Ex Parte Devecka

Patent Trial and Appeal Board

Jun 23, 2017

13115201 (P.T.A.B. Jun. 23, 2017)

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.
13/115,201 05/25/2011 John R. Devecka 700.0010 2981
759027997
Hultquist IP
P.O. Box 14329
Research Triangle Park, NC 27709
06/27/2017 EXAMINER
CHOI, STEPHEN
ART UNIT PAPER NUMBER
3724
NOTIFICATION DATE DELIVERY MODE
06/27/2017 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):
hip@hultquistip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN R. DEVECKA
Appeal 2015-004571
Application 13/115,201
Technology Center 3700
Before THOMAS F. SMEGAL, JEFFREY A. STEPHENS, and
BRENT M. DOUGAL, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) from the
Examiner’s Final Office Action (“Final Act.”) rejecting claims 1—11, 13, 14,
and 16—20. Claims 12 and 15 are withdrawn from consideration. Final Act.
1. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse and enter a new ground of rejection pursuant to 37 C.F.R.
§ 41.50(b).
1 The real party in interest is identified as Devecka Enterprises, Inc. App.
Br. 1.
Appeal 2015-004571
Application 13/115,201
Claimed Subject Matter
Claims 1 and 10 are independent. Claim 1, reproduced below,
illustrates the claimed subject matter.
1. A child safe paper trimmer device comprising:
a rotatably mounted micro trimmer tip having a touch safe
blade; and
a housing supporting the rotatably mounted micro trimmer
tip.
Rejections
1. Claim 20 stands rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite.
2. Claims 1, 4—7, 17, 18, and 20 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Dalton et al. (US 3,831,276, iss. Aug. 27, 1974)
(“Dalton”). Final Act. 2—3.
3. Claims 2 and 3 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Dalton and Elliott et al. (US 2010/0005665 Al, pub. Jan.
14, 2010) (“Elliott”). Final Act. 3.
4. Claims 8—11 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Dalton and Goldman (US D555,986 S, iss. Nov. 27,
2007). Final Act. 3^1.
5. Claim 13 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Dalton, Goldman, and Reiff (US 4,312,130, iss. Jan. 26,
1982). Final Act. 4.
6. Claim 14 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Dalton and Ertz (US 4,917,517, iss. Apr. 17, 1990). Final
Act. 5.
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Application 13/115,201
7. Claims 16 and 19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Dalton and Hirsch (US 2002/0040527 Al, pub. Apr. 11,
2002) or Peterson (US 6,500,187 Bl, iss. Dec. 31, 2002). Final Act. 5.
ANALYSIS
Indefiniteness Rejection — Claim 20
Claim 20 depends from claim 1 and recites that “the housing has a
weight equal to a force required to push the touch safe blade into a piece of
paper.” The Examiner rejects claim 20 as indefinite, explaining that the
limitations of the claim are unclear “since the weight can vary depending on
types and thicknesses of the workpiece.” Final Act. 2. The Examiner
further states that the claim “references to an object that is variable because
the relationship between the weight of the housing and a force required for a
particular piece of paper is not based on any known standard, but only on a
piece of paper of unspecified type.” Ans. 5.
Appellant argues that “[i]n designing the apparatus of claim 20 to
work optimally with a particular weight of paper, one of ordinary skill in the
art can be expected to be able to determine a particular housing weight.”
App. Br. 8. Appellant also contends that “being responsive to an object that
is variable does not make a claim per se indefinite as asserted by the
Answer.” Reply Br. 2.
We agree with Appellant that merely referencing an object that is
variable does not render a claim indefinite. See Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (“The claims were
intended to cover the use of the invention with various types of automobiles.
That a particular chair on which the claims read may fit within some
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Application 13/115,201
automobiles and not others is of no moment. The phrase ‘so dimensioned’ is
as accurate as the subject matter permits, automobiles being of various
sizes.”). Accordingly, we do not sustain the rejection of claim 20 under 35
U.S.C. § 112, second paragraph.
Anticipation and Obviousness Rejections
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments (App. Br. 7—16; Reply Br. 1—2). We concur with Appellant’s
argument (App. Br. 9—10) that the Examiner’s rejection of claim 1 appears
to give no weight to the recitation of a “micro trimmer tip having a touch
safe blade.” The Examiner explains that “[tjhere is no special definition
given to the term ‘touch safe blade’ or ‘child safe’ in the disclosure,” and
thus relies on the ordinary meaning of “a blade that is safe to touch,” further
explaining that “merely touching the blade does not make the blade unsafe.”
Ans. 6.
The Examiner’s interpretation of a “touch safe blade” as one that is
“safe to touch” is broad, but reasonable, and consistent with Appellant’s
Specification. See Spec. 3:10—11 (“The present invention may suitably
employ ceramic or other safe to touch micro-blades to ensure a child does
[sic] cut himself or herself.”). Although the extent to which a blade may be
touched without cutting skin to be considered “touch safe” is perhaps
unclear, we agree with Appellant that the cited portions of Dalton do not
disclose a “micro trimmer tip having a touch safe blade.” Dalton discloses a
small blade (col. 1,1. 13), but, without any indication to the contrary, we
