Ex Parte Harpell

Board of Patent Appeals and Interferences

Aug 17, 2012

11516381 (B.P.A.I. Aug. 17, 2012)

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.
11/516,381 09/05/2006 William Harpell 137-19US 9402
5568 7590 08/17/2012
JACK PAAVILA
43 VICTORIA ST., W.
ALEXANDRIA, KOC IA0
CANADA
EXAMINER
MULLER, BRYAN R
ART UNIT PAPER NUMBER
3727
MAIL DATE DELIVERY MODE
08/17/2012 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 RICHARD L. NELAND
____________

Appeal 2010-008864
Application 11/516,381
Technology Center 3700
____________

Before HOWARD B. BLANKENSHIP, RICHARD M. LEBOVITZ, and
DANIEL S. SONG, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on the appeal by the Patent Applicant from the
Patent Examiner’s rejections of claims 1, 2, 5, 8, 11, 14, 16, 20, 40, 43, 44,
and 45. The Board’s jurisdiction for this appeal is under 35 U.S.C. §§ 6(b)
and 134. We reverse.

App
App

roof
the S

blad
taper

11, 1

first
requ

in vi

in vi

in vi

1 Gia
2 Do
3 W.
eal 2010-0
lication 11
The clai
. Figure 2
pecificatio
Figure 2
e tool with
ed to form
Appellan
4, 16, 20,
1. Claim
paragraph
irement;
2. Claim
ew of Fris
3. Claim
ew of Self
4. Claim
ew of Whi

como Fris
nald L. Se
L. Whittie
08864
/516,381
ST
ms are dra
, reproduce
n:
, reproduc
a top surf
a bottom
t appeals
40, 43, 44
s 1, 2, 5,
, as failing
s 1, 2, 5,
ina;1
s 1, 2, 5,
ors;2
s 1, 2, 5,
ttier,3 Sve

tina, U.S.
lfors, U.S.
r, U.S. 1,2
ATEMEN
wn to a bla
d below,
ed above,
ace 13 and
ridge 21.
the Exami
, and 45. T
8, 11, 14,
to comply
8, 44, and
8, 44, and
8, 44, and
ndsgaard,4

5,557,852
4,592,113
18,145 (M
2
T OF TH
de and too
shows a sh
shows an e
a bottom

ner’s final
he claims
16, 20, 44,
with the w
45 under 3
45 under 3
45 under 3
and Derr;
(Sep. 24,
(Jun. 198
ar. 6, 1917
E CASE
l for liftin
ingle liftin
mbodime
surface 17
rejection
stand reje
and 45 un
ritten des
5 U.S.C. §
5 U.S.C. §
5 U.S.C. §
5
1996).
6).
).
g shingles
g tool des
nt of the c
/19. The
of claims
cted as fo
der 35 U.S
cription
103(a) as
103(a) as
103(a) as
from a
cribed in
laimed
blade is
1, 2, 5, 8,
llows:
.C. § 112
obvious
obvious
obvious

,
Appeal 2010-008864
Application 11/516,381

3
5. Claims 11, 14, and 20 under 35 U.S.C. § 103(a) as obvious over
Whittier, Svendsgaard, Derr, and Fieni;6
6. Claim 16 under 35 U.S.C. § 103(a) as obvious over Whittier,
Svendsgaard, Derr, Fieni, and Jacobs;7 and
7. Claims 40 and 43 under 35 U.S.C. § 103(a) as obvious in view
Hadlick8 and Terpening.9
Claim 1 is representative and reads as follows:
A single-piece blade for a shingle lifting tool having front and
rear edges joined by sides, a top surface to which the handle of
the tool is attached, and a bottom surface, the sides extending
from the top surface to the bottom surface over the entire length
of the top and bottom surfaces; at least the front edge being
thin; the bottom surface bent to have a front, bottom surface
section and a rear, bottom surface section; the front, bottom
surface section extending rearwardly from the front edge of the
blade while angling slightly away from the top surface, and the
rear, bottom surface section extending forwardly from the rear
edge; the front bottom surface section diverging from the top
surface, from the front edge, by an angle ranging between 2°
and 6°; the front and rear bottom surface sections joining to
define a ridge located in the middle three-fifths of the blade
between the front and rear edges of the blade, the ridge at the
thickest portion of the blade and extending across at least a
majority of the width of the blade and parallel to the front edge
and wherein the blade has a thickness of about one sixteenth of
an inch at the front edge and a thickness at the ridge of between
two sixteenths and five sixteenths of an inch.

