Ex Parte Yamamoto et al

Board of Patent Appeals and Interferences

Jan 23, 2012

10548175 (B.P.A.I. Jan. 23, 2012)

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.
10/548,175 01/24/2006 Hiroki Yamamoto 040894-7312 2057
9629 7590 01/23/2012
MORGAN LEWIS & BOCKIUS LLP (WA)
1111 PENNSYLVANIA AVENUE NW
WASHINGTON, DC 20004
EXAMINER
CHUKWURAH, NATHANIEL C
ART UNIT PAPER NUMBER
3721
MAIL DATE DELIVERY MODE
01/23/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte HIROKI YAMAMOTO, MICHIAKI ADACHI,
TERUFUMI HAMANO, TATSUSHI OGAWA, KOUJI KUBO, and
YASUNORI AIHARA
____________________

Appeal 2010-001562
Application 10/548,175
Technology Center 3700
____________________

Before JENNIFER D. BAHR, LINDA E. HORNER, and
EDWARD A. BROWN, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-001562
Application 10/548,175

2
STATEMENT OF THE CASE
Hiroki Yamamoto et al. (Appellants) appeal under 35 U.S.C. § 134(a)
from a rejection of claims 1 and 4-12. (App. Br. 2). Claims 2 and 3 were
cancelled. (Id.). An oral hearing was held on January 19, 2012. We have
jurisdiction over this appeal under 35 U.S.C. § 6(b).
We reverse.
THE INVENTION
Independent claim 1, reproduced below, is representative of the
appealed claims:
1. A nailing machine comprising:
a driver that is configured to hammer out a
nail;
a nose portion having a first ejection
opening for slidably guiding the driver;
a contact holder fixed to a lower end of the
nose portion;
a nose top that is held by the contact holder
and slidable with respect to the nose portion
and the contact holder along a direction in which
the nail is hammered out, wherein the nose top
includes a second ejection opening aligned with
the first ejection opening of the nose portion;
side walls formed in the nose top on a rear
side of the second ejection opening; and
a ratchet member, disposed in the nose top
and provided between the sidewalls, and including
a slope for guiding an end portion of the nail that is
inclined toward a rear side of the second ejection
opening into the second ejection opening, and a
guide surface for guiding the end portion of the
nail to a center of the second ejection opening,
wherein the ratchet member is urged so that
the guide surface of the ratchet member enters into
the second ejection opening.
Appeal 2010-001562
Application 10/548,175

3

THE REJECTIONS
1. Claims 1 and 4-11 are rejected under 35 U.S.C. § 102(e) as
anticipated by Canlas (US 6,789,718 B2; issued Sep. 14, 2004).
2. Claim 12 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Canlas and Howard (US 5,238,167; issued Aug. 24, 1993).
ANALYSIS
Rejection of claims 1 and 4-11 as anticipated by Canlas
Claim 1 is directed to a nailing machine comprising, inter alia, "a
contact holder fixed to a lower end of the nose portion." (Emphasis added).
The Examiner found Canlas discloses a nailing machine including a "nose
portion" (i.e., nosepiece assembly 18), a "nose top" (i.e., opening locating
structure 60), and a "contact holder" (i.e., contact trip assembly 42) fixed at
the lower end of the nose portion. (Ans. 3, citing Canlas, Figs. 1, 2; see also
Canlas, col. 4, ll. 41-44; col. 5, ll. 46-50; col. 6, ll. 20-24). The Examiner
found the "Canlas contact holder is held in place at the lower nose portion,
not removed, and therefore deemed fixed." (Ans. 6) (emphasis added).
Appellants contend that Canlas' contact trip assembly 42 is "slidable"
along nose piece 18. (App. Br. 5). Appellants contend "fixed" means
"firmly in position; stationary." (Reply Br. 2).1 Appellants contend Canlas'
contact trip assembly 42 is not firmly in place or stationary with respect to
nosepiece assembly 18, and hence not fixed to the nosepiece assembly.
(Id.). We note Canlas describes "[t]he contact trip assembly 42 includes a
trigger enabling portion 44 and a movable assembly 45 coupled to the

1 We note an ordinary meaning of fixed is "securely placed or fastened:
stationary." Merriam-Webster's Collegiate Dictionary 474 (11th ed. 2003).
Appeal 2010-001562
Application 10/548,175

4
trigger enabling portion 44 and movably connected to the nosepiece 18."
(Canlas, col. 5, ll. 53-56; see Fig. 1) (emphasis added).
Claims are to be given their broadest reasonable interpretation
consistent with the specification, reading the claim language as it would be
interpreted by one of ordinary skill in the art. See In re Am. Acad. of Sci.
Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). We note Figure 2 of
Appellants' application depicts the nose portion 8 abutting the contact holder
18, and Appellants' Specification describes "contact holder 18 formed at the
end of the nose portion 8." (Spec. 12, ll. 10-13). We find Appellants'
construction of "fixed" to be consistent with the Specification, while we
agree with Appellants that the Examiner's construction of "fixed" is
unreasonably broad. Hence, the Examiner's finding that Canlas discloses "a
contact holder fixed to a lower end of the nose portion" is not supported by a
preponderance of the evidence.
Claim 1 also recites "a ratchet member, disposed in the nose top and
provided between the sidewalls." (Emphasis added). The Examiner found
Canlas discloses a "ratchet member" (i.e., guiding structure 90) held by the
contact holder and "disposed in" the "nose top" (60). (Ans. 3; see also
Canlas, Figs. 1, 2; col. 6, ll. 20-24). Appellants contend that Canlas' guiding
structure 90 is not "disposed in" opening locating structure 60. (App. Br. 6,
citing Fig. 2 of Canlas). We agree. Figures 1 and 2 of Canlas relied on by
the Examiner actually support Appellants' contention. Hence, we do not
sustain the rejection of claim 1, and claims 4 and 6-8 which depend from
claim 1.
Independent claim 5 also calls for "a contact holder fixed to a lower
end of the nose portion," and "a ratchet member disposed in the nose top."
Appeal 2010-001562
Application 10/548,175

5
Hence, we also do not sustain the rejection of claim 5, and claims 9-11
which depend from claim 5.
Rejection of claim 12 as unpatentable over Canlas and Howard
Claim 12 depends from claim 5. The Examiner's application of
Howard for claim 12 does not remedy the deficiencies of the Examiner's
reliance on Canlas with respect to claim 5. Hence, we do not sustain the
rejection of claim 12.
DECISION
1. The rejection of claims 1 and 4-11 under 35 U.S.C. § 102(e) as
anticipated by Canlas is REVERSED.
2. The rejection of claim 12 under 35 U.S.C. § 103(a) as
unpatentable over Canlas and Howard is REVERSED.

REVERSED

mls