Ex Parte Kishbaugh et al

Board of Patent Appeals and Interferences

Aug 20, 2009

10993042 (B.P.A.I. Aug. 20, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte RONALD G. KISHBAUGH, LETESA ISLER,
RICHARD WATSON, and REBECCA TAYLOR1
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Appeal 2009-006215
Application 10/993,042
Technology Center 3700
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Decided: August 20, 2009
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Before WILLIAM F. PATE, III, MICHAEL W. O’NEILL, and
DANIEL S. SONG, Administrative Patent Judges.

SONG, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is WKI Holding Company, Inc. (App. Br. 3).
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STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 from a Final Rejection
of claims 1-18. Claims 19 and 20 have been previously withdrawn (App.
Br. 3). We have jurisdiction over this appeal under 35 U.S.C. § 6(b) (2002).
The claimed invention is directed to a food preparation board with a
smooth work surface, a rest surface opposite the work surface, and a
plurality of measurement zones having measurement scales.
Representative independent claim 1 reads as follows (App. Br.,
Claims App’x.; emphasis added):
1. A food preparation board comprising:
a smooth work surface sized to receive at least a portion
of a food item and being provided for preparation of the food
item thereon;
a rest surface opposite the work surface;
a first measurement zone defined by a first portion of the
work surface, the first measurement zone comprising a first
plurality of measurement indicia corresponding to a first
measurement scale; and,
a second measurement zone being defined by a distinct
second portion of the work surface, the second measurement
zone comprising a second plurality of measurement indicia
corresponding to a second measurement scale, the second
measurement scale being different than the first measurement
scale.

Similarly, independent claim 8 and 15 also recite a food preparation
board having a smooth work surface with a plurality of measurement scales.
The prior art relied upon by the Examiner in rejecting the claims is:
Trahern 797,644 Aug. 22, 1905
Haidinyak 3,347,179 Oct. 17, 1967
Kessler 4,116,426 Sep. 26, 1978
Kroenke 5,386,654 Feb. 7, 1995

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The Examiner rejected claims 1-3, 5-10, and 12-17 under 35 U.S.C.
§ 103(a) as unpatentable over Haidinyak, Kroenke, and Trahern.
The Examiner rejected claims 4, 112, and 18 under 35 U.S.C. § 103(a)
as unpatentable over Haidinyak, Kroenke, Trahern, and Kessler.

We REVERSE.

ISSUE
Whether the Examiner erred in rejecting the pending claims because
eliminating the grooved lines formed in the work surface of Haidinyak’s
pastry board, as proposed by the Examiner, renders Haidinyak’s pastry
board inoperable for its intended purpose.
FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Haidinyak describes a pie and pastry board 10 with a
rectangular plate 11 that is preferably made of wood. A plurality of
grooved lines are disposed within a front side 17 and a back side 18
(i.e., work surfaces) of the plate. (Col. 1, ll. 38-43; col. 2, ll. 3-8; figs.
1-3).
2. Haidinyak states that “the main purpose of this invention [is] to
provide a pie and pastry board having a plurality of grooved lines for
cutting pastries into uniform slices.” (Col. 1, ll. 9-11).

2 As noted by the Examiner (Ans. 2-3), due to a typographical error, claim
10 was listed in the Final Rejection of November 24, 2006, not claim 11 as
intended.
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3. In Haidinyak, the grooved lines 12 and 14 “provid[e] uniform
depth for the cutting knife.” (Col. 1, ll. 49-52). Further, “[l]ike the
grooved lines 12, 13, and 14, the diagonal lines 15 and 16 are of
substantially identical grooved depth.” (Col. 1, ll. 59-60).
4. Figure 4 of Haidinyak shows that the grooved lines 12 are
formed directly into the plate 11 (i.e., work surface) at a depth to
accommodate the cutting knife. (Fig. 4).
5. In Haidinyak, the grooved lines 12 are also “spaced from each
other in a uniform relationship.” (Col. 1, ll. 43-45). Thus, in addition
to providing a uniform depth for the cutting knife, the uniformly
spaced grooved lines allow for measuring and cutting pastries into
uniform pieces.

PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-
18 (1966).
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In rejecting claims under 35 U.S.C. § 103(a), the examiner bears the
initial burden of establishing a prima facie case of obviousness. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); see also In re Piasecki, 745
F.2d 1468, 1472 (Fed. Cir. 1984). In relying on a combination of prior art
references, the examiner’s proposed modification cannot render a prior art
reference unsatisfactory for its intended purpose. In re Gordon, 733 F.2d
900, 902 (Fed. Cir. 1984).

