Ex Parte Votel et al

Patent Trial and Appeal Board

Jan 31, 2018

14020929 (P.T.A.B. Jan. 31, 2018)

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.
14/020,929 09/09/2013 Thomas Votel 5039.19US02 1016
87197 7590
Skaar Ulbrich Macari, P.A.
601 Carlson Parkway
Suite 1050
Minneapolis, MN 55305
EXAMINER
BRYANT, DAVID P
ART UNIT PAPER NUMBER
3726
NOTIFICATION DATE DELIVERY MODE
02/02/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
pto @ sumiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS VOTEL and NATE BOHMBACH
Appeal 2017-0050611
Application 14/020,9292
Technology Center 3700
Before PHILIP J. HOFFMANN, KENNETH G. SCHOPFER, and
BRADLEY B. BAYAT, Administrative Patent Judges.
SCHOPFER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the rejection of
claims 1-14. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Our decision references the Appeal Brief (“Appeal Br.,” filed May 21,
2016), Appellants’ Appendix of Claims (“Claims App.,” filed June 22,
2016), and Reply Brief (“Reply Br.,” filed Jan. 31, 2017), and the
Examiner’s Answer (“Ans.,” mailed Dec. 1, 2016) and Final Office Action
(“Final Act.,” mailed Jan. 29, 2016).
2 According to Appellants, the “real party in interest of Appellant is
Tenacious Holdings, Inc. Ergodyne is a d/b/a of Tenacious Holdings. Inc.”
Appeal Br. 1.
Appeal 2017-005061
Application 14/020,929
BACKGROUND
According to Appellants, “[t]he present invention relates generally to
a safety strap for hand tools. More particularly, the present invention relates
to an improved way of attaching a safety strap to a hand tool by using a
constricting rubber sleeve.” Spec. 1,11. 10-12.
ILLUSTRATIVE CLAIM
Claim 1 is illustrative of the appealed claims and recites:
1. A system for attaching a safety strap to a hand tool
comprising:
a hand tool having an exterior diameter;
a safety strap adjacent to the hand tool;
a removable hollow core defining a volume and having
interior and exterior diameters, the interior diameter being
greater than the exterior diameter of the hand tool;
an elastic sleeve having a length, a relaxed interior
diameter, a stretched interior diameter, and a relaxed exterior
diameter, wherein the difference between the relaxed exterior
diameter and the relaxed interior diameter defines a wall width,
the relaxed interior diameter is less than the exterior diameter of
the hand tool, and the stretched interior diameter is greater than
the exterior diameter of the removable hollow core; and,
wherein the elastic sleeve is mountable on the removable
hollow core, and the removable hollow core is configured to be
removed while the hand tool and safety strap are within its
volume.
Claims App. 1.
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REJECTIONS
1. The Examiner rejects claims 1-14 under 35 U.S.C. § 103(a) as
unpatentable over Moreau3 in view of Biersdorf.4
2. The Examiner rejects claims 1-13 under 35 U.S.C. § 103(a) as
unpatentable over Appellants’ Admitted Prior Art (“AAPA”) in view of
Biersdorf.
DISCUSSION
Moreau in view Biersdorf
With respect to this rejection, Appellants address independent claims
1,11, and 14 together, and separately address each of independent claims 8
and 12. See Appeal Br. 13-16. Appellants do not separately address any
dependent claims. See id. We address claims 1, 8, and 12 separately below,
and the remaining claims stand or fall with those claims, as indicated.
Claims 1—7, 11, and 14
With respect to claim 1, the Examiner finds that Moreau discloses a
system for attaching a safety strap to a tool including a hand tool, safety
strap, and elastic sleeve. Final Act. 8 (citing Moreau Figs. 1,2, 11; 39).
The Examiner acknowledges that “Moreau... does not disclose how the
elastic sleeve is expanded or stretched, or a hollow core” as claimed. Final
Act. 8. However, the Examiner finds that Biersdorf teaches a system for
attaching an elastic sleeve to a tool in which the sleeve is mountable on a
hollow core, and the hollow core is configured to be removed while the
handle and safety strap are within its volume. Id. at 8-9 (citing Biersdorf
3 Moreau et al., US 2014/0013544 Al, pub. Jan. 16, 2014.
4 Biersdorf et al., US 5,373,616, iss. Dec. 20, 1994.
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Application 14/020,929
Fig. 9; col. 1,11. 7-13, 33^11; col. 3,11. 42-68; col. 5,1. 51-col. 6,1. 25).
