11204038 (B.P.A.I. May. 24, 2012)

Ex Parte Kobayashi et al

Board of Patent Appeals and InterferencesMay 24, 2012

11204038 (B.P.A.I. May. 24, 2012)

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. 11/204,038 08/16/2005 Yuji Kobayashi NIF-092 9824 32628 7590 05/25/2012 KANESAKA BERNER AND PARTNERS LLP 1700 DIAGONAL RD SUITE 310 ALEXANDRIA, VA 22314-2848 EXAMINER LE, TAN ART UNIT PAPER NUMBER 3632 MAIL DATE DELIVERY MODE 05/25/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte YUJI KOBAYASHI and YASUO YAMAMOTO ____________ Appeal 2010-007324 Application 11/204,038 Technology Center 3600 ____________ Before LINDA E. HORNER, JOHN C. KERINS, and MICHAEL L. HOELTER, Administrative Patent Judges. HORNER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Yuji Kobayashi and Yasuo Yamamoto (Appellants) seek our review under 35 U.S.C. § 134 of the Examiner’s decision rejecting claims 1-3 and 5-8 under 35 U.S.C. § 102(b) as anticipated by Soriano (US 5,815,894; iss. Oct. 6, 1998). We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Appeal 2010-007324 Application 11/204,038 2 THE INVENTION Appellants’ claimed invention “relates to a holding tool for an elongated member[.]” Spec. 1, ll. 4-5. Claim 1, reproduced below, is representative of the subject matter on appeal. 1. A holding tool for an elongated member, comprising: a connecting member to be attached to an attachment member, a fixed part connected to the connecting member, a movable part pivotally connected to the fixed part at one end thereof, a first holding part for holding the elongated member comparatively tightly formed between the fixed part and the movable part, said first holding part having a restraining piece integrally formed with one of the fixed part and the movable part as a part thereof, said restraining part elastically projecting toward the other of the fixed part and the movable part so that a projecting portion of the restraining piece can retract backward when a prescribed force is applied thereto, a second holding part for holding the elongated member with a prescribed space therearound formed between the fixed part and the movable part, and a gap formed between the first and second holding parts so that the elongated member can move from the first holding part to the second holding part. ISSUE The issue presented by this appeal is: Does Soriano disclose that the foam piece 36 is “integrally formed with one of the fixed part and the movable part as a part thereof” as called for in independent claims 1 and 7? Appeal 2010-007324 Application 11/204,038 3 ANALYSIS Appellants seek to have us construe “a restraining piece integrally formed with one of the fixed part and the movable part as a part thereof” to call for “a one piece article with the fixed part or the movable part.” App. Br. 6. The Specification describes that the restraining piece “is formed on a part of the movable part 3 forming a part of the first holding part 10.” Spec. 4, ll. 14-16. The Specification does not describe the restraining piece as being “integrally formed” as a part of either the movable part or the fixed part and does not provide an explicit definition of “integrally formed.” The Specification describes only that in a preferred embodiment the “holding tool 1 is integrally formed with a synthetic resin material having elasticity” and the “restraining piece 12 is formed by forming a square bracket-shaped cut 13 near the hinge 6 of the movable part 3[.]” Spec. 3, ll. 27-29 and Spec. 4, ll. 16-18. We decline to read a particular embodiment appearing in the written description into the claim if the claim language is broader than the embodiment. See Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“Though understanding the claim language may be aided by the explanations contained in the written description, it is important not to import into a claim limitations that are not a part of the claim.”) As such, we agree with the Examiner’s interpretation of the claim language “integrally formed with one of the fixed part and the movable part as a part thereof” to not be restricted to a one piece article and to broadly include a restraining piece that is rigidly secured to one of the fixed part and the movable part. Ans. 5. See In re Morris, 127 F.3d 1048, 1053, 1055 Appeal 2010-007324 Application 11/204,038 4 (Fed. Cir. 1997) (affirming as reasonable the Board’s interpretation of the phrase “integrally formed as a portion of” to be “inclusive of means for maintaining parts in a fixed relationship as a single unit” and thus to broadly include an elastomeric pad that is fixedly, yet removably, coupled to a housing, and refusing to adopt appellants’ narrower construction absent an express definition in their specification that would have required the claimed compliance area to be “fused together” with the housing to form a single part.) Even using this broadest reasonable construction, however, we disagree with the Examiner’s finding that Soriano discloses a restraining piece integrally formed with one of the fixed part and the movable part as a part thereof. See Reply Br. 2 (“there is no disclosure per se of the foam pieces actually being rigidly secured in Soriano.”) The Examiner found that Soriano’s piece of foam 36 is the claimed restraining piece and that this foam 36 is integrally formed with one of the fixed part and the movable part because “the gripping parts (movable and fixed parts) and the foam are rigidly secured.” Ans. 5. We cannot find by a preponderance of the evidence that foam piece 36 is rigidly secured or otherwise fixedly coupled to either of the fixed or movable parts of the clip 1. Soriano discloses a clip 1 having hinged shell 20 including upper and lower portions, i.e., movable and fixed parts, respectively. Soriano, col. 3, ll. 12-17; fig. 2. Soriano discloses that “[a]n optional riser (34) is included to secure an optional piece of foam (36) in place.” Col. 3, ll. 22-24; fig. 2 (showing riser 34 on only the lower portion of clip 1 and numbering only a piece of foam disposed in the lower portion of clip 1 with element number Appeal 2010-007324 Application 11/204,038 5 36). Soriano does not describe further details as to the extent to which the foam 36 is “secured” in place in the lower portion of clip 1. We cannot discern by a preponderance of the evidence whether the foam 36 is fixedly coupled to the lower portion of clip 1 to an extent that it is considered “integrally formed with [the fixed part of the clip] as a part thereof.” Further, while Figure 2 of Soriano appears to show another optional piece of foam disposed in the upper portion of clip 1, Soriano does not mark this element with number 36 or otherwise describe this element and does not show a counterpart riser 34 designed to secure the foam in place in the upper movable portion of clip 1. We decline to speculate as to whether Figure 2 actually shows a piece of foam is fixedly secured in the upper portion of clip 1 such that it would be considered to be “integrally formed with one of the fixed part and the movable part as a part thereof” as called for in claims 1 and 7. As such, we cannot sustain the rejection of independent claims 1 and 7 or their dependent claims 2, 3, 5, 6, and 8, as anticipated by Soriano. CONCLUSION Soriano does not disclose by a preponderance of the evidence that the foam piece 36 is “integrally formed with one of the fixed part and the movable part as a part thereof” as called for in independent claims 1 and 7. Appeal 2010-007324 Application 11/204,038 6 DECISION The decision of the Examiner to reject claims 1-3 and 5-8 is REVERSED. REVERSED hh