Ex Parte Shin

Patent Trial and Appeal Board

Feb 2, 2018

13823989 (P.T.A.B. Feb. 2, 2018)

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.
13/823,989 03/15/2013 Dong Hyun Shin PUS 150030 1248
02/06/2018134984 7590
STIP Law Group, LLC
10015 Old Columbia Road, Suite B-215
Columbia, MD 21046
EXAMINER
SETLIFF, MATTHIEU F
ART UNIT PAPER NUMBER
3679
NOTIFICATION DATE DELIVERY MODE
02/06/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
pto@stiplaw.com
my ang @ stiplaw .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DONG HYUN SHIN
Appeal 2017-005450
Application 13/823,989
Technology Center 3600
Before JOHN C. KERINS, EDWARD A. BROWN, and
LYNNE H. BROWNE, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Dong Hyun Shin (Appellant)1 appeals under 35 U.S.C. § 134(a) from
the Examiner’s decision rejecting claims 1, 3—5, and 7—9, which are the
pending claims. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 The Appeal Brief identifies the real party in interest as Don Hyun Shin.
Br. 3.
Appeal 2017-005450
Application 13/823,989
CLAIMED SUBJECT MATTER
Claims 1, 5, and 9 are independent. Claim 1, reproduced below,
illustrates the claimed subject matter:
1. An assembly type furniture equipped with a press type
bonding member, comprising:
a second piece which includes a second long groove for
engagement at a circumference of at least one side;
a first piece which is inserted in the second long groove of
the second piece and slides along the second long groove; and
a bonding member which is provided in the first piece at a
position pressing one side of the second long groove when the
first piece is inserted in along the second long groove of the
second piece and slides for thereby maintaining an engaged state
of the second piece and the first piece in a state that it is pressed
between one side of each of the first piece and the second piece
and one side of the second long groove,
wherein the first piece has a fixing groove, and the
bonding member is fixedly inserted in the fixing groove and
partly exposed to an outside of the first piece at the position
pressing one side of the second long groove.
REJECTIONS2
I. Claims 1,3,4, and 9 are rejected under 35 U.S.C. § 102(b) as
anticipated by Erbsloeh (DE 2042915, published Mar. 2, 1972).3
2 The Final Action also includes objections to the drawings, Specification,
and claims. Final Act. 1—5. The Examiner’s Answer does not indicate
whether these objections are still being maintained; however, their review is
a petitionable matter not within the jurisdiction of the Board.
3 The Examiner provides a machine-generated, English-language translation
of the Specification of Erbsloeh (hereinafter, “Erbsloeh translation”).
2
Appeal 2017-005450
Application 13/823,989
II. Claims 5,1, and 84 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Xavier (US 3,338,189, issued Aug. 29, 1967) and
Erbsloeh.
ANALYSIS
Rejection I
Claim 1
The Examiner finds that Erbsloeh discloses an assembly type furniture
comprising a second piece (profile element 1) including a second long
groove (groove profile web 6) for engagement at a circumference of at least
one side, and a first piece (profile element 2) which is inserted in, and slides
along, the second long groove. Final Act. 5 (citing Erbsloeh, Figs. 1—2).
The Examiner also finds that Erbsloeh discloses a bonding member (locking
element 3) provided in the first piece at a position pressing one side 11 of the
second long groove when the first piece is inserted along the second long
groove, and slides to thereby maintain an engaged state of the second piece
and the first piece in a state that it is pressed between one side of each of the
first piece and the second piece and one side of the second long groove. Id.
The Examiner further finds that Erbsloeh discloses the first piece has a
fixing groove (vertical groove extensions engaged by element 8), and the
bonding member is fixedly inserted in the fixing groove and partly exposed
to an outside of the first piece at the position pressing one side of the second
long groove, because locking element 3 is at least partly exposed to an
4 The heading of this rejection lists cancelled claim 6. See Final Act. 7; Br.
18 (Claims App.). We treat this listing as inadvertent.
3
Appeal 2017-005450
Application 13/823,989
outside of the first piece at least in the leftward horizontal direction and/or
the downward vertical direction, as shown in Figures 1 and 2. Id. at 5—6.
Appellant contends that Erbsloeh fails to disclose “an engaged state of
the second piece and the first piece are in a state that it is pressed between
one side of each of the first piece and the second piece and one side of the
second long groove,” and “the bonding member is fixedly inserted in the
fixing groove and partly exposed to an outside of the first piece at the
position pressing one side of the second long groove, as claimed.” Br. 8.
These contentions are unpersuasive. As the Examiner explains,
Erbsloeh’s Figure 1 shows that locking element 3 is pressed between profile
element 1 and profile element 2 and one side of groove profile web 6 (i.e.,
locking element 3 is pressed between profile web 7 of profile element 2 and
the portion of profile element 1 next to recess 11). Ans. 8. The Examiner
further explains that locking element 3 is “pressed” because its leg 9 is in
contact with, and exerts a force on, the one side of the groove profile web 6.
