Ex Parte Thompson

Board of Patent Appeals and Interferences

Jul 25, 2007

10784056 (B.P.A.I. Jul. 25, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MARK W. THOMPSON
____________

Appeal 2007-1167
Application 10/784,056
Technology Center 3700
____________

Decided: 25 July 2007
____________

Before TEDDY S. GRON and CAROL A. SPIEGEL, Administrative Patent
Judges, and FRED E. McKELVEY, Senior Administrative Patent Judge.

GRON, Administrative Patent Judge.

DECISION ON APPEAL
Introduction
This is a decision on appeal under 35 U.S.C. § 134 from an
Examiner’s final rejection of Claims 1-9, 11-14, and 16 of Application
10/784,056, filed February 20, 2004. Claims 1 and 2 stand rejected under 35
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U.S.C. § 102(b) as described by Watkins, U.S. Patent 6,324,765, patented
December 4, 2001. Claims 1, 3-9, 11-14, and 16 stand rejected under 35
U.S.C. § 103(a) as unpatentable in view of the combined teachings of
Blevins, U.S. Patent 6,327,782, patented December 11, 2001, Wright, U.S.
Patent 5,107,665, patented April 28, 1992, and Bridgers, U.S. Design Patent
373,712, patented September 17, 1996. The claims on appeal are the only
claims pending in this application. Claims 2-5 depend on independent
Claim 1. Claims 7-9 and 16 depend on independent Claim 6. Claims 12-14
depend on independent Claim 11.
Not having been argued separately from their respective independent
claims, dependent Claims 2-5 stand or fall with Claim 1, dependent Claims
7-9 and 16 stand or fall with Claim 6, and dependent Claims 12-14 stand or
fall with Claim 11. Therefore, we decide this appeal on the basis of
independent Claims 1, 6, and 11. 37 CFR § 41.37(c)(1)(vii) (2006).
Independent Claims 1, 6, and 11 are transcribed below (Br. App. A):
1. A guard for a grass trimming device having a shaft with a head
at one end and a handle at the opposite end, comprising:

a releasable clamp slidably connected to the shaft;

a support member slidably connected within the releasable
clamp; and

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a guard member connected to and extending outwardly from a
second end of the support member to deflect grass clippings projected
from the head of the grass trimming device.

6. A guard for a grass trimming device having a shaft with a head
at one end and a handle at the opposite end, comprising:

a releasable clamp slidably connected to the shaft;

a support member slidably connected within the releasable
clamp;

a flexible brush member connected to and extending outwardly
from a second end of the support member to deflect grass clippings
projected from the head; and

a means for adjusting the distance between the guard member
and the shaft of the grass trimming device;

wherein the flexible brush member is positioned at a 90 degree
angle to the shaft.

11. A guard for a grass trimming device having a shaft with a head
at one end and a handle at the opposite end, comprising:

a support member connected to the shaft at a first end of the
support member;

a flexible brush member connected to a second end of the
support member to deflect grass clippings projected from the head;
and

wherein the flexible brush member is positioned at a 90° angle
to the shaft.

