12492626 (P.T.A.B. Jan. 27, 2015)

Ex Parte Reina et al

Patent Trial and Appeal BoardJan 27, 2015

12492626 (P.T.A.B. Jan. 27, 2015)

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. 12/492,626 06/26/2009 Leo Reina REINA-encasement 7651 74642 7590 01/27/2015 CLIFFORD H. KRAFT 320 ROBIN HILL DR. NAPERVILLE, IL 60540 EXAMINER VERAA, CHRISTOPHER ART UNIT PAPER NUMBER 3638 MAIL DATE DELIVERY MODE 01/27/2015 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 LEO REINA and JAMES SORGANI ________________ Appeal 2012-010540 Application 12/492,626 Technology Center 3600 ________________ Before: JENNIFER D. BAHR, JOHN C. KERINS, and MICHAEL L. HOELTER, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is a decision on appeal, under 35 U.S.C. § 134(a), from the Examiner’s final rejection of claims 1, 4‒8, 10, and 12–14. App. Br. 1, 2. Claims 2, 3, 9, and 11 have been canceled. App. Br. 2, 13–16. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. THE CLAIMED SUBJECT MATTER The disclosed subject matter “relates generally to imaging grids such as X-ray grids and more particularly to an imaging grid encasement that Appeal 2012-010540 Application 12/492,626 2 allows easy and safe transport and use of the grid.” Spec. 1.1 Independent claim 1, reproduced below, is illustrative of the claims on appeal: 1. An X-ray grid encasement device comprising a generally rectangular frame constructed from a honeycomb material with a flat bottom that receives and [sic] X-ray grid, said frame having a pair of adjacent grooves for receiving an X-ray grid, cassette film or imaging plate, said frame also having a front handle and a side handle, wherein said front handle and said side handle are both an integral part of said frame, and wherein said frame has at least one spring-loaded pin in at least one of said groves. REFERENCES RELIED ON BY THE EXAMINER Terry US 5,154,963 Oct. 13, 1992 Chang US 6,467,210 B1 Oct. 22, 2002 O’Dea US 2007/0110218 A1 May 17, 2007 Bueltmann US 7,632,013 B1 Dec. 15, 2009 THE REJECTIONS ON APPEAL Claims 1, 5, 6, 8, and 12 are rejected under 35 U.S.C. § 103(a) as unpatentable over O’Dea, Bueltmann, and Terry. Ans. 4. Claims 4 and 10 are rejected under 35 U.S.C. § 103(a) as unpatentable over O’Dea, Bueltmann, Terry, and Appellants’ Admitted Prior Art (hereinafter “AAPA”) (Spec. 1:15–16). Ans. 5. Claims 7 and 13 are rejected under 35 U.S.C. § 103(a) as unpatentable over O’Dea, Bueltmann, Terry, and Chang. Ans. 6. Claim 14 is rejected under 35 U.S.C. § 103(a) as unpatentable over O’Dea, Bueltmann, Terry, Chang, and AAPA. Ans. 6. 1 Appellants’ Specification does not provide line or paragraph numbering and, accordingly, reference will only be made to the page number. Appeal 2012-010540 Application 12/492,626 3 ANALYSIS While the Examiner rejects the various claims based on different combinations of references, Appellants argue all the claims (i.e., claims 1, 4–8, 10, and 12–14) together. App. Br. 6–12. In fact, Appellants even state that “[t]he claims stand or fall together.” App. Br. 2. Accordingly, we select independent apparatus claim 1 for review of the first rejection, with claims 5, 6, 8, and 12 standing or falling with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). Our discussion addressing the rejection of claim 1 applies likewise to our review of the remaining rejections. The Examiner primarily relies on the teachings of O’Dea for disclosing the limitation of claim 1 (including the finding that “O’Dea teaches spring loaded pins 7”) with two exceptions. Ans. 4–5. The Examiner relies on the teachings of Bueltmann for disclosing a film holder “comprising top and side handles” and the Examiner relies on the teachings of Terry for disclosing “that honeycomb structures are greatly preferred for providing a lightweight yet very stable and rigid panels and tables for applications in optical research.” Ans. 5. Appellants dispute the Examiner’s finding that O’Dea discloses the claimed “at least one spring-loaded pin” and Appellants further dispute that Terry is analogous art. App. Br. 6. Regarding the limitation directed to a spring-loaded pin, Appellants contend that O’Dea “merely says that ref. 7 is a locking/securing mechanism” (App. Br. 8 referencing O’Dea ¶ 37) but Appellants subsequently reproduce a different portion of O’Dea (i.e., O’Dea ¶ 46) which states that “[l]ocking mechanism 7 is shown in FIG. 2 as a spring- loaded cassette lock.” App. Br. 9. Hence, Appellants’ contention that Appeal 2012-010540 Application 12/492,626 4 O’Dea fails to disclose a “spring-loaded” locking device as claimed is not persuasive. Appellants further contend that, regarding the claim term “pin,” “[i]t is well-known in the art, that a pin is an elongated solid device, almost always cylindrical.” App. Br. 8. Appellants’ Specification contains no such definition of “pin,” and the ordinary and customary meaning/definition