Ex Parte Ng et al

Patent Trials and Appeals Board

Jun 27, 2019

14713871 - (D) (P.T.A.B. Jun. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/713,871 05/15/2015
321 7590 07/01/2019
STINSONLLP
7700 FORSYTH BOULEVARD, SUITE 1100
ST LOUIS, MO 63105
FIRST NAMED INVENTOR
Wing Yiu Ng
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
WWSM 2575.USC2 9666
EXAMINER
KATCOFF, MATTHEW GORDON
ART UNIT PAPER NUMBER
3725
NOTIFICATION DATE DELIVERY MODE
07/01/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
stl.uspatents@stinson.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WING YIU NG and HUNG YU CHENG 1
Appeal2018-007931
Application 14/713,871
Technology Center 3700
Before JILL D. HILL, LEE L. STEPINA, and ARTHUR M. PESLAK,
Administrative Patent Judges.
HILL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Wing Yiu Ng and Hung Yu Cheng ("Appellants") appeal under
35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 2--4 and
6-19. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify World Wide Stationery Manufacturing Company
Limited as the real party in interest. Appeal Br. 1.
Appeal2018-007931
Application 14/713,871
BACKGROUND
Appellants' invention relates to a ring binder mechanism. Spec. ,r 2.
Claims 2 and 16 are independent. Claim 2, reproduced below, is illustrative
of the claimed subject matter:
2. A ring mechanism for retaining loose leaf pages, the
mechanism comprising:
an elongate housing having a central portion and sides
extending down from the central portion;
first and second hinge plates supported by the housing for
pivoting motion relative to the housing;
rings for holding the loose-leaf pages, each ring including
a first ring member and a second ring member, the first ring
member moveable with the pivoting motion of the first hinge
plate relative to the second ring member between a closed
position and an open position, in the closed position the two ring
members forming a substantially continuous, closed loop for
allowing loose-leaf pages retained by the rings to be moved along
the rings from one ring member to the other, and in the open
position the two ring members forming a discontinuous, open
loop for adding or removing loose-leaf pages from the rings;
an actuator mounted on the housing for movement relative
to the housing for causing pivoting motion of the hinge plates to
open the rings, the actuator comprising a lower arm for moving
the hinge plates to open the rings and an upper arm for moving
the hinge plates to close the rings, the upper arm having a hook
thereon, the hook being configured to define a channel having an
open side facing the central portion of the housing;
a travel bar;
an intermediate connector connecting the travel bar to the
actuator so movement of the actuator to pivot the hinge plates
causes longitudinal movement of the travel bar in the housing;
and
a locking element moveable conjointly with the travel bar
between a locking position in which the locking element blocks
movement of the hinge plates to open the rings and non-locking
position in which the locking element does not block pivoting
movement of the hinge plates to open the rings,
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Appeal2018-007931
Application 14/713,871
wherein the intermediate connector comprises a cross bar
captured by the hook on the actuator, and
wherein the intermediate connector and travel bar are
formed as one piece.
REJECTIONS
I. Claims 2--4 and 6-19 stand rejected on the ground of
nonstatutory double patenting as being unpatentable over claims 1-17 of Ng
(US 9,044,994 B2, iss. June 2, 2015). Final Act. 3.
II. Claims 2--4 and 6-19 stand rejected under 35 U.S.C. § I03(a)
as unpatentable over Cheng (US 2005/0207826 Al, pub. Sept. 22, 2005) and
Hom (US 6,840,695 B2, iss. Jan. 11, 2005). Final Act. 4.
OPINION
Rejection I; Double Patenting
The Examiner finds that the claims, though not identical, are not
patentably distinct from the patented claims of Ng, because the patented
claims contain all the limitations of the pending claims. Final Act. 3--4.
Appellants note that a terminal disclaimer was filed on February 5,
2018 to address the double patenting rejection (Reply Br. 2); however, the
terminal disclaimer was not approved in a review decision dated February 6,
2018. Accordingly, we sustain the double patenting rejection.
Rejection II; Obviousness of Claims 2--4 and 6--19
The Examiner finds, inter alia, that Cheng discloses a ring mechanism
as claimed except for (1) a hook on an upper arm of an actuator, and (2) an
intermediate connector and a travel bar "formed as one piece." Final Act. 7.
The Examiner finds that Hom discloses a similar ring mechanism with a
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Appeal2018-007931
Application 14/713,871
hook on an upper arm of its actuator. Id. The Examiner concludes that it
would have been obvious to replace the actuator of Cheng with the actuator
of Hom as "a simple substitution ... that ... will obtain predictable results."
Id. The Examiner further concludes that, although Cheng and Hom do not
disclose an intermediate connector and travel bar formed as one piece, "the
use of a one piece construction instead of the structure disclosed would
merely be a matter of obvious engineering choice." Id. at 7-8 (citing In re
Larson, 144 USPQ 347,349 (CCPA 1965).
Appellants argue that Cheng's mechanism would not operate as a one
piece mechanism, because "Cheng relies on the ability of the intermediate
connector 579 to slide along slot 526 in the travel bar 565 to move relative
to the travel bar to delay movement of the travel bar ... until after the
actuator has engaged the hinge plates 521 to close the rings." Appeal Br. 7.
Appellants contend that, by removing the ability of the components to move
relative to each other, "the travel bar 565 would prematurely move to the
locked position preventing the hinge plates 521 from pivoting to close the
rings." Id. Appellants assert that "such a modification of Cheng would
render the device inoperable for its intended purpose." Id. Appellants also
