Ex parte WOLD et al.

Board of Patent Appeals and Interferences

Nov 22, 1999

08688991 (B.P.A.I. Nov. 22, 1999)

Application for patent filed August 1, 1996. 1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written
for publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 12
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte KEVIN L. WOLD, LANCE L. HOOD and DENNIS M. TERENZIO
____________
Appeal No. 1999-0627
Application No. 08/688,9911
____________
ON BRIEF
____________
Before McCANDLISH, Senior Administrative Patent Judge, ABRAMS
and BAHR, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 and 3 through 10, which are all of the
claims pending in this application.
Appeal No. 1999-0627
Application No. 08/688,991
We AFFIRM-IN-PART.
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Application No. 08/688,991
BACKGROUND
The appellants' invention relates to a hand-held utensil
comprising a tool head and an elongated handle. An
understanding of the invention can be derived from a reading
of exemplary claim 1, which appears in the appendix to the
appellants' brief.
The prior art reference of record relied upon by the
examiner in rejecting the appealed claims is:
Nunn et al. (Nunn) GB 2,274,615 Aug. 3, 1994
(British document)
The following rejections are before us for review.
1. Claims 1 and 3 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Nunn.
2. Claims 4 through 10 stand rejected under 35 U.S.C. § 103
as being unpatentable over Nunn.
Reference is made to the brief (Paper No. 9) and the
final rejection (Paper No. 6) and answer (Paper No. 10) for
the respective positions of the appellants and the examiner
with regard to the merits of these rejections.
OPINION
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Application No. 08/688,991
In reaching our decision in this appeal, we have given
careful consideration to the appellants' specification and
claims, to the applied prior art reference, and to the
respective
positions articulated by the appellants and the examiner. As
a consequence of our review, we make the determinations which
follow.
The anticipation rejection
Anticipation is established only when a single prior art
reference discloses, expressly or under the principles of
inherency, each and every element of a claimed invention. RCA
Corp. v. Applied Digital Data Sys., Inc., 730 F.2d 1440, 1444,
221 USPQ 385, 388 (Fed. Cir. 1984). In other words, there
must be no difference between the claimed invention and the
reference disclosure, as viewed by a person of ordinary skill
in the field of the invention. Scripps Clinic & Research
Found. v. Genentech Inc., 927 F.2d 1565, 1576, 18 USPQ2d 1001,
1010 (Fed. Cir. 1991). It is not necessary that the reference
teach what the subject application teaches, but only that the
claim read on something disclosed in the reference, i.e., that
all of the limitations in the claim be found in or fully met
Appeal No. 1999-0627 Page 5
Application No. 08/688,991
by the reference. Kalman v. Kimberly Clark Corp., 713 F.2d
760, 772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert. denied,
465 U.S. 1026 (1984).
The examiner's findings are explained on pages 2 and 3 of
the answer, with reference to the examiner's marked-up copy of
Nunn's Figure 2 attached to the answer. Specifically, the
examiner has divided the Nunn handle into three sections and
considers the sections labeled by the examiner as F, I and R
to respond to the forward, intermediate and rear sections,
respectively, recited in claim 1. The examiner finds that the
rear section (R) is round in cross-section and has a larger
cross-sectional area than that of the forward section (F) and
that the intermediate section (I) is of smaller cross-
sectional area than both the forward and rear sections and
smoothly blended into the contours of each to create a
stretched hourglass handle shape. The appellants do not
contest these findings. The examiner further finds that: (1)
the rear section (R) is "slightly bulbous" and (2) the
forward and intermediate sections are aligned to establish a
longitudinal axis aligned with a tool head and the rear
section is slightly angled down from the axis, at the boss
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Application No. 08/688,991
The examiner's reference to a maximum diameter "(D2)" of the rear2
section on page 3 of the answer appears to be an inadvertent error.
(18b). With regard to claim 3, the examiner finds that the
rear section tapers up (see left-side contour of the rear
section R) from the intermediate section to a maximum diameter
(D1) and thereafter tapers down (see right-hand contour of2
the section R) to a rounded end (16).
