Ex Parte Timperi et al

Patent Trial and Appeal Board

Sep 28, 2017

12650284 (P.T.A.B. Sep. 28, 2017)

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.
12/650,284 12/30/2009 Mikko Juhani Timperi 042933/425359 7007
10949 7590
Nokia Corporation and Alston & Bird LLP
c/o Alston & Bird LLP
Bank of America Plaza, 101 South Tryon Street
Suite 4000
Charlotte, NC 28280-4000
EXAMINER
CIGNA, JACOB JAMES
ART UNIT PAPER NUMBER
3726
NOTIFICATION DATE DELIVERY MODE
10/02/2017 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):
u sptomail @ alston .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MIKKO JUHANI TIMPERI and TOMMI ANTERO TEURI
Appeal 2016-003874
Application 12/650,284
Technology Center 3700
Before STEVEN D.A. MCCARTHY, THOMAS F. SMEGAL, and
LISA M. GUIJT, Administrative Patent Judges.
SMEGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Mikko Juhani Timperi and Tommi Antero Teuri (“Appellants”)1 seek
our review under 35 U.S.C. § 134 from the Examiner’s rejection2 under
35 U.S.C. § 103(a) of claims 1—14 as unpatentable over Park (US
2007/0006421 Al, pub. Jan. 11, 2007), Decker (US 4,986,674, iss. Jan. 22,
1991), and Bocchicchio (US 4,767,298, iss. Aug. 30, 1988).3 We have
jurisdiction under 35 U.S.C. § 6(b).
1 According to Appellants, the real parties in interest is Nokia Corporation.
Br. 2.
2 Appeal is taken from the adverse decision of the Examiner as set forth in
the Final Office Action, dated January 12, 2015 (“Final Act.”).
3 Claims 15—22 have been withdrawn from consideration. Br. 14—15,
Claims App.
Appeal 2016-003874
Application 12/650,284
We REVERSE.
CLAIMED SUBJECT MATTER
Claim 1, the sole independent claim on appeal, is reproduced below
and illustrates the claimed subject matter, with disputed limitations
emphasized.
1. A method for providing a slide arrangement,
comprising:
coupling a first rail part with a second rail part;
inelastically deforming at least one of the first rail
part and the second rail part;
reducing a separation distance between the first
rail part and the second rail part in response to
inelastically deforming at least one of the first rail part
and the second rail part; and
configuring the first rail part and the second rail
part for relative movement.
ANALYSIS
Obviousness of Claims 1—14 over Park, Decker, and Bocchicchio
We are persuaded by Appellants’ arguments that the Examiner erred
in rejecting claims 1—14 over Park, Decker, and Bocchicchio. See Br. 7—12.
The Examiner first characterizes Appellants’ inventive contribution to
be “the reduction of a separation distance between the first rail part and the
second rail part,” and refers to several of Appellants’ drawings in the
Specification that illustrate “the separation distance 111 of Figure 7 is
essentially eliminated after the heat staking operation, as shown in Figure 9.”
See Final Act. 3^4 (citing Spec., Figs. 7, 9, 11, 12). By way of comparison,
the Examiner explains that “Figure 4 of Park which shows the sliding
mechanism in an unstaked arrangement,” depicts “a separation distance
[that] will inherently be reduced by a staking operation.” Id. at 4 (citing
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Appeal 2016-003874
Application 12/650,284
Spec. 27, 28, discussing the mechanism by which Appellants’ separation
is reduced). The Examiner reasons that “[tjhere does not appear to be any
other special device, arrangement, or method which [Appellants attribute] to
the claimed separation reduction” and concludes that “any similar heat
staking operation comprising heating and pressure to a similar arrangement
of parts will achieve similar results.” Id. at 5.
In rejecting claim 1, the Examiner then states that Park teaches a
method for providing a slide arrangement, including the recited steps of
“coupling a first rail part. . . with a second rail part,” and “configuring the
first rail part and the second rail part for relative movement.”4 Ans. 2—3
(emphasis omitted). However, the Examiner acknowledges that Park does
not teach the additional claimed steps of “inelastically deforming at least one
of the first rail part and the second rail part; [and] reducing a separation
distance between the first rail part and the second rail part in response to
