12976149 - (D) (P.T.A.B. Jul. 30, 2019)

Hideo Mizutani et al.

Patent Trials and Appeals BoardJul 30, 2019

12976149 - (D) (P.T.A.B. Jul. 30, 2019)

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. 12/976,149 12/22/2010 Hideo MIZUTANI 04788.0273 6899 22852 7590 07/30/2019 FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER LLP 901 NEW YORK AVENUE, NW WASHINGTON, DC 20001-4413 EXAMINER ADAMS, NATHANIEL L ART UNIT PAPER NUMBER 3654 NOTIFICATION DATE DELIVERY MODE 07/30/2019 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): regional-desk@finnegan.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte HIDEO MIZUTANI, TOHRU KIUCHI, TORU KAWAGUCHI, and TAKASHI MASUKAWA ____________ Appeal 2018-008854 Application 12/976,149 Technology Center 3600 _______________ Before BRETT C. MARTIN, WILLIAM A. CAPP, and LISA M. GUIJT, Administrative Patent Judges. GUIJT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1–15, 23, and 24.2 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Nikon Corporation is identified as the real party in interest. Appeal Br. 1. 2 Appeal is taken from the Final Office Action dated December 28, 2017. Appeal 2018-008854 Application 12/976,149 2 CLAIMED SUBJECT MATTER Claim 1, reproduced below as the sole independent claim on appeal, is exemplary of the subject matter on appeal. 1. A substrate case comprising: a shaft portion including a holding portion that detachably holds and contacts one end portion of a sheet-shaped substrate on which a display element is formed, a first portion, a second portion opposite to the first portion, and a rib portion disposed between the first portion and the second portion and including a plurality of ribs, each of the ribs including a curved side surface curved in a ring shape around a substantially entire circumference of the surface of the shaft portion, the curved side surfaces of the ribs contacting with a surface of the sheet-shaped substrate, and the curved side surfaces of the ribs being separate from each other in a longitudinal direction and a circumferential direction of the shaft portion; and a cover portion that is openable and closable and is attached to the shaft portion and to accommodate the sheet- shaped substrate in a state where the one end portion of the sheet- shaped substrate is held by the holding portion of the shaft portion and where the sheet-shaped substrate is wound around the rib portion of the shaft portion and is rolled. THE REJECTIONS I. Claims 1–15, 23, and 24 stand rejected under 35 U.S.C. § 112, second paragraph, as indefinite. II. Claims 1–13, 15, 23, and 24 stand rejected under 35 U.S.C. § 102(b) as anticipated by Bishop (US 3,622,099; issued Nov. 23, 1971). III. Claim 14 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Bishop. Appeal 2018-008854 Application 12/976,149 3 ANALYSIS Rejection I Regarding independent claim 1, the Examiner finds that the claim language “a substantially entire circumference” and “ring-shaped surface” are indefinite. Final Act. 2–3. For example, the Examiner determines that “[F]igure 1 does not show ring shaped surfaces, but rather quarter-circumferential arced surfaces.” Id. Appellants argue that the Specification discloses that “a surface of ‘the sheet substrate FB comes into contact with . . . a surface of the rib portion 23,’” and that Figure 1 depicts substrate FB “across multiple of the curves.” Appeal Br. 7 (citing Spec. 6:2–3). Appellants submit that Figure 2 depicts rib portions 23 “separate from each other longitudinally and, therefore circumferentially.” Id. A claim is properly rejected as indefinite under 35 U.S.C. § 112, second paragraph, if, after applying the broadest reasonable interpretation in light of the specification, the metes and bounds of a claim are not clear because the claim “contains words or phrases whose meaning is unclear.” In re Packard, 751 F.3d 1307, 1310, 1314 (Fed. Cir. 2014) (per curiam). We determine that the claim language requiring each of the ribs to include “a curved side surface curved in a ring shape around a substantially entire circumference of the surface of the shaft portion” is clear, in that Figure 1 depicts each rib as having an outer circumferential surface in a ring shape around a substantially entire surface of the shaft portion, and also a separation between each the curved side surfaces in a longitudinal direction (along the length of the shaft) and in a circumferential direction meaning, in Appeal 2018-008854 Application 12/976,149 4 view of the Specification, that there is a separation or gap circumferentially between each adjacent rib. Accordingly, we do not sustain the Examiner’s rejection of independent claim 1, and claims 2–15, 23, and 24 depending therefrom, under 35 U.S.C. § 112, second paragraph, as indefinite. Rejection II The Examiner finds, inter alia, that Bishop’s projections 30 correspond to the claimed ribs, and that Bishop’s projections 30 include a curved side surface curved in a ring shape around a substantially entire circumference of the surface of the shaft portion, as claimed. Final Act. 4. Appellants correctly argue that each of Bishop’s projections 30 do not have a curved side surface curved in a ring shape around a substantially entire circumference of the surface of the shaft portion, as claimed. Rather, as argued by Appellants, each of Bishop’s projections 30 have “a pin shape having a sharpened front end,” which is “inserted in the apertures 28 having a circular shape.” Reply Br. 4. See Bishop 2:33–34 (“[e]ach tab 26 has a plurality of apertures 28 for engaging projections 30”), Figs. 1, 2. In other words, the Bishop’s projections 30 do not disclose a rib having the claimed curved side surface curved in a ring shape around a substantially entire circumference of the shaft portion’s surface. Accordingly, we do not sustain the Examiner’s rejection of independent claim 1, and claims 2–13, 15, 23, and 24 depending therefrom, under 35 U.S.C. § 102(b) as anticipated by Bishop. Appeal 2018-008854 Application 12/976,149 5 Rejection III The Examiner’s further reliance on Bishop for disclosing aspects of a cover does not cure the deficiencies in the Examiner’s reliance on Bishop for disclosing ribs as claimed, as discussed supra. Accordingly, for essentially the same reasons stated supra, we do not sustain the Examiner’s rejection of claim 14 under 35 U.S.C. § 103(a) as unpatentable over Bishop. DECISION The Examiner’s rejection of claims 1–15, 23, and 24 under 35 U.S.C. § 112, second paragraph, as indefinite is REVERSED. The Examiner’s rejection of claims 1–13, 15, 23, and 24 under 35 U.S.C. § 102(b) as anticipated by Bishop is REVERSED. The Examiner’s rejection of claim 14 under 35 U.S.C. § 103(a) as unpatentable over Bishop is REVERSED. REVERSED