Ex Parte Stones et al

Patent Trial and Appeal Board

Jun 21, 2013

10889764 (P.T.A.B. Jun. 21, 2013)

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.
10/889,764 07/13/2004 Kevin Stones P-US-GD-1097 7163
7590 06/24/2013
Black & Decker Corporation
701 E. Joppa Road
Towson, MD 21286
EXAMINER
DEXTER, CLARK F
ART UNIT PAPER NUMBER
3724
MAIL DATE DELIVERY MODE
06/24/2013 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte KEVIN STONES and DAVID BARKER
____________________

Appeal 2011-004426
Application 10/889,764
Technology Center 3700
____________________

Before PHILLIP J. KAUFFMAN, BRETT C. MARTIN, and
PATRICK R. SCANLON, Administrative Patent Judges.

SCANLON, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
decision rejecting claims 1, 17, 20, 31, and 33.1 Claims 7, 16, 19, 21, 25-30,
34, and 35 are cancelled, and claims 2-5, 13-15, and 36-52 stand withdrawn
from consideration. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
THE INVENTION
Appellants’ claimed invention is directed to a vegetation pruning
device that fits a gap between tools for light pruning and tools for heavy
pruning. Spec. 2, ll. 7-15.2 Claims 1 and 17 are the independent claims on
appeal. Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A vegetation pruning device comprising:
a pair of arms adapted to pivot relative to
each other about an axis to adjust the angle
between said arms, wherein each arm has a handle
portion adapted to be gripped by a user and a guard
portion;

1 Despite the Examiner having finally rejected claims 1, 6, 8-12, 17, 18, 20,
22-24, and 31-33 under one or more grounds of rejection (Final Rej. 4-9;
Ans. 3-8), Appellants have elected to appeal only certain rejections of claims
1, 17, 20, 31, and 33 (Br. 3; 8). Therefore, claims 6, 8-12, 18, 22-24, and 32
are considered withdrawn from the appeal, and we suggest that the Examiner
consider whether cancellation of these claims is appropriate. See Ex Parte
Ghuman, 88 USPQ2d 1478, 1480 (BPAI 2008) (precedential); Manual of
Patent Examining Procedure (MPEP) § 1215.03 (8th ed., Rev. 9, Aug.
2012).
2 As used herein, “Spec.” refers to the Substitute Specification filed January
15, 2009, and “Original Spec.” refers to the original Specification filed July
13, 2004.
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a motor having a rotary output drive;
an endless flexible cutting element mounted
to a support and adapted to be driven relative to
said support by said rotary output drive to cut
vegetation presented thereto;
a first guard portion adapted to be moved
relative to said cutting element by pivoting said
arms relative to each other to grip vegetation
between said first guard portion and said cutting
element;
an actuator provided on both handles portion
[sic] for actuating said motor, wherein said
actuator comprises an elongate actuator member
moveably mounted to said handle portion and
adapted to be urged towards said handle portion by
application of manual pressure at substantially any
location along the length of said actuator member
to actuate said motor; and
wherein said actuator member on each said
handle portion must be actuated in order to actuate
the motor.
REFERENCES
The Examiner relies upon the following prior art references:
Cartmill
Codazzi3
US 3,991,470
FR 2,554,757
Nov. 16, 1976
May 17, 1985
REJECTIONS
The following rejections are before us on appeal:
1. The rejection of claims 1 and 33 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.

