Ex Parte Heneveld

Board of Patent Appeals and Interferences

Mar 20, 2009

11356844 (B.P.A.I. Mar. 20, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WILLIAM R. HENEVELD, SR.
____________

Appeal 2008-1804
Application 11/356,844
Technology Center 3600
____________

Decided1: March 20, 2009
____________

Before WILLIAM F. PATE, III, LINDA E. HORNER and
JOHN C. KERINS, Administrative Patent Judges.

KERINS, Administrative Patent Judge.
DECISION ON APPEAL

1 The two month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2008-1804
Application 11/356,844

STATEMENT OF THE CASE
William R. Heneveld, Sr. (Appellant) seeks our review under
35 U.S.C. § 134 of the Examiner’s final rejection of claims 3-7. Claims 1
and 2 were allowed by the Examiner prior to this appeal. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).
SUMMARY OF DECISION
We AFFIRM.

THE INVENTION
Appellant’s claimed invention is to an adjustable tool, in particular a
gardening tool, having a head shaped and configured to dig into soil and dirt,
a handle connected to the head, with the handle and head being adjustable
around a pivot axis, and a button mounted on the handle to release and
engage the head, allowing adjustment and securing of the head in at least
two different positions. The button is positioned in a button hole on the
handle and has an outer surface which never extends beyond the continued
shape of the handle. (Appeal Br., Claims Appendix, Claim 3). Claims 3 and
6, reproduced below, are representative of the claimed subject matter:

3. An adjustable gardening tool comprising:

a head shaped and configured to dig into soil and
dirt for the purpose of loosening or cultivating the
soil or for weeding, planting, edging, and digging
when gardening;

a handle connected to and adjustable relative to the
head for adjustment around a pivot axis;

a button mounted on the handle and configured to
release and engage the head allowing adjustment

2
Appeal 2008-1804
Application 11/356,844

and securing of the head to the handle in at least
two different positions, the outer surface on the
handle defining a continuous shape and including
marginal surface material forming a button hole,
the button being positioned in the button hole and
having an outer end surface never extending
beyond the continued shape of the handle when in
any of the different positions nor when in a
released position, whereby a user can grip the
handle at or around the button without fear of
accidentally actuating the button.

6. An adjustable tool comprising:

a head configured for use in a dirty environment
including dirt;

a handle connected to and adjustable relative to the
head for adjustment around a pivot axis; and

a button mounted on the handle and configured to
be moved along a path to release and engage the
head allowing adjustment and securing of the head
to the handle in at least two different positions, the
outer surface on the handle defining a continuous
shape and including marginal surface material
forming a button hole, the button being positioned
in the button hole and having an outer end surface
not extending beyond the continued shape of the
handle, the outer end surface of the button having a
peripheral edge positioned closely adjacent and
approximately flush with the marginal surface
material forming the button hole, but including
an inboard region that is relieved below the
defined continuous shape of the handle to reduce
risk of inadvertent actuation when using the tool.

3
Appeal 2008-1804
Application 11/356,844

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Jones US 6,162,137 Dec. 19, 2000
Tung US 6,364,562 B1 Apr. 2, 2002
Ralph US 6,427,335 B1 Aug. 6, 2002

The Examiner has rejected:
(i) claims 3 and 5 under 35 U.S.C. § 102(b) as being anticipated by
Jones;
(ii) claims 3 and 4 under 35 U.S.C. § 102(b) as being anticipated by
Ralph; and
(iii) claims 4, 6 and 7 under 35 U.S.C. § 103(a) as being unpatentable
over Jones in view of Tung.
ISSUES
The Examiner found that the Jones patent identically discloses all
limitations present in claims 3 and 5; that the Ralph patent identically
discloses all limitations present in claims 3 and 4; and concluded that the
combination of the teachings of Jones and Tung renders obvious the subject
matter of claims 4, 6, and 7.
Appellant urges that the Jones and Ralph patents do not anticipate
claims 3 and 5, and claims 3 and 4, respectively; that it was improper to
consider and combine the teachings of Jones and Tung in rejecting claims 4,
6 and 7; and that the combination of the teachings of Jones and Tung fails to
teach or suggest the invention of claims 4, 6 and 7.

4
Appeal 2008-1804
Application 11/356,844

The issues joined in this appeal are: has Appellant shown that the
Examiner erred in finding claims 3-5 to be anticipated, and that the
Examiner erred in concluding that claims 4, 6 and 7 are unpatentable?