The appellants argue:
Claim 1 recites that the rear section is
slightly bulbous and angled slightly downwardly from
a handle axis, and is of a length and diameter to be
easily grasped between the palm of the hand and the
middle, ring and little fingers.
The rear section could not be deemed the sharply
angled end of the '615 patent, as it is too short
and may not be grasped by these fingers. The
combination of the tail end and the next handle
section could also not reasonably be deemed a slight
downwardly angled bulbous rear section.
Claim 3 further recites a tapering shape of the
rear section, which again cannot be reasonably read
on the tail end or the combined next and tail
sections, since they do not gradually taper up and
then down from a point adjacent the smaller
intermediate section to the handle end [brief, page
5].
We interpret the appellants' reference to "the sharply
angled end" and "tail" of Nunn to denote the downwardly
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Application No. 08/688,991
Webster's New World Dictionary, Third College Edition (Simon &3
Schuster, Inc. 1988).
extending protrusion disposed generally at the location of the
boss (18b). As the examiner finds that a section (R) of the
handle comprising both that "tail" and a portion of the handle
located forwardly thereof respond to the rear section recited
in claim 1, the appellants' first argument that the "tail" is
not of a length and diameter to be easily grasped as claimed
is not relevant and is thus not persuasive. The appellants do
not assert that the section (R) of the handle, considered by
the examiner to respond to the claimed rear section, has such
a deficiency.
As to the appellants' argument that the section (R) of
the handle "could not reasonably be deemed a slight downwardly
angled bulbous rear section," we note that "bulbous" is
defined as "of, shaped like, or having a bulb or bulbs" and
that a "bulb" is a "rounded thing or enlarged part." 3
Accordingly, it is not apparent to us why the rear section (R)
could not reasonably be considered "slightly bulbous" as
claimed.
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Application No. 08/688,991
Webster's New World Dictionary, Third College Edition (Simon &4
Schuster, Inc. 1988).
Regarding the "slightly angled" limitation of claim 1, it
is axiomatic that, in proceedings before the PTO, claims in an
application are to be given their broadest reasonable
interpretation consistent with the specification, and that
claim language should be read in light of the specification as
it would be interpreted by one of ordinary skill in the art.
In re Sneed, 710 F.2d 1544, 1548, 218 USPQ 385, 388 (Fed. Cir.
1983). Moreover, limitations are not to be read into the
claims from the specification. In re Van Geuns, 988 F.2d
1181, 1184, 26 USPQ2d 1057, 1059 (Fed. Cir. 1993) citing In re
Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir.
1989).
The term "angled" is defined as "moved or bent at an
angle." From our viewpoint, the rear section (R) of the Nunn4
handle is bent or angled downwardly from a longitudinal axis
aligned with the tang of a tool mounted on the handle to the
downwardly protruding portion disposed around the boss (18b).
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Application No. 08/688,991
Therefore, the rear section (R) of the handle, as interpreted
by the examiner, appears to us to also be "slightly angled
down from said longitudinal axis" as claimed.
For the foregoing reasons, we shall sustain the
examiner's rejection of claim 1 under 35 U.S.C. § 102(b).
With regard to claim 3, we have considered the
appellants' argument that the rear section (R) of the Nunn
handle, as interpreted by the examiner, does not "gradually
taper up and then down from a point adjacent the smaller
intermediate section to the handle end" but we do not find it
persuasive. As we see it, the rear section (R), as defined by
the examiner in the marked-up copy of Nunn's Figure 2 appended
to the answer, tapers up from a smaller diameter intermediate
section (I) to a maximum diameter, labeled D1 by the examiner,
and then tapers down (and angles downwardly) to a rounded end
(16).
Accordingly, we shall also sustain the examiner's
rejection of claim 3 under 35 U.S.C. § 102(b).
