Ex Parte Contey

Patent Trial and Appeal Board

Dec 17, 2015

11963556 (P.T.A.B. Dec. 17, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111963,556 12/21/2007 51111 7590 AKACHANLLP Melvin Chan 900 LAFAYETTE STREET SUITE 710 SANTA CLARA, CA 95050 12/21/2015 FIRST NAMED INVENTOR Hanh Cantey 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 ATTORNEY DOCKET NO. CONFIRMATION NO. KTREPOOl 1214 EXAMINER LAVINDER, JACK W ART UNIT PAPER NUMBER 3677 NOTIFICATION DATE DELIVERY MODE 12/21/2015 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): PTO-INBOX@AKACHANLAW.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HANH CONTEY Appeal2013---010892 Application 11/963,556 1 Technology Center 3600 Before THOMAS F. SMEGAL, MARK A. GEIER, and JASON W. MELVIN, Administrative Patent Judges. SMEGAL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Hanh Contey (Appellant) seeks our review under 35 U.S.C. § 134 of the Examiner's Final rejection under 35 U.S.C. § 103(a) of claims 1, 2, 4--6, 9-12, 26, 27, and 38 as unpatentable over Rucker (US 5,603,143, iss. Feb. 18, 1997) and Aldridge (US 1,239,070, iss. Sep. 4, 1917); and of claims 3, 17-25, 28, 29, 31-35, and 39 as unpatentable over Rucker, Aldridge, and Tanio (US 7,617,576 B2, iss. Nov. 17, 2009). Claims 7, 8, 13-16, 30, 36, and 37 have been canceled. 2 We have jurisdiction under 35 U.S.C. § 6(b). 1 According to Appellant, the real party in interest is the named inventor. Br. 2. 2 The Final Office Action contains an objection to the Specification. Final Act. 2. Such issues either relate to petitionable matters and/or are not appealable matters. See In re Schneider, 481F.2d1350, 1356-57 (CCPA Appeal2013---010892 Application 11/963,556 We AFFIRM. CLAIMED SUBJECT MATTER Claims 1, 17, and 23 are independent claims. Claim 1 is reproduced below and illustrates the claimed subject matter, with disputed limitations emphasized. 1. An apparatus, comprising: a button head comprising a front side and a back side portion, wherein the front side of the button head has a circular shape without any thread-hole decorative features, a shank, non removably coupled to the back side portion of the button head without a gap between the back side portion of the button head and shank, wherein the shank extends a first distance perpendicularly from the back side portion of the button head, the first distance of the shank is greater than a thickness of the button head from the front side to back side portion, and the shank has a first width, where the shank touches the back side portion of the button head, that is less than a diameter of the button head, and an elongated member having a first end coupled to the shank and a second end that is pointed, wherein the elongated member extends perpendicularly from the shank a second distance, the elongated member comprises a cylindrical portion having a uniform diameter from the first end for a third distance, less than the second distance, and from the third distance to the pointed second end of the elongated member, the elongated member has a diameter equal to or less than the uniform diameter and tapers to a point, 1973); In re Mindick, 371F.2d892, 894 (CCPA 1967); see also MPEP § 1002.02(c), item 3(a) and§ 1201, and Ans. 3---6. Thus, the relief sought by Appellant should be presented by a petition to the Commissioner under 3 7 C.F.R. § 1.181 instead of by appeal to this Board. Accordingly, we do not further consider this issue. 2 Appeal2013---010892 Application 11/963,556 the pointed second end of the elongated member 1s configured to be removably received by a fastener, when the fastener is engaged to the elongated member, the shank is exposed from a side direction of the apparatus, and the fastener has a bottom end comprising a fastener opening which can removably receive the pointed second end, and a closed top end that prevents the pointed second end from protruding through the fastener. ANALYSIS Obviousness of Claims 1, 2, 4-6, 9-12, 26, 27, and 38 over Rucker and Aldridge Claims 1, 4-6, 11, 12, 26, 27, and 38(Group11.1)3 Appellant argues claims 1, 4---6, 11, 12, 26, 27, and 38 together in contesting the rejection of these claims as obvious over Rucker and Aldridge. Br. 9 and 10. We select claim 1 as the representative claim for this group, and the remaining claims stand or fall with claim 1. See 37 C.F.R. §41.37(c)(l)(iv). We have considered Appellant's arguments raised in the Appeal Brief, but do not find them persuasive to demonstrate error in the Examiner's rejection of claim 1 as being obvious over Rucker and Aldridge. From an annotated version of Fig. 2 of Rucker, the Examiner finds that Rucker discloses the claimed invention, but looks to an annotated version of Fig. 1 of Aldridge for disclosing "the claimed button having a shank thickness larger than the button head thickness," and "a shank non- 3 For ease of reference, we also include Appellant's identification of claim groupings. See generally, Br. 8-15. 