Ex Parte Lu et al

Patent Trial and Appeal BoardOct 31, 2012

11493493 (P.T.A.B. Oct. 31, 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. 11/493,493 07/27/2006 Guixian Lu 8991 7590 10/31/2012 Guixian Lu 853 Melrose St. Pontiac, MI 48340 EXAMINER SMITH, RICHARD A ART UNIT PAPER NUMBER 2856 MAIL DATE DELIVERY MODE 10/31/2012 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 PATENT TRIAL AND APPEAL BOARD ________________ Ex parte GUIXIAN LU and HENGXIAN LU ________________ Appeal 2010-006547 Application 11/493,493 Technology Center 2800 ________________ Before DAVID M. KOHUT, TREVOR M. JEFFERSON, and LARRY J. HUME, Administrative Patent Judges. HUME, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection of claims 1-3 and 5. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2010-006547 Application 11/493,493 2 STATEMENT OF THE CASE 1 The Invention “The primary objective of this invention is to shorten the time necessary to convert a given length to a proportional length. The secondary objective is to reduce the possibility of making mistakes.” (Spec. p. 1, ll. 10- 12, (“Summary of the invention”)). Exemplary Claim 2 Independent claim 1 is representative of the invention and is reproduced below: 1. A proportional ruler that shortens the time to divide a given length into equal parts comprising: a. a standard ruler scale, on which the reading gives actual length of measurement; b. Proportional scales, each of which is associated with a proportional coefficient and comprises a zero point and at least a reference point marked by a read number; c. A ruler body where said scales are printed or engraved on. 1 Throughout this Decision, we refer to the Appeal Brief (App. Br.) filed Oct. 21, 2009; the Examiner’s Answer (Ans.) mailed Dec. 24, 2009; the Final Office Action (FOA) mailed May 9, 2008; and the original Specification (Spec.) filed Jul. 27, 2006. 2 The correct version of claims 1-5 on appeal is taken to be the version of claims provided by the Examiner in the claims appendix VII to the Examiner’s Answer. (Ans. 8). Appeal 2010-006547 Application 11/493,493 3 Prior Art The prior art relied upon by the Examiner in rejecting the claims on appeal is: Homan US 1,602,490 Oct. 12, 1926 Rejections on Appeal 3, 4 The Examiner has rejected claims 1-3 and 5 under 35 U.S.C. § 102(b) as being anticipated by Homan (Ans. 3). We have only considered arguments raised by Appellants in the Briefs. Arguments Appellants could have made but chose not to make in the Briefs have not been considered and are deemed to be waived. APPELLANTS’ CONTENTIONS Appellants contend that the Examiner has failed to establish that Homan anticipates claims 1-3 and 5 5 under 35 U.S.C. § 102(b). (App. Br. 4- 7). 3 We note that the Examiner objected to claim 4 as being “drawn to a method of using the ruler and not to the structure of the ruler,” (Ans. 2). This objection is petitionable and not appealable to the Board so that our Decision does not address this issue. Appellants also stated “Claim 4 is not to be appealed . . . [p]lease ignore it,” (App. Br. 4), and that “Applicant appeals the rejection of claims 1, 2, 3, and 5. . . .” (App. Br. 2). 4 Appellants have incorrectly identified the claims on appeal as being rejected under 35 U.S.C. § 103(a) as being unpatentable by Homan (Ans. 3) rather than being anticipated by Homan under 35 U.S.C. § 102(b) as stated by the Examiner in the Final Office Action (FOA 3). 5 See Footnote 3. Appeal 2010-006547 Application 11/493,493 4 More specifically, Appellants contend that Homan’s invention is not used for dividing a given distance into equal parts, with reference to a stated objective of Homan’s invention found at lines 6-16 of the Specification. Thus, “Homan’s invention has different usage from ours.” (App. Br. 5). Appellants also contend that “Homan’s invention cannot divide a given distance into three, five, seven, and nine of equal parts . . . [s]o Homan’s invention is less powerful than ours.” (App. Br. 6). Appellants further contend that “Homan did not claim coefficient of any whole number for his scales.” (App. Br. 6). Finally, Appellants contend that “[t]he examiner thinks that limitations from the specification are not read into the claim . . . [and i]f he thought our invention is better than what we claimed, why wouldn’t he write claims for us instead, of rejecting our application?” (App. Br. 7). ISSUE Appellants’ arguments present us with the issue: Did the Examiner err in finding that Homan discloses every limitation of Appellants’ claimed invention, particularly that Homan discloses a proportional ruler that includes “a standard ruler scale, on which the reading gives actual length of measurement . . . Proportional scales, each of which is associated with a proportional coefficient and comprises a zero point and at least a reference point marked by a read number . . . [and a] ruler body where said scales are printed or engraved on,” as recited by independent claim 1? Appeal 2010-006547 Application 11/493,493 5 ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ arguments that the Examiner has erred. We disagree with Appellants’ conclusions with respect to claims 1-3 and 5. We adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken and (2) the reasons and rebuttals set forth by the Examiner in the Examiner’s Answer (Ans. 3-6) in response to Appellants’ Arguments (App. Br. 4-7). We concur with the conclusions reached by the Examiner. 6 In particular, in response to Appellants’ contention that “Homan's invention is not used for divide [sic] a given distance into equal parts” (App. Br. 5), we concur with the Examiner’s finding that: [R]ecitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art . . . [and if] the prior art structure is capable of performing the intended use, then it meets the claim. (Ans. 4-5). We find that the prior art structure of Homan is capable of performing the intended use, and that Appellants’ claim 1 reads on Homan’s Figure 1. 6 We note that the Examiner rejected the claims on appeal as being anticipated by Homan, but in the Final Office Action (FOA 3) and Answer (Ans. 3), the Examiner states that “Nelson discloses a proportional ruler . . .” (emphasis added). We take this mistake by the Examiner to be harmless error, since Appellants understood the rejection, as evidenced by the arguments presented in their Appeal Brief discussed herein. Appeal 2010-006547 Application 11/493,493 6 Further, we find that Appellants’ arguments and observations comparing their Specification with Homan’s disclosure (App. Br. 5-7) are not commensurate with the scope of the subject matter claimed in claim 1. With respect to this finding, we agree with the Examiner that Appellants’ arguments identifying their disclosed features are found in the Specification and not in the claims. In this regard, Appellants improperly argue features which are not found in the claims. (Ans. 5). Based upon the above, we find that Homan’s disclosure cited by the Examiner in the Final Office Action and in the Examiner’s Answer is consistent with the Examiner’s findings and related claim construction. Accordingly, we are not convinced by Appellants that the Examiner erred in rejecting the claims on appeal. Therefore, we sustain the Examiner’s rejection of claim 1, as well as claims 2, 3, and 5 which fall therewith. CONCLUSIONS (1) The Examiner did not err in rejecting claims 1-3 and 5. (2) Claims 1-3 and 5 are not patentable. (3) Claim 4 is not under appeal, and is subject to cancellation by the Examiner. DECISION The decision of the Examiner to reject claims 1-3 and 5 is affirmed. Appeal 2010-006547 Application 11/493,493 7 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED ELD