Song Li

Patent Trials and Appeals Board

Dec 20, 2019

14449003 - (D) (P.T.A.B. Dec. 20, 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.
14/449,003 07/31/2014 Song LI 226-029 (62116) 9433
157817 7590 12/20/2019
Pilloff & Passino LLP
2000 Duke Street
Suite 300
Alexandria, VA 22314
EXAMINER
AHMAD, FARIA F
ART UNIT PAPER NUMBER
3675
NOTIFICATION DATE DELIVERY MODE
12/20/2019 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):
mail@pilloffpassino.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SONG LI

Appeal 2018-006641
Application 14/449,003
Technology Center 3600
____________

Before BRUCE T. WIEDER, KENNETH G. SCHOPFER, and
TARA L. HUTCHINGS, Administrative Patent Judges.

SCHOPFER, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–16. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM IN PART.

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 Illinois Tool
Works Inc. Appeal Br. 2.
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BACKGROUND
According to Appellant, “[t]he present invention relates to a door
latch of an electrical appliance, in particular to a dishwasher door latch.”
Spec. 1, ll. 7–9.
CLAIMS
Claims 1 and 13 are the independent claims on appeal. Claim 1 is
illustrative of the appealed claims and recites:
1. A door latch comprising:
a body;
a pawl provided with a rotating shaft, a first gap is
provided between two ends of the rotating shaft, and a mounting
slot is provided in one side of the pawl;
a first pin assembled in the pawl, the first pin is assembled
in the mounting slot of the pawl; and
a spring having two ends which are connected to the body
and the pawl, respectively, a first end of the spring is connected
to the first pin through the first gap.
Appeal Br. 52.
REJECTIONS
1. The Examiner rejects claim 7 under 35 U.S.C. § 112(b) as indefinite.
2. The Examiner rejects claims 1–5, 8, 9, and 11–14 under 35 U.S.C.
§ 102(a)(1) as anticipated by Pagano.2
3. The Examiner rejects claims 10, 15, and 16 under 35 U.S.C. § 103 as
unpatentable over Pagano.

2 Pagano, EP 0917853 A1, pub. May 26, 1999.
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4. The Examiner rejects claims 6 and 7 under 35 U.S.C. § 103 as
unpatentable over Pagano in view of Shin.3
DISCUSSION
Indefiniteness
Claim 7 requires, in part, that “the body and pawl can make rotational
movement relative to each other.” Appeal Br. 53. The Examiner determines
that claim 7 is indefinite because such relative movement is only possible
prior to assembly of the latch and prior to the body being fixed. See Final
Act. 4. We are persuaded of error by Appellant’s arguments. See Appeal
Br. 50. We agree with Appellant that the claim is directed to a door latch by
itself and does not require any appliance on which it may be placed. Thus,
as claimed, one of ordinary skill in the art would understand that the body of
the latch is not fixed and may rotate relative to other parts, as claimed.
Accordingly, we do not sustain this rejection.
Anticipation
Claims 1–5, 9, 11, and 12
With respect to claim 1, the Examiner finds that Pagano discloses a
door latch with a pawl, first pin, and spring assembled, with these parts
connected as claimed. Final Act. 5. More specifically, in relevant part, the
Examiner finds that Pagano discloses a pawl with a mounting slot formed by
holes 34. Id. The Examiner makes clear that the mounting slot identified in
Pagano is not a hole or the holes 34 alone, but includes the space between
holes 34. Id. at 10 (“the ‘slot’ is formed by and therefore, between the holes
34 of Pagano.”). The Examiner further clarifies that “[t]he two pairs of

