Ex Parte AokiDownload PDFPatent Trial and Appeal BoardFeb 24, 201612377092 (P.T.A.B. Feb. 24, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/377,092 02/10/2009 AkiraAoki 7812 7590 02/24/2016 CHERNOFF, VILHAUER, MCCLUNG & STENZEL, LLP 601 SW Second Avenue, Suite 1600 Portland, OR 97204 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. YGUC3844 2638 EXAMINER LOPEZ, MICHELLE ART UNIT PAPER NUMBER 3721 MAILDATE DELIVERY MODE 02/24/2016 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte AKIRA AOKI Appeal2014-001204 Application 12/377 ,092 1 Technology Center 3700 Before STEFAN STAICOVICI, ANNETTE R. REIMERS, and JAMES J. MAYBERRY, Administrative Patent Judges. ST AI CO VICI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Akira Aoki (Appellant) appeals under 35 U.S.C. § 134(a) from the Examiner's final decision objecting under 35 U.S.C. § 132(a) to Appellant's Specification; rejecting under 35 U.S.C. § 112, first paragraph, claim 66 as failing to comply with the written description requirement; and rejecting under 35 U.S.C. § 103(a) claims 61 and 66 as unpatentable over Goodstein According to Appellant, the real party in interest is MAX Co., Ltd. Appeal Br. 1 (filed June 13, 2013). Appeal2014-001204 Application 12/377,092 (US 2,202,905, iss. June 4, 1940), Nakamura (JP 11-347966 A, pub. Dec. 21, 1999), and Carlile (US 2,242,967, iss. May 20, 1941).2'3'4 We have jurisdiction over this appeal under 35 U.S.C. § 6(b). SUMMARY OF DECISION We REVERSE. INVENTION Appellant's invention relates to "interlinked staples." Spec. i-f 1. Claims 61 and 66 are independent. Claim 66, with emphasis added, is illustrative of the claimed invention and reads as follows: 66. A roll of paper material configured as a plurality of interlinked paper-made staples, each of which is elongated and is of approximately straight configuration and has two longitudinal edges and first and second leg portions at opposite respective ends thereof, the staples being disposed substantially parallel to each other and adjacent staples of the roll being mutually interlinked at interlinking portions, whereby for binding a plurality of binding sheets the leg portions of a staple are bent in a first direction, inserted through the binding sheets, and bent in a second direction along the binding sheets to be mutually bonded, wherein each of the staples has the interlinking portions in the vicinity of the ends thereof and a slit 2 The Examiner objected under 35 U.S.C. § 132 and rejected under 35 U.S.C. § 112, first paragraph, the same subject matter on the ground that these claimed features are not supported by the original disclosure. See Final Act. 3--4 (mailed Feb. 26, 2013). 3 Claims 1---60, 62, 64, and 65 have been cancelled and claim 63 has been allowed by the Examiner. See Appeal Br. 1; see also Final Act. 7. 4 The Examiner's objection to the Drawings is a petitionable matter, not an appealable matter (see id. at 2-3), and thus, is not within the jurisdiction of the Board. See In re Mindick, 371F.2d892, 894 (CCPA 1967). 2 Appeal2014-001204 Application 12/377,092 between the interlinking portions, wherein the first leg portion of each staple has an adhesion portion in the vicinity of an end thereof for mutually bonding both the leg portions when the leg portions are bent in the second direction, wherein each staple is tapered at each end towards the tips of the staple, wherein the slit extends completely through the paper material and each staple has a hole between the slit and each interlinking portion whereby adjacent staples of the roll are mutually connected only by the interlinking portions in the vicinity of the ends of the staples, and wherein a staple at a free end of the roll is separated from remaining mutually interlinked staples of the roll by cutting from the holes toward external sides of the roll of interlinked staples along a longitudinal direction of the staple to separate the staple at the free end of the roll from the remaining mutually interlinked staples. ANALYSIS The lack of written description rejection and the new matter objection New or amended claims that introduce elements or limitations not supported by the as-filed disclosure violate the written description requirement. See, e.g., In re Lukach, 442 F .2d 967, 968-69 (CCP A 1971 ). While there is no in haec verba requirement, newly added claim limitations must be supported in the Specification through express, implicit, or inherent disclosure. The fundamental factual inquiry is whether the Specification conveys with reasonable clarity to those skilled in the art that, as of the filing date sought, applicant was in possession of the invention as now claimed. See, e.g., Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563---64 (Fed. Cir. 1991 ). In this case, the Examiner finds that there is no support for the limitation "wherein the slit extends completely through the paper material," 3 Appeal2014-001204 Application 12/377,092 as recited in claim 66. Final Act. 4. According to the Examiner, although "a 'slit extending completely through the material' might be alluded in the specification (i.e. the specification describes wherein a breaking and/or cutting off occurs at the interlinked portion 34), the specification doesn't clearly specif[y] wherein said slit extend[ s] completely through the material." Id. at 8. We are not persuaded by the Examiner's position because paragraph 44 of Appellant's Specification, as amended by