Ex Parte Thiele

Board of Patent Appeals and Interferences

Sep 24, 2009

10827564 (B.P.A.I. Sep. 24, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RICHARD THIELE, JR.
____________

Appeal 2009-003406
Application 10/827,564
Technology Center 3600
____________

Decided: September 24, 2009
____________

Before WILLIAM F. PATE, III, STEFAN STAICOVICI, and
KEN B. BARRETT, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-003406
Application 10/827,564

2
STATEMENT OF THE CASE
Richard Thiele, Jr. (Appellant) appeals under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claims 1-12. Appellant’s representative
presented oral argument on September 15, 2009. We have jurisdiction over
this appeal under 35 U.S.C. § 6 (2002).

THE INVENTION
Appellant’s invention is drawn toward a shovel 100 including a
handle 102, a scoop portion 104 with scallops 110, and ribs 106. Spec. 2,
ll. 19-22 and fig. 1.
Claim 1 is representative of the claimed invention and reads as
follows:
1. An improved blade for a shovel having an
elongated handle, the blade comprising:

a scoop portion having a width, a length, and a
leading edge furthest away from the handle;

a plurality of concave scallops on the leading edge,
each scallop defining a segment of a single circle;
and

wherein the segments intersect at distinct forward
points in a straight line generally perpendicular to
the handle.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Hicks US 342,961 Jun. 1, 1886
Johnson US 2,782,615 Feb. 26, 1957
Appeal 2009-003406
Application 10/827,564

3
Vogel US 2,787,058 Apr. 2, 1957
Dawley US Des. 308,004 May 22, 1990

The following rejections are before us for review:
The Examiner rejected claims 2-12 under 35 U.S.C. § 112, second
paragraph, as being indefinite.
The Examiner rejected claims 1, 2-7, and 9-12 under 35 U.S.C.
§ 103(a) as unpatentable over Hicks and Dawley or Vogel.
The Examiner rejected claim 8 under 35 U.S.C. § 103(a) as
unpatentable over Hicks and Dawley or Vogel and Johnson.

THE ISSUES
The Examiner found that Hicks discloses a shovel including a wooden
scoop portion and a metallic leading edge having angular notches rather than
“circular segments that intersect at distinct points.” Ans. 3. The Examiner
further found that both Dawley and Vogel disclose “garden tools having
scalloped cutting edges in the shape of circular segments intersecting at
pointed tips.” Ans. 4. Accordingly, the Examiner concluded that:
[I]t would have been obvious to one of ordinary
skill in the art at the time the invention was made
to replace the serrated cutting edge of the Hicks
shovel with a circular segmented cutting edge
similar to that shown in either the Dawley et al. or
Vogel patent as an alternative yet functionally
equivalent cutting edge that could better penetrate
through ice or snow due to the pointed tips located
between adjacent circular segments.
Id.
Appellant argues that the Examiner’s reasoning for combining the teachings
of Hicks and either Dawley or Vogel, namely, “. . . to better penetrate
Appeal 2009-003406
Application 10/827,564

4
through ice or snow due to the pointed tips located between adjacent circular
segments,” is speculative. App. Br. 3. That is, Appellant argues that the
Examiner has not provided any evidence to sustain such a conclusion. Reply
Br. 1. Appellant further argues that because Hicks discloses a single
serrated pattern, the “Examiner’s proposed substitution would render Hicks’
article less effective for its intended purpose” and as such Hicks teaches
away from making the Examiner’s proposed combination. App. Br. 4. See
also Reply Br. 2.
Appellant further argues that the shovel of Hicks does not have a
“scoop,” as required by claim 1. App. Br. 4. According to Appellant, the
flat board of Hicks does not constitute a “scoop” because a “scoop” means:
. . . "a large ladle," "a deep shovel or similar
implement," "a usually hemispherical utensil for
dipping food," or "a small spoon-shaped utensil or
instrument for cutting or gouging."