FINDINGS OF FACT
The following enumerated findings of fact (FF) are supported by at
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
FF 1. The Jones patent discloses an adjustable tool comprising a tool
head 4 configured to dig into soil, a handle 6, and a button 14 whose top
surface is preferably flush with the handle’s outer surface. (Jones, Figs. 1, 3;
col. 3, ll. 21-42; col. 4, ll. 59-67).
FF 2. In the Jones tool, the head is securable relative to the handle in
at least two different positions. (Jones, col. 3, ll. 39-42).
FF 3. Figures 6 and 7 in the Jones patent do not illustrate the back or
front sides (16, 18, respectively) of the handle. (Jones, compare Fig. 5 to
Figs. 6 and 7).
FF 4. In Figure 7 of Jones, plate 34 is shown as having push pin 14
protruding therefrom, however, this is an internal component of the tool that
is enclosed by the back side 16 of the handle. (Jones, Figs. 5 and 7).
FF 5. Appellant’s illustrated preferred embodiments include tool
heads that employ tines and shovel-like heads. (Spec. ¶¶[0016], [0034]; Fig.
2; Fig. 21; Fig. 25).

5
Appeal 2008-1804
Application 11/356,844

FF 6. The button or push pin 14 in the Jones tool has essentially no
lateral clearance between its outer circumference and the bevel of the handle
hole. (Jones, Figs. 1 and 2; col. 4, ll. 23-28).
FF 7. This relationship between the push pin and the hole would
inherently minimize intrusion of soil or dirt.
FF 8. The Ralph patent discloses an adjustable tool comprising a tool
head 12 configured to dig into soil, a handle 18, and a button 60 whose top
surface does not extend beyond the handle’s outer surface. (Ralph, Fig. 1;
col. 2, ll. 29-46).
FF 9. The tool head in the Ralph tool is securable relative to the
handle in at least two different positions. (Ralph, col. 1, l. 59-col. 2, l. 6).
FF 10. The tool head in the Ralph tool comprises a knife blade.
(Ralph, Fig. 1; col. 2, l. 29).
FF 11. Appellant specifically discloses, as one of his own preferred
embodiments, a tool head sharing common features with a knife blade,
including the provision of a sharp tip and a serrated edge for cutting or for
outlining (edging) flower beds. (Spec. ¶[0043]; Fig. 22).
FF 12. Figures 3 and 4 of Ralph show that the upper surface of the
head 60 of lock arm 46 is relieved below the lower surface of the knife/tool
handle. (Ralph, Figs. 3 and 4).
FF 13. The Tung patent is directed to a button-actuated joint to
release and engage top and bottom portions of a sunshade support tube
(Tung, Figs. 1-7, col. 2, l. 66-col. 3, l. 50).
FF 14. The Tung patent is directed to the use of a manually
depressible button that allows pivotal movement between two components
while the button is depressed, and the locking of the two components at

6
Appeal 2008-1804
Application 11/356,844

various relative positions upon release of the button. (Tung, col. 4, ll. 30-
39).
FF 15. The actuating button in the Tung device has a slightly concave
design. (Tung, Fig. 5).

PRINCIPLES OF LAW
Anticipation under 35 U.S.C. § 102 requires that “each and every
element as set forth in the claim is found, either expressly or inherently
described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil
Co., 814 F.2d 628, 631 (Fed. Cir. 1987).
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, ___,
127 S. Ct. 1727, 1734 (2007). The question of obviousness is resolved on
the basis of underlying factual determinations including (1) the scope and
content of the prior art, (2) any differences between the claimed subject
matter and the prior art, (3) the level of skill in the art, and (4) where in
evidence, so-called secondary considerations. Graham v. John Deere Co.,
383 U.S. 1, 17-18 (1966). See also KSR Int’l., 550 U.S. at ___, 127 S. Ct. at
1734 (“While the sequence of these questions might be reordered in any
particular case, the [Graham] factors continue to define the inquiry that
controls.”).
The analogous-art test requires that a reference be shown to either be
in the field of the applicant's endeavor or that the reference is reasonably

7
Appeal 2008-1804
Application 11/356,844

pertinent to the problem with which the inventor was concerned, in order to
rely on that reference as a basis for rejection. In re Oetiker, 977 F.2d 1443,
1447 (Fed. Cir. 1992). References are selected as being reasonably pertinent
to the problem based on the judgment of a person having ordinary skill in
the art. Id. A reference is reasonably pertinent if, even though it may be in a
different field from that of the inventor's endeavor, it is one which, because
of the matter with which it deals, logically would have commended itself to
an inventor's attention in considering his problem. In re Icon Health &
Fitness, Inc., 496 F.3d 1374, 1379-80 (Fed. Cir. 2007). In the same vein,
“familiar items may have obvious uses beyond their primary purposes.” KSR
Int'l., 550 U.S. at ___, 127 S. Ct. at 1742.

