Ex Parte Stones et al

Patent Trial and Appeal Board

Jul 20, 2018

10889762 (P.T.A.B. Jul. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
10/889,762 07/13/2004 Kevin Stones
7590 07/20/2018
Black & Decker Corporation
701 E. Joppa Road
Towson, MD 21286
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.
P-US-GD-1092 7162
EXAMINER
DEXTER, CLARK F
ART UNIT PAPER NUMBER
3724
MAIL DATE DELIVERY MODE
07/20/2018 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 KEVIN STONES,
DAVID BARKER, and DAVID JARMAN 1
Appeal2017-009601
Application 10/889,762
Technology Center 3700
Before STEFAN STAICOVICI, JAMES P. CALVE, and
ANNETTE R. REIMERS, Administrative Patent Judges.
CAL VE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Final Office
Action rejecting claims 1, 21-23, 27, 28, and 37--41. Br. 2. Claims 2, 4, 6,
7, 9, 11, 15-20, 24--26, 29, 30, 32, and 42--44 are cancelled and claims 3, 5,
8, 10, 12-14, 31, and 33-36 are withdrawn. Id. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Appellants identify Stanley Black & Decker, Inc. and Blacker & Decker
Inc. as the real parties in interest. Br. 2.
Appeal2017-009601
Application 10/889,762
CLAIMED SUBJECT MATTER
Claim 1, the sole independent claim on appeal, is reproduced below.
1. A vegetation pruning device including:
a first and second arm pivotable relative to each other
about an axis to adjust the angle between said arms, the axis
located between ends of each of the arms so that the arms form
a generally X-shaped configuration, the first arm having a first
handle portion and the second arm having a second handle
portion, the first and second handle portions adapted to be
gripped by a user;
the first arm having a first guard member and the second
arm having a second guard member, the first and second guard
members adapted to engage vegetation, the axis defining a
forward side and a rearward side of the device, the handle
portions being on the rearward side of the axis and the guard
members being on a forward side of the axis;
a motor having a rotary output shaft; and
a chain bar mounted to said first arm for movement
therewith, the chain bar having an endless flexible cutting
element adapted to be driven relative to said chain bar by said
rotary output shaft to cut vegetation presented thereto;
wherein the axis is located closer to the cutting element
than to the handle portions.
Br. 13 (Claims App.).
REJECTION
Claims 1, 21-23, 27, 28, and 37--41 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Seyfer (US 6,578,267 B2, iss. June 17, 2003)
and Rigoni (US 3,182,695, iss. May 11, 1965).
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Appeal2017-009601
Application 10/889,762
ANALYSIS
Claims 1, 22, 27, 28, and 37--41
Appellants argue claims 1, 22, 27, 28, and 37--41 as a group. Br. 5-
11. We select claim 1 as representative, with claims 22, 27, 28, and 37--41
standing or falling with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv). The Examiner
finds that Seyfer discloses a cutting device with a first arm (air control lever
14 or drive unit housing 24), second arm (feed lever 40), first handle portion
(portion supporting 14, 24 ), second handle portion ( squeezing portion 46),
first arm guard member (safety guard 62), second arm guard member (first
portion 44 ), and motor 10 with an axis (pivot 16) closer to the cutting
element than to the handle portions. Final Act. 3--4 ( citing Seyfer, Fig. 1 ).
The Examiner takes Official Notice that chain bars with guards and a
cutting element are well-known in the art as alternative, equivalent cutting
structures as illustrated by Rigoni, which discloses a known configuration
for such a chain saw and chain guard. Id. at 6; see Ans. 18. The Examiner
determines it would have been obvious to a person of ordinary skill in the art
to replace the cutter and associated guard of Seyfer with any one of a
number of known cutters, including a chain saw type cutter with a cutter bar
and guard, to provide a desired speed and cut type or quality. Final Act. 6.
Appellants argue that the portions of Seyfer cited by the Examiner are
not separate handle portions. Br. 5. Appellants argue that Seyfer teaches a
small tool for use in tight work spaces so a user can grip both the control
lever of the air motor and the handle of the feed lever at the same time with a
single hand. Id. (quoting Seyfer, Abstract). Appellants argue that the first
and second handle portions require structure that a user can grab and place a
hand on, and Seyfer's handle portions cannot be gripped by a user. Id. at 6.
