MAX CO., LTD.

Patent Trials and Appeals Board

Mar 26, 2021

2020005919 (P.T.A.B. Mar. 26, 2021)

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.
15/272,778 09/22/2016 Hiroaki TAKAHASHI 4091-0127 8498
6449 7590 03/26/2021
ROTHWELL, FIGG, ERNST & MANBECK, P.C.
607 14TH STREET, N.W.
SUITE 800
WASHINGTON, DC 20005
EXAMINER
KIM, CHRISTOPHER ROBIN
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
03/26/2021 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):
PTO-PAT-Email@rfem.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HIROAKI TAKAHASHI and YUTAKA KATO
____________

Appeal 2020-005919
Application 15/272,778
Technology Center 3700
____________

Before STEFAN STAICOVICI, EDWARD A. BROWN, and
MICHAEL L. HOELTER, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks review under 35 U.S.C. § 134(a) of the Examiner’s
decision rejecting claims 1, 5, 8, and 10.2 Appellant’s representative
presented oral argument on March 15, 2021. 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 Max Co., Ltd., as the real party in
interest. Appeal Br. 3.
2 Claims 2–4, 6, 7, and 9 are cancelled. Appeal Br. (Claims App.).
Appeal 2020-005919
Application 15/272,778

2
CLAIMS
Claim 1 is independent. Claims 5, 8, and 10 depend from claim 1.
Claim 1 is illustrative and is reproduced below.
1. A stapler configured to bind a workpiece using a staple
made of a non-metal soft material, the staple having a crown
portion and a pair of leg portions formed by bending both
longitudinal ends of the crown portion toward one direction, the
stapler comprising:
a placing base on which the workpiece is placed, the
placing base including a placing surface;
a penetrating part that includes a pair of cutting blades
spaced apart from each other according to a length of the crown
portion of the staple, causes the cutting blades to penetrate from
one surface of the workpiece placed on the placing base to
another surface thereof, and forms a hole in the workpiece,
wherein the other surface is on an opposite side of the
workpiece than the one surface;
an opening that is provided on the placing base so that
the pair of cutting blades and the pair of leg portions of the
staple inserted into the workpiece pass through the opening; and
a pressing portion that is provided in the opening of the
placing base and suppresses deformation of the workpiece
caused by a force applied to the workpiece from the cutting
blades when the cutting blades penetrate the workpiece[,]
wherein the pressing portion includes a pressing surface
facing the other surface of the workpiece placed on the placing
base and the pressing surface is on a same plane as the placing
surface of the placing base when the cutting blades penetrate
the workpiece, and
the stapler includes a cutting blade guide that suppresses
the pair of cutting blades penetrating the workpiece from
moving inwardly, and the pressing portion is provided on the
cutting blade guide,
wherein the stapler includes a driving member that
causes the cutting blade guide to retract from a position
between the cutting blades after the cutting blades penetrate the
workpiece to a retracted position,
Appeal 2020-005919
Application 15/272,778

3
wherein the other surface of the workpiece placed on the
placing base is supported, between positions at which the pair
of cutting blades penetrate through the workpiece, by the
pressing portion,
wherein the opening includes a first portion in which the
pressing portion is located when the cutting blades penetrate the
workpiece, and the opening further includes a second portion at
which the pressing portion is located when the cutting blade
guide is in the retracted position,
the pressing portion is configured to move through the
opening between the first portion and the second portion of the
opening as the cutting blade guide is moved from the position
between the cutting blades and the retracted position, and
wherein the pressing surface of the pressing portion has a
height on the same plane as the placing surface of the placing
base such that the pressing portion abuts against and supports
the workpiece at the first portion of the opening and during
movement between the first portion and the second portion of
the opening.

Appeal Br. 45–47 (Claims App.).

