Ex Parte Hill et al

Patent Trial and Appeal Board

Sep 25, 2017

13703950 (P.T.A.B. Sep. 25, 2017)

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.
13/703,950 12/13/2012 David A. Hill 56560US02 (10-276-2) 4614
50791 7590 09/26/2017
BACHMAN & LAPOINTE, P.C. (UTC)
900 CHAPEL STREET
SUITE 1201
NEW HAVEN, CT 06510-2802
EXAMINER
CHEN, KUANGYUE
ART UNIT PAPER NUMBER
3742
MAIL DATE DELIVERY MODE
09/26/2017 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 DAVID A. HILL and JEFFREY L. SANDS
Appeal 2015-006002
Application 13/703,950
Technology Center 3700
Before JOHN C. KERINS, WILLIAM A. CAPP, and
BRENT M. DOUGAL, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1—9 and 11—20. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM and enter a NEW GROUND OF REJECTION pursuant
to our discretionary authority under 37 C.F.R. § 41.50(b).
Appeal 2015-006002
Application 13/703,950
THE INVENTION
Appellants’ invention relates to tool holders. Spec. 12. Claim 11,
reproduced below, is illustrative of the subject matter on appeal.
11. A grill tool holder (80;300) for mounting to a wall
structure, the grill tool holder comprising:
at least one tool-holding compartment (82);
at least one drainage port positioned (134) to drain the at
least one tool-holding compartment;
a flow guide portion (110) depending below the at least one
drainage port; and
a channel (166) for receiving an upper portion of the wall
structure, said channel (166) for receiving said upper portion of
the wall structure being downwardly open and having a wall
with a bend separating an intermediate portion from a lower
edge portion to form a guide allowing ease of installation of the
tool holder to the upper portion of the wall structure.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Studer US 5,038,955
Wang US 6,910,241 B2
Babington US 2006/0016348 A1
Aug. 13, 1991
June 28, 2005
Jan. 26, 2006
The following rejections are before us for review:
1. Claims 11, 13—16, and 18 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Studer.
2. Claims 1, 3—9, 17, 19, and 20 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Babington and Studer.
3. Claim 2 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Babington, Studer, and Wang.
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OPINION
Anticipation of Claims 11, 13—16, and 18
by Studer
Claim 11
The Examiner finds that Studer discloses all of the elements of
claim 11. Final Action 2—3. In particular, the Examiner finds that Studer
discloses a flow guide portion disposed below the drainage ports. Id. at 3.
The Examiner relies on Ex parte Masham, 2 USPQ2d 1647 (BPAI 1987) in
treating the preamble recitation of a “grill holder” as a non-limiting
statement of intended use. Id.
Appellants traverse the Examiner’s rejection by arguing that Studer
fails to disclose a guide as claimed. Appeal Br. 9. Appellants also contend
that the Examiner fails to identify an intermediate portion and a lower edge
portion. Id. Appellants also contend that the Examiner fails to substantiate
reliance on the Masham case. Id.
In response, the Examiner directs our attention to Figures 2, 3, and 5
of Studer as disclosing, at elements 70 and 72, an intermediate portion and a
lower portion as claimed. Studer, Fig. 2, col. 5,11. 15—24. In reply,
Appellants fault the Examiner for not explaining, in further detail, how the
identified structures in Figures 3 and 5 satisfy the intermediate and lower
portion limitations. Reply Br. 2. (“The examiner has changed his purported
interpretation without, however, adding further clarity”).
Studer discloses a paintbrush caddy. Studer, Abstract. Having
reviewed Figure 2, we agree with the Examiner that element 52 of Studer
corresponds to Appellants’ claimed “flow guide.” Final Action 3; see also
Studer, Fig. 2 (element 52).