In deciding this appeal, we have considered the following: (1) the
Final Rejection, mailed September 20, 2005, (2) the Appeal Brief, filed
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March 3, 2006, (3) the Examiner’s Answer, mailed April 20, 2006, and (4)
the Reply Brief, filed May 15, 2006. We have also studied Applicant’s
Specification and Drawings and the disclosures of Watkins, U.S. Patent
6,324,765, Blevins, U.S. Patent 6,327,782, Wright, U.S. Patent 5,107,665,
and Bridgers, U.S. Design Patent 373,712.
Discussion
Claim Construction
A rejection of claimed subject matter under 35 U.S.C. § 102/103
should not be based upon speculation and assumptions as to the scope of the
claims. In re Steele, 305 F.2d 859, 862, 134 USPQ 292, 295 (CCPA 1962).
Accordingly, we determine first the scope and content of the claimed subject
matter in order to completely explore the relationship of the invention
Applicant claims to the prior art.
“During patent examination the pending claims must be interpreted as
broadly as their terms reasonably allow.” In re Zletz, 893 F.2d 319, 321, 13
USPQ2d 1320, 1322 (Fed. Cir. 1989). “The reason is simply that during
patent prosecution when claims can be amended, ambiguities should be
recognized, scope and breadth of language explored, and clarification
imposed.” Id. “An essential purpose during patent examination is to fashion
claims that are precise, clear, correct, and unambiguous.” Id at 322, 13
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USPQ2d at 1322. “Only in this way can uncertainties of claim scope be
removed, as much as possible, during the administrative process.” Id.
Both Claims 1 and 6 require “a support member slidably connected
within the releasable clamp” (Br. App. A). The key word is “within.” This
term is not defined in Applicant’s specification. Thus, it must be given the
broadest reasonable interpretation consistent with Applicant’s specification.
“[I]n proceedings before the PTO, claims in an application are to be given
their broadest reasonable interpretation consistent with the specification.” In
re Sneed, 710 F.2d 1544, 1548, 218 USPQ 385, 388 (Fed. Cir. 1983).
Applicant’s specification discloses the use of “a releasable clamp 22
that wraps around the shaft 14 and is tightened to lock the support member
20 in place at a desired location on the shaft” (Spec., p. 3). Applicant’s
Figure 1 appears to show that the support member 20 is connected within an
appendage of the releasable clamp 22 (Spec., Fig. 1). Thus, the broadest
reasonable interpretation consistent with the specification is that the phrase
“within the releasable clamp” means within the clamp or within any
appendage thereto.
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35 U.S.C. § 102(b) Rejections
“For a prior art reference to anticipate in terms of 35 U.S.C. § 102,
every element of a claimed invention must be identically shown in a single
reference.” In re Bond, 910 F.2d 831, 832, 15 USPQ2d 1566, 1567 (Fed.
Cir. 1990); Diversitech Corp. v. Century Steps, Inc., 850 F.2d 675, 677, 7
USPQ2d 1315, 1317 (Fed. Cir. 1988). Anticipation can be found when a
claim limitation is inherent or otherwise implicit in the relevant reference.
Standard Havens Products, Inc. v. Gencor Industries, Inc., 953 F.2d 1360,
1369, 21 USPQ2d 1321, 1328 (Fed. Cir. 1991). To affirm the Examiner’s
§ 102(b) rejection in this case, we must find that Watkins describes each and
every element of the subject matter defined by Applicant’s Claim 1, either
explicitly or implicitly.
Claims 1 and 2 stand rejected as anticipated by Watkins. Claim 1 is
directed to a guard having (1) a releasable clamp slidably connected to the
shaft of a grass trimming device, (2) a support member slidably connected
within the clamp, and (3) a guard member connected to and extending
outwardly from the support member (Br. App. A). Watkins contains a
releasable clamp slidably connected to the shaft of a grass trimming device
(Watkins’ clamp 5) and a guard member (Watkins’ protector plate 19)
connected to a support member. Appellant argues that Watkins does not
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describe a support member slidably connected within the releasable clamp
(Appeal Br., p. 4). Claim 1 requires “a support member slidably connected
within the releasable clamp” (Br. App. A).
However, Appellant concedes that Watkins discloses “an inner arm
section 13 that is slidably received within the telescoping arm 4” (Appeal
Br., p. 4; emphasis added). Nevertheless, Appellant argues, “the connection
between clamp 5 and the telescoping member 4 is rigid,” and “the inner arm
13 does not slide within clamp 5,” it slides within telescoping arm 4 (Appeal
Br., p. 4). Appellant asserts that Watkins’ inner arm 13 does not describe
the support member of Claim 1 because Watkins’ inner arm 13 is slidably
received within telescoping arm 4 rather than clamp 5, and, additionally, the
combination of inner arm 13 and telescoping arm 4 does not describe the
support member of Claim 1 because telescoping arm 4 is rigidly attached to
clamp 5 rather than being slidable within clamp 5.
In contrast, the Examiner states that “the clamp of Watkins consists of
both parts ([telescoping arm] 4 and [clamp] 5) because they are rigidly
attached” (Answer, p. 4). “Therefore, the support (13) is slidably connected
within the clamp (4 and 5)” (Answer, pp. 4-5). The Examiner finds that
telescoping arm 4 is rigidly attached to clamp 5 and an appendage of clamp
5. Because inner arm 13 is slidably received within outer arm 16 of
