Ex Parte Boudreau

Board of Patent Appeals and Interferences

Aug 29, 2011

11465738 (B.P.A.I. Aug. 29, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/465,738 08/18/2006 Wendy Janet Boudreau WBD01/3160/US 1770
93680 7590 08/31/2011
Nathan V. Woodruff
200-10328 81 Avenue
Edmonton, AB T6E 1X2
CANADA
EXAMINER
DANIEL, JAMAL D
ART UNIT PAPER NUMBER
3723
MAIL DATE DELIVERY MODE
08/31/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WENDY JANET BOUDREAU
____________

Appeal 2010-005005
Application 11/465,738
Technology Center 3700
____________

Before ROBERT A. CLARKE, EDWARD A. BROWN and
MICHAEL C. ASTORINO, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-005005
Application 11/465,738

2
The Appellant appeals under 35 U.S.C. § 134 from the Examiner’s 1
decision finally rejecting claims 9-11 and 14-18 under 35 U.S.C. § 103(a) as 2
being unpatentable over Mitchell (US 602,911, issued Apr. 26, 1898), Voght 3
(US 1,526,517, issued Feb. 17, 1925) and Kepner (US 1,258,016, issued 4
Mar. 5, 1918). Claims 1-6 have been cancelled and claims 7, 8, 12, 13 and 5
19-22 are withdrawn. We have jurisdiction over the appeal under 35 U.S.C. 6
§ 6(b). 7
We REVERSE. 8
Claims 9 and 17 are independent claims. Claim 9 is illustrative of the 9
claims on appeal. 10
9. A staple extractor comprising: 11
a) a handle; 12
b) a shank having a proximal end and a distal end, 13
and attached to the handle at the proximal end of 14
the shank, and having a pry tip at the distal end of 15
the shank; 16
c) a clamp head engageable with the pry tip and 17
moveably attached to the shank so as to permit 18
movement of the clamp head relative to the shank 19
between a retracted position in which the pry tip 20
and the clamp head are sufficiently distant one 21
from the other so as to permit a staple bridge to be 22
inserted between or removed from between the pry 23
tip and the clamp head, and a clamping position in 24
which the pry tip and clamp head are sufficiently 25
proximate one to the other to releasably secure a 26
staple bridge interposed between them; 27
d) the clamp head including two opposed wings 28
that, when the clamp head is in the clamping 29
position, straddle the pry tip with each wing on an 30
opposite side of the pry tip one from the other, and 31
wherein each wing is bifurcated and the opening 32
between the forks of one wing is aligned with the 33
opening between the forks of the other wing, such 34
Appeal 2010-005005
Application 11/465,738

3
that in use, when the bridge of a staple is 1
positioned between the forks of each wing when 2
the clamp head is in the clamping position, the 3
forks impede movement of the staple bridge along 4
the length of the pry tip during removal of the 5
staple; and 6
e) hand operable means for moving the clamp head 7
between the retracted position and the clamping 8
position; 9
wherein a staple is removable by, with the clamp 10
head in the retracted position, inserting the pry tip 11
between a staple bridge and the underlying 12
material, moving the clamp head to the clamping 13
position to secure the staple bridge, pulling the 14
thus secured staple from the underlying material, 15
and moving the clamp head to the retracted 16
position to release the extracted staple. 17
(Italics added). 18
Claim 17 recites a staple extractor including 19
the clamp head including two opposed wings that, 20
when the clamp head is in the clamping position, 21
straddle the pry tip with each wing on an opposite 22
side of the pry tip one from the other, and wherein 23
each wing is bifurcated and the opening between 24
the forks of one wing is aligned with the opening 25
between the forks of the other wing, such that in 26
use, when the bridge of a staple is positioned 27
between the forks of each wing when the clamp 28
head is in the clamping position, the forks impede 29
movement of the staple bridge along the length of 30
the pry tip during removal of the staple. 31
(Italics added). 32
The Appellant’s Specification is directed to a staple extractor 20 33
having a clamp sleeve 26 with an internal bore loosely fit over a shank 24 34
that permits relative longitudinal movement. The longitudinal movement 35
Appeal 2010-005005
Application 11/465,738