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Appeal2017-009601
Application 10/889,762
Appellants' arguments are not persuasive because they are not
commensurate with the scope of claim 1, which does not recite a particular
size of the pruning device or its handle portions. Nor does claim 1 recite a
method of using a pruning device. Claim 1 merely requires "a first arm
having a first handle portion and the second arm having a second handle
portion, the first and second handle portions adapted to be gripped by a
user." Br. 13 (Claims App.). Claim 1 does not specify a particular structure
or how a handle portion is gripped by a user, whether with one or two hands.
Thus, Appellants' argument that Seyfer lacks handle portions because a user
can grasp two handle portions at the same time is not persuasive.
In addition, Seyfer teaches that second portion 46 of feed lever 40
"serves as a handle" and "is useful, as a handle." Seyfer, 4:16-18, 4:25-26.
Seyfer teaches that "[ f]eed lever 40 is hand operated by squeezing portion 46
against motor body 10 in a scissors like action." Id. at 4:6-8, Fig. 1. A user
grips motor body IO/drive unit 24 and air lever 14. Id. Thus, Seyfer teaches
first and second handle portions as squeezing portion 46 and air control lever
14/drive unit 24. The fact that a user may grab both portions 46 and 14/24 in
one hand does not detract from the fact that both handle portions are adapted
to be gripped by a user as claimed. Ans. 8-9. Claim 1 requires no more.
In this regard, claim 1 recites a first arm and a second arm pivotable
relative to each another about an axis with each arm having a handle portion.
Appellants disclose this arrangement as elongate members pivotal relative to
one another about pivot 12. Spec. Fig. 1. At one end of each member is an
arm 4, 6 with guard members 4a, 4b, 6a, 6b adapted to engage vegetation.
At the other end of each member is a handle 14, 16 adapted to be gripped by
a user. Id. at 12: 17-27. Seyfer discloses this claimed arrangement.
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Appeal2017-009601
Application 10/889,762
Therefore, even if we read into claim 1 an unclaimed requirement of a
first and second handle portion adapted to be gripped by a separate hand of a
user, which we are precluded from doing, the Examiner has a sound basis for
finding that Seyfer teaches handle portions 14/24 and 46 that are capable of
satisfying such functional feature because Seyfer discloses a device with the
same structure and functionality as Appellants claim. Ans. 8-11; see also In
re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) (A patent applicant may
recite features of an apparatus either structurally or functionally; however, if
the PTO has a reason to believe that the prior art possesses that feature as an
inherent characteristic, it has the authority to require the applicant to prove
that the subject matter does not possess the claimed functional feature.). In
this case, Appellants have not demonstrated that Seyfer's handle portions
cannot be gripped separately by a user, i.e., one handle portion in each hand
of a user. Ans. 9-11. One-handed use is allowed but not required by Seyfer.
Appellants also argue that Seyfer does not show a guard member on
the first and second arms as claimed. Br. 7. In particular, Appellants argue
that first portion 44 of engaging lever 40 is not a second guard member. It is
simply a portion of lever 40 without any structural difference to distinguish
it from the rest of lever 40. Id. Appellants further argue the claimed "guard
member" recites a positive structural limitation that requires an element to
have some structure that "guards." Id. at 8. In this regard, Appellants argue
that first portion 44 of Seyfer is just a part of lever 40 used to urge a tube 42,
which is to be cut, into engagement with cutting wheel 16 and thus, it has no
structure that guards a user from cutting wheel 16. Id. Finally, Appellants
argue that the Examiner's finding that first portion 44 is a guard because it is
capable of blocking access to the blade to some extent is untenable. Id.
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Appeal2017-009601
Application 10/889,762
The Examiner has the better position here. Claim 1 requires "the first
and second guard members adapted to engage vegetation." Br. 13 (Claims
App'x). Claim 1 recites no other features of the guard members, nor have
Appellants described any structural or functional feature beyond the mere
assertion that "guard member" requires "that the element being addressed
have some structure that 'guards."' Id. at 8.
The Examiner correctly finds that Seyfer's feed lever 40 has structure
adapted to engage a workpiece (tube 42), as shown in Figure 1, and this
structure is adapted to engage vegetation as claimed. Final Act. 1; Ans. 12.
The Examiner also has a sound basis for finding that Seyfer discloses
structure that serves as a "guard member" because it is capable of blocking
access to cutting blade 16 when it is moved to a position adjacent to blade 16
after workpiece 42 is removed. See Ans. 12. In this regard, Seyfer discloses
first portion 44 having two parallel portions, with one portion on either side
of cutting wheel 16 in Figure 4. Id. Seyfer discloses these parallel members
being connected in a spaced relationship by axles 56 that support rollers 58
along first portion 44 as shown in Figures 1, 3, and 4. Id. at 12 and 13-14.
We agree with the Examiner that the parallel portions of first portion
44 extend downwardly in a configuration that blocks access to an edge of
cutting wheel 16 when they are placed or resting next to cutting wheel 16.
Rollers 58 on first portion 44 also extend downwardly further along cutting
wheel 16 to block access to or guard cutting wheel 16 and thus function as a
"guard member" as well. Ans. 13-14. Seyfer shows first portion 44 and
rollers 58 extending downwardly on either side of cutting wheel 16 similar
to Appellants' side cover portions 4a, 4b, 6a, 6b. Spec. 13:24--28, Fig. 3.
Thus, they surround and block access to the edge of cutting wheel 16.
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Appeal2017-009601
Application 10/889,762
The Examiner therefore has a sound basis to find that Seyfer discloses
structure that is capable of serving as a guard member even if we interpret
"guard member" to include a function of blocking access to cutting wheel 16
of Seyfer. Appellants' argument that the Examiner's finding is "untenable"
is not evidence and is not persuasive of error in the Examiner's finding that
Seyfer discloses structure that performs this function. Schreiber, 128 F.3d at
1478. The Examiner does not find that any structure can block access to
Seyfer's cutting blade 16, as Appellants argue. Br. 8. Instead, the Examiner
finds that Seyfer discloses a particular structure configured to block access
to cutting wheel 16, as discussed above. Appellants have not met their
burden of explaining why the Examiner's findings are in error. Ans. 12-14.
Appellants disclose two guard members. Side covers 6a, 6b of arm 6
are fixed relative to a cutting edge of chain 8. Side covers 4a, 4b of arm 4
move toward and away from a cutting edge of chain 8 via handles 14, 16 and
pivot 12. Spec. 13:22-15:14, Figs. 1-3. Seyfer discloses a similar structure.
One guard member (safety guard 62) is positioned in a fixed relationship to
cutting wheel 16 to cover part of its cutting edge. The other guard member
is first portion 44 and rollers 58, which can move adjacent to the other edge
of cutting wheel 16. Appellants disclose their side covers 4a, 4b, 6a, 6b as
being formed integrally with each arm 4, 6, and extending in parallel spaced
relationship therefrom. Seyfer discloses this configuration with first portion
44 as spaced parallel elements extending downwardly on each side of cutting
wheel 16 with rollers 5 8 extending further downward. Thus, we agree with
the Examiner that Seyfer discloses structures as first portions 44 and rollers
5 8 that guard or block access to the edge of cutting wheel 16 and therefore
correspond to the claimed guard members.
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Appeal2017-009601
Application 10/889,762
Finally, we are not persuaded by Appellants' argument that claim 1
recites a "vegetation pruning device" in the preamble and this feature defines
the invention and distinguishes it over the prior art. Br. 10. Appellants also
argue that their vegetation cutting device is used outdoors in large, open
environments where space constraints are not an issue, whereas Seyfer is
designed for use in tight spaces underneath automobiles. Id. Appellants
further argue that this difference explains why the claimed structure in the
body of the claim such as the arm assembly is patentably significant and also
fundamentally different from Seyfer when read in light of the preamble. Id.
We agree with the Examiner that "a vegetation pruning device" in the
preamble of claim 1 merely recites an intended use that does not add further
structure or function to the device recited in the body of claim 1. Ans. 17.
The body of claim 1 recites a structurally complete pruning device. Reciting
a "vegetation pruning device" in the preamble adds nothing to the structure
or function of the device recited in the body of claim 1. Nor does the body
of claim 1 refer back to or incorporate the preamble. Thus, the preamble is
not giving life or special meaning to claim 1. Although claim 1 recites guard
members "adapted to engage vegetation," Appellants do not identify, nor do
we find, any structure or function lacking from Seyfer' s guard members.
As discussed above, Seyfer discloses guard members that block access
to cutting wheel 16. These elements engage tube 42, which is comparable to
a round limb or vegetation. Accordingly, Seyfer's guard members appear
reasonably capable of engaging vegetation as claimed. Appellants do not
argue that Seyfer's structure is not capable of doing so. The "first vegetation
restraining means" recited in dependent claim 12 are not read into claim 1.
Thus, we sustain the rejection of claims 1, 22, 27, 28, and 37--41.
