Ex Parte Racov et al

Patent Trial and Appeal Board

Feb 13, 2017

13379707 (P.T.A.B. Feb. 13, 2017)

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.
13/379,707 12/21/2011 Mikael Racov 3 8004/09090/P2518US00 7012
100577 7590 02/15/2017
Nelson Mullins Riley & Scarborough LLP
IP Department
100 North Tryon Street, 42nd Floor
Charlotte, NC 28202-4000
EXAMINER
LEE, LAURA MICHELLE
ART UNIT PAPER NUMBER
3724
NOTIFICATION DATE DELIVERY MODE
02/15/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ip@nelsonmullins.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MIKAEL RACOV, JOHAN SVENNUNG, and
MIA HEROU
Appeal 2015-004994
Application 13/379,707
Technology Center 3700
Before LYNNE H. BROWNE, JEREMY M. PLENZLER, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Mikael Racov et al. (Appellants) appeal under 35 U.S.C. § 134 from
the rejection of claims 1, 3, and 10—12. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.
Appeal 2015-004994
Application 13/379,707
CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
1. Electrical trimmer for rotary cutting comprising,
rotary cutting equipment comprising cutting line that is
rotatable to perform the same cutting function regardless of a
direction of rotation of the rotary cutting equipment relative to
grass or other vegetation,
an electrical motor for driving the rotary cutting equipment,
and
a trim shield arranged proximate to the rotary cutting
equipment,
wherein the electrical trimmer comprises a switching means
for changing the rotational direction of the electrical motor drive,
during operation of the rotary cutting equipment, between
clockwise and counterclockwise rotation for rotation of the
rotary cutting equipment, and
wherein the trim shield is symmetrically arranged for
protecting an operator from the cutting line and for directing cut
grass or other vegetation in a certain direction during both
clockwise and counterclockwise rotation of the rotary cutting
equipment, the trim shield including two knives arranged thereon
in opposite directions relative to each other to trim the cutting
line for both clockwise and counterclockwise rotation of the
rotary cutting equipment.
The prior art relied upon by the Examiner in rejecting the claims on
matter:
REFERENCES
appeal is:
Hurley
Suzuki
Alliss
US 2008/0271325 A1 Nov. 6, 2008
US 7,480,998 Jan. 27, 2009
US 8,266,805 Sept. 18,2012
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Appeal 2015-004994
Application 13/379,707
REJECTIONS1
I. Claims 1, 3, and 10-12 stand rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement.
II. Claims 1,3, 11, and 12 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Hurley and Suzuki.
III. Claim 10 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Hurley, Suzuki, and Alliss.
DISCUSSION
Rejection I
The Examiner finds that the Specification as originally filed fails to
provide support for the claimed subject matter ‘“wherein the electrical
trimmer comprises a switching means for changing the rotational direction
of the motor drive, during operation of the rotary cutting equipment.’” Final
Act. 2. In support of this finding, the Examiner distinguishes between the
operation of the trimmer and the operation of the rotary cutting equipment
and draws an analogy to the operation of a car. See id. at 2-4. In particular,
the Examiner posits that in the instant invention, the switch cannot be used
when “the cutting line is rotating.” Id. at 4.
Responding to this argument, Appellants explain why the Examiner’s
analogy is flawed. See Appeal Br. 5—6. Appellants further explain that in
their trimmer “operation of the trimmer necessarily means rotation of the
1 The rejection of claims 1 and 3 under 35 U.S.C. § 103(a) as unpatentable
over Alliss, Hurley, and Suzuki is withdrawn by the Examiner in the
Answer. Ans. 7—9.
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Appeal 2015-004994
Application 13/379,707
electric motor, which necessarily means that an electric field is applied to the
electric motor to turn the electric motor” such that “operation of the trimmer
necessarily means that the rotary cutting equipment is rotating. If the rotary
cutting equipment is not turning, then the trimmer is not operating.” Id. at 6.
Moreover, Appellants note that the Specification as originally filed
“expressly states, in reference to the passage the Examiner cited from
paragraph [0008], that ‘[t]his means the motor does not have to be stopped
before the rotation direction can be changed.’” Id. at 7.
Appellants are correct, the Examiner’s analogy is flawed. An electric
trimmer, such as the claimed trimmer, does not operate in the same manner
as a car, nor does an electric motor operate in the same manner as an internal
combustion engine. Thus, the Examiner’s findings based on this analogy are
in error. Moreover, the Specification fully supports the limitation at issue,
because, as noted by Appellants and discussed supra, in the instant invention
the rotary cutting equipment rotates when the motor is turned on and the
Specification states that “the motor does not have to be stopped before the
rotation direction can be changed.” Spec 2:8—9.
For these reasons, we do not sustain the Examiner’s decision rejecting
claim 1, and claims 3, and 10-12, which depend therefrom, as failing to
comply with the written description requirement.
Rejection II
Appellants argue claims 1,3, 11, and 12 together. See Appeal Br. 11.
We select independent claim 1 as the representative claim, and claims 3,11,
and 12 stand or fall with claim 1. Further, we note that Alliss is not relied
upon in this ground of rejection. Accordingly, we do not address
Appellants’ arguments regarding Alliss.
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Appeal 2015-004994
Application 13/379,707
The Examiner finds that Hurley and Suzuki disclose or suggest all of
