Ex Parte Salinas

Patent Trial and Appeal Board

Jan 22, 2016

12659221 (P.T.A.B. Jan. 22, 2016)

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
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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
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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
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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
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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
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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
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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
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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.
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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.
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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 ).
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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
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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.
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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.").
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