Ex Parte toDownload PDFPatent Trial and Appeal BoardSep 25, 201311620169 (P.T.A.B. Sep. 25, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte CHUN YUEN TO ____________________ Appeal 2011-010345 Application 11/620,169 Technology Center 3700 ____________________ Before PHILLIP J. KAUFFMAN, PATRICK R. SCANLON, and BARRY L. GROSSMAN, Administrative Patent Judges. SCANLON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-010345 Application 11/620,169 2 STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s rejection of claims 1-4, 6-9, 11-26, 29-31, 33, and 34 under 35 U.S.C. § 103(a) as being unpatentable over To (US 6,758,621 B2, iss. Jul. 6, 2004) and Busam (US 2004/0037614 A1, pub. Feb. 26, 2004). Claims 5, 10, 27, 28, and 32 have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART and enter a NEW GROUND OF REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b). THE INVENTION Appellant’s claimed invention relates “to a generally C-shaped ring for a ring binder mechanism.” Spec. 1, para. [0001]. Claims 1, 13, 22, and 29-31 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. A ring binder mechanism for holding loose- leaf pages, the mechanism comprising a housing and a plurality of rings for holding the loose-leaf pages, each ring including a first ring member and a second ring member, the first ring member being movable relative to the housing and the second ring member between a closed position and an opened position, in the closed position the first and second ring members forming a substantially continuous, closed loop for allowing loose-leaf pages retained by the rings to be moved along the rings from one ring member to the other, and in the opened position the first and second ring members forming a discontinuous, open loop for adding or removing loose-leaf pages from the rings, a pair of hinge plates supported by the housing for pivotal motion of the hinge plates with respect to the Appeal 2011-010345 Application 11/620,169 3 housing, the hinge plates having an upper surface facing the housing and a lower surface facing away from the housing, the first and second ring members being mounted on respective hinge plates and moveable with pivoting motion of the hinge plates between the opened and closed positions, the ring members extending from the lower surface of the hinge plate, the first and second ring members being generally mirror images of each other, each of said ring members having a length and at least two different non-infinite radii of curvature along said length, the ring members each comprising a lower segment, a middle segment and an upper segment, the middle segment having a radius of curvature greater than 2 inches. ANALYSIS Claims 1-4, 7, 9, 11, and 12 Appellant argues claims 1-4, 7, 9, 11, and 12 as a group. App. Br. 8- 15. We select claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). Accordingly, claims 2-4, 7, 9, 11, and 12 stand or fall with claim 1. Regarding claim 1, the Examiner finds that To discloses the ring binder mechanism as claimed except for the first and second ring members having two different radii of curvature and a middle segment with a radius of curvature greater than two inches. Ans. 4-5. The Examiner further finds that Busam discloses ring members having two different radii of curvature along their length because Figures 3 and 4 show “the curve located at the bottom of each ring member is tighter than the curve located at the top of each curve.”1 Ans. 4. The Examiner then concludes that: 1 We assume the last occurrence of “curve” is a typographical error that was meant to be “ring member.” Appeal 2011-010345 Application 11/620,169 4 It would have been obvious to a person of ordinary skill in the art at the time of the invention to form the To rings in the shape taught by Busam, by applying the Busam ring shaping to the portions of each ring member located outward of and above the housing (such that the tight lower curve shape of the To rings is retained in order to preserve the configuration in which the rings extend outward from underneath the housing) in order to provide a binder which has a variable capacity for storing different amounts of paper therein, as explicitly taught by Busam (see paragraph 5). Ans. 5. The Examiner elaborates on this position by stating the To rings are not “completely replaced”; instead, “the relatively sharp curve located at the bottom portion of the To ring is retained (so as to not disturb the configuration wherein the ring members extend from the lower surface of the hinge plates), and the broader curve of the Busam upper section is added.” Ans. 18-19. Lastly, the Examiner concludes that it would have been obvious to provide the ring members of the To-Busam combination with a middle segment having a radius of curvature greater than two inches because “it is not inventive to discover the optimum or workable ranges by routine experimentation.” Ans. 5 (quoting In re Aller, 220 F.2d 454, 456 (CCPA 1955). Appellant argues that Busam’s rings are oval rings having straight segments defining infinite radii of curvature and top and bottom curved segments illustrated as having the same radii of curvature such that Busam fails to disclose a ring having two different, non-infinite radii of curvature. App. Br. 10-11. Given that the Examiner’s rejection is based on using the bottom portion of the To ring member and the upper section of the Busam Appeal 2011-010345 Application 11/620,169 5 ring member,2 as noted supra, it is not relevant whether the upper and lower segments of Busam’s ring