Ex Parte Nezuka

Patent Trial and Appeal Board

Aug 30, 2017

13616073 (P.T.A.B. Aug. 30, 2017)

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.
13/616,073 09/14/2012 Masakichi Nezuka 100020A 8530
23850 7590 08/31/2017
KRATZ, QUINTOS & HANSON, LLP
1420 K Street, N.W.
4th Floor
WASHINGTON, DC 20005
EXAMINER
MORGAN, EMILY M
ART UNIT PAPER NUMBER
3677
MAIL DATE DELIVERY MODE
08/31/2017 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 MASAKICHINEZUKA1
Appeal 2016-005027
Application 13/616,073
Technology Center 3600
Before ALLEN R. MacDONALD, BRADLEY W. BAUMEISTER,
STACEY G. WHITE, Administrative Patent Judges.
BAUMEISTER, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—4, which constitute all the claims pending in this
application. App. Br. 10.2 We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1KIYOHARA KABUSHIKI KAISHA is listed as the real party in interest.
App. Br. 3.
2 Rather than repeat the Examiner’s positions and Appellant’s arguments in
their entirety, we refer to the following documents for their respective
details: the Final Action mailed November 25, 2014 (“Final Act.”); the
Appeal Brief filed April 13, 2015 (“App. Br.”); and the Examiner’s Answer
mailed July 17, 2015 (“Ans.”).
Appeal 2016-005027
Application 13/616,073
STATEMENT OF THE CASE
Appellant describes the present invention as a strap-shaped rod-like
body for use in ornamental-accessory applications. Spec. 1. More
specifically, the strap-shaped body includes ornamental bodies, such as
jewels, attached to the surface via a hot-melt adhesive. Id. The ornamental
body can be used in accessories such as necklaces, bracelets, hair ornaments,
and handbag handles. Id.
Independent claim 1, reproduced below, is illustrative of the appealed
claims:
1. An ornamental rod-like body comprising a strap-shaped 1
ornamental body that includes:
a plurality of granular ornamental bodies selected from the
group consisting of a jewel, an artificial jewel, a bead, a noble-
metal ball, and a metal ball;
a connecting member configured to arrange the granular
ornaments bodies in a plurality of rows and connect the granular
ornamental bodies to each other;
an adhesion member, comprising a ribbon-shape base
material, having on both sides thereof an adhesive layer
comprising a hot-melt adhesive for which the heating
temperature is equal to or more than 400 degrees Celsius, the
adhesion member being configured to be provided on a backside
of the connect member; and
a reinforcing core around which the adhesion member is
wound, the strap-shaped ornamental body being adhered and
secured to the reinforcing core via the adhesive layer such that
the adhesion member is wound around the reinforcement core
with the granular ornamental bodies exposed radially outward of
the reinforcing core.
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Application 13/616,073
Claims 1—3 stand rejected under 35 U.S.C. § 112(b) as being
indefinite. Final Act. 2.
Claims 1—4 stand rejected under 35 U.S.C. § 103(a) as obvious over
Nezuka (JP 2006181151; published July 13, 2006), Krzeszowski
(US 4,123,305; issued Oct. 31, 1978) and Kirschbaum (US 5,190,810;
issued Mar. 2, 1993). Final Act. 3—8.
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
INDEFINITENESS REJECTION
Findings and Contentions
The Examiner rejects claims 1—3, but not dependent claim 4, as
indefinite based upon the following rationale:
Regarding claim 1, Applicant now claims “a hot melt
adhesive for which the heating temperature is equal to or more
than 400 degrees Celsius”. Examiner is unsure if applicant is
claiming a process (requiring the heat to be 400C or greater), or
the material property of the hot melt adhesive (melting
temperature is a material property). Examiner assumes that
applicant is narrowing the available hot melt adhesives to those
that require 400C or greater to melt.
Final Act. 2.
In the Appeal Brief, Appellant confirms the Examiner’s interpretation.
App. Br. 7 (“As correctly assumed by the Examiner, the applicant is
narrowing the available hot melt adhesive to those that require 400°C or
greater to melt.”). Appellant then requests, “[sjince the Examiner has made
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Application 13/616,073
the correct assumption, it is respectfully requested that the amendment to
Claim 1 be entered.” Id.
The subsequently mailed Examiner’s Answer includes the boilerplate
statement,
(1) Grounds of Rejection to be Reviewed on Appeal
Every ground of rejection set forth in the Office action dated
11/25/2014 from which the appeal is taken is being maintained
by the examiner.
