Ex Parte Van Deursen

Board of Patent Appeals and Interferences

Aug 19, 2009

11168451 (B.P.A.I. Aug. 19, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GARY E. VAN DEURSEN
____________

Appeal 2009-001534
Application 11/168,451
Technology Center 3700
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Decided: August 19, 2009
____________

Before JENNIFER D. BAHR, JOHN C. KERINS, and STEFAN
STAICOVICI, Administrative Patent Judges.

KERINS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2009-001534
Application 11/168,451

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STATEMENT OF THE CASE
Gary E. Van Deursen (Appellant) seeks our review under 35 U.S.C. §
134 of the Examiner’s final rejection of claims 1-3, 5, 6, and 8-31. We have
jurisdiction under 35 U.S.C. § 6(b) (2002). An oral hearing was conducted
on July 23, 2009, with Benjamin L. Kiersz, Esq., appearing on behalf of
Appellant.

SUMMARY OF DECISION
We REVERSE.

THE INVENTION
Appellant’s claimed invention is directed to a combination utility
knife and sporting knife having a longitudinal knife handle, the utility blade
being releasably carried by a carrier that is movably mounted relative to the
handle to move the utility knife between a storage position and an operative
position, and the sporting blade being pivotally connected to the handle and
being configured to have a cutting edge and a dull edge, with a convex
forward portion of the cutting edge intersecting the dull edge to form a
forward point. (Appeal Br., Claims Appendix, claims 1, 2, 16 and 19).
Claim 2, reproduced below, is representative of the claimed subject
matter:
2. A combination utility knife and sporting knife,
comprising:

a longitudinal knife handle;

a utility blade having a trapezoidal shape, a longest
side of which comprises a linear cutting edge;
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a utility blade carrier movably mounted relative to
the handle, the utility blade being releasably
carried by the utility blade carrier to enable the
utility blade to be selectively released from the
utility blade carrier so that a replacement utility
blade may be carried by the utility blade carrier,

the utility blade and utility blade carrier being
movable together relative to the handle between 1)
a storage position wherein said linear cutting edge
is confined within said handle, and 2) an operative
position wherein said linear cutting edge and a tip
of the utility blade at an end of the linear cutting
edge are exposed;

a sporting blade pivotally connected to the handle,
the sporting blade having a cutting edge and an
opposite dull edge, the cutting edge having a
convex forward portion, the convex forward
portion of the cutting edge intersecting with the
dull edge to form a forward point of the sporting
blade.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Cromoga US 2,906,021 Sep. 29, 1959
Mahon US 4,078,272 Mar. 14, 1978
Gorst US 4,939,839 Jul. 10, 1990
Cassady US 5,293,690 Mar. 15, 1994
Collins US 5,572,793 Nov. 12, 1996
Black US Des. 386,381 Nov. 18, 1997
Keating US D438,443 S Mar. 6, 2001
Taylor US D482,258 S Nov. 18, 2003

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The Examiner has rejected:
(i) claims 1 and 23 under 35 U.S.C. § 103(a) as being unpatentable
over Black in view of Collins, Mahon, Cromoga and Taylor;
(ii) claims 2, 3, 5, 6, 8-13, 15-19 and 24-31 under 35 U.S.C. § 103(a)
as being unpatentable over Black in view of Collins, Mahon, Cromoga,
Taylor and Gorst;
(iii) claims 20 and 21 under 35 U.S.C. § 103(a) as being unpatentable
over Black in view of Collins, Mahon, Cromoga, Taylor, Gorst and Keating;
(iv) claim 14 under 35 U.S.C. § 103(a) as being unpatentable over
Black in view of Collins, Mahon, Cromoga, Taylor, Gorst and Cassady; and
(v) claim 22 under 35 U.S.C. § 103(a) as being unpatentable over
Black in view of Collins, Mahon, Cromoga, Taylor, Gorst, Keating and
Cassady.

ISSUES
The Examiner concluded that it would have been obvious to replace
the sheetrock saw blade disclosed in the Black patent with the sporting knife
blade disclosed in the Collins patent, in order to create a versatile knife that
is capable of cutting sheetrock as well as other materials. Appellant
contends that the sporting knife blade of Collins is especially ill-suited to
saw sheetrock, that there is no reason to replace the sheetrock saw blade
with a sporting knife blade, and that, if one were to do so, it would eliminate
the synergistic effect of having, on a single knife, two drywall cutting tools,
namely a utility blade and a sheetrock saw.
The issue presented is whether Appellant has demonstrated that the
Examiner erred in concluding that the modification to the Black knife to
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replace the sheetrock saw blade with a sporting knife blade would have been
obvious to a person of ordinary skill in the art.