4 Roger W. Svendsgaard, U.S. 4,466,188 (Aug. 21, 1984).
5 Mark S. Derr, U.S. 5,800,021 (Sep. 1,1998).
6 Gabriel J. Fieni, U.S. 5,280,676 (Jan. 25, 1994).
7 James L. Jacobs et al., U.S. 5,098,165 (Mar. 24, 1992).
8 Paul E. Hadlick, Jr., U.S. 4,203,210 (May 20, 1980).
9 George I. Terpening, U.S. D262,259 (Dec. 15, 1981).
Appeal 2010-008864
Application 11/516,381

4
1. WRITTEN DESCRIPTION REJECTION
Claims 1, 2, 5, 8, 11, 14, 16, 20, 44, and 45 stand rejected under 35
U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement. Answer 4. The Examiner contends that the “newly
added limitation that the blade of the lifting tool is a single-piece is not
supported by the original application.” Answer 5-6. The Examiner contends
there “is no disclosure in the original written description of the appellant’s
invention and the drawings do not definitively show the blade to be one
piece or require that the blade is a single-piece.” Id.
This rejection will be reversed. The Specification states that the
“blade is normally manufactured by machining a piece of steel plate.” Spec.
¶ 1034.10 This disclosure would reasonably be understood by one of
ordinary skill in the art to convey possession of an invention comprising a
blade made of a single-piece. The Examiner said that a blade can be made
of several plates which are joined together. Answer 17. The Examiner
contends that “manufacture from a single piece of steel does not require the
finished product to be a single piece.” Id. However, the paragraph in which
the “piece” statement is made, appears at the end of a description of the
blade illustrated in the drawings. Thus, the most logical and reasonable
reading is that its reference to “a piece of steel plate” is to the entire claimed
blade being made of a piece of steel, and not just a part of the blade.

2. OBVIOUSNESS OVER FRISINA
Claims 1, 2, 5, 8, 44, and 45 stand rejected under 35 U.S.C. § 103(a)
as obvious in view of Frisina. Answer 2.

10 “Spec” refers to the specification of Appl. No. 11/561,381.
App
App

for a
is att
hand
(the
of th
Answ

Frisi
forw
as th
Figu
eal 2010-0
lication 11
Indepen
shingle li
ached.” T
tool with
handle is c
e blade, th
er 5.
Figures
Figures
na, Abstra
ard end 52
e top surfa
res 1 and 6
08864
/516,381
dent claim
fting tool h
he Exami
a top surfa
learly con
us the han
1, 5, and 6
1, 5, and 6
ct. The sh
. Id. at co
ce and sur
show the
s 1 and 44
aving a “t
ner found
ce 31 “to
nected to t
dle is indi
of Frisina
show the
aft of the h
l. 3, ll. 10-
face 29/30
forward e
5
are each d
op surface
that Frisin
which the
he blade, w
rectly attac
are reprod
woodwork
andle is m
12. The E
as the bo
nd 52 of th
rawn to a
to which
a describe
handle of
herein th
hed to the
uced belo
ing tool d
arked by
xaminer i
ttom surfa
e handle s
single-pie
the handle
d a woodw
the tool is
e top surfa
top surfac
w:
escribed b
numeral 5
dentified s
ce. Answ
haft conn
ce blade
of the too
orking
connected
ce is part
e).”

