Ex Parte Clarner

Board of Patent Appeals and Interferences

Apr 28, 2008

10688320 (B.P.A.I. Apr. 28, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MARK A. CLARNER
____________

Appeal 2007-2778
Application 10/688,320
Technology Center 3677
____________

Decided: April 28, 2008
____________

Before MURRIEL E. CRAWFORD, JENNIFER D. BAHR, and JOSEPH A.
FISCHETTI, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Mark A. Clarner (Appellant) originally appealed under 35 U.S.C.
§ 134 from the Examiner’s decision finally rejecting claims 1-3, 5-17, 24-28,
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30-37, 45-55, 60-68, and 76-79.1 On page 1 of the Reply Brief2, however,
Appellant states as follows:
After further consideration and in light of the
additional explanation in the Examiner's answer,
Applicant withdraws claims 1, 2, 5, 6, 9, 12, 13,
15, 24-27, 30, 31, 34, 45-47, 51, 53, 60, 65, 66, 76,
77 from the appeal. However, Applicant maintains
the appeal with respect to the final rejection of
claims 3, 7, 8, 10, 11, 14, 16, 17, 28, 32, 33, 35-37,
48-50, 52, 54, 55, 61-64, 67, 68, 78, and 79 in the
Final Office Action dated December 7, 2005.
Appellant’s statement that the claims withdrawn from the appeal “will be
canceled upon allowance of the remaining claims” (Reply Br. 2) is
superfluous, as Appellant’s withdrawal of the appeal as to claims 1, 2, 5, 6,
9, 12, 13, 15, 24-27, 30, 31, 34, 45-47, 51, 53, 60, 65, 66, 76, and 77
operates as authorization to cancel these claims from the application.
MPEP § 1215.03.3 The appeal continues as to the remaining claims 3, 7, 8,
10, 11, 14, 16, 17, 28, 32, 33, 35-37, 48-50, 52, 54, 55, 61-64, 67, 68, 78,
and 79. We have jurisdiction over this appeal under 35 U.S.C. § 6 (2002).

The Invention
Appellant’s claimed invention is directed to arrays of male touch
fastener elements having stems integrally connected with a base, such

1 Claims 4, 18-23, 29, 38-44, 56-59, and 69-75 have been cancelled.
2 We make reference in this opinion to the Reply Brief filed January 9, 2007
and to the Examiner’s Answer mailed November 9, 2006.
3 We note that the Examiner did not direct that claims 1, 2, 5, 6, 9, 12, 13,
15, 24-27, 30, 31, 34, 45-47, 51, 53, 60, 65, 66, 76, 77 be cancelled from the
application, as provided in MPEP § 1215.03. We assume these claims will
be cancelled upon return of jurisdiction of the application to the Examiner.
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fastener elements having two generally parallel oppositely-directed engaging
heads extending from each stem (Specification 1:3-5).

The Rejections
Appellant seeks review of the Examiner’s rejection of claims 3, 7, 8,
11, 16, 17, 28, 32, 33, 36, 37, 48, 49, 52, 54, 55, 61-63, 67, 68, 78, and 79
under 35 U.S.C. § 102(b) as anticipated by Akeno (US 5,781,969, issued
July 21, 1998) and the rejections under 35 U.S.C. § 103(a) of claims 14, 50,
and 64 as unpatentable over Akeno and claims 10 and 35 as unpatentable
over Akeno in view of Takizawa (US 5,537,720, issued July 23, 1996).4
Rather than reiterate the positions of the Examiner and Appellant in
their entirety, we refer in this opinion to the Examiner’s Answer (mailed
November 9, 2006) and Appellant’s Reply Brief (filed January 9, 2007).5
Appellant’s representative presented oral argument on April 9, 2008.

THE ISSUES
At issue in this appeal is whether Akeno teaches the dimensional
ratios recited in claims 3, 7, 8, 16, 17, 28, 32, 48, 49, and 63 so as to
anticipate the subject matter of these claims.

