Ex Parte Loibl

Board of Patent Appeals and Interferences

Jul 6, 2010

11057131 (B.P.A.I. Jul. 6, 2010)

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.
11/057,131 02/15/2005 Bernd Loibl 26202.143 7000
28410 7590 07/06/2010
BERENATO & WHITE, LLC
6550 ROCK SPRING DRIVE
SUITE 240
BETHESDA, MD 20817
EXAMINER
LANDRUM, EDWARD F
ART UNIT PAPER NUMBER
3724
MAIL DATE DELIVERY MODE
07/06/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BERND LOIBL
____________

Appeal 2009-007536
Application 11/057,131
Technology Center 3700
____________

Before WIILIAM F. PATE, III, STEFAN STAICOVICI, and
FRED A. SILVERBERG, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

STATEMENT OF THE CASE
Bernd Loibl (Appellant) filed a Request for Rehearing under 35
U.S.C. § 41.52 (hereinafter “Request”) on March 26, 2010 from the decision
of this Board mailed January 26, 2010 (hereinafter “Decision”).
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Application 11/057,131

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The Decision affirmed the rejection of claims 1, 2, and 4-6 under 35 U.S.C.
§ 103(a) as unpatentable over the combined teachings of Blanc, Hsiao, and
Beck.
In the Request Appellant contends that the Board overlooked or
misapprehended: (1) the issue of whether the teachings of Beck are
analogous prior art (Request 1-3); (2) the issue of whether the combined
teachings “arrive at the claimed invention” (Request 3-5); and (3) the issue
of whether the submitted evidence of commercial success, as represented by
the Tremmel Declaration, outweighs the evidence of obviousness (Request
5-9).

Item (1)
It is well established that a prior art reference is analogous if it is (1)
within the field of the inventor’s endeavor or (2) reasonably pertinent to the
problem with which the inventor was concerned. See In re Oetiker, 977
F.2d 1443, 1447 (Fed. Cir. 1992). See also In re Icon Health & Fitness,
Inc., 496 F.3d 1374, 1379-80 (Fed. Cir. 2007).
Appellant argues that Beck is not analogous prior art because the
“Board has unduly expanded the scope of the particular problem with which
Appellant was involved to encompass problems beyond those pertinent to
[the] invention.” Request 2. Specifically, Appellant defines the problem to
be solved as “providing a single cutting unit having multiple cutting devices
that are redundant in their purpose.” Id. Appellant then argues that, in
contrast to the inventor’s problem, Beck is not concerned with providing
“redundant ‘tools’ designed to provide different options for performing the
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same task” because the tools of Beck are not redundant, that is, “Beck’s
device does not provide multiple tools for cutting.” Request 3.
As noted on Page 7 of our Decision, the general problem facing
Appellant was “combining different kinds of tools (a guillotine cutter and a
rotary cutter) into a single unit.” Although we appreciate that the guillotine
cutter and the rotary cutter of Appellant’s invention are both cutters that
perform the task of cutting in different manners, nonetheless, they constitute
different kinds of tools because each type of cutter is used for cutting a
different type of object. For example, a guillotine cutter is used to trim sheet
stacks, whereas a rotary cutter is used for cutting off margins having
minimal excess lengths. Spec. 2, ll. 25-28.
Furthermore, as Appellant noted on page 6 of the Appeal Brief, Beck
in fact does disclose a unit tool having two clamping devices, pliers (channel
lock 24, 25) and a wrench (crescent wrench 20). See also, Beck, col. 3, ll.
27-28 and 40-41 and fig. 1. Hence, Beck discloses “redundant” tools that
perform the same task, namely, gripping, in a different manner. In other
words, Beck’s device includes “redundant” tools that complement each
other’s strengths and weaknesses by performing the same task.
Accordingly, the disclosure of Beck addresses Appellant’s problem of
combining different kinds of tools into a single unit, and as such constitutes
analogous art.

