Ex Parte to

Patent Trial and Appeal Board

Sep 25, 2013

11620169 (P.T.A.B. Sep. 25, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte CHUN YUEN TO
____________________

Appeal 2011-010345
Application 11/620,169
Technology Center 3700
____________________

Before PHILLIP J. KAUFFMAN, PATRICK R. SCANLON, and
BARRY L. GROSSMAN, Administrative Patent Judges.

SCANLON, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-010345
Application 11/620,169

2
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
rejection of claims 1-4, 6-9, 11-26, 29-31, 33, and 34 under 35 U.S.C.
§ 103(a) as being unpatentable over To (US 6,758,621 B2, iss. Jul. 6, 2004)
and Busam (US 2004/0037614 A1, pub. Feb. 26, 2004). Claims 5, 10, 27,
28, and 32 have been cancelled. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART and enter a NEW GROUND OF
REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b).
THE INVENTION
Appellant’s claimed invention relates “to a generally C-shaped ring
for a ring binder mechanism.” Spec. 1, para. [0001]. 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 substantially
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
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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 generally 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, the ring members each
comprising a lower segment, a middle segment and
an upper segment, the middle segment having a
radius of curvature greater than 2 inches.
ANALYSIS
Claims 1-4, 7, 9, 11, and 12
Appellant argues claims 1-4, 7, 9, 11, and 12 as a group. App. Br. 8-
15. We select claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(vii)
(2011). Accordingly, claims 2-4, 7, 9, 11, and 12 stand or fall with claim 1.
Regarding claim 1, the Examiner finds that To discloses the ring
binder mechanism as claimed except for the first and second ring members
having two different radii of curvature and a middle segment with a radius of
curvature greater than two inches. Ans. 4-5. The Examiner further finds
that Busam discloses ring members having two different radii of curvature
along their length because Figures 3 and 4 show “the curve located at the
bottom of each ring member is tighter than the curve located at the top of
each curve.”1 Ans. 4. The Examiner then concludes that:

1 We assume the last occurrence of “curve” is a typographical error that was
meant to be “ring member.”
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It would have been obvious to a person of ordinary
skill in the art at the time of the invention to form the To
rings in the shape taught by Busam, by applying the
Busam ring shaping to the portions of each ring member
located outward of and above the housing (such that the
tight lower curve shape of the To rings is retained in
order to preserve the configuration in which the rings
extend outward from underneath the housing) in order to
provide a binder which has a variable capacity for storing
different amounts of paper therein, as explicitly taught by
Busam (see paragraph 5).
Ans. 5.
The Examiner elaborates on this position by stating the To rings are
not “completely replaced”; instead, “the relatively sharp curve located at the
bottom portion of the To ring is retained (so as to not disturb the
configuration wherein the ring members extend from the lower surface of
the hinge plates), and the broader curve of the Busam upper section is
added.” Ans. 18-19. Lastly, the Examiner concludes that it would have
been obvious to provide the ring members of the To-Busam combination
with a middle segment having a radius of curvature greater than two inches
because “it is not inventive to discover the optimum or workable ranges by
routine experimentation.” Ans. 5 (quoting In re Aller, 220 F.2d 454, 456
(CCPA 1955).
Appellant argues that Busam’s rings are oval rings having straight
segments defining infinite radii of curvature and top and bottom curved
segments illustrated as having the same radii of curvature such that Busam
fails to disclose a ring having two different, non-infinite radii of curvature.
App. Br. 10-11. Given that the Examiner’s rejection is based on using the
bottom portion of the To ring member and the upper section of the Busam
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Application 11/620,169

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ring member,2 as noted supra, it is not relevant whether the upper and lower
segments of Busam’s ring members have different radii of curvature.
Nevertheless, in view of the extensive discussion by both the Examiner and
Appellant of this issue, we feel compelled to note our agreement with
Appellant. Because Busam lacks any textual description regarding the
curvature of Busam’s rings,3 the Examiner’s position is based entirely on the
drawings of Busam. These drawings are at best inconclusive as to whether
the lower curved segment has a different radius of curvature than the upper
curved section. As such, the Examiner has failed to establish by a
preponderance of the evidence that Busam discloses a ring having two
different, non-infinite radii of curvature.
In addition, we disagree with the Examiner’s apparent alternative
theory that the claim limitation of two different radii of curvature can be met
by two curved sections “in that they are not the same exact curve in the same
exact location.” Ans. 17. Appellant correctly argues that the Examiner
misinterprets the meaning of two different radii of curvature. Reply Br. 4.
As noted by Appellant, the radius of curvature is an indication of how
sharply an object is curved. Id. at 5. Consequently, two different curved
segments at different locations do not necessarily have different radii of
curvature.