App. Br. 5.
In response, the Examiner takes the position that the flat blade and the back
wall of Hicks constitute a “scoop portion.” Ans. 6. Moreover, according to
the Examiner, a “scoop” is “any implement that is used to lift, shovel, or
scoop loose material such as snow.” Id.
With respect to claims 2-5, Appellant argues that the Examiner’s
conclusion is based on “an impermissible ‘obvious to try’ rationale.” App.
Br. 5. The Examiner responds that Appellant has not shown that the
particular claimed dimensions are critical or that they solve any stated
problem. Ans. 7.
Lastly, Appellant argues that the prior art does not provide factual
evidence to provide the ribs of Johnson to the shovel of Hicks and Dawley
Appeal 2009-003406
Application 10/827,564

5
or Vogel. App. Br. 6. Specifically, Appellant argues that the Examiner has
not explained how the modification would be carried out, that is, would the
ribs be made of wood, would the ribs be attached by nails, or would the ribs
be attached by screws. Id.
Accordingly, the issues presented for our consideration in this appeal
are as follows:
1. Has Appellant shown that the Examiner’s reasoning for combining the
teachings of Hicks and either Dawley or Vogel, namely, “… to better
penetrate through ice or snow due to the pointed tips located between
adjacent circular segments,” is speculative?
2. Has Appellant shown that the Examiner erred in construing the
limitation “scoop portion” as a portion that acts as a “scoop”?
3. Has Appellant demonstrated that the number of scallops and the
particular dimensions of the scoop portion and the scallop radius
recited in claims 2-5 patentably distinguish the subject matter of these
claims over the combined teachings of Hicks and Dawley or Vogel?
4. Has Appellant shown that the Examiner erred in determining that it
would have been obvious to a person of ordinary skill in the art to
provide the ribs of Johnson to the shovel of Hicks and either Dowels
or Vogel? The issue turns on whether the Examiner’s reasoning for
combining the teachings of Hicks and either Dawley or Vogel and
Johnson has a rational underpinning.

SUMMARY OF DECISION
We AFFIRM.

Appeal 2009-003406
Application 10/827,564

6
FINDINGS OF FACT

The following enumerated findings of facts (FF) are supported by at
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
1. Hicks discloses a snow shovel including a wood handle, a flat
wood blade having a length and a width, and a metallic shoe
secured to the blade by screws or rivets and having a serrated
front edge. Hicks, ll. 46-59 and figs. 1 and 2.
2. The serrated edges of Hicks’ shoe form a series of cutting edges
or plows that enter and break up compacted snow and ice.
Hicks, ll. 42-45 and fig. 3.
3. The serrated edges of Hicks have flattened tips. Hicks, fig. 3.
4. Vogel discloses a gardening tool having a removable blade
including a plurality of scallops 14. Vogel, col. 1 ll. 23-25; col.
2, ll. 34-35; and figs. 2 and 3.
5. Dawley discloses a tool for weeding and furrowing having
pointed circular segmented cutting edges. Dawley, fig. 2.
6. Hicks discloses a snow shovel having eleven tips, Dawley
discloses a furrowing tool having six scallops (seven tips), and
Vogel discloses a weeding tool having eleven scallops (twelve
tips). Hicks, fig. 1; Dawley, fig. 4; and Vogel, fig. 3.
7. Johnson discloses a dust-pan having a central portion 2 with
reinforcing ribs 2a. Johnson, col. 1, l. 15; col. 2, ll. 43-44; and
fig. 1.
Appeal 2009-003406
Application 10/827,564

7
8. An ordinary and customary meaning of a “furrow” is a “trench
in the earth made by a plow.” Emphasis added. MERRIAM-
WEBSTER’S COLLEGIATE DICTIONARY (10th Ed. 1997).
9. Appellant’s Specification describes a shovel that is configured
for both ice scraping and gardening. Spec. 4, ll. 1-2; figs. 3-5;
and claims 9 and 10.
10. Appellant’s Specification describes a “scoop portion” 104
having a width “W” and a length “L.” Spec. 2, ll. 22 and 24-26.
11. Appellant’s Specification describes a “shallow” scallop where
the radius of the scallop is preferred to be greater than one-half
the distance between the points of adjacent scallops. Other
preferred embodiments include a radius that is equal to or
greater than the distance between the points of adjacent
scallops. Spec. 3, ll. 12-13 and 16-20 and fig. 1.
12. Appellant’s Specification indicates that having a smaller radius
would reduce wear of the points of adjacent scallops and would
not leave rows of snow when shoveling. Spec. 3, ll. 14-16.

