Ex Parte Yamaguchi et al

Board of Patent Appeals and Interferences

Apr 27, 2009

10653939 (B.P.A.I. Apr. 27, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte HIROAKI YAMAGUCHI and FUJII KATSUTOSHI
____________________

Appeal 2009-3424
Application 10/653,939
Technology Center 3600
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Decided:1 April 27, 2009
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Before JAMESON LEE, SALLY C. MEDLEY, and MICHAEL P.
TIERNEY, Administrative Patent Judges.

TIERNEY, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month period for filing an appeal or commencing a civil action, as
recited in 37 C.F.R. § 1.304, begins to run from the decided date shown on
this page of the decision. The time period does not run from the Mail Date
(paper delivery) or Notification Date (electronic delivery).
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Application 10/653,939

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A. STATEMENT OF THE CASE
This is a decision on appeal by the real parties in interest,
KABUSHIKI KAISHA TOKAI RIKA DENKI SEISAKUSHO and
TSUCHIYA CO., LTD under 35 U.S.C. § 134(a) from a final rejection of
claim 1, the only claim on appeal. The Examiner withdrew the remaining
claims due to a restriction requirement. Appellant requests reversal of the
Examiner’s rejection of those claims. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm.

References Relied on by the Examiner
Davis 2,105,027 Jan. 11, 1938
Hosking 4,877,119 Oct. 31, 1989

The Rejections on Appeal
The Examiner rejected claim 1 under 35 U.S.C. § 103(a) as
unpatentable over Davis (U.S. 2,105,027) in view of Hosking (U.S.
4,877,119).
The Invention
The invention relates to a display sheet that is formed so as to
conform with and extend along the outer circumferential surface of the
conical surface. (Spec., p. 1). Claim 1 is illustrative of the claimed
invention and is reproduced below:
1. A display sheet to be applied to a sheet-applying surface formed
so as to extend along an outer circumferential surface of a cone
comprising:
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a dual-ended, annular plastic sheet body having a three-
dimensional shape in conformity with that of the sheet-applying
surface in a natural state without application of an external force
applied to shape the sheet body,
wherein the sheet body includes a bonding-agent surface
adapted to be applied to the sheet-applying surface, and
wherein the sheet body is annealed in a jig having a conical
surface.
(App. Br., Claims App’x.)

B. ISSUE
1. Has Appellant shown that the Examiner erred in holding that the use
of a known locking mechanism (snap ring) for its known purpose (attaching
a cover to a body) would have been obvious to one of ordinary skill in the
art at the time of invention?

C. FINDINGS OF FACT
Davis
1. Davis teaches a display sheet in the form of a cover or “bib” 10 for
covering the tops of containers, such as cans or the like. (Davis, col. 1, ll. 1-3
and col. 2, ll. 18-20).2
2. Davis teaches that the cover 10 is designed to function as a display
sheet for displaying names, insignias, or slogans. (Id. at col. 2, ll. 37-52).

2 Although Davis refers to the terms “cover” or “bib” interchangeably, for
purposes of brevity and clarity, we will refer to the cover or “bib” 10 only as
a “cover” in the remainder of the decision.
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3. Davis’s cover 10, is shown in Figures 1-2 and 4, and depicted below:

Figures 1 and 2 are depicted above and show Davis’s cover 10
attached to the upwardly extending top 2 portion of a can 1.

