Ex Parte Uno et al

Patent Trial and Appeal BoardSep 25, 2012

11723036 (P.T.A.B. Sep. 25, 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. 11/723,036 03/16/2007 Yutaka Uno UNOY3001/FJD 2401 23364 7590 09/25/2012 BACON & THOMAS, PLLC 625 SLATERS LANE FOURTH FLOOR ALEXANDRIA, VA 22314-1176 EXAMINER IMAS, VLADIMIR ART UNIT PAPER NUMBER 2833 MAIL DATE DELIVERY MODE 09/25/2012 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 YUTAKA UNO and KOJI MATSUMOTO Appeal 2010-001676 Application 11/723,036 Technology Center 2800 ____________ Before LANCE LEONARD BARRY, THU A. DANG, and ANDREW J. DILLON, Administrative Patent Judges. DILLON, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1, 3, and 4. Claim 2 has been cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. STATEMENT OF THE CASE Appellants’ invention is directed to a jack having a switch mechanism therein of the single-butt contact type in which an on-off operation is Appeal 2010-001676 Application 11/723,036 2 performed by insertion/extraction of a plug. See Spec. 23, Abstract of the Disclosure. Claim 1 is illustrative, with key disputed limitations emphasized: 1. A jack having a switch mechanism of a single-butt contact type comprising: a body defining a plug insertion hole; a stationary contact piece mounted to said body; a movable contact piece mounted to said body and having a plate spring serving as a cantilevered beam with a basal end portion and a tip end portion, said contact pieces being located opposite to each other outside said plug insertion hole in a manner that, when a plug is inserted, said contact pieces are not contacted with the plug; and an insulator having an insulation wall, which projects into said plug insertion hole in a manner that, when the plug is inserted, said insulator is pressed by the plug to be displaced, and in which, when the plug is inserted, a displacement load is applied by said insulator to a middle portion in a length direction of said movable contact piece to flex said movable contact piece while setting said basal end portion of said movable contact piece as a fulcrum, wherein: said tip end portion of said movable contact piece contacts said stationary contact piece, and thereafter said middle portion in the length direction of said movable contact piece is flexed while setting said tip end portion as a fulcrum, to apply a contact pressure on a contact; and said insulation wall of said insulator is disposed in close contact with a side of said stationary contact piece which is opposite to said movable contact piece. The Examiner relies on the following as evidence of unpatentability: Appeal 2010-001676 Application 11/723,036 3 Chang US 6,835,080 B1 Dec. 28, 2004 THE REJECTION The Examiner rejected claims 1, 3, and 4 under 35 U.S.C. §102(b) as anticipated by Chang. Ans. 3-5.1 ISSUE Based upon our review of the record, the arguments proffered by Appellants and the findings of the Examiner, we find the following issue to be dispositive of the claims on appeal: Under § 102, has the Examiner erred in rejecting claims 1, 3, and 4 by finding that Chang anticipates a stationary contact piece and a movable contact piece mounted such that said contact pieces are not contacted by a plug during insertion of the plug, but wherein the movable contact piece is urged into electrical contact with the stationary contact piece by a flexible insulator in response to insertion of a plug? ANALYSIS Appellants argue that Chang fails to show anything resembling piece4 which is contacted by the inserted pin. App. Br. 5. The Examiner finds that argument nonpersuasive, noting Appellants’ claims expressly recite that “said contact pieces are not contacted with the plug.” Ans. 5. In their Reply Brief, Appellants argue that, although the Examiner finds that Chang discloses a stationary contact piece 3 and a movable contact 1 Throughout this opinion, we refer to the Appeal Brief filed May 4, 2009; the Examiner’s Answer mailed August 7, 2009; and the Reply Brief filed October 7, 2009. Appeal 2010-001676 Application 11/723,036 4 piece 2, Appellants claim two contact pieces, one of which is stationary and one of which is movable. As proof of this assertion, Appellants argue that Chang discloses two contacts which each possess a flexible arm. Chang, Fig. 5, elements 21 and 31. We note that the Examiner characterized the contacts of Chang as stationary (contact piece 3) and movable (contact piece 2) in the Final Rejection dated May 1, 2008 and that Appellants failed to raise that issue in their Appeal Brief filed May 4, 2009. “Any bases for asserting error, whether factual or legal, that are not raised in the principal brief are waived.” Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative). See also Optivus Tech., Inc. v. Ion Beam Appl’ns. S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) (“[A]n issue not raised by an appellant in its opening brief . . . is waived.”) (citations and quotation marks omitted). Here, the Examiner’s findings that Chang teaches the stationary and movable limitations of claim 1 (Ans. 3) are identical to those in the Final Rejection (p. 2), from which the instant appeal was taken. Because the findings are identical, we find nothing that would have prompted the new argument in the Reply Brief. The Appellants could have made the argument in their Appeal Brief. The term “Reply Brief” is exactly that, a brief in reply to new rejections or new arguments set forth in an Examiner’s Answer. The Appellants may not present arguments in a piecemeal fashion, holding back arguments until an examiner answers the original brief. This basis for asserting error is waived. Nevertheless, we also find the contact piece 3 of Chang, while possessing a flexible arm 31, also includes a mounted base portion which can be described as “stationary.” Appeal 2010-001676 Application 11/723,036 5 We therefore find that the Examiner did not err in rejecting claims 1, 3, and 4 under 35 U.S.C. §102 as anticipated by Chang. CONCLUSION The Examiner did not err in rejecting claims 1, 3, and 4 under §102. ORDER The Examiner’s decision rejecting claims 1, 3, and 4 is affirmed. 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 peb