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telescoping arm 4, and outer arm 16 is an appendage of clamp 5, inner arm
13 is slidably received within clamp 5.
The broadest reasonable interpretation of the claim language
consistent with Applicant’s specification is consistent with the Examiner’s
finding. Applicant’s Figure 1 appears to show a support member 20 slidably
received within an appendage of releasable clamp 22 (Spec., Fig. 1).
Watkins also contains a support member (inner arm 13) that is slidably
received within an appendage (outer arm 16 of telescoping arm 4) of a
releasable clamp (clamp 5). Accordingly, we find that Watkins reasonably
describes each and every claim limitation in Applicant’s Claim 1 and the
claimed subject matter as a whole.
35 U.S.C. § 103(a) Rejections
To establish the obviousness of the claimed subject matter, all the
claim limitations must be taught or suggested by the prior art. In re Royka,
490 F.2d 981, 985, 180 USPQ 580, 583 (CCPA 1974). “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, 165 USPQ 494, 496
(CCPA 1970).
Claims 1, 6, 11, and claims dependent thereon, stand rejected as
obvious over Blevins, Wright, and Bridgers. Blevins discloses a flexible
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brush guard and a releasable clamp slidably connected to the shaft of a grass
trimming device (Blevins, col. 2, ll. 39-50; col. 3, ll. 47-51). Wright
discloses a support member slidably connected within a clamp connected to
the shaft of a grass trimming device (Wright, col. 6, ll. 5-31). Bridgers
concerns aspects of dependent Claims 3, 8, and 14 that we need discuss in
reaching our decision.
Appellant argues that the prior art fails to meet two limitations. First,
Appellant argues that the prior art fails to disclose “a support member
slidably connected within the releasable clamp” as required by Claims 1 and
6 (Br. App. A). Second, Appellant argues that the prior art fails to disclose
that “the flexible brush member is positioned at a 90 degree angle to the
shaft” as required by Claims 6 and 11 (Br. App. A).
First, we address whether the prior art discloses “a support member
slidably connected within the releasable clamp” as required by Claims 1 and
6 (Br. App. A). Wright discloses a spatial guide 20 (support member) that
slides within a pair of bolts 62 and a rigid block 28 (clamp) (Wright, col. 6,
ll. 5-16). The rigid block can be adjusted to slide up and down the shaft of a
weed trimming device. Appellant argues that “the device 20 however does
not slide within the rigid block 28 and instead slides on bolts 62 that are
attached to rigid block 28” (Br., p. 9). Appellant, however, does not take
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into account the broadest reasonable interpretation of the word “within” that
is consistent with Applicant’s own specification. As previously stated,
“support member slidably connected within the releasable clamp”
encompasses a support member that is slidably connected within an
appendage of a clamp. Here, the support member (spatial guide 20) lies
within an appendage (pair of bolts 62) and the clamp (rigid block 28).
Second, we address whether the prior art discloses that “the flexible
brush member is positioned at a 90 degree angle to the shaft” as required by
Claims 6 and 11 (Br. App. A). Blevins discloses that its brush member
“may be mounted on handle 36 by suitable bracket means 39 as shown by
the dotted outline in FIG. 1” (Blevins, col. 3, ll. 49-51). Blevins’ Figure 1
appears to show the brush member mounted at a 90 degree angle to the shaft.
Drawings are evaluated “on the basis of what they reasonably disclose or
suggest to one skilled in the art.” In re Aslanian, 590 F.2d 911, 914, 200
USPQ 500, 503 (CCPA 1979). Appellant argues that, in Blevins, “the brush
member itself is not at a 90 degree angle to the shaft” (Br., p. 10). However,
Claims 6 and 11 do not state that the brush bristles must be 90 degrees to the
shaft; they state that the brush member must be 90 degrees to the shaft.
Thus, under the broadest reasonable interpretation of “brush member,”
Blevins’ Figure 1 appears to show a brush member positioned at a 90 degree
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angle to the shaft. Accordingly, each claim limitation is taught by the prior
art.
“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
[the] subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727,
1734, 82 USPQ2d 1385, 1391 (2007). “If a person of ordinary skill in the
art can implement a predictable variation, and would likely see the benefits
of doing so, § 103 likely bars its patentability.” Id at 1740, 82 USPQ2d at
1396. Moreover, “if a technique has been used to improve one device, and a
person of ordinary skill in the art would recognize that it would improve
similar devices in the same way, using the technique is obvious unless its
actual application is beyond that person’s skill.” Id.
Appellant argues that there is no motivation to combine the prior art
references, stating (Br., p. 7):
At best the prior art suggests two separate ways of moving an
implement that is attached to a shaft of a weed trimmer. The prior art
does not teach or contemplate having two different adjusting means
associated with a single weed trimming device. The only way based
on the teachings of the prior art, to arrive at the claimed invention, is
to use the claim as a frame, taking individual, naked parts of separate
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prior art references where employed as a mosaic to recreate a
facsimile of the claimed invention.

