Ex Parte Ranieri et al

Patent Trial and Appeal Board

Jul 7, 2016

12639660 (P.T.A.B. Jul. 7, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/639,660 12/16/2009
1923 7590 07111/2016
MCDERMOTT, WILL & EMERY LLP
The McDermott Building
500 North Capitol Street, N.W.
Washington, DC 20001
FIRST NAMED INVENTOR
Laura Ranieri
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
055606-0376 7272
EXAMINER
GRANO, ERNESTO ARTURIO
ART UNIT PAPER NUMBER
3788
NOTIFICATION DATE DELIVERY MODE
07/11/2016 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):
mweipdocket@mwe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LAURA RANIERI, JOHN CHAP,
NICHOLAS S. BLAIR, CHARLES L. LASKY,
SCOTT H. MICOLEY, and PATRICK MICHAEL KERULIS
Appeal2014-005322
Application 12/639,660
Technology Center 3700
Before CHARLES N. GREENHUT, ERIC C. JESCHKE, and
GORDON D. KINDER, Administrative Patent Judges.
JESCHKE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Laura Ranieri et al. (Appellants) seek review, under 35 U.S.C.
§ 134(a), of the Examiner's decision to reject claims 1-9 and 21-23. 1 We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellants identify WKI Holding Company, Inc. as the real party in
interest. Appeal Br. 3.
Appeal2014-005322
Application 12/639,660
BACKGROUND
The disclosed subject matter "relates to a protective sheath for a
cutlery blade, and more particularly, to a unitary sheath with an integral
securing structure." Spec. i-f 1. Claims 1 and 22 are independent. Claim 1 is
reproduced below, with emphasis added:
1. A protective sheath for removably securing a
blade, the protective sheath comprising:
a unitary body having a proximal end and a
distal end and comprising a cavity defined by a first
wall, a second wall extending from the first wall, a
third wall extending from the second wall, a fourth
wall extending from the third wall, the first wall
being parallel to the third wall and connecting the
fourth wall to the second wall, the second wall
connecting the first wall to the third wall, the third
wall connecting the second wall to the fourth wall,
and the fourth wall connecting the third wall to the
first wall;
an end wall at the distal end of the body;
an opening formed proximate the proximal
end of the body, the opening being configured to
receive a blade into the cavity; and
a concave detent defined in the second wall,
the concave detent extending into the cavity for
frictionally securing a blade inserted into the cavity,
the concave detent extending from a position
adjacent the end wall to a position adjacent the
opening and comprising at least one arm defined by
at least one longitudinal aperture in the concave
detent, the at least one longitudinal aperture
defining at least one opening that extends
longitudinally along a longitudinal axis of the
cavity, and the at least one arm extending in a
direction generally perpendicular to the longitudinal
axis of the cavity.
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Appeal2014-005322
Application 12/639,660
REJECTIONS
1. Claims 1, 7-9, and 21 are rejected under 35 U.S.C. § 103(a) as
unpatentable over deDoes (US D540,032 S, issued Apr. 10, 2007) and
Linden (US 5,291,996, issued Mar. 8, 1994).
2. Claim 2 is rejected under 35 U.S.C. § 103(a) as unpatentable
over deDoes, Linden, and Neshat (US 6,308,419 Bl, issued Oct. 30, 2001).
3. Claims 3-5 are rejected under 35 U.S.C. § 103(a) as
unpatentable over deDoes, Linden, and Beckwith (US 3,191,825, issued
June 29, 1965).
4. Claim 6 is rejected under 35 U.S.C. § 103(a) as unpatentable
over deDoes, Linden, and Chen (US 6,926,143 Bl, issued Aug. 9, 2005).
5. Claims 22 and 23 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Linden and deDoes.
DISCUSSION
Rejections 1--4- Claims 1-9 and 21
For these Rejections, Appellants argue the patentability of
independent claim 1, stating that claims 2-9 and 21 stand or fall with claim
1. Appeal Br 10. Thus, we address only claim 1. See 37 C.F.R. § 41.37
(c)(l)(iv) (2012). Claim 1 recites, in relevant part, a protective sheath
comprising "a concave detent defined in the second wall, the concave detent
extending into the cavity for frictionally securing a blade inserted into the
cavity." Appeal Br. 21 (Claims App.). To address this limitation, the
Examiner relied on Figures 1 and 3 of deDoes. See Final Act. 4 (dated Mar.
