Ex Parte Bloom

Patent Trial and Appeal Board

Jan 24, 2018

11630235 (P.T.A.B. Jan. 24, 2018)

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.
11/630,235 09/21/2009 Lionel Bloom 1423704.122US9 5895
21874 7590
Locke Lord LLP
P.O. BOX 55874
BOSTON, MA 02205
01/26/2018 EXAMINER
HOLWERDA, KATHLEEN SONNETT
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
01/26/2018 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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patent@lockelord.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LIONEL BLOOM
Appeal 2017-001436
Application 11/630,235
Technology Center 3700
Before JEFFREY N. FREDMAN, TIMOTHY G. MAJORS, and
KRISTI L. R. SAWERT, Administrative Patent Judges.
FREDMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal1 under 35U.S.C. § 134 involving claims to an
apparatus for removing ticks from animals and humans. The Examiner
rejected the claims as anticipated and as obvious. We have jurisdiction
under 35 U.S.C. § 6(b). We affirm.
Statement of the Case
Background
“Ticks often carry bacteria which may be passed to the animal or
human whilst the tick is engorging itself on the carrier[’]s blood” (Spec. 1:9—
11). “Traditionally ticks are removed using tweezers, burning them off
and/or application of acaricide preparation” {id. 1:15—16). “Tweezers have
1 Appellant identifies the Real Party in Interest as VETERINARY
COMPANIES OF AUSTRALIA PTY LTD {see App. Br. 2).
Appeal 2017-001436
Application 11/630,235
the advantage in that they can be used for various sized ticks. However they
can result in the body of the tick being squashed and host being covered in
blood and saliva” {id. 1:16—18).
The Claims
Claims 1—5, 7—12, and 14—22 are on appeal. Independent claim 1 is
representative and reads as follows:
1. An apparatus, for removing ticks from animals and
humans, comprising:
an elongated grip having a longitudinal axis;
a first bifurcated tip located at one end of the elongated
grip, a first curved portion disposed between the first bifurcated
tip and the elongated grip; and
a second bifurcated tip located at a second end of the
elongated grip, a second curved portion disposed between the
second bifurcated tip and the elongated grip, wherein the first
and second bifurcated tips extend substantially perpendicular to
the longitudinal axis of the elongated grip and the second
bifurcated tip is smaller than the first bifurcated tip.
The Issues
A. The Examiner rejected claims 1—5, 7—12, and 14—22 under 35 U.S.C.
§ 102(b) as anticipated by Yeager2 (Non-Final3 Act. 3—5).
B. The Examiner rejected claims 1—5, 7—12, and 14—22 under 35 U.S.C.
§ 102(b) as anticipated by Henderson4 (Non-Final Act. 5—7).
2 Yeager, US Design Patent 211,755, issued July 23, 1968.
3 We refer to the Non-Final Action mailed Apr. 21, 2015.
4 Henderson, US 2,457,231, issued Dec. 28, 1948.
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Application 11/630,235
C. The Examiner rejected claims 1—5, 7—12, and 14—22 under 35 U.S.C.
§ 103(a) as obvious over Heitz,5 Kirkegaard,6 and Yeager (Non-Final Act.
7-9).
A. 35 U.S.C. § 102(b) over Yeager
The Examiner finds:
Yeager discloses an apparatus comprising an elongated
grip having a longitudinal axis, a first bifurcated tip (bottom
bifurcated tip in fig. 1 of Yeager) located at one end of the
elongated grip, a first curved portion disposed between the first
bifurcated grip and the elongated grip, and a second bifurcated
tip (top bifurcated tip in fig. 1 of Yeager) located at a second
end of the grip, a second curved portion disposed between the
second bifurcated tip and the grip. The first and second
bifurcated tips extend substantially perpendicular to the
longitudinal axis of the elongated grip and the second
bifurcated tip is smaller than the first bifurcated tip.
(Non-Final Act. 3).
Appellant “submits that a person skilled in the art given a broadest
reasonable interpretation of claim 1 would not consider that Yeager
discloses a first and second bifurcated tip extending substantially
perpendicular to the longitudinal axis of the elongated grip” (App. Br. 6).