4 Appellant’s appeal of the rejection of claims 24, 45, and 60 under
35 U.S.C. § 103(a) as unpatentable over Akeno in view of Romanko (US
6,484,371 B1, issued November 26, 2002) is withdrawn.
5 We need not make reference in this opinion to Appellant’s Appeal Brief
(filed October 16, 2006), as it includes only arguments directed to features in
claims now withdrawn from the appeal, and arguments repeated in the Reply
Brief.
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Also at issue in this appeal is whether Akeno teaches a fastener
element wherein the lower surfaces of the heads are arched, as called for in
claim 11.
Another issue in this appeal is whether the limitation “wherein the
stem has opposing side surfaces defined by severed resin” patentably
distinguishes the subject matter of claim 14 over Akeno’s fastener.
Also at issue in this appeal is whether the limitation of the ratio of the
overall crook height, measured from a lowermost extent of the
corresponding tip to an uppermost extent of the crook, to an entrance height
being greater than 0.6 patentably distinguishes the subject matter of claim 50
and claim 64 over Akeno’s fastener. An additional issue is whether Akeno
teaches the mold release factor (MRF) recited in claim 64.
Another issue presented in the appeal is whether the combined
teachings of Akeno and Takizawa establish that the subject matter of claims
10 and 35 would have been obvious.

FINDINGS OF FACT
Akeno discloses a molded surface fastener comprising a substrate
sheet 1 and a plurality of engaging elements 2 standing on a front surface of
the sheet. Each engaging element 2 includes a single stem 21, a pair of necks
22 branching from the upper end of the stem, and a pair of straight heads 23
extending outwardly via necks 22 and slightly upwardly sloping at their
vertical ends. Col. 9, ll. 9-17. With reference to Figure 4B, Akeno
expressly discloses the following dimensions in an exemplary embodiment:
• The height H1 is 0.348 mm (col. 11, ll. 34-35).
• The distance H1’ is 0.297 mm (col. 11, ll. 31-33).
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• The head length L1 is 0.152 mm (col. 11, ll. 35-36).
• The height H2 is 0.125 mm (col. 11, ll. 36-38).
• The angle θ’ of inclination of the lower surface of engaging head
23 is 20.6o (col. 11, ll. 39-41).
• The angle θ denotes the angle of inclination of the top surface of
engaging head 23 (col. 6, ll. 18-20, col. 11, ll. 38-39)
• The depth d1 of recess 1a (H1 minus H1’) is 0.051 mm.
Akeno also teaches that the height H2 can be 0 mm, in which case no
stem 21 exists, and a number of engaging heads 23 rise directly from the
front surface of the substrate sheet 1 via a number of necks 22, respectively.
Col. 11, ll. 21-29. Additionally, the height H1’ from the front surface of the
substrate sheet 1 and the uppermost point O of heads 23 can range from 0.2
mm to 1.2 mm. Col. 11, ll. 12-15.
The bottom of the hollow defined between the inner surfaces 22a of
necks 22 “may be disposed at a desired position,” and “should be disposed
preferably in or slightly under a horizontal plane passing lower ends of
bottom surfaces of the engaging heads 23.” Col. 11, ll. 2-6.
An exemplary apparatus for molding Akeno’s surface fastener is
illustrated in Figure 7 and described from column 12, line 45 to column 14,
line 65. The apparatus includes a die wheel 5 provided with engaging-
element-forming cavities 51, an injection nozzle 6 for injecting a molten
resin 4 onto the die wheel, a cooling water bath 7b disposed under the die
wheel 5 into which die wheel 5 is dipped, and a non-illustrated trimming
unit downstream and diagonally upwardly of the cooling bath 7b for cutting
edges of the primary-intermediate molded surface fastener SF, which is a
blank for a final-product molded surface fastener SF’. Upper and lower
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rollers 10, 11 rotate in opposite directions in synchronism with one another
to separate the primary-intermediate surface fastener SF off the die wheel 5.
The trimming unit cuts off opposite side edges of the primary-intermediate
surface fastener SF. The primary-intermediate surface fastener SF is then
moved through and between a pair of heating and pressing rollers 9a, 9b
provided for forming protuberances 23’ of the engaging head 23 (figs. 3, 4A,
and 5).
Akeno appears to be intended as an improvement over the
conventional mushroom-type engaging element having an umbrella-shape
engaging head projecting in all directions from the upper end of the stem.
Col. 5, l. 58 to col. 6, l. 5.
The ordinary and customary meaning of “crook” is “a hooked, bent,
or curved thing or part”.6 Appellant does not define the term “crook” or use
it in the Specification in any manner inconsistent with or divergent from
such meaning.
The ordinary and customary meaning of “overhang” is “to hang or
project over or beyond.”7
We do not find the term “overhang” used in Appellant’s Specification,
outside of the claims, and Appellant does not point to either the use or
definition of that term in the Specification, outside of the claims.
Appellant’s crooks 256, as depicted in Figure 3, extend out beyond
the planar surfaces of the front and rear faces of stem 108.

