Ex Parte HarpellDownload PDFPatent Trial and Appeal BoardDec 21, 201612381031 (P.T.A.B. Dec. 21, 2016) Copy Citation 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. 12/381,031 03/05/2009 William Harpell 137-21US 3192 5568 7590 12/22/2016 TACK PAAVTT A EXAMINER 43 VICTORIA ST., W. MULLER, BRYAN R ALEXANDRIA, Ontario, KOC 1A0 CANADA ART UNIT PAPER NUMBER 3727 MAIL DATE DELIVERY MODE 12/22/2016 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 PATENT TRIAL AND APPEAL BOARD Ex parte WILLIAM HARPELL Appeal 2013-005618 Application 12/3 81,0311 Technology Center 3700 Before LINDA E. HORNER, STEFAN STAICOVICI, and EDWARD A. BROWN, Administrative Patent Judges. STAICOVICI, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING William Harpell (Appellant) timely filed a Request for Rehearing (“Request”) under 37 C.F.R. § 41.52 on July 20, 2015 requesting that we reconsider our decision of May 20, 2015 (“Decision”) affirming the rejections under 35 U.S.C. § 103(a) of claims 1—5, 7, 9, 11—17, and 19-26. Rehearing is limited to matters overlooked or misapprehended by the Board in rendering the initial decision. 1 According to Appellant, the real party in interest is Gayle Harpell. Appeal Br. 3 (filed Dec. 11, 2012). Appeal 2013-005618 Application 12/381,031 Appellant first argues that the Board misapprehended “the Christensen patent as being a patent which supports/discloses that changes can be made to the head[s] of the tool to change it from a wedge shape ... to a flat blade.” Request 1. According to Appellant, although Christensen mentions changing dimensions of the tines, “[t]here is no mention of tine replacements” because “Christensen . . . wants a tool that can straddle a structural member such as a 2 x 4 to separate the member from a structure,” and Lackey’s blade “is simply not built” for such use. Id. at 2 (citing Christensen, || 10, 16, 36, 37, 39). We do not agree with Appellant’s contention because it is not commensurate with the Examiner’s rejection. As noted in our Decision, “the Examiner is not proposing to modify Christensen’s tool in order to use it for removing shingles and for separating one 2x4 from another,” but rather, is modifying “the dimensions of Christensen’s tool [to] result[] in a specific tool for a particular application,” such as, shingle removal. Decision 6 (emphasis added). In other words, the resulting tool of Christensen, as modified by Lackey, in the Examiner’s rejection, is a tool for removing shingles and not for separating one 2x4 from another. We did not “imply that Christensen is saying that the spaced-apart tines can be replaced.” Request 2. Rather, “the Examiner’s modification of the dimensions of Christensen’s wedge head to form a blade, that has a specific blade length- to-width relationship and a plurality of slots, as taught by Lackey . . . merely result[s] in a different embodiment,” i.e., “a tool suited for a particular application such as removing shingles.” Decision 6 (citing Christensen || 36, 37). 2 Appeal 2013-005618 Application 12/381,031 Secondly, Appellant argues that we misapprehended Christensen’s disclosure when we stated “that a single Christensen tool would be capable of performing all the functions set out in para 0053 and thus there would be no need for modifying the dimensions of the tool.” Request 3 (citing Decision 6, line 22—7, line l).2 We are not persuaded because Appellant’s argument is not commensurate with our statement in which we stated that “to interpret Christensen as Appellant argues would mean that a single tool would be capable of performing the applications mentioned in Christensen’s paragraph 53.” Decision 6 (emphasis added). Therefore, our statement is referring to Appellant’s argument, which is, that even though Christensen’s tool is disclosed for removing shingles, that does not mean that it would have been obvious to a person of ordinary skill in the art to modify Christensen’s wedge head into a multi-slot blade, such as Lackey’s, because it would change Christensen’s mode of operation as it would not be suitable for its intended purpose of separating one 2x4 from another. Id. at 5 (citing Appeal Br. 19-21, 24—25; Reply Br. 4 (filed Mar. 7, 2013)). However, as noted above, “the Examiner’s modification of the dimensions of Christensen’s wedge head to form a blade ... as taught by Lackey . . . merely result[s] in a different embodiment,” i.e., “a tool suited for a particular application such as removing shingles.” Id. at 6. 