Ex Parte BRADY

Board of Patent Appeals and Interferences

Feb 23, 2010

09228109 (B.P.A.I. Feb. 23, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MARTIN BRADY
____________

Appeal 2009-003979
Application 09/228,109
Technology Center 3700
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Decided: February 24, 2010
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Before: WILLIAM F. PATE, III, JENNIFER D. BAHR, and LINDA E.
HORNER, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Martin Brady (Appellant) appeals under 35 U.S.C. § 134 (2002) from
the Examiner's decision rejecting claims 3, 7, and 10-13. The Examiner has
indicated that claims 4, 5, 8, 9, 14, and 15 are allowable. Claims 1, 2, and 6
have been canceled. We have jurisdiction over this appeal under 35 U.S.C.
§ 6 (2002).

The Invention
Appellant's claimed invention is directed to a kitchen opening
appliance. Spec. 1:4-5. Claim 3, reproduced below, is illustrative of the
claimed invention.
3. A household opening appliance comprising an
electric can opener having a housing, a jar opener
mounted on a bottom wall of said housing, a
sheath for a scissors, and a scissors holder within
said sheath.

The Rejections
The Examiner relies upon the following as evidence of
unpatentability:

Newman US 2,720,189 Oct. 11, 1955
Davies US 4,152,831 May 8, 1979
Zallo US 5,494,176 Feb. 27, 1996
Nielsen US 5,791,608 Aug. 11, 1998
Zelson US 6,253,662 B1 Jul. 3, 2001

PRESTO™ Under Cabinet Automatic Can Opener Plus, 4-11 (Nat’l
PRESTOâ„¢ Indus., Inc. 1989).

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Appellant seeks review of the Examiner's rejections under 35 U.S.C.
§ 112, second paragraph, of claims 11 and 13 as indefinite, and under §
103(a) of claims 3, 7, and 10-13 as unpatentable over PRESTOâ„¢, Davies,
and Nielsen, with further evidence provided by Zallo and Newman; of
claims 3, 7, and 10-13 as unpatentable over PRESTOâ„¢ and Newman; and
of claim 10 as unpatentable over PRESTOâ„¢ and Zelson1.

SUMMARY OF DECISION
We AFFIRM.

ISSUES
The Examiner concluded that claims 11 and 13 are indefinite because
the Specification and claim 3 specify a housing having a sheath for scissors
with a particular holder structure that requires the sheath, whereas claims 11
and 13 further limit a housing having a scissors holder by further specifying
that the housing includes a sheath. Ans. 3-4, 9-10. Appellant argues that
one of ordinary skill in the art would understand that the sheath is on the
housing. Appeal Br. 14-15.
The Examiner concluded that claims 3, 7, and 10-13 are unpatentable
over PRESTOâ„¢, Davies, and Nielsen, with further evidence provided by
Zallo and Newman. Ans. 4-7, 11-12. In particular, the Examiner found that
PRESTOâ„¢ describes the household opening appliance as claimed, except

