Ex Parte Louw

Board of Patent Appeals and Interferences

Jun 22, 2012

10888699 (B.P.A.I. Jun. 22, 2012)

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.
10/888,699 07/09/2004 Henry John Louw P/2540-50 5359
2352 7590 06/25/2012
OSTROLENK FABER LLP
1180 AVENUE OF THE AMERICAS
NEW YORK, NY 10036-8403
EXAMINER
DURHAM, NATHAN E
ART UNIT PAPER NUMBER
3765
MAIL DATE DELIVERY MODE
06/25/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte HENRY JOHN LOUW
__________

Appeal 2010-006062
Application 10/888,699
Technology Center 3700
___________

Before SCOTT R. BOALICK, MARC S. HOFF, and
BRADLEY W. BAUMEISTER, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL
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/888,699
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- 2 -
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NVENTIO
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angers. (
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,

Appeal 2010-006062
Application 10/888,699

- 3 -
contacting and thereby leaching corrosive chemicals onto the connecting
part 115, which would reduce the strength and wear-resistance of the
connecting part 115. (Spec. ¶¶ 11-12, 15.)
Claim 1 sets forth the invention as follows:
1. A clip for gripping a fabric, the clip comprising:
a first arm;
a second arm;
a connecting portion operatively joining the second arm
and the first arm and structured to bias the second arm toward
the first arm; and
a blocking member configured to prevent the fabric from
contacting the connecting portion when the fabric is inserted
between the second arm and the first arm, wherein the blocking
member is structured such that there is an air gap between the
blocking member and the connecting portion, and wherein the
first arm, second arm and connecting portion are integral with
each other such that they cannot be completely separated from
each other.

ANTICIPATION REJECTION OVER BOND
Claims 1-3, 5-12, and 14-24 stand rejected as anticipated by Bond.
Appellant addresses claims 1-3, 5-12, and 14-24 collectively. (App. Br.
6:23–7:10.)
The Examiner cites the garment clip of Bond’s Figures 2 and 3,
reproduced below, as anticipating claim 1. (Ans. 4:2-11.) The Examiner
particularly cites Bond’s arms 24, 25, spring 26, and interlocking projections
28, 29, 35, 37 as respectively constituting first and second arms, a
connecting portion, and a blocking member as claimed. (Id.)
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06062
/888,699
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ed garmen
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clip includ
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(Col. 3, ll.
tion opera
to bias the
at Bond’s
tively join
- 4 -
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of Bond’s
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ing the se
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ond arm a
iew of Bo
ond’s Figu
garment
s 24, 25 (“
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tions 28,
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.) The
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rm”
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t arm and
d
Appeal 2010-006062
Application 10/888,699

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structured to bias the second arm toward the first arm” as claimed.
Appellant particularly contends the following (App. Br. 6:10-13 (emphasis
omitted)):
As is noted above, the jaws 24 and 25 are merely held
adjacent to each other via the clip 26. The operable connection
between the two is the result of the pivot formed at the top part
of the jaws 24, 25 respectively. It is clear that there is no bias
provided at this point. Further, it is clear that the pivot at the
top of the clips allows for separation of the arms from each
other as well.
The Examiner responds as follows (Ans. 10:20–11:4):
Bond actually states that “each clip 12 is formed of two jaws
24, 25 which are pivotally mounted with respect to each other
and a spring clip which biases the lower clamping ends of the
jaws 24, 25 together”. From this recitation and the supporting
figures of Bond, it is very clear that Bond discloses “a
connecting portion operatively joining the second arm and the
first arm and structured to bias the second arm toward the first
arm”.
We agree with the Examiner. Given the construction of Bond’s clip
(discussed supra), the spring 26 and the interlocking projections 28, 29, 35,
37 clearly cooperate to operatively join and bias the arms 24, 25 together.
Despite this cooperation, Bond expressly states that the “spring [26] holds
the two jaws [24, 25] together and biases the jaws [24, 25] together at their
clamping ends [32].” (Col. 1, ll. 18-20.) We similarly view the spring 26 as
holding and biasing the arms 24, 25 together and, thus, as “operatively
joining” and “bias[ing]” the arms 24, 25 as claimed. Appellant presents no
reason why the noted cooperation of the spring 26 and projections 28, 29,
35, 37 precludes reading the claimed “connecting portion” only on Bond’s
spring 26.
Appeal 2010-006062
Application 10/888,699

