Ex Parte Sherrill

Board of Patent Appeals and Interferences

Sep 29, 2008

10219438 (B.P.A.I. Sep. 29, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte W. MICHAEL SHERRILL
____________

Appeal 2008-5336
Application 10/219,438
Technology Center 1700
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Decided: September 29,2008
____________

Before ROMULO H. DELMENDO, LINDA M. GAUDETTE, and
KAREN M. HASTINGS, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 1-18 (Appeal Brief filed February 11, 2008, hereinafter “Br.”; Final
Office Action mailed July 10, 2007). We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
Appeal 2008-5336
Application 10/219,438

Appellant states that the “invention is directed to a method which is
particularly useful for forming a clay which has been thrown, or is spinning,
as commonly done when forming pots and the like” (Specification,
hereinafter “Spec.,” ¶0002).
Claims 1, 2, 9, and 10 on appeal read as follows:
1. A method for forming objects from clay comprising
the steps of:
a) throwing said clay to form a preliminary object;
b) contacting said clay with a rib wherein said rib
comprises:
at least one edge comprising an irregular curved shape
and a central region; and wherein said rib comprises a curved
taper cross-sectional region between said central region and
said irregular curved edge; and
c) imparting said irregular curved shape into said
preliminary object to form a secondary object.
2. The method of claim 1 wherein said rib further
comprises a centrally located hole located within said central
region.
9. The method of claim 1 wherein said curved taper
region comprises a first curved taper section and a second
curved taper cross-sectional section exterior to said first curved
taper section.
10. The method of claim 1 wherein said rib comprises a
polymer with a stiffness of at least 30 D to no more than 80 D.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Simpson 4,102,622 Jul. 25, 1978
Koulouras 4,455,752 Jun. 26, 1984
Dreith 5,942,261 Aug. 24, 1999

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Application 10/219,438

The Examiner rejected the claims under 35 U.S.C. § 103(a) as
follows: (i) claims 1, 9, and 13 as unpatentable over the combined teachings
of Simpson and Dreith; and (ii) claims 2-8, 10-12, and 14-18 as unpatentable
over the combined teachings of Simpson, Dreith, and Koulouras
(Examiner’s Answer mailed April 16, 2008, hereinafter “Ans.,” 4-9).

ISSUE
Has Appellant demonstrated error in the Examiner’s determination
that a person a having ordinary skill in the art would have found the subject
matter of the appealed claims obvious in view of the applied prior art?

FINDINGS OF FACT
1. Appellant’s Figure 2 is reproduced below:

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Application 10/219,438

2. Appellant’s Figure 2 is said to depict an embodiment of a clay
tool 1 having a single straight edge 6, an irregular curved edge
7, and centrally located hole 2 (¶¶0019-0023).
3. Appellant’s Specification defines the term “curved taper” as
follows (¶0025):
For the purposes of the present invention the
term “curved taper” refers to a taper which has a
continuously decreasing radius of curvature from
the thickest end to the thinnest end such that at any
given point along the curved taper the thickness is
no less than the thickness that would be expected
for a linear taper. A linear taper is one in which
the upper and lower surface of a taper are both
planar from the thickest end of the taper to the
thinnest end of the taper.
4. Appellant’s Figure 4 is reproduced below:

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Application 10/219,438

5. Appellant’s Figure 4 is said to depict a cross-cut perspective
view of a clay tool in accordance with the present invention,
wherein the “[m]ore preferably the curved taper region
comprise[s] a first curved taper section, 13, and exterior thereto
a second curved taper section, 14” (¶0023).
6. Appellant’s Specification acknowledges (¶0003):
The art of forming pots from clay has been
known for many centuries. One well known
technique is to place moldable clay onto a spinning
wheel and shaping the spinning clay into an object
which has aesthetic appeal or a practical
application.
7. Simpson teaches (col. 1, ll. 5-9):
Small vases used as a planter are often made
by forming clay on a potters wheel and kiln drying
the formed vase to make a planter. These planters
can be formed into a variable contour, but have the
disadvantage of usually being limited in size and
are easily broken.
8. Simpson’s Figure 6 is reproduced below:
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9. Simpson’s Figure 6 depicts shaping a planter 50 with a shaper
tool 40 having a contoured edge 46, which determines the
outside contour of planter 50 (col. 2, ll. 31-32; col. 2, l. 48 to
col. 3, l. 4).
10. Dreith teaches “modeling tools with wire-ends for cutting,
carving/scraping, shaping/modeling, molding, and texturing a
variety of soft materials (such as wax, soft clay, and plaster
before they are hardened or fired into a final product such as
sculptures, pottery, dishware, tiles, beads, walls, etc.)” (col. 1,
ll. 8-13).
11. Dreith further states that “hobby and professional artists. . . .
find themselves with a great need for many different sculpting
tools having different cross-sections, shapes, sizes, and
stiffness” (col. 1, ll. 56-59).
12. Dreith’s Figure 4 is reproduced below:
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13. Dreith’s Figure 4 is said to depict a sectional view of a
preferred tool of the invention with a sectional view of the
handle (col. 3, ll. 33-35).
14. Dreith teaches that the handle of the tool of Figure 4 may have
a cross-sectional shape other than a hexagonal one as shown,
such as a moon-shaped cross-section, and that “[t]he outer
dimension of tool handles may vary along its length to make it
more ergonomic for artists” (col. 5, ll. 17-23).
15. The Examiner provided a partial illustration of Dreith’s tool
having a moon-shaped cross-section (Ans. 8):