Item (2)
Appellant argues that a person of ordinary skill in the art would not
have been led by the teachings of Blanc, Hsiao, and Beck to the claimed
cutter (multiple cutting devices that are redundant in their purpose), because
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Beck discloses combining a plurality of different tools that perform a
plurality of purposes, i.e., gripping, tightening, cutting, smoothing, etc.
Request 4. According to Appellant, a person of ordinary skill in the art,
when looking at the teachings of Beck, would have modified Blanc and
Hsiao to add tools that perform a multiplicity of other purposes/tasks related
to cutting, perhaps such as a hole punch or a stapler.” Request 4-5.
At the outset, we disagree with Appellant’s arguments because
obviousness does not require that all of the features of the secondary
reference be bodily incorporated into the primary reference In re Keller, 642
F.2d 413, 425 (CCPA 1981). The artisan is not compelled to blindly follow
the teaching of one prior art reference over the other without the exercise of
independent judgment. Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881,
889 (Fed. Cir. 1984).
We further disagree with Appellant’s argument because it is not
supported by the facts in this case. As noted above, the crescent wrench 20
and the channel lock 24, 25 of Beck’s device constitute “redundant” tools
that complement each other’s strengths and weaknesses by performing the
same task, i.e., gripping. See Beck, col. 3, ll. 27-28 and 40-41 and fig. 1.
Hence, in contrast to Appellant’s position, Beck does disclose “redundant”
tools that perform the same task in a different manner.
Appellant further argues that the combination device of Blanc and
Hsiao “does not per se modify or improve either of the cutting devices.”
Request 5. However, as noted on Page 9 of our Decision, the combination
device of Blanc and Hsiao increases the overall utility of each of the cutting
devices of Blanc and Hsiao. In other words, the combination device of
Blanc and Hsiao can trim sheet stacks and cut off margins having minimal
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excess lengths, and as such constitutes an improvement over each of Blanc’s
or Hsiao’s cutter.
For the foregoing reasons, we adhere to our position that the
combined teachings of Blanc, Hsiao, and Beck disclose Appellant’s claimed
invention, that is, “arrive at the claimed invention.”

Issue (3)
Appellant notes that the Tremmel Declaration was submitted as
evidence of commercial success. Request 5. Specifically, Appellant argues
that although gross sales figures absent evidence of market share constitutes
a weak showing of commercial success, MPEP § 716.03(b) further states
that:
[T]here are alternative ways to place gross sales
into context meaningful for determining
commercial success. For example, gross sales
figures can show commercial success based on
evidence ‘as to time period during which the
product was sold, or as to what sales would
normally be expected in the market. Ex parte
Standish, 10 USPQ2d 1454 (Bd. Pat. App. & Inter.
1988).

Request 6. Emphasis added.
Hence, according to Appellant, because the Tremmel Declaration
breaks down the sales figures into annual sales by retail price and units sold,
“[t]hese figures are reported in a manner consistent with Board precedent,
i.e., In re Standish, and constitute ipso facto evidence of commercial
success.” Id.
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At the outset, we note that the MPEP does not represent binding
authority. Furthermore, the passage from Ex parte Standish from which
Appellant cites, appears to have been taken out of context. Specifically, the
Board noted that:
As indicia of nonobviousness, the appellant has
made general allegations that his claimed lure
enjoys commercial success; see item 4 on pages 9
and 10 of the main brief. However, the only
evidence of record concerning commercial success
comprises a statement by the inventor in the
§ 1.131 affidavit that more than 5,000 lures
"constructed according to the disclosure and claims
of my patent application" have been sold. The
affidavit statement does not reflect the time period
during which the lures were sold or the average
number of product sales per unit of time which
would normally be expected in the market place
under consideration.

