Ex Parte Schmidt

Board of Patent Appeals and Interferences

Apr 30, 2012

10966733 (B.P.A.I. Apr. 30, 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.
10/966,733 10/15/2004 G. Gerry Schmidt 729290-043 7111
21836 7590 04/30/2012
HENRICKS SLAVIN AND HOLMES LLP
SUITE 200
840 APOLLO STREET
EL SEGUNDO, CA 90245
EXAMINER
ALIE, GHASSEM
ART UNIT PAPER NUMBER
3724
MAIL DATE DELIVERY MODE
04/30/2012 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 G. GERRY SCHMIDT
____________

Appeal 2009-012930
Application 10/966,733
Technology Center 3700
____________

Before JOHN C. KERINS, CHARLES N. GREENHUT and JAMES P.
CALVE, Administrative Patent Judges.

KERINS, Administrative Patent Judge.
DECISION ON APPEAL

Appeal 2009-012930
Application 10/966,733

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STATEMENT OF THE CASE
G. Gerry Schmidt (Appellant) seeks our review under 35 U.S.C. § 134
of the Examiner’s final rejection of claims 1 and 3-17. Claim 2 is canceled
and claims 18-53 have been withdrawn. We have jurisdiction under 35
U.S.C. § 6(b). We AFFIRM.

THE INVENTION
Appellant’s invention is directed to a cutter apparatus. Independent
claim 1 is illustrative:
1. A cutter apparatus, comprising:
a housing sized to be hand-held, the housing including a
channel and openings adjacent to the channel at three different
sides of the housing, the openings being approximately
equidistant from the distal end of the housing; and
a blade carrier sized to fit within and slide along the
channel, the blade carrier including three engaging portions that
are positioned at a distal end of the blade carrier and extend
from the openings such that a force bearing upon any of the
portions can cause the blade carrier to slide along the channel;
wherein the blade carrier is configured to secure a blade
to the cutter apparatus such that a cutting edge of the blade
faces a bottom side of the housing, and the three engaging
portions extend from a top side, a left side, and a right side of
the housing.
THE REJECTIONS
The Examiner rejected claims 1 and 3-16 under 35 U.S.C. § 103(a) as
being obvious over Gringer (US 6,058,607, issued May 9, 2000) in view of
Ho (US 2003/0196331 A1, published Oct. 23, 2003) and Blow (US
1,507,043, issued Sep. 2, 1924). The Examiner rejected claim 17 under 35
U.S.C. § 103(a) as being obvious over Gringer in view of Ho, Blow and
Collins (US 5,511,311, issued Apr. 30, 1996).
Appeal 2009-012930
Application 10/966,733

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ISSUE
Did the Examiner err in concluding that the subject matter of claim 1
would have been obvious over Gringer in view of Ho and Blow?

ANALYSIS
Appellant argues claims 1 and 3-16 as a group. We will take claim 1
as representative. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
The Examiner found that Gringer discloses all elements of the cutting
apparatus of claim 1, with the exception of a third opening on the top of the
housing, a third engaging portion on the blade carrier extending from a third
opening, and that the openings are approximately equidistant from the distal
end of the housing. Ans. 3. The Examiner observed that Gringer discloses
that providing a blade carrier with more than a single engaging portion
provides the user with flexibility in holding the handle and manipulating the
engaging button on either side of the housing. Ans. 3-4; see, Gringer, col. 9,
ll. 6-18.
The Examiner cites to Ho as disclosing a knife including a housing
having an opening in the top, and a blade carrier having an engaging portion
on the top extending from the opening, with the Examiner further noting that
this type of construction is well known in the art. Ans. 4. The Examiner
concludes that it would have been obvious to modify the Gringer knife to
provide an additional opening and engaging portion on the top of the handle,
in order to provide even greater user flexibility of holding the handle in a
desirable position while still being able to manipulate one of the engaging
buttons. Id.
Appeal 2009-012930
Application 10/966,733

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The Examiner notes that this proposed modification does not
explicitly teach positioning the openings approximately equidistantly from
the housing. The Examiner finds that Blow teaches a knife having openings
to either side of the knife for accommodating sliding engaging portions, with
the openings being approximately equidistant from the distal end of the
housing. Id. The Examiner concludes that it would have been obvious in
view of Blow to further modify the Gringer knife as modified by Ho to have
a top opening with an engaging portion extending therefrom, such that the
openings are all approximately equidistant from the distal end of the
housing. Ans. 4-5. The Examiner notes that such a structure would operate
the same as if the openings were not equidistant from the distal end of the
housing. Ans. 4.
Appellant does not appear to take issue with the findings and
conclusions set forth by the Examiner in the basic ground of rejection.
Appellant instead latches onto a seemingly misworded or, at a minimum,
confusing, passage presented by the Examiner first in the Advisory Action
dated May 5, 2008, and then in the Response to Argument section of the
Examiner’s Answer. That passage reads:
Blow merely teaches that three engaging portions
can be located equidistant from the distal end of
the hand-held tool. Blow may not teach the same
top opening as taught by Ho. However, Blow
teaches three engaging portions that are equidistant
from the distal end of a pocketknife. In other
words, the three engaging portions are inherently
in the three openings that are also equidistant from
the distal end of the pocketknife.
Ans. 8.
Appeal 2009-012930
Application 10/966,733

