Arthur Lansky Levine & Associates, Inc. d/b/a Lansky Sharpeners

Patent Trials and Appeals Board

Mar 2, 2020

14678197 - (D) (P.T.A.B. Mar. 2, 2020)

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.
14/678,197 04/03/2015 Amy B. Hangen LKSP114US 9994
24041 7590 03/02/2020
SIMPSON & SIMPSON, PLLC
5555 MAIN STREET
WILLIAMSVILLE, NY 14221-5406
EXAMINER
MCDONALD, SHANTESE L
ART UNIT PAPER NUMBER
3723
NOTIFICATION DATE DELIVERY MODE
03/02/2020 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patentEFS@idealawyers.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AMY B. HANGEN and MERRY S. RIEHM-CONSTANTINO
Appeal 2019-005078
Application 14/678,197
Technology Center 3700
Before JILL D. HILL, LEE L. STEPINA, and ARTHUR M. PESLAK,
Administrative Patent Judges.
HILL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–4, 6–9, 11–16, and 18–24. See Final
Act. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Arthur Lansky
Levine & Associates, Inc. d/b/a Lansky Sharpeners. Br. 3.
Appeal 2019-005078
Application 14/678,197

2
BACKGROUND
Appellant’s invention relates to an abrasive sharpener. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. An abrasive sharpener comprising:
a housing comprising a slotted bottom surface;
an abrasive rod pivotally mounted within the slotted
bottom surface for movement between a stored position and an
extended position; and,
a first magnet positioned within the slotted bottom surface
and arranged to directly attract and releasably secure the abrasive
rod in the stored position.
REJECTION
Claims 1–4, 6–9, 11–16, and 18–24 stand rejected under 35 U.S.C.
§ 103 as unpatentable over Smith (US 8,221,199 B2, iss. July 17, 2012) and
Carlson (2007/0193036 A1, pub. Aug. 23, 2007). Final Act. 2.
ANALYSIS
Appellant argues claims 1–4, 6–9, 11–16, and 18–24 as a group. Br.
23–30. We select claim 1 as representative. Claims 2–4, 6–9, 11–16, and
18–24 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner finds that Smith discloses all of the limitations of claim
1, including an abrasive rod secured in a stored position, except that Smith
does not disclose a magnet in the bottom surface that directly attracts and
releasably secures the abrasive rod in the stored position. Final Act. 3. The
Examiner finds that Carlson discloses a magnet 60 that attracts and holds a
tool in a stored position. Id. The Examiner concludes that it would have
been obvious to replace each of Smith’s rod holder 22a, 22b with a magnet
Appeal 2019-005078
Application 14/678,197

3
60 as taught by Carlson, “to secure the tool in a stored position . . . as an
alternate tool storing means.” Id.
Independent claim 11 includes substantially similar limitations and the
Examiner makes the same findings and uses the same reasoning in rejecting
claim 11. See Final Act. 2–3.
Hindsight
Appellant argues that the Examiner’s conclusion of obviousness is
based on impermissible hindsight, because the Examiner does not explain
why a skilled artisan would make the combination absent Appellant’s
disclosure. Br. 25.
Appellant’s contention that the Examiner relied on impermissible
hindsight is not persuasive. Smith uses a pair of retention protrusions 22a,
22b that interact with projection 24b to secure its rod in a storage position.
Smith, 3:10–18, Fig. 6; see also Final Act. 3–4. The Examiner finds that
Carlson’s magnet 60, which “attract[s] and hold[s] a knife tool, 20, in a
stored position,” would have been a suitable alternative to Smith’s
protrusions “to secure the tool in a stored position.” Final Act. 3 (citing
Carlson ¶ 28). Thus, the Examiner has articulated a reason why a skilled
artisan would modify Smith based on Carlson, i.e., as a suitable known
alternative for securing a tool in the stored position, which we find has a
rational basis. Appellant does not contend Carlson’s magnet 60 is not a
suitable alternative to each of Smith’s protrusions for securing a tool in a
stored position, or that replacing each of Smith’s retention device 22a, 22b
with a magnet 60 would achieve other than predictable results. “[W]hen a
patent claims a structure already known in the prior art that is altered by the
mere substitution of one element for another known in the field, the
Appeal 2019-005078
Application 14/678,197

