Takeaway: In Ex Parte Sato, the BPAI reversed an obviousness rejection to a claim to a transmission belt. after finding an infinite number of choices existed for the limitation at issue. The claim required fibers oriented along the width of a transmission belt. The Board found the reference did not disclose this orientation, but merely fibers oriented in a direction perpendicular to longitudinal. The Board noted there are an infinite number of directions perpendicular to longitudinal, and the Examiner did not explain why a person of ordinary skill in the art would have selected the width direction from all these possibilities.
Ex Parte Sato
Appeal 2009005955, Appl. No. 10/523,708, Tech. Center 3600
Decided August 16, 2020
Here is the dependent claim at issue, with the language at issue emphasized.
2. A transmission belt according to claim 1, wherein said chopped aramid fibers and said chopped polyester fibers are oriented in a width direction of said belt body.
Though both the parent claim and this dependent claim were rejected under § 103, the Examiner relied solely on the primary reference, Ito, as teaching the emphasized feature. The Examiner alleged that the claimed width-oriented fibers were disclosed by Ito's teaching of fibers "aligned in a direction orthogonal to a longitudinal line L of the belt." The Examiner explained that width is a direction orthogonal to the longitudinal line.
Ito's belt, with line L, is shown below:
In the Appeal Brief, the Applicant argued:
However, paragraph  of Ito '226 does not state that the fibers should be aligned in the width direction of the belt, but rather that they are aligned "... to be orthogonal to a longitudinally extending line L." "Orthogonal" means perpendicular. Ito '226 is saying that the fibers could be aligned in any direction perpendicular to the line L (depicted in Fig. 1 of the-reference). Thus, the fibers could be aligned, for instance, vertically in the sense of the cross sectional drawing shown in Fig. 1 of the reference. This would not be in the direction of the width of the belt, as called for in claim 2. Indeed, the locus of all lines perpendicular to a line (L) would be a plane perpendicular to line L. There would thus be an infinite number of directions in which the fibers could be oriented, and still be orthogonal to line L.
The Board agreed with the Appellant:
[T]here are an infinite number of directions that are orthogonal to the longitudinal line, including vertical. The Examiner does not adequately explain why one of ordinary skill would have found it obvious to select the width direction from all the possible orthogonal orientations. We cannot sustain the rejection.My two cents: I think the infinite-number-of-choices is a great rebuttal to an obviousness argument, and I'm glad to see the Board bought it — but was misapplied to these facts. A belt has three axes – longitudinal, transverse and vertical – each of which is perpendicular to the other two. The reference disclosed fibers oriented in perpendicular-to-longitudinal, which covers transverse (i.e., width) or vertical. So I see two choices, not an infinite number. It's true that there are an infinite number of lines in a particular plane. But the claim was for fibers are oriented in a width direction, so essentially claimed one plane (transverse) and wasn't limited to fibers oriented along one particular line.