Ex Parte CHU

Patent Trial and Appeal Board

Oct 31, 2018

13612955 (P.T.A.B. Oct. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/612,955 09/13/2012
36672 7590 10/31/2018
CHARLES E. BAXLEY, ESQUIRE
90 JOHN STREET
SUITE403
NEW YORK, NY 10038
FIRST NAMED INVENTOR
Keng-Fong CHU
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.
19294 B (CFP-025114) 8050
EXAMINER
MICK, STEPHEN A
ART UNIT PAPER NUMBER
3746
MAIL DATE DELIVERY MODE
10/31/2018 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 KENG-FONG CHU
Appeal2017-010921
Application 13/612,955
Technology Center 3700
Before MEREDITH C. PETRA VICK, MICHAEL C. ASTORINO, and
CYNTHIA L. MURPHY, Administrative Patent Judges.
MURPHY, Administrative Patent Judge.
DECISION ON APPEAL
The Appellant1 appeals under 35 U.S.C. § 134 from the Examiner's
rejections of claims 1-9. We have jurisdiction over this appeal under
35 U.S.C. § 6(b).
We REVERSE.
1 "Appellant Chu is the real party in interest." (Appeal Br. 2.)
Appeal2017-010921
Application 13/612,955
STATEMENT OF THE CASE
The Appellant's "invention relates to an easily assembled inflator."
(Spec. 1, 1. 4.)
Sole Independent Claim on Appeal2
1. An easily assembled inflator comprising:
a cylinder having an inner space; an opening end having
an opening; a closed end; and a valve mounted through the
closed end;
a piston rod mounted in the cylinder and having a first
end; a second end; and a holder mounted on the first end;
a piston mounted on the second end of the piston rod and
mounted in the cylinder;
an assembled seal cover mounted around the piston rod
and having a set of cover segments and each cover segment
having a cover top flange formed around an outside wall of the
cover segment, formed adjacent to a top of the cover segment
and corresponding to the opening of the cylinder; and
a sleeve mounted around the opening of the cylinder and
having a sleeve top flange formed around an inside wall of the
sleeve, formed adjacent to a top of the sleeve and corresponding
to the cover top flanges of the assembled seal cover;
wherein the cover segments and the sleeve are separate
components; the cover segments and the sleeve transversely
clamp the cylinder; one of the assembled seal cover and the
sleeve engages with the cylinder.
Mahoney
Johnson
Yang
References3
us 2,386,562
us 4,106,392
us 5,476,372
Oct. 9, 1945
Aug. 15, 1978
Dec. 19, 1995
2 This claim is quoted from the Appellant's Claim Appendix (Appeal Br.,
Claims App.), with revised paragraphing.
3 Our quotations from these references will omit, where applicable, bolding
of drawing-associated reference numerals.
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Appeal2017-010921
Application 13/612,955
Rejections
The Examiner rejects claims 1-3 under 35 U.S.C. § 103(a) as
unpatentable over Johnson and Mahoney. (Final Action 2.)
The Examiner rejects claims 4--9 under 35 U.S.C. § 103(a) as
unpatentable over Johnson, Mahoney, and Yang. (Final Action 7.)
ANALYSIS
The Examiner determines that the claimed inflator would have been
obvious over the combined teachings of Johnson and Mahoney (see Final
Action 2---6); and the Appellant argues that the Examiner does not
sufficiently support this determination (see Appeal Br. 6-17).
As discussed below, we are persuaded by the Appellant's position.
We are persuaded because we, like the Appellant, are unsure of what the
Examiner's proposed combination of the prior art actually entails. And,
insofar as the Examiner is proposing various alternate combinations, too
many questions are left unanswered.
Independent claim 1 requires the inflator to comprise a "cylinder", a
"piston," a "piston rod," a "sleeve mounted around the opening of the
cylinder" and a "seal cover mounted around the piston rod." (Appeal Br.,
Claims App.) The Examiner finds that Johnson discloses an easily
assembled inflator comprising these components. (See Final Action 2.)
