (US 4,682,439, iss. July 28, 1987) and Muneki (US 6,189,255 B1, iss. Feb. 20, 2001).4 ANALYSIS Claim 1 In rejecting claim 1, the Examiner finds Inoue’s Figures 1–3 illustrate a fishline guide comprising a single fiber-reinforced resin layer as intermediate-layer 3. Final Act. 4–5. Figures 1 and 3 are reproduced below: 2 A rejection of claims 1–20 under 35 U.S.C. § 112, second paragraph, was overcome by an After-Final Amendment entered by the Examiner. See Final Act. 3; Amendment (filed Apr. 15, 2014); Adv. Act. (mailed Apr. 22, 2014). 3 The statement of the rejection (Final Act. 4) lists only claims 1–18, but the body of the rejection also includes claims 19 and 20 (id. at 8–9). 4 The body of the rejection also refers to a third reference, Ohmura (US 4,616,438, iss. Oct. 14, 1986). Final Act. 5, 9. Appellants do not object to the Examiner’s reliance on Ohmura in any respect, so we follow the Examiner’s and Appellants’ lead and identify the rejection as based only on Inoue and Muneki. See Final Act. 4; Appeal Br. 2, 5. Appeal 2015-003294 Application 13/767,617 4 These figures illustrate Inoue’s fishline guide comprising three components: “[a]n intermediate-layer 3 made of thermoplastic synthetic resin with reinforcing fibers,” and inner and outer rings 1, 2 made of metal. Inoue, 2:43–48. Inoue’s fishline guide is manufactured by placing rings 1 and 2 within a die of an injection molding apparatus, and then injecting fiber-reinforced resin into the die to form layer 3. Id. at 3:6–36. Therefore, the Examiner finds Inoue’s layer 3 is not, as claimed, a “a plurality of fiber-reinforced resin layers formed by laminating a plurality of fiber-reinforced prepregs in which a reinforcing fiber is impregnated with a synthetic resin.” Appeal Br. 13 (Claims App.) (emphases added); Final Act. 6. The Examiner finds Muneki discloses fishline guides 14, with each guide 14 comprising “a plurality of fiber-reinforced resin layers formed by laminating (see, e.g., examples 1 and 3) a plurality of fiber-reinforced prepregs (120–126, 130–134) in which a reinforcing fiber is impregnated with a synthetic resin.” Final Act. 6. Figure 4B of Muneki, which illustrates Example 1 cited by the Examiner, is reproduced below: Appeal 2015-003294 Application 13/767,617 5 Figure 4B illustrates fishing guide 14 composed of concentric “prepreg layers” 120, 122, 124, and 126, each made of fiber-reinforced resin. Muneki, 5:50–6:8. The Examiner determines it would have been obvious “to modify the single fiber-reinforced resin layer of Inoue to be [a] plurality of fiber-reinforced resin layers, as taught by Muneki, in order to further reinforce and strengthen each fishline guide.” Id.; Ans. 3. Appellants argue the Examiner’s rejection fails to establish the combination of Inoue with Muneki would have led a person of ordinary skill in the art to the limitation in claim 1 specifying “a normal line to a plane of each of the fiber-reinforced resin layers, which forms the ring holding portion, is aligned with an axial direction of the ring holding portion,” constraining the orientation of the layers. Appeal Br. 6–8. Appellants assert Inoue’s fiber-reinforced resin layer 3 is formed by a single injection molding step, so there is no plurality of prepreg layers in Inoue, much less a plurality of prepreg layers having the ring holding portion orientation specified in claim 1. Id. at 6–7. Appellants also assert Muneki’s plurality of laminated prepreg layers 120–126 (Figures 4A–4B) or 130–134 (Figure 6) do not have the ring holding portion orientation specified in claim 1. Id. at 7. According to Appellants, there is no motivation or predictability in combining Inoue and Muenki to reach the ring holding portion orientation of layers specified in claim 1. Id. The Examiner responds by finding that Inoue’s single fiber-reinforced resin layer 3 has a normal line aligned with an axial direction of the ring holding portion. Final Act. 5. According to the Examiner, the ring holding portion orientation limitation of claim 1 “is a broad limitation, at least insofar as ‘a plane’ of each of the fiber-reinforced resin layers is not Appeal 2015-003294 Application 13/767,617 6 structurally limited in the claim.” Ans. 4. The Examiner annotates Inoue’s Figures 1–2 to identify where the Examiner finds the claimed “plane” and “axial direction” are located and oriented. Id. The Examiner then determines “because the layers of Inoue as modified by Muneki are wrapped around the guide ring (Inoue 3), they each have a vertical plane that has a normal line aligned with an axial direction of the ring holding portion.” Id. at 4–5. We determine the Examiner has failed to provide an articulated reasoning with rational underpinning sufficient to support the legal conclusion of obviousness. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)). It may very well be that the ring holding portion of Inoue’s single “intermediate-layer 3” of fiber-reinforced resin forms a “plane” with a “normal line” aligned with an axial direction of the ring holding portion, as claimed. See, e.g., Final Act. 5; Ans. 4. Nonetheless, the Examiner does not explain why a person of ordinary skill in the art, when modifying Inoue’s single layer ring holding portion to be formed of a plurality of layers in light of Muneki, would orient each of the layers so that a normal line to each layer’s plane is aligned with an axial direction of the ring holding portion, as the claim requires. The Examiner states that the layers in Inoue’s modified ring holding structure would be “wrapped around the guide ring (Inoue 3).” Ans. 5. It is not clear what the Examiner means by that statement, much less how the Examiner’s described structure relates to the claim requirement for orienting each layer in the ring holding portion to have a normal line to a plane of the layer be aligned with the axial direction of the portion. Further, the Appeal 2015-003294 Application 13/767,617 7 Examiner does not articulate a rational relationship between the ring shape of Inoue’s single intermediate-layer 3 and how a person of ordinary skill in the art would orient a plurality of layers into a ring holding portion for use in Inoue’s fishline guide. We are unable to perceive such a relationship, absent recourse to Appellants’ Specification. Indeed, Muneki’s layers 120–126 do not satisfy the ring holding portion layer orientation specified in claim 1. Muneki’s layers 120–126 are a series of nested hollow tubes, which together form a composite hollow tube 14 to receive a fishline. See Muneki, Fig. 1 (illustrating “telescoping fishing rod body section (14)”), Figs. 4A–4B (illustrating section 14 composed of layers 120–126), 4:30–42, 5:26–6:21. Even if one were to shorten the axial length of Muneki’s tubular section 14 to form a ring holding portion akin to Inoue’s Figures 1–3, the layer planes in the resulting ring holding portion would have normal lines extending radially outwardly away from the center of the ring, perpendicular to the axial direction of the ring holding portion. Such normal lines, therefore, would not be “aligned with” the axial direction, as claimed. The Examiner has not provided a rational basis for why modifying Muneki’s layers 120–126 to have the ring holding portion layer orientation required by claim 1 would have led to further reinforcement and strengthening of Inoue’s fishline guide. See Final Act. 6; Ans. 3–5. For the foregoing reasons, we do not sustain the rejection of claim 1 as having been obvious over Inoue and Muneki. Claim 7 Claim 7 contains the limitations at issue in claim 1 discussed above, and is rejected on the same basis. Appeal Br. 14–15 (Claims App.); Final Appeal 2015-003294 Application 13/767,617 8 Act. 4–6. Appellants argue the claims together as a group. Appeal Br. 6–8. For the reasons provided above in connection with claim 1, we do not sustain the rejection of claim 7 as having been obvious over Inoue and Muneki. Claims 2–6 and 8–20 The Examiner’s additional consideration of dependent claims 2–6 and 8–20 does not cure the deficiency noted above in connection with claims 1 and 7. See Final Act. 6–9. For the reasons provided above in connection with claims 1 and 7, we do not sustain the rejection of claims 2–6 and 8–20 as having been obvious over Inoue and Muneki. DECISION The Examiner’s rejection of claims 1–20 as unpatentable over Inoue and Muneki reversed. REVERSED