2 We note that this appears to be a shift from the position taken by the
Examiner in the Final Office Action, in which the Examiner proposed
forming “the To rings in the shape taught by Busam.” Office Action dated
Jan. 20, 2010, at 3.
3 The Examiner and Appellant agree on this point. See Ans. 22; App. Br. 13;
Reply Br. 4.
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We also agree with Appellant’s arguments that one of ordinary skill in
the art would not combine To and Busam in the manner proposed by the
Examiner and that such a combination relies on impermissible hindsight “by
picking and choosing various features from To and various other features
from Busam.” Reply Br. 6-9. The Examiner’s stated rationale for the
proposed combination is that it would “provide a binder which has a variable
capacity for storing different amounts of paper therein” as taught by Busam.
Ans. 5. However, Busam teaches that the pivoting oval rings disclosed
therein provide the variable storage capacity. The Examiner has not
adequately explained why one of ordinary skill would have been led to use
only a portion of Busam’s ring, while retaining a portion of To’s ring, to
provide a variable storage capacity. As such, the Examiner’s rationale does
not provide adequate reasoning based on rational underpinnings to support
combining the references in the manner proposed.
We nonetheless sustain the rejection of claim 1, but on a basis
different from that relied on by the Examiner. Specifically, To discloses
rings 18 comprising first and second ring members 20, 22 that are generally
mirror images of each other. To, col. 3, ll. 10-11; figs. 6 and 7. As seen in
To’s Figure 6 reproduced below and annotated to show one possible set of
ring member “segments,”4 each ring member can be considered to comprise
a lower segment, a middle segment, and an upper segment, wherein each
segment has a non-infinite radius of curvature that is different from the radii
of curvature of the other segments. To thus discloses a ring member having
two different radii of curvature along its length.

4 A ring member can be viewed as being divided into any combination of
“segments” as called for in claim 1.
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Appeal 2011-010345
Application 11/620,169

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ultimate or epitome of obviousness,” In re Kalm, 378 F.2d 959, 962
(C.C.P.A. 1967), a claim that is obvious over a single reference is obvious
over a group of references including that reference. Claims 2-4, 7, 9, 11, and
12 fall with claim 1. We designate our affirmance of the rejection of claims
1-4, 7, 9, 11, and 12 as a “new ground” so as to afford Appellant a fair
opportunity to respond to the thrust of the rejection. In re Leithem, 661 F.3d
1316, 1320 (Fed. Cir. 2011).
Claim 6
Appellant argues that modifying Busam’s ring members to provide
the claim 6 limitation of the lower and upper segments each having a radius
of curvature no greater than about 0.1 inches would be “counter-intuitive to
a person having ordinary skill in the art.” App. Br. 15-16. However, the
new ground of rejection of claim 1 is based on To’s ring members, not
Busam’s. Moreover, Appellant does not rebut the Examiner’s contention
that one of ordinary skill in the art would have arrived at the claimed radius
of curvature values through routine experimentation. Ans. 6. We thus
sustain the rejection of claim 6.
Claims 8 and 22-26
Claim 8, which depends indirectly from claim 1, and independent
claim 22 both call for the first and second ring members to cooperatively
define a “generally straight” segment or section at the top of the ring. We
agree with Appellant’s argument that Busam does not disclose this claimed
feature. App. Br. 17-19, 23. However, the portions of the upper segments
between the dashed lines as depicted above in the annotated version of To’s
Figure 6 shows that the two upper segments cooperatively define a
“generally straight” top section. As acknowledged by Appellant, “generally
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Application 11/620,169

