Ex Parte Henderson et al

Patent Trial and Appeal Board

Jul 29, 2013

11906480 (P.T.A.B. Jul. 29, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JAMES HENDERSON and KESTER RUDD
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Appeal 2011-007213
Application 11/906,480
Technology Center 3700
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Before ANNETTE R. REIMERS, RICHARD E. RICE, and
MITCHELL G. WEATHERLY, Administrative Patent Judges.
WEATHERLY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the decision of the
Examiner rejecting claims 14-20. Claims 1-13 are withdrawn. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part and enter a NEW GROUND OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50 (b).
Appeal 2011-007213
Application 11/906,480
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The claims are directed to a binding device sizing guide. Claim 14,
reproduced below, is illustrative of the claimed subject matter:
14. A sizing guide for determining the proper size
binding device to use in binding a set of sheets during a
binding operation using a binding machine, the sizing
guide including a plurality of openings, the openings
including a slot portion and a rounded portion adjacent
each other, the rounded portion sized to correspond to the
size of a binding device, the slot portion having a width
corresponding to the maximum thickness of the set of
sheets that should be bound using the binding device
corresponding to the rounded portion.
REFERENCES
The Examiner relies upon the following evidence:
Shea
Scharer
Grippi
Kain
US 1,638,885
US 4,607,993
US 4,986,005
US 5,722,507
Aug. 16, 1927
Aug. 26, 1986
Jan. 22, 1991
Mar. 3, 1998
REJECTIONS
Appellants seek our review of the following rejections:
1. Claims 14-16 and 20 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Shea. Ans. 3-4.
2. Claims 17 and 18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Shea and Scharer. Ans. 5.
3. Claim 19 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Shea, Kain, and Grippi. Ans. 6.
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OPINION
Anticipation of claims 14-16 and 20 by Shea
Appellants group claims 14-16 together and state that these claims
stand or fall with claim 14. App. Br. 4. Appellants also argue that the
rejection of independent claim 20 should be reversed for reasons similar to
those proffered for reversing the rejection of claim 14. Id. at 6.
The Examiner finds that Shea describes every structural element
recited in independent claims 14 and 20. Ans. 4 and 7. The Examiner also
finds that the rounded and slot portions of Shea’s structure are capable of
being sized as recited in independent claims 14 and 20 and therefore meet
the functional or intended-use limitations on the sizes of the rounded and
slot portions. Id. at 6-7 (citing In re Schreiber, 128 F.3d 1473, 1477-78
(Fed. Cir. 1997)). The Examiner determines that the size limitations recited
in claims 14 and 20 merely recite functional characteristics that do not
differentiate the claimed sizing guide from the structurally equivalent device
taught by Shea. Id. at 7.
Appellants do not dispute the Examiner’s finding that Shea describes
every structural element recited in claim 14. App. Br. 5. Nonetheless,
Appellants argue that Shea fails to describe the claimed requirement that the
rounded portion correspond to a size of a binding device and the slot portion
correspond to the maximum thickness of a set of sheets that should be bound
using the corresponding binding device. Id. at 4. Appellants contend that
claims 14 and 20 do not recite the intended use of the sizing guide but rather
“a quality of the structure, specifically the size of one structure [i.e., the
rounded portion] relative to another [i.e., the slot portion].” Reply Br. 2.
We disagree.
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Claim 14 recites a sizing guide having “openings including a slot
portion and a rounded portion” in which “the rounded portion sized to
correspond to the size of a binding device” and “the slot portion having a
width corresponding to the maximum thickness of the set of sheets that
should be bound using the binding device corresponding to the rounded
portion.” Claim 20 recites a sizing guide with apertures and “each aperture
corresponding to a particular size of binding device, the aperture including a
rounded portion and linked to a slot corresponding to the maximum number
of sheets to be bound by the binding device corresponding to the aperture.”
Claims 14 and 20 thus recite, without positively reciting or further defining,
a “binding device” solely to provide a frame of reference for the size of the
rounded and slot portions of the claimed openings or apertures in the sizing
guide. Therefore, the binding device can have any dimension and be
configured to bind any number of sheets.
Because no size limitations exist on the recited binding device, Shea’s
railroad gauge, without any modification, meets the recited size limitations
on the rounded and slot portions. Therefore, we agree with the Examiner
that, under In re Schreiber, Shea anticipates the sizing guide as recited in
independent claims 14 and 20. Appellants proffer no separate argument for
reversing the rejection of dependent claims 15 and 16 other than their
dependency upon claim 14. Accordingly, we affirm the rejection under
§ 102(b) of claims 14-16 and 20 as being anticipated by Shea.
