Ex Parte Volk

Board of Patent Appeals and Interferences

Jun 24, 2008

10446599 (B.P.A.I. Jun. 24, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DANIEL J. VOLK
____________

Appeal 2008-1331
Application 10/446,599
Technology Center 3600
____________

Decided: June 24, 2008
____________

Before JENNIFER D. BAHR, LINDA E. HORNER, and STEVEN D.A.
MCCARTHY, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Daniel J. Volk (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 1, 2, 6, 7, 9-13, 16-18, and 20. Claims
3-5, 8, 14-15, and 19 have been canceled. We have jurisdiction over this
appeal under 35 U.S.C. § 6 (2002).
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THE INVENTION
The Appellant’s invention is directed towards a unitary skewer 10
including a base member 12 having a top surface 14 and a bottom surface
16, a stem member 20, a penetrating tip 30, and at least one stabilizing
member 50 positioned along stem member 20 (Spec. 5, l. 27 through Spec.
6, l. 4 and figs. 1 and 3). The top surface 14 of base member 12 includes a
curvature that forms an indentation 60 for providing the user of the skewer
10 with a convenient pad to press down so as to facilitate the penetration of
the skewer 10 into food items 100, 101 (Spec. 6, ll. 17-29 and figs. 2A and
3). The penetrating tip 30 is a generally arrow-shaped structure (Spec. 7, ll.
28-29 and fig. 4). The stabilizing member 50 is a generally triangularly
shaped member 52 that extends beyond the width of the stem member 20
(Spec. 8, ll. 15-17 and fig. 6). The cross-section of stem member 20 is
shaped similar to a “+” (plus) sign (Spec. 9, ll. 29-30 and fig. 8).
Claims 1 and 18 are illustrative of the claimed invention and read as
follows:
1. A skewer for anchoring at least two food items together
comprising:
a) a base member having a top surface and a bottom
surface;
b) a stem member comprising a planar member lying
in a plane and two perpendicular ridges together
forming a plus sign (+) cross section along the
stem member, wherein a proximal end of the stem
member is attached to the bottom surface of the
base member and the stem member extends from
the bottom surface of the base member; and
c) a penetrating tip extending from a distal end of the
stem member, whereby the perpendicular ridges
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help anchor the skewer into the at least two food
items and provide resistance to the removal of the
skewer from and the rotation of the skewer within
the at least two food items;
wherein the plus sign (+) cross section extends
along at least a portion of the length of the stem
member from the base member to a terminating
point proximal to the means for penetrating.

18. A skewer for anchoring at least two foods items
consisting essentially of:

a) a base member having a top concave surface in
one direction and a bottom surface;

b) a stem member extending from the bottom surface
of the base and having a plus sign (+) cross
section;

c) a penetrating tip shaped as an arrowhead extends
from the distal end of the stem member;

d) a stabilizing member shaped triangularly
positioned along the stem member between the
base member and the penetrating tip and having a
flat, generally triangularly configured body
protrudes beyond the width of the stem member;
and

e) two perpendicular ridges extending along the stem
member from the base member to the penetrating
tip;

wherein the plus sign (+) cross section extends
along at least a portion of the length of the stem
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member from the base member to a terminating
point proximal to the penetrating tip,

whereby the at least one stabilizing member helps
anchor the skewer into the at least two food items
and provides resistance to the removal of the
skewer from and the rotation of the skewer within
the at least two food items.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Shipe US 623,571 Apr. 25, 1899
Glantzlin US 2,622,268 Dec. 23, 1952
Smuts US 3,552,017 Jan. 5, 1971
Brookhouse Des. 367,590 Mar. 5, 1996
Merriam Webster’s Collegiate Dictionary 886 (Tenth Ed. 1997)
(hereafter “Dictionary”).
The following rejections are before us for review:

Claims 1, 2, 9, and 10 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Shipe.1
Claims 6 and 7 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Shipe in view of Smuts.
Claim 17 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Shipe. 2

1 Although the Appellant includes claim 4 as subject to this rejection (App.
Br. 5), we note that claim 4 has been canceled (App. Br. 16) and is not
involved in the instant appeal.
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Claims 11, 12, 13, 16, 18, and 20 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Shipe, Smuts, Glantzlin, and Brookhouse.
The Examiner provides reasoning in support of the rejections in the
Answer (mailed April 18, 2007). The Appellant presents opposing
arguments in the Appeal Brief (filed February 2, 2007) and the Reply Brief
(filed June 18, 2007).