3 Appeal2013---010892 Application 11/963,556 removably attached to the button head and a button head absent [any] 'thread-hole decorations."' Final Act. 2-3. The Examiner reasons because "[t]he specification fails to disclose any criticality attributed to the thickness relationship between the button head and the shank," that "it would have been obvious []to increase the thickness of Rucker's shank to make it stronger or more aesthetically pleasing." Final Act. 4--5. Furthermore, the Examiner finds that "[i]t also would have been obvious to make Rucker's button head with a smooth circular surface absent thread hole decorations as shown in Aldridge," because "[ t ]he specification fails to disclose any criticality with regards to the button head surface." Id. at 5. The Examiner also reasons that "it would have been an obvious design choice to make Rucker' s button head with a smooth surface to change the aesthetics of the button," and that "Rucker's button head to shank connection is considered a permanent connection in certain low stress environments." Id. In addition, the Examiner observes that "Rucker's button head is permanently affixed (non-removably attached) to the shank with an adhesive under a specific force threshold applied to the button," and that "[t]he shank [of Rucker] is considered to be non-removably fixed to the head when the force on the button head is below this force threshold." Id. Appellant states that claim 1 recites "a button head comprising a front side and a back side portion, wherein the front side of the button head has a circular shape without any thread-hole decorative features," and "further recites 'a shank, nonremovably coupled to the back side portion of thebutton head without a gap between the back side portion of the button head and shank, wherein the shank extends a first distance perpendicularly 4 Appeal2013---010892 Application 11/963,556 from the back side portion of the button head."' Br. 9. Appellant contends that "Rucker's button clearly has thread-hole features," and that "Rucker's backing 24 is not a shank." Id. However, as previously set forth, the Examiner relies on Aldridge, not Rucker, for teaching those claim elements. Final Act. 2--4. Thus Appellant is simply attacking Rucker in isolation, rather than as combined with Aldridge. Nonobviousness cannot be established by attacking references individually when the rejection is predicated upon a combination of prior art disclosures. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). As the Examiner explains, Appellant "fails to argue the combination of references and how they meet the claimed limitations," pointing out that "appellant is focused on the deficiencies in the reference to Rucker alone," when "[t]he examiner has stated in the final rejection[] that Rucker fails to disclose certain elements of the claim," and "is not being applied as a single 102 or 103 rejection." Ans. 13. We agree with the Examiner that Appellant's "arguments fail to address the [Examiner's] combination of Rucker in view of Aldridge rejection and are therefore not considered to be persuasive." Id. Appellant continues by stating that claim 1 "recites 'the elongated member has a diameter equal to or less than the uniform diameter and tapers to a point,"' and arguing that "Aldridge has a pin with a conical head a5, which has a diameter greater than the rest of the pin," that "will cause significant damage to fabric when it is inserted and removed." Br. 9. Here again, Appellant is attacking the references in isolation, rather than in combination. See Merck, 800 F .2d at 1097. As the Examiner points out, "[t]he primary reference to Rucker discloses the claimed elongated 5 Appeal2013---010892 Application 11/963,556 member," and for that reason, "Aldridge is not needed [and was not relied upon] to show this limitation." Ans. 14. We agree. Appellant also states that "claim 1 further recites 'the fastener has a bottom end comprising a fastener opening which can removably receive the pointed second end, and a closed top end that prevents the pointed second end from protruding through the fastener.'" Br. 10. Appellant continues by contending that "Tanio's holder is designed for the end of pin (4b in figure 2(c)) to protrude through the holder," and is "intended [for] the pin to be insertable from either side of the holder," concluding that "Tanio teaches away from the [E]xaminer's suggested modification." Id. Again, Appellant misreads the rejection of claim 1 which is over Rucker and Aldridge, not Tanio. As the Examiner points out, "the arguments that Tanio fails to disclose a closed top end and teaches away from the examiner suggested modification are moot [with respect to claim 1]." Ans. 15. Again we agree. We have considered Appellant's arguments raised in the Brief, but do not find them persuasive to demonstrate error in the Examiner's rejection of claims 1, 4---6, 11, 12, 26, 27, and 38 over Rucker and Aldridge. Claims 2 and 