Ex Parte Shor

Patent Trial and Appeal Board

Jan 29, 2013

11923023 (P.T.A.B. Jan. 29, 2013)

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.
11/923,023 10/24/2007 Ilya Shor MASAF 0107 PUSP 8883
101011 7590 01/29/2013
Brooks Kushman P.C. / Masco Corporation
1000 Town Center, 22nd Floor
Southfield, MI 48075
EXAMINER
LOW, LINDSAY M
ART UNIT PAPER NUMBER
3783
MAIL DATE DELIVERY MODE
01/29/2013 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 ILYA SHOR
____________________

Appeal 2010-012495
Application 11/923,023
Technology Center 3700
____________________

Before JENNIFER D. BAHR, NEIL T. POWELL, and
BART A. GERSTENBLITH, Administrative Patent Judges.

POWELL, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-012495
Application 11/923,023

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1 and 3-21. We have jurisdiction over this appeal
under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

THE CLAIMED SUBJECT MATTER
Independent claim 1, reproduced below, is illustrative of the appealed
subject matter:
1. A hammer tacker, comprising:
a contact face for contacting a material;
a firing mechanism adjacent said contact face, said firing
mechanism for driving a formed staple into the material when
said contact face is brought into contact with the material;
a handle extending from said contact face; and
a curved staple guide for guiding a flexible pack of
formed staples toward said contact face.

THE REJECTIONS
The Examiner’s rejections of the claims to be reviewed on appeal
include:
1. Claims 1 and 3-17 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Beckman (US 2,653,316; iss. Sept. 29, 1953).
2. Claims 1, 3-7, 9-15, and 17-21 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Fealey (US 6,012,623, iss. Jan. 11, 2000) and
Wandel (US 2,946,059, iss. Jul. 26, 1960).
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Application 11/923,023

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ANALYSIS
Rejection of Claim 1 Based on Beckman
The Examiner and Appellant dispute whether Beckman meets the
limitation in claim 1 of “a curved staple guide for guiding a flexible pack of
formed staples toward said contact face.” See App. Br. 3-5; Ans. 4 and 6-7;
Reply Br. 1-2. The Examiner finds that Beckman discloses a curved staple
guide that guides a flexible pack of formed staples, citing Figure 9 of
Beckman as showing the flexible pack of formed staples. Ans. 4. The
Examiner notes that “claims are given their broadest reasonable
interpretation consistent with the specification” (Ans. 6), and that “the
claims do not restrict or require the staples to be of a specific shape or form,
just merely that they are ‘formed’” (Id. at 7). Given this, the Examiner finds
that the roll shown in Figure 9 of Beckman includes “formed staples”
because “the roll shown in the figure has been ‘formed’ into the shapes for
staples,” noting that “each staple is distinct in that it has two legs.” Id. at 7.
Appellant counters that the Examiner has not properly interpreted the
claim language consistent with the Specification. Reply Br. 1. In support of
this position, Appellant argues that:
Paragraph 16 of the Detailed Description describes
the formed staples within the flexible staple pack
30. The staples are described as “U-shaped
staples” and that the staples have “pronged arms
extending to a point.” A person having skill in the
art of staples and the benefit of this disclosure
would not interpret the claimed “formed staples”
as applying to flat staple blanks.
Id. Appellant concludes that “[s]taples . . . have a U-shape.” Id. at 2.
In concert with the argument that the proper interpretation of the
claim language “formed staples” requires a U-shape, Appellant argues that
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Application 11/923,023

