Ex Parte Watanabe et al

Patent Trial and Appeal Board

Jan 13, 2017

12908160 (P.T.A.B. Jan. 13, 2017)

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.
12/908,160 10/20/2010 Hidekazu WATANABE MNL-2018-2596 3366
23117 7590 01/18/2017
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
LUONG, VINH
ART UNIT PAPER NUMBER
3656
NOTIFICATION DATE DELIVERY MODE
01/18/2017 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):
PTOMAIL@nixonvan.com
pair_nixon @ firsttofile. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HIDEKAZU WATANABE and TAKEHIRO SAITO
Appeal 2015-002240
Application 12/908,160
Technology Center 3600
Before LYNNE H. BROWNE, LISA M. GUIJT, and
GORDON D. KINDER, Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Hidekazu Watanabe and Takehiro Saito (Appellants) appeal under 35
U.S.C. § 134 from the rejection of claims 1—6 and 19—13.1 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Claims 7 and 8 are withdrawn from consideration. See Final Act. 1.
Appeal 2015-002240
Application 12/908,160
CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
1. A tamper-proof molded article comprising:
a base that includes a first interference portion, which is
formed integrally and continuously with the rest of the base; and
a cover that is installed to the base and includes:
a press-fitting portion that is press-fitted into a
corresponding portion of the base in a press-fitting direction to
place the press-fitting portion into a press-fitted state; and
a second interference portion that is placed at a location,
which is spaced from the first interference portion in the press-
fitted state of the press-fitting portion, wherein the press-fitting
portion and the second interference portion are formed integrally
and continuously with the rest of the cover, and the first
interference portion and the second interference portion are
configured such that the first interference portion and the second
interference portion contact with each other to form a
disassembly indication mark, which indicates disassembling
between the cover and the base, on at least one of the first
interference portion and the second interference portion when the
cover is slid over the base in a releasing direction, which is
opposite from the press-fitting direction, to release the press­
fitting portion from the corresponding portion of the base and
thereby to disassemble between the cover and the base.
The prior art relied upon by the Examiner in rejecting the claims on
matter:
REFERENCES
appeal is:
Saito
JP ’468
JP 2009166804 A
JP 3114468U
July 30, 2009
Sept. 2,2011
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Appeal 2015-002240
Application 12/908,160
REJECTIONS
I. Claims 1—6 and 9-13 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description
requirement.
II. Claims 1—6 and 9-13 stand rejected under 35 U.S.C. § 112,
second paragraph, as indefinite.
III. Claims 1—4, 6, 12, and 13 stand rejected under 35 U.S.C. §
102(b) as anticipated by JP ’468).
IV. Claims 1—6, 12, and 13 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over JP ’468.
V. Claims 9—11 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over JP ’468 and Saito.
DISCUSSION
Rejection I
Claims 1 and 9 are independent claims.2 Claims 2—6 and 10-13 stand
rejected based on their dependency from either claim 1 or claim 9. See Final
Act. 2-4. Further, Appellants argue claims 1 and 9 together. See 14—15.
We select claim 1 as the illustrative claim, and claims 2—6 and 9-13 stand or
fall with claim 1.
The Examiner determines that “the limitations ‘a first interference
portion, which is formed integrally and continuously with the rest of the
base’ . . . and ‘the press fitting portion and the second interference portion
2 Claim 9 was rewritten in independent form in the Amendment filed April
4, 2014.
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Appeal 2015-002240
Application 12/908,160
are formed integrally and continuously with the rest of the cover”’ as
required by independent claim 1 is not supported by the Specification as
filed. Final Act. 3 (emphasis omitted).
Appellants contend that there is adequate written description support
for this first contested limitation because:
• Fig. 5 shows the first interference portion (e.g., base
projection 21) and the base (e.g., support member 10) as one
piece;
• Page 5, lines 10-11 of the [Specification explains that the
base projection 21 projects from the side plate 16 (which is
part of the support member 10 as explicitly stated on page 4,
lines 1—3);
• Page 4, line 1 of the [Specification explains that the support
member 10 is made of resin; and
• Page 9, lines 8—10 of the [Specification explain that support
member 10 is molded.
