Ex Parte Togashi et al

Patent Trial and Appeal Board

Mar 14, 2016

12224392 (P.T.A.B. Mar. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/224,392 11/18/2008
32628 7590 03/16/2016
KANESAKA BERNER AND PARTNERS LLP
2318 Mill Road
Suite 1400
ALEXANDRIA, VA 22314-2848
FIRST NAMED INVENTOR
Hiroshi Togashi
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
HIR-009 8288
EXAMINER
PERREAULT, ANDREW D
ART UNIT PAPER NUMBER
3788
NOTIFICATION DATE DELIVERY MODE
03/16/2016 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):
office@uspatentagents.com
docketing@ipfirm.com
pair_lhhb@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HIROSHI TOGASHI and JANSEN HUBERT
Appeal2014-000526
Application 12/224,392
Technology Center 3700
Before: CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
ERIC C. JESCHKE, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1,
12, 18, and 20-24. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
The claims are directed to an injector piston nest and injector pistons.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A combination comprising injector pistons and a
piston nest for housing the injector pistons, comprising:
Appeal 2014-000526
Application 12/224,392
a flat base plate having a plurality of openings, and front
and back sides,
plural cylindrical housing portions for rece1vmg the
injector pistons therein, said plural cylindrical housing portions
protruding substantially perpendicularly from the back side of
the base plate to surround the openings, and
annular expanded portions, each being formed on an inner
wall of each of said housing portions to protrude inwardly from
an inner peripheral surface thereof,
wherein the injector pistons are completely housed in said
piston nest for housing the injector pistons,
said injector piston has an indent on a part of an outer
peripheral surface of the injector piston in a peripheral direction,
said indent engages said expanded portion of the piston
housing so that said injector piston is kept in said piston housing
portion,
an inner diameter of each of said housing portions except
for an inner diameter of said expanded portion is substantially
uniform, and
each of said housing portions comprises two inner walls
inside each of said housing portions having same inner diameters
and extending upwardly and downwardly from two edges of each
of the annular expanded portions.
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Application 12/224,392
REJECTIONS
A. Claim 23 was rejected under 35 U.S.C. § 112, second paragraph. 1
B. Claims 1, 12, 18, 20-23 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Porfano (6, 164,044) and Heinz
(6,719,141).
C. Claim 24 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Porfano, Hertz, and Gamble (RE38,312).
D. Claim 12 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Porfano, Heinz, and Grupe (1,833,461).
E. Claims 1, 18, 21, 23 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Porfano and Tate (4,913,286).
F. Claims 20, 22 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Porfano, Tate, and Heinz
G. Claim 24 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Porfano, Tate, and Gamble.
H. Claims 1, 18, 21, 23, 24 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Porfano and Gamble.
I. Claims 20, 22 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Porfano, Tate, and Heinz.
1 Although there does not appear to be any express withdrawal of the§ 112
rejection (see Ans. 3), as the Examiner indicated that the after-final
amendment purporting to overcome it would be entered for purposes of
appeal (Adv. Act. Apr. 2, 2013), we regard the§ 112 rejection (Final Act. 2)
as impliedly withdrawn.
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Application 12/224,392
J. Claim 12 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over either Porfano and Tate or Porfano and Gamble,
further in view of Grupe.
OPINION
Rejections B-D
Independent claim 1 requires "plural cylindrical housing portions
protruding substantially perpendicularly from the back side of the base plate
to surround the openings, and annular expanded portions, each being formed
on an inner wall of each of said housing portions to protrude inwardly from
an inner peripheral surface thereof." Claim 1 also requires "an inner
diameter of each of said housing portions except for an inner diameter of
said expanded portion is substantially uniform, and each of said housing
portions comprises two inner walls inside each of said housing portions
having [sic the] same inner diameters and extending upwardly and
downwardly from two edges of each of the annular expanded portions." In
the final rejection, to address these limitations, the Examiner points to
sixteen different figures of Heinz, each depicting a different embodiment.
Final Act. 3. We have carefully reviewed each of the cited figures and it is
clear that none of these figures satisfies the claim language quoted above.
In the Examiner's response to Appellants' arguments, the Examiner
reiterates, without further explanation, the findings made above. However,
instead of explaining why the Examiner's findings in this regard were
correct the Examiner appears to take an entirely different position, stating
that "Porfano already discloses an inner diameter of housing portions that
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Application 12/224,392
are uniform (as shown in figure 4a at portion 78, 76). Porfano is then
modified by merely adding an expansion portion of the secondary reference
Heinz where the diameter remains the same except for the diameter of the
expanded portion." Ans. 10. We note Porfano's collars 76 are described as
"slightly tapered, frustoconical shaped" (col. 6, 11. 49-56) and the Examiner
does not explain why one skilled in the art would understand a frustum as
having a substantially uniform diameter. In any case, the Examiner does not
direct our attention to, nor do we recognize, any indication that this was the
basis for the Examiner's rejection B. The Examiner's comments pertaining
to a different basis for rejecting claim 1 are not germane to the rejection
from which this appeal was taken and thus, do not demonstrate the absence
of error in the Examiner's rejection. See In re Stepan Co., 660 F.3d 1341,
1345 (Fed. Cir. 2011) (It is the PTO's obligation to provide timely notice to
the applicant of all matters of fact and law asserted.).
