Ex Parte Baker

Board of Patent Appeals and Interferences

Oct 28, 2008

10821766 (B.P.A.I. Oct. 28, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte BRUCE BAKER
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Appeal 2008-4191
Application 10/821,766
Technology Center 1700
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Decided: October 28, 2008
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Before TONI R. SCHEINER, DEMETRA J. MILLS, and JEFFREY N.
FREDMAN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a hand
tool which the Examiner has rejected on the grounds of anticipation and
obviousness. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

Appeal 2008-4191
Application 10/821,766

Background
“Most lawn and garden implements, including shovels, rakes, trowels,
and so forth, use conventional, straight handles because they are easily
manufactured” (Spec. 1:6-7). The Specification teaches that “Straight
handles are not energy efficient, however, because the user must grip the
handle to prevent it from sliding in the user's hands. . . . Angled handles try
to take advantage of a user's body shape and position the arm, wrist, hand
and torso in a more relaxed posture” (Spec. 1:7-13).
Statement of the Case
The Claims
Claims 20-25, 30 and 31 are on appeal. We will focus on claims 20,
22, 24, 30 and 31, which are representative and read as follows:

20. A hand tool, comprising:
a curved trowel blade having a lower surface tangent
to a plane;
a handle attached to the blade, the handle being
curved in a plane perpendicular to the plane tangent to the
blade;
the handle including an outer surface defining a
portion of a circular arc; and
wherein the handle terminates in a gripping section
that intersects and extends beyond the plane tangent to the
blade.

22. The hand tool of claim 20, wherein the circular arc
has a radius on the order of 3 to 4 inches.

24. The hand tool of claim 20, wherein the gripping
section includes a slight taper along its length.

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30. The hand tool of claim 20, wherein the handle
includes a polymeric covering.

31. The hand tool of claim 20, wherein:
the blade defines a primary line of attack; and
the gripping section allows a user to hold the tool in a
wrist-neutral position with a user's forearm aligned along the
line of attack

The prior art
The Examiner relies on the following prior art reference to show
unpatentability:
Jasperson Des. 305,496 Jan. 16, 1990

The issues
The rejections as presented by the Examiner are as follows:
A. Claims 20, 21, and 31 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Jasperson (Ans. 3).
B. Claims 22-25 and 30 stand rejected under 35 U.S.C. § 103(a) as being
obvious over Jasperson (Ans. 4-6).
A. 35 U.S.C. § 102(b) rejection over Jasperson
The Examiner1 argues that Jasperson teaches a
curved trowel blade having a lower surface tangent to a
plane; a handle attached to the blade, the handle being
curved in a plane perpendicular to the plane tangent to the
blade; the handle including an outer surface defining a
portion of a circular arc; and wherein the handle terminates
in a gripping section that intersects and extends beyond the
plane tangent to the blade.

1 We refer to the Examiner’s Answer mailed August 21, 2007.
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(Ans. 3-4). The Examiner further contends regarding the tangent limitation
that “Applicant's claim language is to such a broad extent that the applied art
could clearly meet such limitations since no limiting language has been
claimed to prevent such an interpretation” (Ans. 6).
Appellant2 argues that “[t]o illustrate the limitation of ‘a lower surface
tangent to a plane and a handle that terminates in a gripping section that
intersects and extends beyond the plane tangent to the blade,’” Appellant
draws a line as follows” (App. Br. 3). Appellant’s drawing is reproduced
below:

Appellant’s drawing shows a trowel with a curved handle with a plane
tangent to a lower surface which intersects the handle (App. Br. 3).
Appellant contends that this drawing “is the only reasonable
interpretation of this limitation” (App. Br. 3). Appellant argues that the
interpretation of the Examiner “is arbitrary and contrary to common sense”
(App. Br. 4). Appellant further argues that “if the Examiner had simply used
another Figure of Jasperson - Figure 5, for example - the handle never comes
near a plane tangent to the ‘lower surface’” (App. Br. 4).

2 We refer to the Appeal Brief filed May 9, 2007.
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Appellant further argues that “[t]o be consistent, the Examiner must
be able to draw his proposed line on every view of the cited reference. This
is impossible because the Examiner's interpretation of Appellant's claim
language is unorthodox” (App. Br. 5).
In view of these conflicting positions, we frame the anticipation issue
before us as follows:
Does the trowel of Jasperson have a lower surface of a trowel blade
tangent to a plane, wherein the handle terminates in a gripping section that
intersects and extends beyond the plane tangent to the blade?
Findings of Fact (FF)
1. Figure 2 of Jasperson is reproduced below

