Leto R&D CorporationDownload PDFPatent Trials and Appeals BoardApr 28, 202014792767 - (D) (P.T.A.B. Apr. 28, 2020) Copy Citation 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. 14/792,767 07/07/2015 Man Soon Jeong 1090.0001-1US 5520 103651 7590 04/28/2020 Kim IP Law Group PLLC 129 W. Evesham Road Voorhees, NJ 08043 EXAMINER SCHREIBER, CHRISTINA MARIE ART UNIT PAPER NUMBER 2837 NOTIFICATION DATE DELIVERY MODE 04/28/2020 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): uspto@dockettrak.com usptodocketing@kimiplawgroup.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MAN SOON JEONG Appeal 2019-003864 Application 14/792,767 Technology Center 2800 Before JAMES C. HOUSEL, MICHELLE N. ANKENBRAND, and BRIAN D. RANGE, Administrative Patent Judges. RANGE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–6, 8, 12, 14, and 15. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Leto R&D Corporation. Appeal Br. 2. Appeal 2019-003864 Application 14/792,767 2 CLAIMED SUBJECT MATTER2 Appellant describes the invention as relating to a ligature for securing a reed to a mouthpiece of a wind instrument such as a saxophone or clarinet. Spec. ¶ 2. In particular, the invention relates to a ligature that can secure a reed to mouthpieces of various sizes while still allowing for effective vibrations. Id. ¶ 4. The Specification and its figures indicate, for example, that the ligature’s cord 16 may be engaged to a distal end of adjuster 14. Spec. Figs. 5, 8, ¶¶ 34, 45. Adjuster 14 can be adjusted to control tension in the cord. Id. at 8. Claims 1 and 8 are the independent claims on appeal. Claim 1, reproduced below with emphases added to key recitations, is illustrative: 1. A ligature for a wind instrument comprising: a cord harness having a plurality of apertures extending transverse to a longitudinal axis of the cord harness; an adjuster connected to and adjustably extendable relative to the cord harness; and a cord passing through the plurality of apertures in a spiral manner and engaging a distal end of the adjuster. Appeal Br. i (Claims App.) (emphases added). Claim 8 similarly recites, among other things, “a cord . . . engaging the adjuster.” Id. at ii. 2 In this Decision, we refer to the Final Office Action dated December 29, 2017 (“Final Act.”), the Appeal Brief filed October 22, 2018 (“Appeal Br.”), the Examiner’s Answer dated February 21, 2019 (“Ans.”), and the Reply Brief filed April 19, 2019 (“Reply Br.”). Appeal 2019-003864 Application 14/792,767 3 REFERENCES The Examiner relies upon the prior art below in rejecting the claims on appeal: Name Lorenzini Silverstein et al. (“Silverstein”) Reference US 4,185,535 US 5,648,623 Date Jan. 29, 1980 July 15, 1997 REJECTIONS The Examiner maintains (Ans. 3) the following rejections on appeal: A. Claims 1–3 and 5 under 35 U.S.C. § 102 as anticipated by Silverstein. Final Act. 2. B. Claims 8, 12, 14, and 15 under 35 U.S.C. § 102 as anticipated by Lorenzini. Id. at 3. C. Claims 4 and 6 under 35 U.S.C. § 103 as obvious over Silverstein in view of “that which would have been obvious to one of ordinary skill in the art.” Id. at 4. OPINION To resolve the issues before us on appeal, we focus on the Examiner’s findings and determinations that relate to the error Appellant identifies. Rejection 1, anticipation of claims 1–3 and 5. The Examiner rejects claims 1–3 and 5 under 35 U.S.C. § 102 as anticipated by Silverstein. Final Act. 2. A reference anticipates a claim if it “disclose[s] each and every element of the claimed invention, whether it does so explicitly or inherently.” In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009) (citation Appeal 2019-003864 Application 14/792,767 4 omitted). The elements “must be arranged or combined in the same way as in the claim.” Id. (internal quotes and citation omitted). The Examiner finds that Silverstein’s bridge 13 and nut 14 correspond to claim 1’s adjuster. Final Act. 2; see Silverstein Figs. 1–3, 3:42–4:52. The Examiner finds that Silverstein also teaches “a cord (11) passing through the plurality of apertures (18) in a spiral manner and engaging a