Ex Parte Miller

Patent Trial and Appeal Board

Jun 20, 2016

12792250 (P.T.A.B. Jun. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
121792,250 06/02/2010 Jonathan Miller
98679 7590 06/22/2016
Pillsbury Winthrop Shaw Pittman LLP(Stanley B&D)
(Stanley Black & Decker)
P.O.Box 10500
McLean, VA 22102
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
081427-0384668 4360
EXAMINER
GRANO, ERNESTO ARTURIO
ART UNIT PAPER NUMBER
3788
NOTIFICATION DATE DELIVERY MODE
06/22/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
docket_ip@pillsburylaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JONATHAN MILLER
Appeal2014-001657
Application 12/792,250
Technology Center 3700
Before JOHN C. KERINS, MICHAEL L. HOELTER, and JILL D. HILL,
Administrative Patent Judges.
HILL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Jonathan Miller (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner's final decision rejecting claims 1-9, 11-19, and 24. 1 We have
jurisdiction under 35 U.S.C. § 6(b). This case was heard telephonically on
June 9, 2016.
We REVERSE.
1 Claim 10 is canceled, and claims 20-23 are withdrawn from consideration.
Appeal Br., Claims App.
Appeal2014-001657
Application 12/792,250
CLAIMED SUBJECT MATTER
Independent claims 1 and 24 are pending. Independent claim 1,
reproduced below, illustrates the claimed subject matter with key limitation
italicized.
1. Packaging for a ratchet screwdriver, comprising:
a display structure arranged to be mounted for display of
the ratchet screwdriver;
a ratchet portion retaining structure fixed relative to the
display structure, the retaining structure having a size and
shape configured to slidably engage a ratchet portion of the
ratchet screwdriver in a manner that prevents rotation of the
ratchet portion;
a securement portion connected to the display structure
and configured to secure a handle of the screwdriver to the
display structure in a manner that permits the handle of the
screwdriver to be rotated relative to the ratchet portion of the
screwdriver while the ratchet portion of the screwdriver is fixed
from movement by the retaining structure, by encircling a
portion of the handle.
Appeal Br. 11, Claims App.
REJECTIONS
I. Claims 1, 5, 7, 9, and 12-19 stand rejected under 35 U.S.C.
102(b) as anticipated by Kao (US 7,100,777 Bl, iss. Sept. 5, 2006). Ans. 2.
II. Claims 2--4 stand rejected under 35 U.S.C. 103(a) as
unpatentable over Kao and Suter (US 2011/0209584 Al, pub. Sep. 1, 2011).
Ans. 4.
III. Claims 6 and 8 stand rejected under 35 U.S.C. 103(a) as
unpatentable over Kao. Ans. 5.
IV. Claim 24 stands rejected under 35 U.S.C. 103(a) as
unpatentable over Kao and Suter. Ans. 6.
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Appeal2014-001657
Application 12/792,250
OPfNION
The Examiner finds, inter alia, that Kao discloses a ratchet portion
retaining structure 20D having a size and shape configured to engage a
ratchet portion (in Kao, the distal tip) of the screwdriver 60 in a manner that
prevents rotation of the ratchet portion. Ans. 2 (citing Kao, Figs. 8-10).
Referring to Figure 8 of Kao, Appellant argues that Kao' s retaining
portion 20D is shaped to allow a distal end of the screwdriver 60 to pass
through, so that the cylindrical shank of the screwdriver 60 is retained in the
circular opening 221D. Appeal Br. 5. According to Appellant, while Kao's
retaining portion 20D includes notches 222D, Kao's notches are provided to
allow a non-cylindrical head of the screwdriver 60 to pass through while still
facilitating a close encircling of the screwdriver shank by opening 221D. Id.
Kao' s Figures 9 and 10 illustrate that, in use, the display allows the
screwdriver 60 to slide through opening 221D in the retaining portion 20D
until its handle abuts the opening 221 D. Id. Appellant contends that "the
configuration of Kao would allow the handle and the shank of the
screwdriver 60 to freely rotate together." Id.
The Examiner responds that "clearly the screw driver shank opening
221D ... has a flat inner surface that extends to curved portions," and that
"if a ratcheting portion (such as 104 of SUTER) was held within the opening
[221D,] the flat inner surface of the open and the flat surfaces of the
ratcheting portion would prevent movement of the ratcheting portion."
Appellant replies that Kao explicitly states that its "flat end is aligned
with the notches (222A) so as to insert the shank through the opening
(22 lA). Thereafter, the screwdriver (60) is turned with a certain angle to
prevent the screwdriver (60) from easily escaping the opening (221A)."
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Appeal2014-001657
Application 12/792,250
Reply Br. 4; Kao, col. 2, 11. 39--46. Thus, Kao's structure is explicitly
described as permitting/facilitating tool rotation, rather than "preventing
rotation of the ratchet portion" as claimed.
While there may be a moment in time that Kao' s packaging can
prevent rotation of certain inserted tool shafts (e.g., when a flat head screw
driver's distal tip is held within notches 221D of the retaining member 20D),
Kao' s packaging is specifically designed to permit/facilitate tool shaft
rotation. For this reason, the Examiner's finding that Kao discloses the
claimed "ratchet portion retaining structure" is in error, and we do not
sustain the rejections, which are all based on such a finding.
DECISION
We REVERSE the rejection of claims 1, 5, 7, 9, and 12-19 under 35
U.S.C. 102(b) as anticipated by Kao.
We REVERSE the rejection of claims 2--4 under 35 U.S.C. 103(a) as
unpatentable over Kao and Suter.
We REVERSE the rejection of claims 6 and 8 under 35 U.S.C. 103(a)
as unpatentable over Kao.
We REVERSE the rejection of claim 24 under 35 U.S.C. 103(a) as
unpatentable over Kao and Suter.
REVERSED
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