Ex Parte Thomas et al

Patent Trial and Appeal Board

Jun 1, 2016

12584015 (P.T.A.B. Jun. 1, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/584,015 08/28/2009
39208 7590 06/02/2016
CR MILES, P,C
CRAIG R. MILES
405 MASON COURT, SUITE 119
FORT COLLINS, CO 80524
FIRST NAMED INVENTOR
Janna Lee Thomas
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
Thomas US bloc 1788
EXAMINER
SWINNEY, JENNIFER B
ART UNIT PAPER NUMBER
3724
MAILDATE DELIVERY MODE
06/02/2016 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 JANNA LEE THOMAS and PAUL ROGER THOMAS
Appeal2014-006062
Application 12/584,015
Technology Center 3700
Before STEFAN STAICOVICI, BRANDON J. WARNER, and
ARTHUR M. PESLAK, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Janna Lee Thomas and Paul Roger Thomas ("Appellants") appeal
under 35 U.S.C. § 134(a) from the Examiner's final decision rejecting
claims 1and6.1'2 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellants submit the real party in interest is USAUS, LLC. Br. 4.
2 Claims 7-16 were withdrawn. Final Act. 1.
Appeal2014-006062
Application 12/584,015
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is representative of the claimed subject
matter.
1. A cutting guide, comprising:
a substantially rectangular body having a top surface
disposed in opposed relation to a bottom surface, said rectangular
body having a thickness sufficient to guide a cutting tool along
one of a plurality of sides of said body, said bottom surface
having a substantially flat surface extending to each of said
plurality of sides of said body; and
a first recess disposed in said bottom surface, said first
recess having a pair of linear opposed sides and a cross member
which define a first passage, wherein a first of said linear
opposed sides of said first recess disposed along a first diagonal
axis which intersects a first pair of opposed comers of said
rectangular body, and wherein a second of said pair of linear
opposed sides of said first recess communicates with at least one
of said plurality of sides of said body.
REJECTIONS
Claims 1and6 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cleveland (US 2003/0159556 Al, pub. Aug. 28, 2003) in
view of Lockyer (US 7,185,441 B2, iss. Mar. 6, 2007).
DISCUSSION
The claimed invention is directed to a guide used with a tool for
cutting fabric. Spec. 1. The Examiner finds that Cleveland discloses most
of the limitations of claim 1, including, inter alia, a first recess in its bottom
surface [4, 6], but does not disclose the recited orientation of the recess, i.e.,
"a first of said linear opposed sides of said recess disposed along a first
diagonal axis intersects a first pair of opposed comers of said rectangular
2
Appeal2014-006062
Application 12/584,015
body." Final Act. 2-3. The Examiner finds that Lockyer discloses "a
cutting guide ... having linear guide lines disposed along a diagonal
intersecting a pair of opposed comers (20) and further teaches a plurality of
diagonal guide lines disposed to either side of the diagonal axis." Id. at 3
(citing to Lockyer, Fig. IA). The Examiner concludes that "[l]ooking at
Lockyer' s various embodiments, it is clearly obvious to one of ordinary skill
to orient the cutting tool in any way desired. More broadly, the orientation
and position of Cleveland's groove at any angle or location is obvious." Id.
Appellants contend the combination of Cleveland and Lockyer does
not suggest the orientation of the recess recited in claim 1 because Lockyer
is a measuring device that "does not teach any recess cut into the bottom but
only describes angled lines 20 that may be imprinted at such angles as 30
degrees, 45 degrees, and 60 degrees from one edge of the main top plate."
Br. 17. Appellants argue that Cleveland's cording channels 4 and 6 must be
oriented parallel to cutting guide surfaces 10 and 12 in order "to be suitable
for the intended purpose of creating a seam allowance of uniform width."
Id. Appellants assert modifying Cleveland would render it unsatisfactory for
its intended purpose because orienting its cording channels in the manner
proposed by the Examiner would result in a "triangularly shaped" seam
allowance, not one of uniform width. Id. For the following reasons, we find
Appellants' arguments persuasive.
We agree with Appellants that Lockyer does not disclose a recess in
its bottom surface. Rather, Lockyer' s main top plate 10 "is a transparent,
solid, square shaped planar plate." Lockyer, col. 4, 11. 38-39. The Examiner
refers to Lockyer's diagonal lines 20 in the Final Rejection (see Final Act. 3)
but the lines are not recesses. See Lockyer, col. 4, 11. 60-63.
3
Appeal2014-006062
Application 12/584,015
Appellants refer to paragraph 6 of Cleveland, which discloses various
problems that may occur if the seam allowance is not of a uniform width,
such as an uneven seam that is puckered and visually distracting. Br. 19.
Cleveland's disclosure is directed to solving these problems by creating a
seam allowance of uniform width. See Cleveland i-f 8. Appellants also refer
to paragraph 17 of Cleveland, which describes cording channels 4 and 6
being oriented parallel to cutting guide surfaces 10 and 12. Br. 18; see also
Cleveland, Fig. 3. As such, by maintaining the parallel configuration of
cording channels and cutting guide surfaces in Cleveland, the resulting seam
allowance is of a uniform width. We thus agree with Appellants' assertion
that "[ n Jo embodiment of the cording channel 4 as described by Cleveland
teaches an orientation of the piping channel 4 other than parallel to a cutting
guide surface 10 or 12." Br. 19.
We further agree with Appellants that modifying Cleveland with
Lockyer to orient Cleveland's cording channels in the manner recited in
claim 1 would result in seam allowances that are not of a uniform width and,
thus, would not solve the problems identified by Cleveland. See Br. at 20.
The Supreme Court indicates that "a court must ask whether the
improvement is more than the predictable use of prior art elements according
to their established functions." KSR Intern. Co. v. Teleflex, Inc., 550 U.S.
398, 417 (2007). If the modification renders the prior art device "inoperable
for its intended purpose," then a prim a facie case of obviousness has not
been established. In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984). We,
thus, do not sustain the rejection of claims 1 and 6. The rejection lacks the
required rational underpinnings because the Examiner's modification of
4
Appeal2014-006062
Application 12/584,015
Cleveland, according to Lockyer, would render Cleveland's cutting tool
inoperable for its intended purpose.
DECISION
The Examiner's decision rejecting claims 1 and 6 is REVERSED.
REVERSED
5