ANALYSIS
Claims 3 and 5--Anticipation by Jones
The Examiner found that the Jones patent discloses an adjustable
tool comprising a tool head 4 configured to dig into soil, a handle 6, and a
button 14 whose top surface is flush with the handle’s outer surface.
(Answer 3, FF 1). The head is securable relative to the handle in at least two
different positions. (FF 2).
Appellant asserts that the Jones patent does not anticipate the subject
matter in claims 3 and 5, because:
(1) the button in Jones extends beyond the continuous shape of the
handle of the tool, as evidenced in Figures 6 and 7 of Jones;
(2) the tool of Jones is not a gardening tool for digging into soil or
dirt for the purpose of loosening or cultivating the soil or for

8
Appeal 2008-1804
Application 11/356,844

weeding, planting, edging, and digging;
(3) the Jones patent is directed to non-analogous art; and
(4) with respect to claim 5, the Jones patent does not disclose or
suggest a relationship between the button and button hole that
minimizes intrusion of dirt and minimizes accidental actuation
when using the tool.
As correctly noted by the Examiner, Appellant’s reliance on Figures 6
and 7 as evidencing that the button, when depressed, extends beyond or
protrudes from the shape or surface of the handle is misplaced. (Answer 5).
Figures 6 and 7 do not illustrate the back or front sides (16, 18, respectively)
of the handle. (FF 3). Plate 34 which, in Figure 7 of Jones, is shown as
having push pin 14 protruding therefrom, is an internal component of the
device, and is enclosed by the back side 16 of the handle. (FF 4, Figure 5).
As such, Figures 6 and 7 do not evidence that the push pin or button 14 of
Jones protrudes from the surface of the handle when depressed.
Appellant asserts that not only is the tool in Jones not a tool to be used
for loosening soil and the like, but also that Jones contains a teaching away
from using the tool in soil. (Appeal Br. 6). Contrary to Appellant’s
assertions, Jones explicitly states that the tines of the tool are preferably
made of hardened steel to allow the tines to be “inserted into the grass
and soil repeatedly” (Jones, col. 4, ll. 59-61), and, in discussing the
unsatisfactory use of a golf tee to repair ball marks, notes that a tee “catches
very little dirt and grass”. (Jones, col. 1, ll. 26-27). Jones further discloses
that the shank of the tool “can terminate in a shape other than tines (e.g., a
blade or a shovel-like head)”. (Jones, col. 4, ll. 64-66). Appellant’s
illustrated preferred embodiments similarly include tool heads that employ

9
Appeal 2008-1804
Application 11/356,844

tines and shovel-like heads. (FF 5, Spec. [0016], [0034], Fig. 2).
Appellant’s arguments fall far short of persuading us that the subject matter
of claims 3 and 5 is patentably distinguishable on this basis.
Appellant’s contention that the Jones patent is drawn from an area of
non-analogous art is not germane to the propriety of a rejection under
35 U.S.C. § 102 on grounds of anticipation. In re Self, 671 F.2d 1344
(CCPA 1982). Nonetheless, as discussed in the preceding paragraph, the
Jones tool (having both the illustrated tined tool head and the described, but
not illustrated, blade or shovel-like head) is configured to dig into soil and
dirt, and is thus in the field of the applicant's endeavor. Oetiker, 977 F.2d at
1447. We are thus not persuaded that Jones is to be disregarded as non-
analogous art.
Appellant further contends, with respect to claim 52, that the Jones
tool does not disclose a relationship between the button and button hole that
minimizes intrusion of soil and dirt, and that minimizes accidental actuation
when using the grip. (Appeal Br. 7). As to the former, the claim recites no
structure that defines the “relationship” beyond the functional language such
that intrusion of soil and dirt is minimized. As can best be seen in Figures 1
and 2 of Jones, the button or push pin 14 has essentially no lateral clearance
between its outer circumference and the bevel of the handle hole. (FF 6).
Such a relationship would inherently minimize intrusion of soil or dirt. (FF
7). The Jones tool also eliminates or minimizes the chances of accidental

2 Appellant does not, as required under 37 C.F.R. § 41.37(c)(1)(vii), present
arguments for claim 5 under a separate heading. Notwithstanding the failure
to meet this requirement, it is clear that Appellant has made an argument for
the separate patentability of claim 5, and, as such, we will address that
argument.

