Ex Parte Dingman

Board of Patent Appeals and Interferences

Jun 18, 2010

10427362 (B.P.A.I. Jun. 18, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte GUY R. DINGMAN
____________________

Appeal 2009-013673
Application 10/427,362
Technology Center 3600
____________________

Decided: June 18, 2010
____________________

Before: WILLIAM F. PATE III, JOHN C. KERINS, and
KEN B. BARRETT, Administrative Patent Judges.

PATE III, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from the rejection of claims
1-20. Br 2. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

The claims are directed to a web adjuster and coupling. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A web adjuster device comprising:
a web adjuster portion configured to size a flexible
member, and
a connector portion comprising a snap hook portion,
wherein the snap hook portion is configured to releasably
engage an anchor member apart from the web adjuster device
while allowing accessibility to the web adjuster portion to
facilitate sizing of the flexible member.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Pool
Brown
Nomura
Ishiguro
US 676,910
US 3,591,900
US 4,116,402
US 4,336,636
Jun. 25, 1901
Jul. 13, 1971
Sep. 26, 1978
Jun. 29, 1982

REJECTIONS
Claims 1-5 and 20 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Pool. Ans. 3.
Claims 1-6, 19 and 20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Ishiguro and Pool. Ans. 4.
Claims 1-6 and 20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Brown and Pool. Ans. 5.
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Claims 7-18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ishiguro, Pool and Nomura. Ans. 5.
Claims 7-18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Brown, Pool and Nomura. Ans. 6.

OPINION
The rejection of claims 1-4 as being anticipated by Pool is affirmed.
In rejecting claims 1-5 and 20 as being anticipated by Pool, the
Examiner reads Pool’s inwardly projecting tangs G as the claimed “web
adjuster portion.” Ans. 3; Pool ll. 53-54, figs. 2, 3. Appellant contends that
the Examiner’s interpretation of “web adjuster” is unreasonably broad
because one skilled in the art would recognize a web adjuster as a device
that changes the size of the flexible member. Br. 6-7. Appellant contends the
Examiner’s interpretation is inconsistent with the definition provided in the
Specification. Br. 10.
Appellant’s arguments regarding the Examiner’s interpretation of the
claimed “web adjuster” are unpersuasive. Appellants may limit a claim term
by providing an explicit definition in the Specification. However, the portion
of the Specification cited by Appellant does not contain such a definition.
See Br. 10. Instead, the Specification provides that “the use of any
conventional web adjuster also falls within the scope of the invention.” Spec.
23:12-13. Appellant does not dispute that Pool’s backband F is reasonably
read as a web. Rather, Appellant contends that Pool’s device is merely
clamped to the band and does not change the band’s size. Br. 7. Appellant’s
web adjuster does not change the size of the web either. Rather, it changes
the “operable length of web 141.” Spec. 25:11-13. The opposing end 151 of
the web lengthens as the operable end 141 is shortened, and vice versa. Id.;
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Spec. fig. 65. Thus, consistent with the Specification, a “web adjuster”
means a device that changes the operable size of the web. Pool operates in
this manner. Due to engagement with tangs G, the operable end, the upper
end as viewed in figures 1 and 2, lengthens as the opposing end, the lower
end as viewed in figures 1 and 2, is shortened, and vice versa. Thus, the
Examiner did not err by interpreting Pool’s tangs G as the claimed “web
adjuster.”
Also regarding the rejection of claims 1-5 and 20 as being anticipated
by Pool, Appellant contends that Pool does not disclose engaging an anchor
member. Br. 8. The Examiner correctly identifies this as an intended use
limitation and reasonably found that Pool’s hook I and tongue J, read as the
claimed “connector portion,” would be capable of performing this function.
Ans. 7. Appellant has not provided sufficient evidence or arguments to
establish this finding is in error. See, e.g., In re Schreiber, 128 F.3d 1473,
1477-78 (Fed. Cir. 1997) (claims directed to an apparatus must be
distinguished from the prior art in terms of structure rather than function);
see also In re Swinehart, 439 F.2d 210, 213 (CCPA 1971) (“[W]here the
Patent Office has reason to believe that a functional limitation asserted to be
critical for establishing novelty in the claimed subject matter may, in fact, be
an inherent characteristic of the prior art, it possesses the authority to require
the applicant to prove that the subject matter shown to be in the prior art
does not possess the characteristic relied on.”).
Appellant’s final argument relevant to independent claim 1, that Pool
constitutes non-analogous art, is irrelevant to whether Pool anticipates the
claim. See State Contracting & Eng’g Corp. v. Condotte America, Inc., 346
F.3d 1057 (Fed. Cir. 2003) (“[A] reference may be from an entirely different
field of endeavor than that of the claimed invention or may be directed to an
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entirely different problem from the one addressed by the inventor, yet the
reference will still anticipate if it explicitly or inherently discloses each and
every limitation recited in the claims.” (citation omitted)).
For these reasons, the Examiner’s rejection of claims 1-4 as being
anticipated by Pool is affirmed.

