Ex Parte Bennett

Patent Trial and Appeal Board

Sep 12, 2014

12317673 (P.T.A.B. Sep. 12, 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.
12/317,673 12/29/2008 Gregory T. Bennett BENN300 4623
23590 7590 09/15/2014
RICHARD L HUFF
19304 OLNEY MILL ROAD
OLNEY, MD 20832
EXAMINER
KRAMER, DEAN J
ART UNIT PAPER NUMBER
3652
MAIL DATE DELIVERY MODE
09/15/2014 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 GREGORY T. BENNETT
____________

Appeal 2012-007572
Application 12/317,6731
Technology Center 3600
____________
Before JOSEPH A. FISCHETTI, MICHAEL C. ASTORINO, and
CYNTHIA L. MURPHY, Administrative Patent Judges.

MURPHY, Administrative Patent Judge.

DECISION ON APPEAL

The Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 15–17 and 20–25. We have jurisdiction over this
appeal under 35 U.S.C. § 6(b).
We AFFIRM.

1According to the Appellant, the real party in interest is Gregory Bennett, the
inventor. (Appeal Br. 3.)
Appeal 2012-007572
Application 12/317,673

2
STATEMENT OF THE CASE
The Appellant’s invention is in the field of tools for digging and
working soil, and in the field of tools commonly used by electricians. (Spec.
¶ 1.)

Representative Claim
15. A tool having dielectric properties,
which tool has a handle and a blade wherein
the handle and the blade are made of
anodized aluminum or anodized aluminum
alloy.

Prior Art References
Kenyon US 5,477,929 Dec. 26, 1995
Kiat US 7,117,767 B1 Oct. 10, 2006
Ng US 2008/0274375 A1 Nov. 6, 2008
Mammut Alugator Avalanche Shovel Press Release, Lightweight and
Hungry for Snow: the Alugator Avalanche Shovel (Sept. 2008) (hereinafter
“Mammut”).

Rejections on Appeal
Claims 15 and 21 are rejected under 35 U.S.C. § 102(b) as anticipated
by Kiat.
Claims 15–17 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Mammut in view of Kenyon.
Claims 20–25 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Mammut in view of Kenyon and further in view of Ng.
Appeal 2012-007572
Application 12/317,673

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ANALYSIS
The rejections on appeal share issues regarding the level of ordinary
skill in the art and/or the meaning of “a tool having dielectric properties.”
We address these issues first, and then turn to the Examiner’s specific
rejections.

Ordinary Skill in the Art
The Examiner finds both Mammut and Kenyon disclose hand tools
used in an outdoor environment for scooping, scraping, or otherwise
working bulk material. (Answer 9.) The Examiner finds a person of
ordinary skill in the art of making, using, or designing such a class of tools
would constitute a person of ordinary skill in the art. (Id.)
The Appellant argues “[t]he prior art fails to identify a person of
ordinary skill in the art” and “appellant is not taught the level of one of
ordinary skill in the art” by Mammut. (Appeal Br. 13.) The Appellant also
argues the Examiner has not provided enough information about the person
of ordinary skill in the art. (Id. at 12.) The Appellant calls upon the
Examiner to detail the occupation, the training, and the experience of this
hypothetical person. (Id. at 13.)
The absence of specific findings on the level of skill in the art does
not give rise to reversible error “where the prior art itself reflects an
appropriate level and a need for testimony is not shown.” Okajima v.
Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). In the present appeal, the
Examiner has made specific findings. (Answer 9.) The Examiner’s
approach of looking to the prior art to identify the appropriate person of
ordinary skill in the art is reasonable.
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Application 12/317,673

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Notwithstanding our finding of the completeness indicated above, we
note the Appellant has argued only that the Examiner’s resume for this
hypothetical person is incomplete. (Appeal Br. 12.) The Appellant has not
offered a more comprehensive identification and/or a more suitable level of
skill. And the Appellant does not assert that a different person of ordinary
skill in the art would render any of the Examiner’s rejections unreasonable.
We, therefore, accept the Examiner’s finding regarding the level of
one of ordinary skill in the art.

“A tool having dielectric properties”
The Examiner’s findings reflect an interpretation of the phrase “[a]
tool having dielectric properties” as requiring at least a portion of the tool to
have some degree of dielectric properties. For example, the Examiner finds
a prior art tool would possess some dielectric properties because “at least
portions of the tool (i.e. the handle and blades) are formed from an anodized
aluminum alloy.” (Answer 7.)
The Appellant’s arguments reflect an interpretation of the “[a] tool
having dielectric properties” as requiring the entire tool to be nonconductive
of an electric current. (See Appeal Br. 9–10.) For example, the Appellant
argues the Examiner has relied upon an improper theory “to show the
limitation that the tool has dielectric properties, that is, the tool is non-
conductive of an electric current.” (Id. at 9.) But the Appellant has not
provided us with any reason to interpret the phrase“[a] tool having dielectric
properties” as requiring the entire tool be nonconductive of an electric
current.
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Application 12/317,673

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Therefore, “[a] tool having dielectric properties” is interpreted as
requiring at least a portion of the tool to have some degree of dielectric
properties. For example, a tool having a handle and/or a blade made of a
material having dielectric properties is “[a] tool having dielectric
properties.”

