Ex Parte Kobayashi et al

Patent Trial and Appeal BoardNov 13, 2012

09914033 (P.T.A.B. Nov. 13, 2012)

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. 09/914,033 08/22/2001 Ieyasu Kobayashi 8235 7590 11/13/2012 Rader Fishman & Grauer 1233 20th Street N W Suite 501 Washington, DC 20036 EXAMINER RIVERA, WILLIAM ARAUZ ART UNIT PAPER NUMBER 3654 MAIL DATE DELIVERY MODE 11/13/2012 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 IEYASU KOBAYASHI, MITSUO TOJO, TSUYONARI NOHIRA, SHINJI MURO and HIROFUMI MUROOKA ____________ Appeal 2011-012036 Application 09/914,033 Technology Center 3600 ____________ Before STEVEN D.A. McCARTHY, STEFAN STAICOVICI, and MICHAEL L. HOELTER, Administrative Patent Judges. STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-012036 Application 09/914,033 2 STATEMENT OF THE CASE1 Ieyasu Kobayashi et al. (Appellants) appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting under 35 U.S.C. § 103(a) claims 25- 38 as unpatentable over Sasaki (US 4,576,344, iss. Mar. 18, 1986);2 claims 39-42 as unpatentable over Sasaki and Endo (US 5,106,681, iss. Apr. 21, 1992); claims 43-46 as unpatentable over Sasaki and Ogawa (US 4,911,951, iss. Mar. 27, 1990); and claims 47 and 48 as unpatentable over Sasaki and Leckey (US 3,427,723, iss. Feb. 18, 1969). Claims 1-24 have been canceled. We have jurisdiction over this appeal under 35 U.S.C. § 6. THE INVENTION Appellants’ invention is drawn to a polyester film roll rolled onto a crown shaped core that has a diameter difference between the central portion and the end portions in the range of 0 to 300 x 10-6 m. Spec. 1, ll. 5-7 and Spec. 6, ll. 15-17. Claim 25, the sole independent claim, is representative of the claimed invention and reads as follows: 25. A polyester film roll comprising: a roll of polyester film, said polyester film being rolled onto a core, 1 This is Appellants’ second appeal before the Patent Trial and Appeal Board. In the first appeal (2009-000473, Decision mailed April 30, 2009) (hereafter “Decision”), the Examiner’s decision to reject claims 1-3 and 16- 18 under 35 U.S.C. § 102(b) as anticipated by Sasaki and claims 4-15 and 19-24 under 35 U.S.C. § 103(a) as unpatentable over Sasaki was reversed. 2 The upper bound on the rejected claims in the Examiner’s statement on page 6 of the Answer that “[c]laims 25-28 are rejected under 35 U.S.C. 103(a) as being unpatentable over Sasaki et al.” appears to be a typographical error. See Ans. 11. Appeal 2011-012036 Application 09/914,033 3 wherein said core has a maximum outer diameter and a minimum outer diameter, the difference between said maximum and minimum outer diameters of the core being not more than 300 x 10-6 m. SUMMARY OF DECISION We REVERSE. ANALYSIS The Examiner found that, “Sasaki et al. teach a polyester film roll wound onto a core.” Ans. 6. On page 2 of the Final Rejection from which this appeal is taken, the Examiner found that “Sasaki et al teach all of the elements of the roll but it is unclear as to the difference between the maximum outer diameter and the minimum outer diameter.” Apparently for the first time in the Response to Argument section of the Answer, the Examiner found for various reasons “that there is enough evidence to suggest that the core maximum diameter [of Sasaki] does not exceed 300 microns.” Ans. 13. Presumably, the Examiner intended to find that the difference between the maximum and minimum outer diameters of Sasaki’s core does not exceed 300 m. In a first instance, the Examiner notes that like Appellants’ film roll3, the film roll of Sasaki is wrinkle-free. Ans. 12. See also, Sasaki, col. 5, ll. 28-30. 3 Appellants’ Specification states that a core having a difference in the outer diameters larger than 300 microns is not preferable due to the formation of wrinkles and slacks. Spec. 6, ll. 7-10. See also, Ans. 12. Appeal 2011-012036 Application 09/914,033 4 Secondly, the Examiner notes that any variations in the core diameter, which would transmit themselves through the film layers, “would be detrimental to the film of Sasaki because such would increase the chances of adjacent film slipping upon one another and therefore, the film roll would be easily deformed thereby rendering the roll useless.” Ans. 11-12. See also, Ans. 6 (“Sasaki discusses the disadvantages of the film layers slipping on each other.”) and Ans. 7 (“[I]t would have been obvious to one of ordinary skill in the art that any variations in the core diameter would be detrimental to the film of Sasaki because such would increase the chances of adjacent film slipping upon one another and therefore, the film roll is easily deformed thereby rendering the roll useless.”). Lastly, the Examiner quotes from page 11 of our Decision, where we stated that “there exists a prima facie basis for finding that Sasaki’s working examples necessarily have maximum and minimum diameters sufficiently close to meet the relationships of claims 1, 16[,] and 24,” because the “polyester film roll of Sasaki has the same film length, width, thickness, and rolling hardness as the Appellants’ polyester film roll, and achieves the same result of a wrinkle free film.” Ans. 13. At the outset, it appears that the Examiner is relying on a theory of inherency to establish that the core of Sasaki’s wrinkle-free polyester film roll has a difference between the maximum and minimum outer diameters of “not more than 300 x 10-6 m.” In relying upon the theory of inherency, the Examiner here must prove that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art. Ex parte Levy, 17 USPQ2d 1461, 1464 (BPAI 1990). In this case, the question raised is whether the core of Sasaki’s wrinkle-free polyester film roll necessarily has Appeal 2011-012036 Application 09/914,033 5 a difference between the maximum and minimum outer diameters of “not more than 300 x 10-6 m.” While the Examiner correctly points out that Sasaki discloses a wrinkle-free polyester film roll having the same film length, width, thickness, and rolling hardness as Appellants’ wrinkle-free polyester film roll, this in no way demonstrates that Sasaki’s core has a difference between the maximum and minimum outer diameters of “not more than 300 x 10-6 m,” as the Examiner contends. Decision 11. See also, Sasaki, col. 8, l. 62 through col. 9, l. 46. Just because the polyester film roll of Sasaki is wrinkle-free and variations in the core diameter transmit themselves through the film layers, it does not necessarily mean that its core also has a difference between the maximum and minimum outer diameters of “not more than 300 x 10-6 m.” In other words, just because the polyester film roll of Sasaki is wound to be wrinkle-free, it does not necessarily mean that this is due to a core having a difference between the maximum and minimum outer diameters of “not more than 300 x 10-6 m.” Here, Sasaki specifically discloses that the wrinkle free polyester film roll is obtained by adjusting the hardness of the film roll and the centerline average surface roughness of the polyester film to satisfy a given relationship between them. Sasaki, col. 3, ll. 47-51 and col. 7, ll. 14-25. Sasaki further discloses that the hardness of the film is adjusted by varying “[t]he pressures applied to the surface of the film roll [4] by the touch roll [3] and the tension applied to the film.” Sasaki, col. 6, ll. 56-60 and fig. 1. See also, Sasaki, col. 5, ll. 7-11. Thus, by adjusting the tension and pressures applied to film roll 4, Sasaki’s polyester film roll may be simultaneously wrinkle-free and, in contrast to independent claim 25, have a Appeal 2011-012036 Application 09/914,033 6 difference between the maximum and minimum outer diameters of “more than 300 x 10-6 m.” Lastly, we find the Examiner’s reliance on our Decision to be misplaced because the diameters recited in canceled claims 1, 16, and 24 were the diameters of the claimed polyester film roll and not the diameters of the core, as called for by currently appealed independent claim 25. In conclusion, the Examiner’s finding that the core of Sasaki’s wrinkle-free polyester film roll has a difference between the maximum and minimum outer diameters of “not more than 300 x 10-6 m” is mere speculation and conjecture based on an unfounded assumption that because variations in the core diameter transmit themselves through the film layers Sasaki’s wrinkle-free polyester film roll necessarily has a difference between the maximum and minimum outer diameters of “not more than 300 x 10-6 m.” Alternatively, the Examiner concludes that the subject matter of claims 1, 16, and 24 would have been obvious because Sasaki teaches “the disadvantages of the film layers slipping on each other thereby deforming the roll;” one of ordinary skill would have recognized as a matter of common sense that the “Sasaki roll must be able to maintain its form over a long period of time;” and one of ordinary skill in the art would have recognized that “any variations in the core diameter would be detrimental to the film of Sasaki because such would increase the chances of adjacent film slipping upon one another and therefore, the film roll is easily deformed thereby rendering the roll useless.” (Ans. 6-7). This conclusion raises an issue separate from whether Sasaki inherently discloses a film roll having a core meeting all of the dimensional limitations of claims 1, 16 and 24, see Appeal 2011-012036 Application 09/914,033 7 Schering Corp. v. Geneva Pharmas., Inc., 339 F.3d 1373, (Fed. Cir. 2003) (recognition by one of ordinary skill in the art is not required for inherent anticipation). Nevertheless, the Examiner has not shown that one of ordinary skill in the art would have recognized variations in the outer diameter of a core as a factor contributing to the wrinkling or slippage of film rolled on the core. Since speculation and conjecture cannot form the basis for concluding obviousness, the rejection of independent claim 25 and dependent claims 26- 38 under 35 U.S.C. § 103(a) as unpatentable over Sasaki cannot be sustained. See In re Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988) (If an independent claim is nonobvious under 35 U.S.C. § 103, then any claim dependent therefrom is nonobvious). The Examiner applied the disclosure of Endo to show “the use of inactive particles;” the disclosure of Ogawa to show “a ferromagnetic/coating layer;” and the disclosure of Leckey to show a “plurality of diameters being represented by a curved line.” Ans. 9-10. The addition of Endo, Ogawa, and Leckey does not remedy the deficiencies of Sasaki as described supra. Thus, we cannot sustain the rejections of claims 39-42 as unpatentable over Sasaki and Endo; of claims 43-46 as unpatentable over Sasaki and Ogawa; and of claims 47 and 48 as unpatentable over Sasaki and Leckey. SUMMARY The decision of the Examiner to reject claims 25-48 is reversed. REVERSED Appeal 2011-012036 Application 09/914,033 8 hh