Ex Parte Frazer

Patent Trial and Appeal Board

Aug 26, 2013

11045866 (P.T.A.B. Aug. 26, 2013)

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.
11/045,866 01/28/2005 Spencer Frazer 1432002-2001 8671
20999 7590 08/26/2013
FROMMER LAWRENCE & HAUG
745 FIFTH AVENUE- 10TH FL.
NEW YORK, NY 10151
EXAMINER
SCRUGGS, ROBERT J
ART UNIT PAPER NUMBER
3723
MAIL DATE DELIVERY MODE
08/26/2013 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 SPENCER FRAZER
____________

Appeal 2011-008170
Application 11/045,866
Technology Center 3700
____________

Before GAY ANN SPAHN, MICHAEL C. ASTORINO, and
MICHELLE R. OSINSKI, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-008170
Application 11/045,866

2
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 2 and 22-43 under 35 U.S.C. § 103(a) as
unpatentable over Collins (US 4,451,982, iss. Jun. 5, 1984), either Moser
’615 (US 6,363,615 B1, iss. Apr. 2, 2002) or Sutton (US 2,461,941, iss. Feb.
15, 1949), and Moser ’420 (US 6,308,420 B1, iss. Oct. 30, 2001). Claims 1
and 3-21 have been cancelled. We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
The claimed subject matter pertains to a folding knife with a biasing
system for its blade where “the biasing system includes one component or
assembly applying an opening force, and another component or assembly
providing a closing force (particularly when the blade is in or near the closed
position).” Spec. 1, ll. 9-10, and Spec. 2, ll. 6-8.
Claims 2, 27, 33, and 39 are the independent claims on appeal. Claim
2, reproduced below, is illustrative of the subject matter on appeal.
2. A folding knife comprising:
an elongated handle having a front end portion and a rear
end portion;
a blade having a sharpened edge and a tang, the tang
being pivotally attached to the front end portion of the handle
for moving the blade between an open position in which the
blade extends from the handle with the sharpened edge exposed
for use and a closed position in which the sharpened edge is
received by the handle, wherein the blade is pivotable about an
axis, wherein the tang comprises an outer peripheral edge
defined about the axis, and wherein the outer peripheral edge
comprises:
Appeal 2011-008170
Application 11/045,866

3
a pocket; and
a curved profile;
an assisted-opening component that provides a force
tending to move the blade from the closed position toward the
open position allowing an opening bias of the blade;
and
a braking component that, at least when the blade is in
the closed position, provides a braking force resisting the force
of the assisted-opening component allowing a closing bias of
the blade, wherein the braking component is configured to
apply the braking force to the outer peripheral edge of the tang,
wherein the braking component is engaged with the pocket of
the outer peripheral edge when the blade is in the closed
position, and wherein the braking component is engaged with
the curved profile of the outer peripheral edge when the blade is
moved from the closed position to the open position;
wherein the sum of the forces provided by the assisted-
opening component and the braking component on the blade is
insufficient to move the blade when the blade is in the closed
position; and
wherein when the blade is manually moved through a
predetermined angle selected from the group consisting of
greater than 0o, greater than about 10 o, greater than about 20 o
and greater than about 30o but less than 180o from the closed
position toward the open position the sum of the forces
provided by the assisted-opening component and the braking
component shift the bias of the blade from the closed bias to the
opened bias without application of a locking mechanism such
that the blade automatically moves to the open position.