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With respect to the intermediate and lower edge portion limitations,
Figure 3 of Studer discloses clamping means 70 that interact with the side
wall of a paint tray to hold the paintbrush caddy in position. Id.; see also
Studer, Figs. 3, 5, col. 5,11. 8—10. Studer explains that a preferred
embodiment features a spring end 72 attached to a base plate 74. Id. at
col. 5,11. 14—18. In the drawings, spring end 72 has a generally curvilinear
side profile. Id. at Fig. 3. The extreme lower end (i.e., “edge”) of spring
end 72 opposite base plate 74 terminates with a rounded bead (the “Bead”1).
Id. The claim limitation at issue recites:
said channel. . . having a wall with a bend separating an
intermediate portion from a lower edge portion to form a guide
allowing ease of installation of the tool holder to the upper
portion of the wall structure.
Claims App. claim 11. We have reviewed the depictions of clamping
means 70 as it appears in Figures 3 and 5 of Studer. The inner side of spring
end 70 that faces wall 16 of tray 12 transitions from a generally concave
shape to a generally convex shape proximate the Bead. Studer, Fig. 3. This
transition may properly be considered as corresponding to a “bend”
separating an intermediate portion and a lower edge portion. The
Examiner’s findings of fact that Studer’s clamping means corresponds to the
above quoted claim limitation is supported by a preponderance of the
evidence.
We also agree with the Examiner that the recitation of a “grill” tool
holder is not limiting. The word “grill” appears only in the preamble.
Claims App. Generally, a preamble is not limiting where an applicant
1 The Bead is not separately numbered but is disposed proximate to
directional arrow Ai.
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defines a structurally complete invention in the claim body and uses the
preamble only to state a purpose or intended use for the invention. See Rowe
v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997). Appellants present no
persuasive argument as to why we should not apply the general rule here.
Appellants’ argument that the Examiner improperly relied on Mashan for
the proposition that a statement of intended use is not limiting runs contrary
to a well-established line of case authorities that is routinely relied on by the
Board and the Federal Circuit. Mashan states a general rule with broad
application that extends beyond the particular technology described therein.
See Mashan, 2 USPQ2d 1647, 1987 WL 123826, cases cited at *1—2; See
also In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (“It is well
settled that the recitation of a new intended use for an old product does not a
make a claim to that old product patentable”).
We sustain the Examiner’s rejection of claim 11 as anticipated by
Studer.
Claim 13
Claim 13 depends from claim 11 and adds limitations directed to
sheetmetal as the material comprising the invention. Claims App. The
Examiner finds that these limitations are met by Studer. Final Action 4.
Appellants argue that the specific example taught by Studer is molded
plastic. Appeal Br. 10. Appellants further argue that, even if Studer is
“fabricated from metal,” there is no disclosure of a sheetmetal assembly
comprised of a plurality of pieces of sheetmetal. Id.
The Examiner directs our attention to Figures 2—6 and column. 7,
lines 39-41 of Studer as supporting the finding as to claim 13. Ans. 3^4.
Studer discloses the following:
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It will, of course, be recognized that a paintbrush caddy
embodying the present invention may be fabricated from
various type materials including wood, metal, and/or plastic.
Preferably, the brush caddy 50 or 150 will be made from a
suitable plastic material which exhibits the desired durability
and is lightweight. Should the caddy 50 or 150 be made from a
plastic material, it is anticipated that it may be made as a single
molded unit, although the clamping means may be separately
fabricated and then fastened to the caddy. Alternatively, the
plastic brush caddy may be made of multiple, individually
molded pieces which are conjoined to form the unitary single
structure. The manner and/or method of its manufacture is not,
and should not, be considered as a limitation on the invention.
Studer, col. 7,11. 38—52. We have reviewed Figures 2—6 of Studer together
with the above quoted passage. Given the size, shape, and overall
configuration of Studer’s paintbrush caddy, we agree with the Examiner that
Studer fairly discloses an embodiment comprised of sheet metal.