The Examiner concludes that it would have been obvious to modify
Moreau’s system to incorporate a hollow core as in Biersdorf “in order to
easily stretch the safety strap over the hand tool.” Final Act. 9. The
Examiner also notes “that it is within the general skill level of a worker in
the art to properly size the strap.” Id.
As discussed below, we are not persuaded of reversible error in this
rejection by Appellants’ arguments.
Appellants first incorporate their arguments made with respect to the
rejection over AAPA in view of Biersdorf. Appeal Br. 13. However, we
find those arguments unpersuasive or irrelevant to the rejection based on
Moreau. First, to the extent Appellants argue with respect to the rejection
over AAPA that the Examiner has misapplied an “obvious to try” analysis,
we are not persuaded of any relevance between that rejection and those
arguments and the rejection based on Moreau. See Appeal Br. 10-11.
Specifically, the Examiner does not indicate that the rejection of these
claims over Moreau and Biersdorf relies on “obvious to try” reasoning.
Rather, the Examiner indicates that one of ordinary skill would have
recognized the benefit of Biersdorf s hollow core when used in Moreau’s
system, including that it would make placement of the elastic sleeve easier.
See Final Act. 9; see also Ans. 13 (concluding that “it would have been
obvious to [combine Moreau with Biersdorf] in order to easily stretch the
rubber sleeve over the tool handing using a core as taught by Biersdorf.”).
Second, to the extent that Appellants argue “[bjoth the AAPA and
Moreau teach away from cold shrink,” we are not persuaded of error with
respect to the rejection over Moreau and Biersdorf. See Appeal Br. 9. On
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this point, we first note that the claims before us do not include the term
“cold shrink,” and thus it is not precisely clear how the use of heat shrinking
is applicable to any teaching away argument with respect to the claims at
issue. Second, we agree with the Examiner’s response on this issue. See
Ans. 12. In particular, Moreau not only teaches an embodiment that uses
heat shrinking to attach a sleeve to a tool, but Moreau also describes an
embodiment in which a sleeve is expanded, extended over the tool’s handle,
and “is allowed to resume its relaxed state to the extent possible to create a
snug fit to [the] tool.” Moreau ^ 39. This comports with the Examiner’s
provided definition of cold shrink, which Appellants do not appear to
contest. See Ans. 12 (defining the term cold shrink “to mean that the sleeve
is expanded and allowed to constrict back without the use of heat.”); see also
Reply Br. 2-3.
Beyond those arguments raised with respect to the rejection over
AAPA, Appellants argue only that the advantages of cold shrink over heat
shrink are articulated in the Specification; heat shrink and cold shrink are not
compatible and one does not suggest the other; and thus, “there is no
motivation to combine Moreau with Biersdorf.” Appeal Br. 14.
Accordingly, Appellants appear to argue only that because Moreau teaches
heat shrinking and Biersdorf teaches cold shrinking, there is no motivation
to combine the references. However, as noted above, Moreau discloses an
embodiment, relied upon by the Examiner, in which an elastic sleeve is
attached to a tool without the use of heat shrinking. Thus, we find that
Appellants have mischaracterized the references on this point.
Further, to the extent Appellants argue that the conclusion/motivation
to combine is not supported by evidence in general, we disagree. In this
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regard, the Examiner finds that one of ordinary skill in the art would have
recognized a benefit from Biersdorf that could be obtained in Moreau’s
device, i.e. that using a hollow core would make it easier to place the elastic
sleeve onto a tool. We agree that one of ordinary skill in the art would have
recognized this benefit, and we also note Biersdorf indicates that ease of
application is a desired benefit of Biersdorf s invention. See, e.g., Biersdorf
col. 3,11. 21-35 (reciting objects of the invention to include application of a
handgrip “without the use of a separate installation fixture” and that the
invention allows for “precise and selective placement” of a handgrip on a
tool handle).
