Ex Parte Yamazaki et al

Patent Trial and Appeal BoardFeb 7, 2019

14366055 (P.T.A.B. Feb. 7, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. 14/366,055 151297 7590 Chris Mizumoto 1150 Arbol Way San Jose, CA 95126 FILING DATE FIRST NAMED INVENTOR 06/17/2014 Fujio Yamazaki 02/11/2019 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 1005-0023 9623 EXAMINER LEE,JAEYUN ART UNIT PAPER NUMBER 1746 NOTIFICATION DATE DELIVERY MODE 02/11/2019 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): chris.mizumoto@miztechlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte FUJIO YAMAZAKI, NORIO MATSUBARA, and RYO SHIMIZU Appeal2018-003720 Application 14/366,055 Technology Center 1700 Before CATHERINE Q. TIMM, JAMES C. HOUSEL, and WESLEY B. DERRICK Administrative Patent Judges. TIMM, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. Â§ 134(a), Appellant 1 appeals from the Examiner's decision to reject claims 1 and 2 under 35 U.S.C. Â§ 103(a) as 1 Appellant is the applicant, Fuji Bolt Manufacturing Co., Ltd., which, according to the Brief, is the real party in interest. Appeal Br. 2. Appeal2018-003720 Application 14/366,055 obvious over Edwards2 in view ofLee3, Kish4, and Matsumori5. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We REVERSE. The claims are directed to a method of forming a bonding structure between re bar and a bonding attachment. See, e.g., claim 1. The bonding structure is formed by applying an application liquid to either the rebar or the insertion hole of the bonding attachment. It is the composition of the application liquid that is the focus of the appeal. Claim 1, with the language at issue highlighted is reproduced below: Claim 1 : A method of forming a bonding structure to bond a bonding attachment to a rebar, the bonding attachment having an insertion hole for inserting the rebar therein, the method comprising: applying an application liquid including a water-soluble resin emulsion, which is mixed beforehand with a granular fine powder with a grain size of 180 to 600 Âµm, on an outer peripheral surface of the re bar and/or an inner peripheral surface of the insertion hole of the bonding attachment; inserting the re bar in the insertion hole of the bonding attachment; and bonding the bonding attachment to the rebar by pressing the bonding attachment with the rebar inserted in the insertion hole, wherein the granular fine powder is silicon carbide based material or aluminum based material. Appeal Br. 27 ( claims appendix). 2 Edwards, US 4,241,490, issued Dec. 30, 1980. 3 Lee, KR 2003-0094607, published Dec. 18, 2003. 4 Kish et al., US 5,643,994, issued July 1, 1997. 5 Matsumori, JP 62-292365 A, published Dec. 19, 1987. 2 Appeal2018-003720 Application 14/366,055 OPINION We agree with Appellant that the Examiner reversibly erred in combining the teachings of the references. Appeal Br. 4--25. Edwards teaches applying a metal sleeve to rebar using a coating of adhesive that contains particles having a hardness greater than that of both the rebar and the sleeve and compressing the sleeve onto the rebar with sufficient force to cause the particles to bite into and grip the rebar onto the sleeve. Edwards col. 1, 1. 31---col. 2, 1. 5. Edwards specifically discloses that the size of the particles is important, counseling that "[i]f the particles are too small, there will be little improvement." Edwards col. 1, 11. 39-52. Edwards teaches a preferable dimension range of about 0.8 mm to about 1.5 mm (800 Âµm to 1500 Âµm), which is significantly larger than the range of 180 Âµm to 600 Âµm recited in claim 1. As acknowledged by the Examiner, Edwards neither discloses nor suggests using particles in the range of claim 1, forming the particles from silicon carbide or aluminum-based fine powder, or using a water-soluble resin emulsion in the adhesive coating. Ans. 5-6. The Examiner turns to Lee to support a finding of a suggestion to use water-soluble paste-type metal-containing paint compositions with water- soluble binder. Ans. 4--5. The Examiner turns to Kish to support a finding of a suggestion to use particles of size within the range of the claim. Ans. 5. And the Examiner turns to Matsumori to support a finding of a suggestion to use diamond, alumina, or silicon carbide abrasive grains. Ans. 6. The Examiner's findings fail because Edwards' range of particle size differs greatly from that of the claim, and the secondary references to Lee, 3 Appeal2018-003720 Application 14/366,055 Kish, and Matsumori are not sufficiently related to the problems faced by Edwards to provide suggestions for modifying the teachings of Edwards. Although, as found by the Examiner, Lee teaches using a water- soluble paste-type metal-containing paint composition to reduce environmental pollution, Lee does not provide a suggestion for using this composition as an adhesive for bonding a sleeve to rebar. Lee seeks a metal coating that includes metal to give an object the luster and texture of the metal. Lee, Abstract. It is a decorative coating, not an adhesive coating. Edwards teaches using paints and like coating materials such as an epoxy resin/hardener system in a solvent base or a neoprene-based adhesive. Edwards col. 1, 1. 68---col. 2, 1. 3. The Examiner has not provided sufficient evidence that the ordinary artisan would have had a reasonable expectation that the decorative water-soluble metal-containing polyurethane paint of Lee would have provided the necessary properties required for replacing Edwards' adhesive for bonding metal sleeves to re bar. Nor does Kish, which is directed to a filler-containing composition for anchoring objects such as metal bolts in concrete or masonry, provide a suggestion for using smaller particles in the composition of Edwards. Edwards' particles have a specific function: they are to bite into and grip the rebar and sleeve. Edwards col. 1, 11. 31-38. The Examiner has not provided sufficient evidence that those of ordinary skill in the art would have selected smaller particles based on a teaching of using smaller particles as a filler in a concrete or masonry anchoring composition. There is further little evidence to support the Examiner's finding of a reason to use Matsumori' s ceramic carbide abrasive grains as the particle material of Edwards. Matsumori is directed to abrasive grains used in a 4 Appeal2018-003720 Application 14/366,055 grindstone. Edwards is not using the particles as an abrasive material in a grindstone. The Examiner has not established that there is a suggestion within the prior art for using grindstone abrasive grains in the coating material of Edwards. CONCLUSION We do not sustain the Examiner's rejection. DECISION The Examiner's decision is reversed. REVERSED 5