Ex Parte Porter et al

Board of Patent Appeals and Interferences

Apr 28, 2004

09584053 (B.P.A.I. Apr. 28, 2004)

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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today was not written for publication and is not
binding precedent of the Board.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. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte ANGELA L. PORTER
and DAVID PORTER
________________
Appeal No. 2004-1058
Application 09/584,053
________________
ON BRIEF
________________
Before FRANKFORT, MCQUADE, and BAHR, Administrative Patent
Judges.
MCQUADE, Administrative Patent Judge.
DECISION ON APPEAL
Angela L. Porter et al. originally took this appeal from a
first final rejection (Paper No. 12) of claims 12 through 18, 20
and 22 through 29, all of the claims pending in the application.
Upon consideration of the appellants’ main brief (Paper No. 16),
the examiner reopened prosecution and issued a second and
superseding final rejection (Paper No. 17). Pursuant to 37 CFR
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§ 1.193(b)(2)(ii), the appellants filed a supplemental brief
(Paper No. 18) and requested that the appeal be reinstated. In
response, the examiner entered an answer (Paper No. 19), noted a
reply brief (Paper No. 20) filed by the appellants and forwarded
the application to this Board for review of the current
rejections of claims 12 through 18, 20 and 22 through 29.
THE INVENTION
The invention relates to “pet grooming . . . methods for
removing loose hair from a furry pet such as a dog or cat”
(specification, page 1). Representative claim 12 reads as
follows:
12. A method of removing loose hair from a furry pet such
as a dog or cat having loose hair and non-loose hair, the method
comprising:
providing a grooming tool having an elongate handle portion
extending generally along a handle axis, and a pet engageable
portion secured to the handle portion, the pet engageable portion
including a blade portion and a plurality of teeth, the blade
portion including a blade edge, the teeth extending from the
blade edge;
placing the pet engageable portion in engagement with the
pet;
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pulling the handle portion generally along the handle axis
while maintaining engagement of the pet engageable portion with
the pet to cause the blade edge to engage the loose hair of the
pet and pull it from the pet without cutting or pulling the non-
loose hair from the pet.
THE PRIOR ART
The references relied on by the examiner to support the
prior art rejections on appeal are:
Clements 441,136 Nov. 25, 1890
Deneen 797,184 Aug. 15, 1905
THE REJECTIONS
Claims 12 through 18, 20 and 22 through 29 stand rejected
under 35 U.S.C. § 112, first paragraph, as being based on a
specification which fails to comply with the enablement
requirement.
Claims 12 through 18, 20 and 22 through 29 stand rejected
under 35 U.S.C. § 112, second paragraph, as failing to
particularly point out and distinctly claim the subject matter
the appellants regard as the invention.
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Claims 12 through 18, 20 and 22 through 29 stand rejected
under 35 U.S.C. § 102(b) as being anticipated by Deneen.
Claims 12 through 18, 20 and 22 through 29 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Deneen in
view of Clements.
Attention is directed to the main, supplemental and reply
briefs and to the second final rejection and answer for the
respective positions of the appellants and the examiner regarding
the merits of these rejections.
DISCUSSION
I. The 35 U.S.C. § 112, first paragraph, rejection of claims 12
through 18, 20 and 22 through 29
According to the examiner, the appellants’ specification
fails to comply with the enablement requirement of 35 U.S.C.
§ 112, first paragraph, because
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Applicants’ recitation [in independent claims 12, 24
and 28] that the grooming tool pulls loose hair from
the pet “without cutting or pulling the non-loose hair
[from the pet]” is not given patentable weight since it
was not disclosed or verified how exactly the non-loose
hair is not cut when the blade engages the pet hair.
It was not disclosed how the grooming is performed
(i.e. how loose hair versus non-loose hair is
distinguished during the pulling). Applicants’ [sic]
have not established that their grooming tool will not
cut non-loose hair [second final rejection, page 4].
Inasmuch as the appellants’ specification contains a rather
detailed and straightforward explanation of the method set forth
in the appealed claims, and more particularly of the grooming
tool blade edge and the role it plays in engaging loose hair and
pulling it from the pet without cutting or pulling non-loose hair
from the pet, the examiner’s enablement concerns presumably stem
from doubts as to whether the blade edge is actually capable of
performing this function. The examiner has not cogently
explained, however, and it is not apparent, why the appellants’
specification lends credence to such doubts. In calling the
enablement of a disclosure into question, an examiner has the
initial burden of advancing acceptable reasoning inconsistent
with enablement. In re Strahilevitz, 668 F.2d 1229, 1232, 212
USPQ 561, 563-64 (CCPA 1982). Given the absence of such
reasoning and any logical basis therefor in the present case, the
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appellants have no burden to establish that their grooming tool
will function in the manner disclosed and claimed.
In light of the foregoing, we shall not sustain the standing
35 U.S.C. § 112, first paragraph, rejection of independent claims
12, 24 and 28 and dependent claims 13 through 18, 20, 22, 23, 25
through 27 and 29.
II. The 35 U.S.C. § 112, second paragraph, rejection of claims 12
through 18, 20 and 22 through 29
This rejection rests on the examiner’s contention that “the
phrase ‘such as’ [in the preambles of independent claims 12, 24
and 28] renders the claim[s] indefinite because it is unclear
whether the limitations following the phrase are part of the
claimed invention” (second final rejection, page 4].
The preambles of the three independent claims recite “A
method of removing loose hair from a furry pet such as a dog or
cat . . . .” The phrase “such as” merely specifies the dog or
cat as an example of the furry pet upon which the claimed method
is intended to be practiced. Hence, the reference to the dog or
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1 The examiner has not questioned the meaning of the “furry
pet” language.
2 A cursory review of the Deneen patent shows that its
specification is incomplete, apparently due to a publishing
error. For purposes of this appeal, we have considered this
reference for what it discloses in its drawing figures and on the
two pages of specification which are present.
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cat is part of the claimed invention to the extent that it
expressly includes within the scope of the claims the practice of
the specified method on these particular furry pets.1 Thus, the
examiner’s position that the language in question renders the
appealed claims indefinite is not well taken.
Accordingly, we shall not sustain the standing 35 U.S.C.
§ 112, second paragraph, rejection of claims 12 through 18, 20
and 22 through 29.
III. The 35 U.S.C. § 102(b) rejection of claims 12 through 18, 20
and 22 through 29 as being anticipated by Deneen2
Deneen discloses a combined safety razor and hair cutter for
shaving or trimming hair or a beard. The device includes a frame
(see Figure 6), a comb 5 (see Figure 5), a razor blade 6 (see
Figure 7), and a handle 10 (see Figure 8), with these elements
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being arranged as shown in Figures 1 through 4 “so that either
the comb or blade side of the device may be used for trimming the
hair or shaving, as may be desired” (page 1, column 2).
Anticipation is established only when a single prior art
reference discloses, expressly or under 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).
As conceded by the examiner, “Deneen is silent as to whether
the device is used on an animal” (answer, page 6). Hence, Deneen
does not meet the various limitations in independent claims 12,
24 and 28 requiring the performance of the recited method steps
on a furry pet. Moreover, even if Deneen did teach the use of
the device on a furry pet, the examiner’s finding (see pages 4
and 5 in the second final rejection and page 6 in the answer)
that the blade edge of the device would “engage the loose hair of
the pet and pull it from the pet without cutting or pulling the
non-loose hair from the pet” when pulled along the handle axis as
recited in claims 12, 24 and 28 conflicts with Deneen’s
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disclosure that the razor blade functions to either shave or trim
(cut) hair or a beard. The examiner’s position here rests on an
assertion (see page 6 in the answer) that the appellants’ blade
is similar to the blade disclosed by Deneen. The appellants’
blade, however, has an edge 34 defined by planar surfaces 36 and
38 which meet at an angle B of between approximately 30° and 50°,
preferably approximately 40° (see page 5 in the specification and
Figure 5 in the drawings). Clearly, such blade edge is not
nearly as sharp as the razor blade edge disclosed by Deneen.
Thus, the examiner’s proposition that the two blade edges are
comparable is without merit.
For the above reasons, the examiner’s determination that
Deneen is anticipatory with respect to the subject matter recited
in independent claims 12, 24 and 28 is not well founded.
Consequently, we shall not sustain the standing 35 U.S.C.
§ 102(b) rejection of claims 12, 24 and 28, and dependent claims
13 through 18, 20, 22, 23, 25 through 27 and 29, as being
anticipated by Deneen.