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When this discussion was first advanced in the Advisory Action, it
was in response to what appears to be an individual attack on the Blow
reference. To the extent that the passage attempts to stand for the
proposition that Blow teaches the use of three openings in its pocketknife
that have three engaging portions extending therefrom, such is not supported
by the Blow disclosure. Further, to the extent that the passage attempts to
establish that Blow teaches three engaging portions precisely as claimed,
i.e., that the blade carrier has three engaging portions thereon, this is also not
evidenced in the Blow disclosure.
Appellant contends that these erroneous assertions regarding the
structure and functionality of Blow result in a failure by the Examiner to
articulate findings supporting the Examiner’s conclusion of obviousness.
Appeal Br. 14. We disagree.
The Examiner acknowledges in the quoted passage that Blow does not
teach the same top opening as is taught by Ho. It appears that what follows
as a statement of inherent characteristics of the device are directed not
specifically to Blow alone, but instead to the combination of Gringer, Ho
and Blow, once the proposed modifications are effected.
Most importantly, immediately preceding the passage in question, the
Examiner sets forth a summary as to how the teachings of the references are
being applied, and that summary makes clear that the Examiner is not
relying on Blow, but on a combination of Gringer and Ho, as teaching three
openings with three engaging portions extending therethrough. The
Examiner states that:
. . . Gringer, as modified by Ho, teaches a blade
carrier with three engaging portions that are
located within openings in three different sides of
Appeal 2009-012930
Application 10/966,733

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the housing. Gringer [sic., Blow]1 teaches that the
two openings in the sides of the housing are
equidistant from the distal end of the housing. It is
obvious that if another or third engaging portion,
as taught by Ho, is added to the blade carrier in
Gringer, the opening for the third engaging portion
would be approximately in the same area that other
openings for the first and second engaging portions
are located.
Ans. 7-8. As such, Appellant’s arguments directed to the Blow patent alone
not teaching three openings at three different sides of the housing and three
engaging portions extending from top, left and right sides, are not
persuasive.
Appellant further argues in general that “the Examiner [has not]
articulated a finding that there was some teaching, suggestion, or motivation,
either in the references themselves or in the knowledge generally available
to one of ordinary skill in the art, to modify Gringer or to combine reference
teachings to provide a cutter apparatus” meeting the limitations directed to
the openings in the housing and the engaging portions extending from the
housing. Appeal Br. 14. Rigid application of a “teaching, suggestion,
motivation” test for obviousness was held to be legal error in KSR Int'l Co.
v. Teleflex Inc., 550 U.S. 398 (2007). The Examiner here has presented an
articulated reason to combine the teachings which is supported by rational
underpinnings. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).

1 The Examiner had previously found that “Gringer… does not teach that the
openings being approximately equidistant from a distal end of the housing,”
and that “Blow teaches a knife including openings 14 for accommodating
engaging portions 14 [sic., 12] and being approximately equidistant from the
distal end of the housing.” Ans. 3, 4.
Appeal 2009-012930
Application 10/966,733

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Appellant additionally takes issue with the Examiner’s reliance on St.
Regis Paper Co. v. Bemis Co., Inc., 549 F.2d 833 (7th Cir. 1977)(cert. den’d),
in support of the position that it would have been obvious to add additional
engaging portions to the Gringer blade carrier, as such amounts to a mere
duplication of essential working parts that would have involved only routine
skill in the art. Reply Br. 10. As this appears to be an alternative rationale
employed by the Examiner in reaching the conclusion that claim 1 would
have been obvious, it is not necessary for us to reach the propriety of this
alternative basis.
The rejection of claim 1, and of claims 3-16 depending from claim 1
and not separately argued, as being unpatentable over Gringer in view of Ho
and Blow is sustained.
Appellant expressly relies solely on the arguments advanced with
respect to claim 1 for the patentability of claim 17, which was rejected as
being obvious over Gringer in view of Ho and Blow, and further in view of
Collins. App. Br. 14. For the reasons stated above, we are not persuaded
that the Examiner erred in reaching the conclusion of obviousness. The
rejection of claim 17 is thus sustained.
CONCLUSION
The Examiner did not err in concluding that the subject matter of
claim 1 would have been obvious over Gringer in view of Ho and Blow.

DECISION
The rejection of claims 1 and 3-16 as being unpatentable over Gringer
in view of Ho and Blow is affirmed. The rejection of claim 17 as being
unpatentable over Gringer, Ho, Blow and Collins is affirmed.
Appeal 2009-012930
Application 10/966,733

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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