FINDINGS OF FACT
The following enumerated findings of fact (FF) are supported by at
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
FF 1. The Black patent discloses a sheetrock utility knife comprising
a knife handle, a slidable utility blade, and a pivotable sheetrock saw, each
of the utility blade and sheetrock saw having a stored position and an
operative position, and each being extendable from opposite ends of the
knife handle. (Black, Figs. 1-9, Claim and Description).
FF 2. The Collins patent discloses a locking knife and sheath having a
blade configured generally as a sporting knife-type blade having a cutting
edge including a serrated section, and an opposing dull edge, with a convex
forward portion of the cutting edge intersecting the dull edge to form a
forward point on the blade. (Collins, Fig. 7).
FF 3. The Mahon patent discloses a belt buckle device having a
sporting knife-type blade and a “utility blade” or multi-tool implement
pivotally attached thereto, such that they each may be pivoted between a
stored position at the interior of the belt buckle, and an operative position at
the exterior of the belt buckle. (Mahon, Figs. 2, 3; col. 2, ll. 8-33).
FF 4. The Cromoga patent discloses, in one embodiment, a skinning
knife having a handle 30 and a sporting blade 28 fixedly attached thereto,
with the handle also housing a utility knife blade 40 whose cutting edge is
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exposed in a jaw-like recess 38 formed in the handle. (Cromoga, Fig. 3; col.
2, ll. 9-26).
FF 5. The Taylor patent illustrates a dual folding saw having a
sporting-type blade and a saw-like blade, each pivotally connected to a knife
handle to be moved from a stored position to an operative position. (Taylor,
Figs. 1-9).

PRINCIPLES OF LAW
A claim is unpatentable under 35 U.S.C. § 103(a) if “the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.” The question of obviousness is resolved on the
basis of underlying factual determinations including (1) the scope and
content of the prior art, (2) any differences between the claimed subject
matter and the prior art, (3) the level of skill in the art, and (4) where in
evidence, so-called secondary considerations. Graham v. John Deere Co.,
383 U.S. 1, 17-18 (1966). See also KSR Int'l Co. v. Teleflex Inc., 550 U.S.
398, 406-07 (2007) (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”).
The court in KSR also noted that an explicit analysis demonstrating an
apparent reason to combine known elements in the fashion set forth in the
claims at issue should be presented in an obviousness determination. KSR
Int’l., 550 U.S. at 418. See also In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006) (“[R]ejections on obviousness grounds cannot be sustained by mere
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conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness”).
“A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553
(Fed. Cir. 1994).

ANALYSIS
Claims 1 and 23--Obviousness--Black in view of Collins, Mahon, Cromoga
and Taylor

