Leto R&D Corporation

Patent Trials and Appeals Board

Apr 28, 2020

14792767 - (D) (P.T.A.B. Apr. 28, 2020)

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.
14/792,767 07/07/2015 Man Soon Jeong 1090.0001-1US 5520
103651 7590 04/28/2020
Kim IP Law Group PLLC
129 W. Evesham Road
Voorhees, NJ 08043
EXAMINER
SCHREIBER, CHRISTINA MARIE
ART UNIT PAPER NUMBER
2837
NOTIFICATION DATE DELIVERY MODE
04/28/2020 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):
uspto@dockettrak.com
usptodocketing@kimiplawgroup.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MAN SOON JEONG

Appeal 2019-003864
Application 14/792,767
Technology Center 2800
Before JAMES C. HOUSEL, MICHELLE N. ANKENBRAND, and
BRIAN D. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–6, 8, 12, 14, and 15. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Leto R&D
Corporation. Appeal Br. 2.
Appeal 2019-003864
Application 14/792,767

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CLAIMED SUBJECT MATTER2
Appellant describes the invention as relating to a ligature for securing
a reed to a mouthpiece of a wind instrument such as a saxophone or clarinet.
Spec. ¶ 2. In particular, the invention relates to a ligature that can secure a
reed to mouthpieces of various sizes while still allowing for effective
vibrations. Id. ¶ 4. The Specification and its figures indicate, for example,
that the ligature’s cord 16 may be engaged to a distal end of adjuster 14.
Spec. Figs. 5, 8, ¶¶ 34, 45. Adjuster 14 can be adjusted to control tension in
the cord. Id. at 8.
Claims 1 and 8 are the independent claims on appeal. Claim 1,
reproduced below with emphases added to key recitations, is illustrative:
1. A ligature for a wind instrument comprising:
a cord harness having a plurality of apertures extending
transverse to a longitudinal axis of the cord harness;
an adjuster connected to and adjustably extendable relative to
the cord harness; and
a cord passing through the plurality of apertures in a spiral
manner and engaging a distal end of the adjuster.
Appeal Br. i (Claims App.) (emphases added). Claim 8 similarly recites,
among other things, “a cord . . . engaging the adjuster.” Id. at ii.

2 In this Decision, we refer to the Final Office Action dated December 29,
2017 (“Final Act.”), the Appeal Brief filed October 22, 2018 (“Appeal Br.”),
the Examiner’s Answer dated February 21, 2019 (“Ans.”), and the Reply
Brief filed April 19, 2019 (“Reply Br.”).
Appeal 2019-003864
Application 14/792,767

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REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Name
Lorenzini
Silverstein et al.
(“Silverstein”)

Reference
US 4,185,535
US 5,648,623

Date
Jan. 29, 1980
July 15, 1997

REJECTIONS
The Examiner maintains (Ans. 3) the following rejections on appeal:
A. Claims 1–3 and 5 under 35 U.S.C. § 102 as anticipated by Silverstein.
Final Act. 2.
B. Claims 8, 12, 14, and 15 under 35 U.S.C. § 102 as anticipated by
Lorenzini. Id. at 3.
C. Claims 4 and 6 under 35 U.S.C. § 103 as obvious over Silverstein in
view of “that which would have been obvious to one of ordinary skill
in the art.” Id. at 4.
OPINION
To resolve the issues before us on appeal, we focus on the Examiner’s
findings and determinations that relate to the error Appellant identifies.
Rejection 1, anticipation of claims 1–3 and 5. The Examiner rejects
claims 1–3 and 5 under 35 U.S.C. § 102 as anticipated by Silverstein. Final
Act. 2. A reference anticipates a claim if it “disclose[s] each and every
element of the claimed invention, whether it does so explicitly or
inherently.” In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009) (citation
Appeal 2019-003864
Application 14/792,767

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omitted). The elements “must be arranged or combined in the same way as
in the claim.” Id. (internal quotes and citation omitted).
The Examiner finds that Silverstein’s bridge 13 and nut 14 correspond
to claim 1’s adjuster. Final Act. 2; see Silverstein Figs. 1–3, 3:42–4:52. The
Examiner finds that Silverstein also teaches “a cord (11) passing through the
plurality of apertures (18) in a spiral manner and engaging a distal end of the
adjuster, such that the cord is retained or secured about the distal ends.”
Final Act. 2.
Appellant argues that the Examiner has not adequately established
that the cord of Silverstein engages Silverstein’s adjuster. Appeal Br. 4–6.
Appellant’s argument persuades us of error. Silverstein’s cord is secured by
puller 12. See Silverstein Fig. 2. The Silverstein cord 11 may be tightened by
drawing the puller 12 up and away from the musical instrument’s
mouthpiece 16. Id. 3:56–65. The Examiner does not find that cord 11
contacts bridge 13 or nut 14 (according to the Examiner, Silverstein’s
elements that correspond to the “adjuster” of claim 1).
The Examiner construes claim 1’s “engaging” recitation broadly by
stating that the standard definition of “engage” does not require that
elements necessarily touch. Ans. 4. During prosecution, the PTO construes
claims based upon
the broadest reasonable meaning of the words in their ordinary
usage as they would be understood by one of ordinary skill in
the art, taking into account whatever enlightenment by way of
definitions or otherwise that may be afforded by the written
description contained in the applicant’s specification.
In re Morris, 127 F.3d 1048, 1054–55 (Fed. Cir. 1997).
Here, the Examiner’s construction of “engaging” is too broad in view
of Appellant’s Specification. The Specification consistently uses the word
Appeal 2019-003864
Application 14/792,767

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“engage” in the context of components mechanically contacting each other.
See, e.g., Spec. ¶¶ 30 (“Each fastener 28, 30 is configured to engage the cord
16 so as to secure the cord to the cord harness.”), 33 (“recess 37 is sized and
shaped to slidingly receive and engage the . . . body 34”), 34 (“the recess
includes a planar surface 37A that directly engages a most distal end 42A of
the . . . body 34”). The Figures illustrate that adjuster 14 includes retaining
member 48 with through hole 46 that physically holds cord 16 in place.
Spec. Figs. 5, 8. Taking into account this context the Specification provides,
we determine that “a cord . . . engaging a distal end of the adjuster” requires
physical contact between the cord and the distal end of the adjuster.
Under a proper construction, the Examiner has not established that
Silverstein teaches a cord “engaging a distal end of the adjuster” as claim 1
recites. We, therefore, do not sustain this rejection.
Rejection 2, anticipation of claims 8, 12, 14, and 15. The Examiner
rejects claims 8, 12, 14, and 15 under 35 U.S.C. § 102 as anticipated by
Lorenzini. Final Act. 3. The Examiner finds that Lorenzini’s thumb screws
31 correspond to claim 8’s recited “adjuster.” Id. (citing Lorenzini). The
Examiner finds that “tightening of the adjuster (31) engages the strings and
draws the string sections in tension.” Id.
Appellant argues that the Examiner has not adequately established
that Lorenzini teaches “a cord . . . engaging the adjuster” as claim 8 recites.
Appeal Br. 6–8. Appellant’s argument is persuasive of error. As explained
above, the Specification’s context indicates that “engaging” requires
physical contact. The Examiner does not find that Lorenzini’s string 27 (i.e.,
a cord in the parlance of claim 8) contacts or otherwise engages with thumb
screws 31. Ans. 4–5. Rather, the Examiner’s rejection relies upon the
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Application 14/792,767

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broader construction of “engaging,” which we disagree with as explained
above. Id. Although the Examiner finds that tightening adjuster 31 causes
string 27 to engage (id. at 5), this is different from the cord engaging the
adjuster as claim 8 recites because string 27 does not physically contact
adjuster 31 in Lorenzini’s reed holding device.
Because the Examiner has not adequately established that Lorenzini
teaches “a cord . . . engaging the adjuster,” we do not sustain this rejection.
Rejection 3, obviousness of claims 4 and 6. The Examiner’s treatment
of dependent claims 4 and 6 does not cure the error addressed above with
respect to claim 1. Final Act. 4. We, thus, do not sustain this rejection.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 5 102 Silverstein 1–3, 5
8, 12, 14, 15 102 Lorenzini 8, 12, 14,
15
4, 6 103 Silverstein 4, 6
Overall
Outcome
1–6, 8, 12,
14, 15

REVERSED