Ex Parte Hayes

Board of Patent Appeals and Interferences

Sep 13, 2007

10689337 (B.P.A.I. Sep. 13, 2007)

The opinion in support of the decision being entered
today is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KENNETH O. HAYES
____________

Appeal 2007-1584
Application 10/689,337
Technology Center 3700
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Decided: September 13, 2007
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Before DONALD E. ADAMS, NANCY J. LINCK, and
RICHARD M. LEBOVITZ, Administrative Patent Judges.
LINCK, Administrative Patent Judge.

DECISION ON APPEAL
This is a 35 U.S.C. § 134 appeal in the above-referenced case.1
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

1 The application was filed October 20, 2003.
Appeal 2007-1584
Application 10/689,337

STATEMENT OF THE CASE
The field of the invention is “hand tools and, in particular, . . . weed
extraction tools” (Specification (“Spec.”) 1).
Claims 1, 4-7, 10-16, and 19 are on appeal.2 The claimed subject
matter is reflected in representative claim 1 (emphasis added to the disputed
language):
1. (Original) A tool, comprising:
a body member having a longitudinal axis;
a blade fixed to said body;
an arcuate support spaced from said longitudinal axis and
having a length; and
a web substantially spanning said arcuate support and said
body along said length of said arcuate support.

DISCUSSION
Claims 1, 4, 5, 7, 11-14, and 16
The Examiner has rejected claims 1, 4, 5, 7, 11-14, and 16 under 35
U.S.C. § 103(a) over DeArmond, U.S. Patent 5,609,325 (Mar. 11, 1997) and
Weisgerber, U.S. Patent 4,368,874 (Jun. 18, 1983). DeArmond discloses all
the limitations of claim 1, except the web (see FIG. 1); and Weisgerber
discloses a web (FIG. 1 (brace 48)).

2 Claims 2, 3, 8, 9, 17, and 18 are “objected to as being dependent upon a
rejected base claim, but would be allowable if rewritten in independent form
including all of the limitations of the base claim and any intervening claims”
(Office Action at 4 (mailed 12/05/2005); Interview Summary Record at 2
(mailed January 20, 2006)).

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Appeal 2007-1584
Application 10/689,337

The patentability of Appellant’s claims turns on the scope and
meaning of the claim phrase “a web substantially spanning said arcuate
support and said body along said length of said arcuate support.” As the
Examiner found and Appellant does not dispute, the remaining limitations of
claim 1 are met by DeArmond’s teachings (Answer 3).
The Examiner interprets the disputed limitation in two ways (Answer
3-5). We adopt his second, alternative, interpretation (id. at 4-5). Thus, the
web must “substantially span” the length of the arcuate support. This
interpretation is consistent with teachings in the Specification (see, e.g.,
Appellant’s Fig. 1). As the Examiner found, given this interpretation, the
only difference between the web 48 taught by Weisgerber and that claimed
(50 in FIG. 1) is size (Answer 4). As the Examiner further found: “Since
the web (which is a brace or strut) is for strength, one skilled in the art would
have been motivated to increase the distance of the web along the body
member to therefore increase the strength of the device” (id.).
With regard to the Examiner’s other findings and responses, we adopt
them here and conclude they are sufficient to support his prima facie case of
unpatentability and thus affirm his § 102(e) rejection for the reasons given
by the Examiner.
Appellant objects to the Examiner’s reliance on the level of skill in the
art to combine DeArmond and Weisgerber without providing any supporting
affidavits, quoting In re Jones, 958 F.2d 347, 351 (Br. 8-9). According to
Appellant, such evidence of motivation to combine is required in the
absence of a teaching or suggestion in the references themselves (Br. 9).
The Supreme Court’s reasoning in KSR Int’l v. Teleflex Inc., 127 S.
Ct. 1727 (2007) supports the Examiner’s rationale for combining DeArmond
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Appeal 2007-1584
Application 10/689,337

and Weisgerber. Here, the combination involved “the mere application of a
known technique” (Weisgerber’s teaching of strengthening a support with a
web) “to a piece of prior art ready for the improvement” (DeArmond’s weed
extractor with a support lacking a web to strengthen the tool. KSR Int’l, 127
S. Ct. at 1740. Significantly, according to the Court:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of
it, either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a
technique has been used to improve one device, and a person
of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique
is obvious unless its actual application is beyond his or her
skill. Sakraida and Anderson’s-Black Rock are illustrative-a
court must ask whether the improvement is more than the
predictable use of prior art elements according to their
established functions.
Id. In this case, the skilled artisan would have recognized the value of
adding a web or brace to DeArmond’s weed pulling device. And adding
such a web or brace would have improved DeArmond’s device in the same
way it improved Weisgerber’s. Such a simple addition would not have been
beyond the level of skill in the art and thus would have been obvious, as the
Examiner correctly determined. Appellant “should not be granted a patent
for merely adding a reinforcing strut to an existing tool such as the
DeArmond tool” (Answer 8). Thus, we affirm the Examiner’s rejection of
claims 1, 4, 5, 7, 11-14, and 16 under 35 U.S.C. § 103(a).
Claims 6 and 15
In addition to DeArmond and Weisgerber, the Examiner relies upon
Gottlieb, U.S. Patent 4,472,986 (Sep. 25, 1984) to support his § 103(a)
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Appeal 2007-1584
Application 10/689,337

rejection of claims 6 and 15. These two claims additionally comprise “a
handle” with a “loop hanger.” Gottlieb discloses a tool with a handle and
“hanger apertures” at the extreme end of the handle (Gottlieb, col. 3, ll. 50-
53).
Appellant does not argue this limitation is missing from the prior art
teachings but rather relies upon his prior arguments relating to the
combination of DeArmond and Weisgerber. Thus, we affirm the
Examiner’s rejection of claims 6 and 15 for the reasons previously given
(see supra pp. 2-4).
Claims 10 and 19
In addition to DeArmond and Weisgerber, the Examiner relies upon
Pace, U.S. Patent 6,848,341 B2 (Feb. 1, 2005) to support his § 103(a)
rejection of claims 10 and 19. Claims 10 and 19 additionally require the tool
to be “integrally formed from a composite material.” According to the
Examiner, Pace discloses a tool made from 4140 steel, a “composite
material” (Answer 8). “Composite” is not defined in the Specification and
thus is given its broadest reasonable interpretation. See In re Graves, 69
F.3d 1147, 1152 (Fed.Cir.1995); In re Etter, 756 F.2d 852, 858 (Fed. Cir.
1985) (en banc).
We define “composite” to mean: “A mixture or mechanical
combination on a macro scale or two or more materials that are solid in the
finished state, are mutually insoluble, and differ in chemical nature.”
Hawley’s Condensed Chemical Dictionary 302 (11th ed. 1987). This
definition is sufficiently broad to include at least some alloys.
Appellant has not challenged the Examiner’s finding regarding 4140
steel. Thus, we affirm the Examiner’s rejection of claims 10 and 19.
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Appeal 2007-1584
Application 10/689,337

CONCLUSION
In summary, we affirm the rejection of claims 1, 4-7, 10-16, and 19
under 35 U.S.C. § 103(a) based on the Examiner’s reasoning and our
analysis, as explained above.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv)(2006).

AFFIRMED

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