Ex Parte Wegwerth

Patent Trial and Appeal Board

Jun 21, 2017

13457818 (P.T.A.B. Jun. 21, 2017)

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.
13/457,818 04/27/2012 Hugh Wegwerth 3512
7590 06/22/2017
HUGH WEGWERTH
1795 ALBERT STREET
FALCON HEIGHTS, MN 55113
EXAMINER
YOO, HONG THI
ART UNIT PAPER NUMBER
1793
MAIL DATE DELIVERY MODE
06/22/2017 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 HUGH WEGWERTH
____________

Appeal 2016-007973
Application 13/457,818
Technology Center 1700
____________

Before MARK NAGUMO, WESLEY B. DERRICK, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.

DERRICK, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
maintained rejection under 35 U.S.C. § 102(b) of claim 1 over Beechlyn1
and new ground of rejection under 35 U.S.C. § 103(a) of claim 7 over Sahni2
in view of Beechlyn and Rey.3 We have jurisdiction under 35 U.S.C. § 6.
We reverse the rejections of record, but we enter a new ground of
rejection.

1 Beechlyn, US 1,794,823, issued March 3, 1931.
2 Sahni, Classic Indian Cooking (1980).
3 Rey, US 2,782,825, issued February 26, 1957.
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THE INVENTION
The claimed subject matter on appeal relates to a tool for extracting
meat from a coconut shell having a concave shaped knife blade.
Specification filed April 27, 2012 (“Spec.”), Abstract. Independent claim 1
is directed to a knife with a concave blade. Independent claim 7 is directed
to a method of using the knife with a concave blade to extract coconut meet
from a coconut shell.
1. A concave knife for extracting coconut meat from a
coconut shell, said knife consisting of:
a concave blade member with a sharp pointed end riveted
to a handle member through a holder member; and
wherein said concave blade member slides between an
inside of a one half of a spherical shaped coconut shell
and an underside of a coconut meat inside said coconut
shell to dislodge said coconut meat from said coconut
shell in one piece.
7. A method for extracting coconut meat from a coconut
shell in one piece, the method consisting of:
a) providing a concave-knife with a concave blade
having a sharp pointed end and a handle riveted to said
concave blade through a holder;
b) providing one half of a coconut comprising a coconut
shell with coconut meat inside said coconut shell;
c) said coconut shell having an inside;
d) said coconut meat having an underside;
e) holding in one hand the said handle of said concave
knife;
f) holding in the other hand the said one half of said
coconut shell with said coconut meat inside said coconut
shell;
g) inserting at an oblique angle the said sharp pointed end
of said concave blade of said concave knife between the
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said inside of said coconut shell and the said underside of
said coconut meat so that the said sharp pointed end of
said concave blade is touching said inside of said coconut
shell beneath the said underside of said coconut meat to
enable the said concave blade to be inserted further in
between said coconut meat and said coconut shell;
h) rotating the said coconut shell with said hand holding
said coconut shell while working said concave blade of
said concave knife concentrically around between the
said underside of said coconut meat and the said inside of
said coconut shell to dislodge said coconut meat from
said coconut shell; and
i) removing the said coconut meat from the said coconut
shell in one piece.
Appeal Brief filed January 29, 2016 (“Appeal Br.”), (Claims App.) 23‒24.
DISCUSSION
Appellant argues, inter alia, that the Examiner has erred in relying on
the Beechlyn’s knife blade to meet the claim limitation of a concave blade
because the curvature of Beechlyn’s blade is reversed near its free end.
Upon consideration of the record, we determine both that the
Examiner relies on Beechlyn for the particular shape of the blade—including
in the articulated obviousness rejection of claim 7—and that Beechlyn’s
knife blade is not a concave blade within the meaning of the claims because
of the reversed curvature at the tip. See Beechlyn, Figs. 1‒2. We are,
accordingly, constrained to reverse the Examiner’s rejections.
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NEW GROUND OF REJECTION
We enter the following new ground of rejection for claims 1 and 7
under 35 U.S.C. § 103(a) over Sahni in view of Rey and Beechlyn under the
provisions of 37 C.F.R. § 41.50(b).
We find Sahni teaches the use of a curved knife to separate coconut
meat from a coconut shell after cracking the coconut to open the shell.
Sahni 46.
Referring to Rey’s Figures 1 and 3, we find Rey discloses a curved
cutting tool 24 with a pointed end for use in a device for removing meat
from coconuts (col. 1, ll. 15‒18, col. 3, l. 31). Rey teaches the use of a
concave blade in its disclosure of a curved cutting tool 24 as having a
“generally spoon shape, but flatter” and that “[t]his blade [24] has cutting
edges so that an upward force or a lateral force . . . will result in cutting of
the object.” Rey, col. 3, ll. 35‒40. Because both Sahni and Rey relate to
curved cutting tools for removing meat from coconuts after cracking the
coconut to open the shell, we find the art analogous to the claims on appeal,
which are directed to a knife or its use for this same purpose, because they
are in the same field of endeavor. See In re Bigio, 381 F.3d 1320, 1325