contend that the position set forth in the Pre-Appeal Brief Review that
Cheng's intermediate connector 579 and travel bar 565 are "'formed as one
piece' as these constituent parts are connected together in the final product,"
is an overly broad and unreasonable interpretation of claim 2. Id. at 10.
In response, the Examiner restates the position set forth in the Pre-
Appeal Brief Review that, under the "broadest reasonable interpretation,"
"formed as one piece" can be construed to include two parts connected
together in the final product. Ans. 17. The Examiner notes, moreover, that
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Application 14/713,871
even under Appellants' "narrow" interpretation, Cheng's device would still
open and close the rings as an operable device. Ans. 17-18.
Appellants reiterate that connecting parts together is not "formed as
one piece" under any reasonable construction of the phrase that is consistent
with their Specification, which describes that "the travel bar and connector
are formed as a single, unitary piece of material." Reply Br. 5 ( citing Spec.
,r 72; Figs. 3, 13, and 14). Further, regarding obvious engineering choice,
Appellants reply that the Examiner does not explain how the device of
Cheng would function to remain an operable device if formed as one piece,
if the phrase "formed as one piece" is reasonably construed in light of
Appellants' Specification. Id. at 3.
Appellants' arguments are persuasive. As to the limitation "formed as
one piece," Appellants' Specification discloses that "[t]he intermediate
connector and travel bar are formed as one piece of material." Spec. ,r 10.
The Specification further discloses that elements can be "formed as one
piece" by, for example, a mold process, as opposed to being "formed
separately" and attached together. Spec. ,r,r 70, 71, 73, and 80. The
Specification thus makes a distinction between "formed as one piece" and
"separately" formed and then connected together. As such, we agree with
Appellants that the broadest reasonable interpretation of the phrase "formed
as one piece" consistent with the Specification requires that "the travel bar
and connector are formed as a single, unitary piece of material," rather than
being separately formed and connected together as in Cheng. Reply Br. 5.
Based on this interpretation, we agree with Appellants that the Examiner
erred in finding that "formed as one piece" only requires that "at some point
the two parts ... are connected together." Id. at 4.
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Application 14/713,871
Appellants also have the better position with respect to whether the
Examiner's rejection based on obvious engineering choice provides a
sufficient basis for a conclusion of obviousness. As Appellants correctly
note, in Cheng, intermediate connector 579 slides along slot 526 in travel bar
565 "to move relative to the travel bar to delay movement of the travel bar
to the locked position during movement of the actuator 515 to close the rings
until after the actuator has engaged the hinge plates 521 to close the rings."
Appeal Br. 7. Cheng's slot 526 is seen in Figure 21, reproduced below.
Figure 21 of Cheng is a fragmentary perspective of a control structure
of a ring mechanism in combination with hinge plates of the mechanism.
Cheng ,r 36.
Cheng discloses that, to open the ring mechanism, the disclosed
configuration "allows the lever 531 to pivot and pull the travel bar 565 and
locking elements 551, 553, 555 out of their locked position and into
registration with the cutout openings 545, 547, 549 of the hinge plates 519,
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Application 14/713,871
521 before the opening arm 522 engages and pivots the hinge plates."
Cheng ,r 88. Cheng also discloses that closing arm 520 of actuator lever 531
engages fingers 534 of hinge plate 519, 521 to pivot the hinge plates
downward to close the ring mechanism. Cheng ,r 89. Once hinge plates
519, 521 clear the locking elements 551, 553, 555, the locking elements are
pulled away from the lever 531, and move to their locked position. Id.
Based on this disclosure, Cheng requires that there is a delay between
the movement of travel bar 565 and the movement of opening arm 522 that
opens the hinge plates, as well as a delay between the movement of closing
arm 520 closing the hinge plates and the movement of travel arm 565.
These delays, or relative movements, are caused by the intermediate
connector 579 being connected to the opening and closing arms moving in
slot 526 so that the hinge plates pivot open or closed at the proper time, and
so that the locking elements of the travel arm move at the proper time
without interfering with the opening or closing of the hinge plates. We
agree with Appellants that, in the Examiner's proposed "formed as one
piece" modification to Cheng, "the lack of relative movement would prevent
the ring mechanism from functioning properly." Reply Br. 3. The Examiner
has not provided any evidence that it was known in the art that "there are
many ways of forming as one piece that would still allow such movement."
Ans. 17-18. Nor has the Examiner provided evidence that, even without
relative movement, the ring binder would open or close properly. The
Examiner's assertion that the modified Cheng would still open or close
properly is based on speculation.
For these reasons, we do not sustain the rejection of claim 2. Claims
3, 4, and 6-15 depend directly or indirectly from claim 1. Independent
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claim 16 also requires that the intermediate connector and travel bar are
formed as one piece, and we sustain the rejection of claim 16, and claims
17-19 depending therefrom for the same reasons.
DECISION
We AFFIRM the double patenting rejection of claims 2--4 and 6-19.
We REVERSE the rejection of claims 2--4 and 6-19 as unpatentable
over Cheng and Hom.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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