Ex Parte Onion

Board of Patent Appeals and Interferences

Feb 27, 2012

10637951 (B.P.A.I. Feb. 27, 2012)

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.
10/637,951 08/07/2003 Kenneth J. Onion 530055.416 2503
500 7590 02/27/2012
SEED INTELLECTUAL PROPERTY LAW GROUP PLLC
701 FIFTH AVE
SUITE 5400
SEATTLE, WA 98104
EXAMINER
ALIE, GHASSEM
ART UNIT PAPER NUMBER
3724
MAIL DATE DELIVERY MODE
02/27/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KENNETH J. ONION
____________

Appeal 2010-001958
Application 10/637,951
Technology Center 3700
____________

Before STEVEN D.A. McCARTHY, GAY ANN SPAHN,
CHARLES N. GREENHUT, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Kenneth J. Onion (Appellant) seeks our review under 35 U.S.C. § 134
of the Examiner’s rejection of claims 1, 3, 5-10, and 12. Appellant cancelled
claims 2, 4, 11, and 13-40. The Examiner withdrew claims 41-45 from
consideration. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
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The Claimed Subject Matter
The claimed subject matter is directed to a knife with an ergonomic
handle. Spec. 1. Claim 1, reproduced below, is representative of the subject
matter on appeal.
1. A knife comprising:
a blade;
a handle coupled to the blade and including
a front end and a rear end, and a first side and a
second side, the handle further including an arched
back portion between the front end and rear end
and a palm swell having a width from the first side
to the second side that is greater than a width of
the handle at the front end and rear end such that
the arched back portion and the palm swell
substantially conform to a palm of a user's hand
when the user's hand is in a gripping position; and
guide members in the form of recesses
positioned on respective first and second sides of
the handle at the location of junction of the front
end of the handle and the rear of the blade and
configured to provide an engagement surface for a
user's thumb on the first side of the handle and a
forefinger on the second side of the handle when
the user's hand is in the gripping position, the
location of the guide members substantially
corresponding to a balance point of the knife.

App Br. 27.

The Rejections
The following Examiner’s rejections are before us for review.
Claims 1, 3, 5-10, and 12 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Gerber (US 4,470,327, issued Sep. 11, 1984) and Mangol
(US 5,791,055, issued Aug. 11, 1998). Ans. 3-5.
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Claim 3 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Gerber, Mangol, and either Chien (US D442,028 S, issued May 15, 2001) or
Parlowski (US D462,581 S, issued Sep. 10, 2002). Ans. 5-6.

