Ex Parte Grice et al

Board of Patent Appeals and Interferences

Jul 30, 2009

11365717 (B.P.A.I. Jul. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JERRY GRICE WELDING, INC.
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Appeal 2009-002923
Application 11/365,717
Technology Center 3700
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Decided: July 30, 2009
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Before RICHARD E. SCHAFER, JAMESON LEE, and RICHARD
TORCZON, Administrative Patent Judges.

LEE, Administrative Patent Judge.

DECISION ON APPEAL

A. STATEMENT OF THE CASE
This is a decision on appeal by the real party in interest, Jerry Grice
Welding, Inc. (JGW), under 35 U.S.C. § 134(a) from a final rejection of
claims 1-12. We have jurisdiction under 35 U.S.C. § 6(b). We reverse.
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References Relied on by the Examiner
Johnson 592,612 Oct. 26, 1897
Carter 2005/0072004 A1 Apr. 7, 2005

The Rejections on Appeal
The Examiner rejected claims 1-12 under 35 U.S.C. § 103(a) as
unpatentable over Carter and Johnson.

The Invention
The invention relates to a folding knife with a mechanism for assisting
the opening of a knife blade from a blade liner. (Spec. 3:17-24.)
JGW’s Figure 3C is reproduced below:

Figure 3C depicts a portion of a folding knife in a closed position.
As shown in the figure, a knife blade (unnumbered) is attached to a
blade liner (unnumbered) at pivot 26. The knife blade includes a guide pin
28 attached to its base. When the knife blade is positioned as shown in
Figure 3C, spring arm 20 applies a force to guide pin 28, illustrated as an
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arrow, that acts to keep the knife blade in a closed positioned. (Spec. 6:18-
7:5.) To open the knife blade, a user must supply a force that overcomes the
force supplied by spring 20.
JGW’s Figure 4B is reproduced below:

Figure 4B depicts a portion of a folding knife with a knife blade at a
first equilibrium point.
In the position shown, the blade is opened to a point where the force
supplied by spring arm 20 is directed towards the center of pivot 26. That
position is a first balance or equilibrium point in which the blade is neither
urged closed nor open. (Spec. 7:11-19.) At that point, any additional
opening force supplied by a user causes the blade to continue to open by
action of the force supplied by spring arm 20.

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JGW’s Figure 6 is reproduced below:

Figure 6 depicts a portion of a folding knife with a knife blade at a
second equilibrium point.
Once the blade is opened to the position shown in Figure 6, blade cam
50 of the base of the knife blade engages lock tongue 48 of blade lock 42.
(Spec. 8:4-6.) In that position, the blade lock provides a frictional resistance
that counteracts the opening force supplied by the spring arm and creates a
second equilibrium point. (Id. at 8:6-18.) To completely open the knife
blade, a user must supply a final, additional opening force. (Id. at 9:1-3.)
Claim 1 is reproduced below (Claims App’x 1:1-2:9):
1. A folding knife comprising:

a. a liner having a first side, a second side, an open top
leading to a pocket, a bottom, a first end, a second end, and a medial
section therebetween;

b. a blade having a pointed end and a base end, said base
end pivotally secured to said second end of the liner such that said
blade is capable of pivoting between a closed position wherein said
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blade is received within said pocket and an open position wherein said
blade pivots out of said pocket through said open top and extends
outwardly from said second end of the liner;

c. a guide pin projecting outward from said base end of said
blade and through said first side of said liner;

d. a spring arm having a base, a tip, a top surface facing in
the direction of said open top of said liner, and an apex in said top
surface proximal said tip; said spring arm secured to said liner by said
base of said spring arm and said tip extending toward said second end
of said liner; said spring arm positioned between said bottom of said
pocket and said guide pin on said blade;

e. a blade lock having a first end, a second end, a medial
section therebetween, and a tongue proximal said first end of said
blade lock protruding towards said open top of said liner; said blade
lock secured to said liner proximal said bottom of said liner by a pivot
joint between said first end and said second end of said blade lock;

f. wherein said spring arm supplies a closing force on said
guide pin when said blade is in said closed position, said closing force
resisting the articulation of said blade from said closed position to said
open position;

g. wherein said spring arm supplies an opening force on
said guide pin after said blade passes a first equilibrium position
during articulation of said blade from said closed position to said open
position, said opening force assisting the articulation of said blade
from said first equilibrium position to said open position; and

