Ex Parte Riccobene et al

Patent Trials and Appeals Board

Mar 20, 2013

11827888 - (D) (P.T.A.B. Mar. 20, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte THOMAS S. RICCOBENE and MERLYN D. NYGHT
____________

Appeal 2011-000940
Application 11/827,888
Technology Center 3600
____________

Before LINDA E. HORNER, BRETT C. MARTIN, and
BART A. GERSTENBLITH, Administrative Patent Judges.

GERSTENBLITH, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-000940
Application 11/827,888

2

STATEMENT OF THE CASE
Thomas S. Riccobene and Meryln D. Nyght (“Appellants”) appeal
under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 21-38.
We have jurisdiction under 35 U.S.C. § 6(b).
The Claimed Subject Matter
Claims 21 and 31 are illustrative of the claimed subject matter and are
reproduced below.
21. A retaining stake, comprising:
an elongate body having an upper end, a lower end, a
front side, and a rear side;
an anvil surface on the upper end of said body generally
perpendicular to said body, and defining a line of force
extending longitudinally through said body and being normal to
said anvil surface;
a front face on the front side of said body being generally
parallel to said line of force; and
a rear face on the rear side of said body being inclined
rearwardly from said line of force from the lower end to the
upper end.
31. A retaining stake, comprising:
an elongate body having an upper end, a lower end, a
front face, and a rear face, said body having a center line;
an anvil surface on the upper end being generally
perpendicular to said body, and defining a line of force
extending longitudinally of said body, normal to said anvil
surface, and offset rearwardly from the center line of said body;
and
a chisel shaped edge at the lower end of said body, said
edge being at or offset forwardly from said line of force.

Appeal 2011-000940
Application 11/827,888

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Reference
The Examiner relies upon the following prior art reference:
Omoto US 2,513,513 Jul. 4, 1950
Rejection
The Examiner makes the following rejection:
I. Claims 21-38 are rejected under 35 U.S.C. § 102(b) as
anticipated by Omoto.

SUMMARY OF DECISION
We AFFIRM-IN-PART.
We enter a NEW GROUND OF REJECTION pursuant to our
authority under 37 C.F.R. § 41.50(b) against claim 21 under 35 U.S.C.
§ 102(b) as anticipated by Omoto.

OPINION
The Examiner found that Omoto discloses each and every element of
the claims. Ans. 4-10. Appellants raise several arguments directed to
different groups of claims in response to the rejection. Some of Appellants’
arguments are based on a fundamental disagreement with the Examiner as to
where a “line of force” may be drawn with respect to Omoto’s “spike” and
we address that issue as a preliminary question before proceeding to address
Appellants’ specific arguments.
In particular, Appellants contend that there is one line of force for
Omoto’s spike, indicated by line B in Appellants’ annotated version of
Omoto’s figure 1, shown below:
App
App

Omo
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decla
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.”).
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lication 11
to’s Figur
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ration of i
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ellants, ho
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ld strike th
App. Br. 1
n by the E
Thus, even
00940
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xaminer i
though R
as annota
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ted by Ap
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3); Reply
enter of th
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page 9 of
ce—line B
hat: “‘A li
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e center of
occurrence
“[a]s the t
e is struck
e anvil sur
Br. 5 (“Th
e anvil sur
d strike th
their
—on the
ne of
e B as it is
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).
erm
. One
face.” See
e line
face . . .
e anvil

,
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surfa
anvi
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line
Acco
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lication 11
ce in the c
l surface in
The Exa
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to’s Figur
er with a
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of force fr
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00940
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enter of th
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om being a
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annotated
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n as anno
inting to l
d that the
nywhere a
er, a user c
5
ppellants
vil surface
Omoto’s
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he figure b

tated by th
ine “13.”
re is nothin
user appl
ould appl
argue that
.
figure 1, b
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elow:
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ies said fo
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ut drew th
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er on page
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ng line 13
strike the
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5 of the
uding the
10.
as