2 Although Appellant cites to pages 8—9 of the Decision, we note that the subject matter to which Appellant’s argument is addressed is not on these pages, but rather is on pages 6—7 of the Decision. We thus find Appellant’s citation to pages 8—9 of the Decision to be a mere typographical error. 3 Appeal 2013-005618 Application 12/381,031 Thirdly, Appellant contends that the Board misapprehended the argument, made in the Appeal Brief, that Christensen fails to disclose features of claim 1. Request 3 (citing Decision, p. 4,11. 20—24; Appeal Br. 16-18). We are not persuaded because we did respond to Appellant’s argument stating that the argument is made against Christensen individually, whereas “the Examiner’s rejection modifies the dimensions of Christensen’s head so as to form a blade, as taught by Lackey, ‘to provide the function of removing shingles.’” Decision 5 (citing Ans. 10—11 (mailed Feb. 4, 2013)). In other words, the Examiner’s rejection uses Lackey’s blade to modify the dimensions of Christensen’s tool head, and thus, discloses a “blade,” as called for by claim 1. See id. at 4—5. For example, in regard to the limitation “the blade having nail receiving slots . . . wide enough to receive the shank of a nail but not wide enough to pass its head,” the Examiner is correct in that because the multiple slots of Lackey’s blade “allow[s] the removal of shingles ... the slots hav[e] a wi[d]th that is obviously capable of receiving a nail shank but not allowing the nail head to pass therethrough.” Ans. 12 (citing Lackey, col. 2,11. 21—40) (“The crests of the narrow V-shaped recesses are adapted to receive . . . [and] remove the nail.”). Appellant did not persuasively argue that the combined teachings of Christensen and Lackey fails to disclose the “blade” of claim 1. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Finally, Appellant argues that the Board misapprehended Appellant’s “feature [that] having the length of his tool, at a certain location, less tha[n] the width of the tool, is known since the [E]xaminer is using the plate-like 4 Appeal 2013-005618 Application 12/381,031 section 26 of the head 22 of Lackey’s tool to replace Christensen’s wedge.” Request 3. According to Appellant, “Lackey does not show or suggest that this plate-like section 26 can be used alone” as a “shingle removing blade.” Id. at 4. We are not persuaded by Appellant’s argument because we addressed this issue in our Decision when stating that The Examiner is using the length-to-width relationship of Lackey’s blade 136, and not the manner in which blade 136 is attached to handle 114 (using head 122), as a way of modifying the tool of Christensen to have the claimed length-to-width relationship in order to be capable of removing shingles. Decision 7. Moreover, the Examiner’s modification “to form the lifting tool of Christensen . . . with the length of [Lackey’s] blade . . . being substantially shorter that it is wider and with plural slots” provides “for improved function [to Christensen’s tool] to remove overlayment or shingles as indicated by Christensen as an alternative function.” Decision 4 (citing Christensen 153) (emphasis added). As such, in contrast to Appellant’s position, the Examiner’s modification of Christensen’s tool, according to the blade of Lackey, provides an improvement to Christensen’s tool. See Request 4. In conclusion, for the foregoing reasons, Appellant’s Request does not persuade us that the Decision misapprehended or overlooked any matter or that we erred in affirming the Examiner’s rejection of claims 1—5, 7, 9, 11— 17, and 19-26. 5 Appeal 2013-005618 Application 12/381,031 CONCLUSION We have granted Appellant’s request to the extent that we have considered our Decision in light of the points raised therein, but have denied the request with respect to any modification to the Decision. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). DENIED 6 Copy with citationCopy as parenthetical citation