Appellant further contends that no “first curved portion is disposed between
the first bifurcated tip and the elongated grip in Yeager. Rather, it is evident
from Yeager that the first bifurcated tip is simply angled from the elongated
grip and no curved portion is located therebetween” (id.).
5 Heitz, US 5,876,409, issued Mar. 2, 1999.
6 Kirkegaard, WO 03/022094 Al, published Mar. 20, 2003.
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Application 11/630,235
The issue with respect to this rejection is: Does the evidence of
record support the Examiner’s finding that Yeager teaches “bifurcated tips
[that] extend substantially perpendicular to the longitudinal axis of the
elongated grip” as required by claim 1 ?
Findings of Fact
1. Figure 1 of the Specification is reproduced below:
4
FIG. 1
The “first and second bifurcated tips 3 and 4 extend from the elongated grip
2 in a curved manner, such as a goose-neck shape, shown as 11 and 12,
respectively in FIG 1, and extend in opposite directions from the
longitudinal axis of the elongated grip 2” (Spec. 3:9-12).
2. The Specification teaches the “first and second bifurcated tips
may extend substantially perpendicular from the longitudinal axis of the
elongated grip in the same or opposing directions” (Spec. 2:14—16).
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Application 11/630,235
3. Figures 2 and 3 of Yeager are reproduced below:
“FIG. 2 is a side view of the lift bar; FIG. 3 is a view of the bar of FIG. 2 as
seen along the line 3—3 of FIG. 2” (Yeager 2, col. 1).
Principles of Law
“The protocol of giving claims their broadest reasonable interpretation
during examination does not include giving claims a legally incorrect
interpretation. This protocol is solely an examination expedient, not a rule
of claim construction.” In re Skvorecz, 580 F.3d 1262, 1267 (Fed. Cir.
2009).
Analysis
The Examiner contends a side portion of Yeager is “substantially
perpendicular,” specifically finding “the first bifurcated tip of Yeager
extends substantially perpendicular to the longitudinal axis of the elongated
grip” (Ans. 8).
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Application 11/630,235
Appellant responds that “Yeager discloses two bifurcated tip[s],
where one bifurcated tip (i.e., the first bifurcated tip indicated by the
Examiner) extends in a downward obtuse angled direction, and not a
direction that is substantially perpendicular (i.e., about 90 degrees) to the
elongated grip” (App. Br. 6).
We find Appellant has the better position. The claim requires the
bifurcated tip to be “substantially perpendicular” to the elongated grip. The
upper bifurcated tip in figures 2 and 3 is reasonably perpendicular relative to
the central and only portion that can be identified as the elongated grip (see
FF 3). But the lower bifurcated tip is, based on the depiction, at an angle of
approximately 45 degrees relative to the elongated grip (see FF 3) and is
therefore not reasonably interpreted as being “substantially perpendicular” to
the elongated grip.7
We are also not persuaded by the Examiner’s reliance on the 90
degree angle between the elongated grip and a portion of the lift bar (see
Ans. 10) because that portion does not contain the bifurcated tips
themselves, but rather is at best a supporting portion that leads to the
bifurcated tips, which remain at an approximately 45 degree angle relative to
the elongated grip.
Conclusion
The evidence of record does not support the Examiner’s finding that
Yeager teaches “bifurcated tips [that] extend substantially perpendicular to
the longitudinal axis of the elongated grip” as required by claim 1.
7 Indeed, if a 45 degree angle is “substantially perpendicular” then it is also
“substantially parallel”, thereby reading out the angle limitation entirely.
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Application 11/630,235
B. 35 U.S.C. § 102(b) over Henderson
The Examiner finds
Henderson discloses an apparatus comprising an elongated grip
(shank 13, which is elongated and can be gripped) having a
longitudinal axis, a first bifurcated tip (2, which includes
bifurcations near 5 and 6) located at one end of the elongated
grip, a first curved portion (portion to which 14 is attached)
disposed between the first bifurcated grip and the elongated
grip (see fig. 1), and a second bifurcated tip (15) located at a
second end of the grip, a second curved portion disposed
between the second bifurcated tip and the grip. The first and
second bifurcated tips extend substantially perpendicular to the
longitudinal axis of the elongated grip and the second
bifurcated tip is smaller than the first bifurcated tip.
