Ex Parte Schuurs

Board of Patent Appeals and Interferences

Dec 27, 2011

10546315 (B.P.A.I. Dec. 27, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JOHANNES ADRIANUS MARIA SCHUURS
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Appeal 2010-000432
Application 10/546,315
Technology Center 3700
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Before STEVEN D.A. McCARTHY, MICHAEL L. HOELTER and,
JAMES P. CALVE, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a), from a final
rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). We
REVERSE.

The Claimed Subject Matter
The claimed subject matter is directed to a hinged housing for storing
discs such as DVDs. The hinge is inset “at least 6.6 mm” from the lateral
side of the housing. Independent claim 1 is illustrative of the claims on
appeal and is reproduced below:
1. A housing for storing a disc-shaped information carrier,
provided with a bottom part, a retaining device for retaining the
information carrier, and a lid part connected to the bottom part by two
corner hinges, which lid part comprises two hinge structures each
provided with a recessed hinge arm which is recessed with respect to a
lateral side of the lid part, and with a protection wall present opposite
said hinge arm and having a wall portion extending substantially
parallel to said hinge arm and at said lateral side of the lid part, and
which bottom part is provided with two corner recesses which match
the recessed hinge arms and in which the hinge arms extend, said
corner recesses being bounded by recessed hinge walls which are each
recessed with respect to a lateral side of the bottom part, while the
recessed hinge arms are coupled with rotation possibility to the
recessed hinge walls for forming said corner hinges, wherein the
distance between the recessed hinge arm and the wall portion in each
hinge structure has a value which is at least 6.6 mm.

Reference Relied on by the Examiner
Doodson US 5,890,590 Apr. 6, 1999

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The Rejections on Appeal
Claims 1-20 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Doodson (Ans. 3).

ISSUE
Has the Examiner provided sufficient evidence and technical
reasoning to show that the claimed storage structure, and particularly the
claimed hinge dimension, is obvious in view of Doodson?

