Ex Parte Wormwood

Patent Trial and Appeal Board

Jun 17, 2016

12925719 (P.T.A.B. Jun. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/925,719 10/28/2010 Alston Ray Wormwood
55353 7590 06/17/2016
NILS PETER MICKELSON
228 WA TERMAN ROAD
BUXTON, ME 04093-3718
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
09-040 3216
EXAMINER
LEWIS, JUSTIN V
ART UNIT PAPER NUMBER
3725
MAILDATE DELIVERY MODE
06/17/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALSTON RAY WORMWOOD
Appeal2015-000447
Application 12/925,719
Technology Center 3700
Before LYNNE H. BROWNE, THOMAS F. SMEGAL, and
PAUL J. KORNICZKY, Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the rejection of claims
15-20 under 35 U.S.C. § 103(a) as unpatentable over Madle (US 2,079,865,
iss. May 11, 1937) and Gross (US 3,349,597, iss. Oct. 31, 1967). We have
jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
Appeal2015-000447
Application 12/925,719
CLAIMED SUBJECT MATTER
Claim 15, reproduced below, is illustrative of the claimed subject
matter:
15. An adapter clip for use in a ring binder or the like, adapted
to hold without movement and retain in place folded sheet
music within said ring binder without modification to said
music, comprising a wireform of drawn round wire, said
wireform having:
(a) a straight central portion of predetermined length, said
straight predetermined length being equal to or greater than the
height of said sheet music;
(b) a substantially U-shaped return bend at each end of
said predetermined straight portion, each of said two bends
being on the same side and in the same plane as one another,
and each said bend having a predetermined bend radius;
( c) each said substantially U-shaped bend returning
inwardly as a second straight portion of second predetermined
length;
( d) each said second straight portion ending in a closed
tangential ring coplanar with said substantially U-shaped bends,
said closed rings looping away from said straight central
portion;
( e) each of said two coplanar closed tangential rings
having a diameter selected to fit freely onto the outermost two
rings of said ring binder;
(f) each of said second predetermined lengths of said
second straight portions selected to place said closed tangential
coplanar rings equidistant with said two outermost rings of said
ring binder, such that said wireform may be mounted on said
two outermost rings of said binder and swung freely thereabout;
(g) each said substantially U-shaped bend having a bend
angle of greater than 180 degrees, said greater bend angle
selected to place each said closed tangential coplanar ring in
forcible residual compressive contact against said straight
central portion of said wireform, to provide thereby a pair of
singular pinch points there between, whereby sheets of paper
inserted through each of said two singular pinch points are held
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Appeal2015-000447
Application 12/925,719
without movement and retained in position by said pinch
points.
DISCUSSION
The Examiner finds that Madle discloses all of the limitations of
independent claim 15, except for the "adapter clip comprising a wireform of
drawn round wire." See Final Act 5-9. The Examiner additionally finds
that "Gross teaches the concept of providing a wireform of drawn round
wire." Id. at 8 (citations omitted). Based on these findings, the Examiner
determines that it would have been obvious "to fabricate the Madle parts
using Gross drawn round beryllium wire in order to yield a light, high
temperature, non-ferrous resultant clip." Id. at 9.
Appellant argues that "[t]he invention is not two separate wireforms
slideably engaged within a disjointed, discontinuous hinge tube." Appeal
Br. 12 (citation omitted). Appellant further argues that, in contrast to the
claimed invention where the "distance between the two closed rings 30 is
selected to match the distance between end rings in the binder," Madle
discloses that the "closed rings (30) are able to slide." Id. Appellant
explains that "[s]liding is necessary in Madle to load his menu card." Id.
Thus, we understand Appellant to argue that there is no reasonable
expectation that the proposed modification would not result in a device
having "a straight central portion of predetermined length, said straight
predetermined length being equal to or greater than the height of said sheet
music," as required by claim 15, and that the proposed modification would
render Madle unsatisfactory for its intended purpose.
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Appeal2015-000447
Application 12/925,719
Madle states:
The device comprises a pair of cover leaves (1) and (2)
each of which is provided along one edge with a recess of tubular
hinge formations (3) and ( 4), respectively, the hinge formation
(3) of the cover leaf (1) being alternated or staggered with
relation to the formation ( 4) of the cover leaf (2), said formation
when disposed in the position shown in Figs. 1, 2 and 4, being
axially aligned to form a continuous tube adapted to receive a
pivot member or members.
In the instance illustrated, the hinge tube is arranged to
receive the hinge pins ( 5), each of which, preferably, is of a
length substantially equal to half the length of said tube and each
of which is equipped at one end with a hook formation ( 6) which
is contracted at its mouth so that the free end portion of the hook
cooperates with the opposed portion of the body of the hinge pin
to clamp a wall portion of a hinge formation (3) or (4), as the
case may be, between the body of the pin and said hook for
yieldingly holding said pin against longitudinal displacement.
The said hook is resilient, so that it may also receive one or more
sheets (7) of paper or other material which it clamps against the
opposed hinge formation. Preferably, the said hook formation
terminates in a loop (8) for easy engagement for purposes of
moving the hinge pin outwardly at the position shown in dotted
lines in Fig. 1 for disengaging the sheet (7) and permitting the
insertion of a similar sheet or sheets.
Madle, p.1, col. 1, 11. 22-53. Modification ofMadle in the manner proposed
by the Examiner would result in a device wherein the hinge pins 5, the hook
formations 6, and the hinge formations 3 and 4 are formed of beryllium
wire; however, none of these features would constitute "a straight central
portion of predetermined length, said straight predetermined length being
equal to or greater than the height of said sheet music" as required by claim
15. Alternatively, if the Examiner's proposed modification is understood to
result in these features being formed as a single wireform; such modification
would render Madle unsatisfactory for its intended purpose, as hook
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Appeal2015-000447
Application 12/925,719
formation 6 would no longer be able to move outwardly in order to engage
or disengage sheet 7. In relying on a combination of prior art references, the
examiner's proposed modification cannot render a prior art reference
unsatisfactory for its intended purpose. In re Gordon, 733 F .2d 900, 902
(Fed. Cir. 1984). Accordingly, Appellant's arguments are persuasive.
For these reasons, we do not sustain the Examiner's decision rejecting
independent claims 15, and claims 16-20, which depend therefrom.
DECISION
The Examiner's rejection of claims 15-20 is REVERSED.
REVERSED
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