Ex Parte Wong

Board of Patent Appeals and Interferences

Mar 29, 2010

10849546 (B.P.A.I. Mar. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte YIU WING WONG
____________________

Appeal 2009-006399
Application 10/849,546
Technology Center 3700
____________________

Decided: March 30, 2010
____________________

Before STEVEN D.A. McCARTHY, MICHAEL W. O’NEILL and
STEFAN STAICOVICI, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL

The Appellant’s claims being twice-rejected, the Appellant appeals 1
under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 2, 4 2
and 5 under 35 U.S.C. § 103(a) as being unpatentable over Tung (US 3
6,045,286, issued Apr. 4, 2000) and Winternight (US 483,089, issued Sep. 4
20, 1892); and rejecting claim 3 under § 103(a) as being unpatentable over5
Appeal 2009-006399
Application 10/849,546

2
Tung, Winternight and Williams (US 6,142,697, issued Nov. 7, 2000). We 1
have jurisdiction under 35 U.S.C. § 6(b). 2
We REVERSE. 3
Claim 2 is the sole independent claim on appeal: 4
2. In a ring binder mechanism comprising a 5
housing containing a pair of hinged plates and a 6
plurality of rings, each ring comprising two parts, 7
each part being connected to a respective one of 8
said plates so that the rings can be opened and 9
closed as the plates pivot within the housing, the 10
improvement wherein 11
one of the parts is substantially arcuate, 12
terminating at a first tip and the other of said parts 13
has a straight segment terminating at an unbent, 14
straight second tip, so that as the rings are closed, 15
the tips approach one another in a direction 16
diagonal to the straight segment, 17
one of said tips having a protrusion and the 18
other of said tips having a complementary recess 19
for receiving the protrusion when the rings are 20
closed wherein the tip with the complementary 21
recess also has a lateral window intersecting the 22
recess from only one side, the window being 23
shaped and oriented to permit the protrusion to 24
enter the recess from a substantially diagonal 25
direction and seat smoothly in the recess without 26
interference. 27
28
The Appellant contends that neither Tung nor Winternight discloses a 29
ring binder mechanism including a ring part with a tip having a protrusion. 30
(Br. 6 and 8). The Examiner agrees that Tung fails to disclose a ring binder 31
with ring parts including tips having protrusions. (Ans. 4). On the other 32
Appeal 2009-006399
Application 10/849,546

3
hand, the Examiner finds that points at the ends of filling-wires D disclosed 1
by Winternight meet this limitation. (Ans. 5). 2
A claim under examination is given its broadest reasonable 3
interpretation consistent with the underlying specification. In re Am. Acad. 4
of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). In the absence of 5
an express definition of a claim term in the specification or a clear 6
disclaimer of scope, the claim term is interpreted as broadly as the ordinary 7
usage of the term by one of ordinary skill in the art would permit. In re 8
ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007); In re 9
Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). 10
The Appellant does not point to any definition in the Specification 11
which might limit the scope of the term “protrusion.” Nevertheless, the 12
ordinary usage of the term “protrusion” is limited to “something that 13
protrudes,” WEBSTER’S THIRD NEW INT’L DICTIONARY 1826 (G&C Merriam 14
Co. 1971)(“protrusion,” def. 2), and the ordinary usage of the term “to 15
protrude” is limited to “to jut out beyond the surrounding surface or 16
context.” Id. (“protrude,” vi). This ordinary usage is consistent with the 17
usage of the term in the Specification, where the term is used to refer to a 18
short part 38 of a diameter substantially less than that of a ring cross-section 19
20 (see Spec. 3, ¶ 0011), depicted in Figures 2-5 of the Appellant’s drawing 20
as jutting outwardly beyond the surrounding axial surface portion at the tip 21
of the ring part. 22
Winternight discloses a paper-filling device including filling-wires D 23
and puncturing tubes H. (Winternight 1, l. 89 - 2, l. 16). Figure 2 of 24
Winternight indicates that the filling-wires D and the puncturing tubes H 25
cooperate to form rings or loops. Winternight describes the filling-wires D 26
Appeal 2009-006399
Application 10/849,546

4
as having points with thin edges. (Winternight 2, ll. 43-50). Figures 2, 4 1
and 5 of Winternight depict the free ends of the filling-wires D as having 2
skewed bevels or facets defining thin edges facing the corresponding 3
puncturing tubes H. 4
The points of the filling-wires D are not “protrusions” within the 5
ordinary usage of the term. The two bevels or facets defining the point taper 6
planarily inwardly from the contour of the unfaceted portion of a filling-wire 7
D, whereas the unfaceted portion of the point merely continues the contour 8
of the unfaceted portion to the end of the filling-wire. The Examiner has not 9
identified surfaces at tips of the filling-wires D which surround the point and 10
beyond which the points may jut. 11
The Examiner identifies no other structure disclosed by Winternight 12
that might correspond to the protrusions recited in independent claim 2. 13
Neither does the Examiner articulate any reasoning which might explain 14
why one of ordinary skill in the art might have had reason to modify Tung’s 15
ring parts or Winternight’s filling-wires D to include protrusions. We do not 16
sustain the rejection of independent claim 2, or of its defpendent claims 3-5, 17
under § 103(a) as being unpatentable over Tung and Winternight. 18
19
DECISION 20
We REVERSE the Examiner’s decision rejecting claims 2-5. 21
22
REVERSED 23
24
25
26
Appeal 2009-006399
Application 10/849,546

5
mls 1
2
3
SHOEMAKER AND MATTARE, LTD. 4
10 POST OFFICE ROAD – SUITE 100 5
SILVER SPRING, MD 20910 6