3 The Examiner and Appellants refer to this reference as “French Publication
2554757” or “FP ’757.” We hereinafter refer to it as “FP ’757” for
consistency.
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2. The rejection of claim 20 under 35 U.S.C. § 112, first paragraph, as
failing to comply with the enablement requirement.
3. The rejection of claims 1, 17, and 31 under 35 U.S.C. § 112,
second paragraph, as being indefinite.
4. The rejection of claim 17 under 35 U.S.C. § 102(b) as being
anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as being
unpatentable over Cartmill.
5. The rejection of claim 17 under 35 U.S.C. § 102(b) as being
anticipated by FP ’757.
ANALYSIS
Rejection 1: Written Description
Claim 1
The Examiner contends that claim 1 does not comply with the written
description requirement because “[t]he original disclosure does not provide
support for a pair of arms each having a handle portion and a guard portion
in combination with an actuator provided on both handle portions.” Ans. 4.
The Examiner finds that a pair of arms each having a handle portion and a
guard portion is supported by the first embodiment of Figures 1-10, while
the concept of an actuator provided on both handle portions is supported by
the third embodiment of Figures 15-18 and arguably the second embodiment
of Figures 11-14. Id. In other words, it is the Examiner’s position that the
invention of claim 1 is not disclosed by a single embodiment of Appellants’
original disclosure.
Appellants argue that there is disclosure, in a single embodiment, for
the subject matter of claim 1, noting that the first embodiment has one
switch 40 on the handle portion 14 and a second switch 41 on the other
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handle portion 16. Br. 9. The presence of a switch 40, 41 on each handle
14, 16 of the vegetation pruning device 2 of Figures 1-10, wherein the
switches (or actuators) control operation of the device’s motor, is described
in Appellants’ original disclosure. See Original Spec. 16, ll. 15-29.
Although Appellants appear to recognize the possibility that the second
switch 41 may not be an elongate actuator (Br. 9, 11), we note the Examiner
does not base the rejection on Appellants’ first embodiment failing to
provide each handle portion with an elongate actuator, rather the Examiner
appears to base the rejection on the first embodiment’s alleged failure to
provide each handle portion with any actuator (Ans. 4). Moreover, there is
no finding that the switch 41 is not elongate and, while the switch 41 may
not be elongate in the same manner as switch 40 or triggers 508, 510 from
Figure 15 (i.e., along the length of the handle portions), switch 41 could be
considered to be elongate in the outwardly-extending direction. See fig. 1.
For the above reasons, we find by a preponderance of the evidence
that Appellants’ original disclosure demonstrates that Appellants had
possession of the invention of claim 1. We accordingly reverse the rejection
of claim 1 as failing to comply with the written description requirement.
Claim 33
Claim 33 calls for a debris extraction aperture in communication with
a debris conveying path. The Examiner finds that the original disclosure
does not provide sufficient support for claim 33 because the debris
extraction aperture is disclosed in the first embodiment of Figures 1-10,
while claim 1, from which claim 33 depends, includes subject matter from
the second and third embodiments. Ans. 4. However, for the reasons
discussed supra, we disagree that the subject matter of claim 1 is not
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supported by the original disclosure of Appellants’ first embodiment. As
such, we reverse the rejection of claim 33 as failing to comply with the
written description requirement.
Rejection 2: Enablement
Claim 20 recites “said second guard portion is moveable to said first
position only when said arms are in a closed position.” The Examiner
contends there is insufficient support for this recitation because “there is no
disclosure as to how specifically such a function is accomplished, and there
is no disclosed structure to provide/perform such a function.” Ans. 5.
Appellants argue that “inclusion of the term ‘only’ in the claim was
meant to describe when the second guard portion is moved, and not to inject
mechanical limitations into the claim.” Br. 11. However, as correctly noted
by the Examiner, it is not relevant that Appellants did not intend to inject a
mechanical limitation into the claim. Ans. 12. Claim 20 clearly limits the
ability of the second guard portion to move to its first position only when the
arms are in the closed position. In other words, the second guard portion, as
claimed, is not moveable to the first position when the arms are not in the
closed position. Appellants do not point out any disclosure in the
Specification describing how the second guard portion is prevented from
moving to the first position when the arms are not in the closed position.
Appellants’ Specification thus is not sufficiently complete to enable one of
ordinary skill in the art to make and use the claimed invention without undue
experimentation. In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
Accordingly, we sustain the rejection of claim 20 as failing to comply
with the enablement requirement.
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Rejection 3: Indefiniteness
Claim 1 recites “a pair of arms . . . , wherein each arm has . . . a guard
portion” and later recites “a first guard portion.” The Examiner concludes
that the latter recitation is indefinite because it is unclear whether the
recitation refers to one of the previously recited guard portions or another
guard portion. Ans. 5. Claims 17 and 31 are deemed to be indefinite for
similar reasons. Ans. 6.
Appellants argue that the claims are readily understood such that the
latter recitations of guard portions refer to that of the previously recited
arms. Br. 11-12. We agree. Although the claim language may not be a
model of clarity, the meaning of “a first guard portion,” when read in light of
the Specification, can be ascertained to be referring to one of the two guard
portions previously recited. See Exxon Rsrch and Eng’g Co. v. U.S., 265
F.3d 1371, 1375 (Fed. Cir. 2001) (“If the meaning of the claim is
discernible, even though the task may be formidable and the conclusion may
be one over which reasonable persons will disagree, we have held the claim
sufficiently clear to avoid invalidity on indefiniteness grounds.”).
For this reason, we reverse the rejection of claims 1, 17, and 31 as
being indefinite.
Rejection 4: Anticipation or Obviousness - Cartmill
The Examiner finds that Cartmill discloses every structural limitation
of claim 17. Ans. 6. Regarding the recited pair of arms, the Examiner
asserts that these are met by any two of Cartmill’s guide plate 14, subframe
20, or subframe 22. Id. The Examiner also finds that the claimed support
for the cutting element is met by Cartmill’s guide plate 14. Ans. 7.
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However, consistent with the principle that all limitations in a claim
must be considered to be meaningful, it is improper to rely on the same
structure in Cartmill as corresponding to two different elements (one of the
arms and the cutting element support) in claim 17. See, Lantech, Inc. v. Keip
Machine Co., 32 F.3d 542, 547 (Fed. Cir. 1994) (in infringement context, a
single conveyor held to not meet claim element requiring at least two
conveyors); In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (claim
requiring three separate means not anticipated by structure containing two
means where one of the two means was argued to meet two of the three
claimed means). We thus reject the Examiner’s contention that the pair of
arms of claim 17 could be met by the guide plate 14 and one of the
subframes 20, 22 and focus instead on the contention that the pair of arms of
claim 17 is met by the two subframes 20, 22.
The rejection of claim 17 based on the pair of arms being met by the
two subframes 20, 22 is also flawed. Claim 17 calls for the two arms to
pivot relative to each other about an axis. However, the subframe 20 pivots
about an axis defined by the assembly pin 78, and the other subframe 22
pivots about another axis defined by the assembly pin 82. Cartmill, col. 5,
l. 42 – col. 6, l. 27; figs. 3-6. As such, Cartmill does not disclose a pair of
arms that pivot relative to each other about a single axis as required by claim
17. Moreover, even if the Examiner’s finding that the arcuate horn portions
92 or the balls 94 of Cartmill’s subframes 20, 22 meet the claimed handle
portions (Ans. 6, 14) is correct4, none of these handle portions supports an

