Ex Parte Holdredge

Patent Trial and Appeal Board

Aug 21, 2018

12488888 (P.T.A.B. Aug. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/488,888 06/22/2009
27557 7590 08/23/2018
BLANK ROME LLP
1825 Eye Street NW
WASHINGTON, DC 20006-5403
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Randolph Artemas Holdredge
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
132418.0101 1499
EXAMINER
MITCHELL, JOEL F
ART UNIT PAPER NUMBER
3671
NOTIFICATION DATE DELIVERY MODE
08/23/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
Belay@blankrome.com
W ashingtonDocketing@blankrome.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RANDOLPH ARTEMAS HOLDREDGE
Appeal2017-011012
Application 12/488,888
Technology Center 3600
Before JOHN C. KERINS, EDWARD A. BROWN, and
ARTHUR M. PESLAK, Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Randolph Artemas Holdredge (Appellant) seeks our review under
35 U.S.C. § 134 of the non-final rejection of claims 1, 2, 6-15, 17, and 19-
22. We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing was
conducted on August 2, 2018, with Peter S. Weissman, Esq., appearing on
behalf of Appellant.
We REVERSE.
Appeal 2017-011012
Application 12/488,888
THE INVENTION
Appellant's invention is directed to a garden tool. Claim 1,
reproduced below, is illustrative:
1. A garden tool comprising:
a handle having a longitudinal axis; and
a tool head comprising a single piece flat blade that is bent in a
substantially "J" shape,
said flat blade having:
a substantially elongated horizontal base blade section
with a top, a flat bottom and two substantially parallel
opposite sides, each side having a beveled edge on the top
of said horizontal base blade section, said horizontal base
blade section further having a tip at a distal end of the
horizontal base blade section, wherein said horizontal base
blade section has a longitudinal axis;
a flange above and substantially parallel to the horizontal
base blade section;
a transitioning heel blade section having a curved first end
blade section connected to a proximal end of the horizontal
base blade section, a second end section connected to the
flange, and a flat middle blade section, said curved first
end blade section being curved along a transverse axis of
said blade so that said fiat middle blade section is
substantially perpendicular to said horizontal base blade
section and said flange, wherein the curved first end blade
section and a portion of the middle blade section have
beveled sides;
wherein said middle blade section, curved first end blade section,
and two substantially parallel sides of said horizontal base are
continuously slightly tapered inwardly from the middle blade
section to distal end, and wherein the longitudinal axis of the
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Application 12/488,888
handle extends substantially perpendicular to the longitudinal
axis of the horizontal base blade section in a first direction
substantially perpendicularly outward from the sides of the
horizontal base blade section, and further wherein the
longitudinal axis of the handle extends at an upright acute angle
to the top of said horizontal base blade section in a second
direction different from the first direction which provides for the
horizontal base blade section to be substantially parallel to a
worked surface when the garden tool is in use, and wherein the
beveled edge of one of the two sides is used when the tool is
pulled toward the user and the beveled edge of the other one of
the two sides is used when the tool is pushed away from the user.
THE REJECTIONS
The Examiner rejects:
(i) claims 1, 2, 6, 7, and 11-15 under 35 U.S.C. § I03(a) as being
unpatentable over Campbell (US 6,988,561 Bl, issued Jan. 24, 2006) in
view of King (US 83,290, issued Oct. 20, 1868), and Jones (US 1,279,704,
issued Sept. 24, 1918);
(ii) claims 8-10 and 22 under 35 U.S.C. § I03(a) as being
unpatentable over Campbell in view of King and Jones, and Donnini (US
4,177,864, issued Dec. 11, 1979); and
(iii) claims 17 and 19-21 under 35 U.S.C. § I03(a) as being
unpatentable over Campbell in view of Jones and Donnini.
ANALYSIS
Claims 1, 2, 6, 7, and 11-15-0bviousness-Campbell/King/Jones
The Examiner combines the teachings of Campbell and King in a
manner that results in a garden tool having most of the limitations set forth
in claim 1. Non-Final Act. 2-5. Missing from those combined teachings,
according to the Examiner, is a limitation requiring that the longitudinal axis
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Application 12/488,888
of the handle extend substantially perpendicularly to a longitudinal axis of
the horizontal base blade section in a direction substantially perpendicularly
outward from the sides of the horizontal base blade section. Id. at 5.
The Examiner cites to Jones as teaching a garden tool having a handle
longitudinal axis that extends substantially perpendicularly to the
longitudinal axis of the horizontal base blade section, and in a direction
perpendicularly outward from the sides of the blade. Id. The Examiner
concludes that it would have been obvious to modify the Campbell/King
garden tool so as to have the handle longitudinal axis oriented in the same
manner as in Jones, "in order to space the user from the blade to prevent
harm." Id. at 6.
The Examiner provides an annotated version of Figure 1 of Jones,
which is reproduced below, to show what is regarded as corresponding to the
claimed longitudinal axis of the base blade section.
"·"" ;~ .·....... ',:·~~
:·"-, ··"'~.· ·".. - .. ,
. ' ····-.,~~~-·.
'",,-,.,,'
,r.,/'·•:,-..." ~,·-,
~~:41. \;:"-,,,, ~.}'~·,,,, .'·
'-., ..... (,
,.:.><~:,
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Application 12/488,888
Depicted above is an Examiner-annotated version of Figure 1 in Jones,
which is a perspective view of the garden tool disclosed therein.
Appellant points out that this same rejection of this same claim was
previously before the Board in Appeal No. 2014-006470, and that the
decision in that appeal reversed the rejection on the basis that the Examiner
did not adequately explain why the axis identified by the Examiner as
corresponding to the claimed longitudinal axis of the base blade ( see
annotation above) was properly considered to be a longitudinal axis of the
blade base. Appeal Br. 4--5. In the decision in that Appeal, the Board took
the position that, in the absence of any explanation justifying the Examiner's
finding as to the longitudinal axis of the base blade body, the determination
appeared to be arbitrary and insufficient to support the rejection. Decision in
Appeal 2014-006470, 5---6. That issue having been dispositive of the
rejections in the prior appeal, no additional analysis of the rejections was
deemed necessary.
In the rejections before us in the present appeal, the Examiner
provides reasoning and justification for the finding that the selected axis in
Jones is properly regarded as being the longitudinal axis of the base blade.
Non-Final Act. 6-9. Essentially, the Examiner reasons that the Jones' blade
is described in Jones as being diamond-shaped, and as being used in a
diamond orientation. Id. The Examiner takes the position that the axes of
such a shape are generally regarded as the lines extending from opposing
points. Id. The Examiner additionally takes the position that, for a diamond
shape such as this, a direction "along the length" of the blade would be from
point to point. Id. The Examiner further interprets the drawing figures of
Jones as evidencing that the point-to-point axis extending transversely to the
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Application 12/488,888
axis of the handle has a greater length than the axis extending in the same
direction as the handle axis, and therefore regards the transverse axis as the
longitudinal axis of the blade. Ans. 28-30.
With this better understanding of the reason why the Examiner
designates the transverse axis of the diamond-shaped blade as being "along
the length" of the blade, we agree that this is an acceptable interpretation of
what, in Jones, constitutes a longitudinal axis of the blade. That being said,
Appellant argues that the Examiner's finding continues to be flawed, in that
the Examiner finds that the Jones handle additionally extends in a first
direction that is substantially perpendicularly outward from the sides of the
blade, a further limitation in claim 1. Non-Final Act. 5; Appeal Br. 11. As
noted by Appellant, the handle in Jones extends outwardly from a comer or
point of the blade body and not perpendicularly to any side thereof. Appeal
Br. 11.
The underlying finding that Jones discloses a handle extending
perpendicularly relative to the sides of the blade is in error. The Examiner
has additionally not explained why it would have been obvious, in view of
the absence of such disclosure in Jones, to orient the handle in the claimed
manner in the Campbell/King tool.
The rejection of claim 1, and of claims 2, 6, 7, and 11-15, depending
therefrom, is therefore not sustained.
Claims 8-10 and 22 -Obviousness-Campbell/King/Jones/Donnini
The additional reliance on Donnini in rejecting claims 8-10, which
depend from claim 1, as having been obvious, does not cure the defect noted
above. Accordingly, the rejection as applied to claims 8-10 is not sustained.
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Independent claim 22 does not include the limitation, discussed above
with respect to claim 1, regarding the handle extending perpendicularly from
the sides of the blade. Rather, the claim requires only that the longitudinal
axis of the blade be substantially perpendicular to the longitudinal axis of the
handle in a less-specific "first direction."
For the following reasons, however, the rejection is not sustainable.
These reasons apply to independent claim 1 discussed above, as additional
reasons why that rejection is not sustainable.
The Examiner concludes that it would have been obvious to have
modified the tool of Campbell to have the tool head geometry as taught by
King, in order to simplify the manufacturing process by constructing the
blade of a single piece with right angle bends. Non-Final Act. 5. It appears
to be conclusory at best to assert that manufacturing is simplified by using a
single piece of material, and using right angle bends, instead of having
certain tool head portions not at right angles, as in Campbell. Although
King extols that it is advantageous to form the tool head from one
continuous piece, King also discusses that the piece is initially a cylindrical
shank that must be flattened out to form the blade portions of the tool head.
King, 1: 17-2:4. Further, the tool head geometry of King has four right angle
bends, including two bends at the distal end of the King blade that are not
present in the Campbell blade, thereby seemingly adding further complexity
to the manufacturing process. King, Fig. 1; Campbell, Fig. 1. Finally, the
Examiner fails to substantiate that right angle bends are more easily
produced than are non-right angle bends. 1 These considerations call into
1 The Examiner's findings relative to the Campbell rejection include that
Campbell discloses a single piece flat blade, with that single piece including
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Application 12/488,888
question whether the proposed substitution would bring about any
simplification of the manufacturing process.
The combination additionally fails to take into account that the reason
that the upper "flange" in Campbell is not parallel to its base blade, but
rather is in a diverging orientation, is so that a handle can be attached to a
flat surface thereof, with the handle angling upwardly to a height suitable for
a user to grasp and use with minimal strain on the arms, back, and shoulders.
Campbell 2:33-37. The Examiner does not explain how, once the diverging
flange is dispensed with, in favor of a parallel flange as in the proposed
modification, an angled handle would be securely attached to the tool head.
The proposed modification further would appear to render Campbell
unsuitable for its intended purpose. Whereas Campbell employs a beveled
trapezoidal blade to be used in a raking motion to effect desired grading, the
modification to use the tool head geometry of King would eliminate beveled
front edge 34 of Campbell in favor of an upwardly extending member at the
distal end of the horizontal portion of the blade. Appeal Br. 19-20. In such
a configuration, it appears that a raking motion would not perform the
desired grading sought by Campbell.
The reason for further modifying the Campbell/King tool in view of
Jones also lacks rational underpinnings. The Examiner articulates that it
would have been obvious to orient the longitudinal axis of the base blade
perpendicularly to a longitudinal axis of the handle, "in order to space the
a base blade, a flange, and a transitioning heel blade section. Non-Final Act.
3. Thus, the Examiner's reason to substitute the King tool head
configuration for that of Campbell is to obtain a right angle bend in place of
a non-right angle bend.
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Application 12/488,888
user from the blade to prevent harm." Non-Final Act. 6. First, as noted
above, the Examiner has not indicated how the Campbell handle is to be
attached to a non-inclined flange once the Campbell tool head is configured
in the same manner as is the King tool head. Further, it does not appear that
orienting the handle perpendicularly to a base blade would space the user
any farther away than does the Campbell orientation as disclosed.
These problems with the proposed modifications and the unsupported
reasons for making the modifications ultimately point to the use of
impermissible hindsight reconstruction using Appellant's claims to fashion
the rejection. Accordingly, the rejection of claim 22 is not sustained.
Claims 17 and 19-21-0bviousness-Campbell/Jones/Donnini
The rejection of claims 17 and 19-21 does not involve, as do the two
preceding rejections, a modification of Campbell in view of the teachings of
King. Non-Final Act. 17-23. Independent claim 17, like claim 22 discussed
above, does not include the limitation found in claim 1, regarding the handle
extending perpendicularly from the sides of the blade. Rather, the claim
requires only that the longitudinal axis of the blade be substantially
perpendicular to the longitudinal axis of the handle in an unspecified "first
direction."
The rejection of claim 17 includes a finding, not unlike that for claim
1, that Campbell discloses a landscaping tool having a I-shaped blade
formed of a single flat piece, with that single piece having base blade section
32, a flange portion 30, and a heel blade section 26. Non-Final Act. 17-18.
According to the Examiner, Campbell lacks a teaching of a tang having
separate portions, the claim requiring a separate tang having a first elongated
leg portion connected to the flange portion of the blade and a second
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elongated leg portion formed at an angle to the first elongated leg portion,
with the second portion attached to a handle. Id. at 18.
The Examiner finds that Jones discloses separate tang 6, having a first
elongated leg portion attached to flange portion 7 on blade 8, 10, and a
second elongated leg portion formed at an angle to the first, with the second
also connected to a handle. Id. The Examiner concludes that it would have
been obvious to provide the tool of Campbell with the handle connecting
means of Jones, in order to facilitate attachment of the tool head to many
common cylindrical tool handles. Id. at 18-19.
Appellant argues that shank 6 of Jones is not connected to a flange
that is part of the blade. Appeal Br. 13. Indeed, element 7 identified by the
Examiner as corresponding to the claimed flange portion is part of tang or
shank 6, termed an "eye," and not part of blade 8. Jones, 2:55---61, Figs. 1-3.
The Examiner's finding mischaracterizes the construction of the Jones
device, leaving it unclear as to whether the proposed modification is to
include or exclude eye 7 of Jones as part of the handle connecting means to
be used on the Campbell tool. Further, connecting a shank having legs
angled with respect to each other to an already inclined flange portion 30 of
the tool head would appear to orient the handle attached to the tool in a
nearly vertical orientation. Such an orientation seems likely to make it more
difficult to operate the Campbell tool using a raking motion, as intended.
Further, it would have the effect of bringing the tool head closer to the
person using the tool, which, as the Examiner elsewhere noted, might
increase the risk of harm to the user. Non-Final Act. 6.
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Overall, the findings and articulated reason to combine Jones with
Campbell lack rational underpinnings. Accordingly, the rejection of claim
17, and of claims 19-21 depending therefrom, is not sustained.
DECISION
The Examiner's rejections of claims 1, 2, 6-15, 17, and 19-22 are
reversed.
REVERSED
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