Ex Parte Jacobs et alDownload PDFPatent Trial and Appeal BoardMay 30, 201813866074 (P.T.A.B. May. 30, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/866,074 04/19/2013 114977 7590 James Edward Shultz Jr. 16656 Pine Dunes Court Grand Haven, MI 49417 05/30/2018 FIRST NAMED INVENTOR Matthew Jacobs 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. KIOOl 1324 EXAMINER NGUYEN, PHONG H ART UNIT PAPER NUMBER 3724 MAIL DATE DELIVERY MODE 05/30/2018 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 MATTHEW JACOBS, JEFFREY KEMPKER, and ORVILLE CRAIN Appeal2017-007910 Application 13/866,074 1 Technology Center 3700 Before MURRIEL E. CRAWFORD, MICHAEL W. KIM, and PHILIP J. HOFFMANN, Administrative Patent Judges. HOFFMANN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellants appeal from the Examiner's rejection of claims 1-72. We have jurisdiction under 35 U.S.C. § 6(b ). We REVERSE. 1 According to Appellants, "[ t ]he real party in interest is Klever Kutter L.L.C. (d.b.a. Klever Innovations)." Br. 1. 2 Claims 8-20 are withdrawn from consideration. See Non-Final Office Action (mailed Sept. 11, 2015) 2; see also Br. 2. Appeal2017-007910 Application 13/866,074 According to Appellants, the invention "relates to safety blades for use in utility knives, related assemblies[,] and methods of manufacture[,] which limit user exposure to associated cutting edges." Spec. ,r 2. Below, we reproduce claim 1, the only independent claim on appeal, as representative of the appealed claims. 1. A safety blade for use within a utility knife assembly, comprising: a blade body, a blade attachment, a first blade shield and a second blade shield, wherein the blade body, the blade attachment, the first blade shield and the second blade shield compose a contiguous piece of metal; the blade attachment comprises a first inner edge and a second inner edge juxtapose on the blade attachment, wherein a thickness of the first inner edge is greater than a thickness of a first blade cutting edge and less than or substantially equal to a thickness of the blade body and a thickness of the second inner edge is greater than a thickness of a second blade cutting edge and less than or substantially equal to the thickness of the blade body; the blade attachment further includes a bottom edge extending between the first inner edge of the blade attachment and the second inner edge of the blade attachment, wherein the blade attachment is configured to removably secure the safety blade to a handle that extends from the bottom edge of the safety blade; the first blade shield and the first inner edge of the blade attachment form a first blade throat which limits exposure to the first blade cutting edge, wherein the first blade shield comprises a first blunt tip having a first inner edge with a thickness that is greater than a thickness of the first blade cutting edge and less than or substantially equal to the thickness of the blade body and wherein the first inner edge of the blade attachment and the first inner edge of the first blunt tip extend beyond the first blade cutting edge; and 2 Appeal2017-007910 Application 13/866,074 the second blade shield and the second inner edge of the blade attachment form a second blade throat which limits exposure to the second blade cutting edge, wherein the second blade shield comprises a second blunt tip having a thickness that is greater than a thickness of the second blade cutting edge and less than or substantially equal to the thickness of the blade body and wherein the second inner edge of the blade attachment and the second inner edge of the second blunt tip extend beyond the second blade cutting edge. REJECTIONS AND PRIOR ART The Examiner rejects the claims as follows: I. Claims 1--4 and 6 under 35 U.S.C. § I02(b) as anticipated by Fogg (3,972, 117, iss. Aug. 3, 1976); II. Claim 5 under 35 U.S.C. § I03(a) as unpatentable over Fogg and Green (US 2007/0245574 Al, pub. Oct. 25, 2007); III. Claim 7 under 35 U.S.C. § I03(a) as unpatentable over Fogg; IV. Claims 1--4 and 6 under 35 U.S.C. § 102(b) as anticipated by Denoff (US 7,367,876 Bl, iss. May 6, 2008). V. Claim 5 under 35 U.S.C. § I03(a) as unpatentable over Denoff and Green. VI. Claim 7 under 35 U.S.C. § I03(a) as unpatentable over Denoff. ANALYSIS Rejection I As set forth above, independent claim 1 recites, in relevant part, a safety blade for use within a utility knife assembly, the safety blade including a blade body and a blade attachment, "wherein the blade attachment is configured to removably secure the safety blade to a handle 3 Appeal2017-007910 Application 13/866,074 that extends from the bottom edge of the safety blade." Br., Claims App. With respect to the Examiner's anticipation rejection of claim 1 based on Fogg, Appellants argue that the rejection is in error because while ... [Fogg 's] disposable combination stitch picker and seam ripper ... may include a folded-over leaf to act as a handle ([s]ee column 1, line 66 - column 2, line 2 ... ), Fogg does not disclose or suggest a safety blade having a blade attachment, [which] includes a bottom edge extending between a first inner edge and a second inner edge of the blade attachment, ... [ and which] is configured to removably secure the safety blade to a handle that extends from the bottom edge of the safety blade, as recited in claim 1. Br. 7. Based on our review of the record, including the Examiner's Final Office Action and Answer, and Appellants' Appeal Brief, for the reasons discussed below, we agree with Appellants. Thus, we do not sustain this