BPAI Board of Patent Appeals and Interferences Patent and Trademark Office (P.T.O.) *1 L'ESPERANCE ET AL. v. NISHIMOTO ET AL. Patent Interference No. 101,882

Board of Patent Appeals and Interferences

Patent and Trademark Office (P.T.O.)





Patent Interference No. 101,882

February 26, 1991

Final Hearing February 5, 1991


Structural Rod For Reinforcing Concrete Material



 Patent granted to Chantal L'Esperance and Germain Belanger on November 4, 1986, Patent No. 4,620,401, Serial No. 06/730,205, filed May 3, 1985.



 Application of Takashi Nishimoto and Toshihisa Miyata filed April 9, 1986, Serial No. 06/849,856. Accorded benefit of Japanese Serial No. 76699/1985, filed April 12, 1985.



Kokulis, Kirkpatrick, Street, Mobille, Dooley, Guttag, Lippitt, Knight, Love, Hymo, Davis, Martin, West, Joyce, Prince, Deaver, Brinkman, Sirilla, Bullinger, Bird, Nixon, Longacre, Crawford, Taltavull, Keller, Donohoe, Parrett, Vanderhye, Scott, Gowdey, Lechter, Lazar, Hosmer, Perry, Harris and Lester for L'Esperance et al. Oral argument by Michelle N. Lester



Oblon, Fisher, Spivak, McClelland, Maier, Neustadt, Miller, Kelly, Hamilton, Kuesters, Pous and Gholz for Nishimoto et al. Oral argument by Charles L. Gholz



Before Boler, Parsons and Caroff






Marc L. Caroff






 This interference involves a patent of the junior party, L'Esperance et al  (L'Esperance), and an application of the senior party Nishimoto et al (Nishimoto). The L'Esperance patent is assigned to Societe Nationale De L'Amiante of Canada, and the Nishimoto application is assigned to Dainihon Glass Industry Co. Ltd., Shimizu Construction Company Ltd. and Kyozin Rope Manufacturing Company Ltd., all of Japan.



 The subject matter involved in this interference relates to a structural rod which may be used for reinforcing a mass of concrete. The following count, the only count involved in this interference, is reproduced here as illustrative of the subject matter in issue:



Count 1



   A structural rod for reinforcing a mass of concrete material comprising:

   (a) a non-metallic non-electrically conductive cylindrical core composed of a plurality of continuous fibers oriented substantially in the longitudinal axis and bound to one another by a thermosetting resin; and

   (b) embossment means on said core, being formed of a plurality of continuous fibers helically wound around said core and impregnated with a thermosetting resin;

   said thermosetting resin achieving a strong bond between the core and the fibers helically wound thereabout so as to prevent relative movement between said core and said embossment means;

   said embossment means defining a mechanical anchorage bond with concrete material when said rod is embedded in said mass of concrete material.



 The claims of the parties which have been designated as corresponding to this count are:



 L'Esperance: Claims 1-12



 Nishimoto: Claims 3, 5-59



 L'Esperance claim 1 and Nishimoto claim 9 correspond exactly to the count.



 The issues before us concern the propriety of the findings in the Decision on Motions of May 22, 1989 (Paper No. 34) as to the motions which were designated therein as 1, 2, 3A, 3B, 4 and 6. [FN1] Also, we shall consider the motion to strike certain portions of the reply brief (Paper No. 45) brought by Nishimoto on November 9, 1989 as well as the corresponding opposition (Paper No. 47) and reply (Paper No. 46).



  *2 Neither party requested a testimony period (see Paper No. 38), but both did file briefs and appeared, through counsel, at final hearing.



 After a thorough review of the aforementioned Decision on Motions in light of the arguments presented by opposing counsel in the briefs and at final hearing, we find ourselves in substantial agreement with the Examiner-in-Chief on all particulars except for the disposition of L'Esperance claim 11. Accordingly, with but one exception, we adopt the position taken by the Examiner-in-Chief as our own with respect to each of the preliminary motions at issue.



 The following discussion of individual motions is presented to highlight the reasoning upon which our conclusions are based.



Nishimoto's Motion to Strike

 The subject motion seeks an order striking footnote 1; page 12, line 13-page 17, line 25; page 23, line 4-page 26, line 8; Appendix B; and Appendix C in the reply brief. We shall grant the motion in question essentially for the reasons presented by Nishimoto in support thereof. Accordingly, none of the aforementioned parts of the reply brief have been considered by us in our review of the Examiner-in-Chief's Decision on Motions.