OPINION
Obviousness based on Gerber and Mangol
Claim 1, 7-10, and 12
Appellant argues claims 1, 7-10, and 12 as a group. See App. Br. 12-
21. We select independent claim 1 as the representative claim and claims 7-
10 and 12 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii)
(2011).
The Examiner finds that Gerber discloses a knife substantially as set
forth in independent claim 1, and that Mangol discloses a knife with a
handle shape including an arched back portion and a palm swell. Ans. 3-4.
The Examiner concludes that it would have been obvious to one of ordinary
skill in the art to modify Gerber’s knife to have a handle shape as taught by
Mangol “in order to provide an ergonomically improved handle for the
knife.” Id.
Appellant first contends that Gerber’s slanted surfaces (i.e., the
surfaces in Figure 3 having lead lines from reference numerals 16, 18
leading thereto) do not constitute guide members as suggested by the
Examiner, because Gerber’s finger guard 37 prevents the user’s thumb and
finger from engaging the slanted surfaces. App. Br. 13, 17-18 and Reply Br.
2. We disagree. Gerber does not disclose that the finger guard 37 prevents a
user’s thumb and fingers from engaging the slanted surfaces. Presumably,
Gerber’s finger guard discourages contact with the sharp portion of the blade
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when a user grasps the knife such that one or more of the user’s fingers curl
under the handle. This does not preclude a gripping position wherein the
user’s thumb and forefinger engage the slanted surfaces.
Appellant also contends that Gerber does not teach or suggest a
balance point or center of gravity located at the guide members and thus, at
the junction of the front end of the handle and the rear of the blade. App. Br.
13. We are not persuaded by Appellant’s contention as not being
commensurate with the scope of the claim. Independent claim 1 recites
“guide members in the form of recesses positioned on respective first and
second sides of the handle at the location of junction of the front end of the
handle and the rear of the blade.” Gerber’s guide members meet this claim
limitation since the slanted surfaces are positioned at a location of the
junction of the handle and the blade. See Gerber’s Figs. 1 and 3.
Independent claim 1 also recites “the location of the guide members
substantially corresponding to a balance point of the knife.” As
“substantially” is often construed in patent claims to mean “largely but not
wholly that which is specified,” we construe the claim language of
“substantially corresponding to” as largely, but not wholly, corresponding to
a balance point of the knife. See York Prods., Inc. v. Cent. Tractor Farm &
Family Ctr., 99 F.3d 1568, 1573 (Fed. Cir. 1996). Thus, as Gerber’s balance
point is the center of gravity 38, Gerber’s guide members or slanted surfaces
appear to substantially correspond to the balance point or center of gravity
38 of the knife as shown in Gerber’s Figure 2, particularly in view of the fact
that Gerber discloses “[t]he knife’s center of gravity can be shifted
forwardly” (col. 3, l. 30) as pointed out by the Examiner. Moreover, even if
Gerber desires to “keep the center of gravity . . . at point 38” as suggested by
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Appellant (App. Br. 14), the location of Gerber’s guide members or slanted
surfaces still appear to substantially correspond to the center of gravity 38,
because the claim language does not require the guide members to be
exactly at the location of the center of gravity 38. Instead, the claim
language requires the guide members to be largely, but not wholly, at the
center of gravity.
Appellant also contends that “Gerber does not teach a handle having
an arched back portion between the front end and the rear end.” App. Br.
17. While the Examiner found that Gerber teaches a handle with an arched
back portion between the front and rear ends (Ans. 3), the Examiner also
found that Mangol teaches this feature (Ans. 4). Thus, since the Examiner
modified the shape of Gerber’s handle to be the shape of the handle as
taught by Mangol (Ans. 4), we are persuaded that the Examiner’s
combination of Gerber in view of Mangol discloses a handle with an arched
back portion between the front and rear ends.
Appellant also contends that there is no reason, motivation, or
suggestion to modify Gerber with the handle as taught by Mangol. App. Br.
18-21. We are not persuaded by Appellant’s contention. The rigid
application of a “teaching, suggestion, motivation” test for nonobviousness
is incompatible with Supreme Court precedent. See KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. 398, 419 (2007). The Examiner thus need not
establish the existence of a teaching, suggestion, and motivation in
combining teachings from prior art references, rather, the Examiner must
provide an articulated reasoning with some rational underpinning to support
a legal conclusion of obviousness. In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006). Here, the Examiner concluded that it would have been obvious to
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one of ordinary skill in the art to modify Gerber’s handle to be of the shape
taught by Mangol “in order to provide an ergonomically improved handle
for the knife.” Ans. 4; See also Mangol col. 1, ll. 26-31. Since the
Examiner’s articulated reason appears to have a rational underpinning, we
are not persuaded that the Examiner erred in combining Gerber and Mangol.
To the extent Appellant is arguing there is no reasonable expectation
of success in the Examiner’s proposed combination of Gerber and Mangol,
this argument is not persuasive. Absolute predictability that the substitution
will be successful is not required. See In re O'Farrell 853 F.2d 894, 903-
904 (Fed. Cir. 1988). Gerber and Mangol are cited by the Examiner to
demonstrate knives which are known in the art and the known advantages
that result from those knives. Ans. 3-4. Appellant has not suggested any
reason why the Examiner erred by concluding that it would have been
obvious to one of ordinary skill in the art to incorporate these known
features of Mangol’s knife into the known knife of Gerber in order to
predictably provide the known advantages of these knives. Appellant has
also not suggested any reason why one of ordinary skill in the art would not
have had a reasonable expectation of success that the shape of Mangol’s
handle could be incorporated into Gerber’s knife.
Finally, with respect to Appellant’s arguments concerning the
“Declaration under Rule 37 C.F.R. 1.132,”1 we note that the award of
kitchen knife of the year in 2005 by Blade Magazine appears to relate to
industry praise. We are not persuaded of non-obviousness because
Appellant has failed to indicate that this evidence of praise in the industry is

