Ex Parte to et al

Patent Trial and Appeal Board

Nov 23, 2016

12843437 (P.T.A.B. Nov. 23, 2016)

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.
12/843,437 07/26/2010 Chun Yuen To WWSM 2606.4 6189
(WW/CA0723)
321 7590 11/28/2016
SENNIGER POWERS LLP
100 NORTH BROADWAY
17TH FLOOR
ST LOUIS, MO 63102
EXAMINER
KATCOFF, MATTHEW GORDON
ART UNIT PAPER NUMBER
3725
NOTIFICATION DATE DELIVERY MODE
11/28/2016 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, HO PING CHENG, and JIN BIAO PI
Appeal 2015-002517
Application 12/843,437
Technology Center 3700
Before JENNIFER D. BAHR, JAMES P. CALVE, and
AMANDA F. WIEKER, Administrative Patent Judges.
CALVE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the final rejection of
claims 1—15. Appeal Br. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appeal 2015-002517
Application 12/843,437
CLAIMED SUBJECT MATTER
Claims 1, 8, and 11 are independent. Claim 1 is reproduced below.
1. A ring binder mechanism for holding loose-leaf
pages, the mechanism comprising:
an elongate housing having a central portion and lateral
sides extending downwardly along either side of the central
portion;
a ring support comprising a pair of hinge plates in
generally side-by-side relation and hingedly connected to one
another for pivoting movement relative to each other, the hinge
plates being held between the lateral sides of the housing;
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 mounted on the ring support for
movement with the ring support relative to the housing between
a closed position and an open 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 open position the first and second ring
members forming a discontinuous, open loop for adding or
removing loose-leaf pages from the rings; and
an actuator mounted for pivotal movement relative to the
housing about a pivot axis, the actuator comprising a pair of
arms engageable with the hinge plates, the arms including a
lower arm having a first contact surface engageable with the
hinge plates during pivoting movement of the actuator in a first
direction to move the rings from the closed position to the open
position and an upper arm having a second contact surface
engageable with the hinge plates during pivoting movement of
the actuator in a second direction opposite said first direction to
move the rings from the open position to the closed position,
the first contact surface being spaced farther from the pivot axis
than the second contact surface.
2
Appeal 2015-002517
Application 12/843,437
REJECTIONS
Claims 11—15 are rejected under 35 U.S.C. § 102(b) as anticipated by,
or in the alternative, under 35 U.S.C. § 103(a) as unpatentable over, Cheng
(US 2005/0013654 Al, pub. Jan. 20, 2005). Final Act. 7.
Claims 1—10 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Cheng. Final Act. 9.
Claims 1—11 are rejected for non-statutory obviousness-type double
patenting overU.S. Patent Nos. 7,819,602, 7,726,897, 7,819,602, andU.S.
Patent Application No. 12/236,296. Final Act. 6.
ANAFYSIS
Claims 11—15 as anticipated by, or unpatentable over, Cheng
The Examiner found that Cheng discloses a ring binder, as recited in
independent claim 11, including an actuator (lever 615) with a pair of arms
549, 551 engageable with hinge plates to move rings 649 from the closed to
the open position upon pivoting actuator 615 through an angle of about 16 to
about 24 degrees. Final Act. 7—8. Alternatively, the Examiner determined
that Cheng discloses the general angular movement of the actuator so the
claimed range involves only the discovery of an optimum or workable range
using routine skill in the art. Id. at 8. The Examiner also found that Cheng’s
actuator is capable of completing movement of the rings to the open position
upon the movement of the actuator for 16 to about 24 degrees. Id. at 2.
Appellants argue that Cheng is silent about the angular movement of
the lever needed to complete movement of the rings from the closed position
to the open position. Appeal Br. 17. Appellants argue that Figures 16—17B
do not show the rings in an open position or describe the amount of rotation
of the actuator, and other figures show rotation of about 45°. Id. at 17—18.
3
Appeal 2015-002517
Application 12/843,437
The Examiner has not established by a preponderance of evidence that
Cheng teaches or suggests a ring binder with an actuator configured to move
the rings completely to an open position by pivoting through an angle in the
range of about 16 degrees to about 24 degrees. The Examiner has not cited
any express disclosure in Cheng of actuator rotation angles needed to move
rings from a closed to an open position. Final Act. 8; Appeal Br. 17. The
Examiner’s finding that Cheng’s actuator is capable of meeting the claimed
rotation range (Final Act. 2) is unsupported by any record evidence. The
Examiner must have a reasonable basis for finding that a prior art device is
capable of meeting a functional limitation, e.g., by showing that the prior art
has structure similar to that claimed. The Examiner has not established that
Cheng has sufficient structure to make the actuator capable of opening the
rings completely upon moving through the claimed range in order to shift
the burden to Appellants to show that Cheng is not capable of doing so.
The Examiner’s findings appear to be directed to the embodiment of
Figures 16—17A of Cheng, which discloses an actuator as element 615. See
Cheng || 64—65, Figs 16, 17A; Final Act. 8. This embodiment does not
show rings 649 being opened by the rotation of actuator lever 639.
Figures 11A and 21 show a lever rotated to about 45° with rings 249