OPINION
Claims 1, 2, 9, and 10
Shipe discloses a skewer having a main body (stem member), a head
portion (base member), a knife-edge point A’ (penetrating tip), and
longitudinal ribs A2 having knife-edges b (two perpendicular ridges
extending along the stem member) (Page 1, ll. 28-31 and 38-39). The main
body of the skewer has a four-winged cross-section defined by longitudinal
ribs A2 and semi-oval portions A (Page 1, ll. 41-49 and figs. 1 and 1e).
The Appellant’s argument as to why Shipe does not anticipate claim 1
is that the skewer of Shipe “does not have ‘a planar member’ . . . with two
perpendicular ridges, which creates the ‘plus (+) sign’ configuration” (App.
Br. 8) (underlining in original).
An issue presented in the appeal of the rejection of claims 1, 2, 9, and
10 is whether the skewer of Shipe includes a stem member having a “planar
member lying in a plane.” According to the Examiner, the definition of the

2 Although the Appellant does not specifically address the grounds of
rejection of claims 6, 7, and 17, it is apparent that the Appellant intends to
contest the rejections of claims 6, 7, and 17 as part of the instant appeal
(App. Br. 22 and Reply Br. 3), presumably relying on the same argument
advanced against the rejection of claim 1.
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term “planar” as provided by the Dictionary is “1: of, relating to, or lying in
a plane 2: two dimensional in quality” (Ans. 7). The Examiner concludes
that the skewer of Shipe satisfies the limitation of a “planar member lying in
a plane” because “all objects lie in some plane” (Page 3 of the Office Action
mailed on February 28, 2006). The Appellant argues that the interpretation
by the Examiner of the limitation “planar member lying in a plane” is overly
broad and unreasonable under the circumstances (App. Br. 6 and Reply Br.
2). Specifically, the Appellant argues that the ordinary meaning of the term
“planar” is “generally flat” and that the Examiner’s interpretation “has
unduly expanded the meaning of the term ‘planar member’ to include ‘all
objects’” (App. Br. 6-7). We think the Appellant has the better argument
here.
Claims are construed with an eye toward giving effect to all terms in
the claim. Bicon Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006).
See Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir.
2007) (denouncing claim constructions which render phrases in claims
superfluous). The Examiner’s interpretation of “planar member lying in a
plane” as covering every object, or member, in effect renders meaningless,
or superfluous, the phrases “planar” and “lying in a plane.” We thus
conclude that the Examiner’s claim construction is flawed.
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). We typically think of surfaces, rather than members, as being planar,
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or lying in a plane, and members as having planar surfaces, rather than as
themselves being planar. For example, in elementary geometry the ordinary
and customary meaning of a “plane” is “a level or flat surface” (The New
Merriam Webster Dictionary 555 (1989 Edition)). While we might be
tempted to interpret a “planar member” as a member having at least one
level or flat surface, claim 1 further requires that such “planar member” lie
in a plane. The only way to give effect to both phrases “planar” and “lying
in a plane” is to interpret the language “planar member lying in a plane” as
requiring a member that has a flat profile characterized by flat or planar
opposed surfaces, in essence simulating a plane, but with a third dimension
of some thickness. This is consistent with the Appellant’s description of
“the cross section of stem member 20 as shaped similar to a ‘+’ sign
resembling the intersection of two perpendicular planes” (Spec. 9, ll. 29-30),
as depicted in Figure 8.
In Figure 1e of Shipe the cross-section of the skewer is defined by
semi-oval portions A and longitudinal ribs A2. According to the Examiner
the semi-oval portions A of the skewer of Shipe corresponds to the
limitation of a “planar member lying in a plane,” required by claim 1 (Fig. 1
of Shipe as modified by the Examiner, Ans. 9). However, the semi-oval
portions A of Shipe cannot constitute a “planar surface lying in a plane”
because it does not have a flat profile characterized by flat or planar opposed
surfaces. As such, we agree with the Appellant that the skewer of Shipe does
not disclose the limitation of a “planar member lying in a plane,” as required
by claim 1. "A claim is anticipated only if each and every element as set
forth in the claim is found, either expressly or inherently described, in a
single prior art reference." Verdegaal Bros. v. Union Oil Co. of California,
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814 F.2d 628, 631 (Fed. Cir. 1987). Having determined that Shipe does not
disclose all the limitations of claim 1, we thus conclude that Shipe does not
anticipate claim 1. Therefore, the rejection of claim 1 and claims 2, 9, and
10 depending from claim 1 is reversed.

