Ex Parte Kelsch

Patent Trial and Appeal Board

Feb 28, 2013

11259487 (P.T.A.B. Feb. 28, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/259,487 10/26/2005 Jeffery Kelsch 0656/74877 4650
23432 7590 02/28/2013
COOPER & DUNHAM, LLP
30 Rockefeller Plaza
20th Floor
NEW YORK, NY 10112
EXAMINER
GEHMAN, BRYON P
ART UNIT PAPER NUMBER
3728
MAIL DATE DELIVERY MODE
02/28/2013 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________
Ex parte JEFFERY KELSCH
____________________

Appeal 2010-005392
Application 11/259,487
Technology Center 3700
____________________

Before: WILLIAM V. SAINDON, JOHN W. MORRISON and
TIMOTHY J. O’HEARN, Administrative Patent Judges.

MORRISON, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-005392
Application 11/259,487
2
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1,
3, 4, 6-10, and 12-18. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

The claims are directed to a sleeve-like device placed over a spindle
onto which articles are stacked. Spec. 1, ll. 7-8. Claim 1, reproduced below,
is illustrative of the claimed subject matter:
1. A spindle sleeve configured to slip over a spindle for
stacking optical discs, said spindle sleeve comprising:
a hollow cylindrical body having an outer diameter, an
inner diameter, a closed top end and an open bottom end, said
cylindrical body being configured to slip over the spindle; and
a tip assembly removably attached to said top end of
said cylindrical body,
wherein said inner diameter of said cylindrical body is
greater than an outer diameter of the spindle, and said outer
diameter of the cylindrical body is smaller than a diameter of a
center hole of an optical disc, and
the bottom end of the cylindrical body includes an
extending portion serving as a base over which the optical discs
stack.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Campbell
Prusak
Fujii
US 4,085,875
US 4,316,281
US 4,700,839
Apr. 25, 1978
Feb. 16, 1982
Oct. 20, 1987

Appeal 2010-005392
Application 11/259,487
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REJECTIONS
The following rejections are under review1:
Claims 1, 3, 4, 7-9, and 12-17 stand rejected under 35 U.S.C. §102(b)
as being anticipated by Campbell.
Claim 6 stands rejected under 35 U.S.C. §103(a) as being
unpatentable over Campbell and Fujii or Prusak.
Claims 10 and 18 stand rejected under 35 U.S.C. §103(a) as being
unpatentable over Campbell.

ANALYSIS
Anticipation by Campbell
Appellant argues claims 1, 7-9, and 12-17 as a group on the basis of
claim 1 (Reply Br, 8-11). We select independent claim 1 as the
representative claim. Claims 7-9 and 12-17 stand or fall with representative
claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). Addressing claim 1, the
Examiner finds that Campbell anticipates each element of the claimed
invention. Appellant counters that
The central hole of 45 RPM phonograph records is
conventionally 1 ½ inches (38.1 mm) in diameter.
. . . In contrast, the center hole diameter of each
optical disc is approximately 15 mm, that is less
than half that of a 45 RPM phonograph record.
Thus, the spindle 16 of Campbell must have an
outer diameter, being only “slightly smaller” than
the opening of the phonograph record and allowing
“a minimum of shifting about the spindle,” that
simply could not be smaller than a diameter of a
center hole of an optical disc. (Campbell, col. 2,
lines 52-58).

