Robert Rieck

Patent Trials and Appeals Board

Nov 25, 2019

13653243 - (D) (P.T.A.B. Nov. 25, 2019)

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.
13/653,243 10/16/2012 ROBERT RIECK SB 1937 3768
93862 7590 11/25/2019
I. Michael Bak-Boychuk
P.O.Box 32501
Long Beach, CA 90832
EXAMINER
MILANIAN, ARMAN
ART UNIT PAPER NUMBER
3723
MAIL DATE DELIVERY MODE
11/25/2019 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 ROBERT RIECK
__________________

Appeal 2018-009239
Application 13/653,243
Technology Center 3700
____________________

Before JAMES P. CALVE, WILLIAM A. CAPP, and LISA M. GUIJT,
Administrative Patent Judges.

CALVE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the decision
of the Examiner to reject claims 6 and 11, the only claims pending. Appeal
Br. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies Mr. Robert Rieck as the real party in interest. Appeal Br. 2.
Appeal 2018-009239
Application 13/653,243

2
CLAIMED SUBJECT MATTER
The present claims relate to pick axes with magnetic inserts placed in
protective recesses to minimize their demagnetization by repeated impacts.
Spec. ¶ 6. Pick axes are associated with heavy, high energy impact spectra
that demagnetize magnetic pieces fixed to the blade or pick. See id. ¶ 10.
Claims 6 and 11 are independent, with claim 6 reproduced below.
6. In a pick axe assembly characterized by a
ferromagnetic axe head mounted at one end of an elongate
handle and defined by a generally orthogonally deployed
arcuate pick and an opposing arcuate blade each extending in
cantilever from said one end of said handle to align the concave
portion thereof towards said handle, the improvement
comprising:
a generally circular recess extending through each said concave
portion to a predetermined depth into the interior of said
blade;
a magnet comprising a rare earth alloy of a generally circular
planform of a diameter smaller than the diameter of said
recess and a thickness smaller than said predetermined
depth received in said recess; and
polymeric mounting adhesive selected from a group including
polyurethane, flexible polyvinyl chloride and catalyzed
mix of polyester resins deposited in said recess to fill the
remaining volume between said magnet and said recess.

REJECTION
Claims 6 and 11 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Apex Picks, Talon Stubby, at http://www.apexpicks.com as evidenced
by Williams, Super Magnets, http://www.universetoday.com/79266/super-
magnets/, in view of Kurkjian (US 2,597,876, iss. May 27, 1952), further in
view of Collins (US 6,405,617 B1, iss. June 18, 2002), as evidenced by
MasterBond, http://www.masterbond.com/techtips/what-epoxy-adhesive.
Appeal 2018-009239
Application 13/653,243

3
ANALYSIS
Appellant argues claims 6 and 11 as a group. See Appeal Br. 4–8.
We select claim 6 as representative. 37 C.F.R. § 41.37(c)(1)(iv). Claim 11
stands or falls with claim 6.
Regarding claim 6, the Examiner finds that Apex Picks teaches a pick
axe called the Talon Stubby, which includes a circular recess formed on the
blade to contain a rare earth alloy magnet also referred to as a super magnet
as evidence by Williams’ article describing such material as super magnets.
Final Act. 2. The Examiner finds that Apex Picks does not teach the magnet
recess extending through concave portions of the blade to a predetermined
depth or a polymeric mounting adhesive. Id. at 3.
The Examiner finds that Kurkjian places a permanent magnet 17 in a
circular recess of a hammer body to a predetermined depth, and Collins uses
adhesive material in a similar cavity 22 of a hammer head to retain magnetic
material 16 in the cavity as claimed. Id. The Examiner determines it would
have been obvious to a skilled artisan to improve Apex Picks Talon Stubby
similarly with these teachings of Kurkjian and Collins. Id.
Appellant argues that Kurkjian and Collins are non-analogous art and
cannot be relied on in an obviousness rejection. Appeal Br. 4–5. Appellant
asserts that the references are wholly unrelated to the problem addressed by
Appellant of sheltering expensive, scarce, brittle, and easily destroyed rare
earth magnets. Id. at 5. Appellant argues that Kurkjian places the end of a
nail against the magnet so any impact from the nail setting strike dissipates
directly against the magnet. Id. at 6. Appellant argues that Collins inserts a
magnet into the swung part of the hammer that sees the most impact, which
is a less than optimal location if demagnetization is the concern. Id.
Appeal 2018-009239
Application 13/653,243

4
“Generally, a skilled artisan would only have been motivated to
combine analogous art.” In re Ethicon, 844 F.3d 1344, 1349 (Fed. Cir.
2017); see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417, 420 (2007)
(“When a work is available in one field of endeavor, design incentives and
other market forces can prompt variations of it, either in the same field or a
different one.”; “Under the correct analysis, any need or problem known in
the field of endeavor at the time of invention and addressed by the patent can
provide a reason for combining the elements in the manner claimed.”).
“A reference qualifies as prior art for a determination under § 103
when it is analogous to the claimed invention.” Innovention Toys, LLC v.
MGA Entm’t., Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011); see also In re
Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (“A reference qualifies as prior
art for an obviousness determination under § 103 only when it is analogous
to the claimed invention.”) (citing Innovention Toys, 637 F.3d at 1321; In re
Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004); In re Clay, 966 F.2d 656, 658
(Fed. Cir. 1992)). Two separate tests define the scope of analogous prior art.
(1) whether the art is from the same field of endeavor,
regardless of the problem addressed and, (2) if the reference is
not within the field of the inventor’s endeavor, whether the
reference still is reasonably pertinent to the particular problem
with which the inventor is involved.