The Examiner also directs our attention to Figure 2a of the present
application, which includes a taper. Ans. 11. To the extent the Examiner is
pointing out that claim 1 does not preclude the presence of a taper, we agree.
Indeed claim 20, which depends from claim 1, includes limitations related to
such a structure. Even considering the fact that the presence of a taper at a
housing opening is not precluded by claim 1, it remains unapparent how any
of the cited embodiments of Heinz disclose a structure satisfying the claim
limitations quoted above.
Accordingly, we reverse rejection B along with rejections C and D,
which rely on the same erroneous findings.
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Application 12/224,392
Rejections E-G and J (Poifano, Tate and Grupe)
Regarding rejection E, Appellants correctly argue that "[t]he
disclosures of Tate to which the Office referred to (i.e., column 3, lines 20-
40 and from column 5, line 13 to column 6, line 30) relate to that carrier pins
48 are 'readily attached/releasable' to/from socket terminals 50, but not [sic
that] carrier pins 48 or socket terminals 50 are 'readily attached/releasable'
to/from carrier board 46 (which has a plurality of apertures 56 thereon)."
App. Br. 9 (paraphrasing Final Act. 6) (emphasis in original). Indeed, Tate
states that carrier pins 14 are permanently secured in the apertures 18 by
barbs 30. Col. 4, 11. 32-35. Those barbs cooperate with the structure of
Tate's figure 7 embodiment relied on by the Examiner as the recited
"expanded portion[]." As barb 30 is present in both embodiments we, like
Appellants, understand this teaching regarding permanent fixation as
applicable to both of Tate's embodiments. This undermines the Examiner's
stated rationale for incorporating the features of Tate into Porfano: "the
intended contents are readily attached and readily releasable." See Final
Act. 6. Accordingly, as the Examiner has failed to articulate reasoning with
some rational underpinning to support the legal conclusion of obviousness,
we do not sustain rejections E-G, and J to the extent that rejection J relies on
the combination of Porfano and Tate. See In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006), cited with approval in KSR Int'! Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007).
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Application 12/224,392
Rejection H
It is not entirely clear what issues Appellants seek review of
concerning the Examiner's proposed combination of Porfano and Gamble in
rejection H. Appellants state that they disagree with the Examiner's finding
of diametrical uniformity above and below expanded portions (App. Br. 10)
but do not provide any explanation as to why. Such uniformity appears
plainly visible in the cited Figure 7 of Gamble. See Final Act. 8. Appellants
summarize a portion of the Gamble disclosure (App. Br. 10-11) and state
"the present application, the piston nest itself holds and houses the pistons
therein. Unlike Gamble, the piston nest of the present application does not
receive or require a separate 'cap' to hold and house the pistons." We are
not apprised of what relevance this has to the Examiner's rejection, which
does not involve proposing to put the Gamble cap on Porfano, but to employ
a similar expanding gripping structure. Appellants conclude by stating that
"[Gamble] lacks reasons or motivation for a skilled artisan to apply the inner
diameter of the housing portions and the annular expanded portion of
Gamble to Porfano et al. to achieve the present application." App. Br. 12
However, this statement does not address, or even acknowledge, the
reasoning articulated by the Examiner. See Final Act. 8-9. The Examiner's
factual findings, reasoning and conclusions concerning this proposed
combination stand uncontroverted. As such we are not apprised of error in
the Examiner's rejection of claim 1 as being unpatentable over Porfano and
Gamble. See 37 C.F .R. § 41.37 ( c )(iv)("The arguments shall explain why the
examiner erred as to each ground of rejection contested by appellant.").
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Application 12/224,392
We recognize that there are additional arguments spanning pages
11-12 of the Appeal Brief. However, these arguments do not appear to
address any language present in claim 1. These arguments may be directed
to one or more of the dependent claims, such as 12, 18, or 24, all of which
involve either an express "clearance" recitation or a recitation that has been
paraphrased in the record as such. Our rules regarding briefing require
identification of the specific claims argued and separate subheadings
therefore. See 3 7 C.F .R. § 41.3 7 ( c )(iv). At most Appellants' arguments
amount to an invitation to the Board to advocate for Appellants by scouring
the record to see if the Board can identify some flaw in the Examiner's
findings of fact, articulated reasoning, or legal conclusions. We will not do
so. See Ex Parte Frye, 94 USPQ2d 1072, 1075-76 (BPAI 2010); see also,
Halliburton Energy Servs., Inc. v. M-1 LLC, 514 F.3d 1244, 1250 n.2 (Fed.
