Ex Parte Laub

Patent Trial and Appeal Board

Nov 17, 2017

12139075 (P.T.A.B. Nov. 17, 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.
12/139,075 06/13/2008 Mauricio Laub BPMLB0001ML 1673
27939 7590
Philip H. Burrus, IV
Burrus Intellectual Property Law Group LLC
222 12th Street NE
Suite 1803
Atlanta, GA 30309
EXAMINER
DAVIES, SAMUEL ALLEN
ART UNIT PAPER NUMBER
3724
MAIL DATE DELIVERY MODE
11/28/2017 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 MAURICIO LAUB
Appeal 2016-005 8401 2 3
Application 12/139,0752,3
Technology Center 3700
Before NINA L. MEDLOCK, KEVIN W. CHERRY, and
JAMES A. WORTH, Administrative Patent Judges.
WORTH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 2, and 5—21. We have jurisdiction under 35 U.S.C.
§§ 134 and 6(b).
We REVERSE.
1 Our decision refers to the Appellant’s Appeal Brief (“Appeal Br.,” filed
Oct. 22, 2015) and Reply Brief (“Reply Br.,” filed May 17, 2016), and the
Examiner’s Final Office Action (“Final Act.,” mailed Sept. 2, 2015) and
Answer (“Ans.,” mailed May 13, 2016).
2 According to Appellant, the real party in interest is Mauricio Laub
(Appeal Br. 2).
3 This Application has previously been before the Board in a prior appeal. In
that appeal, the Board reversed a previous rejection of the Examiner. In re
Laub, Appeal No. 2012-008016 (PTAB Aug. 26, 2014).
Appeal 2016-005840
Application 12/139,075
Introduction
Appellant’s application relates “to a utensil having a cutting portion
and a spatula portion, such that food can be cut and transported with a single
tool.” (Spec. 12).
Claim 1, reproduced below, is the sole independent claim on appeal
and is representative of the subject matter on appeal:
1. A culinary tool suitable for both cutting and transporting
food, the culinary tool comprising:
a tool member beginning at an asymmetrical base region
and tapering along a major face to a distal tip, the tool member
comprising a curvilinear medial ridge passing from the
asymmetrical base region across the tool member thereby
defining a cutting portion that includes the distal tip and is
disposed along one side of the curvilinear medial ridge, and a
spatula portion disposed along an opposite side of the
curvilinear medial ridge; and
a handle affixed to the asymmetrical base region;
wherein the cutting portion comprises at least thirty
percent of the major face by area, and wherein the spatula
portion, surrounded along an interior of the tool member by the
curvilinear medial ridge, comprises at least forty percent of the
major face by area.
(Appeal Br., Claims App’x.)
Rejections on Appeal
The Examiner maintains, and Appellant appeals, the following
rejections:
I. Claims 1, 2, 5, 6, 9, 10, 19, and 21 stand rejected under
(pre-AIA) 35 U.S.C. § 102(b) as being anticipated by
Tupper (US 2,938,267, iss. May 31, 1960).
II. Claims 1, 2, 7, 9-12, 16, 17, and 19-21 stand rejected
under (pre-AIA) 35 U.S.C. § 103(a) as being
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Appeal 2016-005840
Application 12/139,075
unpatentable over Tupper and Chmela (US 4,423,551,
Jan. 3, 1984).
III. Claim 8 stands rejected under (pre-AIA) 35 U.S.C.
§ 103(a) as being unpatentable over Tupper and Kelly
(US D255,637, iss. July 1, 1980).
IV. Claims 13—15 stand rejected under (pre-AIA) 35 U.S.C.
§ 103(a) as being unpatentable over Tupper.
V. Claims 13—15 stand rejected under (pre-AIA) 35 U.S.C.
§ 103(a) as being unpatentable over Tupper, Chmela, and
Shelton (US 164,880, iss. June 22, 1875).
VI. Claim 18 stands rejected under 35 U.S.C. § 103(a) as
being unpatentable over Tupper, Chmela, and Bowman
(US D418,723, iss. Jan. 11, 2000).
ANALYSIS
Rejection I (Anticipation)
Claim 1
Independent claim 1 recites a tool member tapers to a distal tip, which
is part of the cutting portion, i.e., “a tool member beginning at an
asymmetrical base region and tapering along a major face to a distal tip,. . .
the tool member thereby defining a cutting portion that includes the distal
tip.” The Examiner identifies the distal tip in Tupper as follows:
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Appeal 2016-005840
Application 12/139,075
Figure 1 of Tupper, with annotations by the Examiner, depicts a
combined kitchen utensil
Appellant contends that the Examiner erred in labeling a certain
protuberance as the “distal tip.” App. Br. 14—15. Appellant argues, inter
alia, that Tupper’s tool member does not taper, as recited. Id. We are
persuaded by Appellant’s contention.
The Federal Circuit has explained the use of the article “a” or “an” in
claim drafting as follows:
As a general rule, the words “a” or “an” in a patent claim carry
the meaning of “one or more.” That is particularly true when
those words are used in combination with the open-ended
antecedent “comprising.” However, the question whether “a”
or “an” is treated as singular or plural depends heavily on the
context of its use. The general rule does not apply when the
context clearly evidences that the usage is limited to the
singular.
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Appeal 2016-005840
Application 12/139,075
TiVo, Inc. v. EchoStar Communications Corp., 516 F.3d 1290, 1303 (Fed.
Cir. 2008) (citations omitted). In this case, we determine that the plain and
ordinary meaning of “tapering” in conjunction with the term “a distal tip”
indicates that the entire device narrows to a singular tip. See merriam-
webster.com/dictionary/taper (“1: to become progressively smaller toward
one end”) (last visited, Oct. 28, 2017). The Specification is consistent
therewith.
There are at least three tips at the end of Tupper’s cutting tool. As
such, Tupper does not disclose a device that tapers to a distal tip.
We, therefore, find that Tupper fails to disclose a “distal tip,” as
recited in independent claim 1. We, thus, do not sustain the Examiner’s
rejection under § 102 of independent claim 1 and its dependent claims.
Rejections II—VI (Obviousness)
Claims 1, 2, and 7—21 stand rejected under § 103 as unpatentable over
Tupper, alone or further in view of one or more of Chmela, Kelly, Shelton,
and Bowman. However, the Examiner does not rely on Chmela, Kelly,
Shelton, and Bowman to remedy the deficiency in the rejection of
independent claim 1 under § 102 as anticipated by Tupper. For this reason,
and based on an independent review of the evidence, we find that Chmela,
Kelly, Shelton, and Bowman do not remedy the deficiency in the rejection of
independent claim 1 under § 102 as anticipated by Tupper. To wit, none of
the references discloses a distal tip, which is part of a cutting portion, but
which is on the opposite side from a spatula portion, as recited in
independent claim 1.
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Appeal 2016-005840
Application 12/139,075
For example, the distal tip of Shelton’s tool is inside the curvilinear
ridge. However, claim 1 recites that the spatula portion is on the interior of
the curvilinear ridge. As such, the distal tip of Shelton’s tool is not on the
opposite side of the tool from the spatula portion as recited in independent
claim 1.
Chmela suffers from a similar deficiency as Tupper. The remaining
references do not disclose curvilinear ridges on the interior of the tool.
Accordingly, we do not sustain the Examiner’s rejection of claims 1,
2, and 7—21 under § 103 as unpatentable over Tupper, alone or further in
view of one or more of Chmela, Kelly, Shelton, and Bowman.
DECISION
The Examiner’s decision to reject claims 1, 2, and 5—21 is reversed.
REVERSED
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