Ex Parte Davis et alDownload PDFPatent Trial and Appeal BoardNov 20, 201713808914 (P.T.A.B. Nov. 20, 2017) Copy Citation 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. S010813 8967 EXAMINER MICHALSKI, SEAN M ART UNIT PAPER NUMBER 3724 MAIL DATE DELIVERY MODE 13/808,914 01/08/2013 24271 7590 11/20/2017 JOHN ALEXANDER GALBREATH 2516 CHESTNUT WOODS CT REISTERSTOWN, MD 21136 Reuben Jon Davis 11/20/2017 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 REUBEN JON DAVIS and DEREK RICHARD SENIOR Appeal 2016-004379 Application 13/808,914 Technology Center 3700 Before JENNIFER D. BAHR, KEN B. BARRETT, and ARTHUR M. PESLAK, Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1—8, 10-15, 17, 19, and 21, which are all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 The Appeal Brief (submitted July 7, 2015; hereinafter “Appeal Br.”) identifies Start Food-Tech NZ Limited as “the Applicant/Assignee” and “also the Appellant and the real party in interest.” Appeal Br. 2. The PCT Request (submitted January 8, 2013) for the present application lists Start Food-Tech NZ Limited as an applicant, and Reuben Jon Davis and Derek Richard Senior as applicants and inventors. Appeal 2016-004379 Application 13/808,914 THE CLAIMED SUBJECT MATTER Claim 1, reproduced below with changes in indentation for clarity, is the only independent claim and is representative of the claimed subject matter. 1. A stainless steel knife blade with a back, and a cutting edge with a shoulder, characteri[z]ed in that the knife blade has a blade profile perpendicular to the blade edge that, starting at the shoulder and moving towards the back, has the following thickness, as ground prior to any polishing or subsequent steps, at the position indicated: at the shoulder a thickness of AA; at about 1/16” from the shoulder a thickness of BB; and at about 1/8” from the shoulder a thickness of CC; where AA is about 16 to 23 thousandths of an inch (0.41 mm to 0.58mm); BB is AA plus about 3 thousandths of an inch (0.076 mm); and CC is BB plus about 2 thousandths of an inch (0.051 mm). THE REJECTION Claims 1—8, 10-15, 17, 19, and 21 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Julien (US 6,293,020 Bl, issued Sept. 25, 2001), Whitcomb (US 2,636,267, issued Apr. 28, 1953), Appellants’ Admitted Prior Art, Malzacher (US 3,116,180, issued Dec. 31, 1963), Tausendfreundt (US 3,488,845, issued Jan. 13, 1970), Hufnagel (US 2002/0144410 Al, published Oct. 10, 2002), Ashby (US 5,622,184, issued Apr. 22, 1997), McLaudrey (US 6,698,049 B2, issued Mar. 2, 2004), Jackson (US 2,474,425, issued June 28, 1949), Cousins (US 3,417,469, issued Dec. 24, 1968), Eickhom (US 3,616,712, issued Nov. 2, 1971), 2 Appeal 2016-004379 Application 13/808,914 Montgomery (US 4,707,920, issued Nov. 24, 1987), Shulz (US 4,729,873, issued Mar. 8, 1988), Jordan (US 4,793,218, issued Dec. 27, 1988), Stahl (US 5,071,427, issued Dec. 10, 1991), Hood (US 5,261,922, issued Nov. 16, 1993), Cole (US 5,343,623, issued Sept. 6, 1994), and Williams (US 5,477,616, issued Dec. 26, 1995). DISCUSSION Claim 1 recites, in pertinent part, a particular range of thickness at the shoulder and particular increases in blade thicknesses, relative to the shoulder thickness, at specific distances away from the shoulder. Appeal Br., Claims App. 1. In particular, claim 1 recites a blade thickness of about 16 to 23 thousandths of an inch at the shoulder, an increase in thickness of about 3 thousandths of an inch at 1/16 inch from the shoulder, and another increase in thickness of about 2 thousandths of an inch at 1/8 inch from the shoulder. Id. In other words, the blade increases in thickness by about 3 thousandths of an inch over the first 1/16 inch and by only about 2 thousandths of an inch over the second 1/16 inch. Thus, the claimed taper of the blade from the shoulder is not a constant slope or angle. In addressing the blade thickness limitations of claim 1, the Examiner finds that Julien discloses a thickness at the back edge of the filet knife of about 0.070 inches (i.e., 70 thousandths of an inch) and that, “by virtue of its taper it ends in a thickness of 0.” Ans. 3. The Examiner acknowledges that Julien does not explore in depth the selection of where each thickness occurs or disclose specific dimensions along the length of the blade. Id. The Examiner reasons, however, that “a taper from .07-0 will result in positions having thicknesses of .05 [inch], .04 [inch], .03 [inch], .02 [inch], 3 Appeal 2016-004379 Application 13/808,914 .019 [inch], and .016 [inch] as claimed.” Id. Noting that “selection of size, weight, ratios, etc. is considered routine, and is typically a matter of design choice,” the Examiner reasons that “determining where each thickness [of Julien’s blade] goes along a taper is a simple matter of deciding what angle the blade edge should take, and what blade thickness you start from.” Id. at 4. The Examiner adds that “[t]he person of ordinary skill knows how to make knives bigger or smaller.” Id. at 22. This analysis is an oversimplification which fails to appreciate that the claimed thicknesses do not represent a constant taper angle, nor does modification to satisfy the claimed thickness limitations amount to a simple scaling up or down of the dimensions of the blade, as the Examiner’s reasoning suggests. The Examiner insists that “[s]ince the prior art shows the general profile used by [Appellants], and the same approximate size, the burden of proof shifts to [Appellants] to demonstrate the non-obviousness or criticality of the claimed dimensions.” Id. The Examiner explains: The particular taper and selection of the appropriate size along known cross sectional profiles are within the level of ordinary skill in the art, according to the purpose the knife blade is being designed for ([Appellants’] figures 2-4, Julien figures 20-23, and Whitcomb, specifically are all demonstrated known profiles to a person of ordinary skill).” Id. at 23 (emphasis added). The shortcoming in the Examiner’s reasoning is that the Examiner has not directed our attention to any evidence establishing that the profile embodied by the thickness limitations set forth in claim 1 is a knife blade profile known in the art at the time of Appellants’ invention. For the above reasons, Appellants’ arguments on pages 13—14 of the Appeal Brief and pages 5—6 of the Reply Brief are persuasive of error in the 4 Appeal 2016-004379 Application 13/808,914 Examiner’s rejection of independent claim 1, as well as dependent claims 2- 8, 10-15, 17, 19, and 21, under 35 U.S.C. § 103(a). Accordingly, we do not sustain the rejection. DECISION The Examiner’s decision rejecting claims 1—8, 10—15, 17, 19, and 21 is reversed. REVERSED 5 Copy with citationCopy as parenthetical citation