6 Webster's New World Dictionary 337 (David B. Guralnik ed., 2nd Coll.
Ed., Simon & Schuster, Inc. 1984).
7 Id. at 1013.
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DISCUSSION
Claims 3, 28, 49, and 63
Each of these claims requires each fastener element to have “an
overall length between opposite extents of the heads, measured parallel to
the base, of at least 1.8 times the overall height of the fastener element.”
Appellant contends that the Examiner “improperly relies on scaling of
unscaled patent drawings and/or improper inferences derived from such
drawings.” Reply Br. 4. According to Appellant, Akeno fails to provide a
clear overall length dimension, thereby failing to provide sufficient
information from which to calculate a ratio of overall length to overall
height of the fastener element. Id. We agree with Appellant.
Anticipation is established only when a single prior art reference
discloses, expressly or under the principles of inherency, each and every
element of a claimed invention. RCA Corp. v. Applied Digital Data Sys.,
Inc., 730 F.2d 1440, 1444 (Fed. Cir. 1984). In other words, there must be no
difference between the claimed invention and the reference disclosure, as
viewed by a person of ordinary skill in the field of the invention. Scripps
Clinic & Research Found. v. Genentech Inc., 927 F.2d 1565, 1576 (Fed. Cir.
1991).
The Examiner does not specify where Akeno provides support for the
finding that each fastener element of Akeno has an overall length of at least
1.8 times the overall height of the fastener element. Answer 8. The overall
height H1’ of Akeno’s exemplary fastener element is 0.297 mm and the
minimum height H1’ of Akeno’s fastener element from the front surface to
the uppermost point O of heads 23 is 0.2 mm. Akeno also specifies an
exemplary head length L1 of 0.152 mm, which means that the fastener
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overall length is at least 0.304 mm. Akeno, however, does not specify the
length of the stem 21, or necks 22, between the two heads, and thus does not
permit a calculation of the overall length of the fastener. While the stem
length appears to be at least twice the length L1 of each head in Figure 4B,
which would yield an overall length to height ratio of greater than 1.8,
Akeno does not give any indication that Figure 4B is drawn to scale. “[I]t is
well established that patent drawings do not define the precise proportions of
the elements and may not be relied on to show particular sizes if the
specification is completely silent on the issue.” Hockerson-Halbertstadt,
Inc. v. Avia Group Int’l, 222 F.3d 951, 956 (Fed. Cir. 2000). Thus, Akeno’s
drawings cannot be relied upon to establish that Akeno satisfies the overall
length to height ratio limitation of claims 3, 28, 49, and 63 so as to anticipate
the subject matter of these claims. Accordingly, the rejection of claims 3,
28, 49, and 63 as anticipated by Akeno cannot be sustained.
Claims 7, 32, 48, and 78
Appellant argues that Akeno fails to provide sufficient information to
calculate a ratio of overall length to height of the lowermost extent of a well
of a fastener element (Reply Br. 4). As explained above, Akeno does not
specify the length of the stem between the heads and, thus, does not provide
sufficient information to calculate the overall length of the fastener element.
However, we need not calculate the overall length of Akeno’s fastener
element to reach the conclusion that Akeno teaches a ratio of the overall
length to height of the lowermost extent of a well of greater than 2.5, as
called for in claims 7, 32, and 48. With the bottom of the hollow defined
between the inner surfaces 22a of necks 22 disposed preferably slightly
under a horizontal plane passing lower ends of bottom surfaces of the
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engaging heads 23, as disclosed by Akeno, the hollow bottom (lowermost
extent of a well) height is slightly less than the height H2, which is 0.125
mm in the exemplary embodiment, but which can be as small as zero. Thus,
even assuming a stem or neck length of zero, the ratio of overall length to
height of the lowermost extent of Akeno’s well or hollow is greater than 2L
(0.304 mm) divided by H2 (0.125 mm), which is 2.4, in the exemplary
embodiment, and is greater than 2.5 in embodiments described by Akeno
wherein H2 is or approaches 0 mm, i.e., there is no stem. Accordingly,
Akeno teaches an overall length to height of the lowermost extent of a well
of a fastener element of greater than 2.5, as called for in claims 7, 32, and
48.
For the above reasons, Appellant’s argument does not persuade us the
Examiner erred in rejecting claims 7, 32, and 48 as anticipated by Akeno.
The rejection is sustained.
Appellant does not argue the patentability of claim 78 apart from
claim 48, from which claim 78 depends. Therefore, in accordance with
37 C.F.R. § 41.37(c)(1)(vii), claim 78 falls with claim 48. See In re Young,
