Daniel Williams et al.

Patent Trials and Appeals Board

Feb 12, 2020

15149668 - (D) (P.T.A.B. Feb. 12, 2020)

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.
15/149,668 05/09/2016 Daniel Williams WILL-1-1001-1 9408
126238 7590 02/12/2020
Telekta Law, P.S.
P.O. Box 75267
Seattle, WA 98175-0267
EXAMINER
DO, ROWLAND
ART UNIT PAPER NUMBER
3677
NOTIFICATION DATE DELIVERY MODE
02/12/2020 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):
mgibb@yahoo.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DANIEL WILLIAMS, AMADO BATOUR, and ERIK HALDI
____________

Appeal 2019-000337
Application 15/149,668
Technology Center 3600
____________

Before MICHELLE R. OSINSKI, LISA M. GUIJT, and
ARTHUR M. PESLAK, Administrative Patent Judges.

OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–6, 8–10, 13–18, and 20.2 We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as China Manufacturing
Direct. Appeal Br. 3.
2 Claims 7, 11, 12, and 19 are cancelled. Appeal Br. 18–20 (Claims App.).
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THE CLAIMED SUBJECT MATTER
Claims 1, 13, and 17 are independent. Claim 1 is reproduced below.
1. A backing for an ornamental pin, the backing
comprised of:
at least one elongated first portion with a top end and a
bottom end, the at least one elongated first portion including a
first post hole and a second post hole, the first post hole disposed
directly above the second post hole; and
at least one tab portion coupled with the bottom end of the
at least one first portion, wherein the tab portion is disposed at an
angle to the at least one elongated first portion.

EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Smith US 8,114,100 B2 Feb. 14, 2012

REJECTION3
Claims 1–6, 8–10, 13–18, and 20 are rejected under 35 U.S.C.
§ 102(a)(1) as anticipated by Smith. Final Act. 4–7.
OPINION
Claims 1–6, 8–10, 17, 18, and 20
The Examiner finds that Smith discloses all of the limitations of
independent claims 1 and 17, including, among other things, a backing
comprised of an “elongated first portion 30 with a top end a bottom end” and
“at least one tab portion 32 coupled with the bottom end of the at least one
first portion, wherein the tab portion is disposed at an angle (90 degree