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straight” is construed to include “a slightly curved segment.” Id. at 20 n.3;
see also Spec., para. [0038]. Because the top section of the ring between the
dashed lines of Figure 6 above defines a slightly curved segment, we
determine that this segment is “generally straight” as required by claims 8
and 22. Regarding dependent claim 23, which recites that the length of the
top section is about equal to the width of the housing, the length of the top
section defined between the dashed lines is about equal to the width of the
housing 12, as shown by annotated Figure 6 above.
In addition, we note that independent claim 22 does not require that
the first and second ring members be generally mirror images. As such,
Figures 13, 15, 16, and 19-22 of To all depict ring binder mechanisms
having first and second ring members that “cooperatively define a generally
straight top section of the ring opposite the housing” as recited in claim 22.5
We accordingly sustain the Examiner’s rejection of claims 8, 22, and
23 but designate this affirmance as a “new ground” so as to afford Appellant
a fair opportunity to respond to the thrust of the rejection. Claims 24-26, for
which Appellant does not present any separate argument, fall with claim 22.
Claims 13-17 and 19-21
Independent claim 13 is directed to a ring binder mechanism in which
each of the two ring members has a generally straight middle segment that
slopes inward as it extends away from the housing. The Examiner relies on
the same combination of To and Busam discussed supra in connection with
the rejection of claim 1 and contends that Figures 3, 4, and 6 of Busam show

5 Should there be further prosecution of this application, we recommend that
the Examiner also consider the Sep. 29, 2005 published application of Ng
(US 2005/0214064 A1) filed Dec. 10, 2004.
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Application 11/620,169

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a middle segment sloping inward as it extends away from the housing. Ans.
7-8, 28. We agree with Appellant’s assertion that these figures of Busam do
not show generally straight segments that slope inward, but instead show
generally straight middle segments that are parallel to one another. App. Br.
21-22.
However, Figures 9 and 12 of Busam show ring members 34a, 34b
having generally straight (i.e., slightly curved) middle segments that are
depicted as sloping inward as they extend away from the housing (support
strip 28). We thus conclude that it would have been obvious to one of
ordinary skill in the art at the time of invention to modify the ring binder
mechanism of To by replacing To’s ring members with the ring members
shown in Figures 9 and 12 of Busam as this would be the simple substitution
of one known mechanical element for another that produces predictable
results. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007) (“when
a patent claims a structure already known in the prior art that is altered by
the mere substitution of one element for another known in the field, the
combination must do more than yield a predictable result”). Accordingly,
we sustain the Examiner’s rejection of claim 13 as obvious over To and
Busam but designate this affirmance as a “new ground” so as to afford
Appellant a fair opportunity to respond to the thrust of the rejection. Claims
14-17 and 19-21, for which Appellant does not present any separate
argument, fall with claim 13.
Claim 18
Regarding claim 18, the Examiner concludes that one of ordinary skill
in the art would have arrived at a radius of curvature of more than two
inches for the upper segments of each ring member through routine
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experimentation. Ans. 9-10 (quoting In re Aller, 220 F.2d 454, 456 (CCPA
1955). Appellant’s argument that “the upper sections of Busam’s ring
segments are shaped to give the ring a semi-circular top” (App. Br. 22) does
not persuade us of error in the Examiner’s position. We thus sustain the
rejection of claim 18 but designate this affirmance as a “new ground” so as
to afford Appellant a fair opportunity to respond to the thrust of the
rejection.
Claims 29-31
Each one of independent claims 29-31 calls for a ring binder
mechanism having two ring members, each ring member comprising first,
second, and third segments wherein the radius of curvature of the third
segment is substantially greater than that of the first and second segments.
Claim 29 adds that the second radius of curvature is different than the first
radius of curvature, claim 30 adds that the second radius of curvature is no
more than about 0.5 inches and the first radius of curvature is less than the
second radius of curvature, and claim 31 adds that the third segment extends
between the first and second segments and the first radius of curvature is no
more than about 0.5 inches.
In rejecting these claims, the Examiner relies on To modified by
Busam in the same manner as set forth in the rejection of claim 1. Ans. 12,
13, 15. We disagree with the basis of the Examiner’s proposed combination
of To and Busam for the reasons discussed supra in connection with the
rejection of claim 1 but nonetheless sustain the rejection of claims 29-31 on
a different basis.
As discussed supra, the annotated version of To’s Figure 6
reproduced above shows how the ring members can be divided into three
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segments. For the purposes of analyzing claims 29-31, the lower segment is
the first segment, the upper segment is the second segment, and the middle
segment is the third segment. As can be seen in the Figure, the third
segment extends between and interconnects the first and second segments
and has a radius of curvature that is substantially greater than that of the first
and second segments, and the radius of curvature of the first segment is less
(and thus different) than the radius of curvature of the second segment.
Regarding the limitations that the second radius of curvature is no more than
about 0.5 inches and the first radius of curvature is no more than about 0.5
inches, Appellant does not contest the Examiner’s contention that one of
ordinary skill in the art would have arrived at these claimed radius of
curvature values through routine experimentation. Ans. 14-15, 16 (quoting
In re Aller, 220 F.2d 454, 456 (CCPA 1955). We thus we agree with and
adopt the Examiner’s contention.
For the above reasons, we sustain the rejection of claims 29-31 under
35 U.S.C. § 103(a) as unpatentable over To and Busam. We designate our
affirmance of the rejection of claims 29-31 as a “new ground” so as to afford
Appellant a fair opportunity to respond to the thrust of the rejection.
Claims 33 and 34
Pursuant to 37 C.F.R. § 41.50(b), we enter a new ground of rejection
for claims 33 and 34 under 35 U.S.C. § 112, first paragraph, as failing to
comply with the written description requirement.6 Claim 33 calls for first
and second ring members each having a lower segment that extends
“laterally outward from a respective one of the longitudinal edges of the