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Beckman discloses “flat staple blanks” that “are clearly not formed staples.”
App. Br. 4. Without pointing to any other specific structural characteristics,
Appellant further argues that “Beckman’s staple blanks should not be
interpreted as teaching formed staples” because “Beckman teaches that
formed staples set into machines limit the capacity for carrying staples” and
“[f]or this reason Beckman incorporates the staple forming station and
guides staple blanks, rather than formed staples.” Id. at 4-5. Appellant
similarly asserts that “Beckman would not require a staple forming station if
the staple blanks 20 were formed staples.” Id. at 4.
In arguing that the claim language “formed staples” is properly
interpreted as requiring a U-shape based on the Specification and drawings,
Appellant overlooks countervailing aspects of the Specification and the
claims. For example, the portion of the Specification to which Appellant
points discloses that “staples 34 are typically U-shaped,” indicating that they
are not limited to a U-shape and may have other shapes. Spec. para. [0016]
(emphasis added). And the Specification does not discuss “formed” staples
or suggest that they must have a U-shape. In fact, the written description
portion of the Specification does not include or describe the phrase “formed
staples.” Nor does the Specification disclaim any shape of staples.
Furthermore, claim 18, which depends from independent claim 1, adds only
one limitation to claim 1—“wherein the formed staple is a U-shaped staple.”
App. Br. 13. Under the doctrine of claim differentiation, this suggests that
the language “formed staples” in claim 1 does not require a U-shape. See,
e.g., Curtiss-Wright Flow Control Corp. v. Velan, Inc., 438 F.3d 1374, 1380
(Fed. Cir. 2006) (“In the most specific sense, ‘claim differentiation’ refers to
the presumption that an independent claim should not be construed as
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Application 11/923,023

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requiring a limitation added by a dependent claim.”). In view of this
evidence, we conclude that the claim language “formed staples” does not
require a U-shape.
Appellant’s argument that Beckman does not meet the claim language
falls with Appellant’s claim-construction argument, as Appellant does not
clearly identify any characteristic other than the lack of a U-shape that
would potentially distinguish Beckman’s roll from the “flexible pack of
formed staples” recited in claim 1. Thus, Appellant has not apprised us of
error in the Examiner’s rejection of claim 1 as anticipated by Beckman.
Accordingly, we affirm the rejection.
Aside from this holding, we deem it worth noting that establishing
anticipation of claim 1 would not have required the Examiner to establish
that Beckman actually discloses guiding “a flexible pack of formed staples
toward said contact face.” The language “for guiding a flexible pack of
formed staples toward said contact face” in claim 1 is directed to the
function or intended use of the curved staple guide. It is well settled that the
recitation of an intended use for an old product does not make a claim to that
old product patentable. In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir.
1997). In order to satisfy the functional limitations in an apparatus claim,
the prior art apparatus must be capable of performing the claimed function.
Id. at 1478. On the record presently before us, we do not discern any reason
that Beckman’s guide surface would not be capable of “guiding a flexible
pack of formed staples toward said contact face.” Appellant generally
asserts that the functional language “implicates structure to the claimed
curved staple guide . . . [that] is not shown in Beckman” (App. Br. 4), but
Appellant does not identify any specific structure that Beckman’s curved
Appeal 2010-012495
Application 11/923,023

6
guide needs to perform the recited function but lacks. Accordingly, absent
further evidence or explanation, it appears that Beckman would meet the
disputed claim language regardless of whether it actually discloses guiding a
flexible pack of formed staples.

Rejection of Claim 10 Based on Beckman
The Examiner and Appellant dispute whether Beckman meets the
language in claim 10 of “a curved fastener guide extending from adjacent
said contact face, said curved fastener guide for guiding a flexible fastener
pack having a multiple of distinct fasteners adhesively secured relative to
each other within the flexible fastener pack.” See App. Br. 5-6; Ans. 4 and
7; Reply Br. 2. The Examiner finds, inter alia, that Beckman discloses a
curved guide “capable of guiding a pack of distinct fasteners that are
adhesively secured relative to each other.” Ans. 4. Appellant argues that
Beckman does not disclose guiding a flexible fastener pack having a
multiple of distinct fasteners, but Appellant does not address the Examiner’s
finding that Beckman’s curved guide is capable of doing so. See App. Br. 5-
6; Reply Br. 2.
The language “for guiding a flexible fastener pack having a multiple
of distinct fasteners adhesively secured relative to each other within the
flexible fastener pack” in claim 10 is directed to the function or intended use
of the curved fastener guide. In order to satisfy the functional limitations in
an apparatus claim, the prior art apparatus must be capable of performing the
claimed function. Schreiber, 128 F.3d at 1478. Accordingly, because
Appellant does not dispute the Examiner’s finding that Beckman’s curved
guide is capable of performing the function recited in claim 10, Appellant
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Appeal 2010-012495
Application 11/923,023

