Ex Parte RO

Patent Trial and Appeal Board

Sep 17, 2018

14775850 (P.T.A.B. Sep. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/775,850 09/14/2015
23413 7590 09/19/2018
CANTOR COLBURN LLP
20 Church Street
22nd Floor
Hartford, CT 06103
FIRST NAMED INVENTOR
NamYealRO
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.
IIP0021US 1875
EXAMINER
TROY, DANIEL J
ART UNIT PAPER NUMBER
3637
NOTIFICATION DATE DELIVERY MODE
09/19/2018 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):
usptopatentmail@cantorcolbum.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NAM YEAL RO
Appeal2017-009417
Application 14/775,850 1
Technology Center 3600
Before LINDA E. HORNER, JEREMY M. PLENZLER, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
PLENZLER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner's
Final Decision rejecting claims 1-10. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
1 Appellant is the Applicant, JOONG-ANG METAL CO., LTD., identified
in the Appeal Brief as the real party in interest. Br. 3.
Appeal2017-009417
Application 14/775,850
CLAIMED SUBJECT MATTER
Claim 1 is the sole independent claim, with claims 2-10 depending
therefrom. Claim 1 is reproduced below:
1. A locking device, comprising:
a first shell having a first flange and a second shell having
a second flange, the first flange being adapted to be in surface
contact with a casing and the second flange being adapted to be
in surface contact with a cover, the first shell being provided with
a locking housing in which a catch hole is formed, the second
shell being provided with a vertical-movement support block to
guide a vertical movement of a locking hook by rotation of a
handle;
a housing secured to the second shell to guide an operation
of a tilting guide;
the tilting guide resiliently provided inside the housing via
a wire spring to guide a movement of the locking hook;
the locking hook configured to be caught by the catch hole
to set a locking state or removed from the catch hole to release
the set locking state, while the locking hook moves along the
tilting guide by a forward or backward rotation of the handle;
the handle rotatably provided on the tilting guide to move
the locking hook forward or rearwards;
a vertical moving block protruding from a lower surface
of the locking hook, the vertical moving block being guided
along the vertical-movement support block to be in line contact
therewith, thus moving up the locking hook that is moved
forwards when the handle rotates forwards; and
a restoring part connected to the tilting guide and the
housing to move down the locking hook and the tilting guide that
are moved up while the vertical moving block is in line contact
with the vertical-movement support block, thus restoring the
locking hook and the tilting guide to original positions thereof.
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Appeal2017-009417
Application 14/775,850
REJECTIONS
1. Claims 1-5 are rejected under 35 U.S.C. § 103 as being
unpatentable over Hatton (EP 2 508 700 Al, published Oct. 10, 2012) and
Wolf (US 4,758,031, issued July 19, 1988).
2. Claims 6 and 7 are rejected under 35 U.S.C. § 103 as being
unpatentable over Hatton, Wolf, and Faurel (US 5,012,794, issued May 7,
1991 ).
3. Claims 8 and 9 are rejected under 35 U.S.C. § 103 as being
unpatentable over Hatton, Wolf, and Ziavras (US 5,400,987, issued Mar. 28,
1995).
4. Claim 10 is rejected under 35 U.S.C. § 103 as being unpatentable
over Hatton, Wolf, and Anderson (US 5,669,683, issued Sept. 23, 1997).
OPINION
The Examiner finds that Hatton teaches the majority of limitations
recited in claim 1, citing Hatton's tab 80 as corresponding to the "restoring
part." Final Act. 2-3. Appellant's sole dispute regarding the rejection is
whether Hatton's tab 80 can reasonably be considered the "restoring part"
recited in claim 1. Br. 10-14. The preponderance of the evidence supports
Appellant's position.
"The first step in both [anticipation and obviousness] analyses is a
proper construction of the claims." Medichem, S.A. v. Rolabo, S.L., 353
F.3d 928, 933 (Fed. Cir. 2003). Based on the language of claim 1, we know
what the "restoring part" is connected to and what function it performs. We
know nothing, however, regarding what structure is associated with the
"restoring part." Neither Appellant, nor the Examiner, proposes an express
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Appeal2017-009417
Application 14/775,850
construction of that term, and we have no reason to believe that "restoring
part" is understood by persons of ordinary skill in the art as the name for any
particular structure. Therefore, we determine that "restoring part" is a
means-plus-function term, subject to 35 U.S.C. § 112([).
The standard for determining whether a limitation is a means-plus-
function term is not based merely on the presence or absence of the word
"means," but, rather, is based on "whether the words of the claim are
understood by persons of ordinary skill in the art to have a sufficiently
definite meaning as the name for structure." Williamson v. Citrix Online,
LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015) (internal citation omitted). As
Appellant does not propose any particular construction, it does not contend
that "restoring part" is understood as the name for any particular structure.
Although there is a presumption that a limitation lacking the word "means"
is not subject to § 112([), that presumption is overcome when it is
"demonstrate[ d] that the claim term fails to 'recite sufficiently definite
