Ex Parte Adelman

Board of Patent Appeals and Interferences

Apr 25, 2011

11650711 (B.P.A.I. Apr. 25, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GREGORY M. ADELMAN
____________

Appeal 2010-001066
Application 11/650,711
Technology Center 3700
____________

Before TERESA STANEK REA, Deputy Under Secretary of Commerce for
Intellectual Property and Deputy Director of the United States Patent and
Trademark Office, JENNIFER D. BAHR, and KEN B. BARRETT,
Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Gregory M. Adelman (Appellant) appeals under 35 U.S.C. § 134
(2002) from the Examiner’s decision rejecting claims 1-34. We have
jurisdiction over this appeal under 35 U.S.C. § 6.
The Invention
Appellant’s invention is directed to a writing instrument that is
convertible, by rearrangement of components thereof, back and forth
between a quick-use arrangement, as depicted in figures 1, 2, 6, and 7, and a
full-size arrangement, as depicted in figures 5 and 11, and to a method of
converting the writing instrument from the quick-use arrangement to the
full-size arrangement. Claim 1, reproduced below, is illustrative of the
claimed subject matter.
1. A convertible multi-use writing instrument comprising:
a quick-use arrangement comprising a quick-use writing
instrument and a quick-use cap for encapsulating the quick-use
writing instrument, the quick-use arrangement being
convertible to a full-size arrangement; and
the full-size arrangement, comprising a full-size writing
instrument and being convertible to the quick-use arrangement.

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The Rejections
The following rejections are before us for review:1
(1) The Examiner has rejected claims 1, 2, 9, 12-18, 28, and 31-34 under
35 U.S.C. § 102(b) as being anticipated by Nielson (US 4,974,982,
issued December 4, 1990). Ans. 3; Final Rej. 3.
(2) The Examiner has rejected claims 1-8, 12-19, 23-27, and 31-34 under
35 U.S.C. § 102(b) as being anticipated by Gilbert (US 692,009,
issued January 28, 1902). Ans. 4; Final Rej. 4.
(3) The Examiner has rejected claims 9-11, 20-22, and 28-30 under 35
U.S.C. § 103(a) as being unpatentable over Gilbert and Nielson. Ans.
5; Final Rej. 6.

SUMMARY OF DECISION
We AFFIRM.

ISSUES
The issues presented in this appeal are:
(1) Is Nielson’s pen holder 24 a quick-use writing instrument, as
called for in claims 1, 16, and 17, or quick-use arrangement for

1 The Examiner also rejected claims 1-3, 5, 9-11, 13, 16-19, 24, and 32
under the judicially created doctrine of obviousness type double patenting.
Final Rej., mailed September 17, 2007, pp. 2, 6. However, we need not
reach a decision as to the propriety of that rejection, because our decision to
affirm the rejections under 35 U.S.C. §§ 102 and 103 is dispositive as to all
of the claims on appeal. We note that Appellant has agreed to file a terminal
disclaimer to obviate this rejection in the event that the Examiner indicates
the claims are otherwise allowable. Amendment filed June 29, 2007,
Remarks, p. 9.
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writing, as called for in claims 2 and 18? See Ans. 3; App. Br. 14-
15, 17; Reply Br. 3-4.
(2) Is the fountain pen configuration depicted in figure 1 of Gilbert a
quick-use writing instrument, as called for in claims 1, 16, and 17,
or quick-use arrangement for writing, as called for in claims 2 and
18? Ans. 4, 6-7; App. Br. 16, 18; Reply Br. 5.

