Ex parte Sugiyama

Board of Patent Appeals and Interferences

Sep 26, 2001

07966707 (B.P.A.I. Sep. 26, 2001)

Application for patent filed October 26, 1992,1
entitled "Magnetic Tape Cassette Slider Lock Mechanism With
Tapered Surfaces And Coil Spring Bias," which claims the
foreign filing priority benefit under 35 U.S.C. § 119 of
Japanese Applications 3-097379 and 3-097380, filed
October 30, 1991.
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The opinion in support of the decision being
entered today was not written for publication
and is not binding precedent of the Board.
_______________
Paper No. 25
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte MASANOBU SUGIYAMA

Appeal No. 1995-2838
Application 07/966,7071

HEARD: September 13, 2001

Before JERRY SMITH, BARRETT, and FLEMING, Administrative
Patent Judges.
BARRETT, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 1995-2838
Application 07/966,707
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This is a decision on appeal under 35 U.S.C. § 134 from
the final rejection of claims 1, 3, and 4.
We affirm-in-part.
BACKGROUND
The disclosed invention is summarized by Appellant in the
Concise Summary of the Invention (Brief, pp. 2-3).
Claim 1 is reproduced below.
1. A tape cassette comprising:
(a) a cassette housing composed of an upper cassette
part and a lower cassette part and which accommodates
therein a pair of tape hubs around which a magnetic tape
is wound;
(b) a slider slidably attached to said cassette
housing so as to open and close a lower surface opening
portion of said cassette housing;
(c) a slider lock portion having an engagement
protrusion and being provided on said lower cassette part
to lock said slider at a predetermined position;
(d) an engagement aperture bored through said slider
for engagement with said slider lock portion having an
inclined portion tapered toward an outside of said slider
formed on one end face of said engagement aperture and
opposing said engagement protrusion of said slider lock
portion provided on said lower cassette part, in which
said engagement protrusion is formed with a complementary
tapered surface for engaging the inclined portion of said
engagement aperture; and
resilient means arranged between said upper cassette
part and said engagement protrusion for spring-biasing
said slider lock portion in a direction in which said
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Application 07/966,707
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engagement protrusion of said slider lock portion is
engaged with said engagement aperture in said slider.
The Examiner relies on the following prior art:
Sumida et al. (Sumida) 4,660,784 April 28, 1987
Satoh et al. (Satoh) 4,853,816 August 1, 1989
Katagiri et al. (Katagiri) 5,144,511 September 1, 1992
(filed August 19,
1991)
Claims 1 and 3 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Sumida and Katagiri.
Claim 4 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sumida, Katagiri, and Satoh.
We refer to the final rejection (Paper No. 7) and the
examiner's answer (Paper No. 19) (pages referred to as "EA__")
for a statement of the Examiner's position, and to the appeal
brief (Paper No. 18) (pages referred to as "Br__") and the
reply brief (Paper No. 20) (pages referred to as "RBr__") for
Appellant's arguments thereagainst.
Appeal No. 1995-2838
Application 07/966,707
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OPINION
Claims 1 and 3
Sumida, Figs. 5-8 and 29 and the corresponding
descriptions, teaches the subject matter of claim 1 except for
the underlined limitations below:
(d) an engagement aperture bored through said slider
for engagement with said slider lock portion having an
inclined portion tapered toward an outside of said slider
formed on one end face of said engagement aperture and
opposing said engagement protrusion of said slider lock
portion provided on said lower cassette part, in which
said engagement protrusion is formed with a complementary
tapered surface for engaging the inclined portion of said
engagement aperture . . . .
The issue is whether these limitations would have been obvious
over the teachings of Katagiri.
In the final rejection, the Examiner found that "Katagiri
et al show in figure 6 and 7 a protrusion 6a having a
complementary tapered surface 6b engaging an inclined tapered
surface 8c of slider 4" (FR3) and concluded that it would have
been obvious to add these features to Sumida. Appellant
argues that the inclined surface in Fig. 6 is tapered to the
inside
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Application 07/966,707
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slider were slid in a rearward direction, as in the present
invention (Br8).
We agree with Appellant. Because the Examiner relies on
both Figs. 6 and 7, we interpret the rejection as relying on
the wall surface 8c' in Fig. 6 and the correspondingly
inclined lower portion of wall surface 8c" shown in contact
with surface 6b in Fig. 7 as the claimed "inclined portion
tapered toward an outside of the slider," because these are
the common inclined surfaces in both figures. It is not fair
to interpret the final rejection, as stated, as referring to
the portion of the wall surface 8c" inclined outward at the
upper edge in Fig. 7 (col. 5, lines 9-12) because it does not