members have different radii of curvature. Nevertheless, in view of the extensive discussion by both the Examiner and Appellant of this issue, we feel compelled to note our agreement with Appellant. Because Busam lacks any textual description regarding the curvature of Busam’s rings,3 the Examiner’s position is based entirely on the drawings of Busam. These drawings are at best inconclusive as to whether the lower curved segment has a different radius of curvature than the upper curved section. As such, the Examiner has failed to establish by a preponderance of the evidence that Busam discloses a ring having two different, non-infinite radii of curvature. In addition, we disagree with the Examiner’s apparent alternative theory that the claim limitation of two different radii of curvature can be met by two curved sections “in that they are not the same exact curve in the same exact location.” Ans. 17. Appellant correctly argues that the Examiner misinterprets the meaning of two different radii of curvature. Reply Br. 4. As noted by Appellant, the radius of curvature is an indication of how sharply an object is curved. Id. at 5. Consequently, two different curved segments at different locations do not necessarily have different radii of curvature. 2 We note that this appears to be a shift from the position taken by the Examiner in the Final Office Action, in which the Examiner proposed forming “the To rings in the shape taught by Busam.” Office Action dated Jan. 20, 2010, at 3. 3 The Examiner and Appellant agree on this point. See Ans. 22; App. Br. 13; Reply Br. 4. Appeal 2011-010345 Application 11/620,169 6 We also agree with Appellant’s arguments that one of ordinary skill in the art would not combine To and Busam in the manner proposed by the Examiner and that such a combination relies on impermissible hindsight “by picking and choosing various features from To and various other features from Busam.” Reply Br. 6-9. The Examiner’s stated rationale for the proposed combination is that it would “provide a binder which has a variable capacity for storing different amounts of paper therein” as taught by Busam. Ans. 5. However, Busam teaches that the pivoting oval rings disclosed therein provide the variable storage capacity. The Examiner has not adequately explained why one of ordinary skill would have been led to use only a portion of Busam’s ring, while retaining a portion of To’s ring, to provide a variable storage capacity. As such, the Examiner’s rationale does not provide adequate reasoning based on rational underpinnings to support combining the references in the manner proposed. We nonetheless sustain the rejection of claim 1, but on a basis different from that relied on by the Examiner. Specifically, To discloses rings 18 comprising first and second ring members 20, 22 that are generally mirror images of each other. To, col. 3, ll. 10-11; figs. 6 and 7. As seen in To’s Figure 6 reproduced below and annotated to show one possible set of ring member “segments,”4 each ring member can be considered to comprise a lower segment, a middle segment, and an upper segment, wherein each segment has a non-infinite radius of curvature that is different from the radii of curvature of the other segments. To thus discloses a ring member having two different radii of curvature along its length. 4 A ring member can be viewed as being divided into any combination of “segments” as called for in claim 1. App App great large does to pr inch adop alon § 10 not r eal 2011-0 lication 11 A Fi While no er than tw st radius o not conte ovide a m es through t the Exam For the a e but neve 3(a) as unp ely on Bus 10345 /620,169 n annotate gure 6 dep t specific o inches, t f curvatur st the Exam iddle segm routine ex iner’s con bove reas rtheless su atentable am, we no d version o icts a ring ally disclo he middle e of the th iner’s con ent having perimenta clusion on ons, we co stain the re over To an te that jus 7 f Figure 6 binder me sed as hav segment a ree segmen clusion th a radius o tion. Ans this poin nclude tha jection of d Busam. t as “a com of To is r chanism. ing a radiu s depicted ts. Furth at it woul f curvatur . 5. We th t. t claim 1 i claim 1 u Although plete des eproduced s of curva above ha ermore, Ap d have bee e greater t us agree w s obvious nder 35 U our analy cription [is below: ture s the pellant n obvious han two ith and over To .S.C. sis does ] but the Appeal 2011-010345 Application 11/620,169 8 ultimate or epitome of obviousness,” In re Kalm, 378 F.2d 959, 962 (C.C.P.A. 1967), a claim that is obvious over a single reference is obvious over a group of references including that reference. Claims 2-4, 7, 9, 11, and 12 fall with claim 1. We designate our affirmance of the rejection of claims 1-4, 7, 9, 11, and 12 as a “new ground” so as to afford Appellant a fair opportunity to respond to the thrust of the rejection. In re Leithem, 661 F.3d 1316, 1320 (Fed. Cir. 2011). Claim 6 Appellant argues that modifying Busam’s ring members to provide the claim 6 limitation of the lower and upper segments each having a radius of curvature no greater than about 0.1 inches would be “counter-intuitive to a person having ordinary skill in the art.” App. Br. 15-16. However, the new ground of rejection of claim 1 is based on To’s ring members, not Busam’s. Moreover, Appellant does not rebut the Examiner’s contention that one of ordinary skill in the art would have arrived at the claimed radius of curvature values through routine experimentation. Ans. 6. We thus sustain the rejection of claim 6. Claims 8 