find one of ordinary skill in the art would expect Dalton’s blade to cut skin if
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Application 13/115,201
not handled cautiously, e.g., if touched with any more than a de minimis
amount of pressure.
In view of the foregoing, we do not sustain the rejection of claim 1
under 35 U.S.C. § 102(b) as anticipated by Dalton. Because the rejections of
all claims on appeal rely on the Examiner’s finding that Dalton discloses a
“micro trimmer tip having a touch safe blade,” we also do not sustain the
rejections of claims 4—7, 17, 18, and 20 as anticipated, and claims 2, 3, 8—11,
13, and 14 as obvious.
NEW GROUND OF REJECTION
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new
ground of rejection and reject claim 1 under pre-AIA 35 U.S.C. § 103(a) as
obvious over Dalton and Appellant’s Admitted Prior Art. We incorporate
the Examiner’s findings as to the teachings of Dalton (Final Act. 2), except
we find Dalton does not expressly teach a “micro trimmer tip having a touch
safe blade,” as discussed above. Appellant’s Specification admits, however,
that “[pjroducts like ‘Islice’, and Scotch’s Precision Cutter utilize fixed
ceramic or other types of micro blades to provide a safe trimming blade for
adults.” Spec. 1:14—15. Appellant’s Specification explains that these prior
art cutters have “form factors and ergonomics [that] are designed for adults
and they have fixed blades that cut in one direction” (Spec. 1:15—17), but
does not otherwise distinguish these micro blades from the claimed “micro
trimmer tip having a touch safe blade.” Indeed, Appellant’s Specification
indicates that all “micro-blades” are “touch safe” in stating that “[t]he
present invention may suitably employ ceramic or other safe to touch micro­
blades to ensure a child does [sic] cut himself or herself.” Spec. 3:10—11.
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Thus, we find that Appellant’s Specification admits a “micro trimmer tip
having a touch safe blade” was known in the art at the time of invention.
We also interpret the reference in the preamble of claim 1 to “[a] child
safe paper trimmer” to state an intended use that does not otherwise limit the
body of the claim. Even if the preamble were construed as limiting,
however, a “micro trimmer tip having a touch safe blade,” as recited in the
body of claim 1, would render the trimmer “child safe.”
We find one of ordinary skill in the art would have had reason to
modify Dalton to use a ceramic or other type of micro blade that is safe to
touch in order to increase the safety of Dalton’s swivel knife and decrease
the potential for injury resulting from its use. We, therefore, conclude that
“the differences between the subject matter sought to be patented and the
prior art are such that the subject matter as a whole would have been obvious
at the time the invention was made to a person having ordinary skill in the
art to which said subject matter pertains.” 35 U.S.C. § 103(a).
We note the Patent Trial and Appeal Board is a review body, rather
than a place of initial examination. We have rejected independent claim 1
based on our authority under 37 C.F.R. § 41.50(b). We have not, however,
reviewed the remaining claims to the extent necessary to determine whether
those claims are unpatentable under 35 U.S.C. § 103(a). We leave it to the
Examiner to ascertain whether independent claim 10 and claims dependent
from claims 1 and 10 should be rejected based on similar grounds to those
set forth herein or in combination with additional prior art.
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Application 13/115,201
DECISION
We reverse the Examiner’s rejection of:
(1) claim 20 under 35 U.S.C. § 112, second paragraph, as being
indefinite;
(2) claims 1, 4—7, 17, 18, and 20 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Dalton;
(3) claims 2 and 3 under 35 U.S.C. § 103(a) as unpatentable over
Dalton and Elliott;
(4) claims 8—11 under 35 U.S.C. § 103(a) as unpatentable over Dalton
and Goldman;
(5) claim 13 under 35 U.S.C. § 103(a) as unpatentable over Dalton,
Goldman, and Reiff;
(6) claim 14 under 35 U.S.C. § 103(a) as unpatentable over Dalton and
Ertz;
(7) claims 16 and 19 under 35 U.S.C. § 103(a) as unpatentable over
Dalton and Hirsch.
We enter a new ground of rejection and reject claim 1 under pre-AIA
35 U.S.C. § 103(a) as obvious over Dalton and Appellant’s Admitted Prior
Art, as set forth above.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). “A new ground of rejection pursuant to this paragraph
shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b).
Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant, within
two months from the date of the decision, must exercise one of the following
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Application 13/115,201
two options with respect to the new ground of rejection to avoid termination
of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the prosecution will be remanded to the
examiner. The new ground of rejection is binding upon the
examiner unless an amendment or new Evidence not previously
of Record is made which, in the opinion of the examiner,
overcomes the new ground of rejection designated in the
decision. Should the examiner reject the claims, appellant may
again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same Record. The request
for rehearing must address any new ground of rejection and state
with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
REVERSED:
37 C.F.R, $ 41.50(b)
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