Figure 4 is depicted above and shows the cover before it is positioned
on a can 1. (Id. at col. 1, ll. 29-30).
4. Davis teaches a can 1 having a cylindrical body and a conical
upwardly extending top portion 2. (Id. at col. 1, ll. 35-43, and
figs. 1 and 2).
5. Davis teaches and depicts the cover 10 as conforming to the conically
shaped upwardly extending top 2 portion of the can 1. (Id. at col. 1, l. 53 to
col. 2, l. 1 and fig. 2).
6. Davis teaches that any suitable locking means having openings
communicating into the central aperture 11 will suffice, so long as the cover
member may be fitted over the container neck and locked in position relative
thereto. (Id. at col. 3, l. 27 to col. 4, l. 3).
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7. Davis states that an “example” of a suitable locking mechanism
includes tongues 16 and slots 12 for locking the cover 10 about the
container. (Id. at col. 3, ll. 1-12, and col. 3, l. 27 to col. 4, l. 3).
8. The Examiner found that Davis does not describe a dual-ended sheet
body made of plastic.
Hosking
9. Hosking discloses a resilient annular snap-ring collar 16 having dual
ends separated by a slit 38. (Hosking, col. 3, ll. 33-43).
10. Hosking teaches that the collar 16 is attached within a groove 26 at
the top of a drinking beaker 12. (Id.).
11. The snap-ring collar 16, beaker 12, slit 38, and groove 26, are shown
in Figure 3, and depicted below:

Figure 3, shown above, depicts the snap-ring collar 16, beaker 12, slit
38, and groove 26.
12. The slit 38 makes it possible to apply distending force to the snap-ring
collar 16, so that it can be snapped onto a conforming surface. (Id. at col. 3,
ll. 33-43, and figs. 1-3).
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13. The Examiner found that the snap-ring collars, such as those of
Hosking, are well known in the art and that their dual-ended construction
provides an easy means to attach the collar to a support surface. (Ans., p. 3
and 4).

D. PRINCIPLES OF LAW
An invention is not patentable under 35 U.S.C. § 103 if it is obvious.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The determination
of obviousness requires a suggestion of all limitations in a claim. CMFT
Inc. v. Yieldup Int’l Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003); In re
Royka, 490 F.2d 981, 985 (CCPA 1974). The suggestion of all limitations
however need not be literally expressed in the prior art. Any need or
problem known in the field of endeavor at the time of invention can provide
a reason for combining elements in the manner claimed. KSR at 420. In
particular, the combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results. Id. at 416.

