`
`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
`Alexandria1 Virginia 22313- 1450
`www.uspto.gov
`
`APPLICATION NO.
`
`
`
`
`
`F ING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`
`
`
`
`CONF {MATION NO.
`
`11/232,137
`
`09/21/2005
`
`Masato Yamasaki
`
`MAT—8750US
`
`7166
`
`EXAMINER
`RATNERPRESTIA —
`“”9”” —
`7590
`52473
`P.0- BOX 980
`GIRARDI, VANESSA MARY
`VALLEY FORGE, PA 19482-0980
`
`PAPER NUMBER
`
`ART UNIT
`
`2833
`
`
`
`
`NOT *ICATION DATE
`
`DELIVERY MODE
`
`05/ 1 9/2014
`
`ELECTRONIC
`
`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.
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`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
`following e—mail address(es):
`
`ptocorrespondence @ratnerprestia.com
`
`PTOL—90A (Rev. 04/07)
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Ex parte MASATO YAMASAKI and JUN SATO
`
`Appeal 2012-005799
`Application 11/232,137
`Technology Center 2800
`
`Before BRADLEY R. GARRIS, JEFFREY T. SMITH, and
`
`MICHAEL P. COLAIANNI, Administrative Patent Judges.
`
`GARRIS, Administrative Patent Judge.
`
`DECISION ON APPEAL
`
`
`
`Appeal 2012-005799
`Application 11/232,137
`
`Pursuant to 35 U.S.C. § 134, Appellants appeal from the Examiner's
`
`rejections of claims 1-4 and 7 under the 1st paragraph of 35 U.S.C. § 112 as
`
`failing to comply with the written description requirement and under 35
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`U.S.C. § 103(a) as unpatentable over Dola (US 4,394,548, issued Jul. 19,
`
`1983) in view of Ito (US 6,869,240 B2, issued Mar. 22, 2005). We have
`
`jurisdiction under 35 U.S.C. § 6.
`
`We AFFIRM.
`
`Appellants claim a multidirectional operation device comprising a
`
`switch 2 having an operating shaft 2A and an elastic body 13 which forms a
`
`gap 13A between the operating shaft and the elastic body, ”the gap having a
`
`thickness sufficient to prevent contact between the elastic body and the
`
`operating shaft when the operating shaft is bent to its predetermined limit”
`
`(independent claim 1, Figs. 1 and 3; see also independent claim 7).
`
`A copy of representative claim 1, taken from the Claims Appendix of
`
`the Appeal Brief, appears below.
`
`1. A multidirectional operation device comprising:
`
`a multidirectional operation switch having an operating
`shaft which extends upward;
`
`an operating knob attached on the operating shaft; and
`
`an elastic body fixedly bonded to at least one of the
`multidirectional operation switch and the operating knob, to
`form a gap between the operating shaft and the elastic body, the
`gap being airtight by a wall formed of at least the
`multidirectional operation switch, the operating knob and the
`elastic body, the gap having a thickness sufficient to prevent
`
`
`
`Appeal 2012-005799
`Application 11/232,137
`
`contact between the elastic body and the operating shaft when
`the operating shaft is bent.
`
`We sustain each of the above rejections for the reasons well expressed
`
`by the Examiner in the Non-final Office Action dated 29 September 2011
`
`and in the Answer mailed 12 January 2012. The following comments are
`
`added for emphasis and completeness.
`
`The
`
`112 lst ara ra h Re'ection
`
`This rejection is based on the Examiner's determination that the
`
`subject matter defined by the independent claim phrase ”predetermined
`
`limit” fails to comply with the written description requirement (see, e.g.,
`
`Ans. 4).
`
`Appellants point out that their Specification discloses ”[i]t is
`
`preferable that operating shaft 2A be disposed in such a manner as not to
`
`come into contact with elastic body 13 .
`
`.
`
`. while operating shaft 2A is bent”
`
`(App. Br. 4 (quoting Spec. lO:4-6)). Appellants argue this disclosure would
`
`convey to one with ordinary skill in the art that Appellants had possession on
`
`the application filing date of the claimed invention defined by the phrase
`
`”predetermined limit” wherein the artisan would understand the phrase to
`
`mean "the predetermined limit of [the] operating shaft's bendability [a]s
`
`determined by the shaft's design parameters” (1d).1
`
`1 Appellants emphasize that the Examiner has assumed such a
`meaning in searching the prior art for the claimed invention (id. citing Non-
`final Office Action 2; see also Ans. 4).
`
`3
`
`
`
`Appeal 2012-005799
`Application 11/232,137
`
`Appellants provide no evidence in support of their argument that an
`
`artisan would understand the phrase ”predetermined limit” to mean shaft
`
`bendability as determined by the design parameters of the shaft.2 Based on
`
`the record before us, the phrase also could be interpreted as meaning an
`
`arbitrarily predetermined limit such as the degree of shaft bend or tilt from
`
`the vertical (e. g., a 10 tilt) as correctly explained by the Examiner (Ans. 6-7).
`
`For this reason, we agree with the Examiner that the appealed claims
`
`violate the written description requirement because the original disclosure
`
`would not convey to an artisan that Appellants on the application filing date
`
`had possession of the claim subject matter wherein the claim phrase
`
`”predetermined limit” is considered to mean shaft bendability as determined
`
`by design parameters in accordance with Appellants' argument.
`
`The § 103 Rejection
`
`Concerning the § 103 rejection, Appellants do not contest the
`
`Examiner's conclusion that, in view of Ito, it would have been obvious to
`
`provide the elastic body of Dola with the f1xedly bonded feature required by
`
`the independent claims (see, e.g., Ans. 5-6, 9 (penultimate paragraph)).
`
`Rather, Appellants dispute the Examiner's finding that the gap thickness
`
`between Dola's elastic body (i.e., elastomeric member) 44 and operating
`
`shaft (i.e., plunger) 51 is sufficient to perform the prevent-contact function
`
`of the independent claims (id. at 5).
`
`2
`
`.
`.
`.
`The Exam1ner's above noted assumptlon does not constitute such
`evidence.
`
`
`
`Appeal 2012-005799
`Application 11/232,137
`
`Specifically, Appellants argue that, when plunger 51 is bent to its
`
`predetermined (i.e., bendability) limit, second end 53 thereof ”must move
`
`outward onto the annular brim 26 of contact 24" (App. Br. 6) resulting in
`
`contact with elastomeric member 44 (id). Appellants further argue that
`
`”elastomeric member 44 must deform inwardly when plunger 51 is bent to
`
`its predetermined limit” (id at 7) again resulting in contact with plunger 51
`
`(id). In light of these arguments, Appellants contend that the Examiner has
`
`failed to carry the burden of showing that the claimed gap thickness function
`
`is necessarily present in Dola (id).
`
`Appellants' arguments lack convincing merit.
`
`It is well established that a patent applicant is free to recite features of
`
`an apparatus either structurally or functionally but that choosing to define an
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`element functionally carries with it a risk. In re Schreiber, 128 F.3d 1473,
`
`1478 (Fed. Cir. 1997).
`
`[W]here the Patent Office has reason to believe that a
`functional limitation asserted to be critical for establishing
`novelty in the claimed subject matter may, in fact, be an
`inherent characteristic of the prior art, it possesses the authority
`to require the applicant to prove that the subject matter shown
`to be in the prior art does not possess the characteristic relied
`on.
`
`Id. (quoting In re Swinehart, 439 F.2d 210, 213 (CCPA 1971)).
`
`For a number of reasons, Appellants have failed to provide the record
`
`before us with proof that the gap thickness shown in Dola does not possess
`
`the inherent capability of performing the prevent-contact function of the
`
`independent claims.
`
`
`
`Appeal 2012-005799
`Application 11/232,137
`
`First, as indicated above, we agree with the Examiner's determination
`
`that the claim phrase "predetermined limit” is not restricted to the meaning
`
`urged by Appellants but rather includes an arbitrarily predetermined limit
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`such as a 10 tilt from the vertical (Ans. 7). It is reasonable to believe that the
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`gap thickness shown in Figure 3 of Dola is sufficient to perform the claimed
`
`prevent-contact function when the operating shaft is bent to its arbitrarily
`
`predetermined limit of a 10 tilt from the vertical. Appellants contend that the
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`Examiner's interpretation of this phrase is ”an unreasonable interpretation"
`
`(Reply Br. 3) and ”is not properly based on the specification” (id. at 5). This
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`contention is not persuasive because Appellants do not identify any
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`Specification disclosure of this phrase or its meaning and therefore do not
`
`identify any basis for considering the Examiner's interpretation to be
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`unreasonable and inconsistent with their Specification.
`
`Second, even if the claim phrase ”predetermined limit” were
`
`interpreted to mean a predetermined bendability limit as urged by
`
`Appellants, it still would be reasonable to believe Dola's gap thickness
`
`would be sufficient to perform the prevent-contact function of the
`
`independent claims. The reasonableness of such a belief is evidenced by the
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`structural similarities between Dola's Figure 3 and Appellants' Figure 1.
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`This reasonableness is further evidenced by the fact that the distance shown
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`in Figure 3 between Dola's elastic body 44 and shaft 51 is larger than the
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`distance between elastic body 44 and contact ring 59. As explanation,
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`elastic body 44 does not interfere with operation of contact ring 59 when
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`shaft 51 is bent to its predetermined bendability limit as correctly urged by
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`Appellants (App. Br. 7). It follows that elastic body 44 also would not
`
`interfere with or contact shaft 51 when bent to this predetermined limit
`
`6
`
`
`
`Appeal 2012-005799
`Application 11/232,137
`
`particularly since the distance between body 44 and shaft 51 is greater than
`
`the distance between body 44 and ring 59.
`
`Appellants' above arguments do not undermine the reasonableness of
`
`believing Dola's gap thickness is sufficient to prevent contact when shaft 51
`
`is at its predetermined bendability limit. This is because the arguments are
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`not supported by evidence. For example, Appellants do not cite any
`
`disclosure in Dola which supports their argument that, when shaft 51 is bent
`
`to its predetermined bendability limit, "[the] second end 53 must move
`
`outward onto the annular brim 26 of contact 24" (id. at 6) resulting in shaft
`
`contact with elastic body 44. In fact, we agree with the Examiner that
`
`Appellants' contention that second end 53 must move outward onto annular
`
`brim 26 is not consistent with Dola's disclosure and seemingly would render
`
`the switch of Dola incapable of operating in the manner disclosed (Ans. 8
`
`(quoting Dola col. 3, 11. 24-3 5)).
`
`For the reasons stated above and in the Answer, Appellants fail to
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`establish error in the Examiner's finding that the gap thickness shown in
`
`Figure 3 of Dola is sufficient to perform the prevent-contact function of the
`
`independent claims.
`
`Conclusion
`
`The decision of the Examiner is affirmed.
`
`No time period for taking any subsequent action in connection with
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`this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
`
`kmm
`
`AFFIRMED
`
`
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