Ex Parte McCarty et al

Patent Trial and Appeal Board

Jan 22, 2015

10625149 (P.T.A.B. Jan. 22, 2015)

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.
10/625,149 07/23/2003 H. Downman McCarty II HHT- 8274
25175 7590 01/22/2015
Daneker, McIntire, Schumm,
Prince, Manning & Widmann, P.C.
One N. Charles Street
Suite 2450
Baltimore, MD 21201
EXAMINER
FLORES SANCHEZ, OMAR
ART UNIT PAPER NUMBER
3724
MAIL DATE DELIVERY MODE
01/22/2015 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 H. DOWNMAN MCCARTY, II,
BROOKE SCHUMM, III, and PETER POPPER
____________________

Appeal 2012-010128
Application 10/625,149
Technology Center 3700
____________________

Before: JENNIFER D. BAHR, JOHN C. KERINS, and
MICHAEL L. HOELTER, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
H. Downman McCarty, II et al. (Appellants) appeal under 35 U.S.C.
§ 134 from the Examiner’s decision rejecting claims 143–151 and 154–158.1
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 Claims 152, 153, and 159–163 have been withdrawn from consideration.
Final Act. 1.
Appeal 2012-010128
Application 10/625,149

2
THE CLAIMED SUBJECT MATTER
Claim 143, reproduced below, is illustrative of the claimed subject
matter:
143. An impact tool for use on stone, concrete, metal or
similarly hard material comprising:
a shaft having a striking end and a working end; and
a shaped polymeric material, reinforced by a material
selected from the group of fiber or mineral, to be impacted,
disposed immediately adjacent to said striking end in order to
avoid direct metal-to-metal contact and in order to eliminate
any loss of energy or damage to said shaped reinforced
polymeric material from any gap between said shaped
polymeric material and said striking end,
said shaped polymeric material having a striking end area
of said polymeric material adjacent to said striking end and an
impact end area to be impacted roughly opposite said striking
end area,
said shaped polymeric material being of sufficient cross-
sectional area for transmitting impact upon the impact end area,
of appropriate thickness through said cross-sectional area, and
of sufficient modulus to enable greater than sixty-seven per cent
impact effectiveness compared to a similar impact tool without
said polymeric material disposed adjacent to said striking end,
said impact tool further being capable of being struck on
said impact end area at least 250 times without deformation of
said shaped polymeric material that alters said impact
effectiveness of said impact tool, and
said impact tool further being capable of use on stone,
concrete, metal or similarly hard material.

EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Zetterman
Smith
US 1,409,638
US 4,497,355
Mar. 14, 1922
Feb. 5, 1985
Appeal 2012-010128
Application 10/625,149

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Vasudeva US 6,076,431 June 20, 2000

REJECTIONS
I. Claims 143, 144, 146, 147, 148, 150, 151, and 156 stand rejected
under 35 U.S.C. § 102(b) as being anticipated by Zetterman.
II. Claims 145 and 149 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Zetterman and Smith.
III. Claims 154 and 155 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Zetterman.
IV. Claims 157 and 158 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Zetterman and Vasudeva.

OPINION
Rejections I, II, and IV
Independent claim 146 requires a shaped fiber-reinforced polymeric
material, and independent claims 143 and 151 require a shaped polymeric
material reinforced by a fiber or mineral material. Br. 35–37, Claims App.
The Examiner finds that Zetterman’s cap made of celluloid satisfies these
requirements. Ans. 4 (citing col. 3, l. 24).
Appellants argue that Zetterman does not disclose reinforcing the cap.
Br. 13.
The Examiner correctly points out that the prior art need not use the
exact words of a claim in order to anticipate the claimed subject matter.
Ans. 7. Anticipation “is not an ‘ipsissimis verbis’ test.” In re Bond, 910
F.2d 831, 832–33 (Fed. Cir. 1990) (citing Akzo N.V. v. U. S. Int'l Trade
Comm'n, 808 F.2d 1471, 1479 n.11 (Fed. Cir. 1986)). “An anticipatory
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Application 10/625,149

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reference . . . need not duplicate word for word what is in the claims.”
Standard Havens Prods., Inc. v. Gencor Indus., Inc., 953 F.2d 1360, 1369
(Fed. Cir. 1991). We also appreciate that polymeric materials, as recited in
claims 141, 146, and 151, may encompass both natural and synthetic
materials. See Ans. 7. However, the Examiner has not presented sufficient
evidence to show that the celluloid material of Zetterman’s cap is a
polymeric material reinforced by either a fiber or a mineral material. The
Examiner points out that Zetterman’s celluloid material comprises cellulose
and camphor materials. Id. The Examiner does not present any evidence,
however, to show that the celluloid product produced after subjecting the
cellulose to a nitration reaction and mixing the resulting nitrocellulose with a
solution of camphor in alcohol is a polymeric material reinforced by a fiber
or mineral material. Accordingly, the Examiner has not established a prima
facie case that Zetterman’s celluloid satisfies the aforementioned
requirements of independent claims 143, 146, and 151. Thus, we do not
sustain the Examiner’s rejection of claims 143, 146, and 151 or their
dependent claims 144, 147, 148, 150, and 156 as being anticipated by
Zetterman.
In rejecting dependent claims 145, 149, 157, and 158 under 35 U.S.C.
§ 103(a), the Examiner does not rely on Smith or Vasudeva for any teaching
that would overcome the deficiency in Zetterman discussed above. Thus, we
also do not sustain the rejection of claims 145 and 149 as being unpatentable
over Zetterman and Smith or the rejection of claims 157 and 158 as being
unpatentable over Zetterman and Vasudeva.
Appeal 2012-010128
Application 10/625,149

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Rejection III
Claim 154 and 155 depend from claim 143, 144, 145, 146, 147, 149,
151, or 152, and further require that said shaped polymeric material be
comprised of “at least one polyamide” or “at least fiber-reinforced nylon,”
respectively. Br. 38, Claims App. To account for this limitation, the
Examiner asserts that it would have been obvious to modify Zetterman’s
device
with polyamide or fiber-reinforced nylon for the purpose of
having a stronger material, since it has been held to be within
the general skill of a worker in the art to select a known
material on the basis of its suitability for the intended use as a
matter of obvious design choice.
Ans. 6 (citing In re Leshin, 277 F.2d 197, 199 (CCPA 1960)). The
Examiner, however, does not support this assertion with any evidence to
establish a factual basis that either a polyamide or a fiber-reinforced nylon
would be a stronger material than celluloid or that either of these materials
would have been recognized in the art at the time of the invention as being a
suitable replacement for celluloid in Zetterman’s cap. In essence, the
Examiner attempts to apply what amounts to a per se rule that the
substitution of one known material for another known material would have
been obvious. Our reviewing court has stated that neither their precedent,
nor that of their predecessor court, should be construed as formulating any
per se rules of obviousness. In re Ochiai, 71 F.3d 1565, 1571–72 (Fed. Cir.
1995). Moreover, the proposed replacement of Zetterman’s celluloid with
polyamide (one of the two alternatives proposed by the Examiner) would not
make up for the deficiency in Zetterman with respect to the requirement of a
polymeric material reinforced by a fiber or mineral material. For the above
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Application 10/625,149

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reasons, we do not sustain the Examiner’s rejection of claims 154 and 155 as
being unpatentable over Zetterman.

DECISION
The Examiner’s decision rejecting claims 143–151 and 154–158 is
reversed.
REVERSED

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