FACTS PERTINENT TO THE ISSUES
1. Appellant’s Specification does not explicitly define “quick-use”
writing instrument. However, Appellant does describe a “quick-use
pen” as one that is “readily available for use when needed for quick
tasks such as writing a check or jotting down a note or a phone
number” and one that “may be easily converted to a full-size pen
that may be used for any typical pen application.” Spec. 3:14-17.
Appellant’s Specification further describes that “[i]n particular
embodiments, the pen system provides a readily available, quick-use
pen for quick uses that requires no operation other than pulling the
quick-use pen from its cap and placing the quick-use pen back into
the cap after use.” Spec. 3:21-23.
2. Nielson’s pen holder 24 includes “a ball pen point 26 at one end”
and “a circumferentially extending, diametrically enlarged abutment
28” close to the opposite end. Nielson, col. 3, ll. 4-10; figs. 2, 4.
Further, Nielson’s pen holder 24 includes a tubular ink supply 62.
Id., col. 3, ll. 32-35; fig. 4. Consequently, Nielson’s pen holder 24,
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while clearly shorter than the “considerably lengthened”2 writing
instrument depicted in Nielson’s figure 3, is capable of being used
for quick writing tasks, such as writing a check or jotting down a
note or phone number, by simply unthreading barrel 42 from
threaded zone 32. Id., fig. 2. Nielson discloses converting the
writing instrument from the configuration depicted in figure 1 to the
full-length configuration depicted in figure 3 and back again. Id.,
col. 4, ll. 12-29.
3. Gilbert describes a first arrangement of a fountain pen, depicted in
figure 1, including a nozzle N and ink reservoir H, with a cap C
covering the nozzle end of the pen. The pen as depicted in figure 1
is capable of being used for quick writing tasks, such as writing a
check or jotting down a note or phone number, by simply removing
the cap C.
4. Gilbert describes a second arrangement of the fountain pen, depicted
in figure 2, in which the cap C is placed on the closed end of the
reservoir H opposite the nozzle N. Gilbert’s fountain pen is capable
of being used as a writing instrument in the arrangement depicted in
figure 2. The fountain pen arrangement depicted in figure 2 is
considerably longer than the pen comprising the nozzle N and
reservoir H.

2 Id., col. 4, ll. 40-41.
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DISCUSSION
Rejection (1)
The Examiner correctly found that Nielson anticipates the subject
matter of Appellant’s independent claims 1, 2, and 16-18. See Ans. 3, 4; fact
2. The only finding of the Examiner specifically challenged by Appellant is
the finding that Nielson’s pen holder 24 is a “quick-use writing instrument”
as called for in Appellant’s independent claims 1, 16, and 17, or a “quick-
use arrangement for writing,” as called for in independent claims 2 and 18.
App. Br. 14-15, 17; Reply Br. 3-4. We do not agree with Appellant that this
finding is in error. As we found above, Nielson’s pen holder 24 is capable
of being used for quick writing tasks, such as writing a check or jotting
down a note or phone number, by simply unthreading barrel 42 from
threaded zone 32. See fact 2. Consequently, Nielson’s pen holder 24 is a
“quick-use” writing instrument or arrangement for writing, consistent with
Appellant’s description of a “quick-use pen” in the Specification. See fact 1.
Quoting text from column 4, lines 12-19 of Nielson, Appellant argues
that Nielson “clearly states that only the writing instrument illustrated by
FIGURE 3 of Nielson is used as a writing instrument or for writing.” Reply
Br. 3. This argument is not persuasive of error in the Examiner’s rejection,
because it is not commensurate with the scope of claims 1, 2, and 16-18,
which do not require that the quick-use writing instrument or arrangement
for writing be used for writing. See In re Self, 671 F.2d 1344, 1348 (CCPA
1982) (limitations not appearing in the claims cannot be relied upon for
patentability).
Appellant argues that Nielson teaches away from using the pen holder
24 as a writing instrument or for writing. Reply Br. 4. This argument is not
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persuasive, as “[t]eaching away is irrelevant to anticipation.” See Seachange
Int’l, Inc. v. C-COR, Inc. 413 F.3d 1361, 1380 (Fed. Cir. 2005). Moreover,
in any event, we do not agree with Appellant that Nielson teaches away from
using the pen holder 24 as a writing instrument or arrangement for writing.
The portions of Nielson alluded to by Appellant point out that the
configuration depicted in figure 3 is considerably longer than the pen holder
24, and permits the writer to perform a writing task in comfort without the
additional weight of a key ring3 and keys altering the writer’s signature or
hindering the writing task. While this disclosure might suggest that the
configuration depicted in figure 3 affords a more comfortable arrangement
for writing than the configuration depicted in figure 1, this disclosure in no
way discourages the use of the pen holder 24 to perform quick writing tasks
without threading the barrel 42 onto the threaded zone 30 of the pen holder.
For the above reasons, Appellant has not persuaded us that the
Examiner erred in rejecting independent claims 1, 2, and 16-18 as being
anticipated by Nielson. We sustain the rejection.
Appellant has not presented any separate arguments against the
rejection of dependent claims 9, 12-15, 28, and 31-34 as being anticipated by
Nielson. Thus, in accordance with 37 C.F.R. § 41.37(c)(1)(vii), each of
these claims falls with the independent claim from which it depends. We
therefore sustain the rejection of these claims as being anticipated by
Nielson.

