Ex Parte Wolf

Board of Patent Appeals and Interferences

Apr 27, 2005

09923113 (B.P.A.I. Apr. 27, 2005)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte SHANE D. WOLF
____________
Appeal No. 2005-0911
Application No. 09/923,113
____________
ON BRIEF
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Before MCQUADE, NASE 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 14 and
17-24. Claim 11, the only other claim pending in this application, stands withdrawn from
consideration as not being directed to an elected specie.
BACKGROUND
The Invention
The appellant's invention relates to beauty salon and spa tools and, in particular,
to shears, provided with a grip material that is deformable by a user’s fingers or hand.
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Further understanding of the invention may be obtained from claim 14 which reads as
follows:
14. Shears comprising:
a head that contains one or more elements adapted
to be directed toward the hair;
a handle comprising finger loops, each finger loop
having an inner diameter; and
deformable grips located on each inner diameter,
each grip having:
a deformable outer surface capable of
receiving at least a portion of the inner
diameter into itself; and
a viscous medium enclosed by the outer
surface.
The Prior Art
The examiner relied upon the following prior art references of record in rejecting
the appealed claims:
Tindall 970,406 Sept. 13, 1910
McCall 5,000,599 Mar. 19, 1991
The Rejection
Claims 14 and 17-24 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Tindall in view of McCall.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the above-noted rejection, we make reference to the answer for
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Application No. 09/923,113
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the examiner's complete reasoning in support of the rejection and to the brief and reply
brief for the appellant's arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the examiner. For the reasons
which follow, we shall sustain the rejection of claims 14 and 17-24 as being
unpatentable over Tindall in view of McCall.
Tindall discloses shears comprising handle loops 6, 7 provided with tubular
cushions each including a tube 5 composed of elastic material, such as india rubber.
According to Tindall (the sentence bridging pages 1 and 2), the tubular cushions “may
be filled with air at atmospheric pressure, or at any greater pressure, as may be desired,
thus giving the cushion tubes any desired resistance, the same as pneumatic tires, or
air tubes for other purposes.” The purpose of the cushions is to “protect the hands of
the user” (page 1, lines 22-23). The examiner concedes that Tindall lacks a viscous
medium enclosed by the outer surface (tube 5) as called for in claim 14.
McCall discloses a deformable grip for a writing instrument responsive to user
fingertip pressure to assume a highly comfortable and low fatigue geometric
configuration. The deformable grip 16 comprises a cylindrical sleeve 28 of a thin
rubber-based or deformable plastic or other elastomer material enclosing a recessed
cavity 22 filled with a relatively viscous putty substance 30 for accommodating fingertip
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pressure induced shape deformation of the sleeve 28 during normal use of the writing
implement. According to McCall, such putty advantageously conforms relatively easily
upon light fingertip pressure during normal gripping of the implement and maintains its
deformed shape for a substantial period of time after release. The grip can then be
grasped by a different user for deformation to a different customized shape (see column
4, lines 40-51). This results in “a unique or novelty feel while further providing
significant enhancements in writer comfort during use and a corresponding reduction in
writer fatigue” (column 5, lines 47-50). McCall teaches that
the deformable grip 16 may be applied to any of a wide
range of different types of pens, pencils, and other types of
writing implements, as well as other manual implements with
working tips, for example, paint brushes, jeweler’s tools, and
other devices [column 4, lines 7-12].
In an alternative form of the invention illustrated in Figures 6 and 7, McCall
discloses a grip 16' comprising an outer resilient sleeve component 34 integrally molded
with interior radially extending webs 36 joined in turn with an inner sleeve component 38
to define a plurality of spaced chambers 40 which intercommunicate with each other
through small vent openings 42 in the webs 36. The chambers 40 are adapted to
receive and contain a flowable substance 44 of relatively viscous physical
characteristics, such as silicone-based grease or lubricant. When the writing implement
is grasped, the writer’s fingertips apply light manual pressure to the outer sleeve
component 34 to cause the flowable material to express through the vent openings 42
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in a manner allowing the grip to assume a revised shape. Once the revised shape is
achieved, however, the vent openings 42 tend to restrict rapid return of the flowable
substance through the opening toward a balanced equilibrium condition, whereby the