Claims 6, 7, and 17
Regarding claims 6 and 7, the Examiner does not rely on Smuts for
any teaching that would make up for the deficiency of Shipe as discussed
above. Hence, the rejection of claims 6 and 7 under 35 U.S.C. § 103(a) as
unpatentable over Shipe in view of Smuts is reversed.
With respect to claim 17, which depends from claim 1, even accepting
the Examiner’s position that it would have been obvious to make Shipe’s
skewer of plastic (Ans. 7), that would not make up for the deficiency of
Shipe noted above. For the reasons set forth above with respect to claim 1,
we reverse the rejection of claim 17 under 35 U.S.C. § 103(a) as
unpatentable over Shipe.

Claims 11, 12, 13, and 16
Independent claim 11 includes the limitation of a “stem member…
including a planar member lying in a plane and two ridges extending
perpendicularly along the planar member.” As discussed above with respect
to independent claim 1, we found that Shipe does not disclose the limitation
of a “planar member lying in a plane.” Moreover, the Examiner does not
rely on Smuts, Glantzlin, and Brookhouse for any teaching that would make
up for this deficiency of Shipe. It is elementary that to support an
obviousness rejection all words in a claim must be considered in judging the
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patentability of that claim against the prior art. In re Wilson, 424 F.2d 1382,
1385 (CCPA 1970). Therefore, the rejection of claim 11, and claims 12, 13,
and 16 depending from claim 11, under 35 U.S.C. § 103(a) as unpatentable
over Shipe in view of Smuts, Glantzlin, and Brookhouse cannot be
sustained.