1 This declaration was signed by Dennis Epstein and was filed with an
amendment on January 11, 2007.
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specifically related to features recited in claim 1, thus linking that industry
praise with the claimed subject matter. In addition, Appellant argues that the
declarant is a person of high skill in the art, a National Sales Manager, and
has sworn that the claimed knife is non-obvious. First, we note that there is
no evidence that the declarant is knowledgeable in patent law so as to be
able to judge non-obviousness. “[A]n expert’s opinion on the legal
conclusion of obviousness is neither necessary nor controlling.” Avia Group
Intern., Inc. v. L.A. Gear Calif., Inc., 853 F.2d 1557, 1564 (Fed. Cir. 1988).
Second, the declarant’s statements with respect to the Peppel and Parlowski
references appear to be with respect to a previous rejection, and not the
Examiner’s present rejection based on Gerber and Mangol. As such, we do
not afford the declarant’s statements much weight and they do not convince
us of non-obviousness.
Having considered both the evidence of obviousness offered by the
Examiner and the evidence of non-obviousness offered by Appellant, we
conclude that the former outweighs the latter. In view of the foregoing, we
sustain the Examiner’s rejection of claims 1, 7-10, and 12 under 35 U.S.C.
§ 103(a) as unpatentable over Gerber and Mangol.
Claim 3
Claim 3 depends from claim 1 and recites that “the guide members are
scallop-shaped cutouts.” App. Br. 27. The Examiner finds that Gerber
discloses this limitation. Ans. 4. Appellant contends that the Examiner’s
finding is in error. App. Br. 21-22. We agree with Appellant. Gerber’s
guide members are flat surfaces and therefore, do not constitute scallop
shaped cutouts. Accordingly, we do not sustain the Examiner’s rejection of
claim 3 under 35 U.S.C. § 103(a) as unpatentable over Gerber and Mangol.
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Claim 5
Claim 5 depends from claim 1 and recites that “the guide members
enable a user to position their hand in a neutral position on the handle.”
App. Br. 27. The Examiner finds that Gerber teaches this limitation. Ans. 4.
Appellant contends that the Examiner’s finding is in error because the knife
resulting from the combination of Gerber and Mangol would have a finger
guard to block the user from moving their hand past the front of the handle
and thus, prohibit the use of the guide members as an engagement position.
App. Br. 22-23. We are not persuaded by Appellant’s contention.
Appellant has not pointed to any disclosure in Gerber or Mangol that shows
the purpose of the finger guards is to prevent a user from engaging the guide
members. Accordingly, we sustain the Examiner’s rejection of claim 5
under 35 U.S.C. § 103(a) as unpatentable over Gerber and Mangol.
Claim 6
Claim 6 depends from claim 1 and recites that “the guide members are
elongated such that a user may change an effective balance of the knife by
altering the position of their thumb and forefinger relative to the balance
point of the knife.” App. Br. 28. The Examiner finds that Gerber teaches
this limitation. Ans. 4. Appellant contends that neither Gerber nor Mangol
teach this limitation because in both Gerber and Mangol, the junction
between the blade and the handle is vertical and thus, even if the user were
to move their thumb and forefinger up and down along the guide member,
the balance of the knife would remain unchanged because the thumb and
forefinger would remain in the same location relative to the balance point.
App. Br. 24. We are not persuaded by Appellant’s contention as it is not
commensurate with the scope of Appellant’s claim. Limitations not
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appearing in the claims cannot be relied upon for patentability. In re Self,
671 F.2d 1344, 1348 (CCPA 1982). More particularly, in order to change an
effective balance of the knife, claim 6 does not call for the user to move their
thumb and forefinger up and down along the guide member as argued by
Appellant. Rather, to change the effective balance of the knife, claim 6 only
requires the user to change the position of their thumb and forefinger relative
to the balance point. In view of the foregoing, we sustain the Examiner’s
rejection of claim 6 under 35 U.S.C. § 103(a) as unpatentable over Gerber
and Mangol.
Obviousness based on Gerber, Mangol, and Chien or Parlowski
In addition to incorrectly finding that Gerber disclosed scallop-shaped
cutouts as discussed supra, the Examiner alternatively finds that this feature
is taught by either Chien or Parlowski. Ans. 5. The Examiner concludes
that it would have been obvious to one of ordinary skill in the art to modify
the guide members of Gerber and Mangol to be scallop-shaped cutouts as
taught by either Chien or Parlowski “in order to enable the user to better
grasp the guide members and the handle.” Ans. 5-6.
Appellant contends that neither Chien nor Parlowski meet the claim
limitation of claim 3 because they each have a deep recess in the handle
prior to the junction between the handle and the blade, and these deep
recesses act as finger guards to keep the user’s thumb and forefinger
positioned away from the front of the knife so as to prevent gripping of the
guide members. App. Br. 25. We are not persuaded by Appellant’s
contention for the same reason, as discussed supra, that we were not
persuaded by Appellant’s contentions with respect to Gerber and Mangol’s
finger guards.
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Appellant also contends that neither Chien nor Parlowski have an
arched back portion. App. Br. 25. We are not persuaded by Appellant’s
contention because Appellant is arguing the references individually and one
cannot show nonobviousness by attacking references individually where the
rejections are based on a combination of references. See In re Merck & Co.,
800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 426
(CCPA 1981). Here, the Examiner relied upon Mangol for its teaching of an
arched back portion, not Chien or Parlowski.
In view of the foregoing, we sustain the Examiner’s rejection of claim
3 under 35 U.S.C. § 103(a) as unpatentable over Gerber, Mangol, and either
Chien or Parlowski.

DECISION
We affirm the Examiner’s rejections of claims 1, 3, 5-10, and 12.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED

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