(Fed. Cir. 2004).
We also find Rey to disclose a conventional method of removing
coconut meat including splitting the coconut in half, holding a coconut half
in one hand, and using the knife in the other hand to remove the coconut
meat. Rey, col. 1, ll. 22‒26. Further, we find Rey’s recitation that “it is
usually necessary to cut the meat in the shell into small pieces” (Rey, col. 1,
ll. 27‒28) to teach that the coconut meat can be removed in a single piece.
In re Preda, 401 F.2d 825, 826 (CCPA 1968) (“[I]n considering the
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disclosure of a reference, it is proper to take into account not only specific
teachings of the reference but also the inferences which one skilled in the art
would reasonably be expected to draw therefrom.”).
Referring to Beechlyn’s Figures 1 and 2, we find Beechlyn discloses a
knife with a thin curved blade having a sharp pointed end opposite to a
handle member 10 that is attached by a rivet 12 through a shank 14 (holder
member). Beechlyn, 1, ll. 5‒6, 25‒50. Because Beechlyn relates to a knife
having an attached handle, we find the Beechlyn analogous to the instant
claims because it is in the same field of endeavor of knives having a handle
attached via use of a rivet, as well as being reasonably pertinent to the
problem of attaching a knife handle. See, e.g., Bigio, 381 F.3d at 1325.
As to claim 1, we conclude that one of ordinary skill in the art at the
time of the invention seeking to extract coconut meat from a coconut shell
would have found obvious a curved knife as taught by Sahni, modified to
include the flattened spoon shape and sharp pointed end as taught by Rey to
be useful for extracting coconut meat from a coconut shell, and would have
found it further obvious to attach the modified knife blade to a handle
through a holder member as taught by Beechlyn, because this method of
attachment is taught to be useful for attaching handles to knifes, including
knifes with thin curved blades.
Regarding the functional recitation that the “blade member slides
between . . . [the] coconut shell and . . . a coconut meat inside said coconut
shell to dislodge said coconut meat from said coconut shell in one piece”
(claim 1), we are of the opinion that the curved knife of Sahni as modified
by the teachings of Rey and Beechlyn would have been capable of
performing the intended use recited. In this regard, we note that Rey
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reasonably teaches that the coconut meat can be removed in a single piece
using hand knives. Rey, col. 1, ll. 27‒28. It follows that the instant
functional language does not distinguish the claimed knife because it does
not reflect a structural difference. In re Danly, 263 F.2d 844, 848 (CCPA
1959) (“[C]laims drawn to an apparatus must distinguish from the prior art
in terms of structure rather than function.”); cf. In re Swineheart, 439 F.2d
210, 213 (CCPA 1971) (“[W]here the Patent Office has reason to believe
that a functional limitation asserted to be critical for establishing novelty in
the claimed subject matter may, in fact, be an inherent characteristic of the
prior art, it possesses the authority to require the applicant to prove that the
subject matter shown to be in the prior art does not possess the characteristic
relied on.”).
As to claim 7, we conclude that one of ordinary skill in the art at the
time of the invention interested in extracting coconut meat from a coconut
shell would have found it obvious at the time of the invention to obtain a
concave knife according to the claim (the knife of Sahni modified by the
teachings of Rey and Beechlyn as discussed above), to obtain one half of a
coconut with coconut meat inside as taught by Sahni and Rey, to hold the
concave knife in one hand and the half coconut in the other as reasonably
suggested by Sahni and taught by Rey, to insert as required the sharp pointed
end of the concave blade between the coconut shell and coconut meat and
rotating the coconut shell while working the concave blade to dislodge
coconut meat from the coconut shell as reasonably taught by Rey to be a
conventional method of removing coconut meat, and removing the coconut
meat from the coconut shell in one piece as reasonably taught by Rey for the
benefit of obtaining the coconut meat from the coconut shell in one piece. In
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sum, it is our opinion that one of ordinary skill in the art would have found it
obvious at the time of the invention to have used the improved knife of the
relied on combination in, what is on this record, a wholly conventional
method of using a knife to remove coconut meat from a coconut shell half,
including doing so in a manner to obtain the coconut meat in a one piece.
DECISION
We REVERSE the Examiner’s rejection of claims 1 and 7, but,
pursuant to 37 C.F.R. § 41.50(b), enter a NEW GROUND OF REJECTION
as to both claims 1 and 7.
Section 41.50(b) provides “[a] new ground of rejection pursuant to
this paragraph shall not be considered final for judicial review.” Section
41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the
opinion of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
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claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
REVERSED; NEW GROUND OF REJECTION
PURSUANT TO 37 C.F.R. § 41.50(b)