Ex Parte Lee

Board of Patent Appeals and Interferences

Jan 29, 2009

10617083 (B.P.A.I. Jan. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte PEI-YUAN LEE
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Appeal 2008-6313
Application 10/617,083
Technology Center 3700
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Decided: January 29, 2009
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Before WILLIAM F. PATE, III, LINDA E. HORNER, and
KEN B. BARRETT, Administrative Patent Judges.

BARRETT, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pei-Yuan Lee (Appellant) seeks our review under 35 U.S.C. § 134
from a final rejection of claims 16-18 and 20-26. We have jurisdiction
under 35 U.S.C. § 6(b).
Appeal 2008-6313
Application 10/617,083

SUMMARY OF THE DECISION
We AFFIRM.
THE INVENTION
Appellant’s claimed invention pertains to an apparatus for punching
an article such as a stack of papers. (Spec. 1, ¶ [0001].) The apparatus
includes a main body which exerts a punching force on the article, a levering
rod with a bent portion, and a roller bearing for transmitting the externally
imparted depressing force to the main body. (See, e.g., claim 16; Spec. 4,
¶ [0014].) According to the Appellant, the configuration of the levering rod
allows the apparatus to have a longer levering rod without increasing the
height or volume of the apparatus. (Spec. 7, ¶ [0026].) Claim 16,
reproduced below, is representative of the subject matter on appeal.
16. A punching apparatus for punching holes in an article,
comprising:
a main body for receiving therein said article and
configured to be depressed in a levering action to exert a
punching force on said article to punch holes;
a roller bearing for transmitting a depressing force to said
main body by depressing said main body to provide said
punching force in response to an external force; and
a non-linear levering rod comprising a force-receiving
portion for being applied thereonto said external force, a pivot
portion coupled to said main body for allowing said levering
rod to pivot relative to said main body in response to said
external force, a bent portion connected to said force-receiving
portion and said pivot portion, wherein the levering rod is
substantially linear between the pivot portion and the bent
portion and wherein the levering rod is substantially linear
between the force-receiving portion and the bent portion and
wherein the levering rod between the force-receiving portion
and the bent portion is kept at a substantially horizontal level in
a rest state, a depressing-force exerting portion disposed only
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between said pivot portion and said bent portion and coupled to
said roller bearing for transmitting said roller bearing to move,
said non-linear levering rod transmitting said roller bearing to
depress said main body while moving in response to said
external force.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Brennan US 2,149,268 March 7, 1939
Van Cleave US 3,890,870 June 24, 1975
Mori US 4,466,322 Aug. 21, 1984
The rejection before us for review is the Examiner’s rejection of
claims 16-18 and 20-26 under 35 U.S.C. § 103(a) as unpatentable over
Brennan in view of Van Cleave or, alternatively, Mori.

ISSUE
The issue before us is whether the Appellant has shown that the
Examiner erred in rejecting claims 16-18 and 20-26 as unpatentable over
Brennan in view of Van Cleave or, alternatively, Mori. This issue turns on
whether the references disclose all of the limitations of claim 16.

FINDINGS OF FACT
We find that the following enumerated findings are supported by at
least a preponderance of the evidence.
1. Brennan discloses a perforating device for punching holes in
sheets of paper. (Brennan 1, col. 1, ll. 1-5, 15-18.) Brennan’s device has a
main body that includes a base 11, punch 24, and bottom wall 18. (Brennan
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2, col. 1, ll. 17-36.) Brennan’s main body receives the paper to be punched
and is configured to be depressed in a levering action to exert a punching
force on the paper. (Id.)
2. Brennan also teaches a non-linear levering rod 27, 28 with a
pivot portion (at pin 29) coupled to the main body. (Brennan 2, col. 1,
ll. 21-24; Fig. 8.)
3. Brennan teaches a roller bearing 32 for transmitting a
depressing force to the main body by depressing the punch in response to an
external force. (Brennan 2, col. 1, ll. 24-31.)
4. Brennan’s roller bearing 32 is mounted on pin 31 that is
attached to the levering rod. (Brennan 2, col. 1, ll. 24-25; Fig. 8.) The pin 31
transmits the applied external force to the roller bearing which, in turn,
transmits the force to the punch. (See id. 2, col. 1, ll. 24-31; Fig. 8.)
Therefore, the portion of the levering rod at pin 31 is the depressing-force
exerting portion.
5. Figure 8 of Brennan is reproduced below.

Figure 8 shows an embodiment of Brennan’s device in which the levering
rod 27, 28 is bent. In this embodiment, the bent portion of the rod is slightly
to the left of the pin 31. The pivot portion in Brennan’s figure 8 (at pin 29)
is to the right of the pin 31. Therefore, Brennan discloses a depressing-force
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exerting portion of the levering rod disposed only between the pivot portion
and the bent portion.
6. Van Cleave teaches a levering rod in which the section 74
between the force-receiving portion and the bent portion is kept at a
substantially horizontal level in a rest state. (Van Cleave, col. 3, ll. 12-15,
Fig. 1.)
7. Mori teaches a handle 5 which is kept at a substantially
horizontal level in a rest state. (Mori, col. 4, ll. 17-20; Fig. 11.) Mori further
teaches that the handle is maintained “substantially in parallel to the base
member 1, thereby making the punch as a whole compact when it is, for
example, transported.” (Id., col. 4, ll. 40-43.)

