Ex Parte Onion

Board of Patent Appeals and Interferences

Sep 10, 2009

11046196 (B.P.A.I. Sep. 10, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte KENNETH J. ONION
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Appeal 2009-003499
Application 11/046,196
Technology Center 3700
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Decided: September 10, 2009
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Before JENNIFER D. BAHR, STEVEN D.A. McCARTHY
and MICHAEL W. O’NEILL, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE 1
The Appellant appeals under 35 U.S.C. § 134 (2002) from the 2
Examiner’s decision finally rejecting claims 1, 4-6, 8, 12, 13 and 30 under 3
35 U.S.C. § 102(b) (2002) as being anticipated by Onion (US 6,378,214 B1, 4
issued Apr. 30, 2002); finally rejecting claims 2 and 3 under 35 U.S.C. 5
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§ 103(a) (2002) as being unpatentable over Onion and McHenry (US 1
6,438,848 B1, issued Aug. 27, 2002); and finally rejecting claims 9, 10, 14, 2
20 and 22 under § 103(a) as being unpatentable over Onion and Pardue (US 3
2005/0223562 A1, publ. Oct. 13, 2005). We have jurisdiction under 35 4
U.S.C. § 6(b) (2002). 5
We sustain the rejections of claims 1-6, 8, 12, 13 and 30. We do not 6
sustain the rejections of claims 9, 10, 14, 20 and 22. 7
Claim 1 recites: 8
1. A folding knife, comprising: 9
a handle having a locking surface on an end 10
face thereof; 11
a blade having a tang end rotatably coupled 12
to the handle to pivot about a first axis between a 13
closed position and an open position; and 14
a locking post slideably coupled to the blade 15
and at least a portion being rotatable about a 16
second axis that is parallel to the first axis, the post 17
having at least one face whose contour conforms to 18
a contour of the locking surface and engages the 19
locking surface when the blade is in the open 20
position, to lock the blade in the open position. 21
22
ISSUES 23
The Appellant argues claims 1, 4-6, 8, 12, 13 and 30 as a group for 24
purposes of the rejection of those claims under § 102(b). (App. Br. 6-9). 25
Independent claim 1 is representative of the group. See 37 C.F.R. 26
§ 41.37(c)(1)(vii) (2008). The appeal as regards the rejection of claims 1, 4-27
6, 8, 12, 13 and 30 turns on one issue: 28
29
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Has the Appellant shown that the Examiner erred in 1
finding that Onion discloses a knife including a locking post 2
having at least one face whose contour conforms to a contour of 3
a locking surface on an end of a handle of the knife? (See App. 4
Br. 6). 5
The Appellant does not argue the rejection of dependent claims 2 and 6
3 under § 103(a) separately from the rejection of independent claim 1 under 7
§ 102(b). (See App. Br. 6-9). The rejection of claims 2 and 3 raises no 8
issues separate from that raised as regards the rejection of claim 1. 9
The Appellant contests the rejection of independent claim 20 and its 10
dependent claim 22 under § 103(a) separately from the rejection of claim 1. 11
(App. Br. 9-14). The Appellant purports to group claim 9, its dependent 12
claim 10 and 14 together with claim 1, although claims 9, 10 and 14, like 13
claims 20 and 22, are rejected under § 103(a) over Onion and Purdue rather 14
than under § 102(b) over Onion alone. For purposes of this appeal, the 15
rejections of claim 9; its dependent claim 10; and claim 14 will be treated 16
separately from the rejection of claim 1. The appeal as regards the rejection 17
of claims 9, 10, 14, 20 and 22 turns on one issue: 18
Has the Appellant shown that the Examiner failed to 19
articulate reasoning with some rational underpinning sufficient 20
to support the conclusion that Onion and Pardue would have 21
provided one of ordinary skill in the art reason to incorporate 22
into a folding knife a locking post having at least one face 23
which is substantially flat or a locking post including a stud 24
having a polygonal (e.g., hexagonal) shape? (See App. Br. 11-25
12). 26
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FINDINGS OF FACT 1
The record supports the following findings of fact (“FF”) by a 2
preponderance of the evidence. 3
1. Onion discloses a folding knife including a handle 16 and a 4
blade 12. The blade 12 has a tang end 12a rotatably coupled to an end 16a 5
of the handle 16. The blade 12 pivots about a first axis P between a closed 6
position C and an open position O. (Onion, col. 2, ll. 48-53 and fig. 1). 7
2. Onion’s folding knife 12 includes a locking mechanism 8
provided as a locking post 30. The locking post 30 includes a cylindrical 9
central portion 30a transversely positioned within a slot 60 in the blade 12. 10
The locking post 30 slides between a retracted position R at an end 60b of 11
the slot 60 and a locking position L at the other end 60a of the slot 60. 12
(Onion, col. 3, ll. 4-15; col. 5, ll. 7-12; and figs. 1, 10 and 11). These 13
features are depicted, if not all marked, in Figures 10 and 11 of Onion. 14
3. Onion’s handle end 16a includes an exposed exterior edge 15
surface 16b. The exposed exterior edge surface 16b includes a rounded cam 16