Johnson discloses a hand-operated pump 10 comprising a cylinder 11,
a plunger 15, and two end caps 20. (See Johnson, Fig. 1.) "The plunger 15
is assembled with the cylinder [11]," and the two end caps 20 "are then
slipped radially or sidewise onto the [plunger's] stem just above the upper
end of the cylinder." (Johnson, col. 2, 11. 58---62.) These end caps 20 are
shown in Johnson's Figures 2 and 3, reproduced below.
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Appeal2017-010921
Application 13/612,955
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The above drawings show that "each end cap [20] is substantially semi-
circular," and includes a "flat wall 27," a "collar portion 29," and "[i]nner
and outer circumferentially extending skirts 30 and 31." (Johnson, col. 2,
11. 44--49.) The above drawings also show that the inner and outer skirts 30
and 31 are "molded integrally with and depend from the top wall with the
spacing between the skirts being approximately equal to the wall thickness
of the cylinder 11." (Id. at col. 2, 11. 48-52.) A groove 33 in the outer
skirt 31 and a rib 34 in the cylinder 11 "coact" to "hold the caps 20 on the
cylinder with a snap fit." (Id. at col. 2, 11. 55-57.)
As indicated above, independent claim 1 requires the inflator to
comprise a "sleeve mounted around the opening of the cylinder" and a "seal
cover mounted around the piston rod." (Appeal Br., Claims App.) The
Examiner views Johnson's caps 20 as forming both of these components.
(See Final Action 3--4.) More particularly, the Examiner views the outer
skirts 31 of Johnson's caps 20 as collectively forming a sleeve around the
opening of the cylinder 11, and the rest of the end-cap structure as
collectively forming a seal cover around a piston rod. (See id.)
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Appeal2017-010921
Application 13/612,955
Independent claim 1 additionally requires the claimed seal cover to
have "a set of cover segments." (Appeal Br., Claims App.) The Examiner
finds that Johnson's end caps 20 afford a set of cover segments. (See Final
Action 3.) Specifically, the Examiner considers the cover-forming regions
of one cap 20 (i.e., everything but its outer skirt 31) to be one "cover
segment," and the cover-forming regions of the other cap 20 (i.e., everything
but its outer skirt 31) to be another "cover segment." (See id.)
Independent claim 1 further requires "the cover segments and the
sleeve" to be "separate components." (Appeal Br., Claims App.) This is not
the case if Johnson's end caps 20 are viewed as forming both the cover
segments and the sleeve. But, according to the Examiner, "the claimed
invention is achieved by simply modifying a component of Johnson to be
separable rather than integral." (Final Action 9.)
In this regard, the Examiner finds that Mahoney discloses that a
separate "sleeve" can be used in a connection arrangement to achieve certain
"advantages." (Final Action 6.) And the Examiner determines that it would
have been obvious "to modify Johnson with Mahoney to provide the sleeve
separate from the cover segment to be transversely clamped to the cylinder,"
to "achieve" these "advantages." (Id.) The Examiner further explains that
Mahoney "indicate[ s] the obviousness of making an integral component
separable, specifically by modifying the two end caps of Johnson
( elements 20 in Johnson) to provide a sleeve ( clamp member 6 in
Mahoney)." (Answer 4.)
Insofar as the Examiner's proposed modification to Johnson's end
caps 20 really only involves simply modifying them to be separable rather
than integral, this would consist of severing the sleeve-forming portion of
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Appeal2017-010921
Application 13/612,955
each end cap 20 (i.e., its outer skirt 31) from the rest of the end-cap
structure. This supposedly-simple modification would result in two separate
semi-circular outer skirts that must somehow hold themselves, and the rest
of the severed end-cap structure, "on the cylinder with a snap fit." (Johnson,
col. 2, 11. 56-57 .)