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B. “the first arm, second arm and connecting portion are integral with
each other such that they cannot be completely separated from each
other”
Contentions
Appellant argues that Bond’s arms 24, 25 and spring 26 are not
“integral with each other such that they cannot be completely separated from
each other,” as claimed, because the arms 24, 25 are merely “held adjacent
to each other” by the spring 26. (App. Br. 6:1-4.)
The Examiner responds that the “integral” claim language is broad
enough to encompass the assemblage of Bond’s arms 24, 25 and spring 26,
because the spring 26 is “snapped” into recesses 38, 41 of the arms 24, 25
“in a permanent manner.” (Ans. 11:11-15 (citing Bond, col. 4, ll. 60-64)
(emphasis omitted).)
Principles of Law
During examination of a patent application, claims are given a
broadest reasonable construction consistent with the applicant’s
specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed.
Cir. 2004). It is the use of the words in the context of the written description
and customarily by those skilled in the relevant art that accurately reflects
both the “ordinary” and the “customary” meaning of the terms in the claims.
Ferguson Beauregard/Logic Controls, Div. of Dover Res., Inc. v. Mega Sys.,
LLC, 350 F.3d 1327, 1338 (Fed. Cir. 2003).
[The claims] are part of a fully integrated written instrument,
consisting principally of a specification that concludes with the
claims. For that reason, claims must be read in view of the
specification . . . . [T]he specification is always highly relevant
to the claim construction analysis. Usually, it is dispositive; it
is the single best guide to the meaning of a disputed term.
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Application 10/888,699

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Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc)
(citations omitted) (internal quotation marks omitted).
Analysis
Viewed in light of the term’s usage in Appellant’s Specification, we
conclude that Bond’s arms 24, 25 and spring 26 cannot be reasonably said to
be “integral” with one another. Appellant’s Specification does not provide
an express definition of the term “integral.” However, Appellant’s
Specification does state that the clip’s arms 105, 111 and connecting part
115 may be “formed separately and then coupled to one another” or,
alternatively, “formed as one integral piece, for example, by injection
molding.” (Spec. ¶ 10.) Thus, Appellant’s Specification does not
completely clarify whether an “integral” structure is (1) limited to a unibody
construction (such as a hanger made by mold injection or metal extrusion);
or alternatively (2) broad enough to read on, for example, a structure whose
parts have been welded, glued, or otherwise bonded together. However, we
need not decide that issue. Regardless of exactly where the line should be
drawn, the Specification is reasonably clear at least in indicating that an
“integral” structure is not one that is capable of being “formed separately
and then coupled to one another.” (Id.)
Appellant correctly noted as much in the Amendment prompting the
final rejections before us, arguing that Bond’s “elements are separately
manufactured and then connected together when compared to the integral
formation of the first arm, second arm and connecting portion of claim 1.”
(Amdt. 11 (filed July 3, 2008).) Though Bond’s arms 24, 25 and spring 26
are snap-fit together “in a permanent manner” (Col. 3, ll. 32-35; col. 4, ll.
28-37, 60-64), they are nonetheless separately manufactured and then
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Application 10/888,699

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connected together. They are not “integral with each other” as required by
claim 1 in view of the Specification.
We note that independent claim 1 does not state that the first arm,
second arm, and connecting portion are merely integral. Rather, it further
recites that these components “are integral with each other such that they
cannot be completely separated from each other” (emphasis added). We
understand that the emphasized language does not add any additional
structural limitations to the claim. We, instead, understand this language to
be a statement of the physical characteristic that inherently results from
constructing the components in an integral form.
For these reasons, we do not sustain the anticipation rejection of claim
1 over Bond, or of claims 2, 3, and 5-9, which depend from claim 1.
Independent claims 10, 18, and 21-24 also recite that the first arm, second
arm, and connecting portion (or means for biasing, per claim 24) are integral
with each other. Accordingly, we likewise do not sustain the anticipation of
these claims, or of claims 11, 12, 14-17, 19, and 20, which depend from
claims 10 and 18.

