11212255 (B.P.A.I. Jan. 28, 2011)

Ex Parte Okada

Board of Patent Appeals and InterferencesJan 28, 2011

11212255 (B.P.A.I. Jan. 28, 2011)

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. 11/212,255 08/26/2005 Shoji Okada 029048.56705US 8544 23911 7590 01/28/2011 CROWELL & MORING LLP INTELLECTUAL PROPERTY GROUP P.O. BOX 14300 WASHINGTON, DC 20044-4300 EXAMINER WILSON, LEE D ART UNIT PAPER NUMBER 3727 MAIL DATE DELIVERY MODE 01/28/2011 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte SHOJI OKADA ____________________ Appeal 2009-009025 Application 11/212,255 Technology Center 3700 ____________________ Before: WILLIAM F. PATE III, LINDA E. HORNER, and STEFAN STAICOVICI, Administrative Patent Judges. PATE III, Administrative Patent Judge. DECISION ON APPEAL1 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-009025 Application 11/212,255 2 STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1, 3, 5 and 6. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. The claims are directed to a rotary cutting mat. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A rotary cutting mat, comprising: a base plate and a rotary mat, which can be rotated relative to each other; wherein the rotary mat is provided with a shaft member projected from a reverse side of the rotary mat, wherein the base plate is provided with a receiving portion, which rotatably receives the shaft member, and wherein the rotary mat is placed directly on the base plate without any structure disposed therebetween, with the shaft member of the rotary mat being inserted in the receiving portion of the base plate. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Matthews Blevins US 2,779,642 US 5,479,867 Jan. 29, 1957 Jan. 2, 1996 REJECTIONS Claims 1 and 3 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Blevins. Ans. 3. Claims 5 and 6 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Blevins, and Matthews. Ans. 3. Appeal 2009-009025 Application 11/212,255 3 OPINION We have carefully reviewed the rejections on appeal in light of the arguments of the Appellant and the Examiner. As a result of this review, we have reached the conclusion that the Blevins reference does not establish the lack of novelty of claims 1 and 3, and claims 5 and 6 are not prima facie obvious over Blevins in view of Matthews. Therefore the rejections on appeal are reversed. Our reasons follow. Blevins discloses a rotary table having a base 10 shown best in Figure 7. Col. 1, l. 62-col. 2, l. 2. Bearing retainer 22 is situated above the base. Col. 2, ll. 3-5. The retainer is covered and concealed by the top plate 40 of the rotary table. Col. 2, ll. 20-23. The Examiner argues that the base of Blevins can be considered as both the circular base 102 and the bearing retainer 22 or that the bearing retainer 22, taken alone, can be considered the base. Ans. 3. In our view, these are unreasonable interpretations of the disclosure of Blevins. This is especially true in light of the fact that Blevins clearly discloses that circular base member 10 is the base member of his rotary table. Blevins further discloses that the retainer member is a separate structure placed on the base between the base and the top plate. The disclosure of Blevins is clear, and it contravenes the Examiner’s interpretation that the base of Blevins is both member 10 and retainer 22 or that bearing retainer 22 can be construed as Blevin’s base. Since Appellant’s independent claim is directed to structure wherein the rotary mat is placed directly on the base plate without any structure disposed therebetween, the subject matter of Appellant’s claims on 2 The Examiner identifies elements 20 and 22 of Blevins as the base. Ans. 3, 6. Blevins discloses a circular base 10 having a bottom 20. Blevins, col. 1, ll. 62-67. Appeal 2009-009025 Application 11/212,255 4 appeal is neither anticipated nor rendered obvious by the cited and applied prior art. Therefore the rejections on appeal are reversed. DECISION The rejection of claims 1 and 3 under 35 U.S.C. § 102 is reversed. The rejection of claims 5 and 6 under 35 U.S.C. § 103 is reversed. REVERSED nlk CROWELL & MORING LLP INTELLECTUAL PROPERTY GROUP P.O. BOX 14300 WASHINGTON DC 20044-4300