ANALYSIS
Appellant argues all three independent claims (i.e. claims 1, 10 and
11) together and states that “Appellant herein specifically reserves the right
to argue and address the patentability of claims 2-9 and 12-20 at a later date
should the separately patentable subject matter of claims 2-9 and 12-20 later
become an issue” (App. Br. 11, see also Reply Br. 6). However, 37 C.F.R.
§ 41.31(c) states that “[a]n appeal, when taken, must be taken from the
rejection of all claims under rejection which the applicant or owner proposes
to contest.” These claims will stand or fall with their respective parent claim.
Design choice
Each independent claim 1, 10 and 11 requires that the distance
between the recessed hinge arm and the wall portion have “a value which is
at least 6.6 mm.” The Examiner relies on Doodson for all the claimed
limitations but the Examiner acknowledges that “Doodson is silent regarding
any dimensional parameters” of the hinge structure (Ans. 4). The Examiner
states that this dimension “would have been an obvious matter of design
choice” (Ans. 4).
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Appellant does not dispute the similarity between the Doodson
housing and Appellant’s housing (App. Br. 12, see also Reply Br. 4 and
compare Appellant’s Figs 1-5 with Doodson’s Figs. 1-5). Appellant,
however, focuses on the claimed “distance between the recessed hinge arm
and the wall portion” stating that the claimed value of “at least 6.6 mm”
provides substantial benefits, such as reducing the time needed for
manufacturing a lid thus leading to a considerable saving in production time
and cost” (App. Br. 12 referencing Spec. 2:13-21, see also Reply Br. 4).
Appellant reasons that because Doodson does not provide a numerical
dimension for this hinge component, that “Doodson is not even aware of any
problems related to dimensions of the housing, let alone proposing any
solutions or measure to reduce time and cost by using particular dimensions”
(App. Br. 12, 13 see also Reply Br. 4)). Appellant thus contends that “such
a dimensional parameter is not mere a (sic.) design choice and is nowhere
taught or suggested in Doodson” (App. Br. 13).
Doodson does not describe the structure of the hinge arm other than to
state that it is recessed and resilient (Doodson 3:64 to 4:6). The Examiner
does not indicate where Doodson provides any dimension for the hinge arm
or that varying its size or shape might be desirable (such as for
manufacturing efficiency). On the other hand, Appellant’s Specification
specifically identifies the significance of the claimed hinge arm dimension
stating that “a time reduction of about 10% is attainable without changing
the molding process” employed in Doodson (Spec. 2:18-19). Because the
Examiner has not cited any evidence showing that a person of ordinary skill
in the art at the time of the invention would have been directed by Doodson
to address the hinge arm, much less vary its dimension, to achieve
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manufacturing efficiency and Appellant has provided evidence tending to
show that the claimed dimension provided an advantage over the prior art,
the Examiner’s articulated reason of design choice lacks a rational
underpinning. See In re Chu, 66 F.3d 292, 299 (Fed. Cir. 1995) (placement
of SCR catalyst within a bag retainer would not have been a mere matter of
“design choice” where there was no teaching or suggestion to modify the
prior art in this manner and applicant provided evidence that the claimed
arrangement improved the function of the claimed filter bags during pulse-
jet cleaning and operation). Accordingly, in view of the stated benefit
provided by the claimed hinge arm dimension, we do not consider the
selection of this dimension to be simply a matter of design choice.
Recitation of relative dimensions and obvious to try
The Examiner further asserts that “it has also been held that where the
only difference between the prior art device and the claimed device was a
recitation of relative dimensions, the claimed device was not patentably
distinct from the prior art device” (Ans. 4). The truth of the Examiner’s
assertion is not self-evident as the Examiner identifies no dimension in
Doodson to which the claimed dimension is related or from which a
difference may be ascertained (“Doodson is silent regarding any dimensional
parameters in this regard” (Ans. 4)). The Examiner asserts that a “change in
size is generally recognized as being within the level of ordinary skill in the
art” but the Examiner does not identify any guidance from either Doodson or
from the knowledge of one skilled in the art as to the item whose size might
be changed (i.e., the hinge arm) or what size this hinge arm might be
changed to.
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A component of the Examiner’s rationale may also be directed to it
being obvious to try to achieve the claimed dimension. The Supreme Court
has provided instruction that “[w]hen there is a design need or market
pressure to solve a problem and there are a finite number of identified,
predictable solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this leads to the
anticipated success, it is likely the product not of innovation but of ordinary
skill and common sense. In that instance the fact that a combination was
obvious to try might show that it was obvious under § 103” (KSR Int’l v.
Teleflex Inc., 550 U.S. 398, 421 (2007)). Assuming arguendo that a design
need or market pressure exists, the Examiner states that the determination of
the claimed distance “would have involved routine experimentation by
merely varying the distance within a finite number of possibilities” (Ans. 6).
The Examiner does not specify how a variation in distance is “within a finite
number of possibilities” nor does the Examiner identify where Doodson
provides support for this finding. The Examiner further provides no support
in Doodson or otherwise that the hinge arm portion of the lid is the portion
to be investigated in order to obtain the desired solution. Accordingly, the
Examiner’s articulated reasoning lacks a rational underpinning and we are
not persuaded by it.
Optimization
The Examiner further states that “to construct the housing with a
distance of at least 6.6 mm would have been within the level of ordinary
skill and an obvious optimization of a given parameter” (Ans. 6). Appellant
disagrees and posits the question “How can someone optimize a dimension
when it is not even known that a dimension needs to be optimized, or which
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dimension needs to be optimized?” (App. Br. 12, see also Reply Br. 4).
Appellant traverses this rejection stating “that there are practically a very
large number of parameters and parts of the housing that may be changed to
affect the housing and/or lid integrity and the manufacturing time thereof”
(App. Br. 2). Appellant concludes that “without some motivation or
suggestion in the prior art, one skilled in the art, without undue
experimentation and impermissible hindsight, cannot arrive to the present
invention in an obvious manner” (Reply Br. 3).
For optimization to support a conclusion of obviousness, our
reviewing court has established two conditions: one, the general conditions
of the claim must be disclosed in the prior art and two, discovery of the
optimum or workable range must be a matter of routine experimentation for
a person of ordinary skill in the art (In re Aller, 220 F.2d 454, 456 (CCPA
1955)). Here, the Examiner inadequately addresses the first condition of
Aller by failing to establish a starting or initial numerical value in need of
optimization as well as failing to establish that there was a positive link
between the dimension of the hinge arm and an improvement in
manufacturing efficiency rather than any such change in the size of a
component simply having some effect on manufacturing time as stated by
the Examiner (see Ans. 6). The Examiner has also failed to show that one
skilled in the art would have had a desire to address this particular
component and optimize its particular dimension. Accordingly, we are not
persuaded that the Examiner has provided a rationale underpinning for this
basis of rejection.
In view of the above, we reverse the Examiner’s rejection of claims 1-
20 as being unpatentable over Doodson.
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CONCLUSION OF LAW
The Examiner has not provided sufficient evidence and technical
reasoning to show that the claimed storage structure, and particularly the
claimed hinge dimension, is obvious in view of Doodson.

DECISION
The Examiner’s rejection of claims 1-20 is reversed.

REVERSED

MP/NLK