Ex parte AOKI

Board of Patent Appeals and Interferences

May 7, 1998

08347141 (B.P.A.I. May. 7, 1998)

Application for patent filed November 23, 1994.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte YOSHIHIRO AOKI

_____________
Appeal No. 97-4244
Application 08/347,1411
______________
ON BRIEF
_______________
Before CALVERT, McQUADE and NASE, Administrative Patent Judges.
CALVERT, Administrative Patent Judge.
Appeal No. 97-4244
Application 08/347,141
2
DECISION ON APPEAL
This is an appeal from the final rejection of claims 6,
8 and 10 to 14. Claims 7, 9 and 15 to 28, the other claims
remaining in the application, stand withdrawn from consideration
under 37 CFR § 1.142(b) as being directed to nonelected species.
The subject matter in issue concerns a magnetic lock
device used to fasten together two objects, such as the flap and
body of a handbag. The appealed claims are reproduced in the
Appendix to appellant’s brief.
The reference applied in the final rejection is:
Humiston 3,324,521 June 13, 1967
Claims 6, 8 and 10 to 14 stand finally rejected as
anticipated by Humiston, under 35 U.S.C. § 102(b).
Claim 6
Appellant asserts that claim 6, the only independent
claim on appeal, is not anticipated by Humiston, because Humiston
does not disclose (1) “a curled edge . . . positioned radially
laterally at said peripheral marginal edge [of the ferromagnetic
plate],” as recited in lines 9 to 11 of the claim, and (2) a
“flat disk plate having a thickness to be accommodated within the
Appeal No. 97-4244
Application 08/347,141
3
thickness of the second object so as not to form a thickened
portion bulging therefrom,” recited in lines 17 to 19. We will
discuss these arguments separately.
(1) In reading claim 6 on Humiston as the examiner has
done, the reference discloses a ferromagnetic plate 13 with a
peripheral edge 15. Attached to the peripheral edge is a holder
shell 22 which extends radially outward to a curled edge 26, 27
to receive the lugs 29 of an attaching device. As we understand
appellant’s argument, it is that Humiston’s curled edge 26, 27 is
not “positioned radially laterally at the peripheral marginal
edge” of Humiston’s ferromagnetic plate 13, but rather is located
“radially outwardly” and “substantially axially spaced” from
peripheral edge 15 of plate 13 (brief, page 11). In other words,
appellant seems to be arguing that “radially laterally at said
peripheral marginal edge” means that the curled edge must be at
the same radial distance from the axis of the ferromagnetic plate
as the peripheral marginal edge of the plate, and must not be
axially spaced from the edge of the plate, i.e., must be in the
same plane as the plate.
Appellant and the examiner have engaged in considerable
discussion as to the meaning of the terms “radially” and
“laterally,” and as to what the broadest reasonable
Appeal No. 97-4244
Application 08/347,141
4
interpretation of these terms is, citing In re Pearson, 494 F.2d
1399, 1404,
181 USPQ 641, 645 (CCPA 1974). However, it is unnecessary to
resolve this issue, because we note that on page 4 of the brief,
appellant states that claim 6 “is generic to all of the disclosed
species,” and the species disclosed in Figures 6b and 9, for
example, have a curled edge 35 which extends radially beyond the
peripheral edge of the ferromagnetic plate 29 and is somewhat
below the plane of the plate. Accordingly, if claim 6 is generic
to such species as Figures 6b and 9, as appellant asserts that it
is, the term “radially laterally at said peripheral marginal
edge” must be inclusive of a curled edge which is located
radially beyond the periphery of the ferromagnetic plate, and is
not located in the plane of the plate. The claim is therefore
readable on the curled edge 26, 27 of Humiston, which is located
radially beyond the periphery 15 of plate 13, and is not in the
plane of the plate.
(2) Humiston discloses an attaching device having an
annular, flat disk plate 28. As shown in Figs. 1 and 2, the
plate, although it has a thickness less than the thickness of the
Appeal No. 97-4244
Application 08/347,141
5
“second object” (garment flap) 8, is not within the thickness of
the object. Appellant argues that (brief, page 12)
even a cursory consideration of Figures 1
and 2 of Humiston shows that the “annular,
flat disk plate” 28 of Humiston is positioned
entirely outwardly of the thickness of second
object 8 and clearly forms a bulge above the
surface thereof. The Examiner’s position to
the contrary simply is unsupportable.
The problem with this argument is that the “second
object” is not recited as an element of the combination, but
rather it is recited as something to which the second element is
“to be attached.” Also, the claim does not limit the second
object or recite any particular thickness or other
characteristics of the second object in relation to the thickness
of the disk. Thus, while Figs. 1 and 2 of Humiston show the disk
located outside the second object 8, this is not conclusive
on the issue of anticipation. Humiston discloses that second
object 8 is the flap of a garment, and garments may be made of
many different materials. The location of disk 28 in relation to
the material would therefore depend on what type of material
second object 8 consisted of. If, for example, second object 8
Appeal No. 97-4244
Application 08/347,141
While the center portion 32 of ring 30 might still bulge2
from the second object 8, disk 28 would not.
6
were a bulky, fluffy material, when the attaching member of
Humiston was assembled to the fastener, the disk 28 would sink
down into the material to such an extent that it would then, in
the words of claim 6, be “accommodated within the thickness of
the second object so as not to form a thickened portion bulging
therefrom.” The disk 28 disclosed by Humiston therefore meets2
the limitations recited in the last three lines of claim 6.
Accordingly, the apparatus disclosed by Humiston
satisfies all the limitations of claim 6, and we will sustain the
rejection of that claim under § 102(b).
Claim 8
Claim 8 recites:
8. A magnetic lock device as claimed in claim 6,
wherein said curled edge is formed on the outer periphery of a
metal disk plate that is rigidly attached to said ferromagnetic
plate centrally thereof.
The examiner reads the recited metal disk plate on
plate 30 of the attaching device of Humiston, and takes the
position that the curled edge 26, 27 is “formed on” the outer
edge of plage 30 because, as we understand it, when the fastener
and attaching device are assembled together on second object 8
Appeal No. 97-4244
Application 08/347,141
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they thus constitute a single item. We do not agree. We do not
consider it to be reasonable to interpret a specific recitation
that the curled edge is formed on one member (disk plate) as
inclusive of a structure in which the curled edge is formed on
a member (Humiston’s shell 22) attached to that one member
(Humiston’s plate 30).
We therefore will not sustain the rejection of claim 8.
Claims 10 to 14
Since claims 10 to 14 are all either directly or
ultimately dependent on claim 8, the rejection of which under
§ 102(b) will not be sustained, the rejection of claims 10
to 14 on that ground will likewise not be sustained.
Conclusion
The examiner’s decision to reject claim 6 is affirmed,
and to reject claims 8 and 10 to 14 is reversed.
No time period for taking any subsequent action in con-
nection with this appeal may be extended under 37 CFR § 1.136(a).
AFFIRMED-IN-PART
Appeal No. 97-4244
Application 08/347,141
8
IAN A. CALVERT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 97-4244
Application 08/347,141
9
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