12254486 (P.T.A.B. Oct. 16, 2014)

Ex Parte Torikai et al

Patent Trial and Appeal BoardOct 16, 2014

12254486 (P.T.A.B. Oct. 16, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte HIDEAKI TORIKAI, MASAYASU SATO, TOMONORI KOYAMA, and KOICHIRO OKAMURA ________________ Appeal 2012-006674 Application 12/254,486 Technology Center 3700 ________________ Before JENNIFER D. BAHR, STEFAN STAICOVICI, and LISA M. GUIJT, Administrative Patent Judges. GUIJT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is a decision on appeal, under 35 U.S.C. § 134(a), from a final rejection of claims 1–3, 6, 9, 13–15, 17–19, 21, and 22. Appeal Br. 2. Claims 4, 7, 8, 10–12, and 16 have been cancelled. Id. Claims 5, 20, 23, and 24 have been withdrawn. Id. We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing in accordance with 37 C.F.R. § 41.47 was held on October 2, 2014. We REVERSE. Appeal 2012-006674 Application 12/254,486 2 THE CLAIMED SUBJECT MATTER The disclosed subject matter “relates to a plate-shaped member holding system, a plate-shape member packing device, and a method for holding a plate-shaped member.” Spec. 1:7–10. Independent claim 1, reproduced below, is illustrative of the claims on appeal. 1. A plate-shaped member holding system, comprising: a plate-shaped member; a holder including a pair of retainers configured to clamp the plate-shaped member from both sides of a front side and a rear side thereof and a pair of supports configured to support the retainers, the pair of supports having outer side portions; and a fixing member comprising an engagement recess engageable with the supports, the engagement recess having inner contacting surfaces; the pair of supports being configured to be pressed in directions to be brought closer to each other in a course of being put into the engagement recess, whereby the pair of retainers are configured to hold the plate-shaped member from both sides of the front and rear sides; and wherein the front side and the rear side of the plate- shaped member have peripheral edges and the holder, including the retainers, does not touch the peripheral edges of the front and rear sides of the plate-shaped member when the retainers clamp the plate-shaped member. THE REJECTIONS ON APPEAL Claims 1, 3, 9, and 17 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Richardson (US 3,044,615; iss. July 17, 1962) and Clegg (US 5,762,194; iss. June 9, 1998). Appeal 2012-006674 Application 12/254,486 3 Claims 2, 6, 9, 13, 14, and 19 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Richardson, Clegg, and Warwick (US 3,043,488; iss. July 10, 1962). Claims 15 and 18 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Richardson, Clegg, and Elzey (US 5,094,903; iss. Mar. 10, 1992). Claims 21 and 22 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Richardson, Clegg, Elzey, and Arnold (US 3,451,169; iss. June 24, 1969). ANALYSIS Claims 1, 3, 9, and 17 — Unpatentable over Richardson and Clegg With respect to independent claims 1 and 17, the Examiner finds that “Richardson discloses all claimed structural limitations except for the front side and the rear side of the plate-shaped member have [sic] peripheral edges, and the holder, including the retainer, do [sic] not touch the peripheral edges of the front and rear side of the plate-shaped member when the retainer clamps the plate shaped member.” Answer 5. Specifically, the Examiner finds that Figure 6 of Richardson shows a holder including a pair of retainers configured to clamp the plate-shaped member from both front and rear sides, and that “Clegg discloses a holder (50)” including “retainers (tooth-like retainers) [that] do not touch the peripheral edges of the front and rear sides of the plate shaped member when the retainers clamp the plate- shaped member.” Id. at 5–6. The Examiner explains that, in modifying Richardson in view of Clegg, Appeal 2012-006674 Application 12/254,486 4 [the] [E]xaminer did not “add” the teeth of Clegg to the container [in Richardson], [the] [E]xaminer merely repositioned the plate shape [sic] member of Richardson by lowering the plate shape [sic] member (16) of Richardson in between the retainers and the upper surface of the bottom holder. . . . [The] [E]xaminer is taking the position to re-adjust the position of the windshield within the holder with similar position as taught by Clegg to prevent any part of the holder and the retainers touching the corner edge of the windshield glass which eliminates the