Ex Parte to

Patent Trial and Appeal Board

Mar 28, 2018

11620169 (P.T.A.B. Mar. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111620,169 0110512007
321 7590 03/30/2018
SENNIGER POWERS LLP
100 NORTH BROADWAY
17THFLOOR
ST LOUIS, MO 63102
FIRST NAMED INVENTOR
Chun Yuen To
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
WWSM2584
(WW/NP0635)
8799
EXAMINER
LEWIS, JUSTIN V
ART UNIT PAPER NUMBER
3638
NOTIFICATION DATE DELIVERY MODE
03/30/2018 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):
uspatents@senniger.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHUN YUEN TO
Appeal 2016-000845
Application 11/620, 169
Technology Center 3600
Before PATRICK R. SCANLON, BARRY L. GROSSMAN and
BEYERL Y M. BUNTING, Administrative Patent Judges.
SCANLON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Chun Yuen To ("Appellant") 1 seeks our review under 35 U.S.C. § 134
of the Examiner's decision, as set forth in the Final Office Action, dated
October 3, 2014 ("Final Act."), rejecting claims 1--4, 6-9, 11-16, 18-23, 26,
29-31, and 33-35, which are all of the pending claims. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellant identifies World Wide Stationery Manufacturing Company
Limited as the real party in interest. Appeal Br. 2.
Appeal2016-000845
Application 11/620, 169
CLAIMED SUBJECT MATTER
Appellant's claimed invention relates "to a generally C-shaped ring
for a ring binder mechanism." Spec. 1 i-f 1. Claims 1, 13, 22, and 29-31 are
the independent claims on appeal. Claim 1, reproduced below, is illustrative
of the claimed subject matter.
1. A ring binder mechanism for holding loose-leaf pages, the
mechanism comprising a housing and a plurality of rings for
holding the loose-leaf pages, each ring including a first ring
member and a second ring member, the first ring member being
movable relative to the housing and the second ring member
between a closed position and an opened position, in the closed
position the first and second ring members forming a continuous,
closed loop for allowing loose-leaf pages retained by the rings to
be moved along the rings from one ring member to the other, and
in the opened position the first and second ring members forming
a discontinuous, open loop for adding or removing loose-leaf
pages from the rings, a pair of hinge plates supported by the
housing for pivotal motion of the hinge plates with respect to the
housing, the hinge plates having an upper surface facing the
housing and a lower surface facing away from the housing, the
first and second ring members being mounted on respective
hinge plates and moveable with pivoting motion of the hinge
plates between the opened and closed positions, the ring
members extending from the lower surface of the hinge plate, the
first and second ring members being mirror images of each other,
each of said ring members having a length and at least two
different non-infinite radii of curvature along said length_and
outside the housing when the rings are closed, the ring members
each comprising a lower segment, a middle segment and an
upper segment, the middle segment having a non-infinite radius
of curvature greater than 2 inches, wherein when the ring
members are in the closed position the lower segments of the ring
members extend outward beyond opposite sides of the housing
to a respective bend where the lower segments are joined with
the respective middle segments, the bends being at a location
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Application 11/620, 169
where the rings have a maximum width and being positioned no
higher than a top of the housing.
Appeal Br. 18, Claims App.
REFERENCE
The Examiner relies upon the following prior art reference:
Cohen us 4,552,478
REJECTIONS
The following rejections are before us on appeal:
Nov. 12, 1985
I. Claims 6, 14--16, 18, 23, 26, 30, 31, 34, and 35 stand rejected
under 35 U.S.C. § 112, second paragraph, as indefinite.
II. Claims 1--4, 6-9, 11-16, 18-23, 26, 29-31, and 33-35 stand
rejected under 35 U.S.C. § 103(a) as unpatentable over Cohen.
ANALYSIS
Rejection I
The Examiner finds that claims 6, 14--16, 18, 23, 26, 30, 31, 34, and
35 each recite the term "about," which is a relative term that renders the
claims indefinite. Final Act. 2. The Examiner adds that use of the term
"about" renders the claims indefinite because the prior art is "close to
[Appellant's] proposed invention" and Appellant's Specification and the
overall prosecution history both fail to indicate "exactly what range of
values is covered by each of [Appellant's] recitations of 'about'." Id. at 24--
25 (citing Amgen, Inc. v. Chugai Pharmaceutical Co., 927 F.2d 1200 (Fed.
Cir. 1991).
A claim fails to comply with 35 U.S.C. § 112, second paragraph,
"when it contains words or phrases whose meaning is unclear." In re
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Appeal2016-000845
Application 11/620, 169
Packard, 751F.3d1307, 1310, 1315 (Fed. Cir. 2014) (percuriam)
(approving, for pre-issuance claims, the standard fromMPEP § 2173.05(e));
see also Ex parte McAward, Appeal 2015-006416, 2017 WL 3669566, at *5
(PTAB Aug. 25, 2017) (precedential) (adopting the approach for assessing
indefiniteness approved by the Federal Circuit in Packard). "Claim
language employing terms of degree has long been found definite where it
provided enough certainty to one of skill in the art when read in the context
of the invention." Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1370
(Fed. Cir. 2014).