“Description for the purposes of anticipation can be by drawings alone as
well as by words.” In reMraz, 455 F.2d 1069, 1072 (CCPA 1972); see also
In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009) (a reference need not
satisfy an ipsissimis verbis test).
Alternatively, it is well settled that the patentability of a product does
not depend on its method of production. If the product in a product-by­
process claim is the same as or obvious from a product of the prior art, the
claim is unpatentable even though the prior product was made by a different
process. In re Thorpe, 111 F.2d 695, 697 (Fed. Cir. 1985). Appellants
argue that there are variety of processes used for fashioning metal including,
casting, machining, and extrusion. Appeal Br. 3. However Appellants
present neither evidence nor persuasive technical reasoning that a tool holder
made of “sheetmetal” differs in structure, function, or performance from a
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tool made of metal that has been cast, machined, or extruded. “Sheet metal”
refers to thin sections of metal formed by rolling hot metal and usually less
than 0.25 inches thick.2 Thus, in the metallurgical art, “sheet metal” is
distinguished from other forms of metal by the process used to shape it. In
this regard, we view “sheetmetal” (as opposed to simply “metal”) as a
product-by-process limitation that does not patentably distinguish
Appellants’ invention from Studer. Under this alternative analysis, the
adjective “sheet” modifying the noun “metal” is a process limitation that is
not entitled to patentable weight.
We sustain the Examiner’s rejection of claim 13 as anticipated by
Studer.
Claim 14
Claim 14 depends from claim 13 and adds limitations directed to
specific uses of various sheetmetal pieces. Claims App. The Examiner
finds these limitations met by Studer. Final Action 4.
Appellants argue that Studer fails to disclose “separate pieces” with
boundaries that correspond to the recited claim limitations. Appeal Br. 10.
In response, the Examiner directs our attention to Figure 2 and various
passages of Studer. Ans. 4 (citing Studer, col. 5,1. 14; col. 3,1. 54, and
col. 4,1. 5).
We have reviewed Figure 2 of Studer and determine that the
Examiner’s findings of fact are supported by a preponderance of the
evidence. With respect to Appellants’ “separate piece” argument, claim 14
2 McGraw-Hill Dictionary of Scientific and Technical Terms, 6th
ed., McGraw-Hill Education, New York, 2003 reproduced at
http://www.accessscience.com/search?q=sheet+metal&rows=10&mode=AN
D&newSearch=Y (last accessed September 21, 2017).
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merely requires a plurality of sheetmetal pieces; however, there is no
limitation directed to a specific manner in which the various pieces are
assembled or joined together. We further note that Studer discloses that its
device may be made from multiple, individual pieces that are conjoined to
form a single structure. Studer, col. 7,11. 48—50. A person of ordinary skill
in the art would infer from the teachings of column 7 and the depictions of
Figure 2—7 that the metal embodiment is similarly constructed. Studer,
Figs. 2—7 (Figure 7 shows element 170 as separate from other components).
We sustain the Examiner’s rejection of claim 14 as anticipated by
Studer.
Claim 15
Claim 15 depends from claim 14 and adds limitations directed to
specific configurations and spatial relationships of and between various
sheetmetal pieces. Claims App. The Examiner finds these limitations met
by Studer. Final Action 4.
Appellants argue that “there is clearly no support” for the Examiner’s
findings. Appeal Br. 10. In response, the Examiner finds that Studer
element 64 corresponds to Appellants’ claimed second sheetmetal piece with
a plurality of legs. Ans. 4 (citing Studer, Fig. 2, col. 4,11. 11—12). The
Examiner finds that Studer element 74 (base plate) corresponds to
Appellants’ claimed third sheetmetal piece. Ans. 4—5. In reply, Appellants
argue that Studer element 64 is not a “separate piece” from element 52.
Reply Br. 4.
With respect to Appellants’ “separate piece” argument, as with
claim 14, claim 15 merely requires a plurality of sheetmetal pieces; however,
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there is no limitation directed to a specific manner in which the various
pieces are assembled or joined together.