portion 16c, a locking portion 16d and a corner 16e which separates the cam 17
portion 16c and the locking portion 16d. (Onion, col. 3, ll. 37-40). These 18
features are depicted, if not all marked, in Figures 10 and 11 of Onion. 19
4. The locking post of the embodiment of Onion’s knife shown in 20
Figure 10 also includes cylindrical collars 130 at opposite ends of the central 21
portion 30a. Figure 11 of Onion depicts the central portion 30a as being 22
positioned transversely within the slot 60. A comparison of Figures 1 and 23
11 of Onion indicates that the central portion 30a extends along an axis 24
parallel to the axis P about which the blade 12 pivots. The collars 130 rotate 25
about the axis of the central portion 30a so that the collars 130 roll as the 26
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collars 130 bear against the exposed exterior edge surface 16b. (Onion, col. 1
6, ll. 44-51; and figs. 10 and 11). 2
5. Figure 10 of Onion depict the collars 130 as being cylindrical, 3
that is, circular in cross-section. Figure 10 of Onion also depicts a proximal 4
end of the locking portion (corresponding to reference numeral 16d in Figure 5
3) of the exposed exterior edge surface 16b as having a corner which is 6
concavely circular in cross-section. Figure 10 depicts the diameters of the 7
collars 130 as similar to the diameter of the corner. The annular face of the 8
collar 130 of the locking post 30 appears to be contoured to conform to the 9
concavely-circular contour of the corner in the locking portion 16d. 10
6. Onion discloses that engagement between the locking portion 11
16d of the exposed exterior edge surface 16b and the locking post 30 when 12
the blade 12 is in the open position and the locking post is in the locking 13
position L locks the blade 12 in the open position O. (Onion, col. 3, ll. 47-14
52). 15
7. Onion’s knife includes a stop post 116 which abuts the blade 16
tang 12a when the blade 12 is in the open position O and provides a terminal 17
point beyond which the blade 12 cannot be opened. (Onion, col. 6, ll. 40-18
43). 19
8. Pardue describes a knife 10 including a handle 12 and a blade 20
14 pivotally attached to the handle 12. (Pardue 2, ¶ 0025). 21
9. Pardue’s knife 10 includes a blade stop pin 60 which stops 22
rotation of the blade 14 from a closed position to an open position. (Pardue 23
2, ¶ 0030). Pardue’s knife also includes a cross-bolt 36 defining a locking 24
body 42. When the blade 14 is opened, the locking body 42 wedges 25
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between locking surfaces formed by notches 66, 68 in the blade 14 and the 1
handle 12 to lock the blade 14 in the open position. (Pardue 2, ¶¶ 0029-30). 2
10. The stop pin 60 has cylindrical surfaces 76, 78 at opposed first 3
and second ends 70, 72. The cylindrical surfaces 76, 78 of the stop pin 60 4
are received in cylindrical bores 82, 84 in opposite halves 16, 18 of the 5
handle 12. The cylindrical bores 82, 84 support the stop pin 60 for rotation 6
abut an axis passing through the bores 82, 84. (Pardue 2-3, ¶ 0031). 7
11. The central portion 74 of Pardue’s blade stop pin 60 defines a 8
multi-faceted surface 80 having a width greater than those of the cylindrical 9
surfaces 76, 78. (Pardue 3, ¶ 0031). The facets 90-97 of the multi-faceted 10
surface 80 are positioned at different radial distances from the axis about 11
which the stop pin 60 rotates. (Pardue 3, ¶ 0032). Rotating the stop pin 60 12
about the axis through the cylindrical bores 82, 84 in the handle 12 adjusts 13
the terminal position beyond which the blade 14 cannot open. (Pardue 4, 14
¶ 0038). 15
12. Pardue suggests that adjusting the terminal position beyond 16
which the blade cannot open ensures that the locking mechanism of the knife 17
engages properly. (See Pardue 1, ¶ 0005). Pardue teaches that the 18
improvement to the stop pin 60 may be used with any knife having a stop 19
pin, regardless of whether the knife also has a locking mechanism. (Pardue 20
4, ¶ 0043). 21
13. The Examiner finds, and the Appellant does not dispute, that 22
the ordinary usage of the term “conforms” includes “[t]o be similar in shape 23
or figure.” (See Ans. 6, citing WEBSTER’S II NEW RIVERSIDE UNIV. 24
DICTIONARY (1994); Reply Br. 1). 25
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PRINCIPLES OF LAW 1
“To anticipate a claim, a prior art reference must disclose every 2
limitation of the claimed invention, either explicitly or inherently.” In re 3
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). In order to establish a 4
prima facie case that a clam is obvious based on teachings of prior art 5
references, the Examiner must articulate some “reasoning with some rational 6
underpinning to support the legal conclusion of obviousness.” In re Kahn, 7
441 F.3d 977, 988 (Fed. Cir 2006). 8
9
ANALYSIS 10
The Appellant’s Specification does not define the term “conforms to a 11
contour of the locking surface” as used in claim 1. (See FF 13). The 12
ordinary usage of the term “conforms to a contour” is sufficiently broad to 13
include similarity in shape. Claim 1 does not recite that the contour of the 14
locking post must be similar in shape to the entire locking surface, but 15