16. The Examiner’s illustration is said to depict Dreith’s tool
having a moon-shaped cross-section.
17. Koulouras’ Figure 3 is reproduced below:
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18. Koulouras’ Figure 3 is said to depict a sand toy (i.e., a tool for
shaping sand) made of plastic with a uniform thickness,
wherein openings 14 and 15 provide means for grasping the
tool with two hands (col. 2, ll. 7-40).
19. Dreith teaches that the wire end of the tool (i.e., the end of the
tool that contacts the product to be shaped) is “made of many
different suitable materials of varying stiffness” (col. 3, ll. 9-
13).

PRINCIPLES OF LAW
On appeal to this Board, Appellant must show that the Examiner erred
in finally rejecting the claims. Cf. In re Kahn, 441 F.3d 977, 985-986 (Fed.
Cir. 2006) (“On appeal to the Board, an applicant can overcome a rejection
by showing insufficient evidence of prima facie obviousness or by rebutting
the prima facie case with evidence of secondary indicia of
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Application 10/219,438

nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir.
1998)); see also 37 C.F.R. § 41.37(c)(1)(vii).
It is well settled that the United States Patent and Trademark Office
(PTO) is obligated to give claim terms their broadest reasonable
interpretation, taking into account any enlightenment by way of definitions
or otherwise found in the specification. In re Icon Health and Fitness, Inc.,
496 F.3d 1374, 1379 (Fed. Cir. 2007) (“[T]he PTO must give claims their
broadest reasonable construction consistent with the specification . . .
Therefore, we look to the specification to see if it provides a definition for
claim terms, but otherwise apply a broad interpretation.”); In re Bigio, 381
F.3d 1320, 1324 (Fed. Cir. 2004) (“[T]he PTO gives a disputed claim term
its broadest reasonable interpretation during patent prosecution.”).
This longstanding principle is based on the notion that “during patent
prosecution when claims can be amended, ambiguities should be recognized,
scope and breadth of language explored, and clarification imposed.” In re
Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989). That is, a patent applicant has the
opportunity and responsibility to remove any ambiguity in claim term
meaning by amending the application. “Only in this way can uncertainties
of claim scope be removed, as much as possible, during the administrative
process.” In re Zletz, 893 F.2d at 322.
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int’l Co. v. Teleflex, Inc., 127 S. Ct. 1727,
1734 (2007).
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KSR reaffirms the analytical framework set out in Graham v. John
Deere Co., 383 U.S. 1 (1966), which states that an objective obviousness
analysis includes: (1) determining the scope and content of the prior art; (2)
ascertaining the differences between the prior art and the claims at issue; and
(3) resolving the level of ordinary skill in the pertinent art. KSR, 127 S. Ct.
at 1734. Secondary considerations such as commercial success, long felt but
unsolved needs, or failure of others “might be utilized to give light to the
circumstances surrounding the origin of the subject matter sought to be
patented.” Id. (quoting Graham, 383 U.S. at 17-18).
KSR disapproved a rigid approach to obviousness (i.e., an analysis
limited to lack of teaching, suggestion, or motivation). KSR, 127 S. Ct. at
1741 (“The obviousness analysis cannot be confined by a formalistic
conception of the words teaching, suggestion, and motivation, or by
overemphasis on the importance of published articles and the explicit
content of issued patents.”). See also DyStar Textilfarben GmbH & Co.
Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1367 (Fed. Cir. 2006)
(“Our suggestion test is in actuality quite flexible and not only permits, but
requires, consideration of common knowledge and common sense”); Alza
Corp. v. Mylan Labs., Inc., 464 F.3d 1286, 1291 (Fed. Cir. 2006) (“There is
flexibility in our obviousness jurisprudence because a motivation may be
found implicitly in the prior art. We do not have a rigid test that requires an
actual teaching to combine...”).
KSR further instructs “that when a patent claims a structure already
known in the prior art that is altered by mere substitution of one element for
another known in the field, the combination must do more than yield a
predictable result.” KSR, 127 S. Ct. at 1740.
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“The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference; nor is it that the claimed invention must be expressly suggested in
any one or all of the references. Rather, the test is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art.”). In re Keller, 642 F.2d 413, 425 (CCPA 1981).
“[D]iscovery of an optimum value of a result effective variable in a
known process is ordinarily within the skill of the art.” In re Boesch, 617
F.2d 272, 276 (CCPA 1980).

