Ex Parte Kageyama et al

Board of Patent Appeals and Interferences

Sep 18, 2002

09411370 (B.P.A.I. Sep. 18, 2002)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte HIDEHEI KAGEYAMA, SHOUJI ANZAI and YOSHIHIDE MITSUYA
____________
Appeal No. 2001-2353
Application No. 09/411,370
____________
ON BRIEF
____________
Before FRANKFORT, STAAB, and BAHR, Administrative Patent Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 4, all of the claims pending in the
application.
Appellants' invention relates to a double-chuck mechanical
pencil having an adapter (3) combined with the pencil's barrel
(1) and lead tank (4) so that the back chuck (5) and front chuck
(11) are able to slide axially within the barrel, but are
restrained from rotation relative to the barrel and each other.
Appeal No. 2001-2353
Application No. 09/411,370
2
The pencil also includes a restraining means (e.g., 3c, 13b),
respectively provided on the adapter (3) and eraser support
structure (17) to prevent rotation therebetween. A primary
object of appellants' invention is to prevent the torsional
breakage of a lead held by the front and back chucks,
particularly when the eraser (E) is being used. In response to
an election requirement set forth by the examiner in Paper No. 3
(mailed Dec. 30, 1999), appellants elected the species shown in
Figure 11 of the drawings for prosecution in this application. A
copy of claims 1 through 4 on appeal may be found in Appendix A
of appellants' brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Torii 4,106,874 Aug. 15, 1978
Kageyama et al. 5,683,191 Nov. 4, 1997
(Kageyama)
In making a provisional obviousness-type double patenting
rejection of claims 1 through 4 in the final rejection (Paper No.
8), the examiner has additionally relied upon appellants'
Appeal No. 2001-2353
Application No. 09/411,370
1 Appeal No. 2001-2361 in appellants’ co-pending application
No. 09/411,369 is being decided concurrently herewith.
2 As indicated on page 4 of the examiner's answer, the
provisional double patenting rejection of claims 2 through 4 "has
been vacated in light of applicant's [sic] remarks in the Brief
on Appeal, pp. 11-13."
3
co-pending application No. 09/411,369, filed October 4, 1999.1
Claim 1 stands provisionally rejected under the judicially
created doctrine of obviousness-type double patenting as being
unpatentable over claims 1-3 of appellants' co-pending
application No. 09/411,369.2
Claims 2 and 3 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point
out and distinctly claim the subject matter which appellants
regard as the invention.
Claims 1 and 2 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Kageyama.
Claims 1, 3 and 4 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Torii.
Appeal No. 2001-2353
Application No. 09/411,370
4
Rather than reiterate the details of the above-noted
rejections and the conflicting viewpoints advanced by the
examiner and appellants regarding those rejections, we refer to
the final rejection (Paper No. 8, mailed October 17, 2000), the
examiner's answer (Paper No. 13, mailed March 12, 2001) and to
appellants' brief (Paper No. 12, filed March 2, 2001) and reply
brief (Paper No. 14, filed May 1, 2001) for a full exposition
thereof.
OPINION
After careful consideration of appellants' specification and
claims, the teachings of the applied references and each of the
arguments and comments advanced by appellants and the examiner,
we have reached the determinations which follow.
Turning first to the examiner's provisional rejection of
claim 1 under the judicially created doctrine of obviousness-type
double patenting, we observe that the examiner has not identified
the differences between claim 1 of the present application and
claims 1 through 3 of appellants' co-pending application
No. 09/411,369, or provided reasons why any such differences
Appeal No. 2001-2353
Application No. 09/411,370
5
would have been obvious to one of ordinary skill in the art at
the time of appellants' invention. Instead, it appears that the
examiner has merely asserted that claim 1 of the present
application is not patentably distinct from claims 1 through 3 of
the co-pending application, contending (final rejection, page 4)
that
the broad limitations in the instant claims encompass
the specific limitations of the same structure in the
copending application, while the specific limitations
in the copending claims anticipate the broad
limitations of the same structure in the instant
claims. If claim 1 of either application were
allowable prior to allowance of the other claim 1, it
would extend the right to exclude on both elements A
and B identified above due to the overlap in scope.