3 Shin, US 7,552,738 B2, iss. June 30, 2009.
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holes 34 in [Pagano], in unison, is what forms the overall mounting slot,
therefore they define the bounds of the mounting slot, and therefore the
length of the slot extends between both holes 34.” Ans. 6. Further, the
Examiner finds that the claimed “first gap” exists in Pagano between
elements 33 and between two ends of the rotating shaft. Final Act. 5. The
Examiner further clarifies that “[t]he first gap [in Pagano] is between the
ends of the rotating shaft 31, which is most clearly shown in [F]igures 2 and
3 of Pagano ([F]igure 2 explicitly shows the spring end connecting to the
first pin through the first gap).” Ans. 9.
We agree with and adopt the Examiner’s findings with respect to the
anticipation rejection of claim 1. As discussed below, we are not persuaded
of reversible error by Appellant’s arguments.
Appellant argues that the Examiner has identified only a set of holes
in Pagano as the claimed mounting slot, which is not consistent with the
broadest reasonable interpretation of the claimed mounting slot. See Appeal
Br. 11–26. Appellant indicates that the term slot should be interpreted
according to its dictionary definition, which is consistent with how the term
is used in Appellant’s Specification. Id. at 26. Specifically, Appellant relies
on the definition of slot as “a narrow opening or groove” and “a narrow
passage or enclosure.” Id. (quoting Merriam-Webster).
We are not persuaded of error because the Examiner makes clear that
Pagano teaches a slot that not only encompasses holes 34 but also
encompasses the space between walls 33 in Pagano’s pawl. See, e.g.,
Ans. 6. We agree with the Examiner that the walls 33 and holes 34 may be
said to form a “narrow opening” through which the first pin 50 is assembled,
as required by the claim. Thus, even if we agree with Appellant regarding
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the appropriate definition of the term “slot” as including a narrow opening,
we find that Pagano discloses a mounting slot a claimed.
Appellant also argues that Pagano does not disclose a first gap as
claimed. See Appeal Br. 38–40. Here, Appellant asserts that, to the extent
the Examiner relies on the space between holes 34 as the mounting slot, this
space cannot also be considered a first gap as claimed. Id. at 38. Appellant
asserts that the Examiner has not set forth an interpretation of the claim
language and has not provided support for the finding that the first gap is
located between appendices 33 in Pagano. Id. at 39.
We are not persuaded of reversible error. In the Answer, the
Examiner not only makes clear how Pagano discloses the claimed mounting
slot, but the Examiner also makes clear how Pagano discloses the first gap.
Specifically, the Examiner indicates that the first gap is created between
appendices/walls 33 and includes the area into which spring 10 extends to
attach to pin 50. Ans. 9. We agree with the Examiner that Pagano shows a
gap in the pawl through which the spring 10 extends toward the pin 50. See
Pagano Fig. 2. Appellant does not rebut the Examiner’s findings in the
Answer. Further, without additional explanation from Appellant, we are not
persuaded that the area between elements 33 cannot form both a gap and a
portion of the mounting slot.
Based on the foregoing, we sustain the rejection of claim 1 as
anticipated. Because Appellant does not provides separate arguments
regarding the rejection of dependent claims 2–5, 9, 11, and 12, we also
sustain the rejection of those claims for the same reason.
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Claim 8
Claim 8 recites “the first pin is as long as or is slightly shorter than the
mounting slot.” Appeal Br. 53. The Examiner finds that Pagano discloses a
first pin with these relative dimensions. Final Act. 6 (citing Pagano Fig. 1).
The Examiner further explains that the length of the slot in Pagano extends
between the ends of both holes 34 and “[t]he pin 50 extends as long as the
length of the slot.” Ans. 7. We agree with Appellant that the Examiner has
not established that the pin 50 meets the requirements of claim 8. We agree
with Appellant that the Examiner has not identified any evidence in Pagano
showing the scale of the drawings or the relationship in length between the
pin and the outer edges of the holes 34. See Appeal Br. 32. At best,
Figure 1 may suggest that the pin 50 is the same length as the distance
between the outer edges of the holes 34. However, this suggestion is not
sufficient to show that Pagano expressly or inherently discloses that the pin
is as long as or slightly shorter than the mounting slot, as required by the
claim. Accordingly, we do not sustain the rejection of claim 8.
Claims 13 and 14
Claim 13 differs from claim 1 in that it recites a pawl including “a
mounting hole is provided in one side of the pawl.”4 Appeal Br. 54. With
respect to this claim, the Examiner relies on the same findings presented
above with respect to claim 1. See Final Act. 13. The Examiner also notes
that the terms “slot” and “hole” may be used interchangeably, as evidence by

