Ex Parte Murray

Patent Trial and Appeal Board

Jun 3, 2013

11729359 (P.T.A.B. Jun. 3, 2013)

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.
11/729,359 03/28/2007 Scott A. Murray KCTools-PAUS0002C 5458
58937 7590 06/03/2013
WOLFF LAW OFFICE, PLLC
1943 Evans Road
Cary, NC 27513
EXAMINER
SCRUGGS, ROBERT J
ART UNIT PAPER NUMBER
3723
MAIL DATE DELIVERY MODE
06/03/2013 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 SCOTT A. MURRAY
____________

Appeal 2011-004625
Application 11/729,359
Technology Center 3700
____________

Before LINDA E. HORNER, PATRICK R. SCANLON, and
BARRY L. GROSSMAN, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Scott A. Murray (Appellant) seeks our review under 35 U.S.C. § 134
of the Examiner’s decision rejecting claims 1-20, which are all of the
pending claims. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
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THE INVENTION
Appellant’s claimed invention relates to “methods and various
apparatuses for high quality, durable and in some cases lightweight building
tools.” Spec., para. [0002]. Claims 1, 12, and 19 are independent. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. A construction trowel for preparing, applying, and/or
finishing various cements, concretes, mastics and/or muds to
various building surfaces, comprising:
a handle;
a blade made of high carbon steel; and
a tang connected to the handle and blade and made, at
least in part, of a metal including magnesium so that the trowel
may be made lightweight.

THE EVIDENCE
The Examiner relies upon the following evidence:
McKissick1 US 1,055,406 Mar. 11, 1913
Severance US 3,045,509 Jul. 24, 1962
Laurenti US 3,869,792 Mar. 11, 1975
Kelsay ‘941 US 5,446,941 Sep. 5, 1995
Kelsay US 5,713,096 Feb. 3, 1998
Machesky US 2002/0100135 A1 Aug. 1, 2002
Bardman US 2003/0018103 A1 Jan. 23, 2003
Hazard US 6,880,198 B1 Apr. 19, 2005
J.C. Tan & M.J. Tan, Superplastic Magnesium Alloys for Sporting
and Leisure Equipments, Proceedings of a Symposium on Materials
and Science in Sports 96-104 (2001) (“Tan”).
Appellants rely upon a Declaration Under 37 C.F.R. § 1.132 by Terry
E. Williams, dated January 22, 2010 (“Williams Decl.”).

1 Although the first named inventor on this patent is Mason, the Examiner
and Appellant refer to this reference as “McKissick.” We refer to it as
McKissick for consistency.
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THE REJECTIONS
Appellant seeks review of the following rejections:
1. Claims 1-8, 12, 13, 15, 16, and 19 under 35 U.S.C. § 103(a) as
unpatentable over Kelsay, Hazard, Severance, and Tan;
2. Claims 9-11 under 35 U.S.C. § 103(a) as unpatentable over Kelsay,
Hazard, Severance, Tan, and McKissick;
3. Claim 14 under 35 U.S.C. § 103(a) as unpatentable over Kelsay,
Hazard, Severance, Tan, and Machesky;
4. Claim 17 under 35 U.S.C. § 103(a) as unpatentable over Kelsay,
Hazard, Severance, Tan, and Laurenti;
5. Claim 18 under 35 U.S.C. § 103(a) as unpatentable over Kelsay,
Hazard, Severance, Tan, and Kelsay ‘941; and
6. Claim 20 under 35 U.S.C. § 103(a) as unpatentable over Kelsay,
Hazard, Severance, Tan, and Bardman.
ISSUE
The Examiner found that Kelsay discloses a trowel comprising a
handle, metal blade, and tang connecting the handle to the blade, but fails to
disclose the blade formed from high carbon steel and a tang formed from a
metal including magnesium. Ans. 5.2 The Examiner found that Hazard
discloses a technique for forming blade portions of a trowel from high
carbon steel, and it would have been obvious to use the known technique for
the blade of Kelsay’s trowel. Id. The Examiner also found that Severance
teaches that “a tang (16) can be formed from any type of metal (i.e.
aluminum or magnesium alloy)” and that Tan teaches “it is old and well

2 References to “Ans.” herein refer to the Supplemental Examiner’s Answer
dated August 31, 2010.
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known in the art [to] use a known material (i.e. aluminum and magnesium
alloy) for providing a lightweight device (i.e. sporting, leisure devices).” Id.
at 5-6. More particularly, “the [E]xaminer’s position is that activities done
at home (i.e. applying material to wall or floor etc.) can be considered a
leisure activity and requires leisure equipment (i.e. a trowel).” See, e.g.,
Ans. 23-24. The Examiner determined that “[i]t would have been obvious to
one of ordinary skill in the art to modify the device, of Kelsay et al., with the
known technique of forming a tang from aluminum or magnesium alloy, as
taught by Severance et al. and Tan et al., and the results would have been
predictable . . . [viz.] one could provide a device that is lighter in weight.”
Id. at 6.
Appellant presents arguments and declaration evidence in response to
the Examiner’s rejections in an effort to show that a person of ordinary skill
in the art would not have found it predictable that magnesium would be
suitable for use in a trowel tang based on the known use of magnesium for
the tang of a hand file, as taught by Severance, and the known use of rolled
sheets of magnesium alloy for the manufacture of sporting and leisure
equipment, as taught by Tan.
The issue presented by this appeal is whether the weight of the
evidence and argument presented by Appellant of non-obviousness
outweighs the weight of the evidence and reasoning relied upon by the
Examiner to show obviousness.
PRINCIPLES OF LAW
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
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likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). “[A] court must
ask whether the improvement is more than the predictable use of prior art
elements according to their established functions.” Id.
ANALYSIS
Rejection (1)
Independent claims 1 and 19 are directed to a trowel having a tang
connected to the handle and blade and made, at least in part, of a material
including magnesium. Independent claim 12 is also directed to a trowel
having a means for connecting the handle to the blade where the means for
connecting is made of a magnesium alloy material.
We agree with Appellant (App. Br. 16) that the Examiner has not
provided adequate reasoning based on rational underpinnings to explain why
one having ordinary skill in the art would have been led by the teachings of
Severance and Tan to include magnesium in a tang of a trowel. We agree
with Appellant that a preponderance of the evidence fails to show a
reasonable expectation of success or predictability in using magnesium in a
trowel tang. Reply Br. 19.3 The Williams Declaration supports Appellant’s
argument that one of ordinary skill in the art would not have had a
reasonable expectation of success in incorporating magnesium into a trowel
tang. In particular, Mr. Williams declares:

3 Reference herein to “Reply Br.” refers to the Reply Brief dated July 1,
2010.
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THAT based on my years of experience in the design,
manufacturing, and marketing of building tools including
building trowels such as concrete trowels, I do not believe that
one skilled in the art would have designed, developed, or
manufactured a trowel with a tang including magnesium
(including magnesium compounds and/or alloys) and a blade
made of a different material such as steel, stainless steel, or
high carbon steel because of, for example, cracking, breakage
and lack of durability of a building trowel tang made with
magnesium, the caustic and flammability of magnesium, the
increased cost in materials and manufacturing for using
magnesium, the difficulty of manufacturing products of
magnesium, and the poor workability of magnesium[.]
Williams Decl. at 3 (first full paragraph).
With regard to Tan, Appellant argues that Tan addresses
improvements to the processing of magnesium alloys used for sporting and
leisure equipment such as golf clubs, rackets, racing bikes, and vaulting
poles, which are exposed to different levels of stress and different
environments than a trowel. App. Br. 15; see also Williams Decl. at 3-4
(carryover paragraph). Appellant argues that the fact that magnesium was
known in the art to be advantageous for its lightweight properties is not
sufficient reason alone to use magnesium for the tang of a trowel because
one of ordinary skill in the art would have also known that magnesium
exhibits poor formability. App. Br. 15; Reply Br. 4, 13. Appellant further
notes that Tan relates to improving the formability of rolled magnesium
alloy sheets and that “the structure of the sporting and leisure equipment
using magnesium rolled sheets in Tan et al. is completely different and
unrelated to the structure of [a] ‘trowel tang.’” Reply Br. 12.
We find insufficient disclosure in Tan to support the Examiner’s
position that the leisure activities discussed in Tan suggest use of
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magnesium alloy in a trowel tang. While Tan teaches that magnesium is
lightweight and has high torsion strain resistance and toughness, Tan
discloses that such properties “are highly sought after for various sporting
and leisure equipments such as golf clubs, rackets, racing bikes, vaulting
poles etc.” Tan at p. 43. Tan does not support, and the Examiner does not
provide evidence tending to show, that such properties of high torsion strain
resistance and toughness are properties sought after for trowels. Further, as
noted by Appellant, Tan discloses that “wrought magnesium alloys exhibit
poor formability at room temperature hence limiting its wide usage.” Id.
Tan discusses research “aimed at improving the formability of rolled AZ31
(Mg-3AL-1Zn) sheets” to render such sheets suitable for use in
manufacturing the above referenced sporting and leisure equipments. Id. As
such, the Examiner has failed to adequately explain how the teaching in Tan
of how to improve formability of rolled magnesium alloy sheets for
manufacturing leisure and sporting equipment would have suggested to one
of ordinary skill in the art to use magnesium alloy in the manufacture of a
trowel tang.
With regard to Severance, Appellant argues that Severance “discusses
the use of magnesium alloy specifically for hand files” and that the
Examiner has engaged in speculation as to suitability of magnesium alloy for
use in trowels. App. Br. 18. More specifically, Appellant argues that “the
use and application of a trowel and a file are completely different, and that
each would experience completely different stresses and strains” and thus
“the fact that a particular material may be used to successfully make a
simple file tang structure, does not result in that material being viable for
making a more complex trowel tang structure.” Reply Br. 10; Williams
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Decl. at 3 (first full paragraph). The Examiner fails to adequately address
this argument or the declaration evidence tending to show that one of
ordinary skill in the art would have expected a modification to Kelsay’s
trowel tang to include magnesium, when connected to a high carbon steel
blade, to result in cracking, breakage, and lack of durability. We appreciate
Appellant’s argument that Kelsay’s trowel tang differs in structure and
stresses encountered during use in important aspects as compared to the tang
of Severance’s hand file (Reply Br. 4-11), such that the Examiner has failed
to adequately establish a reasonable expectation of success in using
magnesium for Kelsay’s trowel tang in light of Severance’s use of
magnesium for a hand file tang.
For these reasons, we find that the weight of the evidence and
argument presented by Appellant of non-obviousness outweighs the
evidence and reasoning provided by the Examiner in support of obviousness.
For this reason, we cannot sustain Rejection (1).
Rejections (2) through (6)
Rejections 2 through 6 are based upon the same base combination of
Kelsay, Hazard, Severance and Tan as set forth in Rejection (1) and thus
suffer from the same shortcomings as discussed supra.
DECISION
We REVERSE the decision of the Examiner to reject claims 1-20.

REVERSED

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