h. wherein said blade lock exerts a resisting force opposing
articulation of said blade to a completely open position, such that a
second equilibrium position is achieved before said blade is
articulated to said completely open position.
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B. ISSUE
Has JGW shown that the Examiner erred in determining that the
combination of Carter and Johnson teaches a folding knife with a blade lock
that operates to position a knife blade in a second equilibrium point as the
blade is opened?
C. PRINCIPLES OF LAW
To establish inherency, the evidence must make clear that what is
allegedly inherent will necessarily be present. In re Robertson, 169 F.3d
743, 745 (Fed. Cir. 1999). That a certain thing may possibly occur from a
given set of circumstances is not sufficient. Id.
D. ANALYSIS
The Examiner rejected claims 1-12 as unpatentable over Carter and
Johnson. Claims 1 and 6 are independent. Dependent claims 2-5 and 7-12
are argued collectively with claims 1 and 6. Claims 1 and 6 are each drawn
to a folding knife. We focus on the disputed limitations. Each of claims 1
and 6 requires a blade lock that operates on a knife blade to achieve a second
equilibrium point before the blade is articulated to a fully open position.
JGW disputes that the combination of Carter and Johnson satisfies that
requirement.
In claim 1, the disputed limitation reads (Claims App’x 17:6-8):
wherein said blade lock exerts a resisting force opposing articulation
of said blade to a completely open position, such that a second
equilibrium position is achieved before said blade is articulated to said
completely open position.

In claim 6, the disputed limitation reads (Claims App’x 19:9-14):
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a second equilibrium stage occurring after said partially open stage
and before said blade is fully articulated to a completely open stage;
wherein said opening force exerted by said spring arm is counteracted
by a resistive force exerted on said blade by said blade lock causing
said blade to remain only partially open until said user exerts an
additional opening force on said folding knife.

The Examiner found that Carter discloses all the limitations of claims
1 and 6 with the exception of a blade lock that operates to create a second
equilibrium point when opening a blade by acting to oppose an opening
force on the blade that is supplied by a spring arm. To cure the deficiency,
the Examiner pointed to Johnson as teaching a blade lock for a folding knife.
(Ans. 4:10-15.) The Examiner took the position that once Johnson’s blade
lock is combined with Carter’s folding knife, the blade lock would
inherently supply a force that counteracts the force of the spring arm thus
creating a second equilibrium point for the blade. (Ans. 11:16-20.)
JGW’s claims require that a blade lock acts on a blade to cause a
second equilibrium point that occurs during the opening of the blade. That
is, the blade is capable of stopping at two separate points as it moves
between a fully closed and a fully open position where the second stopping
point is caused by operation of the blade lock.
Carter discloses a folding knife with a mechanism for opening a blade
that causes only a single equilibrium point for the blade as it rotates from its
closed position to an open position. (Carter 2:¶ 0029.) Carter does not
disclose a second equilibrium point or a blade lock.1

1 We note that paragraph 0029 of Carter does describe a “second equilibrium
position.” However, that position does not occur as the blade is opened.
Rather, that position is in the same physical location as the single
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Johnson discloses a spring biased folding knife with a blade lock but
does not disclose that the blade of the knife has any equilibrium points.
Johnson’s blade lock operates simply to lock a knife blade in a fully closed
and fully open position. (Johnson p. 1, ll. 45-47.) Between those positions,
the knife movies in one continuous, uninterrupted motion. (Id. at ll. 55-65.)
The Examiner does not explain how combining the teachings of
Carter and Johnson, neither of which discloses a second equilibrium point in
the course of the opening of a knife blade, would inherently produce such a
second equilibrium point. Even assuming that, when Johnson’s blade lock is
implemented on Carter’s knife blade, the blade lock exerts a force on the
knife blade, it is simply uncertain and unknown whether that force is of the
precise magnitude just enough to balance out the force supplied by the
spring arm so as to establish an equilibrium point somewhere during opening
of the knife. To establish inherency, the evidence must make clear that what
is allegedly inherent will necessarily be present. In re Robertson, 169 F.3d
at 745. That a certain thing may possibly occur from a given set of
circumstances is not sufficient. Id. In this case, the Examiner has not
demonstrated that the combined teachings of Carter and Johnson necessarily
disclose a blade lock that causes a second equilibrium point for a knife blade
that occurs before the blade is completely opened.
Moreover, while the Examiner contends that when the reference
teachings are combined, Johnson’s blade lock would apply a closing force to
Carter’s knife blade as the knife blade is opened, he does not explain why
that is the case. Neither reference teaches that a blade lock contacts the base

equilibrium point noted above, only now occurring as the blade is oppositely
rotated from an open to closed position. (Id.)
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of a blade as the blade moves between a closed and open position. On this
record, it is uncertain whether Johnson’s blade lock, when implemented on
Carter’s knife blade, would apply a frictional resistance force to Carter’s
knife blade during the opening of the blade.
For the foregoing reasons, we do not sustain the rejection of claims 1-
12 as unpatentable over Carter and Johnson.
E. CONCLUSION
JGW has shown that the Examiner erred in determining that the
combination of Carter and Johnson teaches a folding knife with a blade lock
that operates to position a knife blade in a second equilibrium point as the
blade is opened.
F. ORDER
The rejection of claims 1-12 under 35 U.S.C. § 103(a) as unpatentable
over Carter and Johnson is reversed.

REVERSED

saw

John Wiley Horton, Attorney
Pennington, Moore, Wilkinson, Bell & Dunbar, P.A.
2nd Floor
215 S. Monroe St.
Tallahassee, FL 32301