merely that a face of the locking post conform to a contour of the locking 16
surface. 17
The Examiner finds that the notched corner of the locking portion 16d 18
of the exposed exterior edge surface 16b of Onion’s knife is a “locking 19
surface” within the meaning of that term as used in claim 1. The notched 20
corner of the locking portion 16d is concavely cylindrical in shape or 21
contour. (FF 5). The collars 130 of Onion’s locking post 30 also are 22
cylindrical in shape. Onion’s drawing, and particularly Figure 10, depicts 23
the diameter of the collars 130 as being similar to the diameter of the 24
notched corner of the locking portion 16d. Therefore, the Examiner did not 25
err in finding that the contour of Onion’s locking post 30, or, more 26
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specifically, the contours of the collars 130, conforms to a contour of the 1
locking surface, that is, to the contour of the notched corner of the locking 2
portion 16d. (Id.) 3
Claim 9 recites a folding knife in which at least one face of the 4
locking post is substantially flat. Claim 14 recites a folding knife in which 5
the locking post includes a hexagonally-shaped stud. Claim 20 recites a 6
folding knife in which the locking post includes a polygonally-shaped stud. 7
Onion discloses a knife with a locking post 30 having a cylindrical central 8
portion 30a and cylindrical collars 130. (FF 2 and 4). The Examiner 9
concludes that Onion and Pardue would have provided one of ordinary skill 10
in the art reason to provide Onion’s locking post with a substantially flat 11
face or a polygonally-shaped stud having flat surfaces of different radii from 12
a center axis of the post. The reason for such a modification would have 13
been to permit the correction of any error in the terminal position beyond 14
which the blade cannot open so as to ensure that the blade properly locks in 15
the open position. (Ans. 5). 16
Each of the knives disclosed by Onion and Pardue has a stop pin 17
which limits motion of the knife blade from a closed position past an open 18
position. The stop pin defines a terminal position beyond which the blade 19
cannot open. (FF 7 and 9). Each knife also has a locking post which limits 20
motion of the knife blade from the open position toward the closed position. 21
(FF 2, 6 and 9). In each knife, the stop pin and the locking post perform 22
different functions. 23
Pardue teaches an improvement to the stop pin. The improvement 24
permits the stop pin to be adjusted to correct any manufacturing error in the 25
terminal position beyond which the blade cannot open. (FF 11). Correcting 26
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this terminal position ensures that the locking mechanism of the knife 1
engages properly. (FF 12). Pardue teaches that this improvement may be 2
applied to any knife having a stop pin, even if the knife does not have a 3
locking post. (Id.) 4
The locking post does not control the terminal position beyond which 5
the blade cannot open. Therefore, one of ordinary skill in the art would not 6
have had reason to apply Pardue’s improvement to Onion’s locking post 30. 7
The Examiner provides no other reason for modifying a locking post such as 8
Onion’s to meet the limitations of claim 9, 14 and 20. 9
10
CONCLUSIONS 11
The Appellant has not shown that the Examiner erred in finding that 12
Onion discloses a knife including a locking post having at least one face 13
whose contour conforms to a contour of a locking surface on an end of a 14
handle of the knife. Therefore, the Appellant has not shown that the 15
Examiner erred in rejecting claims 1, 4-6, 8, 12, 13 and 30 under § 102(b) as 16
being anticipated by Onion. Since the Appellant does not argue the rejection 17
of dependent claims 2 and 3 under § 103(a) separately from the rejection of 18
independent claim 1 under § 102(b), the Appellant has not shown that the 19
Examiner erred in rejecting claims 2 and 3 under § 103(a) as being 20
unpatentable over Onion and McHenry. 21
The Appellant has shown that the Examiner failed to articulate 22
reasoning with some rational underpinning sufficient to support the 23
conclusion that Onion and Pardue would have provided one of ordinary skill 24
in the art reason to incorporate into a folding knife a locking post having at 25
least one face which is substantially flat or a locking post including a stud 26
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having a polygonal (e.g., hexagonal) shape. Therefore, the Appellant has 1
shown that the Examiner erred in rejecting claims 20 and 22 under § 103(a) 2
as being unpatentable over Onion and Pardue. The Appellant also has 3
shown that the Examiner erred in rejecting claims 9, 10 and 14 under 4
§ 103(a) as being unpatentable over those references. 5
6
DECISION 7
We AFFIRM the Examiner’s decision rejecting claims 1-6, 8, 12, 13 8
and 30. 9
We REVERSE the Examiner’s decision rejecting claims 9, 10, 14, 20 10
and 22. 11
No time period for taking any subsequent action in connection with 12
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 13
§ 1.136(a)(1)(iv) (2007). 14
15
AFFIRMED-IN-PART 16
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