Ex Parte Duffy

Board of Patent Appeals and Interferences

Feb 25, 2010

11110629 (B.P.A.I. Feb. 25, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte THOMAS F. DUFFY
____________

Appeal 2009-002367
Application 11/110,629
Technology Center 3600
____________

Decided: February 26, 2010
____________

Before JOHN C. KERINS, MICHAEL W. O’NEILL, and
FRED A. SILVERBERG, Administrative Patent Judges.

O’NEILL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Thomas F. Duffy (Appellant) seeks our review under 35 U.S.C. § 134
of the final rejection of claims 1-4, 8-12, 21, and 23. Appellant canceled
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claims 5-7, 13-20, and 22. We have jurisdiction under 35 U.S.C. § 6(b)
(2002).
The Invention
The claimed invention is to a rake or implement for clearing debris.
Spec. 3, para. [0011].
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A rake having a handle having a proximal end and a
distal end and a rake head having a front; a rear; two straight
sidepieces which have front ends and bottom surfaces, an arced
frame connecting the front ends of the sidepieces wherein the
frame extends from the forward end of each sidepiece in a
gradual arc, about halfway between the forward end of each
sidepiece and the center of the frame, the slope of the arc
becomes steeper and changes again to become more gradual
near the center of the frame so that the frame reaches its
greatest forward protrusion at the center of the frame, and
spaced-apart tines extending downwardly from the frame so
that a downward pressure on the handle tilts the rake head
upwardly about the bottom surfaces of the sidepieces which
serve as fulcrums resting upon the ground, allowing the rake to
be repositioned without lifting by gliding the bottom surfaces of
the sidepieces along the ground.

The Prior Art
The Examiner relies upon the following as evidence of
unpatentability:
Weichhart US 210,650 Dec. 10, 1878
Bronson US 1,489,919 Apr. 8, 1924
Welz US 3,678,670 Jul. 25, 1972
Archer US 4,520,621 Jun. 4, 1985
Hoffman US 4,704,758 Nov. 10, 1987

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The Rejections
The following Examiner’s rejections are before us for review:
Claims 1, 2, 8, and 9 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Archer in view of Bronson.
Claims 3 and 4 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Archer in view of Bronson and Weichhart.
Claims 10-12 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Archer in view of Bronson and Hoffman.
Claim 21 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Archer in view of Welz.
Claim 23 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Archer in view of Bronson and Welz.

SUMMARY OF DECISION
We AFFIRM.

OPINION
Issues
(1) Did the Examiner err in not specifying the level of skill in the art?
(2) Did the Examiner give an apparent reason to combine the known
elements in the fashion claimed by the claims at issue?
Factual Findings
We rely on the Examiner’s factual findings stated in the Answer for
the scope and content of Archer, Bronson, Hoffman, Weichhart, and Welz.
Ans. 3-8.
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Principles of Law
“Section 103 forbids issuance of a patent when ‘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.’” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See
also KSR, 550 U.S. at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”).
Analysis
We have thoroughly reviewed each of Appellant’s arguments for
patentability. App. Br. 10-25. However, we are in complete agreement with
the Examiner that the claimed subject matter would have been obvious to
one of ordinary skill in the art within the meaning of § 103(a) in view of
Archer, Bronson, Hoffman, Weichhart, and Welz. Further, we find
ourselves in agreement with the Examiner’s cogent disposition, see Ans. 8-
12, of the arguments raised by Appellant in the Appeal Brief and adopt them
as our own in sustaining the rejection of the claims. We add the following
for emphasis only.

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Reliance on Motorola v. Interdigital
Appellant’s argument that Archer’s disclosure does not enable
Appellant’s invention as required by Motorola, Inc. v. Interdigital Tech.
Corp., 121 F.3d 1461 (Fed. Cir. 1997) lacks merit. (App. Br. 11). The
Motorola court did not address whether the Kinoshita reference was non-
enabling because ITC did not raise the argument that Kinoshita is “so vague
that it is not enabling” and thus cannot anticipate or render obvious the
asserted claims at the district court level. Id. at 1471. Further, references
are presumed enabled and it is incumbent upon the Appellant to provide
evidence to the contrary. Appellant has not provided any evidence to
establish that the disclosure in Archer is “so vague” that a person having
ordinary skill in the art could not make or use Appellant’s claimed invention
based on Archer’s description of its rake. Therefore, Appellant has failed to
establish that the Archer reference is non-enabling to the claimed invention.
Issue (1)
While it is always preferable for the factfinder
below to specify the level of skill it has found to
apply to the invention at issue, the absence of
specific findings on the level of skill in the art does
not give rise to reversible error “where the prior art
itself reflects an appropriate level and a need for
testimony is not shown.” Litton Indus. Prods., Inc.
v. Solid State Sys. Corp., 755 F.2d 158, 163, 225
USPQ 34, 38 (Fed. Cir. 1985); see also Custom
Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807
F.2d 955, 963, l USPQ2d 1196, 1201 (Fed. Cir.
1986) (excusing failure to make express findings
as to the level of ordinary skill where there is no
showing that the court’s failure to make such a
finding influenced the ultimate determination).
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Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (affirming
decision in interference).
Archer describes a gardening tool similar to a rake. Bronson
describes a mop with a stout wire head, foliate in form, i.e., shaped like a
leaf when viewed in a top plan view, as shown in Figure 1. Hoffman
describes a broom handle having offset handle portions to provide a user
with an advantage during sweeping. Weichhart describes a lawn rake
having a shoe in order for the tines to gather grass and leaves but not
penetrate the soil. Welz describes a shoe attached to a rake in order to adjust
the penetration of the tines. Rakes, mops, brooms, and the like collect
debris. As such, a simple review of the prior art of record would reveal that
a person of ordinary skill in the art would be an artisan familiar with hand
tool implements capable of collecting debris. Further, Appellant has not
provided evidence to show that the failure of the Examiner to specify the
level of skill changes the ultimate outcome of whether the claimed subject
matter would be obvious. Instead, Appellant argues what might be obvious
to a designer might not be obvious to a user. See, e.g., App. Br. 13.
However, Appellant’s attorney’s arguments in a brief do not take the place
of evidence in the record. See In re Pearson, 494 F.2d 1399, 1405 (CCPA
1974); In re Schulze, 346 F.2d 600, 602 (CCPA 1965).
In view of the foregoing, we conclude that the Examiner did not err in
not specifying the level of ordinary skill because only a simple review of
Archer, Bronson, Hoffman, Weichhart, and Welz is needed to readily
ascertain the level of ordinary skill.

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Issue (2)
Following the principles of the “functional approach” set forth in
Hotchkiss as reaffirmed in Graham may be difficult when the claimed
subject matter may involve more than a simple substitution of one known
element for another or the mere application of a known technique to a piece
of prior art ready for improvement. Often, it will be necessary for an
Examiner to look at interrelated teachings of multiple patents and other
considerations in order to determine “whether there was an apparent reason
to combine the known elements in the fashion claimed by the patent
[application claims] at issue.” KSR, 550 U.S. at 417-18
After looking at the interrelated teachings of multiple patents, the
Examiner reasoned a person having ordinary skill in the art would combine
the teachings of Archer and Bronson in order to maximize maneuverability.
See Ans. 4. The Examiner reasoned a person having ordinary skill in the art
would combine the teachings of Archer, Bronson, and Weichhart in order to
adjust the depth of the tines. See Ans. 4. The Examiner reasoned a person
having ordinary skill in the art would combine the teachings of Archer,
Bronson, and Hoffman in order to impart the maximum amount of power in
manipulating the implement taught within Archer and Bronson. See Ans. 5.
The Examiner reasoned a person having ordinary skill in the art would
combine the teachings of Archer and Welz in order to control the penetration
of the tines into the soil. See Ans. 6. The Examiner reasoned a person
having ordinary skill in the art would combine the teachings of Archer,
Bronson, and Welz in order to maximize maneuverability and control the
penetration of the tines. See Ans. 7 and 8. As such, the Examiner articulates
reasons why a person having ordinary skill in the art would combine the
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teachings of Archer, Bronson, Hoffman, Weichhart, and Welz: to maximize
maneuverability, impart maximum amount of power using the implement,
and control penetration of the tines.
The claimed invention is a combination of elements where the
“improvement” over the prior art is each of the elements are taught
separately in the prior art, see Ans. 3-7, and thus the difference between the
claimed invention and the prior art is that no single reference anticipates the
claimed invention. As such, the situation presented here is a person having
ordinary skill in the art applying common sense and fitting the teachings of
Archer, Bronson, Hoffman, Weichhart, and Welz together like puzzle
pieces. See KSR, 550 U.S. at 420 (“Common sense teaches, however, that
familiar items may have obvious uses beyond their primary purposes, and in
many cases a person of ordinary skill in the art will be able to fit the
teachings of multiple patents like pieces of a puzzle.”).
It appears that it would be well within the level of ordinary skill in the
art to combine the known elements of a rake (Archer), foliate shaped
broomhead (Bronson), attachments for depth control (Weichhart and Welz),
and an offset handle (Hoffman) in known manners to achieve a rake that is
more maneuverable, permits greater application of power during use, and
controls the depth of tine penetration. As the Supreme Court articulated “[i]f
a person of ordinary skill can implement a predictable variation, § 103 likely
bars its patentability.” KSR, 550 U.S. at 417. In this case, based on the
teachings of the multiple patents, the predictable variation would be a rake
product the combines the features of at least an arcuate head and
improvements in controlling tine penetration and use of the implement.
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Appellant has not provided any evidence to demonstrate that a person
of ordinary skill in the art could not implement such a predictable variation.
Instead, Appellant argues that there are no reasons to combine the prior art.
However, as stated above the Examiner has provided reasons for combining
the interrelated teachings of Archer, Bronson, Hoffman, Weichhart, and
Welz. Once the Examiner has provided reasons, it is incumbent upon
Appellant to provide evidence to counter those reasons, not just argument.
See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (An attorney’s
arguments in a brief cannot take the place of evidence).
Therefore, the situation presented here is a combination of familiar
elements according to known methods that provides a rake product that has a
more desirable result than the individual rakes disclosed in Archer,
Weichhart, and Welz, and the Examiner articulated reasons for combining
the interrelated teachings of these patents in order to conclude that the
claimed invention is obvious. Appellant has provided no evidence that a
person having ordinary skill in the art would not be able to implement a
predicable variation of a rake product when combining the teachings of
Archer, Bronson, Hoffman, Weichhart, and Welz.

CONCLUSIONS
The Examiner did not err in not specifying the level of skill in the art.
The Examiner did give apparent reasons to combine the known elements in
the fashion claimed by the claims at issue that have not been successfully
countered by Appellant’s arguments.

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DECISION
The Examiner’s decision to reject claims 1-4, 8-12, 21, and 23 as
obvious over the prior art of record is affirmed.
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)(1)(iv) (2007).

AFFIRMED

mls

RICHARD L. HUFF
19304 OLNEY MILL ROAD
OLNEY, MD 20832