Ex Parte Knight et al

Patent Trial and Appeal BoardApr 24, 2013

10514507 (P.T.A.B. Apr. 24, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte JONATHAN ARNOLD MANLEY KNIGHT and BARRY HOWARD LEE ____________________ Appeal 2011-001279 Application 10/514,507 Technology Center 3700 ____________________ Before: GAY ANN SPAHN, BENJAMIN D. M. WOOD, and JOHN W. MORRISON, Administrative Patent Judges. WOOD, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-001279 Application 10/514,507 2 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1, 3, 4, 6-8, and 10-16. Claims 2, 5, and 9 have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. THE INVENTION The claims are directed to “a quick-release arrangement for a hand- held device” such as a hand tool. Spec. 1, ll. 3-4. Claim 1, reproduced below, is illustrative of the claimed subject matter: A quick-release arrangement for a hand tool comprising a belt clip and an engagement element, wherein: the belt clip is adapted to fit on a user’s belt or waistband; the engagement element is attachable to a hand tool; and the belt clip has a retaining portion, the retaining portion comprising a U-shaped retaining lip and a U-shaped channel located behind the retaining lip to slidably accept the engagement element to a limit point and the retaining portion shaped to form an interference fit with the engagement element at said limit point, wherein the limit point is defined by a closed bottom end of the U-shaped channel, and wherein the engagement element is separated from the retaining portion by an upward movement in a direction opposite from that in which it is inserted into the U-shaped channel, wherein the interference fit is provided by resilient co- operation between a tooth and a recess and the retaining portion includes an elongate release lever having a pivot at one end and a handle at the other end, the tooth and recess being located Appeal 2011-001279 Application 10/514,507 3 intermediate the two ends of the release lever and the handle being accessible to a user and manually operable to displace the release lever about the pivot and in a direction away from the engagement element for separation of the tooth and the recess to allow removal of the engagement element; and wherein the retaining portion and the engagement element are shaped to allow the engagement element to rotate slidably with respect to the retaining portion and maintain the interference fit between them. REFERENCES Johnson Saarikko Mah Wang US 4,598,027 US 5,597,102 US 5,996,184 US 6,283,348 B1 Jul. 1, 1986 Jan. 28, 1997 Dec. 7, 1999 Sep. 4, 2001 REJECTIONS Claims 15 and 16 stand rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written-description requirement. Ans. 3. Claims 15 and 16 stand rejected under 35 U.S.C. § 112, second paragraph, as indefinite. Ans. 4. Claims 1-4, 6, 7, and 15 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Saarikko and Mah. Ans. 4. Claim 8 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Saarikko, Mah, and Johnson. Ans. 7. Claims 10-12, 14, and 16 stand rejected under 35 U.S.C §103(a) as unpatentable over Saarikko, Mah, and Wang. Ans. 8. Claim 13 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Saarikko, Mah, Wang, and Johnson. Ans. 8. Appeal 2011-001279 Application 10/514,507 4 ANALYSIS Claims 15 and 16 – Written-Description Requirement Claim 1 recites a belt clip with a “retaining portion” that comprises a “U-shaped retaining lip” and a “U-shaped channel located behind the retaining lip.” App. Br., Claims Appx. 1. The U-shaped channel slidably accepts an “engagement element” to a “limit point,” the latter being “defined by a closed bottom end of the U-shaped channel.” Id. Claim 10 contains similar limitations. Id. at 3. Claims 15 and 16 depend from claims 1 and 10, respectively, and additionally require that the limit point lie below the retaining lip. App. Br., Claims Appx. 4. The Examiner rejected claims 15 and 16 under 35 U.S.C. § 112, first paragraph, as being inadequately described in the Specification, finding that “[n]owhere in the originally filed disclosure is the limit point said to lie beneath the retaining