Appeal 2011-000940
Application 11/827,888

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reflected in the Examiner’s annotated figure 1, along line B as indicated in
Appellants’ annotation, or any other place along the head of the anvil. Id.
First and foremost, we recognize that Appellants and the Examiner
indicate that the line of force is perpendicular to the surface of the anvil.
Second, while Omoto does not explicitly indicate where a line of force
might be, it does teach that “head H [i.e., the anvil] is beveled along the
sides and around the end remote from the shank.” Omoto, col. 1, ll. 46-47.
Omoto discloses that one reason for the beveling is “to prevent chipping
when the head is subjected to driving blows.” Id. at col. 2, ll. 41-42. Omoto
appears to recognize that a user may not hit the “head” or anvil in the center
of the anvil or the center of the shank and thus provides beveling to address
those off-center “driving blows.” Appellants have not pointed to anything in
Omoto that suggests a line of force (or, more specifically, a driving blow) is
limited to one location.
Third, while Appellants have not argued that the Specification
explicitly restricts the line of force nor cited to a specific portion of the
Specification in support of their assertion that the line of force is fixed, the
Specification does indicate the intended location of the line of force 38. See
Spec. at 5 (“Force supplied by a hammer or sledge to the surface 30 of the
head (as depicted in FIGS. 3-6) will be transmitted along a line of force
(indicated by dot dash line 38) extending generally normal or perpendicular
to the flat surface 30 of the anvil. The anvil is preferably so located that the
line of force 38 is offset rearwardly from the center line of the body 12, as is
more fully explained below.”). As reflected in this disclosure, the claims,
and figures 3-6, Appellants have chosen to claim certain structural features
Appeal 2011-000940
Application 11/827,888

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of their “retaining stake” in relation to a line of force. The Specification,
however, does not explicitly limit the exact location of the line force.
Accordingly, we agree with the Examiner that, because the anvil may
be struck anywhere on its surface, the placement of the line of force may
originate from any location on the anvil surface in a direction perpendicular
to that surface.
Claims 21-30 and 35-38
Appellants assert that claim 21 is not anticipated by Omoto because
Omoto does not disclose (1) a rear face inclined rearwardly from the line of
force and (2) a front face parallel to the line of force. App. Br. 10.
We agree with Appellants that based on the manner in which the
Examiner designated the “rear face” and “front face” of Omoto (i.e., “5” and
“4,” respectively, in the Examiner’s annotated version of Omoto’s figure 1),
the designated “rear face” is not inclined rearwardly from the line of force.
Rather, the designated “rear face” is generally parallel the line of force.
Accordingly, we do not sustain the rejection of claim 21, or its
dependent claims 22-30.
Claims 35-38 similarly contain the requirement that the rear face be
“inclined rearwardly from said lower end to said upper end relative to said
line of force.” Accordingly, for the reasons explained with respect to claim
21, we do not sustain the rejection as applied to claims 35-38.

Claims 31, 32, and 34
Appellants assert that Omoto does not disclose “a chisel shaped edge
at the lower end of said body, said edge being at or offset forwardly from
said line of force” as required by the claims. App. Br. 13. This argument
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Application 11/827,888

8
depends upon the placement of the line of force as discussed above in the
context of the Appellants’ and Examiner’s annotated versions of Omoto
figure 1. Because we found that the line of force is not limited to the
position indicated by Appellants, the Examiner’s annotated version of
Omoto figure 1 reflects that Omoto discloses this element of the claims.
Accordingly, we sustain the rejection as applied to claims 31, 32, and
34.1
Claim 33
Although claim 33 depends from claim 31, Appellants separately
argue that Omoto does not disclose “wherein said abutment further
comprises a surface inclined downwardly and rearwardly from the abutment
top surface.” Claim 33 (emphasis added); see App. Br. 13. Appellants
contend that the surface inclined downwardly and rearwardly in Omoto does
not extend “from” the top surface because there is an intervening vertical
surface. App. Br. 13.2
The Examiner relied on surfaces “9,” reflected in the Examiner’s
annotated version of Omoto figure 1, as disclosing “a surface inclined
downwardly and rearwardly from the abutment top surface.” Ans. 8.
Surface “9” from the Examiner’s annotated version of Omoto figure
1, shown below with an arrow, discloses a surface inclined downwardly and