“FIG. 2 is a left side elevational view thereof, the right side being a mirror
image of that shown” (Jasperson, Description).
A. Discussion of the 35 U.S.C. § 102(b) rejection over Jasperson
Claim 20
In analyzing the claim language, we give claim phrases their broadest
reasonable interpretation consistent with Appellants Specification. See, e.g.,
In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000) (“[D]uring examination
proceedings, claims are given their broadest reasonable interpretation
consistent with the specification.”). The argued difference between claim 20
and Jasperson is whether Jasperson can reasonably be interpreted to teach “a
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curved trowel blade having a lower surface tangent to a plane”, where the
handle “intersects and extends beyond the plane tangent to the blade” (Claim
20).
We agree with the Examiner that the broadest interpretation of the
phrase “a lower surface tangent to a plane” encompasses any lower surface of
the trowel blade, including that chosen by the Examiner (see Ans. 6). The use
of the open “a lower surface” is reasonably interpreted as including any lower
surface at all, and does not reasonably imply any limitation to “the lowest
surface” or to “surfaces which have the longest region contiguous with the
tangent”. The Examiner shows a plane which is tangent to “a lower surface”
of the trowel blade as reproduced below.

The Examiner’s drawing shows figure 2 of Jasperson with a line representing
a plane which intersects the handle and which is tangent to a lower surface of
the trowel blade (see Ans. 5-6). The tangent plane identified by the Examiner
is one of many which could be drawn on the trowel blade of Jasperson which
would satisfy the requirements of claim 20 using the broadest reasonable
interpretation of “a lower surface” as discussed above. We note that the
Specification does not provide any enlightenment on the requirement of the
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tangent relative to “a lower surface”, not even mentioning the word tangent
(see Spec. 1-8).
We are not persuaded by Appellant’s argument that “this drawing ‘is
the only reasonable interpretation of this limitation’” (App. Br. 3). In fact, we
find that any tangent to any lower surface of the trowel blade would be a
reasonable interpretation of the claim limitation for a “blade having a lower
surface tangent to a plane” (Claim 20, emphasis added). The ordinary
understanding of the indefinite article “a” relative to the “lower surface” is
that any lower surface is included.
We are not persuaded by Appellant’s argument that “[t]o be
consistent, the Examiner must be able to draw his proposed line on every
view of the cited reference. This is impossible because the Examiner's
interpretation of Appellant's claim language is unorthodox” (App. Br. 5).
Appellant does not cite any source for the requirement that the Examiner
must be able to drawn the line on every view of the cited reference. See In
re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). (“Attorney’s argument in a
brief cannot take the place of evidence.”).
In our opinion, this asserted requirement would clearly be impossible
in figure 1 of Jasperson, which does not show the bottom of the trowel blade
at all. We agree with the Examiner, who states “[i]t is not a requirement for
a claim to be anticipated by prior art for such a condition to exist. None the
less, such an angled plane could be drawn as in the below attached figure”
(Ans. 7).
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The Examiner’s drawing shows Figure 5 of Jasperson with a plane which is
tangent to a lower surface of the trowel blade and which intersects the
handle (see Ans. 7).
Appellant then contends that “[t]he tool of Jasperson is conventional.
The handle is nearly straight. As such, a user would have to grip it in a
conventional manner, with a bent wrist outside the wrist-neutral position”
(App. Br. 6). However, there is no limitation in claim 20 regarding the
manner of gripping the tool to which this argument is addressed. See
Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (“although the
specification often describes very specific embodiments of the invention, we
have repeatedly warned against confining the claims to those
embodiments”). Also See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)
(“Absent claim language carrying a narrow meaning, the PTO should only
limit the claim based on the specification or prosecution history when those
sources expressly disclaim the broader definition”).
Claim 31
We are not persuaded by Appellant’s argument that “[t]he handle of
Jasperson can only be held with a bent wrist, creating the very problem that
Appellant's design avoids” (App. Br. 6). The specific limitation in claim 31
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is that “the gripping section allows a user to hold the tool in a wrist-neutral
position with a user’s forearm aligned along the line of attack” (Claim 31).
We reject Appellant’s argument that the intended use in claim 31
differentiates the claimed invention from Jasperson (see App. Br. 7). In
Sullivan, the “applicant conceded that his composition was distinguished
from the composition disclosed in a prior art patent only by the statement of
intended use. Our predecessor court held that that intended use for the
known composition could not render the claim patentable”. In re Sullivan,
498 F.3d 1345, 1353 (Fed. Cir. 2007). Here, the difference between the
Jasperson trowel and the claimed trowel is a difference in intended use (see
App. Br. 6). We conclude that this difference in intended use does not render
a claim that is otherwise anticipated patentable.
We affirm the rejection of claims 20 and 31 under 35 U.S.C. § 102(b)
over Jasperson. Pursuant to 37 C.F.R. § 41.37(c)(1)(vii)(2006), we also affirm
the rejection of claim 21 as this claim was not argued separately.
B. 35 U.S.C. § 103(a) rejection over Jasperson
The Examiner relies on Jasperson as discussed above. The Examiner
argues regarding claims 22 and 23 that “[i]t would have been obvious to . . .
have modified the device in the claimed manner since it has been held that
where the general conditions of a claim are disclosed in the prior art,
discovering the optimum or workable ranges involves only routine skill in
the art” (Ans. 4).
The Examiner argues regarding claims 24 and 25 that “[i]t would have
been an obvious matter of design choice to make the different portions of the
device of whatever form or shape was desired or expedient” (Ans. 5).
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Regarding claim 30, the Examiner “serves Official Notice that it is old
and well known in the art of handles to use such covers for the purpose of
improved gripping and comfort” (Ans. 5).
Appellant argues regarding claims 22-25 that “Appellant did achieve an
unexpected result - namely, the ability to use the tool in a wrist-neutral
position” (App. Br. 8). Appellant further contends regarding claim 30 that the
Examiner relies “on Official Notice, since Jasperson does not teach the claim
limitation. Second, since this [claim] carries with it all of the limitations of the
claim from which it depends, and since Jasperson does not teach or suggest all
of the limitations in combination, prima facie obviousness has not been
established” (App. Br. 8).
B. Discussion of the 35 U.S.C. § 103(a) rejection over Jasperson
Claims 22-25
In KSR, the Supreme Court reasoned that
The principles underlying these cases are instructive when
the question is whether a patent claiming the combination of
elements of prior art is obvious. When a work is available in
one field of endeavor, design incentives and other market
forces can prompt variations of it, either in the same field or
a different one. If a person of ordinary skill can implement a
predictable variation, §103 likely bars its patentability.