The motivation or incentive to combine Blevins with Wright is
provided by their similar uses. Both devices provide a means for guarding
weed trimming devices from other objects. Blevins discloses a guard with a
clamp that is movable up and down the shaft of a weed trimmer, but the
guard is unable to move perpendicular to the shaft. Thus, the device in
Blevins can only guard the weed trimmer at one distance. Wright discloses
a guard with a clamp that is movable both along the shaft of a weed trimmer,
and the guard has a spatial guide that allows movement perpendicular to the
shaft of the weed trimmer. The perpendicular movement allowed by the
spatial guide in Wright solves the problem that Blevins can only guard at
one distance.
Furthermore, Blevins discloses that its guard “may be mounted on
handle 36 by suitable bracket means 39” (Blevins, col. 3, ll. 49-50).
However, without the ability to move the guard perpendicular to the shaft of
the weed trimming device, the guard would not be useful at other positions
along the shaft. The spatial guide in Wright solves this problem by allowing
the guard to be adjusted to different positions as the bracket is repositioned
up and down the shaft.
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“Common sense teaches … that familiar items may have obvious uses
beyond their primary purposes, and in many cases a person of ordinary skill
will be able to fit the teachings of multiple patents together like pieces of a
puzzle.” KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. at 1742, 82 USPQ2d at
1397. “[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.” Id at 1740,
82 USPQ2d at 1395. Accordingly, it would have been obvious to one of
ordinary skill in the art, at the time Applicant’s invention was made, to
combine Wright’s spatial guide with Sheldon’s weed trimmer guard.
Conclusion
Having considered all the evidence of record for and against the
patentability of Claims 1-2 of Application 10/784,056 under 35 U.S.C.
§ 102(b) and Claims 1, 3-9, 11-14, and 16 under 35 U.S.C. § 103(a), we
affirm all the appealed final rejections.
Order
Upon consideration of the appeal, and for the reasons given, it is
ORDERED that the decisions of the Examiner rejecting Claims 1-2 of
Application 10/784,056 under 35 U.S.C. § 102(b) and rejecting Claims 1, 3-
9, 11-14, and 16 under 35 U.S.C. § 103(a) are affirmed; and
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FURTHER ORDERED that the time for taking future action in this
appeal cannot be extended under 37 CFR § 1.136(a)(2006).
AFFIRMED

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