PRINCIPLES OF LAW
Burden
The USPTO has the initial burden of providing a basis in fact and/or
technical reasoning to reasonably support the determination that the
allegedly inherent characteristic reasonably flows from the teachings of the
applied prior art. See In re King, 801 F.2d 1324, 1327 (Fed. Cir. 1986).
Once the USPTO establishes a prima facie case of anticipation based on
inherency, the burden shifts to the applicant to prove that the prior art does
Appeal 2009-003406
Application 10/827,564

8
not possess the characteristic at issue. See Id. This is the case whether the
rejection is based on inherency under 35 U.S.C. § 102, prima facie
obviousness under 35 U.S.C. § 103, or both jointly or alternatively. See In
re Best, 562 F.2d 1252, 1255 (CCPA 1977).
Claim construction
When construing claim terminology in the United States Patent and
Trademark Office, claims are to be given their broadest reasonable
interpretation consistent with the specification, reading claim language in
light of the specification as it would be interpreted by one of ordinary skill in
the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004).
Obviousness
It is elementary that to support an obviousness rejection all words in a
claim must be considered in judging the patentability of that claim against
the prior art. In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970).
"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., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See
also KSR, 550 U.S. at 407 ("While the sequence of these questions might be
Appeal 2009-003406
Application 10/827,564

9
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.")

OPINION
The rejection of claims 2-12 under 35 U.S.C. § 112, second
paragraph

In the Office Action dated September 27, 2007, claims 2-12 were
rejected under 35 U.S.C. § 112, second paragraph, as being indefinite.
Appellant has not furnished any substantive arguments against the
Examiner’s rejection. See App. Br. 2. Therefore, we summarily affirm the
Examiner’s rejection of claims 2-12 under 35 U.S.C. § 112, second
paragraph.

The obviousness rejection over Hicks and Dawley or Vogel
Appellant argues the rejection under 35 U.S.C. §103(a) of claims 1,
6-7, and 9-12 together as a group. App. Br. 2. Therefore, in accordance
with 37 C.F.R. 41.37(c)(1)(vii)(2008), we have selected claim 1 as the
representative claim to decide the appeal, with claims 6, 7, and 9-12 standing
or falling with claim 1. In view of Appellant’s arguments, we will address
the rejection of claims 2-5 separately.
Issue (1)
As shown above, the serrated edges of Hicks’ snow shovel form a
series of cutting edges or plows that enter and break up compact snow and
ice. FF 1, 2. Similarly, Dawley discloses a tool for furrowing having
pointed circular segmented cutting edges. FF 5. An ordinary and customary
meaning of a “furrow” is a “trench in the earth made by a plow.” FF 8.
Appeal 2009-003406
Application 10/827,564

10
Hence, we find that the scallops on the front edge of Dawley’s tool form
plows that enter and break up compact earth. Since both Hicks and Dawley
disclose cutting edges that form plows, a person of ordinary skill in the art
would have readily appreciated that Hicks’ serrated edges and Dawley’s
pointed circular segmented cutting edges function in a similar manner,
namely, entering and breaking (plowing) into a material (compacted snow
and ice as per Hicks; earth as per Dawley). Further, we note that the serrated
edges of Hicks have flattened tips, whereas Dawley’s cutting edges are
pointed. FF 3, 5. We find that a person of ordinary skill in the art would
have readily recognized that the pointed cutting edges of Dawley would
improve the entering action of the tool and hence allow the breaking action
to proceed easier than the flattened tips of Hicks. As such, Appellant’s
claimed shovel is nothing more than the shovel of Hicks, in which the
serrated edges have been substituted with the pointed circular segmented
cutting edges of Dawley to improve the entering action of the tool and hence
allow the breaking action to proceed easier. For the above reasons, we
conclude that the teachings of Dawley reasonably support the Examiner’s
determination that the circular segmented cutting edge of Dawley would
“better penetrate through ice or snow due to the pointed tips located between
adjacent circular segments,” so as to shift the burden to Appellant to show
that this is not the case. Appellant has not come forward with any evidence
to satisfy this burden. Although the circular segmented cutting edge of
Dawley may not be an optimum substitution for the serrated edge of Hicks,
as Appellant suggests, “[a] known or obvious [product] does not become
patentable simply because it has been described as somewhat inferior to
some other product for the same use.” In re Gurley, 27 F.3d 551, 553 (Fed.
Appeal 2009-003406
Application 10/827,564

11
Cir. 1994). Lastly, we note that, similar to Appellant’s shovel, the shovels of
Hicks and Dowel are both a snow shovel and a gardening tool, respectively.
See FF 9.
Issue (2)
Although we agree with Appellant’s definition of the term “scoop”
(App. Br. 5), we note that claim 1 requires a “scoop portion.” We conclude
that the term “scoop” modifies the term “portion” to indicate that the blades
of Hicks and Dawley include a portion that is a “scoop” or acts as a “scoop.”
Claims are to be given their broadest reasonable interpretation consistent
with the specification. Appellant’s Specification merely describes a “scoop
portion” 104 having a width “W” and a length “L.” FF 10. As seen in
Figure 1 of Appellant’s drawings, the “scoop portion” 104 of the shovel 100
is the portion that is used for scooping. In other words, we find that the
“scoop portion” 104 acts as a “scoop.” We could not find any portion in
Appellant’s Specification and Appellant has not pointed to any portion that
would require us to construe the term “scoop portion” to mean a “scoop” as
defined by Appellant. Furthermore, accepting Appellant’s proffered
definition of a “scoop,” a person of ordinary skill in the art would have
readily recognized that a “scoop” is defined by a depth. However,
Appellant’s “scoop portion” 104 is defined by a width and a length,” but not
a depth. See FF 10. Similarly, Hicks discloses a blade for a snow shovel
defined by a width and a length. FF 1. Accordingly, we agree with the
Examiner that the broadest reasonable interpretation, consistent with the
specification, of the limitation “scoop portion,” is a portion defined by a
width and a length that acts as a “scoop.” Therefore, the blade of Hicks’
shovel includes a “scoop portion,” as called for in claim 1.
Appeal 2009-003406
Application 10/827,564

12
For the foregoing reason, the rejection of claim 1, and claims 6, 7, and
9-12 standing or falling with claim 1, over the combined teachings of Hicks
and Dawley is sustained. Because we affirm the rejection based on Hicks
and Dawley, we need not analyze the alternative combination of Hicks and
Vogel.
Issue (3)
At the outset, we note that Hicks discloses a snow shovel having
eleven tips, Dawley discloses a furrowing tool having six scallops (seven
tips), and Vogel discloses a weeding tool having eleven scallops (twelve
tips). FF 6. An artisan must be presumed to know something about the art
apart from what the references disclose. See In re Jacoby, 309 F.2d 513,
516 (CCPA 1962). A person of ordinary skill in the art of shovels would
have understood that the blade width of a snow shovel would be between 6
and 24 inches in order for the snow shovel to function as intended. The same
person of ordinary skill in the art would have recognized that the number of
scallops and the radius of each scallop depends on the type of work
performed. Appellant’s Specification describes a “shallow” scallop as a
scallop having a radius “r” greater than half, substantially equal to, or greater
than the distance “d” between the points of adjacent scallops. FF 11. In
cases in which the difference between the claimed invention and the prior art
is some range or other variable within the claims, in order to show that the
claimed invention would not have been obvious, an applicant must show that
"the particular range is critical, generally by showing that the claimed range
achieves unexpected results relative to the prior art range." In re Woodruff,
919 F.2d 1575, 1578 (Fed. Cir. 1990). In this case, Appellant has not made
any such showing. When comparing the scallops of Dawley and Vogel with
Appeal 2009-003406
Application 10/827,564

