Ex Parte Sasamoto et al

Patent Trial and Appeal Board

Aug 5, 2016

13211263 (P.T.A.B. Aug. 5, 2016)

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.
13/211,263 08/16/2011 Shinya Sasamoto 033.8002 3849
124281 7590 08/05/2016
James W. Judge
Ooe Building, No. 508
8-1 Nishitemma 2-chome, Kita-ku
Osaka-Shi, 530-0047
JAPAN
EXAMINER
JENNISON, BRIAN W
ART UNIT PAPER NUMBER
3742
MAIL DATE DELIVERY MODE
08/05/2016 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 SHINYA SASAMOTO and ATSUSHI TSUCHIYA
____________

Appeal 2014-004678
Application 13/211,263
Technology Center 3700
____________

Before MICHAEL W. KIM, MICHAEL C. ASTORINO, and
CYNTHIA L. MURPHY, Administrative Patent Judges.

MURPHY, Administrative Patent Judge.

DECISION ON APPEAL

The Appellants1 appeal under 35 U.S.C. § 134 from the Examiner’s
rejections of claims 1–7 and 10–15. We have jurisdiction over this appeal
under 35 U.S.C. § 6(b).

We AFFIRM-IN-PART.

1 The Appellants identify the real party in interest as “Nisca Corporation.”
(Appeal Br. 3.)
Appeal 2014-004678
Application 13/211,263

2
STATEMENT OF THE CASE
The Appellants’ invention “relates to adhesive applicators for applying
bookbinding adhesive to a side edge of a sheet bundle.” (Spec. ¶ 1.)
Illustrative Claim2
1. An adhesive applicator comprising:
a container for storing hot-melt adhesive;
a heating means for heating and melting adhesive, in solid
form, inside said container;
a sensor means for detecting the temperature of the
adhesive inside said container;
application means for applying the adhesive inside said
container to a sheet bundle;
a stirring rotor for stirring the adhesive inside said
container; and
a control means for starting rotation of said stirring rotor
according to said sensor means detecting that the adhesive inside
said container has been heated by said heating means and has
reached a predetermined temperature, said control means therein
for continuing the rotation of said stirring rotor at a first speed
until the elapse of a predetermined first stirring time, for then
rotating the rotor at a second speed faster than the first speed until
the elapse of a predetermined second stirring time, and for
thereafter rotating the rotor at a third speed slower than the
second speed until the elapse of a predetermined third stirring
time.

References
Pedigrew US 5,693,142 Dec. 2, 1997
Takagi US 2004/0194894 A1 Oct. 7, 2004
Nagaya US 2006/0018734 A1 Jan. 26, 2006

2 This illustrative claim is quoted from the Claims Appendix set forth on
pages 10–11 of the Appeal Brief.
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Application 13/211,263

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Rejections
I. The Examiner rejects claims 1, 3, 10, 12, 14, and 15 under
35 U.S.C. § 103(a) as unpatentable over Takagi and Pedigrew. (Final
Action 2.)
II. The Examiner rejects claims 2, 4–7, 11, and 13 under 35 U.S.C.
§ 103(a) as unpatentable over Takagi, Nayaga, and Pedigrew. (Id. at 4.)

ANALYSIS
Rejection I
We are persuaded by the Appellants’ position that the Examiner does
not sufficiently establish that the adhesive applicator recited in independent
claim 1 would have been obvious over Takagi and Pedigrew. (See Appeal
Br. 8–9.) We are persuaded because independent claim 1 recites a means-
plus-function limitation that invokes 35 U.S.C. § 112, sixth paragraph, and
the Examiner does not adequately address how or why the prior art shows or
suggests an adhesive applicator performing the function and/or possessing
the structure required by this limitation.
Independent claim 1 recites “control means” for “starting rotation of
[a] stirring rotor,” “continuing the rotation of said stirring rotor at a first
speed until the elapse of a predetermined first stirring time,” “then rotating
the rotor at a second speed faster than the first speed until the elapse of a
predetermined second stirring time,” and “thereafter rotating the rotor at a
third speed slower than the second speed until the elapse of a predetermined
third stirring time.” (Appeal Br., Claims App.) The Examiner determines
that Takagi and/or Pedigrew show or suggest such a control means. (See
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Application 13/211,263