grip tends to retain the revised shape for a substantial time period (column 5, lines 1-
43).
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In the background of the invention, McCall discusses the proposed use in the
prior art of air chambers between resilient sleeves for an increased overall cushioning
effect. McCall explains that, while such an approach may achieve some improvements
in user comfort, the resilient sleeve is unable to undergo significant shape change when
gripped, whereby the sleeve cannot accommodate a truly customized geometry tailored
to the individual user. According to McCall,
[t]he resilient nature of the sleeve results in reaction forces
applied to the user’s fingertips urging the sleeve to spring
substantially immediately back toward a relaxed or
nondeformed state, wherein these reaction forces can
themselves contribute to writer’s fatigue over a prolonged
period of time [column 1, lines 60-65].
We agree with the examiner that McCall would have provided ample suggestion
to one of ordinary skill in the art at the time of appellant’s invention to modify the tubular
cushions of Tindall by filling the tubes 5 thereof with a viscous medium as taught by
McCall to permit the cushion to deform to the anatomical contours of the individual user
in a customized manner while further enhancing user comfort and a corresponding
reduction in fatigue. For the reasons which follow, we do not find the appellant’s
arguments persuasive of the nonobviousness of the examiner’s proposed combination.
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With respect to the appellant’s argument as to the different applications of
McCall’s grip and Tindall’s tubular cushion, we note first that McCall’s teachings are
expressly not limited to writing implements. As discussed above, McCall points out that
the deformable grip may be applied to, inter alia, “other manual implements with
working tips, for example, paint brushes, jeweler’s tools, and other devices” (column 4,
lines 7-12). Shears having working cutting tips would certainly appear to fall within the
confines of these applications. Further, the appellant’s characterization on page 6 of
the brief that writing instruments are gripped with steady pressure during use while
shears are repeatedly opened and closed, alternately applying pressure to the finger
loops and then relaxing that pressure, at best, overstates the differences between the
manners of gripping these implements. In using a writing implement, a user directs the
movement of the implement in part by applying varying amounts of pressure from the
thumb, index and middle fingers contacting the implement. The gripping pressure is
thus not necessarily as steady as the appellant would have us believe. Likewise, the
opening and closing motion of using shears does not result in a full release of pressure
alternating with pressure application. In any event, while we appreciate that the
gripping action of a user of shears differs from that of a user of a writing implement,
much as the gripping action of a user of a writing implement differs from that of a user of
the other manual implements with working tips to which McCall contemplates
applicability of the disclosed deformable grip, McCall’s teaching of the advantages of a
customized contour and reduction in user fatigue provided by McCall’s deformable grip,
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1 “A reference may be said to teach away when a person of ordinary skill, upon [examining] the
reference, would be discouraged from following the path set out in the reference, or would be led in a
direction divergent from the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553, 31
USPQ2d 1130, 1131 (Fed. Cir. 1994). Simply that there are differences between two references is
insufficient to establish that such references "teach away" from any combination thereof. See In re
Beattie, 974 F.2d 1309, 1312-13, 24 USPQ2d 1040, 1042 (Fed. Cir. 1992).
filled with viscous putty or grease, over simple air chamber cushions, such as that of
Tindall, would certainly have commended the use of such a viscous medium in the
tubular cushion of Tindall to achieve said advantages.
Finally, the appellant’s argument on page 6 of the brief that Tindall’s teaching
that the tubular cushions may be filled with air at atmospheric or greater pressure as
desired to give the cushions any desired resistance teaches away1 from the proposed
modification to fill Tindall’s tubular cushions with viscous medium is not well taken. The
ability of a deformable grip filled with viscous medium to maintain its deformed shape for
a period of time as taught by McCall is in no way inconsistent with Tindall’s teaching of
a desired resistance.
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CONCLUSION
To summarize, the decision of the examiner to reject claims 14 and 17-24 under
35 U.S.C. § 103 is affirmed.
No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a).
AFFIRMED
JOHN P. MCQUADE )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
JDB/ki
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Application No. 09/923,113
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Peter Giancana
Estee Lauder Companies, Inc.
125 Pinelawn Road
Melville, NY 11747