3 A rejection of claims 14–16 under 35 U.S.C. §112(b) as being indefinite
(Final Act. 3–4) has been withdrawn (Adv. Act. (Oct. 19, 2018), 2) and is
not before us on appeal.
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angle) to the at least one elongated portion.” Final Act. 4 (underlining
omitted), 7 (making similar findings in connection with independent
claim 17).
Appellant argues that “[t]he ‘locking tabs’ of Smith are not coupled
with the bottom end of the first portion or disposed at an angle to the at least
one elongated portion as would be reasonably interpreted in light of
Appellant’s [S]pecification.” Appeal Br. 7. Appellant has not pointed to an
explicit definition for “end” in their Specification, nor has Appellant
provided any explanation as to how the term “end” should be interpreted in
light of Appellant’s Specification. During patent prosecution, the USPTO
gives claims their broadest reasonable interpretation consistent with the
Specification, reading claim language in light of the Specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). In the absence of the
Specification assigning a particular definition to the claim term “end,” we
construe the term “end” in accordance with the ordinary and customary
meaning of the word “end” as “the last part or extremity, lengthwise, of
anything that is longer than it is wide or broad,” which we determine to be
the broadest reasonable interpretation consistent with the Specification.
Dictionary.com (available at http://www.dictionary.com/browse/end#) (last
visited Feb. 10, 2020) (emphasis added). Appellant has not set forth any
particular cut off point for the “part” of base plate 30 that can be considered
the “end” at the bottom and the “part” that can be considered the “end” at the
top. See id. Accordingly, Appellant does not apprise us of error in the
Examiner’s finding that tab portion 32 is at the bottom end of base plate 30
(Final Act. 4, 7), where tab portion 32 is at least partially located in a part
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along the length of base plate 30 that is nearer the extreme edge than the
middle.
Appellant also does not apprise us of error in the Examiner’s finding
that tab portion 32 is “coupled” with the bottom end of the at least one
portion. Final Act. 4. Appellant has not pointed to an explicit definition for
“coupled” in their Specification, nor has Appellant provided any explanation
as to how the term “coupled” should be interpreted in light of Appellant’s
Specification. The Specification discusses both “removabl[e] coupl[ing]”
and “permanent[] coupl[ing.” Spec. ¶¶ 15, 16. With respect to “permanent[]
coupl[ing],” the Specification describes this occurs, for example, “by weld,
adhesive, or by virtue of the [item] being comprised of a single unit.” Id.
¶ 16. Thus, the Specification contemplates both removable and permanent
connections between items as constituting a coupling of those items, and so
we interpret the term “coupled” to encompass both of these types of
connections. Accordingly, Appellant does not apprise us of error in the
Examiner’s finding that tab portion 32 is “coupled” with base plate 30,
where tab portion 32 is “formed around a perimeter of a superior surface
30s” of base plate 30. Smith 7:1–2; Fig. 1D.
In addition, Appellant does not apprise us of error in the Examiner’s
finding that tab portion 32 is disposed at an angle (about 90 degrees) relative
to base plate 30. Final Act. 4; Smith Fig. 1D. We have also considered
Appellant’s arguments relating to where the Examiner is “instead relying on
a theory of inherency,” but do not find them persuasive because the
Examiner is relying on an explicit disclosure of the claimed subject matter in
Smith. Appeal Br. 7–8.
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We have also considered Appellant’s argument that “tabs 32 [are]
structurally different than Appellant’s ‘at least one tab portion’” and “would
be incapable of performing the same function.” Appeal Br. 8. Appellant
“points to paragraph [0017] and Figs. 1, 2, and 5, which demonstrate . . . an
interpretation of Appellant’s claimed ‘at least one tab portion.’” Id. at 9.
Appellant maintains that “on their face, the disclosures of the tabs 32 of
Smith and Appellant’s ‘at least one tab portion’ are structurally and
functionally different.” Id. To the extent Appellant is arguing that Smith’s
tab 32 does not have all of the structural and functional characteristics of
Appellant’s disclosed tabs, we note that the language of claims 1 and 17
(i) is broader than any particular example of a tab disclosed in the
Specification and (ii) fails to recite any particular functionality of the
claimed tab portion. We decline to import the specific structural and/or
functional characteristics of any exemplary tab in the Specification (e.g.,
such as that described in paragraph 17 of the Specification or illustrated in
Figs. 1, 2, and 5) as limitations of claims 1 and 17. See Superguide Corp. v.
DirecTV Enterps., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“Though
understanding the claim language may be aided by the explanations
contained in the written description, it is important not to import into a claim
limitations that are not a part of the claim. For example, a particular
embodiment appearing in the written description may not be read into a
claim when the claim language is broader than the embodiment.”).
Accordingly, Appellant does not apprise us of error in the Examiner’s
finding that Smith anticipates claims 1 and 17. We sustain the rejection of
claims 1 and 17 under 35 U.S.C. § 102(a)(1) as anticipated by Smith. We
also sustain the rejection of claims 2–6, 8–10, 18, and 20 depending
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therefrom and for which Appellant relies on the same arguments and
reasoning we found unpersuasive in connection with the independent claims.
Appeal Br. 15.
Claims 13–16
With respect to independent claim 13, the Examiner does not rely on
Smith’s tab portion 32 and instead makes alternative findings with respect to
Smith’s tab portion 42a. Final Act. 6. In particular, the Examiner finds that
Smith’s “at least one tab portion 42a [is] coupled with the bottom end of the
at least one first portion [30], wherein the at least one tab portion is disposed
at an angle (0 degree angle) to the at least one first portion [30].” Final
Act. 6.
Appellant argues that “Smith’s tab 42a is not disposed at an angle to
the at least one first portion as claimed in Independent Claim 13, as admitted
by the definition of 0 degree angle provided by the USPTO.” Appeal
Br. 11. The Examiner responds that “an angle of zero degree (in the
rejection) is similar to an angle of 180 when the reference points are
arbitrary.” Ans. 5.
If a tab portion of a backing can be considered to be disposed at an
angle to a first portion of the backing because they are disposed at a “0
degree angle” relative to each other (Final Act. 6), then any and all relative
positions of a tab portion and first portion of a backing can be considered to
be “disposed at an angle” and the relevant claim limitation ceases to limit the
claimed backing and becomes superfluous. Our reviewing court disfavors
any claim interpretation which renders a claim term superfluous. Stumbo v.
Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007). Although
“at an angle” may be construed broadly, it must be construed in a way that
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gives the term effect. The Examiner’s position based on the tab portion of
the backing being disposed at a 0 degree angle relative to a first portion of
the backing fails to give proper weight to the limitation requiring that the
“tab portion is disposed at an angle to the at least one first portion.”
For the foregoing reasons, we find that the Examiner erred in finding
that Smith discloses all of the limitations of independent claim 13. We do
not sustain the rejection of claim 13, or claims 14–16 depending therefrom,
under 35 U.S.C. § 102(a)(1) as anticipated by Smith.4

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–6, 8–10,
13–18, 20
102(a)(1) Smith 1–6, 8–
10, 17,
18, 20
13–16

4 We limit our review to the decision of the Examiner as presented in the
appealed rejection of record, in light of the arguments made, to evaluate
whether Appellant persuasively apprises the Board of error. Although we
note the similarities in claim limitations between independent claim 13 and
independent claims 1 and 17, we leave it to the Examiner to determine
whether a new ground of rejection with respect to independent claim 13, that
is based on the same findings as were made by the Examiner in connection
with independent claims 1 and 17, would be appropriate. Accordingly, we
decline to exercise the discretion afforded to us in 37 C.F.R. § 41.50(b) to
impose a new ground of rejection directed to claim 13 and claims 14–16
depending therefrom. Although the Board is authorized to reject claims
under 37 C.F.R. § 41.50(b), no inference should be drawn when the Board
elects not to do so. See MPEP § 1213.02.
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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED IN PART