possibility of damaging the edge of the highly stress concentrated portion of the plate shape member. Id. at 12. Appellants correctly point out that Figure 6 of Richardson depicts a “pliable sling or stirrup 46,” which “comprises a length of spring wire formed in a series of loops . . . to form a skeleton channel,” and when in use, the sling is “fitted over the edge of the windshield” and “tensioned [so] as to grip the windshield frictionally between the wall of the channel shape.” Reply Br. 6, citing Richardson 3:3–24. Appellants argue, inter alia, that “[t]he [sling] walls of Richardson are smooth and straight and will always touch the peripheral edges of the glass because the [sling] wraps entirely around the end of the windshield.” Id. at 8. Appellants explain that “there is no way to lower the windshield in Richardson so that the perimeter edges do not touch the sling” and “unless the teeth [disclosed in Clegg] are added to Richardson . . . there is no way disclosed or suggested by either reference to lower the glass plate so that the edges are not touched by Richardson’s sling.” Id. Appellants further argue that “there would be no reason for a person of ordinary skill in the art to modify the sling of Richardson to add Appeal 2012-006674 Application 12/254,486 5 the teeth of Clegg because the wire loop form would be less able to carry out its dual functions of support and frictional gripping.” Id. at 14. The Examiner bears the initial burden of presenting a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Circ. 1992). The key to supporting any prima facie conclusion of obviousness under 35 U.S.C. § 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. See In re Kahn, 441 F. 3d 977, 988 (Fed. Cir. 2006) cited with approval in KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007). We agree with Appellants that the Examiner fails to provide a clear articulation of the reasons why the claimed invention would have been obvious over the combined teachings of Richardson and Clegg. As stated above by Appellants, with respect to Richardson, the Examiner does not explain adequately how lowering the windshield between the retainers and the upper surface of the bottom holder would cause the sling 46 not to touch the peripheral edges of the front and rear sides of the plate-shaped member 16, as recited in claims 1 and 17, even in view of the description of the clip provided by Clegg. Accordingly, we do not sustain the Examiner’s rejection of claims 1, 3, 9, and 17 under 35 U.S.C. § 103(a) as being unpatentable over Richardson and Clegg. Claims 2, 6, 9, 13, 14, and 19 — Unpatentable over Richardson, Clegg, and Warwick Claims 2, 6, 9, 13, 14, and 19 ultimately depend from claims 1 or 17. Warick does not cure the deficiencies in the rejection of claims 1 and 17 discussed supra. Accordingly, we do not sustain the Examiner’s rejection of Appeal 2012-006674 Application 12/254,486 6 claims 2, 6, 9, 13, 14, and 19 under 35 U.S.C. § 103(a) as being unpatentable over Richardson, Clegg, and Warwick. Claims 15 and 18 — Unpatentable over Richardson, Clegg, and Elzey Claims 15 and 18 depend from claims 1 and 17, respectively. Elzey does not cure the deficiencies in the rejection of claims 1 and 17 discussed supra. Accordingly, we do not sustain the Examiner’s rejection of claims 15 and 18 under 35 U.S.C. § 103(a) as being unpatentable over Richardson, Clegg, and Elzey. Claims 21 and 22 — Unpatentable over Richardson, Clegg, Elzey, and Arnold Claims 21 and 22 ultimately depend from claims 1 and 17, respectively. Neither Elzey nor Arnold cures the deficiencies in the rejection of claims 1 and 17 discussed supra. Accordingly, we do not sustain the Examiner’s rejection of claims 21 and 22 under 35 U.S.C. § 103(a) as being unpatentable over Richardson, Clegg, Elzey, and Arnold. DECISION The Examiner’s decision to reject claims 1, 3, 9, and 17 under 35 U.S.C. § 103(a) as being unpatentable over Richardson and Clegg is reversed. The Examiner’s decision to reject claims 2, 6, 9, 13, 14, and 19 under 35 U.S.C. § 103(a) as being unpatentable over Richardson, Clegg, and Warwick is reversed. Appeal 2012-006674 Application 12/254,486 7 The Examiner’s decision to reject claims 15 and 18 under 35 U.S.C. § 103(a) as being unpatentable over Richardson, Clegg, and Elzey is reversed. The Examiner’s decision to reject claims 21 and 22 under 35 U.S.C. § 103(a) as being unpatentable over Richardson, Clegg, Elzey, and Arnold is reversed. REVERSED llw