Ex Parte Green

Board of Patent Appeals and Interferences

Mar 7, 2012

11684659 (B.P.A.I. Mar. 7, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JOE GREEN
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Appeal 2010-003670
Application 11/684,659
Technology Center 3700
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Before JENNIFER D. BAHR, LINDA E. HORNER, and
KEN B. BARRETT, Administrative Patent Judges.

BARRETT, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Joe Green (Appellant) seeks our review under 35 U.S.C. § 134 of the
final rejection of claims 1, 9, 10, 12, and 13 under 35 U.S.C. § 103(a) as
being unpatentable over Quinby (US 2,096,762, iss. Oct. 26, 1937) and
Nozaki (JP8300894, pub. Nov. 19, 1996, as translated). Claims 8, 14, and
15 have been cancelled. Claims 2-7 and 11 have been withdrawn. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appeal 2010-003670
Application 11/684,659

2
THE INVENTION
Appellant’s claimed invention “is directed to a device for sharpening
pencils and more specifically a device for capturing pencil shavings for use
in a classroom.” Spec. 1, ll. 10-12. Claim 1, reproduced below with
emphasis added, is representative of the subject matter on appeal.
1. A pencil sharpener comprising:
a hollow container having a sidewall, a closed bottom
and a lid;
a sharpening element mounted on a top surface of the lid;
an opening in the lid below the sharpening element such
that pencil shavings pass through the opening in the lid and into
the hollow container wherein the opening in the lid is aligned
with an aperture of the sharpening element; and
a conduit disposed through an opening in the hollow
container having an inlet end within the hollow container.
The only other independent claim on appeal, claim 13 also recites “a
conduit disposed through an opening in the hollow container having an inlet
end within the hollow container.”

OPINION
The Examiner’s rejection is premised on the finding that Nozaki
discloses the recited conduit “disposed through an opening” in the container.
Ans. 4-5 (referring to connector 7 and discharge opening 7a); see also id. at
3. Appellant challenges this finding, arguing that neither Nozaki’s figure
nor the relied upon portion of the reference’s translation supports the
Examiner’s finding that the connector 7 is disposed through an opening.
App. Br. 4; Reply Br. 3; see Nozaki 6 (“a connector 7 ... is fitted to the
discharge opening 7a.”).
Appeal 2010-003670
Application 11/684,659

3
The Examiner states that “since [Nozaki] does not expressly disclose
how the conduit is fitted to the opening, the examiner believes that there are
three possibilities how the conduit can be fitted to the opening.” Ans. 4.
However, even if we were to agree that those possible scenarios resulted in
the conduit disposed through the opening, it is possible also that the conduit
is affixed to the outer surface of the container over the opening, and thereby
not passing through the opening. See Nozaki, fig. As such, we cannot find
by a preponderance of the evidence that Nozaki discloses a conduit disposed
through an opening as required by the claims.

DECISION
The decision of the Examiner to reject claims 1, 9, 10, 12, and 13 is
reversed.

REVERSED

mls