1 Appellants have not separately argued dependent claims 32 and 34. App.
Br. 13. Thus, claims 32 and 34 stand or fall with claim 31 from which they
depend. See 37 C.F.R. § 41.37(c)(1)(vii) (2011); see also In re Lovin, 652
F.3d 1349, 1351 (Fed. Cir. 2011).
2 Appellants have not argued that either surface “9” is not “adapted to
engage a side of the landscape unit to restrain lateral movement” as required
by claim 33. See App. Br. 13; see generally Reply Br. Thus, we do not
opine on that element of the claim.
App
App

rearw
rearw
abutm
Omo
Answ
num
grou
does
eal 2011-0
lication 11
ardly from
ardly (no
ent top s

to’s Figur
er, with a
eral “9.”
Accordin
Pursuant
nd of rejec
not expre
00940
/827,888
the abut
t vertically
urface (8).
e 1 is show
n arrow p
gly, we su
New
to our aut
tion again
ssly define
ment top s
as Appel

n as anno
ointing to
stain the r
Ground of
hority und
st claim 2
which sur
9
urface sinc
lants asser
tated by th
one of the
ejection a
Rejection
er 37 C.F
1 under 35
face of th
e it is ang
t) and it ex
e Examin
surfaces in
s applied t
– Claim 2
.R. § 41.50
U.S.C. §
e retaining
led downw
tends from
er on page
dicated b
o claim 33
1
(b), we en
102(b). C
stake bod
ardly and
the

5 of the
y the
.
ter a new
laim 21
y is the

Appeal 2011-000940
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“front side” or “front face” and which surface of the body is the “rear side”
or “rear face.” With respect to these surfaces, the claim simply requires that
whichever side is considered the “front face on the front side of said body”
be “generally parallel to said line of force,” and that the “rear face on the
rear side of said body” be “inclined rearwardly from said line of force from
the lower end to the upper end.” It is not until claim 23, where the claims
differentiate between the surfaces by noting that the upper end of the body
“comprises an abutment on the front side of [the] body.” Because claim 21
does not limit the surfaces to a particular front or rear, we find that the
surface reflected as “5” in the Examiner’s annotated version of Omoto figure
1 discloses the “front face” and surface “4” of the same annotated figure
discloses the “rear face” as claimed. The front face is “generally parallel to
said line of force” and the rear face is “inclined rearwardly from said line of
force.” Accordingly, we find that the stake disclosed by Omoto’s figure 1
discloses each and every element of the claim.
The Patent Trial and Appeal Board is a review body rather than a
place of initial examination. Accordingly, we have not reviewed the claims
depending from claim 21 to the extent necessary to determine whether these
claims are unpatentable in light of our findings regarding Omoto. We leave
it to the Examiner to the determine the appropriateness of any further
rejections based on this reference (e.g., with respect to claims 22, 27, 28, 29,
and 30, which do not appear to further limit the front or rear face of the stake
body). Our decision not to enter a new ground of rejection for each claim
dependent upon claim 21 shall not be considered any indication of the
patentability or unpatentability of the non-rejected dependent claims.

Appeal 2011-000940
Application 11/827,888

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DECISION
We reverse the Examiner’s decision rejecting claims 21-30 and 35-38.
We affirm the Examiner’s decision rejecting claims 31-34.
We enter a new ground of rejection of claim 21 under 35 U.S.C.
§ 102(b) as anticipated by Omoto.
Regarding the new ground of rejection, 37 C.F.R. § 41.52(a)(1)
provides “Appellant may file a single request for rehearing within two
months from the date of the original decision of the Board.”
In addition to affirming the Examiner's rejection(s) of one or more
claims, this decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
Examiner, in which event the proceeding will be remanded to
the Examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .
Should Appellants elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed
rejections, the effective date of the affirmance is deferred until conclusion of
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the prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejections are overcome.
If Appellants elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final action
on the affirmed rejections, including any timely request for rehearing
thereof.
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).

AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

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