Based on the foregoing, we are not apprised of reversible error with
respect to the rejection of claim 1. Accordingly, we sustain the rejection of
claim 1 as obvious over Moreau in view of Biersdorf. We also sustain the
rejection of claims 2-7, 11, and 14 on this ground because Appellants do not
raise separate arguments with respect to those claims.
Claims 8—10
With respect to independent claim 8, the Examiner relies on
substantially the same findings as those discussed above with respect to
claim 1. See Final Act. 10. The Examiner concludes that it would have
been obvious to modify the methods of Moreau “by incorporating a hollow
removable core as taught by Biersdorf... and using the method of
Biersdorf... to apply the safety strap to the handle, in order to easily and
better secure the strap to the handle.” Id.
Appellants raise substantially the same arguments here as those
presented above with respect to claim 1. In particular, Appellants rely on
their arguments related to “obvious to try” analysis; Appellants argue that
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the Examiner has not provided evidence that the combination would have
been obvious to one skilled in the art; and Appellants argue that “[tjhere is
no suggestion in [Moreau] to support using cold shrink instead of the known
method of heat shrink.” Appeal Br. 14-15. We find these arguments
unpersuasive for the reasons discussed above with respect to claim 1.
Accordingly, we sustain the rejection of claim 8. We also sustain the
rejection of claims 9 and 10, which fall with claim 8.
Claims 12 and 13
With respect to claim 12, the Examiner relies on substantially the
same findings as those discussed above with respect to claim 1. See Final
Act. 11-12. Additionally, with respect to the dimensions required by
claim 12, the Examiner concludes “that is it within the general skill level of
a worker in the art to properly size the elastic sleeve for the intended use. A
change in size is generally recognized as being within the level of ordinary
skill in the art.” Id. at 12 (citing Application of Rose, 220 F.2d, 459 (CCPA
1955)).
We are persuaded by Appellants’ argument that the Examiner has not
sufficiently addressed the requirements of claim 12 including that “the
[relaxed] interior diameter [of the rubber sleeve] is 3 to 4 times smaller than
the exterior diameter of the removable core upon which it is stretched” and
that “the ratio of the length of the elastic sleeve in inches to the weight in
pounds of the hand tool to which the safety strap is attached is between .4
and .6.” See Appeal Br. 12-13, 15-16. We agree with Appellants that Rose,
as relied upon by the Examiner, merely holds that changing the size of a
known article or articles is not itself patentable. See Rose, 220 F.2d at 463.
The Examiner has not established that the dimensions required in claim 12
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represent a simple change in size over the prior art, and though it may be
true that it is within the skill in the art to change the size of the elastic sleeve,
the Examiner has not shown how or why it would have been obvious to
change the size of the sleeve to arrive at the claimed dimensions.
Based on the foregoing, we are persuaded of reversible error with
respect to the rejection of claim 12 over Moreau and Biersdorf.
Accordingly, we do not sustain the rejection of claim 12 here. We also do
not sustain the rejection of dependent claim 13 for the same reasons.
AAPA in view of Biersdorf
Claims 1—11
Because we sustain the rejection based on Moreau with respect to
these claims, we do not reach the Examiner’s alternative rejection over
AAPA in view of Biersdorf with respect to claims 1-11.
Claims 12 and 13
We are persuaded of error in the rejection of claims 12 and 13 here for
the same reasons as those discussed above with respect to the rejection over
Moreau and Biersdorf. Specifically, the Examiner has not established that
the dimensions required in claim 12 represent a simple change in size over
the prior art, and though it may be true that it is within the skill in the art to
change the size of the elastic sleeve, the Examiner has not shown how or
why it would have been obvious to change the size of the sleeve to arrive at
the claimed dimensions. Accordingly, we do not sustain the rejection of
claims 12 and 13 over AAPA in view of Biersdorf.
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CONCLUSION
We AFFIRM the rejection of claims 1-11 and 14 over Moreau in
view of Biersdorf. We do not reach the rejection of claims 1-11 over AAPA
in view of Biersdorf. We REVERSE the rejections of claims 12 and 13.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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