KSR v. Teleflex Inc., 127 S. Ct. 1727, 1740 (2007). Applying the KSR
standard of obviousness to claims 22-25, we conclude that the modification
of the Jasperson trowel with the specific radius and circumference of claims
22 and 23, and the slight taper and ellipsis of claims 24 and 25 represents a
combination of known elements which yield the predictable result of slightly
different trowel configurations. Such a combination is merely a “predictable
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use of prior art elements according to their established functions.” KSR Int’l
v. Teleflex Inc., 127 S. Ct. 1727 (2007).
We are not persuaded by Appellant’s contention that the alterations in
claims 22-25 “achieve an unexpected result - namely, the ability to use the
tool in a wrist-neutral position” (App. Br. 8). In our opinion, no unexpected
results have been presented. “It is well settled that unexpected results must
be established by factual evidence. Mere argument or conclusory statements
in the specification does not suffice.” In re De Blauwe, 736 F.2d 699, 705
(Fed. Cir. 1984). Further, “[A]rguments of counsel cannot take the place of
evidence lacking in the record.” Estee Lauder Inc. v. L'Oreal, S.A., 129 F3d
588, 595 (Fed. Cir. 1997) quoting Knorr v. Pearson, 671 F.2d 1368, 1373
(CCPA 1982). See also, In re Lindner, 457 F.2d 506, 508 (CCPA 1972)
(“mere lawyers' arguments unsupported by factual evidence are
insufficient”).
Claim 30
We agree that an Examiner “may take notice of facts beyond the
record which, while not generally notorious, are capable of such instant and
unquestionable demonstration as to defy dispute.” In re Ahlert, 424 F.2d
1088, 1091 (CCPA 1970). Appellant does not contend that polymeric
coverings on handles are not well known and appropriate for official notice,
only that Jasperson does not teach “all of the limitations of the claim from
which it depends” (App. Br. 8). Since we have already concluded that claim
20 is anticipated by Jasperson, we agree with the Examiner that Jasperson
teaches all of the limitations of the claim from which claim 30 depends.
Thus, the only question is whether Appellant has traversed the specific
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Official Notice regarding handles with polymeric coverings. We conclude
that Appellant’s traversal is with regard to the elements found in claim 20,
not the specific element of polymeric coverings added in claim 30, which is
the claim at issue.
We affirm the rejection of claims 22-25 and 30 under 35 U.S.C. §
103(a) over Jasperson.
CONCLUSION
In summary, we affirm the rejection of claims 20 and 31 under 35
U.S.C. § 102(b) over Jasperson. Pursuant to 37 C.F.R. §
41.37(c)(1)(vii)(2006), we also affirm the rejection of claim 21 as this claim
was not argued separately.
We affirm the rejection of claims 22-25 and 30 under 35 U.S.C. §
103(a) over Jasperson.
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)(2006).
AFFIRMED

Ssc:
GIFFORD, KRASS, SPRINKLE, ANDERSON & CITKOWSKI, P.C.
P.O. BOX 7021
TROY, MI 48007-7021

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