Id. at 8—9 (citing Erbsloeh translation, p. 3, second and fourth paragraphs).
The Examiner also notes that Appellant acknowledges that “[t]he top part of
the locking element 3 is in contact with and exerts a force on the recess 11
near wall part 14.” Id. at 9 (citing Br. 11). The Examiner further explains
that when viewed at the end, Erbsloeh’s Figure 1 shows that the bonding
member is exposed to the outside of the first piece. Id.
Appellant argues that the claimed pressing is possible because the
width of the bonding member is greater than the width of the first piece,
wherein the bonding member, when positioned in the fixing groove, presses
both sides of the second long groove. Br. 8.
4
Appeal 2017-005450
Application 13/823,989
We understand Appellant’s position is that claim 1 requires the
bonding member to press on both sides of the second long groove, whereas
the bonding member in Erbsloeh does not press on both sides of the groove.
This argument is not persuasive because claim 1 does not require the width
of the bonding member to be greater than the width of the first piece, or
require the bonding member, when positioned in the fixing groove of the
first piece, to press on both sides of the second long groove. Thus,
Appellant does not apprise us of Examiner error.
Appellant further contends: (1) the Examiner fails to address the
limitation of “pressing” on both sides of the bonding member; (2) the
definition of “to press” is “to act upon through steady pushing or thrusting
force in contact: squeeze”5; (3) pressing requires contact between two
surfaces and one of the sides of the two surfaces must exert a force on the
second surface; and (4) claim 1, therefore, requires that both sides of the
bonding member are respectively in contact with both sides of the second
long groove, and that the bonding member exerts a force on both sides of the
second long groove. Br. 9.
Concerning Appellant’s argument (1), the Examiner explains that
Erbsloeh’s locking element 3 is pressed between profile web 7 of profile
element 2 and the portion next to recess 11 of profile element 1. Ans. 8; see
also id. at 12. As such, locking element 3 is pressed on both sides because it
exerts a force on both sides of groove profile web 6, much like Appellant’s
bonding member 150 when positioned in fixing groove 120. See Erbsloeh,
Figs. 1—2; Spec., Fig. 4.
5 Citing Merriam-Webster’s Unabridged Dictionary (2016).
5
Appeal 2017-005450
Application 13/823,989
Appellant does not explain persuasively why the claim construction
presented in argument (4) must logically result from arguments (1), (2), and
(3). As shown in Appellant’s Figures 4 and 5, although bonding member
150 is pressed on both of its sides, bonding member 150 does not contact
both opposing surfaces of second long groove 210. Further, claim 1 does
not require that both sides of the bonding member are respectively in contact
with both sides of the second long groove, as noted above. See Ans. 13.
Appellant acknowledges that, as shown in Erbsloeh’s Figure 1, the top
part of locking element 3 is in contact with and exerts a force on the recess
11 near wall part 14, but Appellant contends that the bottom part of locking
element 3 does not exert a force on the bottom edge of recess 11, and, at
best, is in contact with the bottom edge. Br. 11. Claim 1 does not, however,
require that bottom part of locking element 3 also exert a force on the
bottom edge of recess 11.
Appellant also contends that element 3 shown in Erbsloeh’s Figures 1
and 2 should be more accurately construed as a locking element as opposed
to the claimed bonding member. Id.6 Appellant argues, in this respect, that
Erbsloeh’s locking element 3 corresponds to the prior art described in
Appellant’s disclosure. Br. 11—12 (citing Spec. 6, 14, Figs. 1—3).
Appellant maintains that the Specification states that the bonding member of
6 Appellant uses the term “compression member” instead of “bonding
member,” which is the term recited in the claims. See, e.g., Appeal Br. 11—
12 (“compression member 150”). The Specification uses those terms
substantially interchangeably (see, e.g., Spec. 148), so we will assume that
the argument is directed to the actual claim term.
6
Appeal 2017-005450
Application 13/823,989
claim 1, in contrast, is an elastic member with a predetermined flexibility
like a rubber or silicon material. Id. at 12 (citing Spec. Tflf 47, 48).
Appellant’s contentions that Erbsloeh does not disclose the claimed
bonding member are not persuasive. Claim 1 does not recite that the
bonding member is an elastic member with a predetermined flexibility like a
rubber or silicon material. Appellant’s Specification presents those
characteristics as an exemplary embodiment, stating that “[h]ere the bonding
member 150 is made of an elastic member with flexibility like a rubber or
silicon material.” Spec. 148. Appellant appears to be urging us to construe
the claims as requiring the claimed “bonding member” to have those
characteristics, but we note that the Specification does not use the above
description as a definition, and thus, we decline to adopt such a construction,
because “a particular embodiment appearing in the written description may
not be read into a claim when the claim language is broader than the
embodiment.” See SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d
870, 875 (Fed. Cir. 2004). Consequently, Appellant does not apprise us of
Examiner error. For these reasons, we sustain the rejection of claim 1.