927 F.2d 588, 590 (Fed. Cir. 1991); In re Wood, 582 F.2d 638, 642 (CCPA
1978). The rejection of claim 78 is also sustained.
Claims 8, 33, 52, 61, 62, and 79
Appellant argues against the rejection of claims 8, 33, 52, 61, and 62
together as a group. Appellant offers no separate argument against the
rejection of claim 79 apart from that of claim 61, from which claim 79
depends. Therefore, in accordance with 37 C.F.R. § 41.37(c)(1)(vii), we
select claim 8 as the representative claim to decide the appeal of the
rejection of these claims, with claims 33, 52, 61, 62, and 79 standing or
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falling with claim 8. Claim 8 recites that each fastener element has a mold
release factor (MRF) defined as the difference between a minimum solid
length of the stem, measured parallel to the sheet-form base in side view,
and a maximum solid length of the fastener element, measured above an
elevation corresponding to the minimum solid length, to the minimum solid
length of the stem, of less than 0.1. Appellant contends that “the Examiner
improperly relies on scaling of unscaled patent drawings and/or improper
inferences derived from such drawings” in rejecting these claims. Reply Br.
5. According to Appellant, Akeno fails to provide or define either a
minimum solid length of the stem or a maximum solid length of the stem.
Appellant thus reasons that Akeno cannot be used to calculate a MRF. Id.
Akeno’s Figure 4B quite clearly illustrates a stem of constant length.
Scaling of the drawings is not required to convey such information.
Therefore, any elevation along the stem can be identified as the elevation of
the minimum solid length of the stem. Akeno also teaches that the bottom of
the hollow defined between the inner surfaces 22a of necks 22 “should be
disposed preferably in or slightly under a horizontal plane passing lower
ends of bottom surfaces of the engaging heads 23.” Accordingly, Akeno’s
fastener element does not have a solid length above the stem. Consequently,
the maximum solid length of the fastener element measured above an
elevation corresponding to the minimum solid length of the stem is identical
to the minimum solid length of the stem, as both values are equal to the
constant length of the stem. Therefore, Akeno teaches a difference between
the minimum solid length of the stem and the maximum solid length of the
fastener element measured at an elevation above that of the minimum solid
length of the stem, and hence a MRF, of zero, which is less than 0.1.
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Appellant’s argument thus does not demonstrate that the Examiner
erred in rejecting claim 8 as anticipated by Akeno. The rejection of claim 8,
and claims 33, 52, 61, 62, and 79 standing or falling with claim 8, is
sustained.
Claim 11
Claim 11 requires that the lower surfaces of the heads be arched. As
clearly illustrated in Figure 4B, the lower surfaces of Akeno’s engaging
heads 23 are inclined at an angle θ’. They are not arched. The rejection of
claim 11 cannot be sustained.
Claims 16, 36, 54, and 67
Appellant argues the patentability of these claims together as a group.
Thus, in accordance with 37 C.F.R. § 41.37(c)(1)(vii), we select claim 16 as
the representative claim to decide the appeal of the rejection of these claims,
with claims 36, 54, and 67 standing or falling with claim 16.
Claim 16 requires that the “crooks” formed by the lower surfaces
“overhang” surfaces of the stem. Appellant argues that “Akeno fails to
disclose a fastener with crooks, let alone one with crooks overhanging
surfaces of the stem.” Reply Br. 5.
We first address the argument that Akeno fails to disclose a fastener
with crooks. When construing claim terminology in the United States Patent
and Trademark Office, claims are to be given 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, 70 USPQ2d
1827, 1830 (Fed. Cir. 2004). Appellant does not define the term “crook” or
use it in the Specification in any manner inconsistent with or divergent from
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its ordinary and customary meaning of “a hooked, bent, or curved thing or
part.” We thus construe the term “crook” as used in claim 16 as “a hooked,
bent, or curved thing or part.” The lower surface of each of Akeno’s
engaging heads defines a surface bent at its junction with the end surface of
stem 21 and thus forms a “crook.”
Appellant contends that the Examiner has taken a broader view of the
term “overhang” than one of ordinary skill in the art would have in view of
Appellant’s Specification. With reference to Figure 3 of the present
application, Appellant urges that the term is used in a manner consistent with
dictionary definitions such as “to project over something that lies beneath.”
Reply Br. 5. While Appellant’s Figure 3 depicts a surface of the stem lying
directly beneath, i.e., horizontally aligned with, a portion of the crook of the