PRINCIPLES OF LAW
We determine the scope of the claims in patent applications by giving
the claims “their broadest reasonable interpretation consistent with the
specification” and by reading the claim language “in light of the
specification as it would be interpreted by one of ordinary skill in the art.”
In re Am. Acad. Of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)
(citations omitted). We must be careful not to read a particular embodiment
appearing in the written description into the claim if the claim language is
broader than the embodiment. See Superguide Corp. v. DirecTV
Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004).
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
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subject matter pertains.’” KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1734 (2007) (quoting 35 U.S.C. § 103). The question of obviousness is
resolved on the basis of underlying factual determinations including: (1) the
scope and content of the prior art, (2) any differences between the claimed
subject matter and the prior art, (3) the level of skill in the art, and (4) where
in evidence, so-called secondary considerations. Graham v. John Deere Co.
of Kansas City, 383 U.S. 1, 17-18 (1966); see also KSR Int’l Co., 127 S. Ct.
at 1734 (“While the sequence of these questions might be reordered in any
particular case, the [Graham] factors continue to define the inquiry that
controls.”).
ANALYSIS
Appellant argues the rejected claims as a group. (See Appellant’s
Amended Appeal Brief dated July 31, 2007 (App. Br.) 4; see also id. 7, 10
(referring generally to “the claimed invention.”)) We select claim 16 as the
representative claim, and claims 17-18 and 20-26 stand or fall with claim 16.
37 C.F.R. § 41.37(c)(1)(vii).
Claim 16 recites a non-linear levering rod with “a depressing-force
exerting portion disposed only between said pivot portion and said bent
portion and coupled to said roller bearing[.]” We understand Appellant to
argue that the combined references lack this structure. (See App. Br. 5-7.)
Brennan discloses a depressing-force exerting portion at the location
of the pin upon which the roller bearing is mounted. (Fact 4.) Appellant’s
Specification indicates that the claimed “bent portion” is the point where two
linear sections of the levering rod intersect. (See Spec. 6, ¶ [0025]; Fig. 2(c)
(showing dimensions d2 and d3 both measured from point D); see also Fig.
2(a).) In the embodiment shown in figure 8 of Brennan, the bent portion of
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the rod is slightly to the left of the roller pin. (Fact 5.) The pivot portion in
Brennan’s figure 8 is to the right of the roller pin. (Id.) Thus, Brennan does
disclose the recited depressing-force exerting portion disposed only between
the pivot portion and the bent portion, and the depressing-force exerting
portion coupled to the roller bearing. (Facts 4, 5.)
Appellant, arguing that Brennan’s roller is coupled to the bent portion,
refers to certain sections of Brennan’s specification and “the relevant figures
in Brennan.” (App. Br. 5 (citing Brennan 2, col. 1, ll. 17-36; id., col. 2,
ll. 29-40)). Appellant does not explain, and it is not readily apparent, how
those sections of Brennan’s specification and the “relevant figures” support
Appellant’s position.
Appellant asserts that Brennan has a “serious drawback.” (App.
Br. 5.) Appellant speculates that Brennan’s handle may break at the bent
portion in a hypothetical situation involving excessive external applied force
and a handle made of plastic. (Id.) However, a propensity for Brennan’s
handle to break at the bent portion does not negate Brennan’s disclosure of
the claimed structure.
Appellant quotes from the Specification’s description of exemplary
levering rod dimensions and the “effectively increased” leverage. (App.
Br. 6.) Appellant appears to contend that the exemplary configuration is
“inventive structure” not taught by the prior art. (App. Br. 6-7.) Appellant’s
contention is not commensurate in scope with claim 16, which does not
require the quoted dimensions or any corresponding increase in leverage.
Appellant, referring to Figure 2(a) of the Specification, also asserts
that “in the claimed invention the punching line is parallel to the non-linear
rod.” (App. Br. 7.) Appellant argues that this structure is not taught or
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suggested by any of the cited references or the combination thereof. (App.
Br. 10.) This argument is not persuasive. Claim 16 does not contain
language requiring a punching line parallel to the non-linear rod, and we
decline to read the configuration of the depicted embodiment into the claim.
As to the Van Cleave and Mori references, Appellant does not
assert error in the Examiner’s findings regarding a levering rod kept at a
substantially horizontal level in a rest state (see Ans. 3-4). Appellant also
does not assert error in the Examiner’s rationales supporting the combination
of the references.
Appellant has failed to persuade us of error in the Examiner’s
conclusion of obviousness of claim 16, and claims 17, 18 and 20-26, which
fall with claim 16.

CONCLUSION
We conclude that the Appellant has failed to show that the Examiner
erred in rejecting claims 16-18 and 20-26 under 35 U.S.C. § 103(a) as
unpatentable over Brennan in view of Van Cleave or, alternatively, Mori.

DECISION
The decision of the Examiner to reject claims 16-18 and 20-26 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED
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JRG

AUSTIN RAPP & HARDMAN
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