of “pin” is “a piece of solid material (as wood or metal) used esp. for fastening separate articles together or as a support by which one article may be suspended from another.”2 This meaning/definition is consistent with how the term “pin” is employed in Appellants’ Specification. See Spec. 3 (“[t]hese pins 5 generally hold the grid in the slots”). Accordingly, we are not persuaded the Examiner erred in finding that the O’Dea “mechanism literally serves the same purpose as the [Appellants’] invention, that of locking an x-ray grid in place” (see O’Dea ¶¶ 46, 47, and 49) and also that “[t]he exact shape and size of pins varies considerabl[y].” Ans. 7. In short, we do not find reversible error in the Examiner’s determination that “the term ‘pin’ by itself does not convey that this element of the invention requires a cylindrical shape.” Ans. 7. In other words, we do not agree with Appellants that the Examiner unreasonably broadened the interpretation of the claim term “pin” or that O’Dea does not “include or read on” this limitation. See App. Br. 9, 10. Regarding Appellants contention that “Terry is not analogous art,” Appellants contend that “Terry is not concerned with an imaging grid encasement device, or the imaging arts, and Terry is not concerned with 2 WEBSTER’S NEW COLLEGIATE DICTIONARY 864 (1979). See also Meriam- Webster.com, http://www.merriam-webster.com/dictionary/pin (last visited Jan. 6, 2015). Appeal 2012-010540 Application 12/492,626 5 making his product less heavy.” App. Br. 11. In other words, Appellants contend that “Terry is solving an entirely different problem in an entirely different field of endeavor.” App. Br. 12; see also Reply Br. 3. We disagree with Appellants on both counts. First, Appellants’ field of endeavor “relates generally to imaging grids such as X-ray grids” and Terry is directed to “optical tables” and similar structures.3 Spec. 1; Terry generally. While the actual devices each specifically addresses may differ, both relate to devices for imaging or optical purposes. 4 Hence, we are not persuaded that Appellants’ device and Terry’s device are in unrelated fields of endeavor. Second, Appellants contend that “Terry uses a honeycomb core, not to make the table light, but to make it stable.” App. Br. 11; see also Reply Br. 3. However, Terry’s background section discusses past use of granite plates and that their “great weight” is causing them to be replaced. Terry 2:35–41. Hence, Terry’s teaching of honeycomb construction would seem to be directed to both making the table light and also making it stable.5 Accordingly, Appellants do not adequately explain how Terry “is not concerned with making his product less heavy” which is similar to the 3 Terry’s Abstract begins by referring to an “[a]pparatus upon which components may be mounted.” Terry also states that “[t]he subject invention relates to honeycomb panels and tables.” Terry 1:24–25. 4 The Examiner states that “Terry is analogous art because it teaches lightweight, rigid panels and tables that are suitable for applications in optical research. X-ray imaging is absolutely an application in optical research.” Ans. 8. 5 This is consistent with the Examiner’s finding that “[h]oneycombing provides a rigid, lightweight structure that provides the precision required in the application.” Ans. 8–9. Appeal 2012-010540 Application 12/492,626 6 problem faced by Appellants (“[b]efore the [Appellants’] invention, there were no light-weight grids”). App. Br. 11. Appellants’ contentions regarding the teachings of Chang in an attempt to apply such teachings to distinguish the Examiner’s rejection of claim 1 are not persuasive because the Examiner did not rely on Chang in making the rejection of claim 1. Reply Br. 1–2, Ans. 4. More specifically, the Examiner’s reference to the shortcomings of O’Dea and the additional reliance on Chang is with respect to the additional limitations of dependent claims 7 and 13, not to make up for any perceived deficiency vis-à-vis the “pin” limitation of claim 1. Ans. 6, 8; Reply Br. 1. Accordingly, and based on the record presented, Appellants’ contentions do not persuade us that the Examiner erred in rejecting claim 1. Thus, we sustain the rejection of claims 1, 5, 6, 8, and 12 under 35 U.S.C. § 103(a) as unpatentable over O’Dea, Bueltmann, and Terry. For the same reasons, we sustain the rejection of claims 4 and 10 under 35 U.S.C. § 103(a) as unpatentable over O’Dea, Bueltmann, Terry, and AAPA; the rejection of claims 7 and 13 under 35 U.S.C. § 103(a) as unpatentable over O’Dea, Bueltmann, Terry, and Chang; and the rejection of claim 14 under 35 U.S.C. § 103(a) as unpatentable over O’Dea, Bueltmann, Terry, Chang, and AAPA. DECISION The Examiner’s rejections of claims 1, 4–8, 10, and 12–14 are affirmed. Appeal 2012-010540 Application 12/492,626 7 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED hh