Appeal Br. 14—15.
Responding to Appellants’ arguments, the Examiner explains that:
FIG. 5 does not show the rest of the base 10. More importantly,
the Specification at p. 5, 11. 10-11; p. 4, 1. 1; and p. 9, 11. 8—10,
does not describe the rest of the base. To the extent that the
Specification discloses that the support member 10 is molded,
the Examiner respectfully submits that the disclosed molding
that broadly includes insertion molding, injection molding, co­
molding, etc. does not inherently form the support as one-piece
article. This fact is well known as evidenced by the prior art
classified in, e.g., Class 264 (PLASTIC AND NONMETALLIC
ARTICLE SHAPING OR TREATING: PROCESSES). Since
the rest of the base can be formed as multiple pieces and attached
together, hence, the first interference portion is not necessary or
inherently continuous with the rest of the base. In re Robertson,
169 F.3d 743, 745[] and MPEP § 2163.
Ans. 8 (emphasis omitted).
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Appeal 2015-002240
Application 12/908,160
Figure 5 shows a partial side view of interference portion 21. Thus,
Figure 5 does not show that interference portion 21 is formed integrally and
continuously with the rest of the base as required by claim 1. Further, the
portions of the Specification relied upon by Appellants do not provide
adequate support for this limitation because an element (e.g. interference
portion 21) can project from another element (e.g. support member 10)
without being integrally and continuously formed with that element, an
element (e.g. support member 10) can be made of resin without being
integrally and continuously formed with another element (e.g. interference
portion 21), and an element (e.g. support member 10) can be molded without
being integrally and continuously formed with another element (e.g.
interference portion 21). Thus, although, we agree with Appellants that
“classification by the USPTO is [not] determinative of whether there is
adequate written description” (Reply Br. 8), the Examiner’s other
determinations are correct. Appellants fail to show where the Specification
provides written descriptive support for the first limitation at issue.
Having determined that the Specification lacks written descriptive
support for the first contested limitation, we need not determine if the
Specification provides support for the second contested limitation.
We sustain the Examiner’s decision rejecting claim 1, and claims 2—6
and 9—13, which fall therewith.
Rejection II
The Examiner determines that “[t]he recitations ‘a first interference
portion, which is formed integrally and continuously with the rest of the
base’ ... in claim 1 are not ‘precise, clear, correct, and unambiguous.’”
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Application 12/908,160
Final Act. 4 (emphasis omitted). In support of this determination, the
Examiner explains that:
the [Specification describes that in the embodiment of FIGS. 1—
8, the support member 10 includes a bottom plate 12, a top plate
15 and two side plates 16, 17 (Spec. p. 4, 11. 1—6); and the base
projection 21 serves as the first interference portion 21 (Spec. p.
4, 11. 16—17). Contrary to the claims, FIGS. 1—8 show that the
first interference portion 21 is not continuous with, e.g., the top
plate 15 as seen, e.g., in FIG. 1 and the side plate 17 as seen, e.g.,
in FIG. 3.
Id. In addition, the Examiner also determines that “[t]he recitations ‘the
press fitting portion and the second interference portion are formed
integrally and continuously with the rest of the cover'' ... in claim 1 likewise
are not “precise, clear, correct, and unambiguous.’” Id. at 5. In support of
this determination, the Examiner explains that “contrary to the claims, e.g.,
FIG. 3 shows that the press fitting portion 34 and the second interference
portion 32 are not continuous with the second wall 42 of the cover 30 (Spec,
p. 4,1. 18—p. 5, 1.3).” Id.
Appellants argue that “the Office Acton conflates written description
(§ 112, first paragraph) with clarity (§ 112, second paragraph). Written
description and clarity are distinct issues and as set forth [in] the Office
Action, the rejection is not about clarity of the claims.” Appeal Br. 16.