4 We decline to determine if the cited structure of Cartmill can be considered
to be a “handle” because the propriety of this rejection can be determined on
another basis.
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actuator. The Examiner’s reliance on Cartmill’s handle 12a having an
actuator (Ans. 7) is misguided in this context because the handle 12a is not a
handle portion of one of the claimed arms. Cartmill thus fails to disclose the
actuator as recited in claim 17. Because Cartmill does not disclose each and
every element of claim 17, we reverse the rejection of claim 17 under 35
U.S.C. § 102(b) as anticipated by Cartmill.
As an alternative to rejecting claim 17 as anticipated by Cartmill, the
Examiner takes Official Notice that the claimed motor having a rotary output
drive is old and well known in the chain saw art and concludes it would have
been obvious to provide the device of Cartmill with such a drive
configuration. Ans. 8. However, this proposed modification would not
overcome the above-described deficiencies of Cartmill with respect to claim
17, and we accordingly reverse the rejection of claim 17 under 35 U.S.C.
§ 103(a) as being unpatentable over Cartmill.
Rejection 5: Anticipation - FP ’757
The Examiner finds that FP ’757 discloses every structural limitation
of claim 17 including a pair of arms (any two of the chain guide 12, the half-
cover 18, and the half-cover 20) and a cutting element support (the chain
guide 12). Ans. 8-9. To the extent it is based on the chain guide 12 being
one of the arms, this ground of rejection suffers from the same flaw
discussed supra of relying on the same structure in the reference as
corresponding to two different claim elements. We thus reject the
Examiner’s contention that the pair of arms of claim 17 could be met by the
chain guide 12 and one of the half-covers 18, 20.
The rejection of claim 17 based on the pair of arms being met by the
two half-covers 18, 20 is flawed for reasons similar to those discussed supra
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in connection with Cartmill. As clearly seen in the drawings of FP ’757, the
half-covers 18, 20 pivot about two different axes. FP ’757 thus fails to
disclose a pair of arms that pivot relative to each other about a single axis as
required by claim 17. Furthermore, the half-covers 18, 20 do not define
handle portions wherein at least one has an actuator provided thereon. As
such, FP ’757 does not disclose each and every element of claim 17, and we
are constrained to reverse the rejection of claim 17 under 35 U.S.C. § 102(b)
as anticipated by FP ’757.
The Examiner does not explicitly state that claim 17 is alternatively
rejected under 35 U.S.C. § 103(a) as being unpatentable over FP ’757.
Ans. 8. However, the Examiner does take Official Notice again that the
claimed motor having a rotary output drive is old and well known in the
chain saw art and concludes it would have been obvious to provide the
device of FP ’757 with such a drive configuration. Ans. 10. We thus
assume it is the Examiner’s intention to alternatively reject claim 17 under
35 U.S.C. § 103(a) as being unpatentable over FP ’757. Because the
proposed modification does not overcome the above-described deficiencies
of FP ’757 with respect to claim 17, we reverse the rejection of claim 17
under 35 U.S.C. § 103(a) as being unpatentable over FP ’757.
DECISION
We reverse the decision of the Examiner rejecting claims 1, 17, 31,
and 33.
We affirm the decision of the Examiner rejecting claim 20.

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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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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