Claims 3 and 4
For claims 3 and 4, Appellant relies on the same arguments as
presented for claim 1. Br. 12. Accordingly, we are not persuaded by those
arguments for the same reasons as for claim 1.
Appellant also contends that Erbsloeh fails to disclose the limitation in
claim 3 of “the second piece and the first piece are engaged,” and the
limitation in claim 4 of “the bonding member is inclined for the first piece to
slide and insert in the second long groove of the second piece.” Id. These
contentions do not apprise us of any error in the Examiner’s findings for
7
Appeal 2017-005450
Application 13/823,989
claim 3 or 4, or otherwise inform us why Appellant believes Erbsloeh fails
to disclose the noted limitations. See Final Act. 6. “A statement which
merely points out what a claim recites will not be considered an argument
for separate patentability of the claim.” 37 C.F.R. § 41.37(c)(l)(iv); see also
In re Lovin, 652 F.3d 1349 (Fed. Cir. 2011) (“we hold that the Board
reasonably interpreted Rule 41.37 to require more substantive arguments in
an appeal brief than a mere recitation of the claim elements and naked
assertion that the corresponding elements were not found in the prior art.”).
Accordingly, we sustain the rejection of claims 3 and 4.
Claim 9
Appellant argues that Erbsloeh fails to disclose the pressing limitation
in claim 9 for reasons similar to those presented for claim 1. See Br. 8—11.
Appellant contends there is no teaching or suggestion to support the
Examiner’s position that Erbsloeh’s locking member is deformed such that it
presses against the second side of recess 11. Id. at 11 (citing Final Act. 7).
For reasons discussed above, we are not persuaded that Erbsloeh fails
to disclose the limitation “such that insertion of the first long groove into the
second long groove causes a side of the bonding member to press against a
lateral wall of the second groove in a direction perpendicular to the first
direction.” Further, we note claim 9 does not require the bonding member to
be deformed and the Examiner does not state that locking member 3 of
Erbsloeh is deformed. See Final Act. 7.
As Appellant does not apprise us of Examiner error, we sustain the
rejection of claim 9.
8
Appeal 2017-005450
Application 13/823,989
Rejection II—Claims 5, 7, and 8
For claim 5, the Examiner finds that Xavier discloses an assembly
type furniture comprising a main piece (second elongated base member 14)
including a main long groove, an auxiliary piece (first elongated base
member 12) which slides in the main long groove of the main piece, and a
third piece (reinforcing seat 18) with a cross shaped groove which
accommodates a crossed portion in which a protrusion of the main piece and
a long piece reside as the auxiliary piece and the main piece are engaged.
Final Act. 7—8 (citing Xavier, Figs. 1—2). The Examiner relies on Erbsloeh
to teach a bonding member fixedly inserted in a fixing groove of an auxiliary
piece and being partly exposed to an outside of the auxiliary piece at a
position pressing one side of the main long groove. Id. at 8—9. The
Examiner concludes that it would have been obvious to modify Xavier to
incorporate this teaching of Erbsloeh to increase the frictional retention of
the groove connection/assembly and absorb slight variations in the
dimensional tolerances of the grooves. Id. at 9; see also Ans. 28.
Appellant contends that one of ordinary skill in the art would not have
been motivated to combine Xavier, which discloses using screws 56 for the
locking member, with Erbsloeh, which discloses locking element 3 for
locking profile element 1 to profile element 2. Br. 14.
Appellant’s contention is persuasive. In Xavier, screws 56 and seat
18 together already provide a mechanism for securing first elongated base
member 12 to second elongated base member 14. Xavier, Figs. 1—2. ft
appears that screws 56 and seat 18 would also provide resistance to relative
vertical movement of members 12, 14, in the assembled stool. Also, Xavier
discloses, “[w]hen in position, the supporting disc 16 resists a lateral
9
Appeal 2017-005450
Application 13/823,989
twisting of the elongated assembled base members and provides an assembly
of some strength.” Id. at col. 2,11. 17—19, Fig. 2. Thus, adding locking
element 3 of Erbsloeh to the furniture of Xavier would appear to be
redundant. Moreover, it is not clear how the Examiner proposes to modify
Xavier’s structure to use a bonding member and fixing groove of the
particular type disclosed in Erbsloeh. For these reasons, we do not sustain
the rejection of claim 5, or of claims 7 and 8 depending therefrom.
DECISION
We affirm the rejection of claims 1,3,4, and 9, and reverse the
rejection of claims 5,7, and 8.
No time period for taking any subsequent action in connection with
this appeal maybe extended according to 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
10