Ex parte Standish, 10 USPQ2d 1454, 1458 (Bd. Pat. App. & Inter. 1988).
As such, in Ex parte Standish the Board found that Appellant
provided a gross sales figure of 5,000 lures as evidence of commercial
success without providing additional evidence such as the time period
during which the lures were sold or the average number of product sales per
unit of time which would normally be expected in the market place under
consideration. Hence, it is our opinion that the Board’s position in Ex parte
Standish is not that yearly sales constitute an alternative way of providing
evidence of commercial success, as Appellant contends, but rather that in
addition to gross sales figures, other evidence is required to demonstrate
commercial success, such as the time during which the sales occurred or the
average number of sales per unit time expected in the market place. We
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could not find any portion in Ex parte Standish that stands for the
proposition that a showing of gross sales figures and the time period during
which the sales occurred constitutes sufficient evidence of commercial
success, as Appellant would have us believe.
As noted on Page 9 of our Decision, it is well established that
evidence of gross sales figures without evidence as to whether this
represents a substantial share of any definable market, provides a weak
showing of commercial success. In re Huang, 100 F.3d 135, 139-40 (Fed.
Cir. 1996). Although we appreciate Appellant’s position that the annual sale
figures provided show a tripling of sales, nonetheless, without knowing the
market share occupied by Appellant’s claimed device, a tripling of sales
does not indicate whether the sales represent a “substantial” share of the
market.
Appellant further argues that the Board’s Decision did not give weight
to the fact that Appellant’s claimed device is sold through prominent
vendors such as Staples, Costco, AC Moore, Roberts, QVC, and ALDI.
Request 7-8. However, this assertion is insufficient to establish evidence of
commercial success because relationships between vendors, distributors, and
manufacturers can be based on business decisions extraneous to the merits of
the claimed invention.
To show nexus between the sales and the unique characteristics of the
claimed invention, Appellant points to a magazine article from Better Homes
and Gardens magazine, which states that, “it’s both productive and
convenient to have as many cutting options as you can from a single
trimmer.” Request 8. However, Appellant has taken the citation out of
context. Specifically, the same article also recites that:
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The Purple Cows 2-in-1 cutter caught my eye
because the guillotine and rotary cutters are
separable, so I can take the smaller trimmer when
I’m on the go. And the guillotine cutter has a
safety blade that won’t cut fingers and never needs
sharpening.”

Tremmel Declaration, Exhibit C.
Accordingly, in addition to the dual guillotine-rotary cutter aspect of
Appellant’s invention, this article showcases other features of Appellant’s
device. As such, it is unclear whether the writer of the article was impressed
by the dual guillotine-rotary cutter aspect or the other features described.
Finally, Appellant argues that the Board erred in giving little weight to
the licensing of the claimed device. Appellant further argues that in contrast
to Iron Grip Barbell Co., Inc. v. USA Sports, Inc., 392 F.3d 1317, 1324 (Fed.
Cir. 2004), where the Court held that licenses were not evidence of
commercial success because the terms of the licenses were not explained, in
this case the most relevant terms of the licensing agreements have been
revealed in that the licenses are royalty bearing. Request 8-9. However, as
explained on Page 11 of our Decision, Appellant has not provided any
evidence to show a nexus between the merits of the claimed invention and
the licenses granted nor has explained the circumstances under which the
licenses were granted. As noted by the Court in Iron Grip, “it is often
‘cheaper to take licenses than to defend infringement suits.’” Id (citing to
EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 908 (Fed. Cir. 1985)).
Hence, although the licensing may be royalty bearing, it is unclear whether
the licenses were granted because of the merits of Appellant’s claimed
invention or other circumstances.
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CONCLUSION
In light of the above, Appellant’s Request fails to persuade us that we
erred in affirming the rejection of claims 1, 2, and 4-6 under 35 U.S.C.
§ 103(a) as unpatentable over the combined teachings of Blanc, Hsiao, and
Beck. Therefore, we have granted Appellant’s Request to the extent that we
have reconsidered our Decision in light of the points raised therein, but have
denied the Request with respect to making any modification to the Decision.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

DENIED

Klh

BERENATO & WHITE, LLC
6550 ROCK SPRING DRIVE, SUITE 240
BETHESDA, MD 20817