11160674 (B.P.A.I. Mar. 11, 2010)

Ex Parte Green

Board of Patent Appeals and InterferencesMar 11, 2010

11160674 (B.P.A.I. Mar. 11, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte JOE GREEN ____________________ Appeal 2009-004415 Application 11/160,674 Technology Center 3700 ____________________ Decided: March 11, 2010 ____________________ 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 Examiner’s decision rejecting claims 1-3 and 8. Claims 4 and 6 have been cancelled, and claims 5, 7, 9, and 10 have been withdrawn from consideration. We have jurisdiction under 35 U.S.C. § 6(b). Appeal 2009-004415 Application 11/160,674 2 SUMMARY OF THE DECISION We REVERSE. THE INVENTION Appellant’s claimed invention pertains to a pencil sharpening device, and specifically a device for capturing pencil shavings. Spec. 1, [Para 4]. Claim 1, reproduced below, 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 support member received within the hollow container that rests on the bottom of the container and extends upwardly; a sharpening element mounted on the support member and extending through an opening in the lid; and wherein a conduit is disposed through an opening in the hollow container and has an inlet end within the hollow container. THE REJECTION The Examiner relies upon the following as evidence of unpatentability: Nozaki (as translated) JP 08300894 Nov. 19, 1996 Thain GB 2 359 279 A Aug. 22, 2001 The Examiner also relies on official notice of certain facts, and refers to those facts as applicant’s admitted prior art (AAPA). See, e.g., Ans. 3-4. Before us for review is the Examiner’s rejection of claims 1-3 and 8 under 35 U.S.C. § 103(a) as being unpatentable over Thain and Nozaki. Appeal 2009-004415 Application 11/160,674 3 ISSUE Appellant contends that Thain does not teach the recited “support member . . . that rests on the bottom of the container and extends upwardly.” App. Br. 3-4. The Examiner found that Thain’s wall structure 50 is a support member, and that the component “rests on the bottom of the container via elements 206, 220.” Ans. 3. Thus, the issue on appeal is whether the Examiner erred in finding that Thain discloses the support member of Appellant’s claimed invention. FINDINGS OF FACT We find that the following enumerated findings are supported by at least a preponderance of the evidence. 1. An ordinary meaning of the term “rest,” as used with the word “on,” is “[t]o be supported or based; lie, lean, or sit.” THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE (New College ed. 1976). 2. Appellant’s Specification describes a pencil sharpening element 28 mounted on support member 20 that rests on the bottom 14 of the container 12 and extends upwardly. Spec. 3, [Para 18]; fig. 1. Appellant’s figures all depict the support member resting directly on the bottom of the container and extending upwardly from the bottom of the container. Spec., figs. 1-3. 3. Thain discloses a pencil sharpener device having an arrangement of components that separates the wood shavings from the lead shavings in a manner resembling that of the dual cyclonic separating apparatus in a vacuum cleaner. Thain 2, 5. The device has a lid portion 2 and a container portion 4. Id. at 3. The lid portion 2 includes the wall Appeal 2009-004415 Application 11/160,674 4 structure 50, which receives pencil sharpener 100. Id. at 3, 5, figs. 1, 2. The container 4 has an outer wall 200 with a frusto-conical lower end 202 and a circular base portion 204. Id. at 4. Inside of the container 4 is upstanding circular wall 206, which projects from the circular base portion 204, and partition 220. Id. Partition 220 is interference fitted over cylindrical wall 206 and abuts wall structure 50 at the shoulders of the frusto-conical member 302. Id. 4. Thain’s figure 2 shows wall structure 50 (specifically frusto- conical member 302) supported above and some distance from circular base portion 204. PRINCIPLES OF LAW During examination of a patent application, pending claims are interpreted broadly, see In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004), but the construction cannot be “beyond that which was reasonable in light of the totality of the written description,” In re Baker Hughes Inc., 215 F.3d 1297, 1303 (Fed. Cir. 2000). ANALYSIS Independent claim 1 recites “a support member received within the hollow container that rests on the bottom of the container and extends upwardly.” The sharpening element is mounted on the support element. Thain’s wall structure 50, which the Examiner found to be the recited support member, forms part of the lid of the pencil sharpener device and is supported above the bottom of the container. See Facts 3, 4. The Examiner maintains that the wall structure 50 rests on the container bottom because it Appeal 2009-004415 Application 11/160,674 5 abuts partition 220 which is interference fitted over cylindrical wall 206 which rests on the bottom of the container. Ans. 4; see also Fact 3. The Examiner has implicitly construed “a support member . . . that rests on the bottom of the container” so as to encompass Thain’s configuration in which at least two components are located between the wall structure 50 (the support member) and the bottom of the container. This construction is unreasonably broad. Taken to its logical extreme, the Examiner’s construction would effectively read out the “rests on the bottom” limitation because it seems that any support member – unless it is floating inside the container – would be, at least indirectly, resting on the bottom of the container. One of ordinary skill in the art, reading the claim in light of the Specification and the ordinary meaning of the phrase “rests on” (see Facts 1, 2), would understand Appellant’s claimed invention to require the support to sit on the container bottom, not on an intervening structure sitting on the container bottom, and to extend upwardly from the container bottom. As Thain’s wall structure 50 is not so configured, we disagree with the Examiner’s finding that the wall structure corresponds to the claimed support structure. Accordingly, we cannot sustain the rejection of independent claim 1, or of claims 2, 3, and 8 which depend therefrom. CONCLUSION The Examiner erred in finding that Thain discloses the support member of Appellant’s claimed invention. Appeal 2009-004415 Application 11/160,674 6 DECISION The decision of the Examiner to reject claims 1-3 and 8 is reversed. REVERSED Klh ZARLEY LAW FIRM P.L.C. CAPITAL SQUARE 400 LOCUST, SUITE 200 DES MOINES IA 50309-2350