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provides the clamp sleeve 26 the ability to move between a clamping 1
position, as depicted in Figure 1, and a retracted position, as shown in Figure 2
3. (Spec.1 paras. [0013]-[0018]). The distal end of the clamp sleeve 26 3
includes a clamp head 36 having two opposed substantially identical 4
bifurcated wings 38 that straddle pry tip 30 when the clamp sleeve 26 is in 5
the clamping position. (Spec. [0019]). The pry tip’s surface includes a 6
bridge mark 32, which is a mark indicating the preferred position for the 7
bridge of the staple to be during removal by the staple extractor 20. (Spec. 8
[0017]). Each bifurcated wing 38 includes forks 40, 42 separated by a V-9
shaped opening 44; within the V-shaped opening 44 the edges of the forks 10
40, 42 meet at inner corners 46. (Spec. [0019]; see also figs 1-3). The inner 11
corners 46 are aligned with bridge mark 32 when the clamping sleeve is in 12
the clamping position. (Spec. [0019]). Notably for such to be the case, that 13
bridge mark 32 is aligned with inner corners 46 in the clamping position, the 14
inner corners 46 and the V-shaped openings 44 of forks 40, 42 on the two 15
opposed substantially identical bifurcated wings 38 must be aligned as well. 16
Independent claims 9 and 17 each recite “the opening between the 17
forks of one wing is aligned with the opening between the forks of the other 18
wing.” (Italics added). The term “aligned” is not explicitly defined by the 19
Specification. For the purposes of this appeal, the ordinary and customary 20
meaning of “align” is “to arrange in a straight line; adjust according to a 21
line.” (DICTIONARY.COM UNABRIDGED, http://dictionary.reference. 22
com/browse/align (last visited Aug. 24, 2011)(“align,” def. 1)). The 23

1 Citations to the Specification refer to the Specification filed August 18,
2006 except for paragraph [0017], which refers to replacement paragraph
[0017] filed July 15, 2008 via an amendment to the Specification.
Appeal 2010-005005
Application 11/465,738

5
definition of “align” is consistent with the Specification, particularly 1
paragraph [0019], because the inner corners 46 and V-shaped openings 44 of 2
forks 40, 42 on the two opposed substantially identical bifurcated wings 38 3
are arranged in a straight line and adjusted according to a line. 4
Mitchell discloses a stapler extractor having handles 2 and 7 that 5
when grasped simultaneously withdraws clamping arm 6 away from tapered 6
staple engaging arm 3. Arm 3 is driven into the staple, and then the handle 7 7
is released enabling the spring 9 to cause the staple to be firmly clamped 8
between arms 3 and 6, and then extracted. (Mitchell, p. 1. ll. 45-77). The 9
Examiner finds Mitchell’s clamping arm 6 corresponds to the claimed clamp 10
head. (Ans. 3). The Examiner does not find that Mitchell’s clamping arm 6 11
includes two opposed wings. (See generally Ans. 3-4, 5 and 7). 12
Voght discloses a combined poker and clinker tongs including a tine 2 13
with serrations 5. (Voght, p. 1. ll. 38-47). The serrations 5 are depicted in 14
Figures 1-2 as transverse to the length of tine 2. The transverse orientations 15
of serrations 5, including the V-shaped openings of the serrations 5, appear 16
to be parallel with one another. The Examiner finds the serrations 5 on tine 17
2 are a plurality of bifurcations that correspond to the “clamp head including 18
two opposed wings . . . wherein each wing is bifurcated and the opening 19
between the forks of one wing is aligned with the opening between the forks 20
of the other wing.” (See Ans. 3-4, 5). 21
The Appellant contends that the Examiner misunderstands the claimed 22
invention by equating the location of the serrations with an aligning of the 23
openings of the forks of the wings with a preferred position. (Br. 18). The 24
Appellant points out that the claim requires “in use, ‘the bridge of a staple is 25
positioned between the forks of each wing when the clamp head is in the 26
Appeal 2010-005005
Application 11/465,738

6
clamping position,’ (emphasis added).” (Id.) Although claims 9 and 17 do 1
not include the bridge of a staple to be in a preferred position, the openings 2
between the forks of the wings are required to be aligned. As such the 3
Examiner’s finding that Voght’s parallel serrations 5, particularly the V-4
shaped openings of serrations 5, are aligned is not correct because they 5
cannot be arranged in a straight line or adjusted according to a line. In other 6
words, parallel lines cannot be arranged in straight lines or adjusted 7
according to a line. 8
Additionally, Kepner discloses a cotter pin extracting tool including a 9
stem 2 connected to a handle 1 at one end, wherein the stem 2 is tapered and 10
curved to form a hook 3 at the other end. (Kepner, ll. 44-50). The Examiner 11
finds Kepner teaches a tapered pry tip being circular or conical. (Ans. 3). 12
The Examiner’s finding does not remedy the deficiencies of the combined 13
teachings of Mitchell and Voght as pointed out in connection with the 14
rejection of claims 9 and 17. Since the Examiner’s conclusion of 15
obviousness lacks rational underpinning, we do not sustain the Examiner’s 16
final decision rejecting claims 9 and 17 under § 103(a) as being unpatentable 17
over Mitchell, Voght and Kepner. Dependent claims 10, 11, 14, 15 and 18 18
fall with independent claims 9 and 17, thus we do not sustain the rejection of 19
those claims as well. 20
21
DECISION 22
We REVERSE the Examiner’s decision finally rejecting claims 9-11 23
and 14-18. 24
25
REVERSED 26
Klh 27