ANALYSIS
The Examiner rejects claims 1-3, 5-10, and 12-17 as being obvious
over the combination of Haidinyak, Kroenke, and Trahern (Ans. 3-5). The
Examiner also rejects claims 4, 11, and 18 as being obvious over the
combination of Haidinyak, Kroenke, and Trahern in further view of Kessler
(Ans. 5). In suggesting these combinations, the Examiner contends that one
of ordinary skill in the art would be motivated “to eliminate the grooves or
otherwise eliminate the non-smooth surface in the Haidinyak [pastry board]
so that there is a smooth surface with indicia to assist cutting…in view of the
disclosure of Trahern.” (Ans. 5). In this regard, the Examiner articulates
that this proposed modification to Haidinyak’s pastry board would “provide
an easy to manufacture cutting board that is easy to wash and doesn’t come
apart when acted upon by a knife that facilitates using a cutting board for
measured cutting while still having a cheaply manufactured smooth
surface.” Id.
The Appellants argue inter alia, that the Examiner’s proposed
modification to Haidinyak’s pastry board is improper because there is no
motivation established and that Haidinyak actually teaches away from the
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combination suggested by the Examiner (App. Br. 7; Reply Br. 6). In setting
forth this argument, the Appellants also contend that Haidinyak provides a
disincentive to make the combination suggested (App. Br. 7; Reply Br. 6),
and would render “the Haidinyak invention inoperable for its intended
purpose.” (Reply Br. 7). In this regard, the Appellants assert that Haidinyak
“expressly requires ‘grooved lines’ in its work surface” (App. Br. 8) and is
“unequivocal in its teaching that the pastry board disclosed therein must
have grooves in its work surface in order for it to perform its operational and
intended function.” (Reply Br. 6-7). Thus, the dispositive issue in the
present appeal is whether the elimination of the grooved lines formed in the
work surface of Haidinyak’s pastry board, as called for by the Examiner
(Ans. 5), would render Haidinyak inoperable for its intended purpose. We
conclude that it does.
The pending claims, claims 1-18, are each directed to a food
preparation board with a “smooth work surface.” In contrast, Haidinyak, the
primary reference relied upon by the Examiner, teaches a pie and pastry
board with a work surface having a plurality of grooved lines formed
thereon (FF 1). In this regard, as disclosed in Haidinyak, the intended
purpose of these grooved lines is to provide uniform depth grooves which
accommodate a cutting knife (FF 2-3) so that pastry can be measured and cut
into uniform portions (FF 5). Figure 4 of Haidinyak likewise shows that the
grooved lines are scored, or formed, directly into the work surface at a depth
to accommodate the knife blade (FF 4).
The removal of the grooved lines would render Haidinyak’s pastry
board incapable of accommodating and guiding the knife so that pastry can
be measured and cut into uniform portions, this being the primary intended
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purpose of the Haidinyak’s pastry board. Hence, we conclude that the
Examiner has not set forth a prima facie case that it would have been
obvious to replace Haidinyak’s grooved lines formed in its work surface
with Trahern’s glass plate 6 (i.e. smooth work surface). Doing so would
render Haidinyak’s pastry board inoperable for its intended purpose.
The Examiner’s obviousness rejections of claims 1-18 are all
premised on the same erroneous rationale. Moreover, the Examiner’s
specific applications of Kroenke, Trahern, and Kessler to Haidinyak do not
cure the above noted deficiency with the prima facie case of obviousness.
Therefore, in view of the above, we do not sustain the Examiner’s rejections
of the pending claims.

CONCLUSIONS
1. The Examiner erred in rejecting the pending claims because
eliminating the grooved lines formed in the work surface of Haidinyak’s
pasty board renders Haidinyak’s pastry board inoperable for its intended
purpose.
2. The Examiner’s application of Kroenke, Trahern, and Kessler
to Haidinyak does not cure the noted deficiency with the prima facie case of
obviousness.

DECISION
1. The Examiner’s rejection of claims 1-3, 5-10, and 12-17 under
35 U.S.C. § 103(a) as unpatentable over Haidinyak, Kroenke, and Trahern is
REVERSED.
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2. The Examiner’s rejection of claims 4, 11, and 18 under 35
U.S.C. § 103(a) as unpatentable over Haidinyak, Kroenke, Trahern, and
Kessler is REVERSED.

REVERSED

MAT

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