Ex Parte Swerdlick

Patent Trial and Appeal Board

Nov 22, 2013

12080226 (P.T.A.B. Nov. 22, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/080,226 04/01/2008 David Swerdlick 033.001US1 3940
97462 7590 11/25/2013
Mark A. Litman & Associates, P.A.
7001 Cahill Road, Ste. 15A
Edina, MN 55439
EXAMINER
MILLER, WILLIAM L
ART UNIT PAPER NUMBER
3677
MAIL DATE DELIVERY MODE
11/25/2013 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 DAVID SWERDLICK
____________________

Appeal 2011-012218
Application 12/080,226
Technology Center 3600
____________________

Before: JOHN C. KERINS, SCOTT A. DANIELS, and JEREMY M.
PLENZLER, Administrative Patent Judges.

DANIELS, Administrative Patent Judge.

DECISION ON APPEAL

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Application 12/080,226

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from the final rejection of
claims 1-18. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

The claims are directed to an ergonomic handle system for a work
tool. Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A removable attachment on an appliance having a single
shaft for gripping and manipulation of the appliance by a user,
the removable attachment comprising:
a base having a first end and a second end, and a first side
and a second side:
on the base, two shaft-securing elements, a first shaft-
securing element positioned towards the first end and a second
shaft-securing element positioned towards the second end;
a two-hand grip handle attached to the base intermediate the
first shaft securing element and the second shaft-securing
element.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Berfield
Comstock
US 5,507,071
US 6,470,533 B1
Apr. 16, 1996
Oct. 29, 2002

REJECTIONS
The Examiner made the following rejections:

Claim 16 is rejected under 35 U.S.C. 112, second paragraph, as being
indefinite for failing to particularly point out and distinctly claim the subject
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matter which applicant regards as the invention. Specifically, claim 16 is
redundant with claim 7.
Claims 11-15 stand rejected under 35 U.S.C §102(b) as being
anticipated by Comstock. Ans. 4.
Claims 1-10 and 16-18 stand rejected under 35 U.S.C §103(a) as
being unpatentable over Berfield and Comstock. Ans. 5.

ANALYSIS
Claim 16 as indefinite
The Examiner has rejected claim 16 as being indefinite, as it is
redundant with claim 7. Ans. 4. Appellant provides no arguments in this
regard but indicates in the Claims Appendix that claim 16 is canceled. The
amendments canceling claim 16 have not been entered by the Examiner.1
See Adv. Acts. mailed March 7, 2011, Feb. 22, 2011, Jan. 24, 2011, and
Dec. 21, 2010, see also 37 C.F.R. 41.33. We sustain the indefiniteness
rejection of claim 16 for the reasons set forth by the Examiner.
Claim 11-15 as anticipated by Comstock
Appellant argues claims 11-15 as a group, where claim 11 is the only
independent claim. See Br. 9-10. We select claim 11 as representative of
the group where claims 12-15 stand or fall with claim 11. See 37 C.F.R.
41.37(c)(1)(vii) (2011).
The Examiner finds that Comstock discloses an attachment including
a base 212 having first and second ends 236, two shaft securing straps 214