The rejection of claims 5 and 20 as being anticipated by Pool is reversed.
Appellant contends that Pool fails to disclose a web adjuster portion
and connector portion that comprise a monolithic structure as required by
claim 5. Br. 11. This limitation is not addressed in the statement of rejection.
Ans. 3-4. However, the Examiner contends that “[c]learly Pool, shows that
the connector portion and web adjuster portion are ‘monolithic’ in structure
which would be well within the scope of one of ordinary skill in the art when
modifying the teachings of Pool with any of the other references.” Ans. 8.
This statement apparently indicates the Examiner considers Pool’s device to
be “monolithic” and that it also would have been obvious to modify Pool to
be “monolithic.”
The Examiner reads Pool’s tangs G, features of a base plate A, as the
“web adjuster.” Ans. 3. Base plate A of Pool is separate and removable from
clamping plate C, which contains the hook I and tongue J, which the
Examiner reads as the claimed “connector portion.” Id. Since the plates A
and C carrying the respective tangs G and hook and tongue I and J are
separate structures, it is not reasonable to consider tangs G and hook and
tongue I and J as a “web adjuster portion” and “connector portion” that
comprise a “monolithic structure” as required by claim 5.
The second portion of the Examiner’s statement is not relevant to the
question of whether Pool anticipates claim 5. Verdegaal Bros. v. Union Oil
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Co., 814 F.2d 628, 631 (Fed. Cir. 1987) (“A claim is anticipated only if each
and every element as set forth in the claim is found, either expressly or
inherently described, in a single prior art reference” (citations omitted)).
For these reasons, we must reverse the Examiner’s rejection of claim
dependent claims 5 and 20, as being anticipated by Pool.

The rejection of claims 1-6, 19 and 20 as being unpatentable over Ishiguro
and Pool is reversed.
The Examiner contends that Ishiguro teaches a “connector portion
(12)” but fails to show a “snap hook.” Ans. 4. The Examiner concludes that
it would have been obvious to modify Ishiguro with a snap hook of the type
taught by Pool in order to allow the adjuster to be clamped to another
surface or anchor. Id. The Examiner reads aperture 12 of Ishiguro, through
which string 40 is threaded, as the claimed “connector portion.” Id.; Ishiguro
col. 3, ll. 28-59.
Firstly, one of ordinary skill in the art would not understand “a
connector portion” as including Ishiguro’s aperture 12. There is no
indication in Ishiguro, or articulation by the Examiner, that Ishiguro’s
aperture is capable of connecting to anything. It is therefore unreasonable to
read this structure as the “connector portion” required by claims 1 and 19.
See Br. 12-13.
Furthermore, regarding the Examiner’s proposed combination of
Ishiguro and Pool, it is unclear from the Answer why Pool is applied to the
rejection of claim 19 since, according to the Answer, Pool is cited only for
teaching a snap hook portion, which is not required by claim 19. Ans. 4. The
Examiner has failed to articulate any rational basis for the proposed
combination. There would be no benefit in replacing Ishiguro’s aperture
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with the snap hook of Pool or including the snap hook of Pool in this
aperture. Ishiguro’s aperture is provided to allow passage of string 40. See
Ishiguro col. 3, ll. 28-59. Incorporation of Pool’s snap hook would likely
prevent or hinder this operation. Thus, the Examiner has failed to articulate
reasoning with a rational underpinning to support the conclusion that it
would have been obvious to modify Ishiguro’s aperture 12 with Pool’s snap
hook in order to arrive at the claimed invention. In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2006), cited with approval in KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007).
For these reasons, the rejection of independent claims 1 and 19, and
dependent claims 2-6 and 20, as being unpatentable over Ishiguro and Pool
must be reversed.

The rejection of claims 1-4 as being unpatentable over Brown and Pool is
affirmed.
Initially, Appellant argues that there is no teaching or suggestion to
combine the references. Br. 13. This argument is foreclosed by KSR
International Co. v. Teleflex Inc., in which the Court rejected the rigid
requirement of a teaching or suggestion or motivation to combine known
elements in order to show obviousness. KSR, 550 U.S. at 415. The Court
noted that an obviousness analysis “need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” Id. at 418.
Appellant’s argument that Pool constitutes non-analogous art is not
persuasive. The scope and content of the prior art is not limited to
automobiles, as Appellant suggests. Br. 13. Appellant defines the field of
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invention in the Specification as “relating to web adjusters used to adjust a
length of a web or belt” and does not limit the invention to a specific
application. Spec. 1:17-18. The claims do not limit the web adjuster devices
to any specific use, such as automobiles. The relevant prior art is not limited
to devices concerned with automotive application simply because the
Specification shows an example of using the claimed device in such an
environment. Devices for adjusting the operable length of belts used in
horses logically would have commended themselves to an inventor’s
attention when faced with the problem of adjusting the operable length of
webs or belts. Thus, Pool was reasonably pertinent to the particular problem
with which the inventor was involved and is therefore analogous art. See In
re Deminski, 796 F.2d 436, 442 (Fed. Cir. 1986).
Appellant contends that Brown fails to disclose or teach the claimed
“connector portion.” Br. 13. This argument is not persuasive. Brown’s
second fixed crossbar 14, read as the claimed “connector portion,” connects
to the looped end portion 52 of belt 54 and is therefore reasonably read as
the claimed “connector portion.” Ans. 5; Brown col. 2, ll. 56-74.
Appellant’s argument that Brown fails to disclose a “snap hook
portion” does not address the Examiner’s position, since Pool is cited for this
teaching. Br. 13-14, Ans. 5. Appellant’s argument that Pool fails to disclose
a “web adjuster” also does not address the Examiner’s position, since Brown
is cited for this feature, and Pool is only cited to support the Examiner’s
conclusion that it would have been obvious to include a snap hook portion in
Brown. Br. 14, Ans. 5. Incorporating Pool’s snap hook into Brown’s device
would have the predictable result of facilitating quick coupling and
decoupling of the belt and therefore would have been obvious to one having
ordinary skill in the art. Contra Br. 14. “[I]t is not necessary that the
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inventions of the references be physically combinable to render obvious the
invention under review.” In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983)
(citations omitted). One of ordinary skill in the art would know how to
combine the teachings of Brown and Pool in order to arrive at a working
device.
For these reasons, the Examiner’s rejection of claims 1-4 as being
unpatentable over Brown and Pool is affirmed.

The rejection of claims 5, 6 and 20 as being unpatentable over Brown and
Pool is reversed.
As discussed above, Pool does not teach or suggest a monolithic
structure. There is nothing in the prior art or in the understanding of one of
ordinary skill in the art that would have rendered it obvious to create a
monolithic structure when incorporating Pool’s snap hook connecting
portion into Brown. The Examiner’s statement that such a modification
would be well within the scope of one of ordinary skill in the art is not
supported by any evidence or reasoning of record. Thus, the Examiner has
failed to articulate reasoning with a rational underpinning to support the
conclusion that it would have been obvious to modify Brown’s device with
Pool’s snap hook in order to arrive at a monolithic structure. Kahn, 441 F.3d
at 988, cited with approval in KSR, 550 U.S. at 418.
For these reasons, we must reverse the Examiner’s rejection of
dependent claims 5, 6 and 20 as being unpatentable over Brown and Pool.

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The rejections of claims 7-18 as being unpatentable over either Ishiguro or
Brown, in combination with Pool and Nomura are reversed.
Regarding claims 7-18, which depend from claim 5, Nomura, as
applied by the Examiner, fails to cure the deficiencies of Ishiguro and Pool,
or Brown and Pool, discussed above. See Br. 15. Accordingly, we are
constrained to reverse the rejections of claims 7-18 as being unpatentable
over either Ishiguro or Brown, in combination with Pool and Nomura.

DECISION
The rejection of claims 1-4 as being anticipated by Pool is affirmed.
The rejection of claims 5 and 20 as being anticipated by Pool is
reversed.
The rejection of claims 1-6, 19 and 20 as being unpatentable over
Ishiguro and Pool is reversed.
The rejection of claims 1-4 as being unpatentable over Brown and
Pool is affirmed.
The rejection of claims 5, 6 and 20 as being unpatentable over Brown
and Pool is reversed.
The rejections of claims 7-18 as being unpatentable over either
Ishiguro or Brown, in combination with Pool and Nomura are reversed.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2009).

AFFIRMED-IN-PART

Appeal 2009-013673
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