y Frisina.
0 with
urface 31
er 5.
ected to
l

Appeal 2010-008864
Application 11/516,381

6
surface 29/30, and to surface 31 which the Examiner characterized as the top
surface.
The Examiner interpreted the phrase “a top surface to which the
handle of the tool is attached” as recited in claims 1 and 44 to read on
embodiments in which the handle was attached directly or “indirectly” to the
top surface. Answer 5 (“thus the handle is indirectly attached to the top
surface”). However, as shown clearly in Figure 5 reproduced above, the
handle is attached to the side or bottom surface 29/30, not to the so-called
top surface 31 as interpreted by the Examiner. Thus, it is neither directly nor
indirectly via an intervening structure, attached to surface 31.
It is not reasonable to interpret “attached” to cover “indirect”
attachments in which the handle is not secured to the top surface at all
because that would be essentially giving the term “attached” no material
weight. In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970) (“All words in a
claim must be considered in judging the patentability of that claim against
the prior art.”); Glaxo Inc. v. Novopharm Ltd., 110 F.3d 1562, 1566 (Fed.
Cir. 1997) (“It is elementary patent law that all limitations are material”).
Describing the handle shaft of Frisina as attached to surface 31 is like saying
that one’s toe is attached to one’s head. Under the Examiner’s
interpretation, any component of a device can be said to be attached to
another component of a device, which is tantamount to giving no weight to
the “attached” limitation.
Because the Examiner did not establish that Frisina describes a handle
attached to the top surface of its wood working tool, or why it would have
been obvious to one of ordinary skill in the art to have made such a
configuration, we are compelled to reverse the obviousness rejection of
App
App

indep
Frisi

as ob

for s
fish
prefe

“a ha
inter
The
conn
by th
top s
top s
hand
eal 2010-0
lication 11
endent cl
na.
Claims 1
vious in v
We will
imilar reas
fileting kn
rred embo
Figures
ndle 22 o
connects t
handle 22
ecting por
e Examin
urface is p
urface”).
le is secur
08864
/516,381
aims 1 and
3. OB
, 2, 5, 8, 4
iew of Sel
not sustain
ons as we
ife. Selfor
diment of
1 and 2 sh
ffset from
he blade 1
is not attac
tion 20 to
er (“the ha
art of the
Answer 7.
ed to the k
44, and d
VIOUSN
4, and 45
fors. Answ
the reject
did not fo
s, Abstrac
Selfors:
ow Selfors
the blade
2 and the h
hed to the
the end (1
ndle is cle
blade, thus
Since the
nife’s top
7
ependent c
ESS OVER
stand rejec
er 7.
ion of the
r the Frisin
t. Figures
’s fish file
12, and a c
andle 22.”
blade top
4) of Selfo
arly conne
the handl
Examiner
surface, as
laims 2, 5
SELFOR
ted under
claims ov
a patent.
1, reprodu
ting knife
onnecting
Selfors,
surface, b
r’s knife,
cted to the
e is indire
did not e
the term
, 8, and 45
S
35 U.S.C.
er the Self
Selfors des
ced below

. The figu
portion 20
col. 2, ll. 4
ut is joine
a fact ackn
blade, wh
ctly attach
stablish th
“attached”
based on
§ 103(a)
ors patent
cribes a
, shows a
res show
which
7-49.
d via
owledged
erein the
ed to the
at the
would be

Appeal 2010-008864
Application 11/516,381

8
reasonably understood to mean, nor give a reason to have made such a
configuration, we cannot sustain the rejection. Accordingly, we are
compelled to reverse the obviousness rejection of independent claims 1 and
44, and dependent claims 2, 5, 8, and 45.

