Ex Parte Sasamoto et al

Patent Trial and Appeal Board

Mar 17, 2015

11676510 (P.T.A.B. Mar. 17, 2015)

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.
11/676,510 02/19/2007 Shinya Sasamoto 033.0002 8320
124281 7590 03/18/2015
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
03/18/2015 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 2013-002030
Application 11/676,510
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 Appellants
1
appeal under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1–10
2
. We have jurisdiction over this appeal under 35
U.S.C. § 6(b).

1
According to the Appellants, “[t]he real party in interest is Nisca
Corporation.” (Appeal Br. 3.)
2
Claims 1–10 are pending. Yet, the Appellants only list affirmatively that
they are appealing the rejection of independent claims 1, 5, and 8, and that
the “present appeal does not concern the Examiner's ground for rejecting
claims 2–4, 6, 7, 9 and 10 [under] 35 U.S.C. § 103(a) in the instant
application.” (Appeal Br. 5, 8.). Under our precedent in Ex Parte Ghuman,
88 USPQ2d 1478, 1480 (BPAI 2008) (precedential), all claims not appealed
are to be cancelled. As claims 2–4, 6, 7, 9 and 10 each depend ultimately
from one of claims 1, 5, and 8, however, it would stand to reason that any
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Application 11/676,510

2

We REVERSE and enter a NEW GROUND OF REJECTION
pursuant to 37 C.F.R. § 41.50(b).

STATEMENT OF THE CASE
The Appellants’ invention relates to adhesive applicators for
bookbinding apparatuses. (Spec. ¶ 1.)

Illustrative Claim
1. An adhesive applicator comprising:
a container for storing hot-melt adhesive;
heating means disposed on the container, for melting to a
predetermined temperature solid adhesive filled in the
container;
sensor means for detecting the temperature of the
adhesive in the container;
temperature control means for controlling the heating
temperature of the heating means in response to the temperature
detected by the sensor means; and
application means for applying the adhesive in the
container to a body of documents; wherein
the temperature control means is configured to have a
plurality of heating modes with different supply levels and
supply durations for supplying power to the heating means; and

Examiner error attributed by the Appellants to the rejection of claims 1, 5,
and 8 would also seem to apply to claims dependent therefrom. We note
that the Appellants have not stated explicitly that they are not appealing the
rejection of claims 2–4, 6, 7, 9 and 10. On these facts, and in an abundance
of caution, we determine that the Appellants have also appealed the rejection
of claims 2–4, 6, 7, 9 and 10 on the same basis that they appealed underlying
claims 1, 5, and 8. Should the Appellants have desired to not appeal claims
2–4, 6, 7, 9 and 10, those claims should be cancelled once jurisdiction for
the application is returned to the Examiner.
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Application 11/676,510

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power is supplied to the heating means in a single heating
mode selected in response to the temperature of the adhesive
detected by the sensor means.

Prior Art
Takagi US 2004/0194894 A1 Oct. 7, 2004
Nagaya US 2006/0018734 A1 Jan. 26, 2006

Rejections
The Examiner rejects claims 1, 5, and 8 under 35 U.S.C. § 102(b) as
anticipated by Takagi.
The Examiner rejects claims 2–4, 6, 7, 9, and 10 under 35 U.S.C.
§ 103(a) as unpatentable over Takagi and Nagaya.

ANALYSIS
Anticipation Rejection of Claims 1, 5, and 8
Independent claim 1 sets forth an adhesive applicator comprising a
temperature control means that “is configured to have a plurality of heating
modes with different supply levels and supply durations.” (Appeal Br.,
Claims App.) The Examiner finds that Takagi discloses an adhesive
applicator having temperature control means (CPU 159) configured in this
manner. (See Answer 5.)
We are persuaded by the Appellants’ position that the Examiner’s
determination of anticipation is deficient. (See Appeal Br. 9.) We are
persuaded because the paragraphs in Takagi cited by the Examiner
(paragraphs 81–83) do not support a finding that Takagi discloses the
temperature control means required by claim 1, specifically, one having “a
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Application 11/676,510

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plurality of heating modes.” And the Examiner does not provide the
explanations necessary to establish that Takagi inherently discloses such a
temperature control means.
Takagi discloses that CPU 159 “controls the power supply to supply
an electrical current to the heater unit based on the detection signal from the
temperature sensor 71.” (Takagi ¶ 82.) We find that Takagi discloses only
one heating mode: CPU 159 turning on the heater (i.e. supplying an electric
current) when sensor 71 senses the adhesive’s temperature is too low. The
only other mode disclosed by Takagi is turning off the heater (i.e., not
supplying an electric circuit) when sensor 71 senses that the adhesive’s
temperature is hot enough, which we find is not a “heating mode” within the
meaning of the claim.
The Examiner also maintains that “as the number of pages to be
bound varies, the rate at which the adhesive is melted would also vary and
would require higher or lower temperatures according to the number of
pages.” (Answer 7.) We find, however, that the paragraphs in Takagi cited
by the Examiner (paragraphs 81–83) do not discuss temperature fluctuations
based upon adhesive melt rates and/or page numbers. And the Examiner
does not direct our attention to elsewhere in Takagi where such topics are
discussed.
The Examiner further remarks that “that an inherency argument could
be made” because other prior art (i.e., Nagaya) discloses varied power levels
and stepwise heater control. (See Answer 7.) However, the Examiner does
not explain why the capacity to vary power levels and/or the capacity to
control the heater in a stepwise manner are necessarily present in Takagi’s
CPU 159. Indeed, Takagi expressly discloses only one mode, which by
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Application 11/676,510