REJECTION
Claims 1, 5, 8, and 10 are rejected under 35 U.S.C. § 103 as
unpatentable over Kato (US 2014/0158738 A1, pub. June 12, 2014) and
Elonsson (US 2004/0262363 A1, pub. Dec. 30, 2004).3

ANALYSIS
The Examiner finds Kato discloses a stapler 1 comprising, inter alia,
placing base 80 on which workpiece P is placed and including a placing

3 The Non-Final Action indicates claims 1 and 4–10 are rejected. Non-Final
Act. 2. Appellant notes, however, that claims 4 and 9 have been cancelled.
Appeal Br. 3 n1.
Appeal 2020-005919
Application 15/272,778

4
surface (upper surface of placing base 80); cutting blades 21; an opening
provided on placing base 80 (Fig. 20); a pressing portion (cutting blade
guide 23) provided in the opening and including a pressing surface (top
portion of cutting blade guide 23) which is “on an essentially same plane as
the placing surface of the placing base when the cutting blades penetrate the
workpiece”; and a cutting blade guide (cutting blade guide 23) on which the
pressing portion is provided. Non-Final Act. 3–4 (citing Cato, Figs. 1, 19,
20, 22). The Examiner also finds that the surface of the workpiece placed on
the placing base is supported, between positions at which the cutting blades
penetrate through the workpiece, by the pressing portion. Id. at 3 (citing
Kato, Figs. 19, 20). The Examiner states “the supporting of the workpiece
does not need to be explicitly taught. The prior art is capable of completing
the supporting function.” Id. (boldface omitted). The Examiner also finds
the opening on the placing base includes a first portion and a second portion,
as claimed. Id. at 3–4 (citing Kato, Figs. 14, 53, 60–63, ¶¶ 310–313).
The Examiner concedes Kato does not disclose all limitations of the
final “wherein” clause of claim 1, which recites:
the pressing surface of the pressing portion has a height on the
same plane as the placing surface of the placing base, such that
the pressing portion abuts against and supports the workpiece
at the first portion of the opening and during movement
between the first portion and the second portion of the opening.
Non-Final Act. 4 (emphasis added). To address this omission of Kato, the
Examiner relies on Elonsson as teaching “a support surface [cutting pad 49]
on the same exact plane as a placing surface.” Id. (citing Elonsson, Fig. 9).
The Examiner concludes that it would have been obvious to one of ordinary
skill in the art to modify Kato’s pressing surface “with the pressing surface
location of Elonsson by moving the pressing surface of Kato slightly
Appeal 2020-005919
Application 15/272,778

5
higher.” Id.; see also Ans. 9 (“Examiner has only considered the location of
Elonsson during penetration of the workpiece in the combination stated
above.”). The Examiner’s stated motivation for this modification of Kato is
“supporting the workpiece during stapling.” Id.
Appellant contends the proposed combination of Kato and Elonsson
fails to render obvious the claimed stapler. We agree with Appellant for
several reasons. First, as discussed above, the Examiner’s position is that:
(a) Kato’s pressing surface is “on an essentially same plane as the placing
surface of the placing base when the cutting blades penetrate the
workpiece”; and (b) Kato’s cutting blade guide 23 “is capable of completing
the supporting function,” that is, supporting the workpiece “between
positions at which the pair of cutting blades penetrate through the
workpiece.” Non-Final Act. 3–4.
In response, Appellant explains “Fig. 34B of the present application
illustrates an arrangement similar to that described by Kato, in that the top of
guide 23 is positioned below the paper placing base 80.” Appeal Br. 20.
Figure 34B shows workpiece P being deformed so as to be in contact with a
top surface of lower cutting blade guide 23 during cutting. Id. Accordingly,
it appears Appellant agrees with the Examiner’s finding (b). Furthermore,
Kato discloses that placing base 80 supports workpiece P between these
cutting positions. See, e.g., Kato, Fig. 20. The Examiner does not identify
any disclosure in Kato, or provide any other evidence in the prior art, that
teaches or suggests that the support provided by Kato’s placing base 80 and
lower cutting blade guide 23 is insufficient, leaving a skilled artisan with a
need to modify Kato to provide additional support of workpiece P between
these cutting positions. As such, the reason proffered by the Examiner for
Appeal 2020-005919
Application 15/272,778