head, Appellant’s claim is not so limited. The term “overhang” means “to
hang or project over or beyond.” We must be careful not to read a particular
embodiment appearing in the written description into the claim if the claim
language is broader than the embodiment. See Superguide Corp. v. DirecTV
Enterprises, 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.”) The
challenge is to interpret claims in view of the specification without
unnecessarily importing limitations from the specification into the claims.
See E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir.
2003). We find nothing in Appellant’s Specification or drawings that
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indicates that the term “overhang” as used in claim 16 should be construed
any more narrowly than its ordinary and customary dictionary definition.
Construction of the term “overhang” in the sense of to hang or project
beyond is consistent with Appellant’s depiction in Figure 3 of crooks 256
extending out beyond the planar surfaces of the front and rear faces of stem
108. The lower surfaces or crooks of Akeno’s engaging heads 23 likewise
extend out beyond the front and rear surfaces of stem 21, as illustrated in
Figure 4B of Akeno.
For the foregoing reasons, Appellant’s argument does not persuade us
the Examiner erred in rejecting claim 16 as anticipated by Akeno. The
rejection of claim 16, and claims 36, 54, and 67 standing or falling with
claim 16, is sustained.
Claims 17, 37, 55, and 68
We do not sustain the rejection of these claims. The front and rear
surfaces of Akeno’s stems overhung by the lower surfaces or crooks of
engaging heads 23 extend generally normal to the base, i.e., the front surface
of sheet 1, not at an angle of between about 20 and 30 degrees with respect
to the normal, as required in claims 17, 37, 55, and 68. The angle θ of
between 0 and 35o alluded to by the Examiner on page 9 of the Answer is
unavailing, because the angle θ is the angle of inclination of the top surface
of the heads 23, not the angle of inclination of the front and rear surfaces of
stem 21.
Claim 14
Claim 14 requires that the stem have opposing surfaces defined by
severed resin. Appellant argues that “’[t]hose of ordinary skill in the art will
understand the differences between a molded resin surface and a severed
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resin surface, and be readily able to distinguish such surfaces in fastener
element stems” (Reply Br. 6). Appellant has not provided any evidence
either that a person of ordinary skill in the art would understand what is
meant by “severed resin” and how it differs from a molded resin surface or
that a severed resin surface is readily distinguishable from a molded resin
surface by one of ordinary skill in the art. An attorney's arguments in a brief
cannot take the place of evidence. In re Pearson, 494 F.2d 1399, 1405
(CCPA 1974). Appellant has not defined the terminology “severed resin,”
other than to give “a cut-and-stretch process” as an example of a means for
achieving a stem having opposing surfaces defined by severed resin
(Specification 4:1-2). The surface achieved by a cut-and-stretch process
would ostensibly depend upon such parameters as the state of cure of the
resin when cut, the strain rate and temperature at which stretching occurs,
and the orientation of the resin with respect to the cut. Therefore,
Appellant’s bald argument does not persuade us that the limitation that the
stem has opposing surfaces defined by severed resin patentably distinguishes
over the molded surface fastener of Akeno, which is formed in part by
cutting off the opposite side edges of the molded surface fastener SF with a
trimming unit.
As a practical matter, the USPTO is not equipped to manufacture
products by the myriad of processes put before it and then obtain prior art
products and make physical comparisons therewith. In re Brown, 459 F.2d
531, 535 (CCPA 1972). Once the USPTO has made out a prima facie case
that the applicant's claimed product and the product of the prior art
reasonably appear to be the same, the burden shifts to the applicant to prove
otherwise. Id. The burden of proof on the USPTO in making out a case of
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prima facie obviousness for product-by-process claims is less than when a
product is claimed in the more conventional fashion. In re Fessman, 489
F.2d 742, 744 (CCPA 1974).
For the above reasons, we find the teachings of Akeno sufficient to
establish a prima facie case that Akeno’s fastener element and the subject
matter of claim 14 reasonably appear to be the same, so as to shift the
burden to Appellant to prove otherwise. As noted above, Appellant has not
done so. Accordingly, we sustain the rejection of claim 14 as unpatentable
over Akeno.
Claim 50
We do not sustain the rejection of claim 50 as unpatentable over