OPINION
Claims 2 and 22-25
The Examiner found that Collins discloses a folding knife including a
handle 10 having a front end portion 17 and a rear end portion 19, a blade 12
Appeal 2011-008170
Application 11/045,866

4
with a sharpened edge 28 and a tang 16, a pocket 67, a curved profile, and a
braking component 24. Ans. 3-4 (citing figs. 1, 5, 6). Further, the Examiner
found that figure 5 depicts an open position of the folding knife and figure 6
depicts a closed position of the folding knife. See Ans. 4. The Examiner
relied on one of Moser ’615 or Sutton to disclose an assisted opening
component (Ans. 5-6) and Moser ’420 to disclose “manually moving a blade
such that at a certain angle a braking force is overcome and an assisted-
opening component th[e]n aids in moving the blade to an open position”
(Ans. 12-13).
First, the Appellant asserts that the Examiner relies on Collins “to
disclose a braking component that provides a braking force resisting the
force of an assisted-opening component allowing a closing bias of the blade,
as recited in [c]laim 2.” Br. 16. In the Office Action mailed April 5, 2010
from which this appeal was taken, the Examiner advances the position that
Collins discloses “a braking component (24) that at least when the blade is in
the closed position, provides a braking force resisting the force of the
assisted-opening component allowing a closing bias of the blade.” Off. Act.
3. In response to this position, the Appellant contended that at no point does
Collins’s “bolt 24 or spring 62 resist the force of an assisted-opening
component, as recited in [c]laim 2.” Br. 16. The Appellant’s contention is
correct. Indeed, as admitted by the Examiner, Collins does not have an
assisted-opening component as recited in claim 2. See Off. Act. 3; Ans. 4, 8.
However, the Examiner also found that each of Moser ’615 and Sutton
discloses an assisted-opening component, i.e., axial spring 78 and coil spring
26, respectively. Off. Act. 4 (citing Moser ’615 fig. 8, Sutton fig. 3); Ans. 4,
8-9. The Examiner clarified in the Answer that Collins “lacks, having the
Appeal 2011-008170
Application 11/045,866

5
braking component resisting the force of an assisted-opening component”
(Ans. 4), but that after modifying Collins’s knife with an assisted-opening
component as taught by either Moser ’615 or Sutton, “the braking
component, of Collins, would resist the force of the assisted-opening
component” (Ans. 5). Furthermore, the Appellant acknowledges this finding
by stating that “the Examiner relies on Moser ’615 or Sutton . . . for
disclosing an assisted-opening component that tends to move a blade from a
closed position toward an open position allowing an opening bias of the
blade.” Br. 17. As such, the Examiner’s rejection does not rely on Collins’s
disclosure to teach an assisted-opening component. Hence, the Appellant’s
contention is not persuasive of error in the Examiner’s rejection.
Second, the Appellant contends that each of Moser ’615 and Sutton
fail to disclose “an opposing braking component resisting the force of the
assisted-opening component.” Br. 17-18. The Examiner does not rely on
Moser ’615 or Sutton to disclose an opposing braking component. The
Examiner relies on Moser ’615 and alternatively, Sutton to only disclose an
assisted-opening component. Ans. 10. The Examiner responds that the
Appellant’s contention is directed to arguing “each reference individually
rather than taking what each reference specifically teaches and applying that
teaching into the combination and interpreting the combination as a whole.”
Id. We agree with the Examiner.
Appellant’s arguments as to Moser ’615 and Sutton fail to address the
Examiner’s rejection, which is based on a determination of what would have
been obvious to one of ordinary skill in the art in view of the combined
teachings of the prior art. One cannot show nonobviousness by attacking
references individually where the rejections are based on combinations of
Appeal 2011-008170
Application 11/045,866

