Ex Parte Kempker et al

Patent Trial and Appeal Board

Nov 8, 2017

12620999 (P.T.A.B. Nov. 8, 2017)

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.
12/620,999 11/18/2009 Jeffrey A. Kempker KLE005 P301 1638
7590 11/08/2017
James E. Shultz Jr.
16656 Pine Dunes Court
Grand Haven, MI 49417
EXAMINER
NGUYEN, PHONG H
ART UNIT PAPER NUMBER
3724
MAIL DATE DELIVERY MODE
11/08/2017 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 JEFFREY A. KEMPKER,
ORVILLE V. CRAIN, and MATTHEW JON JACOBS
____________________

Appeal 2015-002615
Application 12/620,999
Technology Center 3700
____________________

Before JOHN C. KERINS, GEORGE R. HOSKINS, and
FREDERICK C. LANEY, Administrative Patent Judges.

KERINS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Jeffrey A. Kempker et al. (“Appellants”) appeal under 35 U.S.C.
§ 134(a) from a final rejection of claims 1–4, 6, 7, 9, 12–18, 22, 23, and 25–
28. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

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Application 12/620,999

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THE INVENTION
Appellants’ invention is directed to a hand tool having a replaceable
head. Claim 25, reproduced below, is illustrative:
25. An apparatus comprising:

a replaceable cutting head having an elongated handle
engagement section having an operative end-extending from the
elongated handle engagement section, the replaceable cutting
head comprising a polymeric body that carries a piece of metal,
the piece of metal comprises a continuous sharpened linear
cutting edge that defines a first blade, wherein the body
comprises material on an operative end that holds the piece of
metal to the elongated handle engagement section and wherein
the material comprises a first overhanging shield that at least
partially covers a first outer edge of the piece of metal, wherein
the material combines with the first overhanging shield to define
a first throat, wherein the first throat is shaped to limit access to
the first blade and wherein the overhanging shield is secured in
a fixed position relative to the first blade, wherein the elongated
handle engagement section has an enclosed elongated opening
spaced apart from the operative end and a latch is positioned
within the enclosed elongated opening, wherein one end of the
latch is integrally connected to an end of the enclosed elongated
opening and an opposite free end of the latch has a protrusion,
wherein the protrusion engages with a hole of a handle to
releasably secure the replaceable head to the handle.

REJECTIONS
The Examiner rejects:
(i) claims 1, 3, 4, 6, 7, 9, 12, 13, 15–18, 22, 23, and 25–281 under 35
U.S.C. § 103(a) as being unpatentable over Kempker (US D527,604 S,

1 The statement of rejection at page 2 of the Final Action incorrectly
includes claims 5 and 24 as being rejected on these grounds, however,
claims 5 and 24 have been canceled.
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issued Sept. 5, 2006) in view of Votolato (US 2005/0217114 A1, published
Oct. 6, 2005), Hsieh (US 2007/0272061 A1, published Nov. 29, 2007), and
O’Heeron (US 6,544,277 B1, issued Apr. 8, 2003);2
(ii) claims 2 and 14 under 35 U.S.C. § 103(a) as being unpatentable
over Kempker in view of Votolato, Hsieh, and O’Heeron; and
(iii) claim 12 under 35 U.S.C. § 103(a) as being unpatentable over
Kempker in view of Votolato, Hsieh, O’Heeron, and Wallays (US
5,933,918, issued Aug. 10, 1999).
ANALYSIS
Rejection (i)
Appellants principally direct their arguments to independent claim 25,
and the limitations found therein. Amended Appeal Br., passim. (dated June
14, 2014, hereinafter “Appeal Brief” or “Appeal Br.”); Reply Br., passim.
We first address claim 25 specifically, and thereafter the remaining claims
and their relation to the arguments advanced.
The Examiner finds that Kempker3 discloses a hand tool having the
claimed elongated handle, and a head with two overhanging hook-shaped
shields, with the handle and the shields forming first and second shielded
blade throats. Final Act. 2. The Examiner finds that Kempker does not
disclose a replaceable head and the additional limitations attendant to the