25, 2013); see also id. at 3 (providing annotated versions of these figures).
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Application 12/639,660
First, Appellants contend that deDoes does not disclose the recited
"concave detent" because "the recess created by the downward sidewalls
[shown in Figure 1] is abrupt and appears to be at a ninety-degree angle to
both the surface of the laterally extending flange and the base of the recess."
Appeal Br. 12. According to Appellants, "deDoes shows a step-wise change
in the profile, not a concave structure." Id. at 12-13. Appellants also argue
that "the curved edges of the surfaces of deDoes cannot constitute the
claimed concave detent, as deDoes shows primarily planar structures joined
by edges having a relatively small radius of curvature." Id. at 13.
According to Appellants, "[ t ]he claimed language of a concave detent refers
to the general geometric profile of the portion and not merely a comer, edge,
or transitional feature between what appears to be orthogonal planes." Id.
The Examiner states that the Specification "does not disclose a
specific definition or give a specific geometrical shape for the word
'concave' and therefore the Examiner interprets 'concave' with its ordinary
definition." Ans. 11. The Examiner then provides the following graphic:
Ans. 12 (citing http://www.mathsisfun.com/definitions/concave.html). The
graphic shows the word "Concave" in the upper left comer and shows
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Application 12/639,660
various shapes, some labeled "Convex" and some labeled "Concave." The
graphic also states: (1) "Curved inwards" and (2) "A polygon (which is
straight-sided) is concave if there are 'dents' or indentations in it (where the
angle is greater than 180°)." Id. The Examiner states "with this definition in
mind, it appears that deDoes clearly discloses/teaches a concave detent." Id.
Appellants respond that, in the Answer, the Examiner "fails to provide
a definition of the term 'concave'" and that the two definitions provided
(i.e., (1) and (2) above) "are somewhat contradictory" in that the first
definition "suggests that there is curvature to the shape" whereas, in the
second definition, "which is constrained by the fact that it is referencing a
polygon that has straight edges by definition, there is no curvature." Reply
Br. 4. Appellants argue that claim 1 "does not recite a detent with 'polygon
concavity,"' and thus, the first definition is "more applicable." Id.
Appellants also provide various definitions of "concave" that Appellants
assert are "more ordinary and customary." Id. at 5. According to
Appellants, "[t]hese definitions suggest that a proper, ordinary and
customary, definition of a 'concave detent' is a detent that has curvature and
is curved inward." Id. at 6.
During examination, claims are given their broadest reasonable
interpretation consistent with the specification, reading the claim language in
light of the specification as it would be interpreted by one of ordinary skill in
the art. In re Sneed, 710 F.2d 1544, 1548 (Fed. Cir. 1983). We tum first to
the intrinsic evidence. As noted by the Examiner (Ans. 11 ), the
Specification does not define "concave." Further, although Figure 21 does
depict a detent that, as stated by Appellants, "has curvature and is curved
inward" (Reply Br. 6), "the mere fact that the ... drawings depict a
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Appeal2014-005322
Application 12/639,660
particular embodiment ... does not operate to limit the claims to that
specific configuration." Anchor Wall Sys., Inc. v. Rockwood Retaining
Walls, Inc., 340 F.3d 1298, 1306--07 (Fed. Cir. 2003); see also Spec. i-f 50
("The present invention has been described above with reference to
exemplary embodiments." (emphasis added)); Reply Br. 6 (arguing that "it is
clear from the figures that [the] recited feature has curvature and is curved
inwards"). Here, Appellants have not identified text from the written
description indicating that "concave detent" should be limited to the
embodiment in Figure 21. As to the extrinsic evidence, Appellants argue
that certain narrower definitions are "more ordinary and customary," (Reply
Br. 5 (emphasis omitted)) but have not shown that the Examiner's
construction is unreasonably broad.