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Final Action 2–4; Answer 2–3.) As explained below, the Examiner’s
findings do not sufficiently support this determination.
We begin our analysis by confirming that the above-recited limitation
is a means-plus-function limitation invoking of 35 U.S.C. § 112, sixth
paragraph. The recited limitation (hereinafter the “means-plus-function
limitation”) uses the term “means,” specifies a function for the “means,” and
does not recite structure, material, or acts in support of this specified
function. See Personalized Media Comm’ns LLC v. Int’l Trade Comm’n,
161 F.3d 696, 703–04 (Fed. Cir. 1998) (using the term “means for” in a
claim creates a rebuttable presumption that the drafter intended to invoke
§ 112, ¶ 6); Sage Prods., Inc. v. Devon Indus., Inc., 126 F.3d 1420, 1427–28
(Fed. Cir. 1997) (the presumption is not rebutted if the term “means for” is
modified by functional language and is not modified by any structure recited
in the claim to perform the claimed function); see also Williamson v. Citrix
Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015) (confirming that “use of
the word ‘means’ creates a presumption that § 112, ¶ 6 applies” (citing
Personalized Media, 161 F.3d at 703)).
We next construe the means-plus-function limitation by “identify[ing]
the claimed function” and then “determin[ing] what structure, if any,
disclosed in the specification corresponds to the claimed function.”
Williamson, 792 F.3d at 1351. Here, the function specified by the means-
plus-function limitation includes rotating the stirring rotor in a certain speed
sequence (i.e., a first speed, then a second speed faster than the first speed,
and thereafter a third speed slower than the second speed) in correlation with
predetermined stirring times (i.e., a predetermined first stirring time, a
predetermined second stirring time, and a predetermined third stirring time).
Appeal 2014-004678
Application 13/211,263

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The Specification discloses that the aforementioned rotations of the stirring
rotor performed by the “control means” are implemented by a CPU in
accordance with an algorithm provided in prose (see Spec. ¶¶ 39–49) and
also in a flow chart (see id., Fig. 3). “[T]he corresponding structure for a
§ 112 ¶ 6 claim for a computer-implemented function is the algorithm
disclosed in the specification.” Aristocrat Techs. Australia Pty Ltd. v. Int’l
Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008). Thus, the corresponding
structure disclosed in the Specification for the recited “control means” is the
CPU and the algorithm set forth at paragraphs 39–49 and shown in
Figure 3.
We next compare these functional and structural requirements of the
means-plus-function limitation to the Examiner’s findings regarding the
prior art references. A “reference must disclose the recited function
identically” to read on “a claim reciting a means-plus-function limitation.”
Transclean Corp. v. Bridgewood Servs., Inc., 290 F.3d 1364, 1372 (Fed. Cir.
2002). Also, “such claim shall be construed to cover the corresponding
structure, material, or acts described in the specification and equivalents
thereof.” 35 U.S.C. § 112, sixth paragraph.
Beginning with just the functions of the recited “control means”
generally, the Examiner’s findings establish, at most, that the prior art shows
or suggests a stirring rotor that can be controlled by a CPU to rotate at three
speeds and that time elapses between or during the rotation of the stirring
rotor at different speeds. (See Final Action 2–4; Answer 2–3.) However, as
discussed above, the function specified by the means-plus-function
limitation includes rotating the stirring rotor in a certain speed sequence (not
just three speeds) in correlation with predetermined (not elapsed) stirring
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Application 13/211,263

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times. The Examiner’s findings do not address this speed sequence and/or
these predetermined stirring times. The Examiner does not, therefore,
sufficiently explain why Takagi and/or Pedigrew show or suggest the
identical function specified in the means-plus-function limitation
Going further, according to the Examiner, “the only limitations in the
[S]pecification regarding a ‘control means’ are a CPU.” (Answer 2.)
However, as discussed above, the corresponding structure in the
Specification includes not only the CPU, but also the algorithm provided by
the Appellants to control rotation of the stirring rotor. While the Examiner’s
findings may address the CPU, they do not address this algorithm. The
Examiner does not, therefore, sufficiently explain why Takagi and/or
Pedigrew show or suggest a structure equivalent to that disclosed in the
Specification.
Accordingly, the Examiner does not adequately address how or why
the prior art shows or suggests an adhesive applicator performing the
function and/or possessing the structure required by the means-plus-function
limitation “control means.” The Examiner does not, therefore, sufficiently
establish that the claimed adhesive applicator would have been obvious over
the prior art. Thus, we do not sustain the Examiner’s rejection of
independent claim 1, and claims 3, 10, 12, and 14 depending therefrom,
under 35 U.S.C. § 103(a), as unpatentable over Takagi and Pedigrew.
Rejection II
The Examiner rejects claims 2, 4–7, 11, and 13 in the appealed-from
decision (see Final Action 4–6) and the Examiner does not withdraw this
rejection in the Answer (see Answer 2–3.) The Appellants do not mention,
much less argue, the Examiner’s rejection of claims 2, 4–7, 11, and 13; and
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Application 13/211,263

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in fact, do not even list these claims in the Claims Appendix accompanying
the Appeal Brief. (See Appeal. Br. 8–11.) Thus, we summarily sustain the
Examiner’s rejection of claims 2, 4–7, 11, and 13 under 35 U.S.C. § 103(a)
as unpatentable over Takagi, Nayaga, and Pedigrew.

DECISION
We REVERSE the Examiner’s rejection of claims 1, 3, 10, 12, 14,
and 15 under 35 U.S.C. § 103(a) as unpatentable over Takagi and Pedigrew.
We AFFIRM the Examiner’s rejection of claims 2, 4–7, 11, and 13
under 35 U.S.C. § 103(a) as unpatentable over Takagi, Nayaga, and
Pedigrew.
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