(Non-Final Act. 5).
Appellant contends Henderson
fails to teach the first and second bifurcated tips extending
substantially perpendicular to the longitudinal axis of the
elongated grip. Rather, in Henderson the bifurcated tips extend
substantially parallel to the elongated grip and do not extend,
for example, in a direction that is about 90 degrees to the
elongated grip.
(App. Br. 8).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s finding that Henderson anticipates claim 1?
Findings of Fact
4. The Specification teaches the “elongated grip is preferably
cylindrical in nature. The surface of the elongated grip may be contoured or
textured to facilitate gripping in the user[’]s hand” (Spec. 2:10—12).
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5. Figure 1 of Henderson is reproduced below:
“Fig. 1 is a perspective view showing a wrecking bar of the improved
construction in use” (Henderson 1:32—33).
Principles of Law
“[DJuring patent prosecution when claims can be amended,
ambiguities should be recognized, scope and breadth of language explored,
and clarification imposed.” In re Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989).
Analysis
We begin with claim interpretation because, in this case, the dispute
centers over the scope of “elongated grip.” We interpret the term “elongated
grip” as encompassing any extended portion of the device that may be held
in a person’s hand (see FF 4).
We agree with the Examiner’s finding that because “shank 13 is
clearly capable of being gripped by a user, it meets the structure imposed by
the term ‘grip’” (Ans. 11). With shank 13 in figure 1 of Henderson
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encompassing the “elongated grip” required by claim 1, then both bifurcated
tip 15 and bifurcated tip 5 are reasonably “substantially perpendicular” to the
“elongated grip” of shank 13.
We are not persuaded by Appellant’s argument that “Henderson does
not suitably include a structure for removing ticks” (Reply Br. 6). Schreiber
teaches that writing a claim that mixes structural and functional limitations
comes at a price. In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997)
(“[CJhoosing to define an element functionally, i.e., by what it does, carries
with it a risk.”). The price is that when the structural limitations are met by
a single prior art reference, and when the Examiner “has reason to believe”
that the prior art reference teaches the functional limitation as the Examiner
does in the instant case (see Ans. 11), the burden shifts to the patent
applicant to show that the functional limitation cannot be met by the single
prior art reference. Id. Appellant has provided no evidence rebutting the
Examiner’s position. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974)
(“Attorney’s argument in a brief cannot take the place of evidence.”).
Conclusion
The evidence of record supports the Examiner’s finding that
Henderson anticipates claim 1.
C. 35 U.S.C. § 103(a) over Heitz, Kirkegaard, and Yeager
The Examiner finds “Heitz discloses an apparatus for removing ticks
from animals and humans comprising an elongate grip (1,2) having a
longitudinal axis, a first bifurcated tip (4) located at one end of the elongated
grip, and a first curved portion (3)” (Non-Final Act. 7). The Examiner
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acknowledges that “Heitz fails to disclose the claimed second bifurcated tip
and second curved portion” (id.). The Examiner finds Kirkegaard teaches a
“tick removing apparatus wherein the apparatus includes two bifurcated
tips” (id.) The Examiner finds “it is well known in the art of prying or
extracting type elongated instruments to include notches on opposing tips of
the elongate instrument as shown in figs. 1-4 and 8-11 of Yeager” (id. at 7—
8).
The Examiner finds
it obvious to include a second bifurcated tip which curves from
the opposite end of the elongated grip of Heitz and includes a
smaller bifurcation as taught by Kirkegaard and Yeager since
such a placement of a second bifurcated tip is well known and
allows the same pivoting motion to be applied to both
bifurcated tips in order to pry or extract the tick from the body
of an animal or human.
(Non-Final Act. 8).