Considering the intrinsic and extrinsic evidence, we determine that the
broadest reasonable interpretation of "concave" includes structures described
by both of the definitions in the graphic above. See In re Trans Texas
Holdings Corp., 498 F.3d 1290, 1299 (Fed. Cir. 2007) (construing a claim
term under the broadest reasonable interpretation in accordance with the
broader of certain dictionary definitions). Applying that interpretation,
Appellants have not shown that the recessed structure shown, for example,
in Figure 1 of deDoes, is not a "concave detent."
Second, Appellants argue that deDoes fails to teach "a concave detent
defined in the second wall, the concave detent extending into the cavity for
frictionally securing a blade inserted into the cavity" because, "as shown in
Figure 1 (see, e.g., the downward sidewall) and Figure 6 (see, e.g., the
outwardly protruding outer wall) ... , deDoes discloses a blade-receiving
portion that protrudes from the outer wall of the knife sheath." Appeal Br.
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Application 12/639,660
12. According to Appellants, "[t]his blade-receiving portion formed by the
opposing walls of the sheath is both hollow and unobstructed rather than
providing a concave structure extending into the cavity for frictionally
securing an inserted blade, as recited in claim 1." Id. Appellants also
contend that "deDoes shows primarily planar structures joined by edges
having a relatively small radius of curvature" and that "a concave detent will
function differently than a device having planar structures joined by tight
comers." Id. at 13. According to Appellants, a "concave detent can provide
a structure that engages an inserted blade to a degree that is dependent on a
thickness of the blade." Id. (citing Spec. i-f 40).
We are not apprised of error based on Appellants' arguments.
Appellants have not shown that deDoes fails to provide the recited "cavity
defined by a first wall" (see Fig. 3) or the recited "concave detent defined in
the second wall, the concave detent extending into the cavity" (see Fig. 1 ).
See Final Act. 3--4 (relying on Figures 1 and 3 for these limitations and
identifying, for example, a "concave detent" in Figure 1 ); see also Ans. 10
(stating that "deDoes discloses/teaches a concave detent which clearly
extends into the inner part of the sheath").
As to the functional requirement of "functionally securing a blade
inserted into the cavity," we determine that the Examiner's reliance on
Figure 4 of deDoes-showing an inverted knife in dashed line-supports a
prima facie case that the identified structures can inherently perform the
function recited. See Ans. 13 ("It is clear from figure 4 that the concave
detent is capable of making contact with a blade to create friction to prevent
it from falling out of the cavity. Furthermore, a blade is not being positively
claimed and it is well known in the art that blades come in different sizes,
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Application 12/639,660
thicknesses, and shapes."). In response, Appellants have not shown that the
structure in deDoes does not inherently possess the limitation above. See In
re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). As to the argument that
the identified structures do not "engage[] an inserted blade to a degree that is
dependent on a thickness of the blade" (Appeal Br. 13), that function is not
recited in claim 1. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982)
(rejecting arguments "not based on limitations appearing in the claims").
For these reasons, we sustain the rejection of claim 1 as unpatentable
over the combined teachings relied upon by the Examiner. Claims 2-9 and
21 fall with claim 1.
Rejection 5 - Claims 22 and 23
As with claim 1, independent claim 22 recites, in relevant part, a
protective sheath comprising "a concave detent defined in the second wall,
the concave detent extending into the cavity for frictionally securing a blade
inserted into the cavity." Appeal Br. 24 (Claims App.). To address this
limitation, the Examiner again relied on Figures 1 and 3 of deDoes. See
Final Act. 10. Appellants argue the patentability of claim 22, stating that
claim 23 stands or falls with claim 22 (Appeal Br. 15) and relying on the
same arguments set forth above with regard to claim 1. Compare Appeal Br.
16-19 (claim 22), with id. at 12-14 (claim 1). For the reasons discussed
above, we sustain the rejection of claims 22 and 23 as unpatentable over the
combined teachings relied upon by the Examiner.
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Appeal2014-005322
Application 12/639,660
DECISION
We AFFIRM the decision to reject claims 1-9 and 21-23.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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