Ex Parte Mohamed

Board of Patent Appeals and Interferences

Jun 30, 2008

10452341 (B.P.A.I. Jun. 30, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ZAINUDIN BIN MOHAMED
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Appeal 2008-1640
Application 10/452,341
Technology Center 3600
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Decided: June 30, 2008
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Before JENNIFER D. BAHR, LINDA E. HORNER, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

ORDER REMANDING TO THE EXAMINER
This application is remanded to the Examiner, pursuant to 37 C.F.R.
§ 41.50(a)(1), for appropriate action with regard to the following issues.
Zainudin Bin Mohamed (Appellant) appeals under 35 U.S.C. § 134
from the Examiner’s decision rejecting claims 19 and 21. Claims 1-18 and
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20 have been canceled. We have jurisdiction over this appeal under 35
U.S.C. § 6 (2002).
Claims 19 and 21 stand rejected under 35 U.S.C. §103(a) as
unpatentable over Matsuda (US 6,328,169 B1, issued Dec. 11, 2001) in view
of Katsuura (US 5,593,046, issued Jan. 14, 1997). Appellant’s claimed
method includes a number of specific limitations. It is elementary that to
support an obviousness rejection all words in a claim must be considered in
judging the patentability of that claim against the prior art. In re Wilson, 424
F.2d 1382, 1385 (CCPA 1970). In support of the rejection of claims 19 and
21, the Examiner takes the position that the “primary reference [Matsuda]
teaches all of the methods as claimed by the appellant, [except] they do not
teach one structural element…namely the type of lock for holding the
relative width of the cassette” (Ans. 4). Using the teachings of Katsuura the
Examiner concludes that “it would have been obvious to one of ordinary
skill in the art, at the time of invention to provide the device taught by
Matsuda et al. with a spring actuated lock as taught by Katsuura et al. in
order to positively lock the sliding portions in place without having to move
a cam to do so” (Ans. 4).
However, we find that the Examiner’s rejection fails to identify with
any particularity where Matsuda teaches every limitation of the rejected
claims. Section 706.02(j) of the Manual of Patent Examining Procedure (8th
Edition, Revision 6th) (2007) states that when making a rejection under
35 U.S.C. §103(a), “the Examiner should set forth in the Office action: (A)
the relevant teachings of the prior art relied upon, preferably with reference
to the relevant column or page number(s) and line number(s) where
appropriate,…” (underlining added).
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In describing the teachings of Matsuda the Examiner has not pointed
with specificity (column and line number) to the structural elements in
Matsuda that correspond to the structural elements of the Appellant’s
claimed invention (Ans. 3-4).
Further, it is not clear to us which embodiment of Matsuda the
Examiner is relying on to support the conclusion of obviousness. For
example, the Examiner refers to “adjustable sliding assemblies on the top
and bottom” (Ans. 3), which appear to correspond to connecting plates 3 and
4 of the first embodiment in Matsuda (col. 3, ll. 15-24 and fig. 2 of
Matsuda). On the other hand, the Examiner also refers to a cam that locks
the sliding portions in place (Ans. 4), which appears to correspond to the
lock lever 83 with cam surface 84 of the second embodiment in Matsuda
(col. 5, ll. 36-48 and fig. 9 of Matsuda).
Furthermore, the Examiner has not explained and has not explicitly
pointed to the structural element in Matsuda which is being replaced with
the spring actuated lock of Katsuura.
We find that the Examiner does not clearly articulate the basis of the
rejection and does not identify the evidentiary basis that supports the
conclusion of obviousness. As such, we are unable to resolve the issues
presented before us for review without resorting to speculation.
This application is therefore being remanded to the Examiner to
clearly state, on the record, the factual basis which led to the conclusion that
the Appellant’s claims 19 and 21 are unpatentable under 35 U.S.C. §103(a)
over the combination of Matsuda in view of Katsuura. In so doing, the
Examiner must articulate: (1) which structural elements in Matsuda
correspond to the structural elements of the Appellant’s claimed invention;
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(2) which embodiment from Matsuda is being relied upon to support the
conclusion of obviousness; and (3) which structural element in Matsuda is
being replaced with the spring actuated lock of Katsuura.
This remand to the Examiner pursuant to 37 C.F.R. § 41.50(a)(1) is
made for further consideration of a rejection. Accordingly, 37 C.F.R.
§ 41.50(a)(2) applies if a supplemental examiner's answer is written in
response to this remand by the Board.

REMANDED

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