10
Appeal 2008-1804
Application 11/356,844

actuation in the same manner as does Appellant’s tool, by providing an
actuation button 14 that does not extend above the surface of handle 6. (FF
1). We are not persuaded that the rejection of claim 5 as anticipated by
Jones is in error.
Claims 3 and 4--Anticipation by Ralph
The Examiner found that the Ralph patent discloses an adjustable tool
comprising a tool head 12 configured to dig into soil, a handle 18, and a
button 60 whose top surface does not extend beyond the handle’s outer
surface. (Answer 3)(FF 8). The head is securable relative to the handle in at
least two different positions. (FF 9). The Examiner further found that the
sharp knife blade would inherently be capable of digging in soil. (Answer
3).
Appellant asserts that the Ralph patent does not anticipate the subject
matter in claims 3 and 4, because:
(1) the Ralph tool is not a gardening tool, nor does it have a tool
head shaped and configured for digging into soil or dirt for the
purpose of loosening or cultivating the soil or for weeding,
planting, edging, and digging;
(2) the Ralph tool would not work in gardening because it would
soon seize up and no longer be adjustable due to intrusion of
dirt;
(3) the Ralph patent is directed to non-analogous art; and
(4) with respect to claim 4, the Ralph patent does not disclose or
suggest the provision of an outer end surface of the button
being relieved below the shape or surface of the handle.
The Ralph tool includes a tool head comprising a knife blade. (FF

11
Appeal 2008-1804
Application 11/356,844

10). Appellant asserts that this tool head is not shaped and configured for
digging into soil or dirt for the purpose of loosening or cultivating the soil or
for weeding, planting, edging, and digging. (Appeal Br. 8). However,
Appellant specifically discloses, as one of his own preferred embodiments, a
tool head sharing common features with a knife blade, including the
provision of a sharp tip and a serrated edge for cutting or for outlining
(edging) flower beds. (FF 11). Appellant’s own disclosure thus undermines
this argument, and the argument is not persuasive that the rejection of claims
3 and 4 as anticipated by Ralph is in error.
Appellant’s position that the Ralph tool would not work in gardening
is similarly not persuasive. Appellant bases this argument on the
observation that the button opening on the Ralph tool is partially open at all
times, and the intrusion of soil would cause the tool to seize up. (Appeal Br.
8). The argument is not commensurate in scope with claims 3 and 4, which
contain no limitation directed to whether or not the button opening is open or
closed, either partially or fully.
Appellant’s contention that the Ralph patent is directed to non-
analogous art is not germane to the propriety of a rejection under 35 U.S.C.
§ 102 on grounds of anticipation. Self, 671 F.2d 1344.
Appellant further contends, with respect to claim 43, that the Ralph
tool does not disclose or suggest that an outer end surface of the button is

3 Appellant does not, as required under 37 C.F.R. § 41.37(c)(1)(vii), present
arguments for claim 4 under a separate heading. Notwithstanding the failure
to meet this requirement, it is clear that Appellant has made an argument for
the separate patentability of claim 5, and, as such, we will address that
argument.

12
Appeal 2008-1804
Application 11/356,844

relieved below the shape or surface of the handle. (Appeal Br. 9). Figures 3
and 4 of Ralph, however, show that the upper surface of the head 60 of lock
arm 46 (corresponding to the claimed button) is relieved below the lower
surface of the knife/tool handle. (FF 12). We are thus not persuaded that the
rejection of claim 4 as anticipated by Ralph is in error.
Claims 4, 6 and 7--Obviousness--Jones in view of Tung
Appellant argues separately for the patentability of claims 4 and 6,
and appears to present an additional argument directed to claim 7, which
depends from claim 6.4
Appellant contends, for all of these claims, that the rejection is in error
because both the Jones and Tung patent are from non-analogous areas of art.
As noted in the analysis of the §102 rejection of claims 3 and 5 above, we
are not persuaded that the Jones patent constitutes non-analogous art. The
Tung patent, which is directed to a button-actuated joint to release and
engage top and bottom portions of a sunshade support tube (FF 13), is not in
the field of adjustable tools. However, as pointed out by the Examiner, both
the claimed invention and the Tung patent are directed to the use of a
manually depressible button that allows pivotal movement between two
components while the button is depressed, and the locking of the two
components at various relative positions upon release of the button.
(Answer 6)(FF 14). The Tung reference is thus reasonably pertinent to the
problem with which Appellant was concerned, and we are not persuaded that
the Examiner erred in relying on Tung as a part of the basis for rejection.
Oetiker, 977 F.2d at 1447.