shown open, but these perspective views relate to other embodiments, and
the written description of these embodiments does not describe any of the
angles of rotation that are used to open the rings completely. Even if the
perspective drawings were clearer, they cannot be relied on to show precise
angular displacements of the actuator, because they are not described in the
specification as being drawn to scale, and the written description does not
describe the degree of actuator rotation that is required to open the rings.
4
Appeal 2015-002517
Application 12/843,437
Although Cheng teaches generally that rotation of an actuating lever
39, 439, 639 causes rings to open on the binder, it is not clear what would be
an optimum or workable range of actuator angles in this context or in the
context of binders generally. Configuring a binder to open rings completely
upon the rotation of an actuator through a smaller angle of about 16 to about
24 degrees, as claimed, may require more force to be exerted, which may be
unsuitable for some applications. In the context of Cheng, a smaller rotation
range may not permit locking bars to disengage sufficiently to allow the
rings to open. See Cheng || 61—62. We are not persuaded that it would
have been obvious to arrive at the claimed range based on the disclosure of
Cheng. Thus, we do not sustain the rejection of claims 11—15.
Claims 1—10 as unpatentable over Cheng
Claims 1—7
The Examiner found that Cheng discloses a ring binder, as recited in
claim 1, with a pivotal actuator (lever 615) and a pair of arms 549, 551 that
include contact surfaces that engage hinge plates to open and close rings 649
wherein the first contact surface of lower arm 551 is spaced farther from the
pivot axis of actuator 615 than the second contact surface of upper arm 549,
as shown in Figure 14. Final Act. 9—11. The Examiner reasoned that the
very tip of lower arm 551 and the front underside of upper arm 549 must be
the contact surfaces, and Figure 14 of Cheng teaches this feature because the
tip of lower arm 551 is spaced farther from the pivot axis than the front
underside of upper arm 549. Id. at 3. The Examiner also found that Cheng’s
drawings are not drawn to scale, and Cheng does not disclose the size of the
upper and lower arms, but the Examiner found that Figure 14 can be relied
on for what it discloses, and Figure 14 shows this spacing. Ans. 9—10.
5
Appeal 2015-002517
Application 12/843,437
The Examiner’s findings are not supported by a preponderance of
evidence. The Examiner’s finding that Cheng implicitly discloses that parts
of upper and lower arms 549, 551 are contact surfaces does not explain why
the distal most portions are the contact surfaces. Appeal Br. 8—10. Even if
Cheng disclosed contact surfaces as the Examiner found, Figure 14 does not
show the tip of lower arm 551 spaced any further from the pivot than the tip
of upper arm 549. Figure 14 is a perspective view with the tip of upper arm
549 and distance to hinge plate 417 obscured by wire line 541. Reply Br. 4.
Thus, it is not clear that the tip of lower arm 551 is spaced further from the
pivot than the tip of upper arm 549 in Figure 14. Figure 16 is an exploded
perspective view showing arms 549, 551 with similar spacing, but there is
no disclosure of dimensions in the Specification. Further, as the Examiner
admits, there is no indication that the figures are drawn to scale. See Ans. 9.
Thus, we do not sustain the rejection of claims 1—7.
Claims 8—10
The Examiner found that Cheng discloses a binder with the lower arm
551 of actuator 615 being spaced at least about 6 mm away from the pivot
axis, as recited in independent claim 8. Final Act. 12—13. The Examiner
reasoned that Cheng’s binder is designed to accommodate 11” x 14” paper
so that dimension would result in the claimed spacing of the contact surface.
Id. at 4. The Examiner measured the distances of the contact surfaces of the
upper and lower arms to be 14 mm and 12 mm. Ans. 10. Alternatively, the
Examiner determined that even if Cheng does not teach the claimed spacing
of 6 mm, a change in size from the spacing disclosed in Cheng is generally
recognized as being within the level of ordinary skill and therefore obvious.
Final Act. 13.
6
Appeal 2015-002517
Application 12/843,437
Appellants argue that Figure 14 of Cheng cannot be relied on to show
precise dimensions where the drawings are not disclosed as being drawn to
scale, and there is no disclosure in Cheng of any spacing. Appeal Br. 15.
Appellants argue that the Examiner’s measurements of Figure 14 cannot
support the rejection of claim 8. Reply Br. 6. Appellants also argue that the
obviousness of a change in size does not account for the fact that Appellant’s
device performs differently and the Examiner’s determination amounts to an
improper per se rule of unpatentability. Appeal Br. 15—16. We agree, for
the reasons articulated by Appellants.
Thus, we do not sustain the rejection of claims 8—10.
Claims 1—11 for obviousness-type double patenting
Appellants acknowledge the double patenting rejections of claims 1—
11 (Appeal Br. 3), but do not present arguments traversing those rejections
(id. at 3—20). Instead, Appellants request that the prior art rejections be
reversed and the application be remanded to resolve the double patenting
rejections. Id. at 20. In the absence of arguments traversing the double
patenting rejections, we summarily sustain the double patenting rejections of
claims 1—11.
DECISION
We reverse the prior art rejections of claims 1—15.
We affirm the double patenting rejections of claims 1—11.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
7