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definition shows that such variable settings are unnecessary. As such, the
Examiner does not establish that Takagi’s CPU 159 is inherently
“configured to have a plurality of heating modes with different supply levels
and supply durations” as recited by independent claim 1.
Accordingly, the Examiner does not sufficiently support a stance that
Takagi discloses the temperature control means set forth in independent
claim 1. The Examiner’s additional findings with respect to dependent
claims 5 and 8 (see Answer 5) do not compensate for this shortcoming.
Thus, we do not sustain the Examiner’s rejection of claims 1, 5, and 8
under 35 U.S.C. § 102(b) as anticipated by Takagi.

NEW GROUND OF REJECTION
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new
ground of rejection for claims 1–10 under 35 U.S.C. § 103(a) as
unpatentable over Takagi in view of Nagaya.
After considering the Appellants’ arguments (see Appeal Br. 9–11)
and the Examiner’s findings (see Answer 4–5), we agree with the Examiner
that Takagi discloses an adhesive applicator comprising a container 66a for
storing hot melt adhesive, heating means 180 disposed on container 66a that
melts solid adhesive therein to a predetermined temperature, sensor means
71 for detecting the temperature of the adhesive in container 66a,
temperature control means (CPU 159 discussed above) for controlling the
heating temperature of heating means 180 in response to the temperature
sensed by sensor means 71, and application means for applying the adhesive
in container 66a to a body of documents. (See Answer 4–5; see Takagi
¶¶ 80–83, Fig. 22.) We also agree with the Examiner’s findings that Takagi
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Application 11/676,510

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discloses that CPU 159 is configured for supplying power to heating means
180 and that power is supplied to heating means 180 in a single heating
mode in response to the temperature of the adhesive detected by sensor
means 71. (Id.)
However, as discussed above, we do not agree with the Examiner’s
finding that Takagi discloses a temperature controller (i.e., CPU 159) that
“may be configured to have a plurality of heating modes and different
supply levels based on the desired number of pages.” (Answer 5.)
We find Nagaya discloses temperature control means (adhesive
temperature controller 303) configured to have a plurality of heating modes
with different supply levels and supply durations for supplying power to a
heating means (adhesive heater 302). (See Nagaya ¶ 69.) Specifically,
Nagaya discloses a first heating mode wherein temperature controller 303
controls heater 302 so that “the temperature value of the adhesive 300 is
controlled to and maintained at the target temperature value.” (Id.) And
Nagaya discloses a second heating mode wherein temperature controller 303
controls heater 302 “such that the temperature value of adhesive 300
becomes equal to a second target temperature” that is “lower than the first
target temperature and is not likely to cause components of adhesive 300 to
be volatized.” (Id. at ¶ 71.) Nagaya’s plurality of heating modes have
“different supply levels and supply durations” because they have different
target temperatures.
We determine that it would have been obvious, at the time of the
Appellants’ invention, to modify Takagi’s apparatus, in view of the
teachings of Nagaya, so as to configure its temperature control means (CPU
159) to have a plurality of heating modes with different supply levels and
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Application 11/676,510

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supply durations for supply power to its heating means 180. In this modified
apparatus, power would be supplied to heating means 180 in a single heating
mode (i.e., either the first heating mode or the second heating mode) in
response to the temperature of the adhesive detected by sensor means 71.
This modification would allow Takagi’s apparatus to be “capable of
suppressing volatile components of the adhesive causing abnormal odor
from leaking out of the bookbinding apparatus.” (See Nagaya ¶ 17.)
As for dependent claims 2–10, we adopt the Examiner’s findings and
rationales that Tagaki and/or Nagaya disclose the features separately recited
in these claims. (See Answer 4–6.) We determine that Takagi and Nagaya,
in combination, would render obvious the adhesive applicators set forth in
dependent claims 2–10.
Accordingly, the apparatus set forth in claims 1–10 would have been
obvious over Tagaki and Nagaya, and we enter a new ground of rejection for
claims 1–10 as unpatentable over these references.

Obviousness Rejection of Claims 2–4, 6, 7, 9, and 10
The Appellants do not argue these claims on appeal, and in light of the
above, the Examiner’s previous rejection of these claims is rendered moot in
favor of the new ground of rejection for claims 2–4, 6, 7, 9, and 10 set forth
above.

DECISION
We REVERSE the Examiner’s rejection of claims 1–10.
We enter a NEW GROUND of rejection for claims 1–10 as
unpatentable under 35 U.S.C. § 103(a) as unpatentable over Tagaki and
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Application 11/676,510

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Nayaga, pursuant to our authority under 37 C.F.R. § 41.50(b). This decision
contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). “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
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.
(2) Request rehearing. Request that the proceeding be reheard under
37 C.F.R. § 41.52 by the Board upon the same record.

REVERSED; 37 C.F.R. § 41.50(b)
mp