Ex Parte Welch

Patent Trial and Appeal Board

Oct 15, 2013

12016562 (P.T.A.B. Oct. 15, 2013)

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.
12/016,562 01/18/2008 Alan Rupert Welch 1-29723 4538
4859 7590 10/15/2013
MACMILLAN SOBANSKI & TODD, LLC
ONE MARITIME PLAZA FIFTH FLOOR
720 WATER STREET
TOLEDO, OH 43604-1619
EXAMINER
MORGAN, EILEEN P
ART UNIT PAPER NUMBER
3723
MAIL DATE DELIVERY MODE
10/15/2013 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 ALAN RUPERT WELCH
____________________

Appeal 2011-010374
Application 12/016,562
Technology Center 3700
____________________

Before CHARLES N. GREENHUT, PATRICK R. SCANLON, and
BARRY L. GROSSMAN, Administrative Patent Judges.

SCANLON, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-010374
Application 12/016,562

2
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
decision rejecting claims 1-6, which are all of the pending claims. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
THE INVENTION
Appellant’s invention relates to “a knife block having a sharpening
steel recess and which includes a knife sharpener which can be used in situ
and which is removably mounted in the sharpening steel recess.” Spec.,
para. [0003]. Claim 1, the sole independent claim, is reproduced below.1
1. A knife storage and sharpening apparatus
(10, paragraphs 0016 and 0017) including a knife
storage block (14) having a plurality of elongate
recesses (18) each for receipt of the a different
knife and having an elongated recess (22) adapted
for receipt of an elongated rod shaped knife
sharpening end of a knife sharpening steel when
the knife sharpening steel is not in use, and
wherein the apparatus includes a knife sharpening
means (26, 36, 46, 56) different from a knife
sharpening steel removably mounted in the knife
sharpening steel recess (22) in place of a knife
sharpening steel such that the knife sharpening
means can be used to sharpen a knife while the

1 The version of claim 1 reproduced herein is the claim as it appears in
Appellant’s Claim Appendix on page 7 of the Appeal Brief. We note that
this claim is inconsistent with the version of claim 1 filed with the
Amendment of October 26, 2009. Namely, “receipt of the a different” in
line 4 should read “receipt of a different.” The version of claim 1 from the
Claim Appendix also includes several parentheticals, each one of which does
not appear in the version of claim 1 from the Amendment of October 26,
2009. We accordingly construe the claim to not include these parentheticals.
Appeal 2011-010374
Application 12/016,562

3
knife sharpening means is mounted in the knife
sharpening steel recess, wherein a knife sharpening
steel and the knife sharpening means are
interchangeable in the elongated recess.
REFERENCES
The Examiner relies upon the following prior art references:
Bloch
Dandurand
Bradshaw
US 3,135,383
US 5,233,793
US D483,624 S
Jun. 2, 1964
Aug. 10, 1993
Dec. 16, 2003
REJECTIONS
The following rejections are before us on appeal:
Claims 1-3 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Bloch.
Claims 4 and 6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bloch and Bradshaw.
Claim 5 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bloch and Dandurand.
ANALYSIS
The Examiner initially finds that Bloch discloses the apparatus of
claim 1, including an elongated recess (compartment 23) and a knife
sharpening means (knife sharpener 45) removably mounted in the recess.
Ans. 3-4. The Examiner elaborates on this position by stating the “recess 23
is capable of holding the steel and the knife sharpener is removably received
within the recess 23.” Ans 6. The Examiner then appears to take an
alternative position, stating “[r]ecess 23 extends into cavity 29 and together
form a recess capable of holding a steel and capable of holding a removable
sharpener (45).” Id. The Examiner also states “[k]nife sharpener [45]
Appeal 2011-010374
Application 12/016,562

4
resides in cavity 29 which is part or [sic] recess 23” and the rejection “uses
the recess 23 in conjunction with [cavity] 29 as one long recess capable of
holding a steel or knife.” Id.
Appellant takes issues with both of the Examiner’s positions. First,
Appellant argues that the Examiner “incorrectly asserts that the knife
sharpener 45 [of Bloch] is mounted in the recess 23.” App. Br. 5; see also
Reply Br. 2. We agree with Appellant. Bloch discloses a utensil tray having
several compartments including compartment 23. Bloch, col. 1, l. 71 – col.
2, l. 8; figs. 1, 2. The utensil tray further includes an elevated compartment
29 that holds the knife sharpener 45. Id. at col. 2, ll. 28-29; figs. 1-3.
Bloch’s knife sharpener 45 is located in the elevated compartment 29, not
the compartment 23. In other words, the knife sharpener 45 is mounted
adjacent to, but not within, the compartment 23. As such, the Examiner’s
first position is not supported by a preponderance of the evidence.
Regarding the Examiner’s second position, Appellant argues that “the
compartment 29 clearly is not an extension of or a portion of the recess 23.”
Reply Br. 2. We again agree with Appellant. Bloch discloses four
compartments that are divided by a transverse channel 24 into larger parts
15, 17, 19, 21 and respective smaller parts 16, 18, 20, 22. Bloch, col. 2, ll.
2-7; figs. 1, 2. Conversely, the compartment 23 is described as an
“undivided compartment,” and the transverse channel 24 is described as
“separating” the compartment 29. Id. at col. 2, ll. 7-11. The Examiner’s
statement that the compartment 23 extends into the compartment 29 “just
like recess 21 extends into [recess] 22” (Ans. 6) is thus erroneous. We also
disagree with the Examiner’s finding that the compartments 23 and 29 of
Bloch jointly form “one long recess” that is capable of holding a sharpening
Appeal 2011-010374
Application 12/016,562

5
steel. As best seen in Figure 3 of Bloch, the knife sharpener 45 nearly fully
occupies the relatively shallow compartment 29 such that the compartment
29 would not be capable of receiving a portion of a sharpening steel.
For the above reasons, we do not sustain the rejection of claim 1—and
of claims 2 and 3 depending therefrom—under 35 U.S.C. § 102(b) as
anticipated by Bloch.
The Examiner’s rejections of claims 4 and 6 as obvious over Bloch
and Bradshaw and claim 5 as obvious over Bloch and Dandurand each rely
on the same erroneous finding noted supra that Bloch discloses a knife
sharpener removably mounted in a recess capable of holding a steel. Neither
Bradshaw nor Dandurand cures this deficiency of Bloch. We thus do not
sustain the rejections of claims 4-6.
DECISION
We reverse the decision of the Examiner rejecting claims 1-6.

REVERSED

mls