Ex Parte DingmanDownload PDFBoard of Patent Appeals and InterferencesJun 18, 201010427362 (B.P.A.I. Jun. 18, 2010) Copy Citation 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 Appeal 2009-013673 Application 10/427,362 2 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. Appeal 2009-013673 Application 10/427,362 3 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.; Appeal 2009-013673 Application 10/427,362 4 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 Appeal 2009-013673 Application 10/427,362 5 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 Appeal 2009-013673 Application 10/427,362 6 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 Appeal 2009-013673 Application 10/427,362 7 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 Appeal 2009-013673 Application 10/427,362 8 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 Appeal 2009-013673 Application 10/427,362 9 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. Appeal 2009-013673 Application 10/427,362 10 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 Application 10/427,362 11 nhl Woodard, Emhardt, Moriarty, McNett & Henry LLP 111 Monument Circle, Suite 3700 Indianapolis IN 46204-5137 Copy with citationCopy as parenthetical citation