Cir. 2008) ("A skeletal 'argument', really nothing more than an assertion,
does not preserve a claim .... Judges are not like pigs, hunting for truffles
buried in briefs.") (citation omitted). Accordingly, we affirm rejection Hon
claim 1 and claims 18, 21, 23, and 24 argued as a group therewith.
Rejection I
In arguing rejection I, 2 Appellants incorporate by reference the
arguments made concerning rejection F. App. Br. 12. Appellants, attacking
the Examiner's stated motivation for incorporating the tapering aspect of
2 It is noted that antecedent basis for "open ends of each of the housing
portions" appears to be presumed without expressly introducing such a
limitation into claim 20, 22 parent claim 1. The Examiner may wish to
require or request clarification in any further prosecution.
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Application 12/224,392
Heinz into Porfano, argue that "the claimed features are irrelevant to 'secure
vibration free and/or rattle free holding and transport of a device' as misled
by the Office." App. Br. 9--10. First, although this may be a different
problem than that with which Appellants were concerned, Appellants do not
apprise us of any reason why a taper would not help to secure a piston by
guiding it into snug engagement with the housing. A snug fit would seem to
help minimize vibration as the Examiner reasonably found. It is not
necessary for the prior art to serve the same purpose as that disclosed in
Appellants' Specification in order to support the conclusion that the claimed
subject matter would have been obvious. See In re Lintner, 458 F.2d 1013,
1016 (CCPA 1972); see also KSR, 550 U.S. at 419 ("[N]either the particular
motivation nor the avowed purpose of the [Appellants] controls" in an
obviousness analysis.). Second, and perhaps more convincingly, as
Appellants acknowledge, the Examiner's articulated reason for including the
taper includes "to improve self-centering, as well as guiding and clamping."
Final Act. 9. We understand Appellants' motivation for supplying a taper,
so that "the injection piston runs smoothly in each of the housing portions"
(App. Br. 10), to describe a similar, if not identical benefit. The Examiner's
position in this regard stands uncontroverted. Accordingly, we sustain
rejection I.
Rejection J (Porfano, Gamble, and Grupe)
In arguing rejection J, Appellants incorporate by reference the
arguments made concerning rejection D. App. Br. 12. Appellants argue that
in Grupe "the outer surface of the cylindrical surface 11 contacts with part
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Application 12/224,392
21 all the way. Therefore, the roll of Grupe does not provide a clearance as
claimed in the present application, thus [does] not give the same 'cushion'
effect as the clearance of the present application (see Figs. 2(a) and 2(b) of
the present application). In the present application, only the indent of
injector piston contacts with the housing portion at the expanded portion."
App. Br. 8 (emphases omitted). Appellants' arguments indicate that
Appellants are referring to the clearance along the longitudinal axis of the
piston, which is visible in Figures 2(a) and 2(b) of the present application.
This clearance results from "a maximum diameter [of the piston being]
slightly smaller than the inner diameter (A) of the piston housing portion 3
except the expanded portion 4 (A> B)." Spec. p. 6. This may be relevant to
claims 18 and 24 but claim 12 involves the angular intermittency of the
expanded portions as can be seen in Figure 4. Both the Examiner and
Appellants at times paraphrase this aspect of claim 12 also as a "clearance."
However, Appellants' arguments pertaining to rejection D relate only to the
clearance of claims 18 and 24 as opposed to that of claim 12. Accordingly,
Appellants' arguments do not apprise us of error in rejection J as the
Examiner's findings, reasoning and conclusions regarding rejection J are
uncontroverted. Thus, to the extent rejection J relies on the combination of
Porfano, Gamble, and Grupe, we sustain rejection J.
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DECISION
The Examiner's rejection of claims 1, 12, 18, 20-23 over Porfano and
Heinz is reversed.
The Examiner's rejection of claim 24 is rejected over Porfano, Hertz,
and Gamble is reversed.
The Examiner's rejection of claim 12 over Porfano, Heinz, and Grupe
is reversed.
The Examiner's rejection of claims 1, 18, 21, 23 over Porfano and
Tate is reversed.
The Examiner's rejection of claims 20, 22 over Porfano, Tate, and
Heinz is reversed.
The Examiner's rejection of claims 24 over Porfano, Tate, and
Gamble is reversed.
The Examiner's rejection of claims 1, 18, 21, 23, 24 over Porfano and
Gamble is affirmed.
The Examiner's rejection of claims 20, 22 over Porfano, Tate, and
Heinz is affirmed.
The Examiner's rejection of claims 12 over Porfano, Tate, and Grupe
is reversed.
The Examiner's rejection of claims 12 over Porfano, Gamble, and
Grupe is affirmed.
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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)(l )(iv).
AFFIRMED2
3 See 37 C.F.R. § 41.50(a) ("The affirmance of the rejection of a claim on
any of the grounds specified constitutes a general affirmance of the decision
of the examiner on that claim, except as to any ground specifically
reversed.")
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