inelastically deforming at least one of the first rail part and the second rail
part,” but reasons that “[Appellants’ Specification teaches that the
separation reduction is caused by the deforming, and the deforming is taught
in an exemplary embodiment to be heat staking of the protrusion of the first
rail part.” Id. at 3 (emphasis omitted).
The Examiner reasons that “while [Park] does not teach heat staking,
the method of heat staking is well known and widely practiced in the art of
firmly fixing plastic and metal components together.” Id. Furthermore,
according to the Examiner, Decker “teaches that it is well known to heat
4 Park discloses several different friction reducing mechanisms for allowing
two members to slide relative to one another with reduced friction. See
Park, Abstract.
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Appeal 2016-003874
Application 12/650,284
stake parts useful in sliding arrangements ([cjolumn 3 lines 1-10),” from
which the Examiner concludes that “[a]n artisan . . . would have recognized
that heat staking the protrusions 351 of [Park] to the base 310 would have
been prima facie obvious because it is well known to heat stake this
arrangement of parts.” Id. at 3^4.
Regarding the claim limitation of “reducing a separation distance . . .
,” the Examiner states that “reducing a separation distance between the first
rail part and the second rail part in response to inelastically deforming the
first rail part, has been determined to be an inherent consequence of the heat
staking,” and concludes that “an artisan practicing [Park] in view of
[Decker] would inherently observe a reduction in the separation between the
rails 321 and the rail groove 353 [of Park].” Id. at 4 (emphasis added).
The Examiner additionally cites Bocchicchio for teaching two kinds
of heat stacking tools to illustrate that it is well known “to have provided for
heat staking tools which either formed a mushroom shape, or which pushed
inwards of the heated part, [and that] choosing among them would have been
an obvious engineering choice to an artisan having ordinary skill in the art at
the time the invention was made.” Id. at 5.
In taking issue with the Examiner’s findings and conclusions,
presented in the Final Office Action, Appellants observe that “[e]ven with
the heat staking operations of Decker and Bocchicchio combined with the
teachings of Park, there is no teaching or suggestion that there is any
reduction of a separation distance between the first and second rail parts in
response to such an operation.” Br. 9. More specifically, Appellants point
out that “Park does not contemplate, nor would it be desirable to reduce the
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Application 12/650,284
separation between the alleged ‘first rail part’ and ‘second rail part’ of Park,
regardless of whether [or not] heat staking was used.” Id.
“The mere fact that the prior art may be modified in the manner
suggested by the Examiner does not make the modification obvious unless
the prior art suggested the desirability of the modification.” In re Fritch,
972 F.2d 1260, 1266 (Fed. Cir. 1992) (citing In re Gordon, 733 F.2d 900,
902 (Fed. Cir. 1984)). Here, the Examiner fails to provide a persuasive
reason for modifying Park to inherently reduce a separation distance
between the first and second rail parts by the well-known technique of heat
staking. Absent some articulated rationale for doing so, the Examiner’s
conclusory assertion is inadequate to support a conclusion of obviousness.
See KSR Inti Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The Examiner
has the initial burden of supplying the requisite factual basis and may not,
because of doubts that the invention is patentable, resort to speculation,
unfounded assumptions, or hindsight reconstruction to supply deficiencies in
the factual basis. See also In re Warner, 379 F.2d 1011, 1017 (CCPA 1967).
(“The legal conclusion of obviousness must be supported by facts. [] Where
the legal conclusion is not supported by facts it cannot stand.”).
Based on the foregoing, we do not sustain the rejection of claims 1—14
as obvious over Park, Decker, and Bocchicchio.
DECISION
We REVERSE the Examiner’s rejection.
REVERSED
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