1 Appellant also presents arguments concerning the Examiner's objection of
the drawings under 37 C.F.R. § 1.83(a). That issue is reviewable by petition
under 37 C.F.R. § 1.181, and is not within the jurisdiction of the Board. In
re Mindick, 371 F.2d 892, 894 (CCPA 1967). See Manual of Patent
Examining Procedure (MPEP) §§ 1002 and 1201.
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that it does not describe a sheath for scissors. Ans. 5, 11. The Examiner
then found that Davies describes a scissors sheath that can be attached to
conveniently-accessible surfaces and that Nielsen teaches a scissors sheath
that can be attached to a home appliance. Id. The Examiner also found that
Zallo provides evidence that it is old and well known in the art for blade
holders to reside underneath a cabinet, for safety reasons, and that Newman
provides evidence that it is old and well known in the art for apparatus
generally not associated with scissors (e.g., thermometer, paperweight,
pencil holder) to nonetheless incorporate a scissors holder in order to make
the scissors more handy. Ans. 6-7, 11-12. Thus, given all of the evidence
that it was known in the art to include scissor holders in convenient
locations, the Examiner concluded that it would have been obvious to
provide a scissors and sheath for a scissors on a surface of an appliance
where such scissors and sheath might be deemed useful. Ans. 5-6.
According to the Examiner, a person of ordinary skill in the art would have
reason to pursue the known options within their technical grasp. Ans. 6.
Appellant argues that there is no teaching, suggestion, or motivation for
incorporating a scissors holder/sheath into the PRESTOâ„¢ opening device.
Appeal Br. 16-27. Appellant separately argues claims 10 and 12 as one
group, and claims 11 and 13 as another group. However, these arguments
are repetitive of the arguments presented with respect to claims 3 and 7.
The Examiner concluded that claims 3, 7, and 10-13 are unpatentable
over PRESTOâ„¢ and Newman. Ans. 7-8, 12-13. In particular, the Examiner
found that PRESTOâ„¢ discloses a household opening appliance as claimed,
except for a sheath and holder for scissors. Ans. 7, 13. The Examiner then
found that Newman teaches that it is well known in the art to incorporate a
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sheath or holder on a housing for releasably retaining scissors on the back of
various structures not generally associated with scissors. Id. Therefore, the
Examiner concluded that it would have been obvious to modify the
PRESTOâ„¢ opening appliance with Newman's holder/sheath to combine
known elements by known methods with no change in their respective
function. Ans. 7-8, 13. Appellant argues that there is no suggestion in the
prior art to combine the references. Appeal Br. 28-31. Appellant separately
argues claims 10 and 12 as one group, and claims 11 and 13 as another
group. However, these arguments are repetitive of the arguments presented
with respect to claims 3 and 7.
The Examiner concluded that claim 10 is unpatentable over
PRESTOâ„¢ and Zelson. Ans. 8, 13-14. In particular, the Examiner found
that PRESTOâ„¢ discloses a household opening appliance as claimed, except
for a housing capable of releasably retaining scissors on the housing. Ans.
8. Next, the Examiner found that Zelson describes that it is well known in
the art to incorporate a drawer on a housing, the drawer capable of
releasably retaining scissors. Ans. 8, 14. Therefore, the Examiner
concluded that it would have been obvious to modify the PRESTOâ„¢
opening appliance with Zelson's drawer to combine known elements by
known methods with no change in their respective function. Id. Appellant
argues that Zelson does not suggest a scissors holder on a can opener, and
that incorporating Zelson's drawer in the PRESTOâ„¢ opening appliance
would render the jar opener of PRESTOâ„¢ unusable. Appeal Br. 32-33.
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Therefore, the issues presented in this appeal are:
(1) Has the Examiner erred in concluding that claims 11 and 13 are
indefinite in view of the Specification's description of the relationship
between a sheath and a holder?
(2) Has the Examiner erred in concluding that it would have been obvious
to modify the opening appliance of PRESTOâ„¢ to include the scissors
holder of Davies, given the teachings of Nielsen, Newman, and Zallo
describing the benefits of keeping scissors accessible?
(3) Has the Examiner erred in concluding that it would have been obvious
to modify the opening appliance of PRESTOâ„¢ to include the scissors
holder of Newman, on the basis that Newman does not suggest
incorporating scissor holders in opening appliances?
(4) Has the Examiner erred in concluding that it would have been obvious
to modify the opening appliance of PRESTOâ„¢ to include the drawer
of Zelson, given that Zelson describes a drawer mounted on the
bottom of a coffee maker, which could interfere with the bottom-
mounted jar opener of PRESTOâ„¢?