Appellant argues that one of ordinary skill in the art readily can
determine the ranges encompassed by claims 6, 14--16, 18, 23, 26, 3 0, 31,
34, and 35 because these claims "recite various dimensions of the claimed
ring members which can easily be measured using a ruler and protractor."
Appeal Br. 9. Appellant compares the present case to that in W.L. Gore &
Associates, Inc. v. Garlock, Inc., 721F.2d1540, (Fed. Cir. 1983), in which
"a limitation defining the stretch rate of a plastic as 'exceeding about 10%
per second' [was found to be definite] because infringement could clearly be
assessed through the use of a stopwatch." Id. Appellant distinguishes
Amgen by noting that case involved imprecise measurement and inherent
error lacking in the present case. Id. at 10 (citing Amgen, 927 F .2d at 1217).
We agree with Appellant. The claim language at issue in Amgen
involved "bioassays [that] provide an imprecise form of measurement with a
range of error," such that "use of the term 'about' 160,000 IU/AU, coupled
with the range of error already inherent in the specific activity limitation"
failed to distinguish the claimed invention over the close prior art. Amgen,
927 F.2d at 1217 (emphasis added). The language of claims 6, 14--16, 18,
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Appeal2016-000845
Application 11/620, 169
23, 26, 30, 31, 34, and 35, which pertains to various dimensions of the rings,
does not present such imprecision or inherent error. Furthermore, we
disagree with the Examiner's determination that the claims "call for
'segments' or 'sections' of the recited ring members ... without explicitly
indicating exactly what parts of the ring elements each 'segment' or
'section' comprises" such that it would be difficult to assess the recited
ranges even if using a ruler or compass. See Ans. 25. Rather, we determine
that the scope of the claimed "segments" and "sections" would be
understood by one of ordinary skill in the art when read in light of
Appellant's Specification, including the drawings.
For these reasons, the context of the invention provides sufficient
certainty for one skilled in the art to understand what the relative term
"about" encompasses. We, thus, do not sustain the rejection of claims 6, 14--
16, 18, 23, 26, 30, 31, 34, and 35 as indefinite.
Rejection II
In rejecting claim 1, the Examiner finds that the embodiment shown in
Figure 2 of Cohen discloses a ring binder mechanism comprising a housing
(cover rail 10), a plurality of rings (ring sets 12), and a pair of hinge plates
(carrier rails 24, 26) as claimed. Final Act. 3--4. Appellant does not appear
to contest this finding.
The Examiner, however, determines that the Figure 2 embodiment of
Cohen fails to disclose several limitations of claim 1, particularly
i) the first and second ring members being mirror images of each
other; ii) each of said ring members having a length and at least
two different non-infinite radii of curvature along said length and
outside the housing when the rings are closed; iii) the ring
members each comprising a lower segment, a middle segment
and an upper segment; iv) the middle segment having a non-
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Appeal2016-000845
Application 11/620, 169
infinite radius of curvature greater than 2 inches; and v) wherein
when the ring members are in the closed position the lower
segments of the ring members extend outward beyond opposite
sides of the housing to a respective bend where the lower
segments are joined with the respective middle segments, the
bends being at a location where the rings have a maximum width
and being positioned no higher than a top of the housing.
Id. at 4--5. The Examiner then turns to the embodiment shown in Figure 6 of
Cohen as disclosing a ring having first and second ring members that are
mirror images of each other. Id. at 5. Referring to an annotated version of
Figure 6, the Examiner finds that each ring member includes a lower
segment, a middle segment, and an upper segment. Id. at 5---6. The
Examiner's annotated version of Cohen's Figure 6 is reproduced below.
~~f:~q.>er $ef1 rr1er~t es .
.......... -"'!!""~-.
Figure 6 of Cohen illustrates a ring having two ring elements 20, 22 that
have similar profiles and are symmetrical about a vertical plane except for
differences in the mesh ends. Cohen, 7:67-8:3. Ring element 20 includes
mesh end 36, generally straight portion 38, and second generally straight
portion 40. Id. at 5:26-32, 7:67---68. Ring element 22 includes straight
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Appeal2016-000845
Application 11/620, 169
bottom portion 80, straight portion 84 joined to bottom portion 80 by
intermediate portion 82, and mesh end 86. Id. at 8:4--10. The Examiner's
annotated version of Figure 6 includes lines defining the portions of ring
elements 20, 22 that the Examiner identifies as the ring elements' lower,
middle, and upper segments, which generally correspond with bottom
straight portions 40, 80, straight portions 38, 84, and mesh ends 36, 86,
respectively. Final Act. 6.