Klein, 647 F.3d at 1348 (quoting Bigio, 381 F.3d at 1325).
The PTO determines the appropriate field of endeavor by reference to
explanations in the patent application to include the embodiments, function,
and structure of the claimed invention. Bigio, 381 F.3d at 1325. References
with the same structure and function as the claimed invention as perceived
by a skilled artisan are within the same field of endeavor. See id. at 1326.
Appeal 2018-009239
Application 13/653,243

5
“A reference is reasonably pertinent if . . . it is one which, because of
the matter with which it deals, logically would have commended itself to an
inventor’s attention in considering his problem.” Clay, 966 F.2d at 659. In
addition, “[i]f a reference disclosure has the same purpose as the claimed
invention, the reference relates to the same problem, and that fact supports
use of that reference in an obviousness rejection.” Id. “The identification of
analogous prior art is a factual question.” Bigio, 381 F.3d at 1324.
Are Kurkjian & Collins from the Same Field of Endeavor as the Invention?
The Specification describes the field of endeavor as “prospecting
devices,” and more particularly “pick axes” with magnets inserted into a tool
head recess to minimize demagnetization by repeated impacts. Spec. ¶ 6.
The magnets attract and remove iron deposits from the soil so more valuable
deposits are detectable. Id. ¶¶ 8, 21. A pick PI and adze AD are mounted on
opposite sides of handle HA. Id. ¶¶ 20, 22. These impact tools are shaped
to absorb repeated impacts to the ground with the impact energy depending
on the compaction and hardness of the ground. Id. ¶ 20. However, the high
energy impacts can demagnetize magnets that are affixed to these tools. Id.
¶ 10. We find that the field of endeavor of the claimed pick axe is impacting
tools with magnetic inserts in the impact tool head. See id. ¶ 6.
The Examiner finds that Kurkjian and Collins are from the same field
of endeavor as the claimed pick axe. In particular, the Examiner finds that
both references are from the field of hand tools that use a striking implement
to exert force on a workpiece, and the use of a blade or a flat head does not
change their categorization. Final Act. 4. The Examiner also finds that both
references are from the same field of endeavor of striking impact tools that
mount magnets on a striking portion of the impact tool. Ans. 5.
Appeal 2018-009239
Application 13/653,243

6
Kurkjian’s hammer drives nails. Kurkjian, 1:1–3. Hammer head 10
and arcuate claw attach to handle 11. Id. at 1:35–40. Hammer head 10 has a
recess (socket 18) to receive magnet 17. Id. at 1:40–2:12. Magnet 17 retains
a nail in hammer head channel 13 (id. at 2:1–12) just as magnets (slugs SL)
in the claimed pick axe retain metals to the tool head (Spec. ¶ 21). We find
that the hammer has the structure and function of the claimed pick axe, i.e., a
magnetized impact tool head, and therefore is in the same field of endeavor.
Collins’s hammer has impact face 18 for striking objects and claw 20
on opposite sides of handle 14. Collins, 1:1–65. Rare earth magnet 16 is
mounted in cavity 22 in hammer head 12 via adhesive. Id. at 2:47–3:45,
4:13–20. Hammer 10 functions as an impact tool with a material retrieval
feature that attracts objects to hammer head 12 via magnet 16. Id. 4:21–37.
We find the hammer has the structure and function of the claimed pick axe,
i.e., a magnetized impact tool head, and thus is in the same field of endeavor.
Appellant’s arguments that Kurkjian and Collins are wholly unrelated
to the problem addressed by Appellant (Appeal Br. 4–7; Reply Br. 3–8) do
not apprise us of error in the Examiner’s findings, as set forth above, that
Kurkjian and Collins are analogous art because they are in the same field of
endeavor as the claimed pick axe assembly. See 37 C.F.R. § 41.37(c)(1)(iv)
(the Appeal Brief “shall explain why the examiner erred as to each ground of
rejection contested by appellant.”); see also In re Jung, 637 F.3d 1356, 1365
(Fed. Cir. 2011) (noting the Board’s long-standing practice under its rules to
require an applicant to identify the alleged error in an examiner’s rejections
and holding “even assuming that the examiner had failed to make a prima
facie case, the Board would not have erred in framing the issue as one of
‘reversible error.”).
Appeal 2018-009239
Application 13/653,243