and 22-26 Claim 8, which depends indirectly from claim 1, and independent claim 22 both call for the first and second ring members to cooperatively define a “generally straight” segment or section at the top of the ring. We agree with Appellant’s argument that Busam does not disclose this claimed feature. App. Br. 17-19, 23. However, the portions of the upper segments between the dashed lines as depicted above in the annotated version of To’s Figure 6 shows that the two upper segments cooperatively define a “generally straight” top section. As acknowledged by Appellant, “generally Appeal 2011-010345 Application 11/620,169 9 straight” is construed to include “a slightly curved segment.” Id. at 20 n.3; see also Spec., para. [0038]. Because the top section of the ring between the dashed lines of Figure 6 above defines a slightly curved segment, we determine that this segment is “generally straight” as required by claims 8 and 22. Regarding dependent claim 23, which recites that the length of the top section is about equal to the width of the housing, the length of the top section defined between the dashed lines is about equal to the width of the housing 12, as shown by annotated Figure 6 above. In addition, we note that independent claim 22 does not require that the first and second ring members be generally mirror images. As such, Figures 13, 15, 16, and 19-22 of To all depict ring binder mechanisms having first and second ring members that “cooperatively define a generally straight top section of the ring opposite the housing” as recited in claim 22.5 We accordingly sustain the Examiner’s rejection of claims 8, 22, and 23 but designate this affirmance as a “new ground” so as to afford Appellant a fair opportunity to respond to the thrust of the rejection. Claims 24-26, for which Appellant does not present any separate argument, fall with claim 22. Claims 13-17 and 19-21 Independent claim 13 is directed to a ring binder mechanism in which each of the two ring members has a generally straight middle segment that slopes inward as it extends away from the housing. The Examiner relies on the same combination of To and Busam discussed supra in connection with the rejection of claim 1 and contends that Figures 3, 4, and 6 of Busam show 5 Should there be further prosecution of this application, we recommend that the Examiner also consider the Sep. 29, 2005 published application of Ng (US 2005/0214064 A1) filed Dec. 10, 2004. Appeal 2011-010345 Application 11/620,169 10 a middle segment sloping inward as it extends away from the housing. Ans. 7-8, 28. We agree with Appellant’s assertion that these figures of Busam do not show generally straight segments that slope inward, but instead show generally straight middle segments that are parallel to one another. App. Br. 21-22. However, Figures 9 and 12 of Busam show ring members 34a, 34b having generally straight (i.e., slightly curved) middle segments that are depicted as sloping inward as they extend away from the housing (support strip 28). We thus conclude that it would have been obvious to one of ordinary skill in the art at the time of invention to modify the ring binder mechanism of To by replacing To’s ring members with the ring members shown in Figures 9 and 12 of Busam as this would be the simple substitution of one known mechanical element for another that produces predictable results. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007) (“when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result”). Accordingly, we sustain the Examiner’s rejection of claim 13 as obvious over To and Busam but designate this affirmance as a “new ground” so as to afford Appellant a fair opportunity to respond to the thrust of the rejection. Claims 14-17 and 19-21, for which Appellant does not present any separate argument, fall with claim 13. Claim 18 Regarding claim 18, the Examiner concludes that one of ordinary skill in the art would have arrived at a radius of curvature of more than two inches for the upper segments of each ring member through routine Appeal 2011-010345 Application 11/620,169 11 experimentation. Ans. 9-10 (quoting In re Aller, 220 F.2d 454, 456 (CCPA 1955). Appellant’s argument that “the upper sections of Busam’s ring segments are shaped to give the ring a semi-circular top” (App. Br. 22) does not persuade us of error in the Examiner’s position. We thus sustain the rejection of claim 18 but designate this affirmance as a “new ground” so as to afford Appellant a fair opportunity to respond to the thrust of the rejection. Claims 29-31 Each one of independent claims 29-31 calls for a ring binder mechanism having two ring members, each ring member comprising first, second, and third segments wherein the radius of curvature of the third segment is substantially greater than that of the first and second segments. Claim 29 adds that the second radius of curvature is different than the first radius of curvature, claim 30 adds that the second radius of curvature is no more than about 0.5 inches and the first radius of curvature is less than the second radius of curvature, and claim 31 adds that the third segment extends between the first and second segments and the first radius of curvature is no more than about 0.5 inches. In rejecting these claims, the Examiner relies on To modified by Busam in the same manner as set forth in the rejection of claim 1. Ans. 12, 13, 15. We disagree with the basis of the Examiner’s proposed combination of To and Busam for the reasons discussed supra in connection with the rejection of claim 1 but