2 The Examiner does not apply the teachings of Hsieh or O’Heeron in the
body of this rejection. Final Act. 2–4.
3 The Kempker design patent, on its face, is assigned to Klever Kutter, LLC,
which appears to be the same entity as the real party in interest, Klever
Kutters L.L.C, identified in the Appeal Brief. See Appeal Br. 1. Identity of
inventorship exists between the Kempker design patent and the instant
application, as well.
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structure of the replaceable head, including an elongated section shaped to
be fitted into a recess in the handle and secured to the handle. Id. at 2–3.
The Examiner turns to Votolato for its disclosure of a hand tool
(cutter) having a replaceable head with an elongated section fitted into a
recess and secured to the handle. Id. at 3. The Examiner concludes that it
would have been obvious to modify Kempker to have a replaceable head as
taught by Votolato, in order to allow a user to replace a non-functional
(used) head with a new one. Id. The Examiner provides a sketch of the
Kempker hand tool, as proposed to be modified in view of Votolato, at page
12 of the Answer.
Appellants argue that the Examiner has not provided any reasoning as
to “how or why” a person of ordinary skill in the art would modify or
combine the references in arriving at the claimed invention, and, as a result
the rejection is impermissibly based on the use of hindsight reconstruction.
Appeal Br. 10. We note initially that the preceding paragraph in the present
decision identifies the portions of the Examiner’s position as to both “why”
and “how” the references would obviously be combined.
Appellants specifically maintain that Votolato, as well as Hsieh,
O’Heeron, and Wallays, disclose removable heads that have the blade
extending in a longitudinal direction with respect to the handle, and thus a
combination of these references with Kempker would not yield a replaceable
cutting head with material that cooperates with an overhanging shield to
define a throat for the blade. Appeal Br. 10. This argument is in the nature
of arguing that the person of ordinary skill in the art would discard entirely
the configuration of the cutting portion of the Kempker device, in order to
bodily incorporate the blade configuration of Votolato or one of the other
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references. The argument is not responsive to the specifics of the rejection,
which, instead, maintains the general configuration of the cutting portion of
the Kempker hand tool, and simply makes the head replaceable. See, e.g.,
Ans. 11–12. In addition, the test for obviousness is not whether the features
of a secondary reference may be bodily incorporated into the structure of the
primary reference. In re Keller, 642 F.2d 413, 425 (CCPA 1981) (internal
citations omitted). The person of ordinary skill in the art is not compelled to
blindly follow the teaching of one prior art reference over the other without
the exercise of independent judgment. See Lear Siegler, Inc. v. Aeroquip
Corp., 733 F.2d 881, 889 (Fed. Cir. 1984).
Appellants next argue that there is no teaching, suggestion, or
motivation to separate the Kempker cutter at a point that would result in the
replaceable head and handle meeting the limitations involving the shield,
and the shield and material of the head combining to define a throat that
limits access to the blade. According to Appellants, a separation of the
Kempker cutter that would result in these limitations being met “would be
completely arbitrary,” and the Examiner does not provide any rationale as to
why that point would have been obvious. Appeal Br. 10–11.
Appellants, in responding to the Examiner’s Answer, also allege, in
this regard, that the Examiner “continues to rely on a portion of a handle in
combination with an overhanging shield” as the components defining the
claimed first throat, and that the Examiner has not shown that the cutting
head, in particular, includes material that cooperates with the overhanging
shield to define the throat, as required by claim 25. Reply Br. 2 (emphasis
omitted). Appellants note that the removable cutting head of Votolato does
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not include material that combines with an overhanging shield to define a
first throat. Id.
The language employed by the Examiner is somewhat imprecise as it
relates to the limitation in claim 25 requiring that material that is part of the
replaceable cutting head acts in concert with a first overhanging shield to
define a first throat limiting access to the blade. However, the sketch
appearing at page 12 of the Answer clearly evinces that the Examiner’s
proposed modification of the Kempker cutting tool to make the cutting head
replaceable results in material, formerly part of the handle, and now part of
the replaceable cutting head, cooperating with the overhanging shield to
define a throat limiting access to the cutting blade. The cutting head end of
the Examiner’s sketch of the modified Kempker cutting tool is shown below.

Reproduced above is a sketch prepared by the Examiner, based on
Figure 2 of Kempker, modified as proposed by the Examiner to have a
replaceable cutting head. The sketch shows, with dashed lines, what
Appellants refer to as a hole in the handle, and shows the elongated handle
engagement section of Votolato positioned within the handle hole. Those
features do not extend to the farthest extent of the handle, which is indicative
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that the Examiner proposes that the replaceable cutting head is to have
material that was formerly part of the handle now making up part of the
replaceable cutting head. This material of the replaceable cutting head, in
combination with a shield at the outer end of the blade, defines a first throat
limiting access to the blade, which is identified by the right-most arrow in
the Examiner’s sketch.
In response to Appellants’ argument that such a separating point
would be completely arbitrary, we note that the Examiner includes, next to
the sketch of the modified Kempker device, an inverted image of the cutting
head portion of Figure 2 of Votolato, which shows a similar separation
point, with the base 10a of the cutting head, which will abut the handle when
secured thereto, having a contour that matches that of the handle, in
essentially the same manner as the material in Kempker that the Examiner
proposes to include on the replaceable cutting head, in the modification of
Kempker. We thus do not agree that the Examiner’s positioning of the
separation point is arbitrary, rather, it has a rational underpinning that the
evidence of record supports. Moreover, given that the proposed
modification is to make the head replaceable, and that the throat portion is
what protects a user from accidentally getting cut by the blade, maintaining a
throat portion by including, on the replaceable head, material cooperating
with the overhanging shield to form the throat would preserve the safety
aspects provided by the throat.
Appellants additionally argue that Votolato does not disclose that its
removable blade cartridge includes material that combines with an
overhanging shield to define a first throat. Reply Br. 2. The argument does
not address the basis for the rejection, which does not rely on Votolato as
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teaching that limitation. Appellants also note that Votolato has a moveable
shield over its blade, whereas the claimed invention has the overhanging
shield fixed in place. Id. at 2–3. Again, the Examiner does not rely on
Votolato in any manner involving its specific shield, so the argument is not
germane to the rejection.
None of Appellants’ arguments thus apprise us of any error in the
Examiner’s rejection of claim 25. The rejection is, therefore, sustained.
Appellants present no substantive arguments for any of the remaining
claims, and merely cite to the arguments advanced for claim 25.
Accordingly, the rejection is sustained as well with respect to claims 1, 3, 4,
6, 7, 9, 12, 13, 15–18, 22, 23, and 26–28.

Rejections (ii) and (iii)
Appellants present no arguments specific to these grounds of
rejection. We, therefore, assume that the arguments directed to rejection (i)
are intended to apply to these rejections as well.
For the reasons discussed above, we are not apprised of error in
rejection (i), and rejections (ii) and (iii) directed to claims 2, 12, and 14 are,
therefore, sustained.
DECISION
The rejections of claims 1–4, 6, 7, 9, 12–18, 22, 23, and 25–28 under
35 U.S.C. § 103(a) are 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).

AFFIRMED