Akeno. Claim 50 calls for a ratio of an overall crook height, measured from
a lowermost extent of the tip to an uppermost extent of the crook, to an
entrance height below a lowermost extent of the corresponding tip, to be
greater than 0.6. The lowermost extent of the tip of Akeno’s engaging head
23 corresponds to the uppermost extend of the crook (the lower surface of
the head). Therefore, the measurement from the lowermost extent of the tip
to the uppermost extent of the crook in Akeno’s fastener element is zero,
thereby yielding a ratio of crook height to entrance height of zero, which is
not greater than 0.6. A ratio of other than zero could only be achieved by
modifying Akeno to provide a head having a lower surface that extends
outwardly and downwardly toward the base. The Examiner has not
articulated any reasoning with a rational underpinning as to why it would
have been obvious to a person of ordinary skill in the art to so modify
Akeno. While an obviousness analysis “need not seek out precise teachings
directed to the specific subject matter of the challenged claim,” the
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Examiner must provide “some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” KSR Int’l.
Co. v. Teleflex Inc., 127 S.Ct. 1727, 1741 (2007).
Claim 64
Claim 64 depends from claim 61, which includes the limitation of an
MRF of less than 0.1. Appellant argues that Akeno does not mention a MRF
and fails to provide either a minimum solid length of fastener stem or a
maximum solid length of fastener stem, and thus cannot be used to calculate
a MRF (Reply Br. 7). This argument is not persuasive, for the reasons set
forth above in our discussion of the rejection of claims 8, 33, 52, 61, and 62.
Claim 64 further requires a ratio of the overall height of each crook,
measured from a lowermost extent of the tip to an uppermost extent of the
crook, to an entrance height that is greater than 0.6. As explained above in
our discussion of claim 50, the ratio of crook height to entrance height of
Akeno’s fastener element is zero, which is not greater than 0.6. Moreover,
the Examiner has not articulated any reasoning with a rational underpinning
as to why a person of ordinary skill in the art would have been prompted to
modify Akeno to achieve a nonzero ratio. Thus, we cannot sustain the
rejection of claim 64.
Claims 10 and 35
Claims 10 and 35 require that the tips of the heads extend toward the
base. As illustrated in Figure 2, Akeno’s heads 23 are inclined outwardly
from the stem 21 in an upwardly inclined direction away from the front
surface of the sheet 1 and thus have tips extending away from, and not
toward, the base (sheet). The Examiner relies on Takizawa as evidence that
it was known in the art at the time of Appellant’s invention to provide
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fastener components having tips extending toward the base when such
fastener components are used in engaging loops 3 of a mating fastener
component. Answer 11. From this the Examiner determines it would have
been obvious to provide the fastener components of Akeno with tips
extending toward the base. Id.
Appellant argues that neither reference discloses a reason to provide a
fastener element of Akeno’s dimensions with Takizawa’s fastener element
shape. Appellant further argues that neither reference suggests that even if
one were motivated to change the shape of Akeno’s elements, the revised
shape would continue to have the relevant ratios of dimensions taught by
Akeno. Reply Br. 9.
We agree with Appellant. The Examiner has not pointed to any
reason that would have prompted a person of ordinary skill in the art to
modify Akeno to have a shape as taught by Takizawa. In fact, Akeno
appears to be intended as an improvement over the conventional mushroom-
type engaging element having an umbrella-shape engaging head projecting
in all directions from the upper end of the stem. Accordingly, it is not
apparent why a person of ordinary skill in the art would have been prompted
to so modify Akeno, while maintaining the dimensional ratios taught by
Akeno.
In light of the above, Appellant’s argument demonstrates the
Examiner falls short in establishing a prima facie case of obviousness of the
subject matter of claims 10 and 35. The rejection of claims 10 and 35 as
unpatentable over Akeno in view of Takizawa cannot be sustained.

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CONCLUSION
The decision of the Examiner to reject claims 3, 7, 8, 10, 11, 14, 16,
17, 28, 32, 33, 35-37, 48-50, 52, 54, 55, 61-64, 67, 68, 78, and 79 is affirmed
as to claims 7, 8, 14, 16, 32, 33, 36, 48, 52, 54, 61, 62, 67, 78, and 79 and is
reversed as to claims 3, 10, 11, 17, 28, 35, 37, 49, 50, 55, 63, 64, and 68.

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) (2007).
AFFIRMED-IN-PART

vsh

FISH & RICHARDSON PC
P.O. BOX 1022
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