11469497 (P.T.A.B. Jun. 16, 2014)

Ex Parte Blum

Patent Trial and Appeal BoardJun 16, 2014

11469497 (P.T.A.B. Jun. 16, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte GARY JOSEPH BLUM ____________________ Appeal 2012-001220 Application 11/469,497 Technology Center 3700 ____________________ Before JOHN C. KERINS, MICHAEL L. HOELTER, and LISA M. GUIJT, Administrative Patent Judges. GUIJT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1–7, 11–14, and 21–29. Appeal Br. 3. Claims 8– 10 have been cancelled, and claims 15–20 are withdrawn. Id. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Appeal 2012-001220 Application 11/469,497 2 CLAIMED SUBJECT MATTER The claims are directed to a hand plane for planing wood, including, among other limitations, a frog that extends upwardly and forwardly from the throat. Claim 1 is reproduced below. 1. A hand plane for planing wood, comprising: a base with a sole and a throat, and opposite front and rear ends; a rear handle on the base adjacent the rear end; a frog secured to the base with a threaded member and having a longitudinal axis extending upwardly and forwardly from the throat; a cutting blade secured to the frog with at least one threaded fastener to cut the wood during planing; and a pair of screws extending through the base and into the frog to adjustably mount the front to the base and thereby allow depth and lateral positing of the blade. PRIOR ART McCue US 1,776,661 Sept. 23, 1930 Filia US 3,028,892 Apr. 10, 1962 Gilbert US 4,015,649 Apr. 5, 1977 Lee US 5,694,696 Dec. 9, 1997 Schwarz et al. US 2004/0074098 A1 Apr. 22, 2004 Saunders US 2005/0060897 A1 Mar. 24, 2005 GROUNDS OF REJECTION A. Claims 1–4, 11–14, 21 and 23–29 have been rejected under 35 U.S.C. § 103(a) as being obvious over Schwarz and Filia; B. Claim 5 has been rejected under 35 U.S.C. § 103(a) as being obvious over Schwarz, Filia, and Saunders; C. Claim 6 has been rejected under 35 U.S.C. § 103(a) as being obvious over Schwarz, Filia, and Gilbert; Appeal 2012-001220 Application 11/469,497 3 D. Claim 7 has been rejected under 35 U.S.C. § 103(a) as being obvious over Schwarz, Filia, and McCue; and E. Claim 22 has been rejected under 35 U.S.C. § 103(a) as being obvious over Schwarz, Filia, and Lee. OPINION “On Appeal, Appellant seeks review of the rejections of independent claims 1 and 24, with the dependent claims rising and falling with their parent independent claims.” Appeal Br. 7. The Examiner finds that Schwarz discloses the limitations of claims 1 and 24, except that Schwarz does not suggest a frog and the claim limitations involving a frog. Ans. 5. The Examiner finds that Filia teaches a frog, as claimed, and concludes that it would have been obvious to modify the plane disclosed in Schwartz with the frog taught in Filia. Id. In arriving at this conclusion, the Examiner interprets the disclosure in Filia of “a bridge or frog 16” to mean “a bridge and not a frog with element (19) being the frog.” Ans. 15, citing Filia col. 2, ll. 10–12 (emphasis added). We note that element 19 is defined in Filia as “a cap or plate 19,” which is mounted on the frog 16. Filia, col. 2, ll. 9–16. The Examiner reasons that because the cap, as disclosed in Filia, meets the structural limitations of the frog, as claimed, “one could interpret [the cap] (19) as being a frog.” Ans. 16. The Examiner further finds that Filia teaches a “frog (19) having a longitudinal axis extending upwardly and forwardly (i.e. to the left as seen in Figure 1).” Ans. 5, 13. Appellant has persuasively explained that the Examiner erred in interpreting Filia’s cap 19 as a frog, as claimed. We agree with the position argued by Appellant for essentially the reasons explained in the Appeal and Appeal 2012-001220 Application 11/469,497 4 Reply Briefs, that “anyone skilled in the hand plane art [would] read Filia and understand that the frog is element 16, and not element 19, as suggested by the Examiner.” Appeal Br. 9–10. We also agree with Appellant’s argument that the Examiner erred in finding that Filia teaches a frog that extends upwardly and forwardly. Reply Br. 3–4, citing Filia, col. 2, ll. 7–9, Fig. 1. To the contrary, the frog 16, as well as the cap 19, as disclosed in Filia, extend upwardly and rearwardly.1 In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the Examiner to establish a factual basis to support the legal conclusion of obviousness. See In re Fine, 837 F.2D 1071, 1073 (Fed. Cir. 1988). For the foregoing reasons, we determine that the Examiner’s conclusion of obviousness is not supported by fact, and accordingly, we reverse the Examiner’s rejection of claims 1–4, 11–14, 21, and 23–29. The deficiencies of Filia, as discussed above, are not remedied by the disclosures of any one of Saunders, Gilbert, McCue, or Lee, and therefore, we also reverse the rejections of claims 5–7 and 22. DECISION The Examiner's decision rejecting claims 1–7, 11–14, and 21–29 is REVERSED. REVERSED mls 1 Filia provides directional orientation by disclosing a plane “having handles 11 and 12 at the front and rear thereof.” Filia, col. 2, ll. 7–8.