6 We note that claim 33 also contains a typographical error in that the phrase
“the lower segment” is repeated in succession.
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housing a distance greater than a diameter of the ring member.” According
to the online Encarta Dictionary: English (North America), “diameter”
means “a straight line running from one side of a circle or other rounded
geometric figure through the center to the other side.” Appellant’s
Specification does not define what dimension of the ring members 29 would
be the claimed diameter, nor does the Specification even identify what
would be the “center” of the substantially C-shaped ring members 29. Even
assuming arguendo that the diameter of each ring member 29 is either the
ring member width or the ring member height, H, (as shown in Appellant’s
Figure 10), Appellant’s Figure 9 does not show that the lower segment 29a
extends laterally outward from the respective longitudinal edge 10 of the
housing 9 a distance greater than either of these “diameters.” We thus find
that this subject matter is not described in the Specification in such a way as
to reasonably convey to one of ordinary skill in the art that the inventors had
possession of the claimed invention at the time the application was filed.
Claim 34 fails to comply with the written description requirement because of
its dependency from claim 33.
Because claims 33 and 34 include subject matter not adequately
described in the Specification, an obviousness analysis of these claims
would require us to engage in considerable speculation as to the meaning of
this subject matter. We decline to engage in such speculation and thus
reverse, pro forma, the Examiner’s rejection of claims 33 and 34 under 35
U.S.C. § 103(a). Cf. In re Steele, 305 F.2d 859, 862 (CCPA 1962).
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DECISION
We affirm the Examiner’s rejection of claims 1-4, 6-9, 11-26, and 29-
31 under 35 U.S.C. § 103(a) as being unpatentable over To and Busam and
designate our affirmance as a NEW GROUND OF REJECTION.
We reverse the Examiner’s rejection of claims 33 and 34 under 35
U.S.C. § 103(a) as being unpatentable over To and Busam.
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a NEW
GROUND OF REJECTION of claims 33 and 34 under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement.
In addition to affirming the Examiner’s rejection of one or more
claims, this decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b) (2011). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the Examiner, in which event the proceeding
will be remanded to the Examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
Regarding the affirmed rejection, 37 C.F.R. § 41.52(a)(1) provides
“Appellant may file a single request for rehearing within two months from
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the date of the original decision of the Board.” Should Appellant elect to
prosecute further before the Examiner pursuant to 37 C.F.R. § 41.50(b)(1),
in order to preserve the right to seek review under 35 U.S.C. §§ 141 or 145
with respect to the affirmed rejection, the effective date of the affirmance is
deferred until conclusion of the prosecution before the Examiner unless, as a
mere incident to the limited prosecution, the affirmed rejection are
overcome. If Appellant elects prosecution before the Examiner and this
does not result in allowance of the application, abandonment or a second
appeal, this case should be returned to the Patent Trial and Appeal Board for
final action on the affirmed rejection, including any timely request for
rehearing thereof.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

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