 For emphasis, we note that the parts of the reply brief in question relate to either preliminary motion 1 or preliminary motion 3A. Motion 1 was not opposed by L'Esperance and motion 3A was dismissed by the Examiner-in-Chief. The Examiner-in-Chief gave due notice (Paper No. 38) that L'Esperance would not be entitled to argue such motions on the merits at final hearing. Moreover, a reply brief is an inappropriate vehicle for introducing evidence, i.e., a new reference (L'Esperance reply brief--Appendix B) or declaration (L'Esperance reply brief--Appendix C), for the first time. In this regard, note that 37 CFR 1.671(e) and 1.682 require that such evidence must be introduced during the party's relevant testimony period and L'Esperance did not request a testimony period (see Paper No. 38).



Motion 4


 In the subject motion, Nishimoto apparently sought to amend its claims 20, 36 and 52-59 in an attempt to distinguish over the prior art Karner reference and to have the amended claims designated as not corresponding to the count or, as phrased in the Nishimoto brief (page 19), to "degroup" those claims from the count. Although the motion was denied, it is our view that the motion should have been dismissed since the rules do not provide for amending or adding claims for the purpose of having them designated as not corresponding to the count. Specifically, the rules provide for amending or adding an application claim only in the situation where the proposed claim corresponds to the count. Note, for example, that § 1.633(c)(2) provides for amending or adding claims to be designated as corresponding to the count; whereas § 1.633(c)(4), the section providing for designation of claims as not corresponding to a count, makes no reference to amending or adding claims. Moreover, § 1.637(c)(2)(ii), which relates to § 1.633(c)(2), requires that the proposed claim must define the same patentable invention as the count, i.e., must correspond to the count (§ 1.601(f)). Thus, it should be apparent that an involved application claim can be amended during an interference proceeding only if the resulting claim corresponds to the count and, conversely, a motion under § 1.633(c)(4) can only be brought with respect to an already existing claim which was originally designated as corresponding to a count.



  *3 Accordingly, we shall not consider the amended versions of claims 20, 36 and 52-59 which were proposed by Nishimoto. When ex parte prosecution resumes after termination of the interference, Nishimoto may request that the primary examiner consider the amended claims consistent with our opinion.



Motions 1, 3B and 6


 The question of the separate patentability of claims with respect to the count (motions 1 and 6) and the question of patentability of claims over the Karner reference (motion 3B) are closely related inasmuch as both parties apparently concede that the invention defined by the count is unpatentable over Karner. Accordingly, we choose to address the issues raised in motions 1, 3B and6 together under one heading.



 Initially, we note that L'Esperance does not dispute that its claims 1-3, 5- 10 and 12 correspond to the count and are unpatentable. Similarly, Nishimoto does not dispute that its claims 9-18, 23-25, 29, 32, 37-39, 41-43 and 48 correspond to the count and are unpatentable. Additionally, from the standpoint of patentability, Nishimoto claims 19-20, 26-28, 30-31, 36, 44-46 and 52-59 [FN2] stand or fall with the count since they have not been separately argued and Nishimoto did not move to "degroup" these claims. At any rate, failure to so move would preclude any argument at final hearing that there is a patentable distinction between such claims and the count. Cf. Kwon v. Perkins, 6 USPQ2d 1747, 1751 (BPAI 1988).



 Our conclusions regarding the patentability of the remaining claims in issue  [FN3] are discussed below. With the invention defined by the count being unpatentable over Karner, any particular claim corresponding to the count is presumed to embrace subject matter which does not constitute a separate patentable invention absent a convincing showing to the contrary. In other words, a party has the burden of establishing by a preponderance of evidence that any argued claim is separately patentable or patentably distinct with respect to the prior art in accordance with the guidelines set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966). See § 1.637(c)(4)(ii) and § 1.601(n). [FN4] Mere reference to a claimed feature which is not disclosed by Karner and not included in the count does not per se establish "separate patentability" within the meaning of § 1.601(n). Rather, the question is whether that feature would have been obvious to a person of ordinary skill in the subject art. Our discussion of the remaining claims in issue now follows:



(a) L'Esperance claim 4



 L'Esperance argues that the feature embodied in claim 4 of "enveloping" a core and embossment means with a layer of thermosetting resin is advantageous or desirable. To wit, L'Esperance asserts that concrete is highly corrosive to glass material, and that an enveloping resin layer will prevent such corrosion. This argument is entirely unpersuasive since it is not commensurate with the scope of claim 4. In this regard, we note that the claim is not limited to the use of a core or embossment means which is composed of a glass material. Moreover, we find nothing in the record which supports the assertion that concrete corrodes glass or that an enveloping resin layer will prevent such corrosion. Even if claim 4 were limited to use of glass material, we note that the Karner disclosure (translation page C-5, lines 8-12) indicates that the resin "completely fills out the sheath" which at least suggests the "enveloping" feature of claim 4.



