Ex Parte Koyama

Patent Trial and Appeal Board

Mar 13, 2013

10511304 (P.T.A.B. Mar. 13, 2013)

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.
10/511,304 10/15/2004 Takao Koyama 009682-138 9491
7590 03/13/2013
Robert G Mukai
Burns Doane Swecker & Mathis
PO Box 1404
Alexandria, VA 22313-1404
EXAMINER
NGUYEN, TUAN N
ART UNIT PAPER NUMBER
3751
MAIL DATE DELIVERY MODE
03/13/2013 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 TAKAO KOYAMA
____________________

Appeal 2011-001429
Application 10/511,304
Technology Center 3700
____________________

Before: WILLIAM V. SAINDON, SCOTT A. DANIELS, and
JEREMY M. PLENZLER, Administrative Patent Judges.

PLENZLER, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
decision rejecting claims 21, 37, 51, 53, 55, 57, and 59-61 under 35 U.S.C.
§ 103(a) as being unpatentable over Otsuka (US 4,065,215; iss. Dec. 27,
1977), Takanashi (US 6,428,235 B1; iss. Aug. 6, 2002), and Madaus (US
4,979,840; iss. Dec. 25, 1990). Claims 22-36, 38-50, 52, 54, 56, and 58 are
withdrawn. Claims 1-20 are cancelled. We have jurisdiction under 35
U.S.C. § 6(b).
We REVERSE all rejections and enter a NEW GROUND OF
REJECTION.

CLAIMED SUBJECT MATTER
Claims 21 and 59 are independent. Claim 21, reproduced below, is
illustrative of the claimed subject matter:
21. A writing instrument comprising:
an ink occlusion body disposed in a barrel, the ink
occlusion body including a capillary material impregnated with
ink;
a pen tip including a capillary material disposed in a
writing part of the writing instrument, wherein the ink
impregnated in the ink occlusion body is fed to the pen tip via
an ink guiding feed;
wherein ink flows from the capillary material of said
occlusion body by virtue of capillary force and ink flows into
the capillary material of said pen tip by virtue of capillary force,
said ink guiding feed lacking any capillary material therewithin;
wherein said ink guiding feed is tubular and disposed
within the barrel between the ink occlusion body and the pen tip
so as to prevent outside air from flowing in when the ink
occlusion body is impregnated with ink, and allowing outside
air to flow into the barrel as ink in the ink occlusion body is
depleted; and
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wherein said ink guiding feed has visibility such that a
sign of exhausting the ink fed from the ink occlusion body to
the pen tip is detected by visually observing the empty ink
guiding feed via a visible part formed in the barrel.

OPINION
NEW GROUND OF REJECTION – Indefiniteness – Claims 21, 37, 51, 53,
55, 57, and 59-61
At the outset, we note that claim 21 recites an “ink guiding feed
lacking any capillary material therewithin” and claim 59 recites an “ink
guiding feed defined by a hollow tubular body without any capillary material
within the hollow tubular body.” The meaning of “capillary material” is
unclear. Appellant’s Specification does not describe, much less define the
meaning of, “capillary material.” Appellant’s Specification simply provides
example materials, such as fiber bundles, for the ink occlusion body and the
pen tip (recited as including a capillary material in claim 21). See Spec. 14,
18.
The noun capillary is defined as “a tube with a small bore,” such as a
capillary tube. Dictionary.com, Dictionary.com Unabridged, Random
House, Inc., http://dictionary.reference.com/browse/capillary (last visited
March 12, 2013). The adjective capillary is defined as “of or pertaining to
the apparent attraction or repulsion between a liquid and a solid, observed in
capillarity.” Id. Thus, “capillary material” could mean a material defining a
tube with a small bore, such as the capillary conduit 28 defined in the
thermoplastic synthetic resin forming the nib 24 in Otsuka (see Otsuka, col.
2, ll. 34-42) or a material that itself provides capillary action, such as the
fiber bundles discussed in Appellant’s Specification (see Spec. 14, 18). As a
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result, ambiguity exists and there are multiple possible claim constructions
available.
This ambiguity is brought into focus by Appellant’s conflicting
arguments regarding the nib 24 and capillary conduits 28 formed in the nib
24 of Otsuka. In one instance, Appellant appears to imply that the
thermoplastic synthetic resin and capillary conduits 28 defined therein form
a capillary material. See App. Br. 6 (“the capillary conduit 28 of Otsuka has
a capillary force for drawing ink from the reservoir, whereas the recited ink
guiding feed lacks any capillary material within”). In another instance,
Appellant appears to imply the opposite, that the thermoplastic synthetic
resin and capillary conduits 28 defined therein do not form a capillary
material. See App. Br. 7 (“the nib 24 of Otsuka, allegedly corresponding to
the claimed pen tip, is formed of a thermoplastic synthetic resin and no
mention is made of its capillary ability, whereas the recited pen tip includes
a capillary material”).
The Examiner’s rejection likewise brings out this ambiguity. In one
instance, the Examiner notes that the thermoplastic synthetic resin and
capillary conduits 28 of Otsuka include a capillary material “since it has a
capillary force to draw ink from member 22 out onto the writing surface”
even though a capillary felt material is not used. Ans. 3. In another
instance, the Examiner notes that the same thermoplastic synthetic resin and
capillary conduits 28 defined therein “me[e]t the limitation of the ink
guiding feed lacking any capillary material since it is not made from
capillary felt material.” Ans. 4. The Examiner then states that “the ink
guiding feed 24 of Otsuka [which includes the capillary conduits 28] is not
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made of capillary material” but “has the structure that causes capillary
action.” Ans. 5.
“[I]f a claim is amenable to two or more plausible claim constructions,
the USPTO is justified in requiring the applicant to more precisely define the
metes and bounds of the claimed invention by holding the claim . . .
indefinite.” Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008)
(precedential). Accordingly, and pursuant to our authority under 37 C.F.R.
§ 41.50(b), we enter a NEW GROUND OF REJECTION against claims 21,
37, 51, 53, 55, 57, and 59-61 under 35 U.S.C. § 112, second paragraph, as
being indefinite for failing to particularly point out and distinctly claim the
subject matter which Appellant regards as the invention.

Obviousness – Claims 21, 37, 51, 53, 55, 57, and 59-61
Because we found that claims 21, 37, 51, 53, 55, 57, and 59-61 are
indefinite, a determination of the scope of these claims would require us to
resort to considerable speculation as to the meaning of the terms employed
and assumptions as to the scope of the claims. Therefore, any determination
on the merits of the Examiner’s rejection of claims 21, 37, 51, 53, 55, 57,
and 59-61 is imprudent. See In re Steele, 305 F.2d 859, 862 (CCPA 1962).
As such, we are constrained to reverse, pro forma, the Examiner’s rejection
of claims 21, 37, 51, 53, 55, 57, and 59-61 under 35 U.S.C. § 103(a) as being
unpatentable over Otsuka, Takanashi, and Madaus. We hasten to add that
this is a procedural reversal rather than one based upon the merits of the
rejections.

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DECISION
We REVERSE the Examiner’s decision to reject claims 21, 37, 51,
53, 55, 57, and 59-61.
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a NEW
GROUND OF REJECTION of claims 21, 37, 51, 53, 55, 57, and 59-61
under 35 U.S.C. § 112, second paragraph.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground 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. . . .
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record. . . .
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).

REVERSED; 37 C.F.R. § 41.50(b)

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