4 Once again, Appellant has not placed the arguments under separate
headings, as required.

13
Appeal 2008-1804
Application 11/356,844

Appellant contends, with respect to claim 4, that, even if properly
combinable, neither the Jones patent nor the Tung patent discloses or
suggests a button and button hole relationship that reduces fear of accidental
actuation. (Appeal Br. 11). The actual language of claim 3, from which
claim 4 depends, requires that the button have an outer end surface that
never extends beyond the shape of the handle, and the language of
dependent claim 4 further requires that the outer end surface is relieved
below the defined continuous shape of the handle.
The Tung patent, as pointed out by the Examiner, discloses an
actuating button having a slightly concave design. (FF 15)(Answer 4). The
Examiner concluded that it would have been obvious to modify the Jones
button, which is disclosed as preferably being flush to the surface of the
handle (FF 1), to provide a slight indent as taught by Tung in order to
provide an easier-to-detect surface, while still avoiding inadvertent pressing
of the button. (Answer 6). Appellant does not contest this conclusion in the
arguments presented with respect to claim 4, and we are therefore not
persuaded that error was committed in making that rejection.
Appellant, in assigning error to the rejection of claim 6, repeats the
arguments directed to Jones and Tung being directed to non-analogous art.
For the same reasons set forth above, we are not persuaded that either Jones
or Tang has been drawn from an area of non-analogous art.
Appellant further contends that Jones does not disclose or suggest any
reason to include a relieved inboard region on its button, and that, because
Jones discloses that its button preferably is flush with the surface of the
handle, Jones directly teaches away from having a button with the relieved
inboard region. (Appeal Br. 12). Taking the latter contention first, Jones

14
Appeal 2008-1804
Application 11/356,844

does not mandate that the button be flush with the surface of the handle,
rather Jones states that this is a preference. (FF 1). Jones contains no
disclosure that criticizes or discredits, or otherwise discourages, the pursuit
of the alternative of employing a button having an inboard region that is
relieved below the surface of its handle. See, e.g., In re Fulton, 391 F.3d
1195, 1201 (Fed. Cir. 2004).
Appellant appears to be correct in asserting that the Jones patent does
not explicitly state a reason to include a relieved inboard portion on its
button. That, however, does not represent the full inquiry and analysis as to
whether it would or would not have been obvious to do so. Rather, the prior
art must be considered as a whole. Further, the analysis requires a
determination as to whether articulated reasoning with some rational
underpinning to support a conclusion of obviousness is present. KSR Int’l.,
550 U.S. at ___, 127 S. Ct. at 1741. Precise teachings directed to the
claimed subject matter are not required, in that the inferences and creative
steps that a person of ordinary skill in the art would employ may be taken
into account. Id. The person of ordinary skill in the art is a person of
ordinary creativity, not an automaton. Id. at ___, 127 S. Ct. at 1742.
The Examiner presents the reasoning that, by providing the button of
Jones with a recess as disclosed in Tung, the surface of the button would be
easier to detect. Appellant does not challenge that reasoning as lacking a
rational underpinning, and we are therefore not persuaded that the Examiner
erred in rejecting claim 6 as being obvious over Jones in view of Tung.
Appellant’s argument with respect to claim 7 is essentially nothing
more than a repetition of the language set forth in that claim, together with
the conclusory statement that neither Jones [sic., Ralph] nor Tung discloses

15
Appeal 2008-1804
Application 11/356,844

or suggests such limitations. Claim 7 contains the same limitations as does
claim 5, discussed supra in the rejection of claim 5 as anticipated by Jones.
For the same reasons as are presented in that portion of the analysis, we are
not persuaded that the Jones patent fails to disclose or suggest the limitations
set forth in claim 7, and we are not persuaded of error in the rejection of
claim 7.

CONCLUSION
Appellant has not established that reversible error exists in the
rejections of claims 3-5 under 35 U.S.C. § 102(b), or of claims 4, 6 and 7
under 35 U.S.C. § 103(a).

ORDER
The decision of the Examiner to reject claims 3-7 is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED
JRG

PRICE, HENEVELD, COOPER, DeWITT
& LITTON, LLP
695 KENMOOR, S.E.
P.O. BOX 2567
GRAND RAPIDS, MICHIGAN 49501

16