(b) L'Esperance claim 11



  *4 We agree with L'Esperance that claim 11, by requiring the inclusion of  "aggregates randomly set in" an enveloping resin layer, defines an invention which is patentably distinct from the prior art. Certainly, the prior art does not teach or suggest the inclusion of aggregates as part of a structural reinforcing rod. Nishimoto's allegation of inherency to the contrary notwithstanding, we find no evidence that any outer layer of resin on a prior art reinforcing rod would be in a tacky condition when the rod is embedded in a mass of concrete. Thus, we cannot agree with Nishimoto that aggregate in surrounding concrete would inherently get mixed into any outer layer of resin on a reinforcing rod.



 In view of the foregoing determination that claim 11 represents a patentably distinct or separate patentable invention, this interference is being redeclared in a concurrent paper to indicate that claim 11 does not correspond to the count.



(c) Nishimoto claims 3 and 5-8



 The subject claims have not been argued separately by Nishimoto and, therefore, are considered to stand or fall together with basic claim 5. In re Nielson, 816 F.2d 1567, 2 USPQ2d 1525, 1528 (Fed.Cir.1987); In re Kaslow, 707 F.2d 1366, 217 USPQ 1089, 1096 (Fed.Cir.1983).



 At the outset, we note that the Examiner-in-Chief apparently relied on Schmit as a secondary reference. However, with respect to claim 5, we find that a prima facie case of obviousness under 35 USC 103 is established by reference to Schmit alone. To support a finding of patentability, Nishimoto argues that: (1) Karner does not teach or suggest that the glass fibers or glass yarn strands which are wrapped around a reinforced core can be twisted together and (2) while it may have been within the skill of an ordinary artisan to determine the pitch of twisted material necessary to optimize desired properties with regard to the subject matter of Schmit (i.e., a reinforced vulcanized tire), there is no evidence of record that one of ordinary skill in the art to which the subject claims pertain (i.e., reinforcement of materials such as concrete and rock) would have arrived at a pitch within the specific numerical range set forth in claim 5 from a perusal of Schmit. Each of these arguments is not convincing. With respect to the first argument, it is Schmit not Karner which essentially discloses the basic structure described in claim 5. In this regard, attention is directed to Schmit at col. 2, 1. 53-col. 3, 1. 2. In particular, Schmit teaches that yarn filaments which are wrapped around a reinforced core can be twisted together. With respect to the second argument, it is noted that claim 5 is not limited to any particular structural environment. In other words, there is nothing in claim 5 which limits the described reinforcing member to a concrete or rock environment. In this respect, claim 5 appears to read on a reinforcing member which is capable of being used to reinforce a tire as in Schmit. Nishimoto has not shown that the pitch range recited in claim 5 yields unexpected results or is useful only in one particular environment.



  *5 For the foregoing reasons, claims 3 and 5-8 are viewed together as being unpatentable over Schmit.



(d) Nishimoto claims 21 and 22



 Although argued separately, these claims are treated together since the determination of their status involves the same basic considerations. Nishimoto argues that the prior art does not teach or suggest the structure recited in claim 21 ("embossment means comprises a plurality of separate, spaced turns") or claim 22 ("embossment means comprises a plurality of spaced turns ... connected to one another in the longitudinal direction of said core"). We agree with L'Esperance, however, that the particular configuration recited in each of these claims appears to be of no patentable significance. Nishimoto has failed to present any evidence that the claimed configurations are something more than mere design variations well within the ordinary skill of those versed in the art. Nor has Nishimoto established or even argued that use of the claimed configurations in lieu of that disclosed in the prior art solves a particular problem or otherwise provides a particular benefit. Cf. In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975).



(e) Nishimoto claims 33 and 47



 As above, claims 33 and 47, although separately argued, are treated together here since they relate to similar subject matter, namely the use of carbon fibers or filaments to form components of a reinforcing member. As indicated by the Examiner-in-Chief on page 3 of his Decision on Motions, the Riley reference suggests that carbon fibers may be used as an alternative reinforcing material in lieu of glass fibers. Thus, we have no doubt that a person of ordinary skill in the art would have found it prima facie obvious to construct a prior art reinforcing member from components composed of carbon filaments. Nishimoto has not shown otherwise. We see little merit in the argument that the reinforcing fibers in Riley are distributed generally homogeneously throughout a cementitious mass. Clearly, Riley is not relied on to show the particular structure claimed by Nishimoto. It is Karner and the count which describe a reinforcing member including an embossment means wound around and bound to a core. When resolving questions of obviousness arising under 35 USC 103, it is appropriate to consider what the prior art references, taken collectively, would have suggested to a person of ordinary skill in that art. Cable Electric Products, Inc. v. Genmark, Inc., 770 F.2d 1015, 226 USPQ 881, 886-7 (Fed.Cir.1985); In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).



