Ex Parte Logan

Patent Trial and Appeal Board

Apr 15, 2015

12255353 (P.T.A.B. Apr. 15, 2015)

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.
12/255,353 10/21/2008 Michael A. Logan GCS0005-00US 3195
112006 7590 04/15/2015
Graham Curtin, P.A.
4 Headquarters Plaza
Morristown, NJ 07962
EXAMINER
ALEXANDER, MELANIE P
ART UNIT PAPER NUMBER
3727
MAIL DATE DELIVERY MODE
04/15/2015 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 MICHAEL A. LOGAN
____________________

Appeal 2013-002601
Application 12/255,353
Technology Center 3700
____________________

Before: JENNIFER D. BAHR, LYNNE H. BROWNE, and
MICHAEL L. WOODS, Administrative Patent Judges.

BROWNE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Michael A. Logan (Appellant) appeals under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claims 1–7, 9, and 23–26. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

CLAIMED SUBJECT MATTER
The claims are directed to an automobile rim hammer. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
Appeal 2013-002601
Application 12/255,353
1. An automobile rim hammer, comprising:
a head with a cylindrical surface between a first end and
a second end including a homogeneous mixture of metals, the
metals comprising:
between 0.005% and 25% aluminum by weight;
between 0.005% and 10% antimony by weight;
and
between 75% and 99.99% lead by weight;
a shaft having a first end and a second end, the first end
of the shaft being affixed to the first end of the head, the shaft
being adapted to support the weight of the head;
wherein the hammer weights between 10 and 12 pounds;
wherein the cylinder has a diameter in the range of about
5 inches to about 6 inches: and
wherein the automobile rim hammer is adapted to chip
away during removal of a dent in an automobile rim.
Br. 13.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Hill
Stoneburner
US 3,543,715
US 3,930,525
Dec. 1, 1970
Jan. 6, 1976

REJECTIONS
I. Claims 5–7 stand rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
II. Claims 1–7, 9, and 23–26 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Stoneburner and Hill.