Claims 18 and 20
The Appellant argues the rejection under 35 U.S.C. § 103(a) of claims
18 and 20 together as a group. Therefore, in accordance with 37 C.F.R.
§ 41.37(c)(1)(vii), we have selected claim 18 as the representative claim to
decide the appeal, with claim 20 standing or falling with claim 18.
The issue presented in the instant appeal of the rejection of claim 18
under 35 U.S.C. § 103(a) as unpatentable over Shipe, Smuts, Glantzlin, and
Brookhouse is whether the Appellant has demonstrated that the Examiner
erred in determining that the subject matter of claim 18 is unpatentable over
Shipe, Smuts, Glantzlin, and Brookhouse.
Smuts is directed towards a rotating spaghetti fork having a curved
actuating cap 7 (col. 2, ll. 37 and 69-72 and fig. 2). To use the spaghetti
fork, the user places the thumb or forefinger on top of cap 7 to press cap 7
and plunger 6 (col. 2, l. 69 to col. 3, l. 2). Glantzlin discloses a skewer
having projections 8 along edges 2 and 3 that provide for increased frictional
grip between the skewer and the food article inserted into the skewer (col. 1,
ll. 17-19, col. 2, ll. 6-10; col. 3, ll. 42-45; and fig. 14). Brookhouse discloses
a corncob holder (skewer) having a triangular projection along each of its
edges (fig. 2).
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The Examiner asserts that “[i]t would have been obvious to one of
ordinary skill in the art at the time the invention was made to have modified
Shipe by Smuts to have the top surface of a base being curved in order to be
pressed more easily by a thumb or finger” and to have further modified
Shipe “by the teaching of Glantzlin to have projections such as taught by
Brookhouse for stylistic considerations and to increase gripping or holding
power” (Ans. 6).
The Appellant argues that the combination of Shipe, Glantzlin, Smuts,
and Brookhouse does not disclose a skewer “having a plus sign cross-section
that extends along the stem member from the base to the penetrating tip”
(App. Br. 13). As noted above, the main body of Shipe’s skewer has a four-
winged cross-section defined by longitudinal ribs A2 and semi-oval portions
A (Page 1, ll. 41-49 and figs. 1 and 1e). In the Specification, the Appellant
describes the cross section of the stem member 20 as being “shaped similar
to a ‘+’ sign resembling the intersection of two perpendicular planes”
(underlining added) (Spec. 9, ll. 29-30 and fig. 8). Like the Appellant’s
plus (+) sign configuration, the four-winged cross-section of the skewer of
Shipe is symmetrical about two perpendicular axes. Therefore, we find that
a person of ordinary skill in the art would have recognized that the four-
winged cross-section of the skewer of Shipe is a cross section having a plus
(+) sign configuration, within the context of the Appellant’s disclosed
invention.
The Appellant further appears to argue that the Examiner has failed to
identify any motivation, suggestion or teaching of the desirability to
combine Shipe, Glantzlin, Smuts, and Brookhouse to arrive at the
Appellant’s invention (App. Br. 13). While there must be some articulated
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reasoning with some rational underpinning to support the legal conclusion of
obviousness, "the analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ." KSR, 127 S.Ct. 1727, 1741 (2007).
When a work is available in one field of
endeavor, design incentives and other market
forces can prompt variations of it, either in the
same field or a different one. If a person of
ordinary skill can implement a predictable
variation, § 103 likely bars its patentability.
For the same reason, 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 his or her skill.
Id. at 1740. We must ask whether the improvement is more than the
predictable use of prior art elements according to their established functions.
Id. In this case, Shipe discloses a skewer. Brookhouse teaches a skewer
(corncob holder) having a triangular projection along each of its edges.
Glantzlin teaches that projections along the edges of a skewer provide for
increased frictional grip between the skewer and the food article inserted
into the skewer, thus providing for improved handleability of the food
article. Smuts, while not directed specifically towards a skewer, is drawn to
a food handling device (spaghetti fork) that uses a top cap with a curved
surface for permitting the seating of the user’s finger or thumb thereon to
facilitate pressing of the cap to thereby secure the food. One of ordinary
skill in the art would have appreciated that a curved contour such as that of
Smuts on the base of the skewer of Shipe would likewise facilitate pressing
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of the skewer into the food article. Furthermore, a person of ordinary skill in
the art would have been prompted to modify the skewer of Shipe with the
projections of Brookhouse because Glantzlin specifically teaches that such
projections provide for increased frictional grip between the skewer and the
food article inserted into the skewer. Moreover, modifying the skewer of
Shipe to provide the curved base of Smuts and the projections of
Brookhouse according to Glantzlin would not have been uniquely
challenging to a person of ordinary skill in the art because it is no more than
“the simple substitution of one known element for another or the mere
application of a known technique to a piece of prior art ready for the
improvement.” KSR, 127 S.Ct. at 1740. Therefore, the modification appears
to be the product not of innovation but of ordinary skill and common sense.
Furthermore, when the improvement is technology-independent and the
combination of references results in a product or process that is more
desirable, an implicit motivation to combine exists even absent any hint of
suggestion in the references themselves. "In such situations, the proper
question is whether the ordinary artisan possesses knowledge and skills
rendering him capable of combining the prior art references." DyStar
Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d
1356, 1368 (Fed. Cir. 2006). A person of ordinary skill in the art would
readily appreciate that the benefits gained by providing the curved base of
Smuts is not unique to a spaghetti fork and that such benefits could also be
achieved in the skewer of Shipe. Furthermore, Glantzlin specifically teaches
that projections such as those of Brookhouse provide a benefit such as
increased frictional grip between the skewer and the food article inserted
into the skewer. Moreover, the Appellant does not provide any evidence to
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show that the modification of Shipe to provide a curved base and a plurality
of projections would have been beyond the technical grasp of a person of
ordinary skill in the art.
For the foregoing reasons, the Appellant’s arguments do not persuade
us the Examiner has erred in rejecting claim 18 under 35 U.S.C. § 103(a) as
unpatentable over Shipe, Smuts, Glantzlin, and Brookhouse. The rejection
of claim 18, and claim 20 standing or falling with claim 18, is sustained.

DECISION
The decision of the Examiner to reject claims 1, 2, 9, and 10 under
35 U.S.C. § 102(b) as anticipated by Shipe is reversed.
The decision of the Examiner to reject claims 6 and 7 under 35 U.S.C.
§ 103(a) as unpatentable over Shipe in view of Glantzlin is reversed.
The decision of the Examiner to reject claim 17 under 35 U.S.C.
§ 103(a) as unpatentable over Shipe is reversed.
The Examiner’s rejection of claims 11, 12, 13, 16, 18, and 20 under
35 U.S.C. § 103(a) as unpatentable over Shipe in view of Smuts and further
in view of Glantzlin and Brookhouse is reversed as to claims 11, 12, 13, and
16 and affirmed as to claims 18 and 20.
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-IN-PART

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JRG

LAURENCE P. COLTON
SMITH, GAMBRELL & RUSSELL
SUITE 3100, PROMENADE II
1230 PEACHTREE STREET, N.E.
ATLANTA, GA 30309-3592