E. ANALYSIS
Claim 1 was rejected by the Examiner under 35 U.S.C. § 103 as
unpatentable over Davis in view of Hosking. The Examiner found that
Davis teaches a display sheet comprising a sheet body 10 having a three-
dimensional shape in conformity with that of the sheet-applying surface in a
natural state without application of an external force applied to shape the
sheet body. (Ans., p. 3 (citing Fig. 4 of Davis)). The Examiner
acknowledged that Davis’ display sheet does not have dual-ends. (Id.).
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However, the Examiner found that dual-ended sheets, such as that described
in Hosking, were well known in the art. (Id.). The Examiner found that
Hosking taught a sheet body 16 that was dual-ended and easy to attach to a
support surface. (Id. at p. 3-4). The Examiner reasoned that it would have
been obvious to one of ordinary skill in the art to employ the known dual-
ended plastic snap ring of Hosking with Davis’s conical shape for ease of
application to Davis’ sheet-applying surface. (Id.).
Appellant disagrees with the Examiner’s conclusion. The Appellant
contends claim 1 is non-obvious in view of the combination of Davis and
Hosking because: (1) the combination fails to teach or suggest all claim
elements (App Br., p. 4-6); (2) Hosking teaches away from the combination
with Davis because the combination with Davis would defeat the proper
operation of that reference (Id. at p. 7); and (3) there is no suggestion or
motivation for making the combination of Davis and Hosking (Id. at p. 6-8).
Teaching of All Limitations
Appellant contends that the combination of Davis and Hosking does
not teach all the limitations of the claim. We disagree for the reasons
provided below.
Appellant contends that once Davis is modified to have dual-ends in
view of Hosking the tongues 16 of Davis would apply an external force that
distorts the natural conical shape of the cover. (Id. at p. 4-6). In particular,
Appellant states that the ends of the dual-ended cover would be pushed away
from each other or distorted in some other way by the tongues. (Id.).
The test for obviousness is what the combined teachings of the
references would have suggested to those of ordinary skill in the art. In re
Keller, 642 F.2d 413, 425 (CCPA 1981).
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Davis shows a cover 10 that conforms to and is opposed by the
conically shaped upwardly extending top 2 portion of the can 1. (Id. at
fig. 2). Davis teaches that any suitable locking means having openings
communicating into the central aperture 11 will suffice to secure the cover to
the container, so long as the cover member may be fitted over the container
neck and locked in position relative thereto. (Id. at col. 3, ll. 5-12 and col. 3,
l. 27 to col. 4, l. 3, claims 1 and 2). Davis further states that the use of
tongues 16 and slits 12 are an example of a suitable locking mechanism for
securing the cover. (Id. at col. 3, ll. 7-12). In other words, Davis is not
limited to the use of a tongue to attach the cover to the conically shaped
upwardly extending top 2 portion of the can 1.
Hosking teaches a snap-ring collar 16 that is resilient and has dual
ends separated by a slit 38. (Hosking, col. 3, ll. 33-43). Hosking teaches
that the slit 38 is used to secure the snap-ring collar 16 within a groove 26,
on the side of an annular beaker 12. (Id.). The collar 16 conforms to the
surface of the beaker within the groove. (Id. at col. 3, ll. 33-43, and
figs. 1-3). Hosking does not utilize tongues as any part of a locking or
securing means. Accordingly, we disagree with Appellant’s specific
contention that the combination of Davis and Hosking would require the use
of a tongue.
The combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.
KSR, 550 U.S. at 416. Davis’ display sheet conforms in its natural state to a
conical sheet-applying surface. Modifying the display sheet of Davis, such
that it attaches in the manner of the snap-ring taught by Hosking is no more
than the combination of familiar elements in a manner that yields a
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predictable result. Specifically, we conclude that Appellant has combined
known elements in a known fashion to yield a predictable result, attaching a
display ring to a conical surface.

Teaching Away
Appellant contends that Hosking teaches away from the combination,
because combining it with Davis would defeat the proper operation of Davis.
(App. Br., p. 7). Appellant states the combination would defeat the proper
operation of Davis because the tongues 16 of Davis would cause the ends of
a dual-ended cover to be pushed away from each other. (Id.). Moreover,
Appellant contends that the tongues 16 of Davis may not be able to maintain
enough frictional force to affix the cover to the can, if the can was modified
to be dual-ended in view of Hosking. (Id.).
Davis does not require the use of a tongue. As discussed above, Davis
teaches any cover locking mechanism may be used and consistent with this
teaching Hosking describes a snap ring locking mechanism, where the snap
ring does not include a tongue. We hold that Appellant has failed to
establish that the references teach away from the claimed display sheet.
Moreover, if the use of a snap ring is not compatible with the use of a
tongue, one with ordinary skill in the art would have known to use one and
not the other.
Suggestion/Motivation
Appellant contends that there was no suggestion or motivation for
combining the references. (App Br., p. 6-8). As discussed above, the
Examiner found that one of ordinary skill in the art would have recognized
that the use of snap rings allows for ease of application. (Ans., p. 3-4).
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Appellant has not disputed the Examiner’s finding that snap ring collars
were known to provide an easy means of attachment. Davis teaches that any
suitable cover locking mechanism may be used for its display sheet. We
conclude that one of ordinary skill in the art would have had sufficient
reason (easy assembly) to employ the known snap ring locking mechanism
of Hosking as the display cover locking mechanism of Davis.

F. CONCLUSION OF LAW
Appellant has not shown that the Examiner erred in holding that the
use of a known locking mechanism (snap-ring) for its known purpose
(attaching a cover to a body) would have been obvious to one of ordinary
skill in the art at the time of invention.
G. ORDER
The rejections of claim 1 under 35 U.S.C. § 103(a) as unpatentable
over Davis in view of Hosking is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED

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