Ex Parte Longstreth

Board of Patent Appeals and Interferences

Sep 20, 2006

09025896 (B.P.A.I. Sep. 20, 2006)

1

The opinion in support of the decision being entered today was not written for publication and is not binding
precedent of the Board

UNITED STATES PATENT AND TRADEMARK OFFICE

_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

_______________

Ex parte BILLIE JEAN LONGSTRETH

______________

Appeal No. 2006-2383
Application 09/025,896
_______________

ON BRIEF
_______________

Before OWENS, CRAWFORD and FETTING, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal is from a rejection of claim 7, which is the only pending claim.
THE INVENTION
The appellant claims a cylindrical, non-powered, hand operated cabbage cutter, one
end of which has a closed top covered by a handgrip, and the other end of which is open
and is filed or rubbed down to a smooth, thin, sharp cutting and chopping edge. Claim 7 is
as follows:
Claim 7. I claim a cabbage cutter that is non-powered and hand-operated
for cutting and chopping cabbage comprising a hollow, metal, cylindrical body having
two ends and when placed in a perpendicular position has a top and a bottom that are
connected by a cylindrical wall; the top is closed and has a permanently affixed
Appeal No. 2006-2383
Application 09/025,896

2
handgrip that covers the closed top and extends slightly over onto the wall of the
cabbage cutter, and provides additional strength to the device; the bottom is open
and filed or rubbed down to a smooth, thin, sharp cutting and chopping edge that can
be sharpened if the cutting and chopping edge should become dulled from extensive
use; the device has a
removable protective cover, contiguous with the cutting and chopping edge, that
when placed over the cutting and chopping edge serves as a shield from injury, and
protects the cutting and chopping edge from becoming damaged when the device is
not in use or stored; the device works best when cabbage head is cut in chunks,
placed in a large container, and an operator grasps the handgrip and brings the
cutting and chopping edge down repeatedly (in an up and down motion) onto the
cabbage, cutting the cabbage to desired size.

THE REFERENCES

Bell 893,425 Jul. 14, 1908
Rothje 1,525,514 Feb. 10, 1925
Collins 3,004,340 Oct. 17, 1961
Snyder 3,456,346 Jul. 22, 1969
Seib et al. (Seib) 4,858,317 Aug. 22, 1989
THE REJECTIONS
Claim 7 stands rejected as follows: under 35 U.S.C. § 102(b) as anticipated by Seib,
and under 35 U.S.C. § 103 as obvious over 1) Rothje in view of Snyder, 2) Rothje in view of
Seib, 3) Bell in view of Collins and Snyder, and 4) Bell in view of Collins and Seib.
OPINION
We reverse the aforementioned rejections.
Rejection under 35 U.S.C. § 102(b) over Seib
The appellant’s claim requires that the cylindrical body has a closed top covered by a
permanently affixed handgrip that extends slightly over onto the wall of the cylindrical body.
The examiner relies upon the portion of Seib’s top section 18 between upper edges 38 of
annular cutter 36 (figure 2) as corresponding to the appellant’s closed top (answer, page 7).
Appeal No. 2006-2383
Application 09/025,896

3
That portion is not the top of the annular cutter but, rather, is part of top section 18 into
which the annular cutter is press fitted (col. 2, lines 67-68). The portion of Seib’s top
section 18 between the upper edges 38 of annular cutter 36, which the examiner relies upon
as corresponding to the appellant’s closed top, and the central cutter support 32 and its
surface 34, which the examiner relies upon as corresponding to the appellant’s handgrip
(answer, page 8), are not affixed but, rather, are portions of the same molded top section 18
(col. 2, lines 60-66; col. 3, lines 54-56; figure 2). It is not reasonable to consider the portion
of top section 18 above the upper edges and around the sides of annular cutter 36 to be
part of the handgrip, yet consider the portion of that same top section between the upper
edges of annular cutter 36 to be part of the annular cutter.
We therefore reverse the rejection under 35 U.S.C. § 102(b) over Seib.
Rejection under 35 U.S.C. § 103
over Rothje in view of Snyder
The examiner argues that Rothje discloses handgrip 6 (answer, page 4). The
appellant’s claim requires a handgrip that covers a closed top and extends slightly over onto
a cylindrical wall. Rothje’s handgrip (6), which is affixed to a rotatable disk (5) inside a
grooved ring (2’) at the upper end of Rothje’s ice cream dispenser, does not extend over
onto the wall (figure 1).
The examiner relies upon Snyder for a disclosure of a cylindrical shaped cutter
having a protective cover (40) for protecting a user from a cutting edge (30) (answer, page
4). The cutting edge referred to by the examiner is the blade (30) of a cutter for cutting
circles in materials such as carpeting (col. 2, lines 22-25; col. 3, lines 1-3). A cylindrical
Appeal No. 2006-2383
Application 09/025,896