FACTS PERTINENT TO THE ISSUES
(FINDINGS-OF-FACT (FF))
FF1 As described in Appellant's Specification, scissors holder 58 is made
of clamp members 60 and 62, respectively mounted on the rear wall
23B of housing 16 and cover member 54 of sheath 50. Spec. 5:18-24,
fig. 3. In other words, clamp member 60 is mounted directly to
housing 16, and clamp member 62 is mounted indirectly to housing
16, via the cover member 54 of sheath 50.
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FF2 Nielson describes a scissors holder that allows users to "keep scissors
… and other hand tools within reach while keeping their work space
clear" and to "store their most used tools … on accessible surfaces."
Col. 2, ll. 25-34.
FF3 Newman describes a holder for office utilities, including scissors, to
make these items handy and easy to remove. Col. 2, ll. 33-42.
FF4 PRESTOâ„¢ describes an opening device for use in a kitchen having
several opening gadgets, including a jar opener that is located on the
bottom of the opening appliance. Pg. 8, fig. J.
FF5 Zelson describes an integral or attached compartment for holding
various-sized coffee filters conveniently at the top, bottom, or side of
a coffee maker. Col. 4, ll. 20-32 (drawer on bottom), col. 4, l. 66 to
col. 5, l. 22 (hinge on top or half of top), col. 6, ll. 18-33 (drawer or
hinge on side), col. 7, ll. 18-23 (integral or attached).

PRINCIPLES OF LAW
Indefiniteness
The second paragraph of 35 U.S.C. § 112 requires claims to set out
and circumscribe a particular area with a reasonable degree of precision and
particularity. In re Johnson, 558 F.2d 1008, 1015 (CCPA 1977). In
determining whether this standard is met, the definiteness of the language
employed in the claim must be analyzed, not in a vacuum, but always in
light of the teachings of the prior art and of the particular application
disclosure as it would be interpreted by one possessing the ordinary level of
skill in the pertinent art. Id.
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"[A] claim in dependent form shall contain a reference to a claim
previously set forth and then specify a further limitation of the subject matter
claimed. A claim in dependent form shall be construed to incorporate by
reference all the limitations of the claim to which it refers." 35 U.S.C.
§ 112, fourth paragraph.
Obviousness
While there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness, "the analysis
need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ." KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Further, the Supreme Court notes "[a] factfinder should be aware, of
course, of the distortion caused by hindsight bias and must be cautious of
arguments reliant upon ex post reasoning. Rigid preventative rules that deny
factfinders recourse to common sense, however, are neither necessary under
our case law nor consistent with it." Id. at 421 (internal citations omitted).
Finally, "if a technique has been used to improve one device, and a
person of ordinary skill in the art would recognize that it would improve
similar devices in the same way, using the technique is obvious unless its
actual application is beyond his or her skill." Id. at 417.
Analogous Art
"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." Id. "Under the correct
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analysis, any need or problem known in the field of endeavor at the time of
invention and addressed by the patent can provide a reason for combining
the elements in the manner claimed." Id. at 420.

ANALYSIS
Issue (1) - Definiteness of Claims 11 and 13
Appellant argues that one of ordinary skill in the art would understand
that the sheath is on the housing. Appeal Br. 14-15. Claims are interpreted
in light of the Specification as well as the claims from which they depend.
In re Johnson, 558 F.2d at 1015; 35 U.S.C. § 112, fourth paragraph. As
described in the Specification, clamp member 60 is mounted directly to
housing 16, and clamp member 62 is mounted indirectly to housing 16, via
the cover member 54 of sheath 50. FF1. Further, Appellant’s Specification
describes the scissors holder 58 as being made of clamp members 60 and 62.
Id. Thus, the recitation of "a scissors holder on said housing" in claim 10,
from which both claims 11 and 13 depend, and of a sheath for a scissors on
said housing, in claims 11 and 13, is consistent with Appellant’s description
of the scissors holder 58, as well as with claim 3, which recites a sheath and
a scissors holder within the sheath. While the clamp member 62 is mounted
to cover member 54 of sheath 50, clamp member 62, like clamp member 60,
is distinct from the sheath. As such, the recitation of a sheath as an
additional element, distinct from the earlier-recited scissors holder, in claims
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11 and 13, is not inconsistent with the underlying disclosure, and does not
render these claims indefinite.2