find any correspondence in Fig. 6. Because the wall surface
8c' in Fig. 6 and the lower portion of the wall surface 8c" in
Fig. 7 are tapered away from the outside of the slider, it
does not meet the claim limitation of an "inclined portion
taped toward an outside of said slider." The rationale in the
final rejection is not persuasive.
In the examiner's answer, the Examiner finds that
"Katagiri et al shows in figure 7 protrusion 6a including a
complementary tapered surface engaging the inclined surface
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Application 07/966,707
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tapered toward an outside of slider 4" (EA4). The statement
of the rejection is not specific about which surface in Fig. 7
is referred to. By itself, we would interpret the statement
as referring to the lower portion of the wall surface 8c" to
be consistent with the final rejection. However, later in the
examiner's answer the Examiner states (EA7):
Figure 7, does show what Appellant purports Katagiri
discloses: inclined surface 8c" tapered toward the inside
of slider 4 and engaging complementary tapered surface
6b; however, Katagiri additionally shows surface 8c"
inclined and tapered toward an outside of slider 4 and
engaging complementary tapered surface 6a, as set forth
in appealed claim 1. Moreover, since Appellant recites
"A tape cassette comprising:" in line 1 of claims 1 and
4, the applied references are not precluded from
disclosing inclined surface tapered inwardly as well as
outwardly.
Thus, in the examiner's answer, the Examiner for the first
time asserts that he relies on the upper portion of the wall
surface 8c" which is capable of engaging the rear tip face of
protrusion 6a, as opposed to the lower portion of the wall
surface 8c" which actually engages the rear end face of
protrusion 6a. Appellant had an opportunity to respond in the
reply brief.
Appellant responds that the tapered portion with the
surface 8c" is not tapered toward an outside (RBr1-2). As to
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Application 07/966,707
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the Examiner's statement that the claims do not preclude
inclined surfaces tapered inwardly as well as outwardly,
Appellant argues that claims 1 and 4 are not in means-plus-
function format and, thus, 35 U.S.C. § 112, sixth paragraph,
does not apply (RBr2).
These arguments do not answer or show error in the
Examiner's rejection and reasoning as stated at EA7.
At the oral hearing we asked what claim language
precludes the Examiner's application of Katagiri in the manner
discussed, but did not get a persuasive answer. We have
carefully studied claim 1 and conclude that it does not
patentably define over the combination of Sumida and Katagiri.
The upper portion of the wall surface 8c" in Fig. 7 of
Katagiri which is inclined outward (col. 5, lines 9-12) is "an
inclined portion tapered toward an outside of said slider
formed on one end face of said engagement aperture," as
claimed. Note that this limitation only requires the inclined
portion to be on "one end face of said engagement aperture,"
which is consistent with Katagiri and with Appellant's Fig. 4A
which shows an aperture with a vertical surface and an
inclined surface.
Appeal No. 1995-2838
Application 07/966,707
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The upper portion of the wall surface 8c" opposes and
engages the locking projection 6a during a portion of its
motion (col. 5, lines 12-16) and, so, satisfies the limitation
of "an inclined portion . . . opposing said engagement
protrusion of said slider lock portion provided on said lower
cassette part."
The surface of the locking projection 6a (engagement
protrusion) has approximately the same taper as the upper
portion of the wall surface 8c" and, therefore, "is formed
with a complementary tapered surface for engaging the inclined
portion of said engagement aperture." The limitation
"complementary tapered surface" does not require that the
inclined angles of the inclined portion of the engagement
aperture and the tapered surface of the engagement protrusion
be substantially the same; however, Fig. 7 of Katagiri does
show the taper angles to be substantially identical. We note
that the limitation "for engaging" does not require that the
engagement protrusion is presently engaged with the inclined
portion of the engagement aperture, but only requires that it
is capable of engaging at some undetermined time. In this
regard, we observe that the inclined surfaces of the
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Application 07/966,707
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engagement aperture and the engagement protrusion in
Appellant's invention do not appear to be engaged with one
another in the locked position shown in Fig. 4A. In Fig. 4A,
the aperture has a small vertical edge below the inclined
surface 8c1 which abuts a vertical face of the engagement
protrusion 3d so the engagement protrusion must be lifted
slightly by a lock releasing mechanism on the tape deck before
the inclined surfaces on the aperture and protrusion can come
in contact; if this were not so, the slider would easily slide
backwards and would not be locked securely. Thus, the fact
