Ex Parte Takahashi et al

Patent Trial and Appeal Board

Jan 19, 2018

14369038 (P.T.A.B. Jan. 19, 2018)

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.
14/369,038 07/24/2014 Manabu Takahashi 15115/697001 6537
22511 7590 01/23/2018
O SH ATT ANfi T I P
EXAMINER
TWO HOUSTON CENTER SAEED, AHMED M
909 FANNIN, SUITE 3500
HOUSTON, TX 77010 ART UNIT PAPER NUMBER
2833
NOTIFICATION DATE DELIVERY MODE
01/23/2018 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):
docketing@oshaliang.com
hathaway@oshaliang.com
escobedo @ oshaliang. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MANABU TAKAHASHI, KAZUYUKI TSUKIMORI,
and SHIGENOBU FUKUI1
Appeal 2017-007117
Application 14/369,038
Technology Center 1700
Before KAREN M. HASTINGS, JENNIFER R. GUPTA,
and JANE E. INGLESE, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants request our review under 35 U.S.C. § 134 of the
Examiner’s final decision rejecting claims 1 and 2 under 35 U.S.C. § 102(b)
as anticipated by Matsuda (JP 61121636, published July 31, 1986); and
claims 4 and 6 under 35 U.S.C. § 103(a) as unpatentable over Matsuda. We
have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is OMRON Corporation.
See Appeal Br. 2.
Appeal 2017-007117
Application 14/369,038
The sole independent claim 1 is illustrative (emphasis added to
highlight disputed claim limitation):
1. A limit switch comprising:
a housing;
a plunger that is supported in the housing while being
vertically movable;
a switch main body disposed in and fixed to the housing
by the plunger;
an operation shaft having an upper end thereof exposed
from a ceiling surface of the switch main body;
a contact that is opened and closed by driving the upper
end of the operation shaft; and
a displacement expanding mechanism arranged between
the switch main body and the plunger,
wherein the displacement expanding mechanism
comprises:
a pair of pivoting tongue pieces rotatably supported by a
pair of support shafts arranged in parallel with
each other,
wherein a free end of one of the pivoting tongue pieces is
abutted on the upper end of the operation shaft,
wherein a free end of the other pivoting tongue piece is abutted
on an upper surface of one of the pivoting tongue pieces,
wherein a lower end of the plunger is abutted on the upper
surface of the other pivoting tongue piece, and
wherein the displacement expanding mechanism is fitted in and
fixed to an upper surface of the switch main body.
Appellants only present arguments directed to independent claim 1
(App. Br. 7—11; Reply Br. 3—8). Accordingly, all of the claims stand or fall
together.
ANALYSIS
We have reviewed each of Appellants’ arguments for patentability.
However, we determine that a preponderance of the evidence supports the
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Application 14/369,038
Examiner’s finding that the claimed subject matter of representative claim 1
is anticipated within the meaning of § 102 in view of the applied prior art.
Accordingly, we will sustain all of the Examiner’s rejections for essentially
those reasons expressed in the Examiner’s Response to Argument section in
the Answer, and we add the following primarily for emphasis.
“[T]he PTO must give claims their broadest reasonable construction
consistent with the specification. . . . Therefore, we look to the specification
to see if it provides a definition for claim terms, but otherwise apply a broad
interpretation.” (citations omitted) In re ICON Health & Fitness, Inc., 496
F.3d 1374, 1379 (Fed. Cir. 2007). “[A]s applicants may amend claims to
narrow their scope, a broad construction during prosecution creates no
unfairness to the applicant or patentee.” Id.
The only limitation in dispute is whether Matsuda’s unnumbered
element inclusive of the unnumbered tabs extending therefrom in Fig. 5
encompasses “an upper surface” as recited in claim 1 (App. Br. 7, 8; Ans. 6,
7). There is no dispute that Matsuda’s surface that the tabs extend from is
“an upper surface” (e.g., Appeal Br. 9, 10). Appellants’ position is that the
levers 8a and 8b are “attached to the front surface of the tabs” (Appeal Br. 9)
and that the tabs are de facto not a part of the upper surface (id.; see also
Reply Br. 2, 3).
Even assuming arguendo that Appellants are correct that the
Examiner’s interpretation of the term “an upper surface” to include “an
upper section” of the switch is improper (Reply Br. 7, 8), we find this to be
harmless error. This argument is not persuasive of reversible error. As de
facto found by the Examiner, Appellants’ Specification contains no limiting
or special definition of “an upper surface.” Matsuda’s unnumbered tabs in
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Application 14/369,038
Fig. 5 are an integral part of the upper surface of the switch main body, and
“since the levers [displacement expanding mechanism] are fixed to the tabs
via screws, then the levers are fixed to an upper surface of the switch main
body” (Ans. 4) (emphasis added). Appellants do not provide any persuasive
reasoning or evidence that such an upper surface as depicted in Matsuda that
includes tabs is not encompassed by the claim language. For example only,
Appellants have not recited that the upper surface is planar and exclusive of
any projections/tabs. Cf. Howmedica Osteonics Corp. v. Wright Med. Tech.,
Inc., 540 F.3d 1337, 1345 (Fed. Cir. 2008) (declining to impute a limitation
into a disputed claim term in the absence of a clear requirement in the
specification, even where “every disclosure of [the disputed term] in the
specification shows [the alleged limitation]”); see also Ventana Med. Sys.,
Inc. v. BiogenexLabs., Inc., 473 F.3d 1173, 1181 (Fed. Cir. 2006) (“[T]he
mere fact that the [asserted] patent discloses [only certain] embodiments . . .
does not in and of itself mean that the method claims at issue are limited to
the disclosed embodiments.”); Phillips v. AWHCorp., 415 F.3d 1303, 1323
(Fed. Cir. 2005) (en banc) (“[W]e have expressly rejected the contention that
if a patent describes only a single embodiment, the claims of the patent must
be construed as being limited to that embodiment.”).
Thus, a preponderance of the evidence supports the Examiner’s
position (Ans. generally). Notably, Appellants have not directed our
attention to any persuasive reasoning or credible evidence to establish that
the Examiner’s interpretation is unreasonable, nor to any portion of the
Specification that limits the definition of “fitted in and fixed to an upper
surface” to exclude the upper surface of Fig. 5 in Matsuda as pointed out by
the Examiner.
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Application 14/369,038
Accordingly, we affirm the Examiner’s anticipation rejection, as well
as the obviousness rejection of dependent claims 4 and 6, which is not
separately argued.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.
ORDER
AFFIRMED
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