ANALYSIS
As to the rejection of claims 1, 9, and 13 over Simpson and Dreith,
Appellant has submitted reasonably specific arguments for claims 1 and 9.
Accordingly, for this rejection, we address claims 1 and 9 separately but
claim 13 stands or falls with claim 1. As to the rejection of claims 2-8, 10-
12, and 14-18 over Simpson, Dreith, and Koulouras, Appellant has grouped
and argued claims 2-5 separately from claims 10-12. Accordingly, we select
and confine our discussion of this rejection to claims 2 and 10. Claims 3-8,
11, 12, and 14-18 stand or fall with either claim 2 or claim 10. See 37
C.F.R. § 41.37(c)(1)(vii).
CLAIM 1 (Simpson and Dreith):
Appellant has “no quarrel” with the Examiner’s factual finding that
Simpson describes a method substantially as claimed herein, wherein a
shaper tool 40 having an irregular shaped edge is used to form a planter (Br.
6; Facts 1, 2, and 6-9). Rather, Appellant’s principal contention is that
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neither Simpson nor Dreith teaches “a curved taper cross-sectional region”
in the shaper tool as required by claim 1 (Br. 5-7).
We cannot agree with Appellant. As pointed out by the Examiner
(Facts 10-16), and as acknowledged by Appellant (Br. 7), Dreith teaches a
shaping tool that may be provided with various cross-sections, including a
moon-shaped cross-section (i.e., a cross-section defined by overlaid circles).
According to Dreith, artists and sculptors have a need for tools with varying
cross-sections and dimensions (Facts 11 and 14).
Under these circumstances, a person having ordinary skill in the art
would have been led to use a hand-held shaping tool having a moon-shaped
cross-section as taught by Dreith in Simpson’s method in order to better
control the shaping of the planter while realizing the ergonomic advantages
associated with such a cross-section. The provision of an irregular curved
shape edge on the shaping tool, as shown in Simpson’s tool, would also have
been prima facie obvious because such an irregular curved shape edge would
have enabled an irregular curved shape contour on the final product. While
Appellant appears to be arguing that a moon-shaped cross-section would not
have “a curved taper cross-sectional region” as required by claim 1, this
argument fails because a moon-shaped cross-section does in fact have a
“curved taper” as that term is defined in Appellant’s own Specification (Fact
3). KSR, 127 S. Ct. at 1740 (“[W]hen a patent claims a structure already
known in the prior art that is altered by mere substitution of one element for
another known in the field, the combination must do more than yield a
predictable result.”).
CLAIM 9 (Simpson and Dreith):
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Appellant argues that Simpson does not teach a curved taper cross-
sectional region, much less a curved taper cross-sectional region having first
and second curved taper sections (Br. 7).
Appellant’s argument does not demonstrate reversible error. A
shaping tool with a moon-shaped cross-section of the type shown in Dreith
necessarily has a first curved taper section and a second curved taper section
exterior to the first curved taper section, as recited in claim 9, because any
two parts of the moon-shaped cross-section may be considered as first and
second curved taper sections. This interpretation is consistent with
Appellant’s own Specification, which indicates that the first and second
curved taper sections merely define two sections of the curved taper cross-
sectional region (Facts 4, 5). In re Icon Health, 496 F.3d at 1379 (“[T]he
PTO must give claims their broadest reasonable construction consistent with
the specification . . . .”).
CLAIM 2 (Simpson, Dreith, and Koulouras):
Appellant urges that Koulouras teaches away from the claimed
invention because it teaches a body having a uniform thickness and that
“[e]ven though Koulouras teaches a central hole the deficiencies of Simpson
as modified by Dreith. . . . are not mitigated” (Br. 8-9; Facts 17, 18).
We disagree. That Koulouras teaches a device with uniform thickness
is not particularly helpful to the obviousness inquiry because the Examiner
has not relied on Koulouras for the curved taper cross-section. As discussed
above, the Examiner has relied on Dreith for the curved taper cross-section.
“The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference; nor is it that the claimed invention must be expressly suggested in
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any one or all of the references. Rather, the test is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art.”). In re Keller, 642 F.2d at 425 (“[T]he test [for obviousness] is
what the combined teachings of the references would have suggested to
those of ordinary skill in the art.”).
CLAIM 10 (Simpson, Dreith, and Koulouras):
Appellant argues that Simpson and Koulouras both teach “a rigid rib
in direct contradiction to the claimed subject matter” (Br. 9).
Appellant’s argument is unpersuasive. A person having ordinary skill
in the art would have understood from common sense that the edge of a tool
that contacts the clay during shaping must have a suitable degree of stiffness.
This finding is supported by Dreith’s disclosure, which suggests that the
stiffness of the part that contacts the material to be molded is a result-
effective variable (Fact 19). Hence, we conclude that a person having
ordinary skill in the art would have found it obvious to arrive at the claimed
stiffness values by routine optimization of a result-effective variable. In re
Boesch, 617 F.2d at 276.
For these reasons, we uphold the Examiner’s rejections.

CONCLUSION
On this record, we determine that Appellant has failed to demonstrate
any error in the Examiner’s determination that (i) claims 1, 9, and 13 are
unpatentable over the combined teachings of Simpson and Dreith and (ii)
claims 2-8, 10-12, and 14-18 are unpatentable over the combined teachings
of Simpson, Dreith, and Koulouras.

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DECISION
The Examiner’s decision to reject appealed claims 1-18 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)(1)(iv).
AFFIRMED

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