8
where the Examiner finds Beckman to disclose space between first and
second planes where an operator can grasp the stapler.
The Examiner finds that “[a]n operator is capable of grasping the
handle in the space between the two planes.” Ans. 4. Appellant argues that
“the space between the planes does not provide clearance for an operat[or] to
grasp a handle, the handle is not even located in the space between the
planes.” App. Br. 6. In response, the Examiner concedes that handle
portion 22 of Beckman’s stapler is not between the planes, but states that
“[h]andle portion 21 (in the vicinity shown above) is capable of being
grasped by a user, which is clearly between the two designated planes.”
Ans. 8.
Consistent with Appellant’s argument, we note that the language of
claims 7 and 15 requires that the space between the claimed planes provides
clearance for an operator when the operator is “grasping said handle,” not
that the space between the claimed planes provides clearance when the
operator is grasping some other portion of the stapler. In conflict with the
Examiner’s reference to “handle portion 21,” Beckman uses reference
number 21 to identify “a body” of the stapler generally. Beckman, col. 3,
ll. 21-22. And the Examiner cites no evidence that the portion of Beckman’s
stapler at reference number 21 constitutes a handle. See Ans. 8.
Furthermore, even if the Examiner established that the portion of Beckman’s
stapler at reference number 21 did constitute a handle, the Examiner’s
annotated drawing does not support the finding that reference number 21 “is
clearly between the two designated planes.” See id. For these reasons, the
Examiner has not clearly supported the finding that Beckman’s stapler meets
the limitation that “a space between said first plane and said second plane
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Application 11/923,023

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provides clearance for an operator grasping said handle when said contact
face contacts said material.” Accordingly, we cannot sustain the rejection of
claims 7 and 15 as anticipated by Beckman.

Rejection of Claims 3-6, 8, 9, 11-14, 16, and 17 Based on Beckman
Regarding the rejection of claims 3-6, 8, 9, 11-14, 16, and 17 based on
Beckman, Appellant states only that “[t]hese claims depend from claim 1 or
claim 10 and are patentable for at least this reason.” App. Br. 7.
Accordingly, for the above-discussed reasons that Appellant has not
apprised us of error in the Examiner’s rejection of claims 1 and 10 based on
Beckman, Appellant has not apprised us of error in the Examiner’s rejection
of claims 3-6, 8, 9, 11-14, 16, and 17 as anticipated by Beckman.
Accordingly, we affirm the rejection.

Rejection of Claims 1, 3-5, 9-13, and 17-21 Based on Fealey and Wandel
With respect to the Examiner’s obviousness rejection, Appellant
argues claims 1, 3-5, 9-13, and 17-21 as a group.1 App. Br. 7-9. We select
claim 1 as representative, and we treat claims 3-5, 9-13, and 17-21 as
standing or falling with representative claim 1. See 37 C.F.R.
§ 41.37(c)(1)(vii) .
The Examiner finds that Fealey discloses a stapler that meets the
limitations of claim 1 except that it lacks a curved staple guide. Ans. 5. The
Examiner also finds that Wandel discloses “attaching a curved staple guide
onto the end of a stapler for the purpose of increasing the magazine capacity