(f) Nishimoto claims 34 and 35



 With respect to these claims, Nishimoto argues that the prior art does not teach any particular core fiber distribution. This argument fails not only because a particular fiber distribution would be, prima facie, an obvious matter of design choice, but also because the argument is not commensurate with the scope of the claims. In this regard, note that claim 29 requires only that "at least some" of the core fibers are reinforcing fibers. This does not exclude the possibility that all the core fibers are reinforcing fibers. Therefore, claims 34 and 35, which depend from claim 29, are not limited to a particular distribution where reinforcing fibers are present only in one part of the core.



(g) Nishimoto claim 40



  *6 With respect to claim 40, Nishimoto argues that the prior art does not teach any particular concentration of resin impregnated in an embossment means projecting from a reinforcing member. This argument is not sufficient to overcome the prima facie case of obviousness since the selection of an optimum range of values for a particular system parameter is generally considered to be within the realm of ordinary skill. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980); In re Reni, 419 F.2d 922, 164 USPQ 245 (CCPA 1970); In re Mostovych, 339 F.2d 455, 144 USPQ 38 (CCPA 1964).



(h) Nishimoto claims 49 and 50



 With respect to these claims, Nishimoto argues that the prior art does not teach or suggest the particular core configurations described in the subject claims. This argument is unpersuasive essentially for the same reasons presented above with respect to claims 21 and 22. Moreover, we note that claim 1 of Karner suggests that a reinforcing rod may have "varied cross section shapes".



(i) Nishimoto claim 51



 As with claims 33 and 47 (see the previous discussion of these claims), we agree with the Examiner-in-Chief that a person of ordinary skill in the art would have found the subject matter of claim 51 prima facie obvious from Karner or the count, with each taken in view of Riley. In this regard, it is noted that Riley (col. 2, 1. 23-34) discloses a number of alternative materials, including steel, which may be used for producing reinforcing fibers. Thus, it would have been obvious to construct a prior art reinforcing member from a core component composed at least in part of steel fibers.



 We note that claim 51 does not characterize the recited "steel reinforcing member" in structural terms. Accordingly, claim 51 reads on a reinforcing rod having a core composed entirely of steel fibers wherein the exterior fibers could be said to be arranged around a "steel reinforcing member" (i.e., the interior fibers). In any event, our conclusion would not change even if claim 51 were further limited to specifically require that the core be composed of different materials, namely a "steel reinforcing member" surrounded by fibers other than steel fibers. In such an eventuality, the prima facie obviousness of the combination would flow from the expectation of obtaining additive results. Cf. In re Kerkhoven, 626 F.2d 846, 205 USPQ 1069 (CCPA 1980).



Motions 2 and 3A


 These motions were dismissed as moot by the Examiner-in-Chief in his Decision on Motions. As pointed out in Paper No. 38, issues raised in dismissed motions are ordinarily not entitled to be raised at final hearing. Cf. Land v. Dreyer, 155 F.2d 383, 69 USPQ 602 (CCPA 1946). We find no compelling reason, and neither party has provided any, why motions 2 and 3A should be considered on the merits in view of the fact that all the claims to which the motions relate have been found unpatentable over the prior art. Accordingly, we find that the motions in question were properly dismissed and will not be further considered here.





  *7 For the foregoing reasons, judgment as to the subject matter of the count is hereby entered against both parties.



 Accordingly, Chantal L'Esperance and Germain Belanger are not entitled to their claims 1-10 and 12 corresponding to the count, and Takashi Nishimoto and Toshihisa Miyata are not entitled to their claims 3 and 5-59 corresponding to the count.






James R. Boler






Marion Parsons, Jr






FN1. We note that motions 1 and 4 were not opposed by L'Esperance and, accordingly, we have not considered any arguments presented by L'Esperance in his brief or reply brief which pertain to those motions. § 1.655(b).



FN2. Note that this group of claims includes unamended claims 20, 36 and 52-59. With reference to the proposed amendment of these claims, see the discussion with respect to motion 4, supra.



FN3. The remaining claims in issue are L'Esperance claims 4 and 11 and Nishimoto claims 3, 5-8, 21-22, 33-35, 40, 47, 49-51.



FN4. The "prior art" relied upon by the Examiner-in-Chief in his Decision on Motions evidently consists of the count under § 1.601(n) or, alternatively, Karner (Offenlegungsschrift 1936078) with each taken either with or without Schmit (U.S. Patent No. 4,458,475) or Riley (U.S. Patent No. 4,133,928).

   Copies of all the prior art references and the argued claims as well as a translation of the Karner reference appear as appendices attached to the L'Esperance and Nishimoto briefs.


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