1 The Advisory Action mailed December 21, 2010, indicates that
Applicant’s amendment overcomes the indefiniteness rejection, however, the
amendment was never entered by the Examiner. See Adv. Act., Dec. 21,
2010.
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and an elongated, two-hand grip handle 210. Ans. 4, see also Comstock Fig.
5. The Examiner determined that claim 11 does not positively recite an
“appliance” with which the attachment is connected because the preamble
states “[a]n attachment for use with an appliance having a single shaft for
gripping and manipulation of the appliance by a user.” Br. 7.
Appellant argues that the preamble should not be ignored, and that the
appliance and its respective single shaft are positively recited “because there
is a structural recitation of an appliance with an attachment on a shaft.” Br.
10. In this way, Appellant asserts that claim 11 is not anticipated because
Comstock discloses neither an appliance, nor a shaft. Id.
A preamble limits the invention if it recites essential structure or is
“necessary to give, life, meaning, and vitality” to the claim. Pitney Bowes
Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999). A
preamble is not limiting “‘where a patentee defines a structurally complete
invention in the claim body and uses the preamble only to state a purpose or
intended use for the invention.’” Catalina Mktg. Int'l, Inc. v.
Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (quoting Rowe v.
Dror, 112 F.3d 473, 478 (Fed Cir. 1997)). Similarly, “[i]f the body of the
claim sets out the complete invention, and the preamble is not necessary to
give ‘life, meaning, and vitality’ to the claim, ‘then the preamble is of no
significance to claim construction because it cannot be said to constitute or
explain a claim limitation.’” Bristol-Myers Squibb Co. v. Ben Venue Labs.,
Inc., 246 F.3d 1368, 1373 (Fed. Cir. 2001) (quoting Pitney Bowes, Inc. v.
Hewlett-Packard Co, 182 F.3d 1298, 1305 (Fed. Cir. 1999)).
In the instant case, Appellant has defined a structurally complete
invention in the body of claim 11, namely an attachment device including a
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base, securing straps and a handle, which, as set forth in the preamble, is for
use with an appliance having a single shaft. (Emphasis added). The “shaft”
and “single shaft” recited in the body of the claim merely refer back to the
intended use (with an appliance) of the attachment recited in the preamble.
The “shaft” is neither a positively recited limitation of the claimed
attachment itself, nor does the element provide any relevant definite
constraints to the attachment such as to give “life, meaning, and vitality” to
the claimed attachment.
Accordingly, Appellant’s assertions that Comstock does not disclose
either luggage, or a shaft on the luggage, and that luggage is not an
appliance, are not persuasive of Examiner error in the underlying
anticipation rejection of claim 1 since such elements are not positively
recited limitations of claim 1. Br. 9.
Appellant further argues that Comstock fails to disclose a base
element with two shaft securing elements (referring to the embodiment
shown in Figures 1 and 2 of Comstock). Br. 10. Appellant asserts that
“[t]here is no shaft for the non-existent two shaft-securing elements” and
points out that element 36 is not a shaft securing element, but actually the
base plate. Id.
The Examiner, however, relies upon the embodiment in Comstock’s
Figure 5, having a base 212 and first and second securing straps 214. See
Ans. 5. Appellant’s argument does not address the embodiment and
elements of Comstock’s Figure 5 relied upon in the rejection. Appellant’s
arguments again rely upon the incorrect assumption that the shaft is
positively recited as a limitation in claim 11. Br. 10. We are not apprised of
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error in the Examiner’s findings with respect to the prior art, nor the
interpretation of intended use with respect to the appliance and shaft.
Appellant’s claim chart asserts, with respect to claim 11, that
Comstock’s hand grip handle 20 (in Comstock’s Figures 1 and 2), is a single
grip, as opposed to a two-hand grip handle. Br. 9. Appellant however
provides no evidence, explanation or technical reason why the grip 20, (or
the grip 210 in Figure 5 as relied upon by the Examiner), in Comstock could
not be grasped by a user with two hands. Ans. 5 We therefore agree with
the Examiner that the handle grip 210 disclosed in Comstock’s Figure 5
could be gripped with two hands. Id. at 5.
Appellant’s claim chart further contends that Comstock’s “circular
element”, i.e. the grip 20, is not elongated as called for in claim 11, but is in
fact a symmetrical circle. Br. 9. Our review of Comstock’s figures fails to
provide any indication that any of the grips 20, 110, 210, 310 are perfect
symmetrical circles. Each grip in fact appears to be slightly oval so that
each grip is elongated as the Examiner correctly determined. See Comstock
Figs. 1-7.
Comstock discloses all the elements of the claimed attachment and is
capable of being attached to an article such as luggage or an appliance. If a
prior art structure is capable of performing the intended use as recited in the
preamble, then it meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473,
1477 (Fed. Cir. 1997) (anticipation rejection affirmed based on Board’s
factual finding that the reference dispenser (a spout disclosed as useful for
purposes such as dispensing oil from an oil can) would be capable of
dispensing popcorn in the manner set forth in appellant’s claim 1 (a
dispensing top for dispensing popcorn in a specified manner)).
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For these reasons we are not apprised of Examiner error in the
anticipation rejection of claim 11. We affirm the Examiner’s rejection of
claim 11 as anticipated by Comstock and claims 12-15 fall therewith.
Appellant sets forth arguments relating to claims 1-4 under the
anticipation heading in their Appeal Brief. Br. 10-11. As these claims are
not rejected as anticipated under Comstock, but as obvious over Berfield in
view of Comstock, we address them under the separate patentability heading
and analysis below.