structure' or else recites 'function without reciting sufficient structure for
performing that function."' Id. As noted above, claim 1 recites function
"without reciting sufficient structure for performing that function." In fact,
claim 1 simply recites "part," without any additional structure, for
performing that function. See Williamson, 792 F.3d at 1350 ("Generic terms
such as 'mechanism,' 'element,' 'device,' and other nonce words that reflect
nothing more than verbal constructs may be used in a claim in a manner that
is tantamount to using the word 'means' because they 'typically do not
connote sufficiently definite structure' and therefore may invoke § 112, para.
6."). 2
2 Section 112([) replaced what was previously 35 U.S.C. § 112 ~ 6.
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Appeal2017-009417
Application 14/775,850
A means-plus-function limitation "shall be construed to cover the
corresponding structure, material, or acts described in the specification and
equivalents thereof." 35 U.S.C. § 112(±). The Specification provides
several embodiments of restoring part 190. In each of the embodiments,
restoring part 190 is some form of spring. See, e.g., Spec. 10, Figs. 1, 16,
17. Accordingly, we construe the "restoring part" recited in claim 1 as
requiring the structure of one of the springs discussed in those various
embodiments or equivalents thereof.
Applying the construction of "restoring part" noted above, we agree
that Hatton's tab 80, itself, is not a "restoring part," as required by claim 1.
Hatton relates to a case latch assembly including a latch movable between
latched and unlatched positions. Hatton, (57). In one embodiment, Hatton
includes torsion elements 62, 64 in the form of torsion springs for mounting
a hinge member to a mounting element. See Hatton 6:7-7:6, Fig. 4. Figure
4 of Hatton is reproduced below for discussion purposes.
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Appeal2017-009417
Application 14/775,850
J:tl
~~-· (i~t
. r -7r·.
/\)~t>
68
.-,~·· ·~::. )
.----- ..-· 1· h>+"'-\ 64
<~:.·,,,): .. -,·":·· fr i _.,, ;, ·. ><'" ,·,,
''.l:f~:~-
-........,,.,L:;: .. ,,.-<-'".\ \ \
! l \ u
l i ~
6-6 i 14
88
Figure 4 of Hatton is an exploded view of a latch assembly.
In addition to the "restoring part," claim 1 additionally recites a "wire
spring." Specifically, claim 1 recites that "the tilting guide [is] resiliently
provided inside the housing via a wire spring to guide a movement of the
locking hook." In the rejection of claim 1, the Examiner cites Hatton's
hinge member 16 (item including reference numerals 32, 34 in the Figure
above) as corresponding to the recited "tilting guide," mounting element 68
as corresponding to the recited "housing," and torsion elements 62, 64 as
corresponding to the recited "wire spring." Final Act. 2-3. As noted above,
the Examiner cites tab 80 as corresponding to the "restoring part," and
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Appeal2017-009417
Application 14/775,850
explains that "restoring part (80) [is] connected to the tilting guide and the
housing (via the spring 62) to move down the locking hook and the tilting
guide that are moved up while the vertical moving block is in line contact
with the vertical-movement support block." Id. at 3. That is, tab 80 is not
the spring, itself. Rather, tab 80 is simply an arm that extends from torsion
element 62, which, as noted above, the Examiner separately finds
corresponds to the recited "wire spring." Hatton explains, for example, that
tab 80 is a "key element" for "first hinge mounting part 78" that "is arranged
to provide additional transfer of torsional force from the first torsion spring
62 to the hinge body 32 and is arranged to bias the hinge body towards the
second mounting dish 14." Hatton, 6:25-29, 6:54--57.
Accordingly, tab 80 does not correspond to the structure of one of the
springs disclosed in the various embodiments of "restoring part 190" from
Appellant's Specification.
Next, we tum to whether Hatton discloses an equivalent of the
structure associated with restoring part 190 described in Appellant's
Specification. In order to be an equivalent, there must be insubstantially
different structure. Odetics, Inc. v. Storage Tech. Corp., 185 F.3d 1259,
1267 (Fed. Cir. 1999). Here, we do not have an insubstantial difference
between tab 80 in Hatton and the various embodiments of Appellant's
restoring part 190. As noted above, a tab, itself, is not a spring. Each of
Appellant's embodiments for restoring part 190 includes a mounting region
( similar to a tab), as well as a resilient spring region. See, e.g., Spec. 10,
Figs. 1, 16, 17. The Examiner already considers the torsion element 62,
from which tab 80 extends, to be the recited "wire spring." Therefore, we
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Appeal2017-009417
Application 14/775,850
cannot also consider that same structure as meeting the "restoring part"
limitation. See In re Robertson, 169 F.3d 743 (Fed. Cir. 1999).
Because the Examiner has failed to establish that Hatton teaches the
recited "restoring part," when that limitation is properly construed under 35
U.S.C. § 112(±), we do not sustain the Examiner's decision to reject claim 1
as unpatentable over the combined teachings of Hatton and Wolf. The stated
bases for the rejections of claims 2-10 do not cure the deficiencies in the
rejection of claim 1.
DECISION
We REVERSE the Examiner's decision to reject claims 1-10.
REVERSED
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