4 To the extent prosecution of this application continues, the Examiner may
wish to consider whether “the mounting slot” lacks proper antecedent basis
in claim 13.
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claim 14, which recites “the mounting hole is a mounting slot. Id.; see also
Ans. 6–7.
Appellant argues that the recitation in claim 14 requires an
interpretation of “mounting hole” that is different and broader than the term
“mounting slot.” Appeal Br. 28–29. Thus, Appellant asserts that the
Examiner’s interpretation of the terms slot and hole as interchangeable is
erroneous. We agree with Appellant that the lack of a rejection under 35
U.S.C. § 112(d) suggests that the Examiner has determined that claim 14
includes a further limitation to claim 13, as required by the statute.
However, we are not persuaded of reversible error in the rejection based
solely on the fact that a “mounting hole” must have a different scope than a
“mounting slot.” As explained above, the Examiner finds, and we agree,
that Pagano includes holes and a space therebetween that may be considered
a mounting slot. Without further explanation from Appellant, we agree with
the Examiner that this structure in Pagano may be considered both a
mounting hole and a mounting slot, as required by claims 13 and 14.
Accordingly, we sustain the rejection of claim 13. Appellant relies on
the same arguments regarding the rejection of claim 14, and for the same
reasons discussed, we also sustain the rejection of claim 14. See Appeal
Br. 30.
Obviousness
Claim 10
Claim 10 depends from claim 1 and recites “the pawl is made of
plastic material.” The Examiner finds that the material with which the pawl
is made would not have a significant effect on the structure or operation of
the pawl, and thus, the Examiner determines that it would have been obvious
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to make the pawl out of plastic “in order to reduce cost of manufacturing,
since it has been held to be within the general skill of a worker in the art to
select a known material on the basis of its suitability for the intended use as
a matter of obvious design choice.” In re Leshin, 125 USPQ 416.
Appellant argues that the Examiner’s reliance on Leshin is misplaced
because in Leshin “the material at issue was a material already used in
devices as claimed in the manner recited. This is not the fact pattern here.
Nowhere is there a pawl made of plastic.” Appeal Br. 44–45. We agree that
the Examiner has not set forth a sufficient showing regarding design choice,
here.
A so-called “design choice” rationale, such as the Examiner relies
upon, has been deemed appropriate where one prior art element or property
is proposed to be substituted for another that achieves the same purpose. See
ACCO Brands Corp. v. Fellowes, Inc., 813 F.3d 1361, 1367 (Fed. Cir. 2016)
(“The prior art consistently locates the two sensors at issue in the shredder’s
feed, and no party disputes that an ordinary artisan would have found this
the obvious location for the combination of sensors. The ordinary artisan
would then be left with two design choices.”); Ex parte Maeda, Appeal
2010-009814, 2012 WL 5294326, at *3 (PTAB Oct. 23, 2012) (informative).
Cf. In re Gal, 980 F.2d 717, 719 (Fed. Cir. 1992) (“The Board held that Gal
had simply made an obvious design choice. However, the different
structures of Gal and Matsumura achieve different purposes.”) Our
reviewing court has cautioned that “[m]erely stating that a particular
[limitation] is a design choice does not make it obvious.” Polaris Indus.,
Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1069 n.4 (Fed. Cir. 2018) (quoting
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Cutsforth, Inc. v. MotivePower, Inc., 636 F. App’x 575, 578 (Fed. Cir. 2016)
(nonprecedential)).
In the instant case, the Examiner does not adequately establish the
predicate finding for a design-choice position — i.e., that the prior art or the
knowledge of one skilled in the art provides an alternative element that
achieves the same purpose as what is claimed. See ACCO Brands, 813 F.3d
at 1367. The Examiner states that using a plastic pawl would reduce
manufacturing costs and that plastic is a known material that could be
selected based on its suitability for the intended use as a pawl. However, the
Examiner provides no evidence or explanation showing that using plastic in
any part of the latch was known to be suitable to support this conclusion.
Accordingly, on the record before us, the Examiner has not sufficiently
supported the reasoning provided. Thus, we do not sustain the rejection of
claim 10.
Claims 15 and 16
Claim 15 depends from claim 13 and recites, “the mounting hole has a
rectangular cross-section with a length greater than a width.” Appeal Br. 54.
Claim 16 depends from claim 1 and recites, “the mounting slot has a
rectangular cross-section with a length greater than a width.” Id. The
Examiner finds that the mounting slot or hole in Pagano extends between the
holes 34 and thus includes a length greater than a width. Final Act. 8. The
Examiner acknowledges that Pagano does not disclose a rectangular cross-
section as required by claims 15 and 16. Id. However, the Examiner
concludes that using a rectangular cross-section would have been obvious as
a matter of design choice and to prevent rotation of the mounting pin relative
to the pawl. Id.
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To the extent the Examiner relies on design choice here, we determine
that the rejection does not adequately support this reasoning for the same
reasons discussed above. In particular, the Examiner does not provide
evidence or explanation showing that the use of a rectangular cross-section
was a known alternative shape for a mounting slot. Further, although the
Examiner provides that a result of using a rectangular mounting slot would
prevent rotation of the pin, the Examiner does not explain why this would
have led one of ordinary skill in the art to replace Pagano’s mounting slot
and pin with a circular cross-section with a mounting slot and pin having a
rectangular cross-section. For example, the Examiner does not explain why
preventing rotation of the pin would provide any benefit such that one of
ordinary skill in the art would have had a reason, or motivation, to make
such a change.
Based on the foregoing, we do not sustain the rejection of claims 15
and 16.
Claims 6 and 7
Appellant does not separately address the obviousness rejection of
claims 6 and 7. These claims ultimately depend from claim 1, and thus, for
the reasons discussed above, we are not persuaded of reversible error in the
rejection of these claims. Accordingly, we sustain the obviousness rejection
of claims 6 and 7.

CONCLUSION
We AFFIRM the anticipation rejection of claims 1–5, 9, and 11–14.
We AFFIRM the obviousness rejection of claims 6 and 7. We REVERSE
the remaining rejections.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136 (a). See 37 C.F.R.
§ 1.136 (a)(l)(iv).

In summary:
Claims
Rejected
35 U.S.C. § Basis  Affirmed Reversed
7 112(b) Indefiniteness 7
1–5, 8, 9, 11–
14
102(a)(1) Pagano 1–5, 9, 11–
14
8
10, 15, 16 103 Pagano 10, 15,
16
6, 7 103 Pagano, Shin 6, 7
Overall
Outcome
1–7, 9, 11–
14
8, 10, 15,
16

AFFIRMED IN PART