4. OBVIOUSNESS OVER WHITTIER, SVENDSGAARD, AND DERR
Claims 1, 2, 5, 8, 44, and 45 stand rejected under 35 U.S.C. § 103(a)
as obvious in view of Whittier, Svendsgaard, and Derr.
The Examiner found that Whittier’s shingle stripper met almost all the
limitations of the blade recited in independent claims 1 and 44, but not the
claimed limitations of a “bottom surface section extending rearwardly from
the front edge of the blade while angling slightly away from the top surface”
and “the front bottom surface section diverging from the top surface, from
the front edge, by an angle ranging between 2° and 6°.” Answer 9.
However, the Examiner found these limitations suggested by Svendsgaard
and Derr. Id. at 9-11. Svendsgaard, the Examiner found, taught a blade for
lifting shingles, with a wedge bottom surface. Id. Although Svendsgaard
failed to disclose the claimed angle of divergence, the Examiner found that
Derr disclosed a tool for lifting shingles and taught that “the lifting angle
(the angle that the bottom surface of the blades diverge away from the top
surface of the blades) is a result effective because a small angle will provide
more leverage or mechanical advantage and a larger angle will produce a
stronger point top the blade (Col. 7, lines 2-7).” Id. at 11. Appellant
contends that Derr teaches a lifting angle of approximately 30°11 which

11 The value disclosed in Derr is 27°. Derr, col. 7, ll. 2-7.

Appeal 2010-008864
Application 11/516,381

9
would not have suggested the claimed angle ranging between 2° and 6°.
App. Br. 17.
For the following reasons, we agree with Appellant that combination
of Svendsgaard and Derr do not suggest the claimed lifting angle ranging
between 2° and 6°.
Claims 1 and 44 are both drawn to a single-piece blade with a ridge at
the bottom surface of the blade. According to the Specification, the “ridge
provides a fulcrum point about where the blade can be slightly pivoted when
resting on a support surface.” Spec. 5, ll. 13-14.
The front of the tapered front section of the blade, when on a
lifting tool, can be inserted under the edge of material to be
removed while sliding along the support surface on the front,
bottom surface section. The blade can then be pivoted about the
ridge to rest on its rear, bottom surface section to initially
slightly lift the material to release it from its support surface.
The blade can then be further pivoted about its front or back
edges to further lift the material to loosen it for removal.
Spec. 5, ¶ 1008.
As discussed below, any teachings with respect to an angle range that
may be gleaned from Svensgaard and/or Derr are of limited value because
neither Svensgaard nor Derr describe a blade with a ridge as a fulcrum
which impacts the operation of the shingle removal device.
Figure 1 of Svendsgaard is reproduced below to illustrate this point:

App
App

Sven
a ful
desc
with

tool

diffe
Neith
remo
eal 2010-0
lication 11
Figure 1
dsgaard d
crum. Wh
ribed as ta
a ridge. S
Figure 2

Figure 2
lacks a rid
Thus, as
rent mech
er uses a
val of the
08864
/516,381
shows roo
oes not de
ile Svends
king place
vendsgaar
of Derr is
shows the
ge fulcrum
argued by
anical prin
fulcrum on
shingle. T
fing remo
scribe a rid
gaard doe
along the
d, col. 3, l
reproduce
shingle re
on its bot
Appellan
ciples to r
the botto
hus, whil
10
ver describ
ge on its b
s describe
edge of th
l. 1-8.
d below:
moving to
tom surfac
t, both Sve
emove shi
m surface
e Derr doe
ed in Sve
ottom sur
pivoting a
e blade, no
ol describ
e.
ndsgaard
ngles from
to accomp
s discuss s

ndsgaard.
face which
ction, this
t the botto

ed in Derr
and Derr u
a roof. A
lish lifting
maller lift

serves as
is
m surface
. Derr’s
sed
pp. Br. 18
and
ing angles

.

Appeal 2010-008864
Application 11/516,381

11
for the front blade shape,12 there is insufficient evidence to establish that
these principles apply to a blade with a ridge on the bottom surface, as
recited claims 1 and 44, that serves as fulcrum for pivoting the knife blade,
nor to have suggested making the claimed angle “ranging between 2° and
6°” which is at least fourfold less than the “approximately 27°” described by
Derr. Derr, col. 7, ll. 6-7. Consequently, we reverse the rejection of
independent claims 1 and 44, and dependent claims 2, 5, 8, and 45.