4
protective cover (40) is placed over the blade (col. 4, lines 1-6; figure 3). The examiner
argues that “it would have been obvious to the ordinary artisan at the time of the instant
invention to provide the device of Rothje with the cover as taught by Snyder in order to
prevent potential harm to the user from the cutting edge” (answer, page 4). In order for a
prima facie case of obviousness to be established, the teachings from the prior art itself
must appear to have suggested the claimed subject matter to one of ordinary skill in the art.
See In re Rinehart, 531 F.2d 1048, 1051, 189 USPQ 143, 147 (CCPA 1976). The mere
fact that the prior art could be modified as proposed by the examiner is not sufficient to
establish a prima facie case of obviousness. See In re Fritch, 972 F.2d 1260, 1266, 23
USPQ2d 1780, 1783 (Fed. Cir. 1992). The examiner has not established that the applied
references themselves would have fairly suggested, to one of ordinary skill in the art, using
a protective cover for the blade of a circle cutter for materials such as carpeting to protect a
user against being cut by the beveled edge (2) (Rothje, page 1, line 53) of an ice cream
dispenser.
For the above reasons we reverse the rejection under 35 U.S.C. § 103 over Rothje in
view of Snyder.
Rejection under 35 U.S.C. § 103
over Rothje in view of Seib
The examiner argues that “it would have been obvious to the ordinary artisan at the
time of the instant invention to provide the device of Rothje with the cover as taught by Seib
et al in order to prevent potential harm to the user from the cutting edge and to facilitate
storage of the device” (answer, pages 4-5). The cover referred to by the examiner is the
Appeal No. 2006-2383
Application 09/025,896

5
bottom section (20) of Seib’s stoma flange cutter (answer, page 3). That section is
configured to be pressed together with the top section and rotated along with the top
section, if necessary, to cut stoma flange (col. 3, lines 34-45). The examiner has not
established that the applied references would have fairly suggested, to one of ordinary skill
in the art, combining the bottom section of a stoma flange cutter with an ice cream
dispenser to protect a user against being cut by the ice cream dispenser’s beveled edge (2)
(Rothje, page 1, line 53).
Accordingly, we reverse the rejection under 35 U.S.C. § 103 over Rothje in view of
Seib.
Rejections under 35 U.S.C. § 103
over Bell in view of Collins and Snyder,
and over Bell in view of Collins and Seib
Bell (lines 9-16; figure 1) and Collins (col. 1, lines 30-40; col. 2, lines 38-65; figure 1)
both disclose cylindrical vegetable cutters. Collins’ cutter has, as its cutting device, a sharp,
cylindrical beveled cutting edge at one end of the cutter (col. 1, lines 35-36). The examiner
argues that it would have been obvious to one of ordinary skill in the art with Snyder’s
protective cover (40) or the bottom portion (20) of Seib’s stoma flange cutter to prevent
potential harm to the user and to facilitate storage of the device (answer, pages 5-6). The
examiner has not established that the applied references themselves would have fairly
suggested, to one of ordinary skill in the art, using, on a vegetable cutter having a cylindrical
cutting edge, Snyder’s cover for protection against cutting by a blade of a cutter for cutting
circles in materials such as carpeting (col. 4, lines 1-6), or the lower portion of Seib’s stoma
flange cutter that is pressed together with the top section and rotated along with the top
Appeal No. 2006-0329
Application 09/839,037

6
section, if necessary, to cut stoma flange (col. 3, lines 34-45). Thus, the record indicates
that the examiner used impermissible hindsight in combining the references. See W.L.
Gore & Associates v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir.
1983), cert. denied, 469 U.S. 851 (1984); In re Rothermel, 276 F.2d 393, 396, 125 USPQ
328, 331 (CCPA 1960).
We therefore reverse the rejections under 35 U.S.C. § 103 over Bell in view of Collins
and either Snyder or Seib.
DECISION
The rejections of claim 7 under 35 U.S.C. § 102(b) over Seib, and under
35 U.S.C. § 103 over 1) Rothje in view of Snyder, 2) Rothje in view of Seib, 3) Bell in view of
Collins and Snyder, and 4) Bell in view of Collins and Seib, are reversed.
REVERSED

TERRY J. OWENS ) Administrative Patent
Judge )
)
)
)
MURRIEL E. CRAWFORD ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS
) AND
) INTERFERENCES
)
ANTON W. FETTING )
Administrative Patent Judge )

Appeal No. 2006-0329
Application 09/839,037

7

TJO/lg

Billie Jean Longstreth
2204 Roseanne Court
Fairborn, OH 45324