Claims 1-10 and 16-18 as unpatentable over Berfield and Comstock
As discussed above, Appellant presents separate arguments as to
specific limitations from claims 1-4. See Br. 10-11. We select claim 1 as
representative of the group where claims 5-10 and 16-18 stand or fall with
claim 1, and address Appellant’s arguments with respect to claims 2-4 in
turn. See 37 C.F.R. 41.37(c)(1)(vii) (2011).
Claims 1, 5-10 and 16-18
In contradistinction to the intended use interpretation of claim 11, the
Examiner interprets “a removable attachment on an appliance having a
single shaft” as positively reciting the appliance and single shaft as a
limitation in claim 1. Br. 7, (emphasis added.) To address this limitation,
the Examiner finds that Berfield discloses a vacuum having a single shaft
handle 14, and that the remaining limitations in claim 1 are taught by
Comstock. Ans 7., see also Berfield Fig. 3, col. 2, l. 18. The Examiner
reasoned that the Comstock attachment facilitated transporting and
manipulation of the vacuum handle 14 and that it would have been obvious
to one of skill in the art “to modify Berfield to include the claimed
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attachment to facilitate transporting of the machine and provide enhanced
directional control” over the vacuum handle 14. Ans. 5-6.
Appellant asserts that Comstock’s handle for lifting luggage is not
structurally analogous to a two-handed grip for the shaft of an appliance, and
that such a luggage handle could not be attached to a vacuum cleaner. Br.
11. Appellant also argues that Comstock does not disclose an elongated
grip. Id. at 10.
Appellant has provided no explanation as to why Comstock’s
attachment device would not work with, manipulate, or facilitate control
over an appliance as broadly claimed, as well as it does on luggage. The
Examiner pointed out that Comstock’s luggage grip is reasonably pertinent
to the problem of providing a removable attachment for gripping and
manipulation of an article by a user. Ans. 9. Appellant’s conclusory
statement that there is “absolutely no way” Comstock’s attachment “attached
onto an essentially horizontal handle can be combined with the showing of a
vacuum cleaner attachment” does not apprise us of error in the Examiner’s
determination. Br. 11.
With respect to Appellant’s contention that Comstock does not
disclose an elongated grip as recited in claim 1, we are not persuaded by this
argument because claim 2, and not claim 1, includes the limitation of an
“elongated handle.” Br. 10.
Accordingly, we sustain the Examiner’s rejection of claim 1 as
unpatentable over Berfield in view of Comstock, and claims 5-10 and 16-18
fall therewith.

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Claim 2
Appellant argues that Comstock fails to disclose that the two-hand
grip handle is “an elongated handle.” Br. 10. For the reasons discussed
supra under our anticipation analysis with respect to Comstock, we are not
persuaded of error in the Examiner’s findings and sustain the rejection of
claim 2 as unpatentable over Berfield in view of Comstock.
Claim 3
Appellant argues that “[t]he swivel handle of Comstock is essentially
circular and the circular element cannot have separate ends for gripping” as
called for in claim 3. Br. 10. We disagree. Neither claim 3, nor claim 1
from which it depends, recites any limitation as to the shape or geometrical
configuration of Appellant’s “two-hand grip handle.” Id. Indeed, a circular
element can be grasped on either end, as well as a linear element as the
Examiner points out. Ans. 6. We are not apprised of error in the
Examiner’s findings and sustain the rejection of claim 3 as unpatentable over
Berfield in view of Comstock.
Claim 4
Appellant argues that “[t]he swivel handle of Comstock is essentially
circular and the circular element cannot be a handle bar or a two-hand grip”
as called for in claim 4. Br. 11. The Examiner responds that handle portion
220 in Comstock can be defined and broadly viewed as a handle bar. Ans.
6, 8. We agree. Appellant has provided no evidence either from their
Specification or from extrinsic sources which imparts that a handle bar has
any particular geometrical shape or configuration. The term “handle bar” as
broadly claimed is not limited to shapes or configurations apart from circular
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handles, and thus we sustain the Examiner’s rejection of claim 4 as
unpatentable over Berfield in view of Comstock.

DECISION
For the above reasons, the Examiner’s rejection of claim 16 under 35
U.S.C. 112, second paragraph, as being indefinite for failing to particularly
point out and distinctly claim the subject matter which Appellant regards as
the invention, is AFFIRMED.
The Examiner’s rejection of claims 11-15 under 35 U.S.C §102(b) as
being anticipated by Comstock is AFFIRMED.
The Examiner’s rejection of claims 1-10 and 16-18 under 35 U.S.C
§103(a) as being unpatentable over Berfield and Comstock is AFFIRMED.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2009).

AFFIRMED

rvb