9(Group11.2) Appellant selectively recites a portion of the limitations of dependent claims 2 and 9 and contends only that "[ n ]one of the cited references show[s] or suggest[s] a flared shank as recited." Br. 11-12. However, the Examiner points out that "as stated in the final rejection on page 4, 'Aldridge also discloses the edge portion of the shank having a flare."' Ans. 16. Appellant has not apprised us of any error in the Examiner's findings or conclusions, and we find none. 6 Appeal2013---010892 Application 11/963,556 For the foregoing reason, we sustain the Examiner's rejection of claims 2 and 9 over Rucker and Aldridge. Claim 10(Group11.3) Appellant recites the limitations of dependent claim 10 and asserts that Aldridge "is not intended to be attached and removed from fabric multiple times." Br. 11. Here again, Appellant is attacking the references in isolation, rather than in combination. See Merck, 800 F .2d at 1097. After pointing out that "Rucker discloses this exact limitation, fastener 32," the Examiner also observes that "Aldridge's elongated pin is capable of being inserted and removed into a loose weave fabric multiple times." Ans. 17. Appellant has not apprised us of any error in the Examiner's findings or conclusions, and we find none. For the foregoing reason, we sustain the Examiner's rejection of claim 10 over Rucker and Aldridge. Obviousness of Claims 3, 17-25, 28, 29, 31-35, and 39 over Rucker, Aldridge, and Tania While observing that claims 3 and 1 7 "require that the elongated member have an indentation between the uniform cylindrical portion and the tapered portion," the Examiner acknowledges that "[ n ]either Rucker nor Aldridge disclose the use of an indentation for securing the clutch fastening mechanism to the elongated member." Final Act. 6. However, the Examiner finds that "Rucker discloses an alternative design that comprises a spring clutch that frictionally engages the elongated member to secure the fastener," and that "Tanio discloses a clutch/indentation mechanism wherein 7 Appeal2013---010892 Application 11/963,556 the indentation is located between the uniform cylindrical part of the elongated member and the tapered member" (as illustrated in the annotated drawing provided by the Examiner), and reasons that "[t]he advantage of Tanio's clutch/indentation over Rucker's clutch/protrusion mechanism is one of reliability." Id. From the foregoing, the Examiner concludes that because "[t ]he clutch/indentation mechanism [of Tanio] allows the user to better secure and more reliably fasten the clutch to the elongated member," that "it would have been obvious to modify Rucker's clutch/protrusion mechanism with Tanio' s clutch /indentation mechanism to improve the reliability of the fastener." Id. at 6-7. Regarding claims 23, 25, 28, 29, and 31-35, the Examiner also acknowledges that while "Rucker fails to disclose a clutch having a flat top surface and a collar member having a diameter greater than the circular button," that "Tanio discloses this type of clutch mechanism for securing an apparatus to an aperture and is capable of securing the apparatus to a piece of fabric," and reasons that "[b ]oth clutches [would] work equally as well as the other in fastening the apparatus to an aperture in an object, such as a fabric material or piercing." Id. at 7. Furthermore, the Examiner observes that "[t]he specification fails to disclose any criticality to the use of a clutch having a collar and top button surface." Id. From the foregoing, the Examiner reasons that "it would have been obvious to use Tanio's clutch in place of Rucker' s clutch, since they both perform the same function equally as well as the other." Id. at 8. 8 Appeal2013---010892 Application 11/963,556 Claims 3 and 29(Group111.1) Appellant recites the limitations of dependent claims 3 and 29, and first contends that "it would not [have] been obvious to modify Tania's holder to have a covering or sealing for the mechanism," because "Tanio's holder is designed for the end of pin ( 4b in figure 2( c)) to protrude through the holder." Br. 12. (emphasis added). However, Appellant misreads the Examiner's Final rejection. As the Examiner further explains, "[t]he use of the indentation [of Tanio] improves the fastener reliability [of Rucker] and therefore would have been obvious to modify Rucker 's fastener to include the clutch/indentation arrangement [of Tanio] within the closed top end fastener [of Rucker]." Ans. 18. (emphasis added). The Examiner's use of a portion ofTanio's teaching is appropriate in that all of the features of a secondary reference need not be bodily incorporated into the primary reference. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). Furthermore we are instructed by our reviewing court that "if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Appellant also argues that "[i]n the invention, the indentations help prevent the dislodging of the fastener from the elongated member," while "[i]n Tanio's design, the balls 2a and 2b in figure 2(c) allow the pin to [be] more easily disengaged from the clutch." Br. 12. However, we find Appellant's contention to be unavailing as it is not commensurate with claims 3 and 29, neither which is limited to indentations figured to prevent the dislodging of the fastener from the elongated member. See Br. 18, 22, 9 Appeal2013---010892 Application I 1/963,556 Claims App. "[L ]imitations are not to be read into the claims from the specification." In re Van Geuns, 988 F.2d 118I, 1184 (Fed. Cir. I993) (citing In re Zietz, 893 F.2d 3 I9, 32 I (Fed. Cir. I989)). Furthermore, Appellant offers no persuasive evidence to support such an argument. We are instructed that "[a]ttomey's argument[s] in a brief cannot take the place of evidence." In re Pearson, 494 F.2d I399, I405 (CCPA I974) (citing In re Cole, 326 F.2d 769 (CCPA I964)). Appellant finally contends that claims 3 and 29 "also include limitations discussed in group II. I and should be allowable for at least the reasons discussed in this group and for the additional reasons discussed for the other group." Id. For the same reasons set forth above regarding the claims in group II. I, we are not persuaded by this argument. For the foregoing reason, we sustain the Examiner's rejection of claims 3 and 29 over Rucker, Aldridge, and Tanio. Claims 17, 19-23, 25-27, 31-34, and 39(Group111.2) Appellant argues claims I 7, I9-23, 25-27, 3 I-34, and 39 together in contesting the rejection of these claims as obvious over Rucker, Aldridge, and Tanio. Br. I2-I3. We select independent claims I 7 and 23 as the representative claims for this group, and the remaining claims stand or fall with claims I 7 and 23. See 37 C.F.R. §41.37(c)(l)(iv). We have considered Appellant's arguments raised in the Appeal Brief, but do not find them persuasive to demonstrate error in the Examiner's rejection of claims I 7 and 23 as being obvious over Rucker, Aldridge, and Tanio. After quoting selected portions of claims I 7 and 23 that include recitation of the "indentation" in the elongated member and a "closed top IO Appeal2013---010892 Application I 1/963,556 end" in the fastener, Appellant contends that "[t]he cited prior art does not show or suggest the recited features," relying only on arguments previously presented for the claims in Group II. I and Group III. I. Br. I 3. For the reasons set forth above regarding the claims in Groups II. I and III. I, we are not persuaded by these arguments. Thus we sustain the rejection of claims I 7, I9-23, 25-27, 3 I-34, and 39 as obvious over Rucker, Aldridge, and Tanio. Claims 18 and 24(Group111.3) After reciting the limitations of dependent claims I 8 and 24, Appellant contends that "[ n ]one of the cited references show or suggest a flared shank as recited," and rely only on arguments previously presented for Groups II. I and III. I. Br. I3-I4. For the reasons set forth above regarding the claims in Groups II. I and III. I, we are not persuaded by these arguments. Furthermore, as previously noted, Aldridge discloses the edge portion of the shank having a flare. Final Act. 4; see also Ans. I 6. For the foregoing reasons, we sustain the rejection of claims I 8 and 24 as obvious over Rucker, Aldridge, and Tanio. Claim 28(Group111.4) Appellant recites the limitations of dependent claim 28, and repeats verbatim the arguments that we did not find persuasive to demonstrate error in the Examiner's rejection of claims 3 and 29 as being obvious over Rucker, Aldridge, and Tanio. See Br. I4 and compare to Br. I2. Appellant also contends that claim 28 "includes limitations discussed in group II.I and 11 Appeal2013---010892 Application I 1/963,556 should be allowable for at least the reasons discussed in this group and for the additional reasons discussed [in] the other group." Id. at I4. For the same reasons set forth above regarding the claims in group II. I, we are not persuaded by this argument. Thus we sustain the rejection of claim 28 as obvious over Rucker, Aldridge, and Tanio. Claim 35 (Group III.5) Appellant recites the limitations of dependent claim 3 5, and repeats verbatim the arguments that we did not find persuasive to demonstrate error in the Examiner's rejection of claims 3 and 29 as being obvious over Rucker, Aldridge, and Tanio. See Br. I5 and compare to Br. I2. Appellant also contends that claim 3 5 "includes limitations discussed for other groups, including groups II. I, III. I and III.2, and should be allowable for at least the reasons discussed in this group and for the additional reasons discussed for [the] other groups." Id. at I5. For the same reasons set forth above regarding the claims in groups II. I, III. I, and III.2, we are not persuaded by this argument. Thus we sustain the rejection of claim 35 as obvious over Rucker, Aldridge, and Tanio. DECISION We SUSTAIN the Examiner's rejections. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1. I36(a)(l )(iv) (20I2). AFFIRMED rvb I2