distal end of the adjuster, such that the cord is retained or secured about the distal ends.” Final Act. 2. Appellant argues that the Examiner has not adequately established that the cord of Silverstein engages Silverstein’s adjuster. Appeal Br. 4–6. Appellant’s argument persuades us of error. Silverstein’s cord is secured by puller 12. See Silverstein Fig. 2. The Silverstein cord 11 may be tightened by drawing the puller 12 up and away from the musical instrument’s mouthpiece 16. Id. 3:56–65. The Examiner does not find that cord 11 contacts bridge 13 or nut 14 (according to the Examiner, Silverstein’s elements that correspond to the “adjuster” of claim 1). The Examiner construes claim 1’s “engaging” recitation broadly by stating that the standard definition of “engage” does not require that elements necessarily touch. Ans. 4. During prosecution, the PTO construes claims based upon the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in the applicant’s specification. In re Morris, 127 F.3d 1048, 1054–55 (Fed. Cir. 1997). Here, the Examiner’s construction of “engaging” is too broad in view of Appellant’s Specification. The Specification consistently uses the word Appeal 2019-003864 Application 14/792,767 5 “engage” in the context of components mechanically contacting each other. See, e.g., Spec. ¶¶ 30 (“Each fastener 28, 30 is configured to engage the cord 16 so as to secure the cord to the cord harness.”), 33 (“recess 37 is sized and shaped to slidingly receive and engage the . . . body 34”), 34 (“the recess includes a planar surface 37A that directly engages a most distal end 42A of the . . . body 34”). The Figures illustrate that adjuster 14 includes retaining member 48 with through hole 46 that physically holds cord 16 in place. Spec. Figs. 5, 8. Taking into account this context the Specification provides, we determine that “a cord . . . engaging a distal end of the adjuster” requires physical contact between the cord and the distal end of the adjuster. Under a proper construction, the Examiner has not established that Silverstein teaches a cord “engaging a distal end of the adjuster” as claim 1 recites. We, therefore, do not sustain this rejection. Rejection 2, anticipation of claims 8, 12, 14, and 15. The Examiner rejects claims 8, 12, 14, and 15 under 35 U.S.C. § 102 as anticipated by Lorenzini. Final Act. 3. The Examiner finds that Lorenzini’s thumb screws 31 correspond to claim 8’s recited “adjuster.” Id. (citing Lorenzini). The Examiner finds that “tightening of the adjuster (31) engages the strings and draws the string sections in tension.” Id. Appellant argues that the Examiner has not adequately established that Lorenzini teaches “a cord . . . engaging the adjuster” as claim 8 recites. Appeal Br. 6–8. Appellant’s argument is persuasive of error. As explained above, the Specification’s context indicates that “engaging” requires physical contact. The Examiner does not find that Lorenzini’s string 27 (i.e., a cord in the parlance of claim 8) contacts or otherwise engages with thumb screws 31. Ans. 4–5. Rather, the Examiner’s rejection relies upon the Appeal 2019-003864 Application 14/792,767 6 broader construction of “engaging,” which we disagree with as explained above. Id. Although the Examiner finds that tightening adjuster 31 causes string 27 to engage (id. at 5), this is different from the cord engaging the adjuster as claim 8 recites because string 27 does not physically contact adjuster 31 in Lorenzini’s reed holding device. Because the Examiner has not adequately established that Lorenzini teaches “a cord . . . engaging the adjuster,” we do not sustain this rejection. Rejection 3, obviousness of claims 4 and 6. The Examiner’s treatment of dependent claims 4 and 6 does not cure the error addressed above with respect to claim 1. Final Act. 4. We, thus, do not sustain this rejection. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–3, 5 102 Silverstein 1–3, 5 8, 12, 14, 15 102 Lorenzini 8, 12, 14, 15 4, 6 103 Silverstein 4, 6 Overall Outcome 1–6, 8, 12, 14, 15 REVERSED Copy with citationCopy as parenthetical citation