Ex Parte Morris

Board of Patent Appeals and Interferences

Jan 29, 2003

09243882 (B.P.A.I. Jan. 29, 2003)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte KENNETH A. MORRIS
____________
Appeal No. 2002-0995
Application No. 09/243,882
____________
ON BRIEF
____________
Before MCQUADE, NASE and BAHR, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1-6,
which are all of the claims pending in this application.
We REVERSE.
BACKGROUND
The appellant's invention relates to a pizza cutter. Claim 1, the sole
independent claim on appeal, reads as follows:
1. A pizza cutter for cutting a pizza into uniform, equal-sized
slices, said pizza cutter comprising:
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Application No. 09/243,882
Page 2
a frame having a top surface opposite a bottom
surface, said frame having a circular pizza receiving
aperture bored therethrough, providing fluid connectivity
between said top surface and said bottom surface;
a plurality of cutting blades having a cutting edge
opposite a top edge and a frame end opposite a center end,
said cutting blades attached to said frame at said frame end
and equally spaced radially around said pizza receiving
aperture, said cutting blades spanning said pizza receiving
aperture, converging at the center thereof and positioned
such that said cutting edge lies flush with said bottom
surface; and
fastening means for adjoining and supporting said
center ends.
The examiner relied upon the following prior art references of record in rejecting
the appealed claims:
Deutsch 2,003,253 May 28, 1935
Langville 2,971,549 Feb. 14, 1961
The following rejections are before us for review.
Claims 1, 2 and 4-6 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Langville.
Claim 3 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over
Langville in view of Deutsch.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the above-noted rejections, we make reference to the rejection
mailed November 29, 1999, the final rejection mailed May 23, 2001 and the answer
Appeal No. 2002-0995
Application No. 09/243,882
Page 3
1 The Manual of Patent Examining Procedure (MPEP) § 1208 expressly provides that
incorporation by reference in an examiner’s answer may be made only to a single other action. The
answer in this case, however, refers to the Office actions of Paper Nos. 12 and 17 and, thus, is not in
compliance with the MPEP. Furthermore, the Office action of Paper No. 17 refers to Paper No. 12, which
refers to the Office action of Paper No. 5, which refers to the Office action of Paper No. 3. Such a chain of
incorporation by reference in an examiner’s answer is clearly inappropriate.
(Paper Nos. 3, 17 and 20)1 for the examiner's complete reasoning in support of the
rejections and to the brief (Paper No. 19) for the appellant's arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the examiner. For the reasons set
forth below, we cannot sustain either of the examiner’s rejections.
As for the rejection of claims 1, 2 and 4-6 as being anticipated by Langville, we
note that independent claim 1 calls for a plurality of cutting blades “converging at the
center [of said pizza receiving aperture].” The cutting blades 12 of Langville’s coring
device, on the other hand, while converging toward the center of the aperture formed
within the ring 16 thereof, do not converge at the center of the aperture. Rather, each
pair of adjacent blades 12 is connected by a yoke section 13 and joined to a center
ferrule 10, at a significant distance from the center, so as to form a coring ring which
cuts out the core of a fruit.
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Application No. 09/243,882
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2 Anticipation is established only when a single prior art reference discloses, expressly or under
the principles of inherency, each and every element of a claimed invention. RCA Corp. v. Applied Digital
Data Sys., Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir. 1984). In other words, there must be
no difference between the claimed invention and the reference disclosure, as viewed by a person of
ordinary skill in the field of the invention. Scripps Clinic & Research Found. v. Genentech Inc., 927 F.2d
1565, 1576, 18 USPQ2d 1001, 1010 (Fed. Cir. 1991).
3 It is of course well established that, where the proposed modification would render the prior art
invention being modified unsatisfactory for its intended purpose, the proposed modification would not have
been obvious. See Tec Air Inc. v. Denso Mfg. Michigan Inc., 192 F.3d 1353, 1360, 52 USPQ2d 1294,
1298 (Fed. Cir. 1999); In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984).
In that Langville does not disclose each and every limitation of claim 1, the
subject matter of claim 1 is not anticipated2 by Langville. Accordingly, we cannot
sustain the examiner’s rejection of claim 1 or claims 2 and 4-6 which depend therefrom.
We turn now to the examiner’s rejection of claim 3 as being unpatentable over
Langville in view of Deutsch. Deutsch discloses a pie cutter comprising a plurality of
blades 7 which substantially converge at the center of the cutter and are held together
by a blade holder including an upper disk 1 and a lower disc 2 secured together by
screws 4. In that Langville’s coring device is provided with its center ferrule 10 so as to
form a coring element to cut out the core of a fruit, it is not apparent to us how Deutsch
provides any incentive for one of ordinary skill in the art to modify Langville’s device so
as to eliminate this center ferrule and provide cutting blades converging at the center
thereof. To do so would appear to render Langville’s device unsuitable for its intended
purpose and, thus, would not have been obvious.3 Accordingly, we conclude that the
additional teachings of Deutsch do not remedy the above-noted deficiency of Langville.
We thus cannot sustain the rejection of claim 3, which depends from claim 1, as being
unpatentable over Langville in view of Deutsch.
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CONCLUSION
To summarize, the decision of the examiner to reject claims 1, 2 and 4-6 under
35 U.S.C. § 102(b) and claim 3 under 35 U.S.C. § 103(a) is reversed.
REVERSED
JOHN P. MCQUADE )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
Appeal No. 2002-0995
Application No. 09/243,882
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