The Examiner does not respond to these arguments, rather the
Examiner makes a new determination that:
the prosecution history shows that Appellants] amended claims
1 and 9 on January 10, 2014 and used the new terms "the rest of
the base” and “the rest of the cover” that do not appear in the
[Specification. However, Appellants] did not make appropriate
amendment of the [Specification so as to have clear support or
antecedent basis in the [Specification for these new terms.
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Application 12/908,160
Ans. 10.
Responding to this new determination, Appellants contend that “[t]he
Examiner’s Answer continues to conflate written description with clarity.
Indeed, the Examiner’s Answer makes abundantly clear that no prima facie
rejection for indefiniteness has been presented because all of the supporting
authority relied upon is based upon the rules and case law for the
[Specification, not the claims.” Reply Br. 8—9.
Appellants are correct. As noted in MPEP § 2173.03, cited by the
Examiner in support of this new determination, “[i]f the [Specification does
not provide the needed support or antecedent basis for the claim terms, the
[Specification should be objected to under 37 CFR 1.75(d)(1),” not rejected
under 35 U.S.C. § 112, second paragraph.
We do not sustain the Examiner’s decision rejecting independent
claim 1, and claims 2—6, 12, and 13, which depend therefrom. For the same
reasons, we do not sustain the Examiner’s decision rejecting independent
claim 9,3 and claims 10 and 11, which depend therefrom.
Rejection III
The Examiner finds that JP ’468 discloses each and every limitation of
independent claim 1. See Final Act. 5—7. In particular, the Examiner finds
that JP ’468 discloses “a disassembly indication mark (i.e., cutting marks),
which indicates disassembling between the cover 6 and the base 3, on at
least one of the first interference portion 4 and the second interference
3 See note 1.
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Application 12/908,160
portion 8 when the cover 6 is slid over the base 3 in a releasing direction.”
Id. at 5—6 (citing Figs. 3 and 5) (emphasis omitted).
Noting that in JP ’468 “cutting marks are formed in the weak portion
10 when the cutting portion 6 A is rotated to twist off the cutting portion 6A
and remove the cutting portion 6A from the needle cap 6 at the weak portion
10,” Appellants argue that “the cutting marks in JP ’468 are not formed on
the alleged first interference portion (engaging portion 4) or the alleged
second interference portion (groove 8).” Appeal Br. 9—10.
Appellants are correct. The fact that “the second interference portion
8 is integrally formed with the fragile site 10,” as noted by the Examiner
(Ans. 4), does not dictate that the fragile site 10 is part of the interference
portion 8. Rather, a fair reading of JP ’468 indicates that both fragile site 10
and interference portion 8 are parts of cover 6. See JP ’468 Fig. 2. Thus, the
Examiner’s finding is in error.
For this reason, we do not sustain the Examiner’s decision rejecting
claim 1, and claims 2-4, 6, 12, and 13 which depend therefrom.
Rejections IV and V
Rejections IV and V rely upon the same erroneous finding, as
Rejection III. See Final Act. 8—11. Accordingly, we do not sustain the
Examiner’s decisions in these rejections.
DECISION
The Examiner’s rejection of claims 1—6 and 9-13 under 35 U.S.C. §
112, first paragraph is AFFIRMED.
The Examiner’s rejection of claims 1—6 and 9—13 under 35 U.S.C.
§ 112, second paragraph is REVERSED.
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Application 12/908,160
The Examiner’s rejection of claims 1—4, 6, 12, and 13 under 35 U.S.C.
§ 102(b) as anticipated by JP ’468 is REVERSED.
The Examiner’s rejection of claims 1—6, 12, and 13 under 35 U.S.C. §
103(a) as unpatentable over JP ’468 is REVERSED.
The Examiner’s rejection of claims 9-11 under 35 U.S.C. § 103(a) as
unpatentable over JP’468 and Saito is REVERSED.
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)(l)(iv).
AFFIRMED
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