1 Appellant presents a separate argument for claims 6 and 14. Accordingly,
we address claims 6 and 14, and claims 7 and 15 depending therefrom, infra.
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without substantially increasing the size of the tool.” Id. (citing Wandel,
col. 1, ll. 37-40). The Examiner concludes that it would have been obvious
“to attach a curved staple guide onto the end of Fealey’s stapler for the
purpose of increasing the magazine capacity without substantially increasing
the size of the tool.” Id.
Appellant advances various arguments disputing the Examiner’s
rationale for combining Fealey and Wandel. First, Appellant argues that
Fealey teaches away from the Examiner’s proposed modification. In support
of this position, Appellant points to column 1, lines 53-57, of Fealey and
argues that “Fealey states that ‘increasing the distance the staple must be
moved in order to be driven increases the likelihood of jams’” and “[t]he
proposed modification to Fealey adds a large bulky stapler magazine 34 and
increases the distance the staple must be moved.” App. Br. 7-8. Apparently
based on these assertions, Appellant also argues that the Examiner’s
proposed modification renders Fealey “unsatisfactory for its intended
purpose[] of not increasing the distance the staple must be moved.” Id. at 8.
The Examiner counters that “Fealey states in col. 1 lines 51-57 that
increasing the distance the staples move during a drive stroke increases the
likelihood of jams” and that “Fealey does not discuss the distance the staple
moves within the magazine.” Ans. 8. Appellant responds that staple
movement during the drive stroke and within the magazine “are intimately
related” because “[a]s a staple to be driven moves, so too do the associated
staples within the magazine.” Reply Br. 2. In combination with this,
Appellant argues that “[i]nterpreting Fealey’s disclosure of the
disadvantages of moving staples large distances in order to be driven as only
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applying to some staples, and not all the staples within the magazine, is a
clear mischaracterization of Fealey’s disclosure.” Id. at 2-3.
Contrary to Appellant’s argument, the Examiner reads Fealey
correctly as conveying concerns about increasing the distance each staple
travels only during the drive stroke, not during movement of the staple
within the magazine prior to the drive stroke. Fealey’s comment regarding
the likelihood of jams appears within an explanation of disadvantages
associated with lengthening the drive track and the drive stroke. Fealey,
col. 1, ll. 48-57. No part of this explanation supports Appellant’s suggestion
that Fealey discourages a longer staple magazine because movement during
the drive stroke and movement within the magazine “are intimately related.”
And Appellant does not cite any other portion of Fealey or any other
evidence that does support this suggestion. Furthermore, we do not agree
with Appellant’s suggestion that the Examiner characterizes Fealey as
disclosing concerns about movement of only a subset of the staples. The
Examiner’s findings appear to read Fealey’s statements about staple
movement and jamming as applying to every staple but only during the
period when the staple goes through the drive stroke. We agree with this
reading of Fealey. Accordingly, Appellant has not established that Fealey
teaches away from the proposed modification or that Fealey has a general
purpose of not increasing the distance the staple moves.
Appellant also argues that the Examiner’s proposed modification
renders “Fealey unsatisfactory for its intended purpose[] of . . . alleviating
hand clearance problems.” App. Br. 8. The Examiner responds that
“Wandel states in col. 3 lines 19-33 that providing the detachable magazine
to a stapling device would increase the staple capacity while maintaining the
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physical size of the device, thus permitting convenient manipulation of the
device.” Ans. 8. Appellant offers no substantive explanation or evidence to
counter this. Accordingly, Appellant has not established that the proposed
modification would render Fealey unsatisfactory for its intended purpose.
Appellant also argues that the proposed modification would change
the principle of operation of Fealey because it would require using flexible
staple packs instead of staple sticks, and because it would require
“substantial reconstruction and redesign of the elements shown in Fealey”
“in order to accept . . . Wandel’s magazine . . . of edgewise oriented staples.”
App. Br. 8-9. These arguments appear to rest on an erroneously narrow
understanding of Fealey’s principle of operation.
Fealey focuses on the problem that many stapler configurations
provide little clearance for accommodating a user’s hand between the stapler
handle and a large planar work surface, which can make it difficult to drive a
staple perpendicularly into the work surface. Fealey, col. 1, l. 41-col. 2,
l. 12; Abstract. To address this problem, Fealey orients the staple feed track
that extends through the stapler handle at an angle greater than 90° relative
to the drive stroke of the stapler drive mechanism, and implements
provisions for aligning the leading staple with the drive track during the
drive stroke. Id. at Abstract; col. 2, ll. 39-50; col. 4, ll. 8-17. The angle at
which the feed track extends through the handle allows configuring the
handle to provide clearance for the operator’s hand between the handle and
the working surface, while the provisions for aligning the staple with the
drive track allows driving each staple generally perpendicularly into the
working surface. Id. at Abstract; col. 2, ll. 41-54; col. 4, ll. 8-22. Thus, the
basic principle of operation of Fealey is feeding staples through the handle
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of the stapler at an angle of greater than 90° relative to the drive stroke and
aligning the leading staple with the drive track for driving generally
perpendicularly into the work surface. Accordingly, contrary to Appellant’s
arguments, modifying Fealey to use flexible staple packs oriented edgewise
in Wandel’s magazine would not change Fealey’s basic principle of
operation.
Appellant further argues that adding Wandel’s magazine to Fealey
would “severely inhibit the ability of the operator to swing the hammer
stapler.” App. Br. 9. Based on this argument, Appellant further asserts that
the Examiner’s proposed modification of Fealey would change Fealey’s
principle of operation because it would require substantial reconstruction
and redesign to provide a different drive system. Id. These arguments do
not apprise us of error in the rejection for at least two reasons. First, the
arguments rest wholly on attorney argument, unsupported by evidence that
the Examiner’s proposed modification would significantly inhibit swinging
Fealey’s stapler and would require a different drive system. An attorney's
arguments in a brief cannot take the place of evidence. In re Pearson, 494
F.2d 1399, 1405 (CCPA 1974). Second, the arguments do not establish that
changing Fealey’s drive system would necessarily involve changing
Fealey’s basic operating principle of feeding staples through the handle of
the stapler at an angle of greater than 90° relative to the drive stroke and
aligning the leading staple with the drive track for driving generally
perpendicularly into the work surface.
Appellant also argues that the Examiner’s determination that it would
have been obvious to modify Fealey to include Wandel’s magazine to
increase staple capacity “is a conclusion or result of the modification, not a
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reasoning with a rational underpinning for the modification.” App. Br. 9.
This argument fails to recognize that the Examiner’s reasoning for
combining the references rests on a correct finding that Wandel discloses the
possibility of achieving the beneficial “result of the modification,”
knowledge of which would have given a person of ordinary skill in the art a
rational reason for making the modification. See Ans. 5. Thus, contrary to
Appellant’s argument, the Examiner provides reasoning with rational
underpinning for the conclusion of obviousness.
For the foregoing reasons, Appellant has not apprised us of error in
the Examiner’s rejection of claim 1 as obvious over Fealey and Wandel.
Accordingly, we affirm the obviousness rejection of claims 1, 3-5, 9-13, and
17-21.