3 Nielson describes a cap 12 threaded onto the pen holder 24 in the
arrangement depicted in figure 1 having a bore 18 for receiving a key ring
carrying any appropriate keys. Nielson, col. 3, ll. 52-55.
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Rejections (2) and (3)
The Examiner correctly found that Gilbert anticipates the subject
matter of Appellant’s independent claims 1, 2, and 16-18. See Ans. 4-5, 7.
In relevant part, the Examiner found, and we agree, that the configuration of
Gilbert’s fountain pen depicted in figure 1 is a quick-use writing instrument
or arrangement for writing, and the configuration depicted in figure 2 is a
full-size arrangement for writing.
Appellant argues that figures 1 and 2 of Gilbert “illustrate the same
arrangement or writing instrument.” Reply Br. 5. This is not accurate. As
we found above, the configuration depicted in Gilbert’s figure 1 is a first
arrangement or writing instrument that is capable of being used for quick
writing tasks, such as writing a check or jotting down a note or phone
number, by simply removing the cap C. See fact 3. In other words, the
configuration of Gilbert’s figure 1 is a “quick-use” writing instrument or
arrangement for writing, consistent with Appellant’s description of a “quick-
use pen” in the Specification. See fact 1. The configuration depicted in
Gilbert’s figure 2 is different from the one depicted in Gilbert’s figure 1, in
that the figure 2 configuration has the cap C placed on the closed end of the
reservoir H opposite the nozzle N, rather than covering the nozzle end. See
fact 4. Additionally, the fountain pen arrangement depicted in figure 2 is
considerably longer than the pen comprising the nozzle N and reservoir H
depicted in figure 1. See id. In other words, the configuration depicted in
Gilbert’s figure 2 is a “full-size” arrangement for writing, as called for in
Appellant’s claims.
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For the above reasons, Appellant has not persuaded us that the
Examiner erred in rejecting independent claims 1, 2, and 16-18 as being
anticipated by Gilbert. We sustain the rejection.
Appellant has not presented any separate arguments against the
rejection of dependent claims 3-8, 12-15, 19, 23-27, and 31-34 as being
anticipated by Gilbert. Thus, in accordance with 37 C.F.R.
§ 41.37(c)(1)(vii), each of these claims falls with the independent claim from
which it depends. We therefore sustain the rejection of these claims as being
anticipated by Gilbert.
Appellants have not presented any argument against the rejection of
claims 9-11, 20-22, and 28-30 as being unpatentable over Gilbert and
Nielson. Thus, we understand Appellant to be relying on the argument
asserted against the rejection of independent claims 2 and 18, from which
claims 9-11, 20-22, and 28-30 depend. For the reasons discussed above, this
argument does not persuade us of error in the rejection. We sustain the
rejection.

DECISION
The Examiner’s decision is affirmed.
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

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