Ans. 2. However, the Answer does not address Appellant’s arguments
regarding the indefiniteness rejection. See generally Ans. We surmise that
the Examiner intends to maintain the indefiniteness rejection for the reasons
set forth in the Final Rejection.
Analysis
As a threshold matter, the Examiner indicated that she rejected the
claims under 35 U.S.C. §§ 112(b) and 103(a)—not that she refused entry of
the amendment. Final Act. 2. We therefore interpret Appellant’s request
that the claim amendment be entered (App. Br. 7), instead, to be intended as
a request that we reverse the indefiniteness rejection.
Turning to the merits, we agree with the Examiner’s general
proposition that there are times when it is insufficiently clear whether a
claim limitation is directed to a description of a structure’s functionality or,
alternatively, directed to a method. It is also true that claim drafters
sometimes present hybrid claims—claims that set forth both structural
limitations and method limitations. In both of these cases, an indefmiteness
rejection may well be appropriate. See, e.g., IPXL Holdings, L.L.C. v.
Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005) (explaining that
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Application 13/616,073
reciting both an apparatus and a method of using that apparatus renders a
claim indefinite under section 112).
However, such is not the case here. The entire limitation in question
reads as follows:
an adhesion member, comprising a ribbon-shape base
material, having on both sides thereof an adhesive layer
comprising a hot-melt adhesive for which the heating
temperature is equal to or more than 400 degrees Celsius, the
adhesion member being configured to be provided on a backside
of the connect member[.]
The Examiner fails to set forth any rationale for why one of ordinary
skill would not be reasonably apprised of which particular interpretation is
intended. In fact, read in context, it is reasonably clear that claim 1 intends
to recite a structure (a hot-melt adhesive) and a physical characteristic of the
structure (melting point of 400 degrees Celsius or greater). Such reasonably
clear claiming is permissible and does not run afoul of section 112(b)’s
requirement for a claim to particularly point out and distinctly claim the
subject matter.
Accordingly, we do not sustain the indefmiteness rejection of claims
1-3 under 35 U.S.C. § 112(b).
The OBVIOUSNESS REJECTION
Findings
The Examiner finds that Nezuka discloses an ornamental rod-like
body that comprises a strap-shaped ornamental body, which, in turn,
comprises a plurality of granular ornamental bodies, a connecting member,
an adhesive layer comprising hot melt, and a reinforcing core around which
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Application 13/616,073
the adhesion member is wound, and to which the strap shaped ornamental
body is adhered. Final Act. 3^4.
The Examiner reasons that even though Nezuka does not state
expressly that the hot melt adhesive has a melting point of 400 C or greater,
Nezuka discloses various adhesive materials that the present Specification
indicates have such a melting point. Id. at 4—5 (explaining that Nezuka’s list
of adhesives is exactly the same as the list disclosed by the present
invention). The Examiner concludes that satisfying the claimed temperature
range, then, would constitute “select[ing] a known material on the basis of
its suitability for the intended use as a matter of obvious engineering design
choice.” Id. at 5.
The Examiner additionally finds that while Nezuka applies hot melt
adhesive directly to the reinforcing member {Id. at 5—6), Krzeszowski
discloses an adhesion member comprising a ribbon shape base material
having hot melt adhesive on both sides. Id. at 5 (citing Krzeszowski col. 6,
11. 47-48). The Examiner concludes that it would have been obvious to have
substituted Krzeszowski’s double-side adhesive-coated ribbon-shape base
material for Nezuka’s connecting member and hot melt because they were
known equivalents used for the same purpose. Id.
The Examiner further finds that “[the combination of Nezuka and]
Krzeszowski discloses the use of a strip of double sided hot melt adhesive
tape, but does not disclose it being ‘wound.’” Id. at 6. The Examiner relies
on Kirschbaum for teaching the use of tape with two sides of adhesive, the
tape being wound around a reinforcing member. Id. The Examiner
concludes that it would have been obvious to wind the tape of Nezuka-
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Krzeszowski, as taught by Kirschbaum, because “Nezuka requires the use of
hot melt on a cylindrical object.” Id.
Appellant presents multiple arguments. App. Br. 9—10. These
arguments will be addressed seriatim in the ensuing Analysis section.