1 All grounds of rejection employing the reference to Dickens alone, or in
conjunction with another reference have been withdrawn. Ans. 3.
Appeal 2010-005392
Application 11/259,487
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App. Br. 8-9. In response, the Examiner concludes that
The claimed structure is merely related to a spindle
and optical discs by inference, and accordingly the
limitations on what is actually defined by the
claims is maintained to be met by the disclosed
structure of Campbell et al.. Optical discs do not
come in a single set size, nor do their center holes.
Wikipedia discloses optical discs may vary in
diameter typically from 3 to 12 inches.
Ans. 8. The Specification is silent regarding the dimension of the central
hole of the optical disc and optical discs have been manufactured with
central holes of various sizes. Accordingly, that the particular format of the
data on the disc intended to be placed on the spindle is specified as “optical”
appears not to require or imply any specified spindle size or range of sizes.
As such, we find no error in the Examiner’s determination not to give much
patentable weight to an unspecified dimension of the spindle to fit a central
hole of an unspecified optical disc.
Next, the Examiner addresses whether Campbell discloses a “tip
assembly removably attached” as required by claim 1. The Examiner finds
two embodiments which disclose this limitation. In the embodiment of
Figure 1, the Examiner finds “the knots (24, 26) identified by [A]ppellant as
rendering the tip assembly not ‘removably attached’ may be unknotted to
allow the entire element 18 be removable.” Ans. 8. In the embodiment of
Figure 3, the Examiner finds that “unscrewing separation of element 40 from
element 41 will render the element 41 removable from the top end of the
cylindrical body.” Id.
For the embodiment of Figure 1, Appellant argues that “handle 18 of
Campbell has an inner knot 24 formed inside the hollow portion of the
spindle 16 as well as an outer knot 26 formed outside the spindle 16 for the
Appeal 2010-005392
Application 11/259,487
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purpose of preventing removal of the handle 18.” App. Br. 9. We are not
persuaded that either knot cannot be unknotted and, thus, prevents removal
of the handle 18. Thus, we find no error in the Examiner’s determination
that the tip assembly (handle 18) in the embodiment of Figure 1 is
removable
For the embodiment of Figure 3, the Appellant argues “handle 41 of
Campbell has an enlarged head 42 which prevents the handle 41 from being
removed.” Id. The stem 41 can be removed downwardly through the
aperture 21 when the carrying knob is unscrewed (see Reply Br. 12) from
the stem 41. The enlarged head 42 will not prevent removal in a downward
direction. We find no error in the Examiner’s finding that the tip assembly
41 of the embodiment of Figure 3 is removable.
In addition, Appellant argues that “Campbell teaches that handle
assemblies with removable handles ‘are undesirable because the separation
of the handle from the remaining portions of the record carrier facilitates
loss or damage to the handle.’ (Campbell, col.1, lines 37-39).” App. Br. 9.
Furthermore, regarding removing handles, Appellant contends that “such
actions are expressly taught against by Campbell.” Reply Br. 11. It appears
that Appellant is arguing that Campbell “teaches away” from its own
disclosure. Such teaching away arguments are viable to rebut a finding that
combining references is obvious, but do not negate the disclosure of a single
reference. For the reasons stated above, we sustain the anticipation rejection
of claims 1. Claims 7-9 and 12-17 fall with claim 1. Claims 3 and 4 are
argued separately below.
Addressing claim 3, the Examiner finds “the removably attached tip
assembly is inherently self-centering.” Ans. 5. Appellant argues “neither of
the handles 18 or 41 equated in the Office Action are disclosed to have any
Appeal 2010-005392
Application 11/259,487
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feature for self-centering themselves in relation to the spindle.” Reply Br.
11. Addressing the embodiment of Figure 1, the Examiner has erred as the
string handle 18 does not appear to be self-centering relative to the spindle
16. Addressing the embodiment of Figure 3, Campbell discloses a handle 41
which is placed through a circular aperture 21 formed on the center axis of
the spindle 16. Placing the handle 41 through the aperture 21 self-centers
the handle 41 relative to the spindle 16. Based on the embodiment of Fig. 3,
we sustain the anticipation rejection of claim 3.
Addressing claim 4, the Examiner finds “Campbell et al. disclose
(Figure 2) employing a threaded screw portion to secure portions of the
spindle.” Ans. 5. Appellant contends that “[t]he only threads proposed by
Campbell are between a removable base portion 14’ and the spindle 16’ and
between the carrying knob 40 and the stem 41.” Reply Br. 12. Appellant
has identified error in the Examiner’s finding. Campbell does not disclose a
“tip assembly [which] includes a threaded stud which screws into a tapped
hole of complementary thread in the spindle” as required by claim 4, but
rather shows complementary threads between the base portion 14’ and the
spindle 16’ (embodiment of Figure 2). For the embodiment of Fig. 3, the
complementary threads are positioned between portions of the stem 41 and
carrying knob 40, not the spindle 16. As the Examiner has made reversible
error, we do not sustain the rejection of claim 4.

Obviousness over Campbell and Fujii or Prusak
Addressing claim 6, the Examiner finds that “[t]o employ the riser
plate teaching of either one of Fujii and Prusak in conjunction with the prior
art spindle sleeve reference to Campbell et al. would have been obvious in
order to protect the surfaces of retained optical discs, as suggested by either
Appeal 2010-005392
Application 11/259,487
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one of Fujii and Prusak.” Ans. 6. Appellant argues that “neither Fujii nor
Prusak disclose or suggest the aspects (i) through (iv) of independent claim 1
of the present application.” Reply Br. 12. Finding no deficiency in
Campbell to anticipate claim 1, we sustain the rejection of claim 6.

Obviousness over Campbell
Addressing claims 10 and 18, the Examiner finds that “[t]o provide a
spindle sleeve of dimensions so as to hold at least 125 discs would have
been an obvious matter of choice and degree in view of the above
references, as it is possible to provide the spindle sleeve of increasing length
to accommodate a desired amount of discs.” Ans. 7. Appellant argues that
“Campbell, as discussed above, does not disclose or suggest the aspects (i)
through (iv) of independent claim 1 of the present application.” Reply Br.
13. Finding no deficiency in the Campbell reference to anticipate claim 1,
we sustain the rejection of claims 10 and 18.

DECISION
For the above reasons, the Examiner’s rejection of claims 1, 3, 6-10,
and 12-18 is affirmed and the rejection of claim 4 is 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) .

AFFIRMED-IN-PART

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