11410760 (B.P.A.I. Dec. 9, 2010)

Ex Parte Gregory

Board of Patent Appeals and InterferencesDec 9, 2010

11410760 (B.P.A.I. Dec. 9, 2010)

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. 11/410,760 04/25/2006 Warren D. Gregory JR. 2711417.0017 4674 26582 7590 12/10/2010 HOLLAND & HART, LLP P.O BOX 8749 DENVER, CO 80201 EXAMINER MILLER, BENA B ART UNIT PAPER NUMBER 3725 MAIL DATE DELIVERY MODE 12/10/2010 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte WARREN D. GREGORY, JR. ____________ Appeal 2009-009828 Application 11/410,760 Technology Center 3700 ____________ Before JOHN C. KERINS, MICHAEL W. O’NEILL, and STEFAN STAICOVICI, Administrative Patent Judges. O’NEILL, Administrative Patent Judge. DECISION ON APPEAL1 STATEMENT OF THE CASE Warren D. Gregory, Jr. (Appellant) appeals under 35 U.S.C. § 134 from the Examiner’s decision finally rejecting claim 3 under 35 U.S.C. 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-009828 Application 11/410,760 2 § 112, second paragraph, as indefinite; claims 1, 3-5, and 7-19 under 35 U.S.C. § 103(a) as unpatentable in view of Jordan (US 3,482,614, issued Dec. 9, 1969) and Forslund (US 3,885,610, issued May 27, 1975); and claims 1, 3-5, 7, and 20-23 under 35 U.S.C. § 103(a) as unpatentable in view of Murphy (US 3,550,655, issued Dec. 29, 1970) and Forslund.2 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. The Invention The claims on appeal relate to a combination of a shear attachment and motorized vehicles in order to, for example, fell, size, and prune timber, brush, and other vegetation. Claim 1, reproduced below, with emphasis added, is illustrative of the subject matter on appeal. 1. In combination: a motorized vehicle; and a shear, comprising: an upper jaw having forward and rearward end portions, upper and lower side portions, and a cutting edge formed at least partially along said lower side portion; a lower jaw having forward and rearward end portions; said rearward end portion of said lower jaw being operatively pivotably coupled to the rearward end portion of said upper jaw so that said shear may be selectively moved between open and closed positions; said lower jaw being comprised of first and second side members that are laterally spaced from one another to define an open pocket that is shaped and sized to receive at least a portion of the cutting edge of said upper jaw when said shear is in said closed position, each of said first and second side members having separately defined upper edges; 2 In a communication to Appellant, mailed Feb. 27, 2009, the Examiner clarified the grounds of rejection that Appellant appealed in response to a return order from the Board. Appeal 2009-009828 Application 11/410,760 3 at least one actuator operatively coupled with said upper and lower jaws to selectively move said shear between said open and closed positions; said lower jaw having a plurality of teeth extending generally upwardly from said upper edge of said first side member of said lower jaw and extending in a same plane as the first side member, the plurality of teeth being positioned on a first region defined by the first side member and wherein the first region has a corresponding second region defined by the second side member that is directly opposing said first region, the plurality of teeth extending upwardly such that the plurality of teeth on the first side member have an apex positioned above an overall height defined by the upper edge of the second region defined by the second side member, wherein the second side member including the second region has a planar surface, and wherein said plurality of teeth are defined to engage one or more objects disposed between said upper and lower jaws when said shear is moved from said open position toward said closed position, wherein when the shear is moved towards the closed position, the plurality of teeth having an apex greater then the upper edge on the second region defined by the second side member has a tendency to cause the one or more objects to move towards the second region; and a mounting bracket operatively coupling said shear with said motorized vehicle. DISCUSSION The Examiner appears to have agreed with the Appellant that claim 3 is not indefinite based on the Appellant’s arguments. Ans. 8. As such, the Examiner’s rejection under 35 U.S.C. § 112, second paragraph, is not sustained for claim 3. We agree with the Appellant’s line of reasoning that the Examiner’s rejections fail to appreciate the claim limitation that the teeth on the lower Appeal 2009-009828 Application 11/410,760 4 jaw, which are positioned on the first region defined by the first side member, have a height above the upper edge of the second region where the second region is defined as corresponding to and directly opposite the first region. See App. Br. 5-7. It is elementary that to support an obviousness rejection “[a]ll words in a claim must be considered in judging the patentability of that claim against the prior art.” In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970). Claims are construed with an eye toward giving effect to all terms in the claim. Bicon Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006); see also Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007) (denouncing claim constructions which render phrases in claims superfluous). Accordingly, the combined teachings of Jordan or Murphy and Forslund fail to render obvious this claimed limitation as set forth in independent claim 1. As such, the Examiner’s rejections under 35 U.S.C. § 103(a) are not sustained for claims 1, 3-5, and 7-23. DECISION The Examiner’s decision to reject the claims on appeal is reversed. REVERSED Klh HOLLAND & HART, LLP P.O BOX 8749 DENVER, CO 80201