Appellant contends
Kirkegaard states that “[t]he ‘Borrelia Card’ will hereby act as a
pre-stressed spring which by itself, after placing under and
around the tick, will provide a certain pulling or elevation
action on the tick so that it, including mouth parts, will be
pulled or lifted off the skin.” This pre-stressing, presumptively
due to the flexible card being inserted around the tick at an
angle causing the flexible card to bend, is the principle of
operation of the device of Kirkegaard. This is a different
principle of operation than that of Heitz.
(App. Br. 12 (citing Kirkegaard 5:27—30)). Appellant also contends the
Examiner erred by “relying on non-analagous prior art (Yeager)” (App. Br.
13), specifically contending “Yeager is a ‘Lift Bar’. One in the tick removal
art looking at Yeager, as that is all one can do, would not think to combine
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the crowbar teaching of Yeager with the spring like Kirkegaard or the tick
removal art of Heitz” (App. Br. 17).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s conclusion that the combination of Heitz,
Kirkegaard, and Yeager render claim 1 obvious?
Findings of Fact
6. Figure 1 of Heitz is reproduced below:
“FIG. 1 is a perspective view of the [tick removal] instrument” (Heitz 2:1).
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7. Figure 6 of Kirkegaard is reproduced below:
A preferred embodiment of a “BorreliaCard” is shown in Fig. 6,
where a comer area is designed with a flexible finger 4 which is
designed with a slit or narrowing 50 at an outer end 48 for use
in removing a tick or corresponding blood sucking insect. . . .
Besides, the “BorreliaCard”, cf. Fig. 6, is designed in another
comer 52 with a supplementing lesser slit or narrowing 54.
(Kirkegaard 6:6—11).
Principles of Law
Prior art is analogous if it is from the same field of endeavor or if it is
reasonably pertinent to the particular problem the inventor is trying to
solve.” Circuit Checklnc. v. QXQInc., 795 F.3d 1331, 1335 (Fed. Cir.
2015). However, “[i]f [a reference] is directed to a different purpose, the
inventor would accordingly have had less motivation or occasion to consider
it.” In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992).
Analysis
While Heitz and Kirkegaard are both in the field of endeavor of tick
removal devices (FF 6—7), Yeager is in a different field of endeavor of lift
bars (FF 3). We therefore must determine whether Yeager is reasonably
pertinent to the tick removal problem addressed by the inventor (see Spec.
4:4—9). When considering whether a reference is pertinent to the problem
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Application 11/630,235
with which the inventor or prior art were concerned, the framing of the
problem may well be determinative of the analogous art determination. If
the problem is broadly framed as any desire to pry two things apart, then
Yeager is generally relevant to any device from any endeavor involved in
separating two items. However, this broad a framing is unreasonable,
because under this logic any reference dealing with a general concern will
always be pertinent.
When the problem is framed at a more reasonable scale, whether
narrowly as removing ticks as taught by Heitz and Kirkegaard (FF 6—7), or
more broadly as medical devices designed to remove undesirable
components, Yeager lacks any indicia of relevance to these fields of
endeavor. We are not persuaded that the ordinary artisan, interested in
removing ticks without the “body of the tick being squashed and host being
covered in blood and saliva” (Spec. 1:18) and operating the device by
“rotating or twisting the apparatus between the thumb and fore index finger
until the tick loosens” (Spec. 3:29-30), would have reasonably looked to the
lift bar of Yeager for designing a second bifurcated tip onto the device of
Heitz.
Conclusion of Law
The evidence of record does not support the Examiner’s conclusion
that the combination of Heitz, Kirkegaard, and Yeager render claim 1
obvious.
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Application 11/630,235
SUMMARY
In summary, we reverse the rejection of claims 1—5, 7—12, and 14—22
under 35 U.S.C. § 102(b) as anticipated by Yeager.
We affirm the rejection of claim 1 under 35 U.S.C. § 102(b) as
anticipated by Henderson. Claims 2—5, 7—12, and 14—22 fall with claim 1.
We reverse the rejection of claims 1—5, 7—12, and 14—22 under 35
U.S.C. § 103(a) as obvious over Heitz, Kirkegaard, and Yeager.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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