Rejection of Claims 6, 7, 14, and 15 based on Fealey and Wandel
With respect to the Examiner’s obviousness rejection of claims 6 and
14, the Examiner and Appellant dispute whether the cited references suggest
the limitations in claims 6 and 14 that “said contact face defines a first plane
for contacting the material, and a surface of said curved staple guide on a
contact face side of said curved staple guide defines a second plane
generally aligned with said first plane, said second plane spaced from said
first plane.” See App. Br. 10; Ans. 6. The Examiner finds that “Fealey’s
contact face defines a first plane and a surface of the curved staple guide
defines a second plane generally aligned with the first plane and spaced from
it.” Ans. 6. This finding that Fealey meets the claim limitations conflicts
with the Examiner’s finding that Fealey “fails to disclose a curved staple
guide.” Ans. 5. Additionally, the Examiner does not clearly respond to the
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substance of Appellant’s arguments that the cited references fail to meet the
claim limitations. See App. Br. 10; Ans. 6. Accordingly, we cannot sustain
the rejection of claims 6 and 14 as obvious over Fealey and Wandel. For the
same reasons, we cannot sustain the rejection of claims 7 and 15, which
depend from claims 6 and 14, as obvious over Fealey and Wandel.

DECISION
The Examiner’s decision rejecting claims 1 and 3-21 is affirmed as to
claims 1, 3-6, 8-14, and 16-21, and reversed as to claims 7 and 15.
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-IN-PART

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