Issue (2) - Obviousness of Claims 3, 7, and 10-13 in view of PRESTOâ„¢,
Davies, and Nielson
Appellant argues that there is no teaching, suggestion, or motivation
for incorporating a scissors holder/sheath into the PRESTOâ„¢ opening
device. Appeal Br. 16-27. However, the Supreme Court has explicitly
rejected the application of a rigid formula insisting on a teaching,
suggestion, or motivation (TSM) to demonstrate obviousness. See KSR, 550
U.S. at 415 ("[w]e begin by rejecting the rigid [TSM] approach of the Court
of Appeals."). Instead, "a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ." Id. at
418. As the Examiner reasoned, Davies' scissors holder would improve the
PRESTOâ„¢ can opener by making scissors readily available, which is
described as a desirable feature in Nielson. Ans. 5-6.
In particular, Nielson describes a scissors holder that keeps the
scissors within reach while keeping the work space clear. FF2. Newman
describes a similar application of a scissors holder, wherein a scissors holder
is incorporated into commonplace desk accessories. FF3. Thus, the
Examiner has provided ample evidence that the adaptation of a scissors
holder into various objects and locations is a desired feature and within the
level of ordinary skill in the art. Therefore, modifying the PRESTOâ„¢

2 Our conclusion is consistent with that reached by the Board in the first
appeal in this application. Ex parte Brady, Appeal No. 2001-1477, On
Request for Rehearing (BPAI Aug. 23, 2002).
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opening appliance to include the scissors holder in Davies is nothing more
than applying a technique used to improve the usability of one device and
improving a similar device in the same way, which involves nothing more
than ordinary creativity well within the technical grasp of a person of
ordinary skill in the art. See KSR, 550 U.S. at 417.
Appellant further argues that the references used by the Examiner are
"diverse." Appeal Br. 22. To the extent that Appellant may be arguing that
the references are non-analogous art, we note that the Examiner has
identified prior art that serves to make common household tools more
accessible. See id. Thus, the prior art references identified by the Examiner
are directly related to the problem Appellant's invention seeks to solve. See
id. at 420; Spec. 2:6-8 ("an object of this invention is to provide … several
tools conveniently accessible and useable").
Therefore, Appellant has not demonstrated that the Examiner erred in
concluding that claims 3 and 7 are unpatentable in view of PRESTOâ„¢,
Davies, and Nielsen, with further evidence provided by Zallo and Newman.
Appellant's line of reasoning with respect to the Examiner's rejection of
claims 10-13 is likewise unpersuasive.

Issue (3) - Obviousness of Claims 3, 7, and 10-13 in view of PRESTOâ„¢ and
Newman
Appellant does not allege any particular error in the Examiner's
conclusion of obviousness with respect to this rejection, only pointing out
that there is no suggestion in either reference to place a sheath on the back of
a housing. Appeal Br. 28-31. Contrary to Appellant's assertion that KSR
does not have "any bearing" on the Examiner's conclusion of obviousness,
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the Supreme Court has explicitly rejected the application of a rigid formula
insisting on a teaching, suggestion, or motivation (TSM) to demonstrate
obviousness. See KSR, 550 U.S. at 415.
Newman describes a holder for office utilities, including scissors, to
make these items handy and easy to remove. FF3. PRESTOâ„¢ describes an
opening device for use in a kitchen having several opening gadgets,
including a jar opener that is located on the bottom of the opening appliance.
FF4. Similar to the rejection discussed in Issue (2), the Examiner concluded
that it would have been obvious to include the scissors sheath and holder of
Newman in the opening appliance of PRESTOâ„¢ because the combination
would be combining known elements by known methods with no change in
their respective function. Ans. 7-8. Indeed, the Supreme Court noted that a
"patent for a combination which only unites old elements with no change in
their respective functions ... obviously withdraws what is already known into
the field of its monopoly and diminishes the resources available to skillful
men." KSR, 550 U.S. at 415-16 (internal quotations and citation omitted);
see also Anderson's-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57,
60-62 (1969) (holding obvious a device combining two pre-existing
elements doing no more together than they would if separate). Appellant has
not attempted to challenge the Examiner's particular reasoning for
combining the references as proposed, nor has Appellant shown that
combination of the claimed known elements is outside the realm of ordinary
skill. See KSR at 421 ("A person of ordinary skill is also a person of
ordinary creativity, not an automaton."); In re Sovish, 769 F.2d 738, 743
(Fed. Cir. 1985) (one of ordinary skill in the art is presumed to have skills
apart from what the prior art references expressly disclose).
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Therefore, Appellant has not demonstrated that the Examiner erred in
concluding that claims 3 and 7 are unpatentable in view of PRESTOâ„¢ and
Newman. Appellant's line of reasoning with respect to the Examiner's
rejection of claims 10-13 is likewise unpersuasive.