7
Appellant recognizes that analogous art can be either in the field of an
applicant’s endeavor or reasonably pertinent to the problem that an applicant
was addressing. Appeal Br. 6–7; Reply Br. 6. However, Appellant does not
address the Examiner’s findings that Kurkjian and Collins are analogous art
because they are in the same field of endeavor as the claimed pick axe. See
Reply Br. 6 (asserting that “[i]n the current instance both the problem and
the field of endeavor coincide in a very limited way”). Thus, Kurkjian and
Collins are properly relied on as analogous art under the field of endeavor
test, and we sustain the rejection of claims 6 and 11 on this basis.
Are Kurkjian & Collins Reasonably Pertinent to Appellant’s Problem?
Appellant also argues that the problem addressed was finding a way to
shelter and preserve expensive, scarce, brittle, and easily destroyed rare earth
magnets. Appeal Br. 5; Reply Br. 6. Appellant argues that Kurkjian places
the end of a nail against the magnet so that the ringing that follows the nail
setting strike is directly dissipated into the magnet itself, evidencing that the
reference cannot be concerned with magnet preservation. Appeal Br. 6.
The Examiner has the better position. Kurkjian places the nail in a
channel 13 with the nail head against rear wall 15 of the hammer head 12 as
illustrated in Figures 1, 2, and 4. Kurkjian, 1:35–2:3. A nail is driven into a
wall or other structure by applying pressure to the nail head via rear wall 15
of hammer head rather than the magnet as Appellant argues. Id. at 1:35–2:1.
We find no teaching in Kurkjian to apply impact energy to a nail via magnet
17. To the contrary, Kurkjian places magnet 17 transversely to nail shank 12
to hold the nail in channel 13 while impact force is applied to the nail head
via rear wall 15. Id. at 1:35–2:21. This design therefore shields magnet 17
from direct impact energy. Socket 18 also shields magnetism. Id. at 2:4–17.
Appeal 2018-009239
Application 13/653,243

8
These teachings are reasonably pertinent to the problem confronted by
Appellant of securing a magnet in a striking head of an impact hand tool in a
way that attracts objects to the tool head while protecting the magnet from
impact energy of the tool against a work piece. In response to Appellant’s
arguments that Kurkjian does not protect the magnet, the Examiner cites
Johnson (US 5,988,020) as evidence that Kurkjian’s configuration would be
understood to serve the same purpose as the claimed invention of extending
the useful life of the magnet and preventing it from losing its magnetic flux
prematurely. See Ans. 4; Johnson, 3:40–45, Figs. 1, 2; Appeal Br. 6.
Moreover, Collins couples a rare earth magnet 16 in a hammer head
cavity 22 at a recessed distance using adhesive material. Collins, 3:15–4:20.
The Specification admits it was known to weld a set of collars to the
axe blade to contain circular magnetic slugs. Spec. ¶¶ 10, 21 (Apex Picks,
Extreme). The prior art Apex Picks Talon Stubby, cited by the Examiner
(Final Act. 2), teaches this arrangement with the collars placed on concave
portions of the blade as claimed. Therefore, the prior art teaches that it is
known to attach magnets to concave surfaces of pick axe heads and blades.
The problem to be solved is finding a better way to do so, i.e., that better
protects the magnets. See Spec. ¶¶ 11, 14, 22, 24; Appeal Br. 5–6.
The Examiner determines that the teachings of Kurkjian and Collins
are reasonably pertinent to a skilled artisan confronting this problem. Both
references teach to embed a magnet/rare earth magnet in a recess/cavity in a
hammer head and, in the case of Collins, to use adhesive to do so. The prior
art configurations serve the same purpose as the claimed configuration.
They enable the magnets to retrieve and retain ferromagnetic items to the
impact tool head while protecting the magnetism/integrity of the magnet.
Appeal 2018-009239
Application 13/653,243

9
Johnson is evidence that these features provide these benefits and
serve the same purpose that Appellant sought to achieve with the claimed
configuration. The Examiner can cite references as background information
to demonstrate the knowledge and perspective of a skilled artisan regarding
prior art teachings of Kurkjian or Collins, and we must consider this critical
evidence. See Randall Mfg. v. Rea, 733 F.3d 1355, 1362 (Fed. Cir. 2013).
Even if the Examiner’s citation to Johnson creates a new ground of
rejection in the Answer, as Appellant alleges (Reply Br. 2–5), Appellant’s
recourse was to petition the Director under 37 C.F.R. § 1.181 within two
months of entry of the Answer and before the filing a Reply Brief. See
37 C.F.R. § 41.40(a); MPEP § 1207.03. Appellant’s decision to file a Reply
Brief instead of a petition to the Director waives any argument that the
rejection must be designated as a new ground. See 37 C.F.R. § 41.40(a).
Accordingly, Kurkjian and Collins are properly relied on as analogous
art because they are reasonably pertinent to the particular problem with
which Appellant was involved, and we sustain the rejection of claims 6 and
11 on this additional basis as well.
CONCLUSION
Claims
Rejected
35 U.S.C. § Reference/Basis Affirmed Reversed
6, 11 103(a) Apex Picks,
Super Magnets,
Kurkjian,
Collins,
MasterBond
6, 11
Overall
Outcome
6, 11
Appeal 2018-009239
Application 13/653,243

10
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED