Ex Parte SalinasDownload PDFPatent Trial and Appeal BoardJan 22, 201612659221 (P.T.A.B. Jan. 22, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/659,221 03/01/2010 37833 7590 01/22/2016 LITMAN LAW OFFICES, LTD. PATENT LAW BUILDING 8955 CENTER STREET MANASSAS, VA 20110 FIRST NAMED INVENTOR Dennis Salinas 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 31418.00 9378 EXAMINER LEE, LAURA MICHELLE ART UNIT PAPER NUMBER 3724 MAILDATE DELIVERY MODE 01122/2016 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 DENNIS SALINAS Appeal2013-010433 Application 12/659,221 Technology Center 3700 Before ANNETTE R. REIMERS, LEE L. STEPINA, and ERIC C. JESCHKE, Administrative Patent Judges. JESCHKE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Dennis Salinas (Appellant) seeks review, under 35 U.S.C. § 134(a), of the Examiner's decision to reject claims 1-5, 13, 16, and 18. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM-IN-PART. BACKGROUND The disclosed subject matter "relates generally to manually operated cutting tools, and particularly to a strap and band cutter having specially configured jaws for leaving safely rounded comers on the two ends of a Appeal2013-010433 Application 12/659,221 strap or band after cutting." Spec. i12. Claims 1 and 13 are independent claims. Claim 1 is reproduced below: 1. A strap and band cutter, comprising: an elongate first lever arm having a first handle end and a first jaw opposite the first handle end, the first jaw having mutually opposed first and second internal edges defining a slot therebetween, the slot having a narrow throat and mutually opposed wide ends, the throat curving smoothly into each of the ends; an elongate, unitary, one-piece second lever arm having a second handle end and a second jaw opposite the second handle end and being upwardly curved therefrom, wherein the first jaw and the second jaw define an angle therebetween when open, the second jaw having a shear plate defining mutually opposed and parallel first and second faces, the first and second faces having ends curving smoothly outwardly therefrom, the first and second faces defining first and second shear planes cooperating with the first jaw throat and ends thereof as the second jaw passes through the slot of the first jaw; and a pivot joining the first lever arm to the second lever arm. EVIDENCE RELIED ON BY THE EXAMINER Parsons Reichbom-Kjennerud ("Reichbom") US 1,677 ,684 July 17, 1928 US 3,284,896 Nov. 15, 1966 Elkins US 7,174,640 B2 Feb. 13,2007 2 Appeal2013-010433 Application 12/659,221 REJECTIONS ON APPEAL 1. Claims 1-5, 13, 16, and 18 are rejected under 35 U.S.C. § 103(a) as unpatentable over Parsons, Elkins, and Reichbom. 2. Claims 1-5, 13, 16, and 18 are rejected under 35 U.S.C. § 103(a) as unpatentable over Reichbom, Parsons, and Elkins. DISCUSSION Rejection I-The rejection of claims 1-5, 13, 16, and 18 under 35 US.C. § 103(a) as unpatentable over Parsons, Elkins, and Reichborn A. Independent Claim 1 (and Dependent Claims 2, 3, and 5) For the claims in this group, Appellant argues the patentability of claim 1 and does not separately argue the dependent claims. Appeal Br. 6- 12. Thus, we address only claim 1, with claims 2, 3, and 5 standing or falling with claim 1. See 37 C.F.R. § 41.37 (c)(l)(iv) (2012). The Examiner relies on Parsons for certain features recited in claim 1, but states that "Parsons does not disclose that the second lever is unitary and one piece with a second jaw that is upwardly curved therefrom, wherein the first and second jaw define an angle therebetween when open." Final Act. 2-3. After discussing various alleged teachings of Reichbom and Elkins, the Examiner states, [t]hus, the prior art of Elkins and Reichbom disclose that it is known in the art to utilize integral handles and jaws in a scissoring action to cut rounded ends on cable ties. The scissoring action has an advantage that a smaller portion of the blade is engaged to start the cut, such that there is less surface engagement and friction and less force is then needed to begin the cut. It similarly would have been obvious to one having ordinary skill in the art to have modified the Parsons cable cutters as taught by both Elkins and Reichbom to have an 3 Appeal2013-010433 Application 12/659,221 integral jaw and handle with a '"scissor" style connection to decrease the cutting force needed to cut through the cable. Id. at 3. First, Appellant argues that "Parsons discloses a tool for cutting box strapping by a cutting/punching action rather than the instantly claimed cutting/shearing action." Appeal Br. 6. As an initial matter, Appellant has not shown that a "cutting/shearing action" is recited in claim 1. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (rejecting arguments "not based on limitations appearing in the claims"). Further, this argument does not address the rejection as articulated, in which the modified device includes the "scissoring action" disclosed in Elkins and Reichbom. Final Act. 3. Second, Appellant makes various arguments asserting error in the reasoning provided in support of the conclusion of obviousness. Appellant argues that lever 12 in Parsons "is not unitary and cannot reasonably be modified to make it unitary" because doing so "would destroy the functionality of Parsons." Appeal Br. 6. According to Appellant, "[ m ]aking the lever of Parsons unitary would destroy the ability of Parsons to function because it requires the lever to pivot relative to the 'jaw."' Id. at 7; see also id. at 11 (citing MPEP § 2143.0l(V)); Reply Br. 5 (stating that "to modify Parsons with the teachings of Elkins, the punching operation would be replaced with a shearing operation which destroys the teachings of Parsons") (citing In re Ratti, 270 F.2d 810 (CCPA 1959)). Appellant also argues that "[t]he cutting action in Parsons is fundamentally different from the cutting action in Elkins and Reichbom." Appeal Br. 7. According to Appellant, in Parsons, punch 13 "reciprocates in a straight, vertical line," and "[i]n order to accomplish this reciprocation, the second lever arm 12 MUST be pivotally connected to the punch 13 so that 4 Appeal2013-010433 Application 12/659,221 the pivoting motion of the second lever arm 12 can be converted into reciprocating motion for the punch 13." Id. at 7-8. Appellant asserts that "neither Elkins nor Reichbom teach a reciprocating cutting element." Id. at 8. Appellant contends that "[i]f one of ordinary skill in the art was moved to modify Parsons with an integral cutting edge as taught by Elkins, it would essentially destroy the teachings of Parsons by requiring wholesale modification of Parsons' device." Id. at 9. Appellant also argues that "Reichbom's device is a shear" and that "[t]he fundamental differences between a shear and a punch would not lead one skilled in the art into the belief that it would be obvious to modify a punch with features directly related to a shear, especially in light of the specific design of the jaws in Reichbom to bend cut ends of the strap." Id. at 10. Appellant also argues that "the disparate fundamental nature in the cutting action between Parsons and the combination of Elkins and Reichbom, i.e.[,] straight line reciprocation versus scissor-type cutting, and the inherent design requirements therein precludes any obvious teaching or suggestion to substitute one for the other." Id. at 11 (discussing In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992)). Appellant contends that "the only reason for the Examiner's conclusions is that the Examiner is trying to meet the instant claims" and that "[ t ]he Examiner is engaging in impermissible hindsight." Id. at 7. In response, the Examiner states that "the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in anyone or all of the references" but, rather, "the test is what the combined teachings of the references would 5 Appeal2013-010433 Application 12/659,221 have suggested to those of ordinary skill in the art." Ans. 13. The Examiner also states that "Elkins bridges the two references of Parsons and Reichbom" in that Elkins shows "that the cut end rounded cable shape provided by the jaws of Parsons could be [sic] alternatively be created by relatively moving the jaws in a scissoring movement rather than the linear punching design as set forth by the Parsons' cable cutter." Id. at 14, 15. According to the Examiner, "[t]he jaws of Parsons may not have been able to be bodily incorporated with the handles of Reichbom, but a third tool combining the two teachings would have been obvious to one of ordinary skill in the art as shown by Elkins." Id. at 15. The Examiner also states: the interchangeability between the jaws and handles of Reichbom, Parsons, and Elkins has also been demonstrated as discussed above, such that pulling the features of the unitary scissoring levers of either Reichbom or Elkins with the jaw shape of Parsons to create another cable cutter is ... a process of selecting features already known in the art and combining them in an obvious fashion that would still function as intended as evidence by the Elkins jaw design. Id. at 16. Rejections based on obviousness must be supported by "some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). We are not apprised of error based on Appellant's second set of arguments. As to the contention that the proposed modification would "destroy the functionality of Parsons" (Appeal Br. 6), although Appellant has identified differences between the cutting motions of the references, Appellant has not persuasively shown that the proposed modification would change the basic principle under which Parsons operates-i.e., transmitting 6 Appeal2013-010433 Application 12/659,221 force at the lever arms to cut rounded ends on cable ties. See Final Act. 3 (discussing the modified device); see also Ratti, 270 F .2d at 813 (discussed in MPEP § 2143.0l(VI)). Moreover, Appellant has not persuasively shown that the proposed modification would render Parsons unsatisfactory for its intended purpose; the modified device would still cut rounded ends on cable ties. Cf In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984) (reversing a rejection because modifying the prior art by turning a filter upside down would render it incapable of filtering) (discussed in MPEP § 2143.0l(V)). Further, we are not apprised of error based on the various differences in the disclosed cutting motions because Appellant has not persuasively shown that the differences undermine the reasoning relied on to support the conclusion of obviousness. See Final Act. 2-3; Ans. 13-16. And, Appellant has not persuasively shown that a person of ordinary skill in the art would not be able to overcome the differences within their level of skill. See KSR, 550 U.S. at 418; see also id. at 421 ("A person of ordinary skill is also a person of ordinary creativity, not an automaton."). To the extent Appellant contends that Elkins and/or Reichbom are nonanalogous art as to Parsons (see Appeal Br. 10-11 (quoting Oetiker, 977 F.2d at 1447)), Appellant has not persuasively demonstrated that Elkins and Reichbom are not at least "reasonably pertinent to the particular problem with which the inventor is involved." In re Bigio, 381F.3d1320, 1325 (Fed. Cir. 2004). Based on the Examiner's findings regarding the similar problems addressed by the references (Final Act. 2-3) and the claimed invention, we conclude that Elkins and Reichbom are analogous art. Although Appellant provides certain arguments directly addressing the Examiner's reasoning in support of the conclusion of obviousness for 7 Appeal2013-010433 Application 12/659,221 this rejection (Reply Br. 5-7), Appellant does not make these arguments (which generally relate to a decrease in "cutting force") until the Reply Brief. See Reply Br. 5-7; see also Final Act. 3 (stating that it "would have been obvious to one having ordinary skill in the art to have modified the Parsons cable cutters as taught by both Elkins and Reichbom to have an integral jaw and handle with a 'scissor' style connection to decrease the cutting force needed to cut through the cable"). For procedural reasons, we will not address these arguments. See also 37 C.F.R. § 41.41(b)(2) ("Any argument raised in the reply brief which was not raised in the appeal brief, or is not responsive to an argument raised in the examiner's answer, including any designated new ground of rejection, will not be considered by the Board for purposes of the present appeal, unless good cause is shown."). These arguments address the rejection as originally set forth in the Final Office Action, rather than positions raised in the Answer. Although Appellant quotes a discussion from the Answer as providing the Examiner's reasoning (Reply Br. 5), the same reasoning was provided in the Final Office Action. Compare Ans. 6, with Final Act. 3. In addition, Appellant has not shown good cause for failing to provide these arguments in the Appeal Brief. Third, Appellant contends that none of the references "teach or suggest the claimed 'second jaw opposite the second handle end and being upwardly curved therefrom."' Appeal Br. 11-12. According to Appellant, "[ n ]one of the applied references appear to teach or suggest an upwardly curving second jaw. They all appear to be straight not curved." Id. at 12. The Examiner states that "at least Reichbom and Elkins anticipate this limitation." Ans. 16. The Examiner states that "Reichbom, as is best seen in Figures 3 and 5, discloses a second jaw 20 opposite the second handle end 8 Appeal2013-010433 Application 12/659,221 21 and is upwardly curved approximately about the pivot axis, such that the handle and jaw form an 'elbow."' Id. In reply, Appellant argues that "Reichbom's jaw 20 extends from the elbow, i.e.[,] the pivot at 19, but the extension is in a straight line" and that "[n]one of the profile features of the jaw 20 can be reasonably construed as being 'upwardly curved' from the end of the analogous second handle." Reply Br. 8. According to Appellant, "[n]either Elkins nor Reichbom provide any teaching, suggestion or motivation to change the profile shown in Parsons." Id. For the Examiner's reasons set forth above, Appellant has not shown that the limitation at issue structurally distinguishes over the identified structure in, e.g., Figure 5 of Reichbom. In addition, although a conclusion of obviousness must be supported by findings and analysis establishing a reason to combine the known elements in the manner required in the claim at issue, the analysis "need not seek out precise teachings directed to the specific subject matter of the challenged claim, for [an examiner] can take account of the inferences and creative steps that a person of ordinary skill in the art would employ." KSR, 550 U.S. at 418; see also id. at 418-19 (holding that when the teaching-suggestion-motivation test is applied as a rigid and mandatory formula, it is incompatible with Supreme Court precedent). For the reasons set forth above, we sustain the decision to reject independent claim 1 as unpatentable over the combined teachings relied upon by the Examiner. Claims 2, 3, and 5 fall with claim 1. 9 Appeal2013-010433 Application 12/659,221 B. Dependent Claims 4 and 16 Dependent claims 4 and 16 each recite "[t]he strap and band cutter" of their parent claims, "wherein said first lever arm has a shallow strap and band retaining recess disposed laterally across the first jaw." 1 For these claims, the Examiner found that "the modified device of Parsons discloses wherein said first lever arm has a shallow strap and band retaining recess (15) disposed laterally across the first jaw." Final Act. 4, 5. Appellant states that "slot 15 of Parsons" "is not seen as a recess disposed across the first jaw." Appeal Br. 17.2 In response, the Examiner states, "slot 15 performs the same function as the slot of the instant invention to provide a space for the sides of the cable to enter, that would function identically whether located on the first or secondjaw." Ans. 18. "A patent applicant is free to recite features of an apparatus either structurally or functionally." In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). We agree with Appellant that the record does not support the Examiner's finding that the identified element in Parsons satisfies the structural limitations recited in claims 4 and 16. The Examiner's position that the identified element in Parsons would "function identically" does not, in light of the claim language at issue, support the rejection as articulated. Thus, we do not sustain the decision to reject claims 4 and 16. 1 Discussing these claims in the "Summary of Claimed Subject Matter" in the Appeal Brief, Appellant states: "[t]hese dependent claims recite that the first lever arm 12 has a recess 56 disposed across the first jaw 22." Appeal Br. 5 (citing Spec., Fig. 2, i-f 23). 2 The Examiner identified the "area of the head containing 14/14" in Parsons as the recited "first jaw." Final Act. 2. 10 Appeal2013-010433 Application 12/659,221 C. Independent Claim 13 (and Dependent Claims 16 and 18) Independent claim 13 recites, inter alia, "a pivot joining the first lever arm to the second lever arm, the second medial portion being captured and centered symmetrically within the slot of the first medial portion." 3 In the Final Office Action, the Examiner appears to rely on certain structures in Parsons to satisfy this limitation. Final Act. 5. In the Answer, the Examiner modifies the findings related to this limitation, stating, "it appears the Examiner did not update this limitation in conformance with the previous modification in view of Reichbom and Elkins, in that the first and second medial portions should have corresponded with the pivoting/slot structure ofReichbom (around ref. 19)." Ans. 17. In response, Appellant argues that "the Examiner's assertion fails to set forth any reason why one of one of ordinary skill in the art would include such a feature in Parsons apart from the mere fact that Reichbom allegedly shows the feature." Reply Br. 10. According to Appellant, "[t]his is impermissible hindsight reasoning." Id. "In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden of presenting a prima facie case of obviousness." In re Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). A rejection cannot be based on "speculation, unfounded assumptions or hindsight reconstruction to supply deficiencies in 3 Discussing this limitation in the "Summary of Claimed Subject Matter" in the Appeal Brief, Appellant states: "A pivot 16 joins the first lever arm 12 to the second lever arm 14. The second medial portion 54 is captured and centered symmetrically within the slot 52 of the first medial portion 46, and the second jaw 24 passes symmetrically through the first jaw 22." Appeal Br. 5 (citing Spec., Figs. 4, 5, i-fi-120, 21 ). 11 Appeal2013-010433 Application 12/659,221 its factual basis." In re Warner, 379 F .2d 1011, 1017 (CCP A 1967). Based on the record here, we agree with Appellant that the Examiner has not set forth, with sufficient clarity, reasoning to modify Parsons with the identified structure from Reichbom to support the legal conclusion of obviousness of independent claim 13. See KSR, 550 U.S. at 418. Thus, we do not sustain the decision to reject claim 13, and do not sustain the decision to reject claims 16 and 18, which depend from claim 13. Rejection 2 - The rejection of claims 1-5, 13, 16, and 18 under 35 US. C. § 103(a) as unpatentable over Reichborn, Parsons, and Elkins In this rejection, the Examiner relied on Reichbom for various structures, including the "lever arm[ s ]" recited in independent claims 1 and 13. Final Act. 6. The Examiner stated, however, that "Reichbom does not disclose the specific structure of the first and second jaw[ s ]" as recited in claims 1 and 13, but that Parsons "discloses a strap and band cutter but with an alternative slot and jaw shape." Id. at 6, 7. According to the Examiner, [i]t would have been obvious to one having ordinary skill in the art to have combined an integral and rounded cutting blade and jaw as taught by Parsons on handles with a standard scissor lever configuration as shown by Reichbom as Elkins already establishes a similar design of integral rounded blades on a "scissor" action tool for providing safer cut ends on the cable tie with a cutting action that requires a smaller cutting force to start the cut owing to the smaller initial surface engagement area. Id. at 8. Appellant argues that "[t]he Reichbomjaws are configured to provide a cutter WHICH BENDS THE METAL BAND as the band is being cut" and that "changing Reichbom via Parsons would totally destroy the bending 12 Appeal2013-010433 Application 12/659,221 feature critical to the device." Appeal Br. 13 (citing Reichbom, col. 1, 11. 32-37), 14. According to Appellant, the "proposed modification would destroy the teachings of Reichbom because it would replace the specific jaw configuration of Reichbom with a hypothetical jaw configuration that cuts curved profiles on cable ties as allegedly suggested by Parsons and Elkins." Reply Br. 11. The Examiner does not appear to address these arguments. Where the proposed modification would render the prior art invention being modified unsatisfactory for its intended purpose, the proposed modification would not have been obvious. See Gordon, 733 F.2d at 902. In the passage relied on by Appellant, Reichbom discloses that [t]he principal object of the present invention is to provide a cutter which bends the metal band on one or both sides of the cutting line progressively as the band is being cut. In this way, the bending action progresses behind the actual cutting so that a minimum of force is required to bend and cut the band. Reichborn, col. 1, 11. 32-37 (emphasis added). Rased on this, and that the proposed modification would, inter alia, replace the cutting/bending jaws in Reichbom with the cutting jaws in Parsons (Final Act. 6-8), we agree with Appellant that the proposed modification of Reichbom would not have been obvious to one of ordinary skill in the art. See Gordon, 733 F.2d at 902. For these reasons, we do not sustain the Examiner's decision to reject independent claims 1 and 13 based on Reichbom, Parsons, and Elkins. We also do not sustain the decision to reject claims 2-5 (which depend from claim 1) and claims 16 and 18 (which depend from claim 13) based on Reichbom, Parsons, and Elkins. 13 Appeal2013-010433 Application 12/659,221 CONCLUSION For the reasons set forth above, we (1) AFFIRM the decision to reject claims 1-3 and 5 under 35 U.S.C. § 103(a) as unpatentable over Parsons, Elkins, and Reichbom, (2) REVERSE the decision to reject claims 4 and 16 under 35 U.S.C. § 103(a) as unpatentable over Parsons, Elkins, and Reichbom, (3) REVERSE the decision to reject claims 13, 16, and 18 under 35 U.S.C. § 103(a) as unpatentable over Parsons, Elkins, and Reichbom, and (4) REVERSE the decision to reject claims 1-5, 13, 16, and 18 under 35 U.S.C. § 103(a) as unpatentable over Reichbom, Parsons, and Elkins. 4 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)(l )(iv). AFFIRMED-IN-PART rvb 4 See 37 C.F.R. § 41.50(a)(l) ("The affirmance of the rejection of a claim on any of the grounds specified constitutes a general affirmance of the decision of the examiner on that claim, except as to any ground specifically reversed."). 14 Copy with citationCopy as parenthetical citation