5, 6. OBVIOUSNESS OVER WHITTIER, SVENDSGAARD, DERR, &
OTHER PUBLICATIONS
Claims 11, 14, and 20 stand rejected under 35 U.S.C. § 103(a) as
obvious over Whittier, Svensgaard, Derr, and Fieni. Answer 12.
Claim 16 stands rejected under 35 U.S.C. § 103(a) as obvious over
Whittier, Svensgaard, Derr, Fieni, and Jacobs. Answer 14.
Claims 11, 14, 16, and 20 depend on claims in which we reversed the
Examiner’s rejection. As the additionally cited publications are not said by
the Examiner to make up for the deficiencies in Whittier, Svendsgaard, and
Derr, we must the reverse the obviousness rejection of these claims, as well.

7. OBVIOUSNESS OVER HADLICK AND TERPENING
Claims 40 and 43 stand rejected under 35 U.S.C. § 103(a) as obvious
in view Hadlick and Terpening. Answer 15.

12 “A smaller lifting angle provides more leverage or mechanical advantage
in lifting nails from the roof deck but sacrifices strength at the point. A
larger lifting angle produces a stronger point but less leverage or mechanical
advantage. A lifting angle of approximately 27° produces a good
compromise between leverage and point strength.” Derr, col. 7, ll. 2-7.
App
App

the b
edge
blad
claim
met

desc
40.
evid

Figu
Figu
eal 2010-0
lication 11
Claim 40
lade has a
.” The Ex
e having a
ed. Answ
by Terpen
Appellan
ribe it as ta
We agree w
ence that H
Figures
Figure 1
re 2 shows
re 3 is a bo
08864
/516,381
is drawn
front port
aminer fou
front tape
er 15. Th
ing. Id. at
t contend
pering in
ith Appe
adlick de
1-3 of Had
shows a t
a side vie
ttom view
to a roofin
ion which
nd that H
r as recited
e Examine
16.
s that Had
thickness t
llant that t
scribes a b
lick are re
op side of
w of a roo
of the too
12
g tool hav
is “taperin
adlick disc
in claim 4
r found th
lick’s blad
oward the
he Examin
lade with t
produced
a roof strip
f stripping
l. Hadlick
ing a blad
g in thickn
loses a ro
0, but not
at the han
e is dished
front edg
er did not
he recited
below:
ping tool
tool desc
, col. 3, ll
e and hand
ess towar
ofing tool
with the h
dle limitat
, and does
e as recited
provide su
taper in th

described
ribed in H
. 47-52. T
le, where
d the front
with a
andle as
ion to be
not
in claim
fficient
ickness.
in Hadlick
adlick.
he side

.
Appeal 2010-008864
Application 11/516,381

13
view is said by the Examiner to show a blade taper. However, the side view
shown in Figure 2 could indicate that the blade is dished (i.e., concave) or
tapered. App. Br. 23-24. Figures 1 and 3 clarify that the bladed is dished.
As pointed out by Appellant, it is apparent that the blade is dished because
the narrow “v” of the tubular portion 3 of the spade blade which extends
forwardly from the rear of the handle, as shown in Figures 1 and 3, extends a
greater distance along the blade than it is shown extending in Figure 2. Id. at
23. The most reasonable explanation is that the “v” cannot be seen
extending for its full length in Figure 2 because the edge of the dished blade
hides the tip of the “v” shape. Id. Consistent therewith, the back side of the
spade blade 5 shown in Figure 3 does not depict a transverse line extending
across the spade blade 5 which would otherwise be illustrated if the blade
was tapered so as to define a ridge as claimed. Accordingly, we reverse the
obviousness rejection of claims 40 and 43.

REVERSED

ack