Obviousness of claims 17 and 18 over Shea and Scharer
1. Claim 17
Appellants argue that we should reverse the rejection of claim 17
because it depends upon claim 14, which recites limitations not taught by
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Shea. App. Br. 6. For the reasons expressed above, we affirm the rejection
of claim 14. Therefore, we also affirm the rejection of claim 17.
2. Claim 18
Claim 18 depends upon claim 14 and further recites “the sizing guide
is movable between a storage position in which the sizing guide is contained
within a body of the binding machine, and an operating position in which the
openings of the sizing guide are outside of the body of the binding
machine.”
Appellants argue that Scharer’s “sizing guide 34 is always located on
the outside of the binding machine and does not have [a] storage position in
which the sizing guide is stored within the body of the binding machine.
The sizing guide is always exposed.” App. Br. 7. Appellants thus contend
that neither Scharer nor Shea describes the limitation that the sizing guide be
movable to a storage position “contained within a body of the binding
machine.” Id.
The Examiner finds that Scharer discloses a binding machine with “a
sizing guide (34) which is contained within the body of the binding
machine.” Ans. 5. The Examiner recasts this finding in response to
Appellants’ argument to state that “Scharer discloses a sizing guide as part
of the housing.” Id. at 7 (second emphasis added). We agree with the
second version of the Examiner’s finding, but not the first.
On the record before us, the Examiner has not identified how Scharer
or Shea teach a sizing guide that is “movable between a storage position in
which the sizing guide is contained within a body of the binding machine.”
Therefore, we reverse the Examiner’s rejection of claim 18 under § 103(a).
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Obviousness of claim 19 over Shea, Kain and Grippi
Appellants argue that we should reverse the rejection of claim 19
because it depends upon claim 14, which recites limitations not taught by
Shea. App. Br. 6. For the reasons expressed above, we affirm the rejection
of claim 14. Therefore, we also affirm the rejection of claim 19.
NEW GROUND OF REJECTION
Appellants state “Appellant is not claiming a sizing guide on the
outside of the binding machine, but is claiming one that is contained
within the body.” Reply Br. 4. We disagree with Appellants’
characterization of the scope of claim 18 as reciting a sizing guide contained
within the body of a binding machine. Claim 18 neither positively recites a
binding machine nor places limitations on the manner in which the binding
machine is configured. Rather, claim 18 recites the binding machine solely
as a frame of reference for defining the two positions between which the
claimed sizing guide is movable. Thus, any binding machine, including one
having a storage compartment that could accommodate Shea’s railroad
gauge, may serve as the recited binding machine.
Therefore, we find that Shea’s railroad gauge is capable of being
moved (i.e., movable) between the recited storage position within a binding
machine and the recited operating position outside of the binding machine.
For this reason, and based on the Examiner’s findings and reasoning with
respect to independent claim 14 discussed above, from which claim 18
depends, we reject claim 18 under 35 U.S.C. § 102(b) as being anticipated
by Shea pursuant to our authority under 37 C.F.R. § 41.50(b) to enter new
grounds of rejection.
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DECISION
For the reasons stated above, we:
1. AFFIRM the Examiner’s rejection of claims 14-16 and 20 under 35
U.S.C. § 102(b) as being anticipated by Shea;
2. AFFIRM the Examiner’s rejection of claim 17 under 35 U.S.C.
§ 103(a) as being unpatentable over Shea and Scharer;
3. REVERSE the Examiner’s rejection of claim 18 under 35 U.S.C.
§ 103(a) as being unpatentable over Shea and Scharer;
4. AFFIRM the Examiner’s rejection of claim 19 under 35 U.S.C.
§ 103(a) as being unpatentable over Shea, Kain and Grippi; and
5. ENTER A NEW GROUND OF REJECTION in which claim 18 is
rejected under 35 U.S.C. § 102(b) as being anticipated by Shea.
TIME FOR APPEAL/REHEARING
OF NEW GROUND OF REJECTION
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b), which provides “[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review.” Section
41.50(b) also provides that Appellants, WITHIN TWO MONTHS FROM
THE DATE OF THE DECISION, must exercise one of the following two
options with respect to the new grounds of rejection to avoid termination of
the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the Examiner, in which event the proceeding
will be remanded to the Examiner. . . .
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(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
37 C.F.R. § 41.50(b).
Should Appellants elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed
rejections, the effective date of the affirmance is deferred until conclusion of
the prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejections are overcome.
If Appellants elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final action
on the affirmed rejections, including any timely request for rehearing
thereof.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

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