the limitations of claim 1. See Final Act. 4—6. In particular, the Examiner
finds that Hurley discloses “switching means (e.g. 18) for changing the
rotational direction of the electrical motor drive between clockwise and
counterclockwise rotation for rotation of the rotary cutting equipment
(paragraph [0032 and 0038] ‘having means to reverse, slow and torque up
the motor input’).” Final Act. 4. In addition, the Examiner reasons that it
would have been obvious to “arrange[] the blades on the Hurley shield to
account for each rotational direction of the line and to have arranged them
symmetrically on the guard as such an arrangement would be generally
pleasing and keeping with the esthetics of the cutting tool” because
[a] 11 of the claimed elements were known in the prior art and one
skilled in the art could have combined the elements as claimed
by known methods with no change in their respective functions,
and the combination would have yielded predicable results of
cutting the line in both forwards and reverse cutting orientations
to one.
Id. at 5 (citing In reJapikse, 181 F.2d 1019 (CCPA 1950)).
Appellants contend that “Hurley and Suzuki, taken either alone or in
combination, fail to teach or suggest a trim shield including two knives
arranged thereon in opposite directions relative to each other to trim the
cutting line for both clockwise and counterclockwise rotation of the rotary
cutting equipment.” Appeal Br. 8 (emphasis omitted). In support of this
contention, Appellants note that “Hurley fails to disclose that the knives on
the trim shield are arranged opposite to each other to trim the cutting line for
both clockwise and counterclockwise rotation of the rotary cutting
equipment.” Id. at 9.
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Application 13/379,707
This fact is not in contention. Rather, as discussed supra, the
rejection relies upon the Examiner’s reasoning that it would have been
obvious to “arrange [] the blades on the Hurley shield to account for each
rotational direction of the line and to have arranged them symmetrically on
the guard as such an arrangement would be generally pleasing and keeping
with the esthetics of the cutting tool.” Final Act. 5. Appellants do not
address this reasoning other than by asserting that it is based on hindsight.
See Appeal Br. 9. However, Appellants do not identify any knowledge
relied upon by the Examiner that was gleaned only from Appellants’
disclosure and that was not otherwise within the level of ordinary skill at the
time of the invention, thereby obviating Appellants’ assertion of hindsight.
See In re McLaughlin, 443 F.2d 1392 (CCPA 1971). Thus, Appellants do
not apprise us of error.
Next, Appellants argue that “Hurley is entirely silent about reversing
the motion of the filament cutter during the operation of the filament cutter.”
Appeal Br. 10 (emphasis omitted). Appellants further argue that Suzuki
does not cure this deficiency. See id.
Responding to this argument the Examiner finds that:
Suzuki provides further details of the selector switch, “when the
cutter is driven by the electric motor, a cutter a double edged type
blade is attached to the main body of the bush cutter and by
operating the selector switch, the cutter is selectively rotated in
any of the forward direction and the reverse direction, so that a
blowing direction of mowed grass can be set on the left or right
hand.” As Suzuki recites, “when the cutter is driven by the
electric motor ...” obviously the cutter is rotating. Moreover,
Suzuki also conveys, “when the moving operation is performed
by rotationally driving the cutter by the electric motor, the
selector switch is operated by a fingertip while grasping the
handles so that the cutter can be rotate in any of the forward and
reverse directions” (see col. 12, lines 53-57).
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Application 13/379,707
Ans. 13 (emphasis omitted).
Appellants do not contest these findings or explain why the
Examiner’s reasoning is flawed. See generally Reply Br. Thus, Appellants’
argument is unconvincing.
In addition, Appellants argue that “Suzuki merely teaches that the
switching means (71) may be operated by the user when the disclosed bush
cutter is powered ON, not that the switching means (71) may be operated
when the actual cutting elements are in operation.” Appeal Br. 10 (emphasis
omitted). However, as discussed supra, in the cited portion Suzuki states:
In this way, when the mowing operation is performed by
rotationally driving the cutter 13 by the electric motor 18, the
selector switch 71 is operated by a finger tip while grasping the
handles 15, so that the cutter 13 can be rotated in any of the
forward and reverse directions.
Suzuki 12:53—57 (original emphasis omitted, new emphasis added). Thus,
Appellants’ argument is unconvincing.
For these reasons, we sustain the Examiner’s decision rejecting claim
1, and claims 3,11, and 12, which fall therewith, as unpatentable over
Hurley and Suzuki.
Rejection III
Appellants do not present separate arguments for the patentability of
claim 10. See Appeal Br. 11. Rather, Appellants argue that claim 10 is
patentable for the same reasons as claim 1. See id. Accordingly, we sustain
the Examiner’s decision rejecting claim 10.
DECISION
The Examiner’s rejection of claims 1, 3, and 10-12 under 35 U.S.C.
§112, first paragraph, is REVERSED.
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Application 13/379,707
The Examiner’s rejection of claims 1,3, 11, and 12 under 35 U.S.C.
§ 103(a) as unpatentable over Hurley and Suzuki is AFFIRMED.
The Examiner’s rejection of claim 10 under 35 U.S.C. § 103(a) as
unpatentable over Hurley, Suzuki, and Alliss is AFFIRMED.
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)(l)(iv).
AFFIRMED
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