lip.” Ans. 3. Appellants respond that this feature is described in the Specification “at least at page at 3, lines 5-10; page 4, lines 17-19; and Figure 3, which shows that the engagement element 20 is accepted to a limit point which lies below the retaining lip 17 and is defined by the (U-shaped) channel.” App. Br. 9. The originally filed disclosure describes and illustrates a U-shaped retaining lip 17 that appears to be the generally planar structure parallel to the back plate 13. Spec. 6, figs. 2a, 3. The U-shaped channel 18 – the space between the retaining lip 17 and the back plate 13 – is bounded on the outside by the structure that connects the retaining lip 17 to the back plate 13. Id. The limit point would therefore be the bottom portion of this structure. It appears to us from figure 3 that the bottom portion of this structure lies below the retaining lip, and therefore that the originally filed Appeal 2011-001279 Application 10/514,507 5 disclosure adequately describes the additional limitation of claims 15 and 16. We do not sustain the Examiner’s rejection of these claims as failing the written-description requirement. Claims 15 and 16 – Indefiniteness Because we are able to discern from figure 3 that the limit point lies below the retaining lip, we do not agree with the Examiner that this limitation is unclear. We therefore do not sustain the Examiner’s rejection of claims 15 and 16 as indefinite. Claims 1-4, 6, 7, and 15 – Obviousness – Saarikko and Mah As stated above, independent claim 1 requires that the U-shaped channel slidably accept an engagement element to a limit point, which is “defined by a closed bottom end of the U-shaped channel.” App. Br., Claims Appx. 1. Claims 2-4, 6, 7, and 15 depend from claim 1. Id. at 1-4. The Examiner found, inter alia, that Sarrikko’s fastener 2 and guide flange 8 correspond to the claimed engagement element and retaining lip, respectively. Ans. 4-5. The Examiner interpreted the claimed “U-shaped channel” to be “formed by the U-shaped cutout in the lip itself, . . . not the channel (18) behind the lip.” Ans. 10; see Ans. 11. The Examiner found that “Saarikko clearly discloses a limit point at which the engagement element (2) is slid into abutment with the retaining lip (8), as seen in Figure 5.” Ans. 12. Appellants argue that the Examiner erred in finding that Saarikko discloses a U-shaped channel that slidably accepts an engagement element “to a limit point,” i.e., to the closed bottom end of the channel. App. Br. 16-17. We agree. The Examiner’s interpretation of U-shaped channel is erroneous because claim 1 defines the channel as being behind the retaining Appeal 2011-001279 Application 10/514,507 6 lip, not part of the retaining lip itself. The limit point is the bottom of this channel and, as evident from Saarikko’s figure 5, fastener 2 does not slide down to the bottom of the channel. We therefore do not sustain the Examiner’s rejection of claim 1 as obvious over Saarikko and Mah. Claim 8 – Obviousness – Saarikko, Mah, and Johnson Claim 8 ultimately depends from claim 1. App. Br., Claims Appx. 2. Johnson is not relied on by the Examiner to cure the above-noted deficiency of the Saarikko reference. The rejection of claim 8 over Saarikko, Mah, and Johnson is not sustained. Claims 10-12, 14, and 16 – Obviousness – Saarikko, Mah, and Wang Like claim 1, claim 10 requires that the U-shaped channel slidably accept the engagement element to the limit point. Id. at 3. Claims 11, 12, 14, and 16 depend from claim 10. Id. at 3-4. Wang is not relied on by the Examiner to cure the above-noted deficiency of the Saarikko reference. The rejection of claims 10-12, 14, and 16 is not sustained. Claim 13 – Obviousness – Saarikko, Mah, Wang, and Johnson Claim 13 depends from claim 10. Id. at 4. As stated above, neither Wang nor Johnson is relied on by the Examiner to cure the above-noted deficiency of the Saarikko reference. The rejection of claim 13 as obvious over Saarikko, Mah, Wang, and Johnson is therefore not sustained. DECISION For the above reasons, the Examiner’s rejection of claims 1, 3, 4, 6-8, and 10-16 is reversed. REVERSED Klh