We sustain the Examiner’s rejection of claim 15 as anticipated by
Studer.
Claim 16
Claim 16 depends from claim 15 and adds the limitation: “the third
sheetmetal piece extends downward and is welded to the first sheetmetal
piece to cooperate therewith to define said channel.” Claims App. The
Examiner finds that Studer’s third sheetmetal piece extends downward to
connect to the first sheetmetal piece to define the claimed channel. Final
Action 4. The Examiner views “welded connection” as a process limitation
that is not entitled to patentable weight. Id.
Appellants offer a conclusory argument that the Examiner’s findings
are “clearly unsupported.” Appeal Br. 11. Appellants argue that “welding
does define structure of a joint.” Id. (citing In re Garnero, 412 F.2d 276,
279 (CCPA 1979)). Garnero, however, is not binding under the facts
presented here. It merely indicates that welding “may be” capable of
construction as a structural limitation. The cited passage from Garnero
arose in the context of chemical technology. Id., see n. 7. Here, Appellants
provide no persuasive argument as to why welding should be construed as a
structural limitation under the facts of the present case. Under the
circumstances, we will follow Thorpe, supra, and treat “welding” as a non­
limiting process limitation that does not distinguish the invention
structurally from Studer.
We sustain the Examiner’s rejection of claim 16 as anticipated by
Studer.
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Claim 18
Claim 18 depends from claim 11 and adds the limitation: “the
channel extends parallel to a length of the at least one tool-holding
compartment.” Claims App. The Examiner identifies a space between
element 52 and element 72 in Studer as meeting this limitation. Final
Action 5.
Appellants argue that the Examiner’s findings do not cure
“deficiencies in the underlying rejection.” Appeal Br. 11. In response, the
Examiner essentially repeats the findings from the Final Office Action.
Ans. 5—6. In reply, Appellants argue that the answer does not establish how
any prior comments regarding claim 18 would “cure the deficiencies in the
underlying rejections.” Reply Br. 5.
We interpret Appellants’ argument regarding “deficiencies in the
underlying rejection” as relying on their arguments against the rejection of
claim 11, from which claim 18 depends. Those arguments do not apprise us
of error. We sustain the Examiner’s rejection of claim 18 as anticipated by
Studer.
NEW GROUND OF REJECTION
Unpatentability of Claims 11, 13—16, and 18
over Studer
Pursuant to our discretionary authority under 37 C.F.R. § 41.50(b), we
hereby enter the following NEW GROUND OF REJECTION. We deem the
applicable field of endeavor to be designing and fabricating cooking
appliances, including the design and fabrication of hand tools and
accessories related thereto. Spec. 12. The person of ordinary skill in the art
would be capable of, among other things, practicing the invention of Studer
using metal components, as expressly taught by Studer. Studer, col. 7,1. 41.
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A person of ordinary skill in the art would have found it obvious to use a
metal, rather than plastic, embodiment of Studer due to the heat generated by
a cooking appliance.
Claim 11
Studer discloses a tool holder, namely, a paintbrush caddy. Studer,
Abstract. We deem Studer to be analogous art to Appellants’ invention.
Many items in everyday use are known to “drip.” Such items include, but
are certainly not limited to, paintbrushes and cooking utensils in ordinary
use. Capturing such “drippings,” whether paint, food, or cooking grease,
and directing them to an appropriate receptacle is a common problem that
affects a broad array of product applications in everyday use. Under the
circumstances presented here, we find Studer to be reasonably related to the
problem confronting Appellants. See In re Bigio, 381 F.3d 1320, 1325 (Fed.
Cir. 2004). A reference is analogous even if not within the inventor’s field
of endeavor if it is reasonably pertinent to the particular problem with which
the inventor is involved. Id. “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.” In
re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). “If 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.