4
combination must do more than yield a predictable result. KSR Int'l Co. v.
Teleflex Inc., 550 U.S. 398, 416 (2007). Further, Appellant has not
identified any portion of the Examiner's reasoning gleaned solely from
Appellant’s disclosure that was not otherwise within the level of ordinary
skill at the time of the invention. See In re McLaughlin, 443 F.2d 1392,
1395 (CCPA 1971). We find no error in the Examiner’s conclusion that
such replacement/substitution would have been obvious.
Directly Attract
Claim 1 recites a first magnet positioned within a slotted bottom
surface and arranged to directly attract and releasably secure an abrasive rod
in a stored position. Independent claim 11 includes a substantially similar
limitation. Claim 6, which depends from claim 1, and claim 18, which
depends from claim 11, each recite a second magnet positioned within the
slotted bottom surface and arranged to directly attract and releasably secure
an abrasive rod in an extended position. Br. 32, 34 (Claims App.).
Appellant argues that Carlson’s magnet 50 attracts a tang of its blade,
which connects the blade to the handle, whereas the claimed magnet
“directly attracts an abrasive rod.” Br. 25–26.
The Examiner responds that replacing each of Smith’s protrusions 22a
and 22b with a magnet 60 of Carlson, and placing the magnet 60 in the same
location as protrusions 22a, 22b, would cause Smith’s rod to “directly
contact the (first) magnet at 22a” in the closed position, and “directly contact
the (second) magnet at 22b, when extended in the open position.” Ans. 7–8.
Appellant’s arguments that Carlson’s magnets would not “directly
attract and releasably secure an abrasive rod,” are not persuasive. Smith
discloses that “rod 24 includes circular pivot member 24a and integral
Appeal 2019-005078
Application 14/678,197

5
hollow plastic projection 24b.” Smith, 2:52–54. Smith also discloses that
“protrusions 22a, 22b are spaced apart by a distance smaller than the
diameter of projection 24b so that the projection snaps through the
respective pair of protrusions 22a and 22b into the first storage position or
the second sharpening position.” Id. at 3:11–15. We agree with the
Examiner that by replacing protrusions 22a with a magnet, and placing the
magnet in the same location as the protrusions 22a, rod 24 would remain in
the stored position by magnetic attraction instead of relying on a snap-fit.
Similarly, replacing protrusions 22b with a magnet, and placing the magnet
in the same location as protrusion 22b, rod 24 would remain in the
sharpening (extended) position by magnetic attraction instead of relying on a
snap-fit. The Examiner does not propose a bodily incorporation of Carlson’s
magnets and tang, but rather proposes employing only magnets as taught by
Carlson in the place of Smith’s protrusions. “The test for obviousness is not
whether the features of a secondary reference may be bodily incorporated
into the structure of the primary reference . . . . Rather, “a determination of
obviousness based on teachings from multiple references does not require an
actual, physical substitution of elements.” In re Mouttet, 686 F.3d 1322,
1332 (Fed. Cir. 2012); see also In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir.
1983) (“[I]t is not necessary that the inventions of the references be
physically combinable to render obvious the invention under review.”); and
In re Nievelt, 482 F.2d 965 (CCPA 1973) (“Combining the teachings of
references does not involve an ability to combine their specific structures.”).
Contrary Teaching
Appellant argues that the Examiner’s proposed modification of Smith
is contrary to the teachings of Smith, which require low friction plastic
Appeal 2019-005078
Application 14/678,197

6
projection 24b to retain the rod in an open or closed position. Br. 26.
According to Appellant, plastic projection 24b is not an abrasive rod nor
would low friction plastic projection 24b interact with a magnet because
“magnets would not have any effect on a low friction plastic projection.” Id.
Appellant contends that, even by replacing the low friction plastic projection
with a ferromagnetic material, the magnets would not directly attract the
abrasive rod but attract a projection attached to the abrasive rod.
We are not persuaded by Appellant’s arguments because they are not
commensurate with the Examiner’s rejection. One of ordinary skill in the art
would understand that projection 24b is only required to interact with
projections 22a. Replacing projections 22a with a magnet, as the Examiner
proposes, obviates the need for projection 24b. A skilled artisan would
understand that projection 24b would not be needed or employed if magnets
replaced projections 22a, 22b. Smith’s metal rod 24 (see Smith 2:56) made
of a ferromagnetic material (see Final Act. 4), and without projection 24b,
would then directly contact and be directly attracted to the magnet. See
Final Act. 5.
Although Appellant presents arguments for claims 21–24 under
separate heading (see Br. 27–29), these arguments essentially repeat
Appellant’s arguments that Smith and Carlson do not teach an abrasive rod
that directly contacts a magnet. Specifically, Appellant’s argument that
Smith requires plastic projection 24b to interact with protrusions 22a and
22b (see Br. 28) is not persuasive for the reasons explained above. That
claims 21–24 require contact between the abrasive coating and the magnet is
not persuasive, because Smith discloses that “an abrasive grit, such as
diamonds or other suitable abrasives, are provided on substantially all of the
Appeal 2019-005078
Application 14/678,197

7
surface 24ἀ on the cylindrical tapered external surface and in the slot of the
tapered rod 24.” Smith 2:57–60; see also Final Act. 2.
We have considered each of Appellant’s arguments, but are not
apprised of Examiner error. Accordingly, we sustain the Examiner's
rejection of claims 1–4, 6–9, 11–16, and 18–24 under 35 U.S.C. § 103 as
unpatentable over Smith and Carlson.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4, 6–9, 11–
16, 18–24
103 Smith and Carlson 1–4, 6–9, 11–
16, 18–24

Overall
Outcome:
1–4, 6–9, 11–
16, 18–24

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