Issue (4) - Obviousness of Claim 10 in view of PRESTOâ„¢ and Zelson
Appellant argues that Zelson does not suggest a scissors holder on a
can opener. Appeal Br. 32-33. As noted above, the Examiner need not
provide an explicit suggestion to combine the references. See KSR, 550 U.S.
at 415. Appellant has not addressed the Examiner's reasoning for
concluding that the proposed modification would have been obvious,
namely, that the modification is nothing more than the combination of
known elements with no change in their respective functions and would have
yielded predictable results (Ans. 8). An improvement that is nothing more
than the predictable use of prior art elements according to their established
functions is likely to be obvious. KSR, 550 U.S. at 417. Thus, Appellant
has not demonstrated error in the Examiner's rationale for combining the
opening appliance of PRESTOâ„¢ and the drawer of Zelson.
Appellant next argues that incorporating Zelson's drawer in the
PRESTOâ„¢ opening appliance would render the jar opener of PRESTOâ„¢
unusable. Appeal Br. 33. This argument is not convincing. First, claim 10
does not require a jar opener. Thus, even if the incorporation of Zelson's
drawer, in the manner addressed by Appellant required the elimination of the
PRESTOâ„¢ jar opener, the proposed combination would meet the limitations
of claim 10. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (limitations
not appearing in the claims cannot be relied upon for patentability); see also
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Winner Int'l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir.
2000) ("The fact that the motivating benefit comes at the expense of another
benefit, however, should not nullify its use as a basis to modify the
disclosure of one reference with the teachings of another. Instead, the
benefits, both lost and gained, should be weighed against one another.").
Moreover, Appellant’s argument overlooks Zelson’s teaching of
alternative locations for the drawer. Claim 10 does not require that the
scissors holder be disposed on the bottom of the appliance. While the
PRESTOâ„¢ jar opener is located on the bottom of the opening appliance,
and requires access to the bottom of the can opener for operation (FF4),
Zelson's drawer can be mounted on the top, sides, or bottom of that
appliance (FF5). In order for the PRESTOâ„¢ jar opener to remain usable,
the incorporation of Zelson's drawer merely must not interfere with access to
the jar opener on the bottom of the can opener, such as by being in any of
the many configurations offered in Zelson. See FF5. Therefore, Appellant
has not demonstrated that the Examiner erred in concluding that the subject
matter of claim 10 is obvious in view of PRESTOâ„¢ and Zelson.

CONCLUSIONS
(1) The Examiner erred in concluding that claims 11 and 13 are
indefinite.
(2) The Examiner did not err in concluding that it would have been
obvious to modify the opening appliance of PRESTOâ„¢ to include the
scissors holder of Davies, given the teachings of Nielsen, Newman,
and Zallo describing the benefits of keeping scissors accessible. Thus,
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the Examiner did not err with respect to the rejections of claims 3, 7,
and 10-13 as unpatentable over PRESTOâ„¢, Davies, and Nielson.
(3) The Examiner did not err in concluding that it would have been
obvious to modify the opening appliance of PRESTOâ„¢ to include the
scissors holder of Newman, on the basis that Newman does not
suggest incorporating scissor holders in opening appliances. Thus, the
Examiner did not err with respect to the rejections of claims 3, 7, and
10-13 as unpatentable over PRESTOâ„¢ and Newman.
(4) The Examiner did not err in concluding that it would have been
obvious to modify the opening appliance of PRESTOâ„¢ to include the
drawer of Zelson, despite the fact that Zelson describes a drawer
mounted on the bottom of a coffee maker that could interfere with the
jar opener in PRESTOâ„¢. This is the case because Zelson also
teaches other locations for the drawer. Thus, the Examiner did not err
with respect to the rejection of claim 10 as unpatentable over
PRESTOâ„¢ and Zelson.

DECISION
The Examiner's decision is affirmed as to claims 3, 7, and 10-13.
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) (2007).

AFFIRMED

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