Ex Parte TJOA

Board of Patent Appeals and Interferences

Aug 13, 2010

09319243 (B.P.A.I. Aug. 13, 2010)

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.
09/319,243 08/05/1999 PING LIONG TJOA TJOA3001/FJD 2663
23364 7590 08/13/2010
BACON & THOMAS, PLLC
625 SLATERS LANE
FOURTH FLOOR
ALEXANDRIA, VA 22314-1176
EXAMINER
HAMILTON, LALITA M
ART UNIT PAPER NUMBER
3691
MAIL DATE DELIVERY MODE
08/13/2010 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)
1

UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte PING LIONG TJOA 8
___________ 9
10
Appeal 2009-010006 11
Application 09/319,243 12
Technology Center 3600 13
___________ 14
15
Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and 16
JOSEPH A. FISCHETTI, Administrative Patent Judges. 17
FETTING, Administrative Patent Judge 18
DECISION ON REQUEST FOR REHEARING119

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 2009-010006
Application 09/319,243

2

STATEMENT OF CASE 1
This is a decision on rehearing in Appeal No. 2009-010006. We have 2
jurisdiction under 35 U.S.C. § 6(b) (2002). 3
Requests for Rehearing are limited to matters misapprehended or 4
overlooked by the Board in rendering the original decision. 37 C.F.R. 5
§ 41.52. 6
ISSUES ON REHEARING 7
The Appellant raises two issues in the Request for Rehearing. The first 8
issue relates to whether the art shows the geometry as claimed. The second 9
issue is whether the panel properly construed the limitation, “adapted to the 10
palm of the hand”. Claim 12. 11
ANALYSIS 12
We found in our decision that claims 12 and 14-23 were either 13
anticipated by Bosko or unpatentable as obvious over a combination with 14
Bosko. (Decision 9:23 - 10:6). 15
The Appellant argues that (1) Bosko's barbell structurally does not meet 16
the limitations of claim 12 of a conversely concave region on its side toward 17
an intermediate element. The Appellant argues that 18
Bosko shows in Fig. 7 a bar 52 with threaded connections at 19
each end for receiving a connector to which a container 50, 5i is 20
attached. The containers are spherical and as such do not 21
contain a "conversely concave region." The "conversely 22
concave region" is a transition region between the "spherical 23
region" of the end element and the "turning region" which leads 24
to the intermediate element. Bosko has a complete sphere and a 25
rod, which are joined together without any transition. 26
Appeal 2009-010006
Application 09/319,243

3

Request 1-2. The Appellant did not argue this particular limitation in the 1
Appeal or Reply Briefs, so the panel was not in a position to respond to this 2
in the Decision. We find that the portion of the sphere close to the annular 3
neck reference number 66 in Figure 7 does form such a concave region, 4
however. 5
The Appellant next contends that our construction that “adapted to the 6
palm of the hand” means structured so the palm can be in contact does not 7
follow from the definition of the term “adapted”. The Appellant contends 8
the word “adapted” should be construed as another dictionary definition 9
meaning “conform”. Request 2-3. 10
During examination of a patent application, pending claims are given 11
their broadest reasonable construction consistent with the specification. In 12
re Prater , 415 F.2d 1393, 1404-05 (CCPA 1969); In re Am. Acad. of Sci. 13
Tech Ctr., 367 F.3d 1359, 1369, (Fed. Cir. 2004). The Appellant is merely 14
proffering another of the definitions, in a dictionary in place of the definition 15
the panel found, viz. to make suitable to or fit for a specific use or situation, 16
in the Findings of Fact at Decision 5. Either one of such meanings would be 17
appropriate in view of the Specification, which again shows no more than 18
making contact with the palm, as in “held on the outside between the palms” 19
at Specification: 4:26-27. Thus, the construction of structured so the palm 20
can be in contact found by the panel is predicated on the definition of 21
adapted as suitable for a specific use and that use was found to be contact 22
with the palm. We find that the panel properly construed the term “adapted 23
to the palm of the hand” based on the underlying facts. 24
Appeal 2009-010006
Application 09/319,243

4

CONCLUSION 1
Nothing in the Appellant’s request has convinced us that the panel 2
overlooked or misapprehended the geometry of Bosko’s device or the proper 3
construction of the term “adapted” as argued by the Appellant. Accordingly, 4
we deny the request. 5
DECISION 6
To summarize, our decision is as follows: 7
• We have considered the REQUEST FOR REHEARING 8
• We DENY the request that we reverse the Examiner as to claims 12 9
and 14-23. 10
No time period for taking any subsequent action in connection with this 11
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 12
§ 1.136(a)(1)(iv) (2007). 13
14
DENIED 15
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mev 19
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BACON & THOMAS, PLLC 21
625 SLATERS LANE 22
FOURTH FLOOR 23
ALEXANDRIA VA 22314-1176 24