However, as argued by the Appellant, in Johnson, each end cap 20 is
"transversely clamped" to the cylinder's upper edge by its inner skirt 30 and
its outer skirt 31. (Appeal Br. 11.) This transverse clamping is possible
because the skirts 30 and 31 are "integrally molded" and the spacing
there between is "approximately equal to the wall thickness of the
cylinder 11." (Johnson, col. 2, 11. 48-51.) If the outer skirt 31 is severed
from the rest of the end cap 20, this transverse-clamping ability would most
certainly wane. And the Examiner offers no discussion as to how, despite
the loss of this transverse-clamping ability, Johnsons' severed semi-circular
outer skirts 31 would still be able to hold themselves, and the rest of the
severed end-cap structure, on the cylinder with a snap fit.
Insofar as the Examiner's proposed modification to Johnson's end
caps 20 also involves joining the just-severed outer skirts 31 to form a
unitary clamp ring (such as Mahoney's ring-shaped clamp member 6), this
endeavor entails more than simply modifying a component of Johnson to be
separable rather than integral. Additionally, as argued by the Appellant (see
Appeal Br. 14), the parts of Johnson's plunger 15 (i.e., piston 16, stem 17,
and hand grip 19) "are all molded integrally with one another," and, due to
this one-piece-plunger construction, "it is not possible to slip a cylinder cap
axially onto the [plunger's] stem." (Johnson, col. 2, 11. 3-5, 38--40.) Indeed,
Johnson's cylinder-capping structure is provided by two semi-circular
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Appeal2017-010921
Application 13/612,955
caps 20, rather than a single circular cap, so that they can be "slipped
radially onto the stem and then attached to the cylinder 11." (Id. at col. 2, 11.
40-44.) The Examiner offers no discussion as to how or why joining the
just-severed outer skirts 31 into a unitary clamp ring would accommodate
this one-piece construction of Johnson's plunger 15.4
Insofar as the Examiner's proposed modification involves
restructuring Johnson's end caps to completely adopt the connection
arrangement shown in Mahoney (see Final Action 5), again, this undertaking
entails more than simply modifying a component of Johnson to be separable
rather than integral. Additionally, as argued by the Appellant, Mahoney's
connection arrangement does not include any segmented semi-circular
components. (See e.g., Appeal Br. 11.) Thus, a whole-sale adoption of
Mahoney's connection arrangement would not include a segmented cover
seal as required by independent claim 1, not to mention being incompatible
with the one-piece construction of Johnson's plunger 15.
Thus, we do not sustain the Examiner's rejection of independent
claim 1 as unpatentable over Johnson and Mahoney.
4 Furthermore, as indicated above, the Examiner's articulated motivation
for the combination is to "achieve" certain "advantages" taught by
Mahoney. (See Final Action 6.) But, as argued by the Appellant, the
advantages supposedly achieved by Mahoney's hose connection are not the
result of its ring-shaped clamp member 6 alone. (See Appeal Br. 13.)
Indeed, Mahoney's connection arrangement "not only includes the ring-
shaped member 6, but also includes so many components and structure,
such as the grooves 9 and the lugs 10." (Id.) And the Examiner does not
address adequately why Mahoney's alleged advantages would not be
compromised by a segmented cover seal, such as formed by Johnson's end
caps 20, and as required by independent claim 1.
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Application 13/612,955
The Examiner's further findings and determinations with respect to
the dependent claims and the additional prior art reference (Yang) do not
compensate for the above-discussed shortcomings in the rejection of
independent claim 1. (See Final Action 6-8.) Thus, we do not sustain the
Examiner's rejection of dependent claims 2 and 3 under 35 U.S.C. § 103(a)
as unpatentable over Johnson and Mahoney; and we do not sustain the
Examiner's rejection of dependent claims 4--9 under 35 U.S.C. § 103(a) as
unpatentable over Johnson, Mahoney, and Yang.
DECISION
We REVERSE the Examiner's rejections of claims 1-9.
REVERSED
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