Studer captures, controls, and directs the flow of drippings from a
hand tool. We view capturing and controlling “drippings” as a relatively
simple, everyday-type mechanical concept. “We find it not unreasonable in
cases such as this, involving relatively simple everyday-type mechanical
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concepts, to permit inquiry into other areas where one of even limited
technical skill would be aware that similar problems axis.” In re Heldt, 433
F.2d 808, 812 (CCPA 1970).
Studer’s shelf-plate 54 and stop plate 60 define a tool-holding
compartment. Studer’s drain apertures 66 which extend through stop
plate 60 constitute at least one drainage port to drain the tool-holding
compartment. Studer’s apron 52 on the front of caddy 50 corresponds to the
flow guide portion (110) of claim 11. Studer discloses at least three
alternative means for mounting a tool holder to an upper portion of a wall
structure. See Studer, Fig. 3 (elements 70, 72, 74, 76); Fig. 6 (elements 90,
92, 94, 96); Fig. 7 (elements 170, 171,173, 175, 177, 179). Each of the
alternative means has a downwardly open channel for receiving an upper
portion of a wall structure. Id. The Figure 3 and Figure 6 embodiments are
rounded at the lower ends (i.e., edge) thereof, such rounding forming a bend
that separates an intermediate portion from a lower edge portion. Similarly,
gripper arm 179 of the right-most clamping means 170 of the Figure 7
embodiment has a curvilinear side profile with a bend. See Studer, Fig. 7.
In a manner substantially similar to how the lower portion of Studer’s
Figure 3 Bead extends away from the wall of the paint tray, it would have
been obvious to a person of ordinary skill in the art at the time of the
invention to bend the lower portion of Studer’s gripper arm 179 away from
the upper portion of the wall to which it attaches. A person of ordinary skill
in the art would have done this to make it easier to install the tool holder on
the upper wall portion.
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Claim 13
Studer discloses that an embodiment constructed of plastic material
may be made of multiple, individual pieces that are subsequently conjoined
to form a single structure. Studer, col. 7,11. 48—50. Studer further teaches
that the manner and/or method of manufacture does not limit the invention.
Id. at col. 7,11. 50—52. Studer further teaches that its tool holder can be
made of metal. Id. at col. 7,1. 41.
It would have been obvious to a person of ordinary skill in the art at
the time of the invention to make Studer’s tool holder out of sheetmetal.
Given the size and shape of the various components comprising Studer’s
tool holder, sheetmetal would have presented itself to a person of ordinary
skill in the art as a suitable material. See In re Leshin, 277 F.2d 197, 199
(CCPA 1960) (selection of material on the basis of suitability of intended
use is obvious). In anticipation of Appellants’ “separate pieces” argument,
we note that Studer teaches that embodiments can be formed from multiple,
separate pieces. See Studer, col. 7,11. 48—50. As with the disclosed plastic
embodiment of Studer, it would have been a matter of obvious design choice
to fabricate the tool holder from multiple, individual pieces that are
subsequently conjoined into a single structure. See In re Larson, 340 F.2d
965, 968 (CCPA 1965) (whether a device is formed as a single piece or
assembled using multiple pieces that are affixed together is generally
considered to be merely a matter of obvious engineering choice).
Studer element 54 is a first piece. Studer element 60 is second piece.
It would have been obvious to secure the second piece to the first piece
using well known metal-working and assembly techniques. Id.
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Claim 14
Studer element 54 corresponds to the first sheetmetal piece that forms
a tool holding compartment and flow guide portion. Studer element 60
corresponds to the second sheetmetal piece that forms a front wall of the
tool-holding compartment. Apertures 66 and/or 166 correspond to the
claimed drainage port formed between the first and second sheetmetal
pieces. In anticipation of Appellants’ “separate pieces” argument, we note
that Studer teaches that embodiments can be formed from multiple, separate
pieces. See Studer, col. 7,11. 48—50; see also Larson, 340 F.2d at 968 (one
piece or multi-piece construction is merely a matter of obvious engineering
choice).