Anticipation by Kiat
Claims 15 and 21 are rejected as anticipated by Kiat. The Examiner
finds Kiat discloses a tool wherein both the handle and the blade are “made
of an aluminum alloy that is preferably anodized.” (Answer 4.) The
Examiner finds the Kiat tool would inherently possess some dielectric
properties because “at least portions of the tool (i.e., the handle and blades)
are formed from an anodized aluminum alloy.” (Id. at 7.)
We are not persuaded by the Appellant’s argument that the Examiner
has improperly relied upon the theory of inherency. (Appeal Br. 9) “[A]
prior art reference may anticipate when the claim limitations not expressly
found in that reference are nonetheless inherent in it.” In re Cruciferous
Sprout Lit., 301 F.3d 1343, 1349 (Fed. Cir. 2002). Under the principles of
inherency, if the prior art necessarily functions in accordance with, or
includes, the claimed limitations, it anticipates. (Id.)
The limitation “[a] tool having dielectric properties” requires that at
least portions of the Kiat tool have some degree of dielectric properties. The
Appellant has not asserted that the Kiat handle and/or the Kiat blade are not
made of anodized aluminum alloy. The Appellant has not asserted that
anodized aluminum alloy is not a material having some degree of dielectric
properties.
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Application 12/317,673

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We are not persuaded by the Appellant’s arguments regarding
stainless steel in the Kiat tool. (Appeal Br. 10.) The Appellant asserts the
Examiner does not discuss the stainless steel clad heads in the Kiat tool and
their effect on the dielectric properties of the tool. (Id.) However, the
Appellant does not assert that these stainless steel components disturb the
dielectric properties of the portions of the Kiat tool made of anodized
aluminum alloy.
Thus, we sustain the Examiner’s rejection of independent claim 15,
and dependent claim 21, which is not argued separately, as anticipated by
Kiat.

Obviousness over Mammut in view of Kenyon
Claims 15–17 are rejected as being obvious over Mammut in view of
Kenyon. The Examiner finds the Mammut shovel has an anodized
aluminum blade and, when modified in view of Kenyon, would have an
anodized aluminum handle. (Final Action 4.) The Examiner finds the
modified Mammut shovel would inherently possess dielectric properties.
(Answer 8.)
We are not persuaded by the Appellant’s argument that the references
do not expressly contain a teaching that the “tool have dielectric properties.”
(Appeal Br. 12.) As the Examiner relies upon inherency when finding this
feature in the prior art, an express teaching is not necessary. The Appellant
does not assert the handle and the blade of the modified Mammut handle are
not made of anodized aluminum. And the Appellant does not contend that
anodized aluminum is not a material having some degree of dielectric
properties.
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Application 12/317,673

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We are not persuaded by the Appellant’s argument regarding the
person of ordinary skill in the art. (Appeal Br. 12.) As was indicated above,
we accept the Examiner’s finding on this issue. Moreover, the Appellant has
not asserted a different level ordinary skill would render the Examiner’s
conclusion of obviousness unreasonable.
We are not persuaded by the Appellant’s argument that the proposed
combination would render the Mammut shovel unsatisfactory for its
intended purpose. (Appeal Br. 14.) The Appellant explains Kenyon relies
upon small nylon spacers and fasteners, requiring the use of the searcher’s
bare fingers during assembly. (Id.) The Appellant asserts assembling the
modified Mammut shovel at an avalanche site would be a time-consuming
process and would expose the searcher’s hands to the cold. (Id.) However,
as explained by the Examiner, the modified Mammut shovel would have the
same aluminum handle structure, it would just be anodized. (Answer 9.)
We are not persuaded by the Appellant’s argument that the telescopic
structure of the Mammut handle would result in the modified tool not having
dielectric properties. (Reply Br. 5.) The Appellant has not explained,
persuasively, how or why this telescopic structure would alter the dielectric
properties of the handle material and/or the blade material (i.e., anodized
aluminum). And, as indicated above, the Appellant has not asserted that
anodized aluminum is not a material having some degree of dielectric
properties.
Thus, we sustain the Examiner’s rejection of independent claim 15
and dependent claim 16, which was not argued separately, as obvious over
the Mammut in view of Kenyon.
Appeal 2012-007572
Application 12/317,673

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We are not persuaded by the Appellant’s separate arguments for claim
17. This claim recites “the shovel is designed to penetrate and work the
soil.” The Appellant contends the Examiner has improperly “relied on the
theory of inherency to establish the prior art shovel demonstrates this
property.” (Appeal Br. 12.)
Where the claimed and prior art products are identical or substantially
identical in structure or composition, a prima facie case of obviousness has
been established. In re Best, 562 F.2d 1252, 1255 (CCPA 1977). The prima
facie case can be rebutted by evidence showing that the prior art products do
not necessarily possess the characteristics of the claimed product. Id.
The Examiner finds the modified Mammut tool is a shovel wherein
both the handle and the blade are made of anodized aluminum. (Final
Action 4.) Thus, the Examiner finds this prior art tool is identical or
substantially identical in structure to the claimed tool. The Appellant has
presented no evidence that this identical structure is not “designed to
penetrate and work the soil.” We note the Appellant’s proposed
interpretation of “soil” (i.e., “hard, unworked ground”) would not change
this outcome. (Reply Br. 4.)
Thus, we sustain the Examiner’s rejection of claim 17 as obvious over
Mammut in view of Kenyon.

Obviousness over Mammut in view of Kenyon and further in view of Ng
Claims 20–25 are rejected as obvious over Mammut in view of
Kenyon and further in view of Ng. (Final Action 4.) For the same reasons
discussed above, we are not persuaded by the Appellant’s arguments
regarding the tool having dielectric properties, the level of ordinary skill in
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Application 12/317,673

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the art, and the weaknesses of the Mammut-Kenyon combination. (Appeal
Br. 16.)
Thus, we sustain the Examiner’s rejection of claims 20–25 as obvious
over Mammut in view of Kenyon and further in view of Ng.

DECISION
We AFFIRM the rejections of claims 15–17 and 20–25.
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

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