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Appeal2017-009601
Application 10/889,762
Claim 21
Claim 21 depends from claim 1 and recites that the second guard
member "comprises a substantially parallel pair of side walls defining a
channel therebetween for at least partially receiving said cutting element."
Br. 15 (Claims App'x). The Examiner correctly finds that Seyfer discloses
this structure in Figure 4 as parallel portions of first portion 44 that extend to
form a channel or cavity structure for cutting blade 16 to be located within
such that the extending portions of first portion 44 are located on either side
of cutting blade 16. Final Act. 4; Ans. 13-14. The Examiner also reasons
correctly that Figures 3 and 4 of Seyfer show second portion 46 and rollers
5 8 configured to allow the channel formed between parallel first portions 44
to be positioned on either side of cutting wheel blade 16 "such that the blade
16 is located within the cavity/channel formed by the parallel extending
portions of 44, particularly since the member/handle 46 is located to the side
of member/handle ( e.g., including the structure indicated by 10 as viewed in
Fig. 1) as can be seen in Fig. 4." Ans. 14.
Appellants' argument that the Examiner asserts that parallel side walls
are shown in Figure 4 but "there is no disclosure in Seyfer that the feed lever
40 receives the cutting element 16 as the tube 42 is cut, as required by the
claim" (Br. 9) does not address or apprise us of error in the findings of the
Examiner as set forth in the Answer and above. The Examiner had a sound
basis to find that Seyfer discloses structure that corresponds to the claimed
side walls that define a channel, and this structure can receive the cutting
element when it is displaced towards portion 44 because Figures 1--4 show
blade 16 within portion 44 with no stops to prevent its receipt within this
structure. Ans. 13-14. Thus, we sustain the rejection of claim 21.
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Appeal2017-009601
Application 10/889,762
Claim 23
Claim 23 depends indirectly from claim 1 and recites "said channel
comprises an inner surface extending between said substantially parallel side
walls and defining a debris conveying path communicating with a debris
extraction aperture." Br. 15 (Claims App'x). The Examiner finds that the
parallel members of first portion 40 form inner walls with a depth to provide
a debris conveying path where "at least some of the dust/debris/particles
created by a cutting operation will travel on such a path or at least are
capable thereof." Ans. 15; Final Act. 4.
Appellants argue that the portions of Figure 4 cited by the Examiner
"do not represent an 'inner surface' that defines a 'debris conveying path,"'
and sufficient structure is not identified for this feature. Br. 9. Appellants
also argue that Seyfer does not disclose a debris extraction aperture
communicating with a debris conveying path. Id.
Appellants have the better position. We appreciate the Examiner's
position that Seyfer teaches structures that extend between the side walls of
first portion 44, and an opening extending between these structures is shown
in Figure 4 of Seyfer. However, it is an unreasonably broad interpretation of
the limitation "inner surface extending between said substantially parallel
side walls" when interpreted in light of the Specification to consider these
spaced elements to correspond to or form an "inner surface" that defines "a
debris conveying path communicating with a debris extraction aperture" as
recited in claim 23. Br. 18 (Claims App.) (emphasis added); see Spec. 7:19-
21, Figs. 1 c, 3. Seyfer do not disclose an "inner surface" extending between
parallel side walls of first portion 44 for "defining" a "path" to an "aperture"
as claimed. Thus, we do not sustain the rejection of claim 23.
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Appeal2017-009601
Application 10/889,762
DECISI0N2
We affirm the rejection of claims 1, 21, 22, 27, 28, and 37--41, and we
reverse the rejection of claim 23.
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-IN-PART
2 We agree with Appellants that the Examiner's rejection of claim 1 only
relies on Rigoni to support the Examiner's taking of Official Notice that
chain bars and guards are well-known in the art. Br. 11; see Ans. 18; Final
Act. 6. Therefore, Rigoni is not relevant to any of the deficiencies alleged
by Appellants for the rejection of claim 1 (see Br. 11) and the Examiner does
not need reasoning to combine the teachings of Seyfer and Rigoni beyond a
determination that it would have been obvious to substitute any of various
well-known cutters such as a chain saw type cutter of Rigoni for the cutter
and guard of Seyfer as a simple substitution for predictable results based on
known considerations such as material to be cut, speed of cut, and type or
quality of cut desired. See Final Act. 6. The Examiner is not modifying the
operation of Seyfer beyond substituting Rigoni' s cutter and guard for that of
Seyfer for predictable results so Appellants' arguments are not persuasive
and do not apprise us of error in the actual rejection of the Examiner.
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