The Examiner relies on the Black patent as disclosing all limitations
in claim 1 with the exception that the pivotally movable blade in Black does
not have a cutting edge that includes a convex forward portion which
intersects with an opposing dull edge to form a forward point on the blade.
(FF 1)(Answer 3-4). The Examiner cites to the Collins patent as disclosing a
pivoting blade having both smooth and serrated cutting edge portions, and a
convex forward portion of the cutting edge intersecting an opposing dull
edge to form a forward point on the blade. (FF 2)(Answer 4). The patents
to Mahon, Cromoga and Taylor evidence, according to the Examiner, that
the concept of providing a utility blade in combination with a folding blade
or sporting blade is well known in the art. (FF 3-5)(Answer 4).
The Examiner concludes, in light of this evidence, that it would have
been obvious to a person of ordinary skill in the art to provide the knife of
Black with a blade of the type disclosed in Collins, “in order to equip one of
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the blades with two different cutting edges that could be used to cut different
materials other than sheet rocks [sic., sheetrock].” (Answer 5). The
Examiner asserts that the saw blade of Black can be replaced with another
type of blade, such as that in Collins, “since Mahon, Cromoga and Taylor
teach that a double bladed knife could have a sporting blade in combination
with a utility blade for creating a versatile knife that can be used for cutting
different materials.” (Id.).
This rationale is in the nature of an explicitly-stated apparent reason to
combine the teachings of Collins with Black, to replace a known cutting
tool, namely the saw disclosed by Black, with a known element, namely a
sporting blade, of the knife disclosed in Collins. However, this line of
reasoning fails to take into account why the particular saw blade disclosed in
Black was provided in tandem with the utility blade on the same knife
handle. While the Black patent, being a design patent, does not discuss this
in any detail, Appellant has identified the Canino patent (US 4,890,387), as
evidencing that a utility knife and sheetrock saw blade are synergistically
provided on a single knife handle, because sheetrock or drywall is generally
scored and/or cut by a utility knife, and sawed with a saw blade to a desired
configuration prior to installation. (Appeal Br. 12-13). The Examiner does
not contest this, and instead counters that the Collins blade is capable of
cutting sheetrock, such that the Black device as modified by Collins would
remain capable of cutting sheetrock, as well as other materials. (Answer 8).
Appellant urges that the knife blade of Collins, despite the presence of
a serrated section thereon, would be ill-suited for sawing sheetrock, and that
Black thus teaches away from the proposed modification to replace the saw
blade with the Collins sporting blade, as it would impede the functionality of
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Black’s synergistic use, on the same knife, of a utility blade for
scoring/cutting sheetrock, and a sheetrock saw blade for effectively sawing
sheetrock. (Reply Br. 5). We agree. The general concept of providing a
sporting blade in combination with another type of cutting blade, such as a
utility blade, as evidenced by Mahon, Cromoga, and Taylor, is just that, a
general concept, and does not aid in supporting a rationale or reason to
modify the Black device such that the resulting device is not capable of
performing as originally intended.
The Examiner has presented no technically sound reason with any
rational underpinnings to modify the Black sheetrock knife to replace the
sheetrock saw with a sporting knife blade, particularly in view of the fact
that the proposed replacement would effectively destroy the synergy and
efficiency of having two sheetrock cutting and shaping tools on the same
knife. In all, it appears that the only reason to make such a modification is
simply to end up with a knife that meets all limitations of claim 1.
Accordingly, the rejection of claims 1 and 23 as being obvious over
Black in view of Collins, Mahon, Cromoga and Taylor will not be sustained.

Claims 2, 3, 5, 6, 8-13, 15-19 and 24-31--Obviousness--Black in view of
Collins, Mahon, Cromoga, Taylor and Gorst

This rejection is founded upon the erroneous conclusion that it would
have been obvious to modify the knife of Black to replace its saw blade with
the sporting blade of Collins. The Gorst patent is cited as teaching
additional limitations present in the rejected claims, and does not overcome
the basic deficiency of the Black and Collins patents in rendering the
claimed invention obvious.
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The rejection of claims 2, 3, 5, 6, 8-13, 15-19 and 24-31 under 35
U.S.C. § 103(a) will not be sustained.

Claims 20 and 21--Obviousness--Black in view of Collins, Mahon,
Cromoga, Taylor, Gorst and Keating

This rejection also relies upon the erroneous conclusion that it would
have been obvious to modify the knife of Black to replace its saw blade with
the sporting blade of Collins. The Keating patent is cited as teaching
additional limitations present in the rejected claims, and does not overcome
the basic deficiency of the Black and Collins patents in rendering the
claimed invention obvious.
The rejection of claims 20 and 21 under 35 U.S.C. § 103(a) will not
be sustained.

Claim 14--Obviousness--Black in view of Collins, Mahon, Cromoga, Taylor,
Gorst and Cassady

This rejection additionally relies upon the erroneous conclusion that it
would have been obvious to modify the knife of Black to replace its saw
blade with the sporting blade of Collins. The Cassady patent is cited as
teaching additional limitations present in claim 14, and does not overcome
the basic deficiency of the Black and Collins patents in rendering the
claimed invention obvious.
The rejection of claim 14 under 35 U.S.C. § 103(a) will not be
sustained.

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Claim 22--Obviousness--Black in view of Collins, Mahon, Cromoga, Taylor,
Gorst, Keating and Cassady
This rejection also relies upon the erroneous conclusion that it would
have been obvious to modify the knife of Black to replace its saw blade with
the sporting blade of Collins. The Gorst, Keating and Cassady patents are
cited as teaching additional limitations present in claim 22, and do not
overcome the basic deficiency of the Black and Collins patents in rendering
the claimed invention obvious.
The rejection of claim 22 under 35 U.S.C. § 103(a) will not be
sustained.

CONCLUSION
Appellant has established that reversible error exists in the rejections
of claims 1-3, 5, 6 and 8-31 under 35 U.S.C. § 103(a).

ORDER
The decision of the Examiner to reject claims 1-3, 5, 6, and 8-31 is
reversed.

REVERSED

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