Claim 15
Studer elements 60 and 66 comprise a plurality of legs that extend
along the surface of element 52.
Any of Studer’s various clamping means (Fig 3, element 70),
(Figure 6, element 92), (Figure 7, element 170) correspond to Appellants’
third piece. It would have been obvious to make the third piece out of
sheetmetal as sheetmetal is a well-known material that a person of ordinary
skill in the art would have recognized as suitable for use as the clamping
means. Leshin, 277 F.2d at 199. The size and shape of Studer’s
components, particularly element 170, would have readily lent themselves to
fabrication from sheetmetal.
Claim 16
It would have been obvious to attach any or all of Studer’s alternative
clamping means to Studer element 52/54 by welding. Welding is a well-
known metal-working technique for securing one metal piece to another. In
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the case of the Figure 7 embodiment, a person of ordinary skill in the art
would have been motivated to weld clamping means 170 to apron 152 as
such an attachment would have alleviated the burden of keeping track of a
plurality of loose parts.
Claim 18
The channel formed by any or all of Studer’s various clamping
means elements extends parallel to a length of the tool-holding
compartment. See Studer, Fig. 3, 6, 7.
Unpatentability of Claims 1, 3—9, 17, 19, and 20
over Babington and Studer
Claims 1, 3—9, and 17
Appellants argue claims 1, 3—9, and 17 as a group. Appeal Br. 11—13.
We select claim 1 as representative. See 37 C.F.R. § 41.37(c)(l)(iv).
Independent claim 1 differs in scope from independent claim 11 primarily in
that it contains limitations directed to a grill with a grilling surface and a
grease collection channel. Claims App.
The Examiner finds, and Appellants do not dispute, that Babington
discloses a grill with a grilling surface, and a grease collection channel with
a sidewall as claimed. Final Action 6. The Examiner finds that Studer
discloses the limitations in claim 1 directed to a tool holder in a manner
similar to the findings with respect to the Examiner’s anticipation findings
with respect to claim 11. Id. at 6—7.
The Examiner concludes that it would have been obvious to a person
of ordinary skill in the art at the time the invention was made to modify
Babington’s grill to include a tool holder as taught by Studer that would
have been mounted to the sidewall. Id. According to the Examiner, a
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person of ordinary skill in the art would have done this to conveniently
collect grease while grilling. Id. at 7.
Appellants argue that Studer’s paintbrush caddy is non-analogous art
to the claimed grill. Appeal Br. 12. We have previously resolved this issue
adversely to Appellants in the new ground of rejection discussed
hereinabove.
Appellants view the Examiner’s proposed combination as a hindsight
reconstruction of their invention. Id. However, we think the Examiner has
articulated a sufficient non-hindsight reason for making the proposed
combination, namely, to conveniently collect grease. Final Action 7. An
Appellant’s hindsight argument is of no moment where the Examiner
provides a sufficient, non-hindsight reason to combine the references. See In
re Cree, 818 F.3d 694, 702, n.3 (Fed. Cir. 2016).
We have considered Appellants’ remaining arguments and find them
to be without merit. In view of the foregoing discussion, we determine the
Examiner’s findings of fact are supported by a preponderance of the
evidence and that the Examiner’s legal conclusion of unpatentability is well-
founded. Accordingly, we sustain the Examiner’s unpatentability rejection
of claims 1, 3—9, 17, and 19 over Babington and Studer.
Claims 19 and 20
Appellants argue claims 19 and 20 together. Appeal Br. 15—16. We
select claim 19 as representative. Claim 19 depends from claim 11 and adds
the limitation: “in combination with a grill having a wall structure, an upper
portion of the wall structure being received in said channel.” Claims App.
Claim 19 is substantially similar in scope to claim 1. The Examiner relies on
Studer for essentially the same subject matter as in the anticipation rejection
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of claim 11. Final Action 11. The Examiner relies on Babington as teaching
a grill with a wall structure and a channel. The Examiner makes similar
findings and reasons to combine as in the rejection of claim 1. Id. at 12.