6
references. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986) (citation omitted); In re Keller, 642 F.2d 413, 426 (CCPA 1981)
(citation omitted).
The Appellant also contends that the disclosure of Moser ’615 teaches
away from the claimed invention because the folding knife of Moser ’615 is
configured to automatically and completely open from a closed position and
does not include a braking component. Br. 17-18. Similarly, the Appellant
contends that the disclosure of Sutton teaches away from the claimed
invention because the folding knife of Sutton immediately swings into an
open configuration and does not include a braking component. Br. 18
(citing Sutton, col. 3, ll. 2-10). “A reference may be said to teach away
when a person of ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or would be led
in a direction divergent from the path that was taken by the applicant.” In re
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). As discussed above, Moser ’615
and Sutton teach assistance in opening the folding knife. This teaching does
not equate to a person of ordinary skill, upon reading the reference, being
discouraged or being led in a divergent direction from including an opposing
braking component. Rather, the teachings of each of Moser ’615 and Sutton
would encourage a person of ordinary skill in the art to include assistance
mechanisms in opening a folding knife. As such, the Examiner’s conclusion
that the combined teachings of Collins and either of Moser ’615 and Sutton
would have predictably resulted in a folding knife including an assisted-
opening component where the blade is moved into an open position with less
effort has a sound basis. See Ans. 5. Additionally, this conclusion is further
evidenced by Moser ’420 which discloses the use of a folding knife with a
Appeal 2011-008170
Application 11/045,866

7
blade that moves back and forth from an open position to a closed position
and includes a mechanism for assisted-opening and braking. See Ans. 5-6,
12-13.
Third, the Appellant contends that the Examiner fails to provide a
sufficient reason for combining Collins with either of Moser ’615 or Sutton.
See Br. 18. The Examiner’s reason for combining the references teachings
is as follows:
It would have been obvious to one of ordinary skill in the art to
modify the knife, of Collins, with the known technique of
including an assisted-opening component (by including an
assisted-opening component the braking component, of Collins,
would resist the force of the assisted-opening component) that
provides a force tending to swing the blade from a closed
position toward the open position thereby shifting the bias of
the blade from the closed position to the opened position, as
taught by Moser (6363615) or Sutton, and the results would
have been predictable. In this situation, by including an
assisted-opening component, one could move the blade into the
open position with less effort.

Ans. 5 (emphasis added). See also Ans. 11-12. The Appellant contends that
the Examiner’s reasoning is entirely conclusory and an impermissible
hindsight-based reconstruction. Br. 19. We disagree. As discussed above,
the Examiner’s conclusion would have predictably resulted in a folding
knife including an assisted-opening component where the blade is moved
into an open position with less effort. As such, the Appellant’s contention is
not persuasive. Additionally, we are in agreement with the Examiner that
the teaching of Moser ’420 further evidences the Examiner’s conclusion in
that Moser ’420 “teaches of [sic] manually moving a blade such that at a
certain angle a braking force is overcome and an assisted-opening
Appeal 2011-008170
Application 11/045,866

8
component than [sic] aids in moving the blade to an open position.” Ans.
12-13 (citing Moser ʼ420, col. 4, ll. 9-59).
Fourth, the Appellant contends that Moser ’420 teaches a single
cantilevered spring 50 which applies a biasing force to its blade 14, rather
than two components, i.e., an assisted-opening component and a braking
component working in co-operation, so that “the sum of the forces applied
to the blade by these components determines whether an opening bias or a
closing bias is applied to the blade.” See Br. 19-20.
The Examiner relies on Moser ’420 to disclose that a folding knife can
apply forces for assisted-opening and braking so that “at a certain angle an
assisted[-]opening component would overcome the force of a braking
component.” Ans. 12. Indeed, the Examiner found that:
Moser[ ‘420] teaches that it is old and well known in the art to
manually move a blade into an open position (Figure 3),
wherein at a certain angle the blade overcomes the force of a
braking-component (50) such that an assisted-opening
component further aids in moving the blade to the open position
(note: braking component (50) becomes the assisted-opening
component after reaching said certain angle.
Ans. 5-6 (citing Moser ’420, col. 4, ll. 9-59). However, the Appellant’s
point, that Moser ’420 discloses the use of a single force to bias its blade, is
well-taken. See App. Br. 19-20. For example, in figure 1, force Fa is a force
biasing the blade in a closed position and in figures 2 and 3, forces Fb and
Fc, respectively, bias the blade in an open position. But the Examiner does
not rely on Moser ’420 to teach two components apply the claimed
balancing of forces. Rather, the Examiner determines that Moser ’420
teaches that:
. . . one could modify the knife, of Collins, to include an
assisted-opening component, as taught by Moser ’615 or
Appeal 2011-008170
Application 11/045,866

9
Sutton, and manually move the blade such that at a certain
angle the assisted opening component overcomes the force of
the braking component and force the blade to the open position.
Ans. 13. The Examiner also concludes that:
It would have been obvious to one of ordinary skill in the art to
modify the knife, of Collins, with the known technique of
manually moving a blade into the open position, wherein at a
certain angle the blade overcomes the force of a braking-
component thereby positioning the blade into the open position,
as taught by Moser[ ’420], and the results would have been
predictable. In this situation, one could more easily, quickly
and safely move the blade from a closed position to an opened
position with less effort.
Ans. 6 (emphasis added). We agree with the Examiner. Balancing the sum
of the forces of a braking component and assisted-opening component in a
folding knife is predictable. In addition, since “[a] person of ordinary skill is
also a person of ordinary creativity, not an automaton” (KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. 398, 421 (2007)), we determine that a skilled artisan
viewing the references would have combined the teachings of the prior art as
proffered by the Examiner. Therefore, we conclude that the Examiner has
articulated adequate reasoning with rational underpinning as to why one of
ordinary skill in the art would have combined the teachings of these
references to result in the claimed subject matter. See In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds [require]
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness”) (cited with approval in KSR, 550 U.S. at
418).
Thus, the rejection of independent claim 2 as unpatentable over
Collins, either of Moser ’615 or Sutton, and Moser ’420 is sustained.
Additionally, the Appellant does not provide further arguments for
Appeal 2011-008170
Application 11/045,866

10
dependent claims 22-25. Br. 20. As such, we likewise sustain the rejection
of claims 22-25.
Claims 27-31, 33-37, and 39-43
The Appellant provides separate headings for independent claims 27,
33, and 39. Br. 20, 24, 28. Under each heading the Appellant argues four
points that mirror those arguments presented above for the rejection of claim
2. Compare Br. 14-20 with Br. 20-32. For similar reasons to those for
which we sustained the rejection of independent claim 2, we likewise sustain
the rejection of independent claims 27, 33, and 39. Additionally, the
Appellant does not provide further arguments for dependent claims 28-31,
34-37, and 40-43. Br. 24, 28, 32. As such, we likewise sustain the rejection
of claims 28-31, 34-37, and 40-43.
Claims 26, 32, and 38
Initially, we note that the Appellant argued against the rejection of
claims 26, 32, and 38 along with their independent claims, i.e., claims 2, 27,
and 33. Br. 20, 24, 28. As discussed above, the Appellant’s arguments
against the rejection of those independent claims are unpersuasive, and
likewise are unpersuasive for claims 26, 32, and 38.
Additionally, the Appellant provides a separate heading for claims 26,
32, and 38, and comments that the Examiner erred in the rejection of these
claims because the references do not disclose the limitations of claims 26,
32, and 38. Br. 32. This comment does not constitute a separate argument
for patentability pursuant to 37 C.F.R. § 41.37(c)(1)(vii). See In re Lovin,
652 F.3d 1349, 1357 (Fed. Cir. 2011) (holding that the Board had reasonably
interpreted 37 C.F.R. § 41.37(c)(1)(vii) as requiring “more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
Appeal 2011-008170
Application 11/045,866

11
a naked assertion that the corresponding elements were not found in the
prior art”). Moreover, the Examiner evidences how Collins discloses the
limitations of claims 26, 32, and 38 at pages 13-14 of the Answer. See also
Off. Act. 7. Since the Appellant does not offer a cogent explanation as to
why the Examiner’s findings are in error, the rejection of claims 26, 32, and
38 is sustained.

DECISION
We AFFIRM the rejections of claims 2 and 22-43.
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).

AFFIRMED

hh