Regarding the limitation of the middle segment having a non-infinite
radius of curvature greater than 2 inches, the Examiner determines that, as
shown in the annotated version of Figure 6, Cohen's "middle segments
contain portions that are at least minimally curved at their distal ends." Id.
(emphases added). In other words, the Examiner's position appears to be
that, although the middle segments are straight over a substantial portion of
their lengths, the portions adjacent the respective upper segments are curved
as the straight portions transition into the curvature of the respective upper
segments. As for this radius of curvature being greater than 2 inches, the
Examiner merely states, "it has been held that 'where the general conditions
of a claim are disclosed in the prior art, it is not inventive to discover the
optimum or workable ranges by routine experimentation."' Id. at 7 (citing
In re Aller, 220 F.2d454, 456 (CCPA 1955)).
Appellant argues that the Examiner's reliance on In re Aller is
improper because "the ring binder mechanism recited in claim 1 recites
structural differences that are not the result of routine experimentation," and
"the difference in the present case is not one of degree resulting from routine
experimentation but represents a patentable and meaningful change in
structure." Appeal Br. 15.
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Appeal2016-000845
Application 11/620, 169
We agree with Appellant. The Examiner only implies that a radius of
curvature greater than 2 inches would be optimal without providing any
rationale or evidence to establish that one of ordinary skill in the art would
discover such a radius of curvature through routine experimentation. Put
simply, the Examiner fails to explain why the radius of curvature would be
derived through routine experimentation. For instance, the Examiner does
not explain why the radius of curvature would have been recognized in the
prior art as a parameter that would affect a result. See In re Antonie, 559
F .2d 618, 620 (CCP A 1977) (holding that a variable must be art-recognized
as result-effective before it can be deemed to be subject to routine
optimization).
The Examiner presents an alternative position in response to
Appellant's argument. Namely, in the Examiner's Answer, the Examiner
states that:
In light of the fact that the curved lower distal ends make a
smooth transition into the straight upper areas, at least one small
portion of this identified "middle segment" must have a radius of
curvature that is non-infinite (at least slightly curved), and
greater than 2 inches (as the radius of curvature transitions to its
infinite status).
Ans. 26 (emphasis added).
Appellant disagrees, arguing that a smooth transition between a
straight line and a curved segment "does not require[] a gradual change in
the radius of curvature from the infinite radius of the straight line to a
smaller radius of the curved segment," because "it is possible to have an
abrupt change in the radius of curvature when there is a smooth surface
transition from a straight line to a curved segment." Reply Br. 3. Appellant
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Appeal2016-000845
Application 11/620, 169
illustrates this point with a diagram showing a circular arc making a smooth
transition with a straight line, which is reproduced below.
! This ;st.nilgh.t line is a tuugcnt !inc I to the cir~~ill.ff arc having.radius R
Id. Appellant's illustration depicts a straight line that is tangent to a circular
arc having constant radius R. Id. Appellant argues that "[t]he straight line
and arc make a smooth transition because the line is a tangent line to the arc
at the junction between the line and the arc," which means there "is no need
for a gradual diminishment of the radius of curvature to achieve a smooth
transition." Id. at 4. For this reason, Appellant argues that it is not inherent
that Cohen's middle segment has a non-infinite radius of curvature greater
than 2 inches. Id.
We again agree with Appellant. "Inherency ... may not be
established by probabilities or possibilities. The mere fact that a certain
thing may result from a given set of circumstances is not sufficient."
Bettcher Indus., Inc. v. Bunzl USA, Inc., 661F.3d629, 639 (Fed. Cir. 2011)
(citations omitted). A.lthough the Examiner states that Cohen's middle
~-
segment must have a radius of curvature greater than 2 inches as the radius
of curvature transitions to the infinite radius of curvature of the straight
portion, Appellant's illustration provides one example in which the radius of
curvature does not transition gradually. Thus, contrary to the Examiner's
position, a middle segment having a non-infinite radius of curvature greater
than 2 inches is not inherently disclosed by Cohen.
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Appeal2016-000845
Application 11/620, 169
For the above reasons, we determine that the Examiner has not
established by a preponderance of the evidence that Cohen either inherently
discloses or renders obvious the claim limitation of a middle segment having
a non-infinite radius of curvature greater than 2 inches. Accordingly, we do
not sustain the rejection of claim 1 and claims 2--4, 6-9, 11, and 12
depending therefrom. The Examiner's analysis of remaining independent
claims 13, 22, and 29--31 relies on the same erroneous findings and
conclusions regarding the non-infinite radius of curvature greater than 2
inches. See Final Act. 11-12, 16, 18, 20, and 22. Thus, we do not sustain
the rejection of claims 13, 22, and 29--31, as well as claims 14--16, 18-21,
23, 26, and 33-35 depending therefrom, for the same reasons stated with
respect to claim 1.
DECISION
We reverse the decision of the Examiner rejecting claims 1--4, 6-9,
11-16, 18-23, 26, 29--31, and 33-35.
REVERSED
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