Ex Parte Ramsden

Patent Trial and Appeal BoardSep 30, 2014

11632520 (P.T.A.B. Sep. 30, 2014)

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. 11/632,520 08/21/2007 Charles Dale Ramsden 930092-2020 1120 7590 09/30/2014 Ronald R Santucci Frommer Lawrence & Haug 745 Fifth Avenue New York, NY 10151 EXAMINER CHUKWURAH, NATHANIEL C ART UNIT PAPER NUMBER 3721 MAIL DATE DELIVERY MODE 09/30/2014 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 CHARLES DALE RAMSDEN ____________ Appeal 2012-007039 Application 11/632,520 Technology Center 3700 ____________ Before NEAL E. ABRAMS, STEFAN STAICOVICI, and CHARLES N. GREENHUT, Administrative Patent Judges. ABRAMS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Charles Dale Ramsden (Appellant) seeks our review under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1–12 and 22–28. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We REVERSE. Appeal 2012-007039 Application 11/632,520 2 THE INVENTION The claimed invention is directed to a corner device to be attached to an article such as a document. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A corner device including: a main body; and a locating formation extending from one end of the main body and defining a folding area at the one end of the main body, the locating formation shaped to be received by a corner device locator of a stapler to locate and align the corner device with respect to an article and a stapler before attaching the corner device to the article, the locating formation including a shaped portion to receive legs of a staple such that a distance between the legs of the staple is greater than a width of the shaped portion of the locating formation, such that when in use the corner device is attached to the article by a staple at the shaped portion such that the corner device is not punctured by the staple, wherein the folding area is adapted to allow the main body to be folded back at the folding area over the locating formation after the corner device has been attached to the article. THE PRIOR ART The Examiner relies upon the following as evidence of unpatentability: Cirjean1 Sato Lee US 784,205 US 4,182,474 US 5,626,366 Mar. 7, 1905 Jan. 8, 1980 May 6, 1997 1 This reference has also been referred to as “CirJean.” Appeal 2012-007039 Application 11/632,520 3 THE REJECTIONS Claims 1–5, 10–12 and 22–28 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Cirjean and Sato. Claims 6 and 7 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Cirjean and Lee. Claims 8 and 9 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Cirjean and Official Notice. OPINION Claims 1–5, 10–12 and 22–28 Obviousness – Cirjean and Sato The Examiner finds all of the subject matter recited in claim 1 to be disclosed in Cirjean, except for the stapler which attaches the corner tag and fastens it with a staple. Ans. 5. However, the Examiner is of the view that Sato discloses a stapler having a corner tag locator to locate and align the corner tag with respect to the articles upon which the tag is to be attached, and concludes that it would have been obvious to one skilled in the art to provide Cirjean with such a staple device “for the purpose of tagging articles to indicate brand.” Id. The Examiner explains that Cirjean has a projection part extending from one end of the main body, which includes a reduced diameter portion capable of receiving legs of a staple having a larger width than the reduced diameter portion, and that when in use the projection part is adapted to be folded back over the locating formation after the corner device has been attached to the articles. Id. at 9. Appellant argues that “neither CirJean nor Sato, taken either alone or in combination, teach, suggest or render predictable ‘a corner device’ that has a ‘locating formation’” including a shaped portion to receive legs of a Appeal 2012-007039 Application 11/632,520 4 staple having legs greater than the width of the shaped portion, and a folding area adapted to allow the main body to be folded back over the locating formation after the corner device has been attached to the article. App. Br. 7. Appellant points out that Cirjean discloses attaching the tag by means of a staple that is inserted through a first pair of holes 6 in the shaped portion of the device and a second pair of holes 9 and 10 in the main portion, which occurs after the tag is folded over the corner of the papers to which it is to be attached. Id. at 8. Appellant also asserts that there is no suggestion in Cirjean that the tag be attached to the paper in the manner suggested by the Examiner (Id. at 9), and that Cirjean cannot achieve the function of the corner device as recited in claim 1 without destroying the manner of operation of the reference (Id. at 11). Cirjean discloses a seal for attaching together a plurality of articles, such as paper sheets. Cirjean, col. 1, ll. 8–10. The seal comprises a main body portion 12 and a rounded protruding portion 11 extending from main portion 12 and connected thereto by a narrowed neck, as shown in Figure 1. Main portion 12 has a pair of holes 9, 10, which align with holes 6, 7 in protruding portion 11, to receive the legs of a staple after the two portions are folded upon one another with the articles therebetween. Id. , col. 1, ll. 34–47 and col. 1, l. 51–col. 2, l. 55. There is no explicit teaching or suggestion in Cirjean that protruding portion 11 is, as required of the “locating formation” recited in claim 1, “shaped to be received by a corner device locator of a stapler to locate and align the stapler with respect to an article and a stapler before attaching the corner device to the article,” and the Examiner has not provided an explanation in this regard. Moreover, in the Cirjean system, protruding portion 11 is folded over main body 12 and the Appeal 2012-007039 Application 11/632,520 5 articles prior to being stapled together and thus, in the absence of explanation by the Examiner, we are unable to appreciate how in Cirjean “the folding area is adapted to allow the main body to be folded back at the folding area over the locating formation after the corner device has been attached to the article” (emphasis added), which also is required by claim 1. “Any judgment on obviousness is in a sense necessarily a reconstruction based on hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill in the art at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper.” In re Mclaughlin, 443 F.2d 1392, 1395 (CCPA 1971). Moreover, “[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.39 977, 988 (Fed. Cir. 2006). Cirjean discloses a different seal and staple structure and manner of operation for attaching articles to the seal than that recited in claim 1 and, in particular, provides no support for the conclusions reached by the Examiner with regard to projection 11. Thus, it is our view that the rejection is based upon impermissible hindsight, and the Examiner therefore has failed to establish a prima facie case of obviousness with regard to the subject matter recited in claim 1. Independent claim 22 is directed to “[a] corner device locator for securing a corner device as claimed in claim 1 to an article, the corner device locator including a receiver portion and attachment means for attaching the Appeal 2012-007039 Application 11/632,520 6 corner device locator to a stapler.” See Clms. Appx., App. Br. 19. Although not stated in the rejection, it would appear that the Examiner’s position is that it would have been obvious for one of ordinary skill in the art to utilize the Sato mechanism for aligning the Cirjean seal with the articles to be stapled and the stapler head, as the seals are received from a magazine in the stapler. However, the Examiner has provided no explanation as to how this would be accomplished and, especially because the subject matter of claim 1 is incorporated into claim 22, this rejection also is based upon impermissible hindsight. The rejection of independent claims 1 and 22, and dependent claims 2–5, 10–12 and 23–28, is not sustained. Claims 6 and 7 Obviousness – Cirjean and Lee Claims 8 and 9 Obviousness – Cirjean and Official Notice These claims depend from independent claim 1. Neither the teachings of Lee nor the Official Notice set forth by the Examiner overcome the deficiencies in the rejection of claim 1. See Ans. 7–8. Therefore, the rejections of claims 6–9 also are not sustained. DECISION All three rejections are reversed. REVERSED mls