ANTICIPATION REJECTION OVER MORGAN
Claims 1-3, 5-12, and 14-24 also stand rejected as anticipated by
Morgan. Appellant again addresses claims 1-3, 5-12, and 14-24 collectively.
(App. Br. 9-10; Ans. 6.)
The Examiner cites the garment clip of Morgan’s first embodiment
(Morgan’s Figs. 1-7) as anticipating claim 1. (Ans. 6:11-19.) The Examiner
cites the arms 21, 22, connective web 23, and latch 33 of that clip as
Appeal 2010-006062
Application 10/888,699

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respectively constituting first and second arms, a connecting portion, and
blocking member as claimed. (Id.)
Appellant argues that Morgan’s connective web 23 is not “a
connecting portion operatively joining the second arm and the first arm and
structured to bias the second arm toward the first arm” as claimed, because
the connective web 23 does not bias Morgan’s arms 21, 22 toward one
another. (App. Br. 7:14-21.) We agree for the reasons set forth in the
Appeal Brief at page 7, line 29 – page 8, line 2 and at page 8, lines 13-17
and 22-30 and set forth in the Reply Brief at page 1, line 28 – page 2, line 8.
We are unpersuaded by the Examiner’s reasoning that the “bias”
claim language – “structured to bias the second arm toward the first arm” –
constitutes a functional limitation and is, thus, anticipated because Morgan’s
connective web 23 “could be structured” to perform the biasing function.
(Ans. 13:5-17.) We agree with Appellant that the “bias” claim language
constitutes a functional limitation. See In re Schreiber, 128 F.3d 1473, 1478
(Fed. Cir. 1997). We also agree that a functional limitation is anticipated by
a prior art device inherently capable of performing the function. Id. at 1477-
79. However, one question still remains: Is Morgan’s connective web 23
capable of biasing one of the arms 21, 22 towards the other arm? The
Examiner’s technical reasoning is insufficient to conclude that this is so.
The Examiner notes that Morgan’s web 23, being plastic, must
inherently have some modulus of elasticity. (Ans. 12.) Based on this fact,
alone, the Examiner concludes
the web 23 of Morgan is considered to have at least a small
amount of resiliency and therefore slightly influence (bias) one
arm to the other. Note that the direction of influence is not
significant since the web 23 is rotationally connecting the
Appeal 2010-006062
Application 10/888,699

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second arm 22 and the first arm 21. One possible direction of
influence would be the inner face of the second arm being
slightly influenced toward the inner face of the first arm and the
second direction of possible influence would be the outer face
of the second arm being slightly influenced toward the outer
face of the first arm (circular movement).
(Ans. 12-13.)
We find it unreasonable to interpret a bias that pushes two touching
arms away from each other to correspond to the claimed bias of one arm
towards another arm merely on the basis that the complementary angle (the
angle between the outer faces) decreases (e.g., from 350° to 185°). Such an
interpretation would effectively completely remove the biasing limitation
from the claim. A more reasonable interpretation is one wherein the
resiliency bias causes the angle between the arms to decrease below 180°.
The Examiner has neither found that this is the case with Morgan’s web 23,
nor based the rejection upon such an interpretation.
For these reasons, we do not sustain the anticipation rejection of claim
1 over Morgan, or of claims 2, 3, and 5-9, which depend from claim 1.
Independent claims 10, 18, and 21-24 also recite a connecting portion that is
structured to bias (or a means for biasing in the case of claim 24) the second
arm toward the first arm. Accordingly, we likewise do not sustain the
anticipation of these claims, or of claims 11, 12, 14-17, 19, and 20, which
depend from claims 10 and 18.

DECISION
The Examiner’s decision rejecting claims 1-3, 5-12, and 14-24 is
reversed.

Appeal 2010-006062
Application 10/888,699

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REVERSED

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