anticipation rejection of claim 1. The Examiner finds that Fogg's "blade attachment 16 ... is capable of receiving a handle in the same manner as the claimed blade attachment 110 of the invention because ... bottom edge 16 in Fogg is a straight edge identical to claimed bottom edge 110." Answer 9-10 ( emphasis added). There are two issues with this finding, however. The first issue is that although the Examiner applies a broad meaning to the phrase "configured to" to mean "capable of' (see Answer 9-10), we find that the ordinary and customary meaning of this phrase, especially in light of Appellants' Specification, supports a narrower meaning for this phrase to require that the blade attachment is specifically designed to be connected to a handle. For example, Appellants' Specification describes that [ t ]he safety utility blade 200 may include blade securing holes 215, 220, 225 for securing the safety utility blade 200 to a corresponding safety cutting head ( e.g., either safety cutting 4 Appeal2017-007910 Application 13/866,074 head 500a or 500b of Figs. 5A and 5B, respectively) or securing the safety utility blade to a handle (e.g., a handle 685 of Fig. 6). Spec. ,r 32. See Aspex Eyewear, Inc. v. Marchan Eyewear, Inc., 672 F.3d 1335, 1349 (Fed. Cir. 2012) (The phrase "adapted to" construed narrowly to mean "configured to," as opposed to "capable of' or "having the capacity of'); Boston Scientific Corp. v. Cordis Corp., No. C 02-01474 J\V, 2006 WL 3782840, at *2 (N.D. Cal. Dec. 20, 2006) ("A widely accepted dictionary definition of the word 'configure' means '[t]o design, arrange, set up, or shape with a view to specific applications or uses.' American Heritage Dictionary 386 (4th ed. 2000)."). The second issue, which is related to the first issue, is that the Examiner appears to identify the safety blade's "bottom edge 11 O" (Answer 10), for example as shown in Appellants' Figure la, as the feature capable of allowing attachment of the safety blade to a handle. This is neither recited by the claim, nor described in Appellants' Specification, however. Rather, as discussed above, Appellants describe the holes formed in the blade attachment as the feature designed to allow attachment of a handle to the safety blade. Further, although claim 1 recites that the blade attachment includes a bottom edge, the claim does not recite that the bottom edge is what allows attachment of a handle to the safety blade. Therefore, the Examiner's determination that "Fogg teaches a blade attachment having ... bottom edge 16 ... capable of removably receiving a handle" (id.) fails to establish that Fogg's device is designed to be connected to a handle. Thus, based on the foregoing, we do not sustain the Examiner's anticipation rejection of claim 1 based on Fogg. We also do not sustain the anticipation rejection of claims 2--4 and 6, which depend from claim 1. 5 Appeal2017-007910 Application 13/866,074 Rejections II and III The Examiner does not establish that either Green or an obvious variation of Fogg remedies the above-discussed deficiency in claim 1 's anticipation rejection based on Fogg. Thus, we do not sustain the obviousness rejections of claims 5 and 7, which depend from claim 1, based on either Fogg alone or Fogg and Green. Rejection IV With respect to the Examiner's anticipation rejection of claim 1 based on Denoff, Appellants argue that the rejection is in error because while [Denoff's] shellfish tool ... may include a handle ([s] ee . . . Denojj[, Abstract]), Deno.ff does not disclose or suggest a safety blade having a blade attachment, ... [which] includes a bottom edge extending between a first inner edge and a second inner edge of the blade attachment, ... [ and which] is configured to removably secure the safety blade to a handle that extends from the bottom edge of the safety blade, as recited in claim 1. Br. 9. Based on our review of the record, including the Examiner's Final Office Action and Answer, and Appellants' Appeal Brief, for the reasons discussed below, we agree with Appellants. Thus, we do not sustain this anticipation rejection of claim 1. For the reasons set forth above, we determine that claim 1 requires that the blade attachment is specifically designed to be secured to a handle. The Examiner's determination that Denoff anticipates the claim, because Denoff's blade attachment (i.e., handle 17) is capable of receiving a handle (i.e., Denoff's stick), as "one may use rubber bands to removably secure [Denoffs] blade attachment [(i.e., handle 17)] to a stick, which is a handle, so that one can use the modified blade to pull down flying balloons stuck on a ceiling or paper airplanes stuck on a ceiling fan" (Answer 11-12), fails to 6 Appeal2017-007910 Application 13/866,074 establish that Denoff teaches the claimed blade attachment configured to be secured to a handle. Thus, based on the foregoing, we do not sustain the Examiner's anticipation rejection of claim 1 based on Denoff. We also do not sustain the anticipation rejection of claims 2--4 and 6, which depend from claim 1. Rejections V and VI The Examiner does not establish that either Green or an obvious variation of Denoff remedies the above-discussed deficiency in claim 1 's anticipation rejection based on Denoff. Thus, we do not sustain the obviousness rejections of claims 5 and 7, which depend from claim 1, based on either Denoff alone or Denoff and Green. DECISION We REVERSE the Examiner's anticipation and obviousness rejections of claims 1-7. REVERSED 7 Copy with citationCopy as parenthetical citation