the amendment filed May 28, 2013, explicitly states "a slit portion 33 in which the slit extends completely through the paper material, as shown in FIG. IC." As correctly noted by Appellant, "[t]he Examiner approved entry of the amendment filed May 28, 2013." Reply Br. 1; see also Adv. Act., mailed July 1, 2013, para. 13 ("The rule 116 amendment to the specification filed 5/28/2013 has been considered and entered."). Accordingly, because the disputed limitation is explicitly described in the Specification, the limitation is supported by Appellant's Specification and therefore, we do not sustain the rejection under 35 U.S.C. § 112, first paragraph, of claim 66 as failing to comply with the written description requirement. The Examiner also objected under 35 U.S.C. § 132(a) to Appellant's Specification on the grounds that "the written description fails to define 'wherein the slit extends completely through the paper material."' Final Act. 3. Ordinarily, an objection is reviewable by petition under 37 C.F.R. § 1.181 and a rejection is appealable to the Patent Trial and Appeal Board. When the issue of new matter presented is the subject of both an objection and a 4 Appeal2014-001204 Application 12/377,092 rejection, the issue is appealable. See MPEP § 608.04(c) (providing that "where the alleged new matter is introduced into or affects the claims, thus necessitating their rejection on this ground, the question becomes an appealable one, and should not be considered on petition even though that new matter has been introduced into the specification also"). To the extent that the objection to the Specification in the Final Rejection turns on the same issues as the rejection under 35 U.S.C. § 112, first paragraph, our decision with respect to the rejection is dispositive as to the corresponding objection. The obviousness rejection Each of independent claims 61 and 66 requires, inter alia, "interlinking portions ... and a slit between the interlinking portions." Appeal Br. 10. The Examiner finds that Goodstein discloses most of the limitations of claims 61 and 66, but "fails to disclose wherein the slit is between the interlinking portions." Final Act. 5---6. Nonetheless, the Examiner further finds that Carlile discloses, "interconnecting a plurality of staples by a slit [21] provided at a center portion of adjacent staples." Id. at 6 (citing Carlile, Fig. 3). The Examiner thus, concludes that it would have been obvious for a person of ordinary skill in the art to provide Goldstein's staples, as modified by Nakamura, with a slit between adjacent staples, as taught by Carlile, "in order to facilitate a clean separation of adjacent staples." Id. Appellant argues that neither Goodstein' s groove 15 nor Carlile' s notch 21 constitutes a "slit," as called for by independent claims 61 and 66, 5 Appeal2014-001204 Application 12/377,092 because neither constitutes "a cut that extends fully through the object that is formed with the slit." See Appeal Br. 8. In response, the Examiner takes the position that the term "slit" denotes "a long narrow cut or groove" and does not require that it extend completely through the material. See Ans. 2-3. We are not persuaded by the Examiner's position because as noted above, Appellant's Specification explicitly describes "a slit portion 33 in which the slit extends completely through the paper material." See Spec. para. 44, Specification Amendment filed May 28, 2013. Although we appreciate the Examiner's general interpretation of the term "slit," "nonetheless, claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art." In re Bond, 910 F.2d 831, 833 (Fed. Cir. 1990) (Internal citation and quotations omitted). As such, to interpret the term "slit" as not requiring extending completely through the material, as the Examiner proposes, is inconsistent with Appellant's Specification. Accordingly, because Goldstein's groove 15 and Carlile' s notch 21 do not extend completely through the material of the staple strip, neither Goldstein nor Carlile discloses a "slit," as called for by claims 61 and 66. The Examiner's use of Nakamura's teachings does not remedy the deficiencies of Goldstein and Carlile as described supra. See Final Act. 5---6. Lastly, with respect to the rejection of claim 66, the Examiner takes an alternative position where firing Goldstein's stapler results in slit 15 "extend[ing] completely through the material of the staples by cutting apart adjacent staples during firing of the stapler." Id. at 6. We do not agree with 6 Appeal2014-001204 Application 12/377,092 the Examiner's position because as Appellant correctly notes, "claim 66 is limited to the roll of paper material being configured as a plurality of interlinked staples whereas upon severing the leading staple from the remaining staples of the strip the leading staple is no longer part of an assembly of interlinked staples." Appeal Br. 8; see also Reply Br. 2. In other words, although we appreciate that upon severing Goldstein's staple groove 15 will extend completely through the material, the resulting staple is not part of a "plurality of interlinked" staples, as called for by claim 66. In conclusion, for the foregoing reasons, we do not sustain the rejection under 35 U.S.C. § 103(a) of claims 61 and 66 as unpatentable over Goodstein, Nakamura, and Carlile. SUMMARY The Examiner's decision to reject claims 61 and 66 is reversed. REVERSED 7 Copy with citationCopy as parenthetical citation