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Application 12/255,353
OPINION
Rejection I — Written Description
The Examiner determines that:
In claim 5, “between about 0.01% and about 25%
aluminum by weight” constitutes new matter unsupported by
the original disclosure. In claim 6, “between about 75% and
99% lead by weight” constitutes new matter unsupported by the
original disclosure. In claim 7, “between about 0.01% and
about 10% antimony by weight” constitutes new matter
unsupported by the original disclosure.
Final Act. 2 (emphasis omitted).
Appellant notes that claims 5–7 narrow the ranges claimed in
independent claim 1. See Br. 10–11. Appellant argues that “[t]he narrowing
of ranges from a more broadly disclosed range is permissible.” Id. at 11
(citing MPEP § 2163.05; In re Wertheim, 541 F.2d 257 (CCPA 1976)).
In response to this argument, the Examiner states, “Each case will be
examined on its own merits.” Ans. 8. The Examiner’s statement is not
responsive to the argument raise by Appellant.
The written descriptive support inquiry is “a question of fact,” and
“determining whether a patent complies with the written description
requirement will necessarily vary depending on the context.” Ariad
Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
banc) (citations omitted). “Specifically, the level of detail required to satisfy
the written description requirement varies depending on the nature and scope
of the claims and on the complexity and predictability of the relevant
technology.” Id. (citation omitted). There is no per se rule that a broader
range disclosed in the written description will always support a narrower
range recited in a claim. That being said, when the original written
description describes something more broadly than what is claimed, the
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Application 12/255,353
burden is on the Examiner to provide convincing reasoning or evidence
showing why the broader disclosure does not provide support for the
narrower limitation of the claim. See In re Wertheim, 541 F.2d at 263−65
(holding that when the claimed range is outside the range disclosed in the
original specification, the PTO need only point out that fact to support a
written description rejection, but when the claimed range is subsumed within
a range disclosed in the original specification, the PTO must present a
sufficient reason to doubt that the broader described range does not also
describe the somewhat narrower range.)
The Examiner’s rejection as set forth in the Final Action consists of
three conclusory sentences. The Examiner fails to present any reasoning or
evidence showing why the broader range described in the Specification does
not also describe the somewhat narrower ranges claimed. As set forth in
Ariad, there are a number of factors for evaluating the adequacy of the
disclosure when analyzing the written descriptive support question. They
include “the existing knowledge in the particular field, the extent and
content of the prior art, the maturity of the science or technology, [and] the
predictability of the aspect at issue.” Ariad, 598 F.3d at 1351 (quoting
Capon v. Eshhar, 418 F.3d 1349, 1359 (Fed.Cir.2005)). The Examiner does
not discuss any of these factors.
For these reasons, we do not sustain the Examiner’s rejection of
claims 5–7 under 35 U.S.C. § 112, first paragraph.
Rejection II — Obviousness
Independent claim 1 requires “[a]n automobile rim hammer,
comprising: a head . . . including a homogeneous mixture of metals, the
metals comprising: between 0.005% and 25% aluminum by weight; between
0.005% and 10% antimony by weight; and between 75% and 99.99% lead
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Application 12/255,353
by weight.” Br. 13. As an initial matter, we note that Appellant and the
Examiner agree that “pure” lead includes “impurities such as aluminum at
0.0005% and antimony at 0.001 %.” Final Act. at 2–3; see also Br. 7.
In addition to finding that “pure” lead contains impurities of
aluminum and antimony, as discussed supra, the Examiner finds that “[i]t is
known in the art to add various elements to lead (Pb) to prevent shortening
the life of the relatively soft material, to lighten the weight of the material or
to provide other known characteristics.” Final Act. 3 (citing Stoneburner,
col. 3, ll. 11–25)(“The head 14 is made of lead which does not need to be of
high purity and indeed the material for the hammer head can be conveniently
obtained economically as scrap lead and various alloys or mixtures
thereof.”). The Examiner states that “[u]sing antimony is known [to]
strengthen lead and using aluminum is known [to] form a lighter tool. The
higher the percentage of the antimony, the stronger/harder the lead will be
and the higher the percentage of the aluminum, the lighter the lead will be.”
Id. The Examiner reasons that “it would have been obvious to try various
combinations of lead with elements in various amounts with a reasonable
expectation of success.” Id. The Examiner further opines that:
it would have been obvious to one having ordinary skill in the
art to form the tool head of Stoneburner with about 10%
aluminum by weight as it would have been obvious to try such
an amount with the expected result of forming a lighter hammer
head. It would have been obvious to one having ordinary skill
in the art to form the tool head of Stoneburner with various
amounts of antimony by weight, such as 10%, as it would have
been obvious to try such an amount with the expected result of
forming a stronger/harder hammer head. It would have been
obvious to one having ordinary skill in the art to form the tool
head of Stoneburner with various amounts of lead by weight,
including 75-99%, depending upon the weight and strength
desired.
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Id.
The Examiner’s reasoning is flawed. First, the fact that “pure” lead
contains “impurities” of aluminum and antimony is not pertinent to the
question of whether or not it would be obvious to one of skill in the art to make
a head of an automobile rim hammer from a mixture of metals including lead,
aluminum, and antimony. Second, Stoneburner’s broad teaching of “scrap lead
and various alloys or mixtures thereof” would not necessarily lead one of
ordinary skill to a mixture of lead, aluminum, and antimony, as Stoneburner
does not specify the content of the “various alloys or mixtures” described.
To the extent that the Examiner’s statements about the use of antimony
to increase the strength of the hammer head and the use of aluminum to
decrease the weight of the hammer head (Final Act. 3) are an attempt to
characterize antimony and aluminum as result-effective variables, the
optimization of which would be obvious to one of skill in the art, the Examiner
fails to make the requisite findings to support this position. Furthermore, the
Examiner’s speculation that it would be obvious to try a mixture of 10%
aluminum, 10% antimony, and 75%–99% lead is likewise without factual
support.
The rejection does not rely on Hill to cure these deficiencies in
Stoneburner. Thus, we do not sustain the Examiner’s decision rejecting
independent claim 1, and dependent claims 2–7, 9, and 23–26 as unpatentable
over the combined teachings of Stoneburner and Hill.

DECISION
The Examiner’s rejections of claims 1–7, 9, and 23–26 are REVERSED.

REVERSED
llw
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