The obviousness rejection
The examiner concedes that Nunn fails to disclose the
diameter of the rear section recited in claim 4, the inclined
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Application No. 08/688,991
angle as recited in claim 9 and the lengths of each section as
recited in claim 8. However, it is the examiner's position
that these dimensions would have been obvious, as "[a] change
in size is generally recognized as being within the level of
ordinary skill in the art" (final rejection, page 2). As to
claim 5, the examiner implicitly concedes that Nunn lacks a
chamfer on the hang hole of the utensil handle, but contends
that it would have been obvious to form a hang hole with a
chamfer on the Nunn handle for the purpose of storage. As to
claims 6 and 7, the examiner asserts that the specific shapes
of the forward and intermediate sections recited therein would
have been obvious matters of design choice, "since applicant
has not disclosed that the specific shapes of the forward,
rear and intermediate sections solve any stated problem and it
appears that one of ordinary skill in the art would find it
obvious to form the handle in numerous configurations for the
purpose of providing mating surfaces to accommodate a user's
hand" (final rejection, pages 2 and 3). Finally, as to claim
10, the examiner's position is that kitchen utensils having a
rectangular cross-section are well known and the provision of
a hole (or cavity 13) in rectangular shape to fit the utensils
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Application No. 08/688,991
would have been an obvious matter of design choice (final
rejection, page 3).
As to claims 4, 5 and 10, the appellants state that
"admittedly these claims do not add further distinguishing
features to claim 1" (brief, page 5). Accordingly, these
claims are treated as falling with claim 1. See In re
Nielson, 816 F.2d 1567, 1572, 2 USPQ2d 1525, 1528 (Fed. Cir.
1987). As discussed above, we have sustained the examiner's
35 U.S.C. § 102(b) rejection of claim 1 as being anticipated
by Nunn. Thus, it follows that the examiner's rejection of
claims 4, 5 and 10 under 35 U.S.C. § 103 as being unpatentable
over Nunn is also sustained.
As to claims 8 and 9, the appellants have argued that the
specific length of the rear section recited in claim 8 "cannot
be read on the tail end of [Nunn]" and that "[t]he tail of the
[handle] shown in [Nunn] clearly is much more sharply angled"
than the 10 degree angle recited in claim 9 (brief, pages 5
and 6), but have not responded to the examiner's assertions on
page 2 of the final rejection that the modification of Nunn to
provide a rear section (R) having such a dimension and angle
of inclination would have been obvious.
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Application No. 08/688,991
Accordingly, as the appellants have not offered any
specific argument or evidence rebutting the examiner's finding
of obviousness, we shall sustain the examiner's rejection of
claims 8 and 9 under 35 U.S.C. § 103.
As to claims 6 and 7, the appellants argue that Nunn does
not show or suggest the claimed cross sectional shapes and
further asserts that these features create a thumb rest on the
handle (brief, page 5). We do not agree with the examiner
that the flattened sides and rounded rectangular cross
sections of the forward and intermediate sections of the
appellants' handle solve no stated problem. As noted, for
example, on page 3 of the appellants' specification, the top
of the forward section is "flattened for secure engagement
with a user's thumb." Accordingly, we cannot agree with the
examiner that the cross sectional shapes of the forward and
intermediate sections can be dismissed as mere design choice
within the skill of the art.
In making a rejection under 35 U.S.C. § 103, the examiner
has the initial duty of supplying the requisite factual basis
and may not, because of doubts that the invention is
patentable, resort to speculation, unfounded assumptions or
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Application No. 08/688,991
hindsight reconstruction to supply deficiencies in the factual
basis. In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 177-
78 (CCPA 1967).
As the examiner has not provided any factual basis for
the position that the claimed cross sectional shapes of the
forward and intermediate sections would have been obvious to
one of ordinary skill in the art to provide mating surfaces to
accommodate a user's hand, it appears that the examiner's
conclusion of obviousness is based on impermissible hindsight
reconstruction.
Accordingly, we cannot sustain the examiner's rejection
of claims 6 and 7.
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Application No. 08/688,991
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1 and 3 under 35 U.S.C. § 102(b) and claims 4 through
10 under 35 U.S.C. § 103 is affirmed as to claims 1, 3 through
5 and 8 through 10 but reversed as to claims 6 and 7.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
HARRISON E. McCANDLISH )
Senior Administrative Patent Judge
)
)
)
)
) BOARD OF PATENT
NEAL E. ABRAMS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
Appeal No. 1999-0627 Page 15
Application No. 08/688,991
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