Appellants characterize the rejection as “capricious” that uses an
“improper solution-in-search-of-a-problem approach.” Reply Br. 3. “One
starting with a paintbrush holder is not going to seek to use it on a grill.” Id.
This argument is not persuasive. We have previously explained why we
agree with the Examiner that claim 1 is unpatentable over the combination
of Babington and Studer. The subject matter of claim 19 is substantially
coextensive with that of claim 1. Claims App. It matters little to us whether
the Examiner states the rejection of claim 19 as Babington in view of Studer
or Studer in view of Babington.
In a case of this type where a rejection is predicated on two
references each containing pertinent disclosure which has been
pointed out to the applicant, we deem it to be of no
significance, but merely a matter of exposition, that the
rejection is stated to be on A in view of B instead of on B in
view of A, or to term one reference primary and the other
secondary. It would perhaps have saved much argument of the
kind we have before us if the Patent Office had stayed with its
rejection of the claims as unpatentable over A and B
‘considered together’ and had merely stated its reasons for such
rejection without formal alinement of the references.
In re Bush, 296 F.2d 491, 496 (CCPA 1961). Otherwise, Appellants’
arguments in traversing the rejection are not materially different from the
arguments raised against the rejection of claim 1 which we found
unpersuasive and which we find equally unpersuasive here. We sustain the
Examiner’s rejection of claims 19 and 20 as unpatentable over Studer and
Babington.
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Unpatentability of Claim 2
over Babington, Studer, and Wang
Claim 2 depends from claim 1 and adds a limitation directed to
carrying a tool in the tool holder. Claims App.. The Examiner relies on
Wang as disclosing a grilling tool (basting brush). Final Action 11. The
Examiner concludes that it would have been obvious to a person of ordinary
skill in the art at the time of the invention to provide a tool to be carried by
the tool holder of Studer/Babington. Id. According to the Examiner, a
person of ordinary skill in the art would have done this so that the tool could
be used while grilling. Id.
Appellants traverse the rejection by arguing that the Examiner has no
purpose in mind in making the proposed combination. Appeal Br. 13. This
argument has no merit. A person of ordinary skill would have the use of a
tool in mind in creating a tool holder. See Studer, Fig. 2 (depicting a paint
brush disposed in the caddy). Appellants then argue that a basting brush “is
one of the last tools one would put in” a tool holder. Id. at 14. Inasmuch as
we agree with the Examiner that a basting brush is a grilling tool (whether
the first or last to be put in the holder), Appellants’ argument does not
apprise us of error.
We have considered Appellants’ remaining arguments and find them
to be without merit. We sustain the unpatentability rejection of claim 2 over
Babington, Studer, and Wang.
DECISION
The decision of the Examiner to reject claims 11, 13—16, and 18 under
35 U.S.C. § 102(b) as anticipated by Studer is affirmed.
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Appeal 2015-006002
Application 13/703,950
The decision of the Examiner to reject claims 1, 3—9, 17, 19, and 20
under 35 U.S.C. § 103(a) as being unpatentable over Babington and Studer
is affirmed.
The decision of the Examiner to reject claim 2 under 35 U.S.C.
§ 103(a) as being unpatentable over Babington, Studer, and Wang is
affirmed.
We enter a NEW GROUND OF REJECTION under 35 U.S.C.
§ 103(a) rejecting claims 11, 13—16, and 18 as unpatentable over Studer.
FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF. THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner. . .
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .
Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
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Appeal 2015-006002
Application 13/703,950
the effective date of the affirmance is deferred until conclusion of the
prosecution before the examiner unless the affirmed rejection is overcome.
If Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final action
on the affirmed rejection, including any timely request for rehearing thereof.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED. 37 C.F.R, $ 41.50(b)
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