that the locking projection 6a in Katagiri must be lifted
before its tapered portion comes into contact with the
inclined upper portion of the wall surface 8c" is not
precluded by claim 1 and is, in fact, consistent with
Appellant's own disclosure. It is noted that a previous
limitation in claim 1 that the tapered surface of the
engagement protrusion engages the inclined surface of the
engagement aperture in a locked condition has been removed
(Paper No. 11).
For the reasons discussed above, we conclude that the
combination of references provides sufficient evidence to
Appeal No. 1995-2838
Application 07/966,707
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establish a prima facie case of obviousness. The rejection of
claims 1 and 3 is sustained.
We have sustained the rejection of claims 1 and 3 because
Katagiri teaches a structure which happens to satisfy the
broad claim language. However, we note that Emori, U.S.
Patent 4,673,145, of record, expressly discloses, in
Figs. 11A-11C and the corresponding descriptions, an
engagement aperture (hole 52) with an outwardly tapered
edge (52a) that engages a complementary tapered surface of an
engagement protrusion (locking head 55). Emori also discloses
that the projection 9 on the tape deck has a tapered rear
end 9b. Thus, Emori expressly teaches tapered surfaces to
facilitate smooth disengagement of the engagement protrusion
and is clearly a better reference than Katagiri. Emori was
applied in an anticipation rejection in the first Office
action (Paper No. 6), in response to which Appellant amended
claim 1. None of Appellant's arguments in response (Paper
No. 7) persuade us that Emori does not show the engagement
protrusion formed with a complementary tapered surface for
engaging the inclined portion of the engagement aperture.
Claim 4
Appeal No. 1995-2838
Application 07/966,707
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Sumida, Figs. 5-8 and 29 and the corresponding
descriptions, teaches the subject matter of claim 4 except for
the limitations of subparagraphs (d)-(f). As to limitation
(d), we conclude that this limitation would have been obvious
given the teachings of Katagiri for the reasons discussed in
the analysis of claim 1. We also note the relevance of Emori.
As to limitation (f), the Examiner finds that Satoh,
Fig. 2, teaches a spring with a "tight winding portion" and
one end bent inward, and that Satoh, column 2, lines 11-29,
discloses a "pin supporting portion" created by the bent-in
portion that exerts force on the outer diameter of pin 108
(EA5). The Examiner concludes that it would have been obvious
to replace the spring and casing arrangement of Sumida
(presumably referring to the arrangement of Fig. 29) with the
spring and protruding pin arrangement of Satoh because they
are comparable arrangements or art recognized equivalents
functioning similarly (EA6).
Appellant argues that the language "at least one end
portion of said slider lock spring is bent toward an inside of
a coil portion of said spring to form a pin supporting portion
which is wound around said protruded pin" in claim 4 requires
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Application 07/966,707
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that the pin supporting portion is wound around the protruded
pin (Br11-12). It is argued that the torsion spring in Satoh
is distinguishable from the coil spring in claim 4 for several
reasons: (1) Satoh describes a torsion spring, while claim 4
recites a coil spring for biasing the slider lock portion in a
downward direction; (2) the spring in Satoh biases the slider
towards a closed position and does not bias the slider lock
member in a downward position, as claimed; (3) the bent-in
portion of the torsion spring in Satoh engages a groove 112
formed in the boss 108 and is not wound around the pin as
claimed.
We disagree with the Examiner's reasons. The torsion
spring in Satoh biases the slider and is not "interposed
between the slider lock portion and said upper cassette part,
said slider lock portion being spring-biased by said slider
lock spring," as claimed. Therefore, even assuming the
proposed modification were made, the combination does not
provide the claimed structure or function. In addition, the
bent-in portion of the spring 106 in Satoh is inserted into
the groove 112 and is not "wound around said protruded pin,"
as recited. For these two reasons, we conclude that the
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Application 07/966,707
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Examiner has failed to establish a prima facie case of
obviousness with respect to claim 4. The rejection of claim 4
is reversed.
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Application 07/966,707
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CONCLUSION
The rejection of claims 1 and 3 is sustained.
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 CFR
§ 1.136(a).
AFFIRMED-IN-PART
JERRY SMITH )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LEE E. BARRETT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MICHAEL R. FLEMING )
Administrative Patent Judge )
Appeal No. 1995-2838
Application 07/966,707
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Jay H. Maioli
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