Since the examiner has clearly not established a prima facie case
of obviousness-type double patenting, we are constrained to
reverse the examiner's rejection of claim 1 on that basis.
However, given that the examiner's comments above appear to
relate to a nonstatutory double patenting rejection of the type
made in In re Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968),
we REMAND for the examiner to consider the guidelines set forth
in MPEP § 804 (pages 800-26 to 800-28) regarding that type of
rejection, and particularly to obtain proper authorization from
Appeal No. 2001-2353
Application No. 09/411,370
6
the Technology Center (TC) Director if such a rejection were to
be made in the present application. As an alternative, if the
examiner is of the view that the original election requirement
was, at least in-part, improper, then the examiner might wish to
consider following the guidance in MPEP § 822 and, if
appropriate, withdraw the requirement and require the conflicting
applications to be joined. If a double patenting rejection is
made or reimposed in the present application, the examiner also
should provide a detailed explanation of why the protections
afforded appellants by 35 U.S.C. § 121 are inapplicable. The
examiner's mere assertion that the statute does not prohibit a
double patenting rejection where the applications are claiming
the same or substantially the same invention is of little value,
especially given appellants' arguments in their brief (pages 9-
13) and reply brief (pages 2-4).
Looking next to the examiner's rejection of claims 2 and 3
under 35 U.S.C. § 112, second paragraph, the examiner asserts
that the subject matter of these claims is specifically disclosed
with respect to the species shown in Figure 10 and that the
disclosure pertaining to the elected species of Figure 11 does
not mention the "plurality of slits" of claim 2 or the engagement
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Application No. 09/411,370
7
of the push cap (19) and the eraser support member as set forth
in claim 3. Thus, the examiner concludes that because claims 2
and 3 are directed to a non-elected species, they cannot, by
definition, read on the elected embodiment and are, therefore,
indefinite.
A careful review of the specification appears to refute the
examiner's assertion that the subject matter of claim 2 is
limited to the embodiment of Figure 10. More particularly,
page 18, lines 23-25, of the specification expressly state that
the barrels (1) of the pencils "shown in Figs. 8, 9 and 11 may be
provided in their back ends with recesses similar to the recesses
1b shown in Fig. 10." Thus, the embodiment of Figure 11 may be
provided with such recesses or "slits" as they are termed in
claim 2 on appeal. As for claim 3, we see no reason why this
claim is not readable on the elected species of Figure 11 and the
examiner has provided none. The push cap (19) seen in Fig. 11 is
"detachably fitted in a rear portion of the support member" (17)
and in order to prevent disengagement of the support member (17)
and the adapter (3) each time the eraser is to be used, logic
would dictate that the fit between the push cap and the support
member would be looser than that between the support member and
Appeal No. 2001-2353
Application No. 09/411,370
3 We understand the requirement of the push cap being
detachably fitted "in" a rear portion (claim 3) or "in" an upper
portion (claim 4) of the support member, within the context of
appellants' invention, to encompass the arrangement seen in
Figures 8, 9, 10 and 11, wherein the cap is actually detachably
fitted on the support member (17). Appellants may wish to
clarify this aspect of their invention in any further prosecution
of the application before the examiner.
8
the adapter, as appellants have described in their
specification.3
In light of the foregoing, we will not sustain the
examiner's rejection of claims 2 and 3 under 35 U.S.C. § 112,
second paragraph.
Regarding the examiner's rejection of claims 1 and 2 under
35 U.S.C. § 103 as being unpatentable over Kageyama, we find that
we are in agreement with appellants' position as set forth in the
brief and reply brief. According to the examiner, it would have
been obvious for one of ordinary skill in the art to add a rear
chuck to the mechanical pencil of Kageyama "in light of what
applicant [sic] has admitted is prior art in this respect [i.e.,
in the specification, page 1, lines 10-12]" (answer, page 5).
However, in our opinion, the mere fact that double-chuck
mechanical pencils existed in the prior art provides no teaching,
Appeal No. 2001-2353
Application No. 09/411,370
9
suggestion or incentive for the examiner's proposed modification
of the single-chuck mechanical pencil of Kageyama. Nor does the
fact that certain of the prior art double-chuck pencils included
improvements to such pencils to reduce waste lead, as noted on
page 1 of appellants' specification, provide any basis for
modifying the single-chuck mechanical pencil of Kageyama in the
manner urged by the examiner. Like appellants, we find that the
examiner has failed to set forth a prima facie case of
obviousness, and for that reason we will not sustain the
rejection of claims 1 and 2 under 35 U.S.C. § 103 based on
Kageyama.
The last of the examiner's rejections for our review is that
of claims 1, 3 and 4 under 35 U.S.C. § 103 as being unpatentable
over Torii. In this instance, the examiner contends, inter alia,
that Torii discloses a double-chuck mechanical pencil having a
front lead chuck (15) and a back lead chuck (7) connected to a
lead tank (8). Appellants argue that the lead holding member
(15) of Torii is not a chuck and clearly would not have been
recognized as such by one of ordinary skill in the art. We agree
with appellants and incorporate herein their arguments set forth
in the brief (pages 17-23) and reply brief (pages 6-7) as our
Appeal No. 2001-2353
Application No. 09/411,370
10
own. In that regard, it is clear to us that one of ordinary
skill in the art would have understood that a "lead chuck" must
actually clamp the lead and hold it in a fixed position during
use of the pencil for writing, and that the member (15) of Torii
performs no such function. Accordingly, the examiner's rejection
of claims 1, 3 and 4 under 35 U.S.C. § 103 based on Torii will
also not be sustained.
In summary:
The examiner's decision rejecting claim 1 under the
judicially created doctrine of obviousness-type double patenting
has not been sustained.
The examiner's decision rejecting claims 2 and 3 under
35 U.S.C. § 112, second paragraph, has likewise not been
sustained.
In addition, the examiner's decision rejecting claims 1 and
2 under 35 U.S.C. § 103 as being unpatentable over Kageyama, and
claims 1, 3 and 4 under 35 U.S.C. § 103 as being unpatentable
over Torii have both been reversed.
Appeal No. 2001-2353
Application No. 09/411,370
11
Thus, the decision of the examiner rejecting claims 1
through 4 of the present application is reversed.
REVERSED & REMANDED
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
CEF/LBG
Appeal No. 2001-2353
Application No. 09/411,370
12
VINCENT M. DELUCA
ROTHWELL FIGG ERNST & KURZ
SUITE 701 EAST
555 13TH STREET NW
WASHINGTON, DC 20004
Lesley
Appeal No. 2001-2353
Application No. 09/411,370
APJ FRANKFORT
APJ STAAB
APJ BAHR
DECISION: REVERSED & REMAND

Prepared: June 5, 2003
Draft Final
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