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IV. The 35 U.S.C. § 103(a) rejection of claims 12 through 18, 20
and 22 through 29 as being unpatentable over Deneen in view of
Clements
Assuming (correctly) that Deneen might not meet the
limitations in the appealed claims relating to the furry pet, the
examiner turns to Clements to supply this deficiency.
Clements discloses a comb designed to remove loose hair and
other foreign matter from an animal to be groomed. The comb
includes a blade having a series of teeth formed with blunt tips
4 to avoid scratching the animal’s hide and sharp sides 2 and
roots 3 to take hold of and remove the loose hair and foreign
matter.
In proposing to combine Deneen and Clements, the examiner
concludes that it would have been obvious “to use the tool of
Deneen on a pet/animal since Clements teaches that such devices
are well known to remove loose hair from the animal” (second
final rejection, page 7). The devices respectively disclosed by
Deneen and Clements, however, embody distinct constructions for
the performance of decidedly different functions. In short,
Clements contains no teaching which would have suggested using
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the Deneen device on a furry pet. Moreover, even if Clements did
contain such a suggestion, this use of the Deneen device would
not, for the reasons explained above, respond to the limitations
in independent claims 12, 24 and 28 requiring the blade edge to
“engage the loose hair of the pet and pull it from the pet
without cutting or pulling the non-loose hair from the pet” when
pulled along the handle axis. Thus, the combined teachings of
Deneen and Clements do not justify the examiner’s conclusion of
obviousness with respect to the subject matter recited in claims
12, 24 and 28.
Accordingly, we shall not sustain the standing 35 U.S.C.
§ 103(a) rejection of independent claims 12, 24 and 28, and
dependent claims 13 through 18, 20, 22, 23, 25 through 27 and 29,
as being unpatentable over Deneen in view of Clements.
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SUMMARY
The decision of the examiner to reject claims 12 through 18,
20 and 22 through 29 is reversed.
REVERSED
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
JOHN P. MCQUADE ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Jennifer D. Bahr )
Administrative Patent Judge )
JPM/dal
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