Contentions and Analysis
Appellant first contends
Applicants’ earlier publication [Nezuka] is cited as showing use
of a hot melt adhesive on a linear reinforcing member. There is,
however, no limiting to use of a hot melt adhesive, for which the
heating temperature is equal to or more than 400 degree Celsius,
on a ribbon-shaped base material, with such an adhesion
members with hot melt adhesive on both sides. The Kirschbaum
reference does not cure the deficiencies of Applicants’ earlier
publication.
App. Br. 9.
Appellant then further clarifies which portion of this inventive
concept Kirschbaum allegedly fails to teach: Specifically, Appellant argues
that even though Nezuka discloses use of hot melt adhesive, and that hot
melt adhesive is sticky, “[t]his does not lead one to the ribbon-shaped base
material in the present claims used with an adhesive member having a
specific hot melt adhesive on both sides.” Id. at 9. According to Appellant,
only one surface of Kirschbaum’s tape—as opposed to both opposing
surfaces—has an adhesive layer. Id.
This argument is unpersuasive. Kirschbaum expressly
describes the pressure sensitive tape 12 as having both sides coated
with respective adhesive layers 14, 18. Kirschbaum col., 7,11. 36-41.
Appellant further argues
Krzeszowski ’305 [is] cited to show an adhesive member of a
ribbon-shape that has an adhesive layer of a hot melt adhesive on
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Application 13/616,073
both sides and then it is alleged that it would be obvious to use
such an adhesion member as in the present claims. The
’305 reference is, however, directed to an aluminum sheet that
has a thermofusable glue which is fused by application of a field
generated by a source of magnetic induction. The aluminum
sheet preferably has holes in the sheet small enough for the heat
generated in the sheet to melt the glue in the holes to glue an
article, such as a carpet, to a floor. One would not delve into the
’305 reference, and its distinct purpose, to search for a specific
glue or find a “ribbon-shape” base material, rather there a sheet
serving on a vapor barrier.
App. Br. 10. Appellant summarizes that “[o]ne would not be led to combine
the cited references to arrive at the presently] claimed ornamental body,
absent first reading Applicant’s specification.” Id.
Appellant’s arguments are persuasive. First, the Examiner has not
established why one would not have looked to the carpet-laying arts and
medical-instruments arts to modify a piece of jewelry. The Examiner
appears to have used Appellant’s disclosure as a roadmap in formulating the
rejection.
Second, even if we were to assume, solely for the sake of argument,
that one of ordinary skill would have looked to Krzeszowski and
Kirschbaum to modify Nezuka’s jewelry, and in so doing, found the cited art
suggests double-sided hot-melt adhesive tape could be used for securing
jewelry, the Examiner has not explained sufficiently why the cited prior art
would have motivated one of ordinary skill to wind the omamental-body-
clad connecting member around a reinforcing core in the first place. The
rejection will not be sustained in the absence of a sufficiently articulated
reason with some rational underpinning to support the conclusion that it
would have been obvious to wind the claimed ornamental bodies around a
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reinforcing core. See KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007).
As noted above, the Examiner finds, without citing support, that
“Nezuka requires the use of hot melt on a cylindrical object.” Final Act. 6.
But the only cylindrical body arguably disclosed by Nezuka is the twisted
strap-shaped ornamental body, itself. That is, Nezuka discloses that the
strap-shaped ornamental body is twisted around itself—not around a
reinforcing core or any other cylindrical body. Thus, the Examiner’s
conclusions of obviousness are unsupported because the combination of
Nezuka, Krzeszowski, and Kirschbaum does not teach the recited
“reinforcing core around which the adhesion member is wound.”
We conclude the rejection lacks sufficient articulated reasoning to
support a conclusion of obviousness. Because the Examiner does not
provide sufficient articulate reasoning as to what would have led the skilled
artisan at the time of the invention to the claimed combination as a whole,
we infer that the Examiner used impermissible hindsight to conclude that the
invention was obvious. See In re Kahn, 441 F.3d 977, 986 (Fed. Cir. 2006).
Therefore, on the record before us, we agree with Appellant that “[o]ne
would not be led to combine the cited references to arrive at the present
claimed ornamental body, absent first reading Applicant’s specification.”
App. Br. 10. Accordingly, we do not sustain the Examiner’s rejection of
independent claim or of dependent claims 2-4, which depend from claim 1.
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DECISION
The Examiner’s decision rejecting claims 1—4 is reversed.
REVERSED
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