13
Appellant’s scallops, we find that the scallops of both Dawley and Vogel
constitute “shallow” scallops. See fig. 4 of Dawley; fig. 3 of Vogel; and
Figure 1 of Appellant’s drawings. Moreover, Appellant’s Specification
indicates that the particular dimensions of the scallop radius are merely
“preferred.” FF 11. Furthermore, Appellant’s touted improvement of
reducing wear and not leaving rows of snow when shoveling (see FF 12) is
limited to a snow shovel, whereas claim 1, from which claims 2-5 depend, is
directed to a blade for a shovel, which encompasses any type of shovel not
just a snow shovel. In conclusion, we find that Appellant has not
demonstrated that the particular claimed dimensions of claims 2-5 are
patentable over the applied art. Therefore, the rejection of claim 2-5 over
the combined teachings of Hicks and Dawley or Vogel is likewise sustained.

The obviousness rejection over Hicks and Dawley or Vogel and Johnson
Issue (4)
Johnson discloses a dust-pan having a central portion 2 (scoop
portion) with reinforcing ribs 2a. FF 7. A person of ordinary skill in the art
would have immediately appreciated that providing reinforcing ribs, as
taught by Johnson, to the shovel of Hicks and Dawley or Vogel would
provide the same benefit of providing reinforcement to the scoop portion.
As such, modifying the shovel of Hicks and Dawley or Vogel to include
reinforcing ribs as taught by Johnson would not have been uniquely
challenging to a person of ordinary skill in the art, because it is no more than
“the mere application of a known technique to a piece of prior art ready for
the improvement.” KSR Int'l. Co. v. Teleflex lnc., 550 U.S. 398, 417 (2007).
Therefore, the modification appears to be the product not of innovation but
Appeal 2009-003406
Application 10/827,564

14
of ordinary skill and common sense. Moreover, Appellant has not alleged,
much less shown, that the modification of the shovel of Hicks and Dawley
or Vogel to provide reinforcing ribs as taught by Johnson would have been
beyond the skill of a person of ordinary skill in the art. Attaching
reinforcing ribs to the shovel of Hicks and Dawley or Vogel using screws or
nails would have been within the ordinary skill of art. In conclusion, we
agree with the Examiner that:
It would have been obvious to one of ordinary skill
in the art to provide reinforcing ribs along the
bottom surface of the modified Hick [sic] shovel
blade, as was presented above, as taught by
Johnson in order to strengthen the resulting blade
so that it could handle heavier loads.

Ans. 4.
In conclusion, Appellant’s arguments do not persuade us that the
Examiner erred in rejecting claim 8 over the combined teachings of Hicks
and Dawley or Vogel and Johnson. Therefore, the rejection is sustained.

CONCLUSIONS
1. Appellant has failed to show that the Examiner’s reasoning for
combining the teachings of Hicks and either Dawley or Vogel is
speculative.
2. Appellant has failed to show that the Examiner erred in construing the
limitation “scoop portion” as a portion that acts as a “scoop.”
3. Appellant has failed to show that the number of scallops and the
particular dimensions of the scoop portion and the scallop radius
recited in claims 2-5 patentably distinguish the subject matter of these
Appeal 2009-003406
Application 10/827,564

15
claims over the combined teachings of Hicks and either Dawley or
Vogel.
4. Appellant has failed to show that the Examiner’s articulated reasoning
for modifying the shovel of Hicks and either Dawley or Vogel to
include the ribs of Johnson, is not supported by rational underpinning.

DECISION
The Examiner’s decision to reject claims 1-12 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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED

Klh

GIFFORD, KRASS, SPRINKLE, ANDERSON & CITKOWSKI, P.C
PO BOX 7021
TROY, MI 48007-7021