nonetheless sustain the rejection of claims 29-31 on a different basis. As discussed supra, the annotated version of To’s Figure 6 reproduced above shows how the ring members can be divided into three Appeal 2011-010345 Application 11/620,169 12 segments. For the purposes of analyzing claims 29-31, the lower segment is the first segment, the upper segment is the second segment, and the middle segment is the third segment. As can be seen in the Figure, the third segment extends between and interconnects the first and second segments and has a radius of curvature that is substantially greater than that of the first and second segments, and the radius of curvature of the first segment is less (and thus different) than the radius of curvature of the second segment. Regarding the limitations that the second radius of curvature is no more than about 0.5 inches and the first radius of curvature is no more than about 0.5 inches, Appellant does not contest the Examiner’s contention that one of ordinary skill in the art would have arrived at these claimed radius of curvature values through routine experimentation. Ans. 14-15, 16 (quoting In re Aller, 220 F.2d 454, 456 (CCPA 1955). We thus we agree with and adopt the Examiner’s contention. For the above reasons, we sustain the rejection of claims 29-31 under 35 U.S.C. § 103(a) as unpatentable over To and Busam. We designate our affirmance of the rejection of claims 29-31 as a “new ground” so as to afford Appellant a fair opportunity to respond to the thrust of the rejection. Claims 33 and 34 Pursuant to 37 C.F.R. § 41.50(b), we enter a new ground of rejection for claims 33 and 34 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement.6 Claim 33 calls for first and second ring members each having a lower segment that extends “laterally outward from a respective one of the longitudinal edges of the 6 We note that claim 33 also contains a typographical error in that the phrase “the lower segment” is repeated in succession. Appeal 2011-010345 Application 11/620,169 13 housing a distance greater than a diameter of the ring member.” According to the online Encarta Dictionary: English (North America), “diameter” means “a straight line running from one side of a circle or other rounded geometric figure through the center to the other side.” Appellant’s Specification does not define what dimension of the ring members 29 would be the claimed diameter, nor does the Specification even identify what would be the “center” of the substantially C-shaped ring members 29. Even assuming arguendo that the diameter of each ring member 29 is either the ring member width or the ring member height, H, (as shown in Appellant’s Figure 10), Appellant’s Figure 9 does not show that the lower segment 29a extends laterally outward from the respective longitudinal edge 10 of the housing 9 a distance greater than either of these “diameters.” We thus find that this subject matter is not described in the Specification in such a way as to reasonably convey to one of ordinary skill in the art that the inventors had possession of the claimed invention at the time the application was filed. Claim 34 fails to comply with the written description requirement because of its dependency from claim 33. Because claims 33 and 34 include subject matter not adequately described in the Specification, an obviousness analysis of these claims would require us to engage in considerable speculation as to the meaning of this subject matter. We decline to engage in such speculation and thus reverse, pro forma, the Examiner’s rejection of claims 33 and 34 under 35 U.S.C. § 103(a). Cf. In re Steele, 305 F.2d 859, 862 (CCPA 1962). Appeal 2011-010345 Application 11/620,169 14 DECISION We affirm the Examiner’s rejection of claims 1-4, 6-9, 11-26, and 29- 31 under 35 U.S.C. § 103(a) as being unpatentable over To and Busam and designate our affirmance as a NEW GROUND OF REJECTION. We reverse the Examiner’s rejection of claims 33 and 34 under 35 U.S.C. § 103(a) as being unpatentable over To and Busam. Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a NEW GROUND OF REJECTION of claims 33 and 34 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. In addition to affirming the Examiner’s rejection of one or more claims, this decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.50(b) (2011). 37 C.F.R. § 41.50(b) provides “[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 Appellant, 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 § 41.52 by the Board upon the same record. . . . Regarding the affirmed rejection, 37 C.F.R. § 41.52(a)(1) provides “Appellant may file a single request for rehearing within two months from Appeal 2011-010345 Application 11/620,169 15 the date of the original decision of the Board.” Should Appellant elect to prosecute further before the Examiner pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection, the effective date of the affirmance is deferred until conclusion of the prosecution before the Examiner unless, as a mere incident to the limited prosecution, the affirmed rejection are overcome. If Appellant elects prosecution before the Examiner and this does not result in allowance of the application, abandonment or a second appeal, this case should be returned to the Patent Trial and Appeal Board for final action on the affirmed rejection, including any timely request for rehearing thereof. 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). AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b) Klh Copy with citationCopy as parenthetical citation