6
making the proposed modification of Kato is inadequate. That is, the reason
proffered by the Examiner, namely, “supporting the workpiece during
stapling,” appears to already be adequately met by the present locations of
placing base 80 and lower cutting blade guide 23 in Kato. Just because
Kato’s “pressing surface” could be moved slightly higher is not, in itself, an
adequate reason to make this modification to Kato.
Second, Appellant explains that the claimed stapler provides an
improvement over Kato’s stapler. Appeal Br. 12. As shown in Figure 19 of
Kato, workpiece P is cut by cutting blades 21, and the upper surface of guide
member 23 faces workpiece P and is positioned below the upper surface of
paper placing base 80 on which workpiece P is placed. Appellant points out
that “the top of the guide 23 is clearly below the paper placing base 80, as is
apparent from the fact that there is a gap between the guide 23 and the
workpiece P.” Id. at 13. As noted by Appellant, Kato discloses, “[a]s
illustrated in FIG. 1 and so forth, the cutting blade guide 23 is provided
under the paper placing base 80 . . . .” Id. at 12–13 (citing Kato ¶ 179)
(boldface omitted). As noted above, the Examiner has equated the upper
surface of Kato’s paper placing base 80 to the claimed “placing surface,”
and the upper surface of Kato’s guide member 23 to the claimed “pressing
surface.” Non-Final Act. 2, 3. Appellant explains it has recognized that,
where the pressing portion is recessed below the placing surface of the
placing base, as in Kato, deformation of the workpiece can cause the
penetration time and forces associated with penetration of the blades through
the workpiece to increase, thereby making the operation more difficult and
causing poor performance. Appeal Br. 11 (citing Spec. ¶¶ 93–95).
Appellant contends Kato does not recognize problems with an arrangement
Appeal 2020-005919
Application 15/272,778

7
in which cutting blade guide 23 is provided under paper placing base 80. Id.
at 14. Instead, Appellant contends, Kato teaches that cutting blades 21 are
tapered to suppress increases in resistance as they penetrate workpiece P,
and satisfactory force/load performance is achieved simply by the taper of
the cutting blades. Id. at 13–14 (citing Kato ¶¶ 199–200).
Appellant explains that, in contrast, in the claimed stapler the pressing
portion (23b) is provided as a top surface of the cutting blade guide (23), and
the pressing surface (23b) of the pressing portion is on a same plane as the
placing surface of the placing base when the cutting blades penetrate the
workpiece. Appeal Br. 11–12. Appellant further explains that, also in the
claimed arrangement, the height of the pressing portion is on the same plane
as the placing surface, so that the pressing portion abuts against and supports
the workpiece at the first portion of the opening (when the workpiece is
being penetrated by the cutting blades) and also during movement between
the first portion and the second portion of the opening. Id. at 12. In
contrast, the top of Kato’s cutting blade guide 23 would be under the paper
placing base “both when the guide is under or between the cutting blades
during a cutting operation, and also when the guide 23 is moved between the
projected and retracted positions.” Id. at 15–16.
Appellant further explains that Appellant’s Figure 35 illustrates a
comparison of an arrangement where the pressing portion is on the same
plane as the paper placing base to an arrangement where the pressing portion
is not on a same plane as the paper placing base. Appeal Br. 20. Appellant
indicates that the latter arrangement is illustrated in Figure 34B and
corresponds to Kato’s location of the top of cutting blade guide 23. Id.
Appellant points out Figure 35 shows that where the pressing surface of
Appeal 2020-005919
Application 15/272,778

8
cutting blade guide 23 is not on the same plane as the paper placing base, a
significant spike occurs during penetration of the cutting blades (broken
line), whereas when the pressing portion is on the same plane as the paper
placing base, the load required during penetration of the cutting blades (solid
line) is significantly reduced. Appeal Br. 21 (citing Spec. ¶¶ 108–112).
Appellant further submits that, in addition to the increased loads of Kato, the
contact length or duration over which such loads are encountered also
increases where the pressing surface is not on the same plane as the paper
placing surface. Id. (citing Spec. ¶¶ 110–111).
Appellant contends Kato fails to both identify the problem Appellant
recognized, and recognize that the claimed combination provides a solution
to the problem. Appeal Br. 22. Appellant notes “the failure of the prior art
to recognize the problem solved by an invention reflects nonobviousness—
even if the solution is obvious once the problem is recognized-unless the
prior art provides a separate reason to modify the prior art.” Id. at 24 (citing
Eibel Process Co. v. Minnesota & Ontario Paper, 261 U.S. 45 (1923); In re
Conrad, 759 Fed. Appx. 982, 985 (Fed. Cir. 2019); In re Sponnoble, 405
F.2d 578 (CCPA 1969)). As discussed above, the Examiner has not
provided a separate, adequate reason based on rational underpinnings to
modify Kato in view of Elonsson to result in the claimed stapler.
Thus, we do not sustain the rejection of claim 1, and claims 5, 8, and
10 depending therefrom, as unpatentable over Kato and Elonsson.

Appeal 2020-005919
Application 15/272,778

9
CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 5, 8, 10 103 Kato, Elonsson 1, 5, 8, 10

REVERSED