Ex Parte Droese

Patent Trial and Appeal Board

Jul 25, 2017

13698735 (P.T.A.B. Jul. 25, 2017)

United States Patent and Trademark Office
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.
13/698,735 12/10/2012 Joachim Droese 30482 4110
535 7590
KF ROSS PC
311 E York St
Savannah, GA 31401-3814
EXAMINER
MICHALSKI, SEAN M
ART UNIT PAPER NUMBER
3724
NOTIFICATION DATE DELIVERY MODE
07/27/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
savannah@kfrpc.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOACHIM DROESE
Appeal 2016-004785
Application 13/698,735
Technology Center 3700
Before: CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a Final Rejection of
claims 1,3, and 4. Claims 2 and 5—9 have been canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2016-004785
Application 13/698,735
CLAIMED SUBJECT MATTER
The claims are directed to a method of making a knife with an oblique
bolster. Independent claim 1, the sole independent claim on appeal, is
representative of the claimed subject matter and recites:
1. A method of making a knife with a blade, a
bolster, and a tang, from a single flat piece of
steel, the method comprising the steps of:
upsetting the flat piece to form in the region
between the blade and the tang a bead whose
longitudinal axis extends obliquely to the knife
longitudinal axis and thereafter
forging the bead into a bolster that has at
least one side edge extending obliquely to the
knife longitudinal axis such that a longitudinal
axis of the bead forms an angle of 5° to 60° to
the longitudinal axis of the knife.
REFERENCES
Cutts US 2,795,976 June 18, 1957
Brothers GB 603,868 June 24, 1948
Sachsische DE 181,703 Feb. 27, 1907
REJECTIONS
Claims 1,3, and 4 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Brothers and Sachsische. Final Act. 3.
Claims 1,3, and 4 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Cutts and Sachsische. Id. at 4.1
1 In the Final Office Action, the Examiner also rejected claim 1 as anticipated
by Cutts, but withdrew that rejection in the Examiner’s Answer. Ans. 5.
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Appeal 2016-004785
Application 13/698,735
ANALYSIS
Claims 1, 3, and 4—Obviousness over Brothers and Sachsische
Independent claim 1 recites a method of making a knife with a blade,
a bolster, and a tang, from a single piece of steel, comprising the steps of
“upsetting the flat piece to form in the region between the blade and the tang
a bead whose longitudinal axis extends obliquely to the knife longitudinal
axis,” and thereafter forging the bead into a bolster having at least one side
edge that is oblique to the knife’s longitudinal axis. App. Br. 12 (Claims
App.). According to the Examiner, Brothers teaches a method of making a
knife from a flat piece of steel that includes upsetting the steel to form a
bead and thereafter forging the bead into a bolster. Final Act. 3 (citing
Brothers, Figs. 2, 3). The Examiner acknowledges that “[t]he bead is not
oblique per se,” but asserts that “[t]here is nothing technically complicated
about selecting one angle over another.” Final Act. 3. The Examiner also
refers to the selection of the bead angle as “amorphous and irrelevant.”
Final Act. 5.
The Examiner relies on Sachsische to teach a bolster formed at an
oblique angle to the axis of the knife. Final Act. 3 (citing Sachsische, Fig.
1). The Examiner concludes that
[i]t would have been obvious to one of ordinary skill in the art to
forge the bolster of Brothers at an oblique angle [of] about 30
degrees from the longitudinal axis of a knife as taught to be a
normal angle for such bolsters by [Sachsische], since it has been
held that changing the size or range of an article is not ordinarily
a matter of invention.
Final Act. 4 (citing In re Rose, 220 F.2d 459 (CCPA 1955); In re Yount, 171
F.2d 317 (CCPA 1948)). Appellant responds that “simplicity in an
invention is not tantamount to obviousness.” App. Br. 9.
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Appeal 2016-004785
Application 13/698,735
There appears to be no dispute that Brothers does not teach forming a
bead at an oblique angle to the longitudinal axis of the knife, and thereafter
forging the bead into a bolster for the knife. Sachsische teaches a finished
knife having at least a partially oblique bolster, but this is not the same as
teaching that the bead from which the bolster is made is oblique. Thus,
neither reference teaches the limitation requiring making an oblique bead.
The Examiner’s rationale for finding obviousness despite this omission, that
there is “nothing technically complicated” about selecting one angle for the
bead over another, is insufficient. As the Federal Circuit has held,
“simplicity does not establish obviousness.” Sensonics, Inc. v. Aerosonic
Corp., 81 F.3d 1566 (Fed. Cir. 1996). On the contrary, “simplicity,
particularly in an old and crowded art, may argue for rather than against
patentability.” Outside the Box Innovations, LLC v. Travel Caddy, Inc., 695
F.3d 1285, 1298 (Fed. Cir. 2012) (quoting In reMeng, 492 F.2d 843, 848
(CCPA 1974).
To the extent that the Examiner is relying on Rose and Yount to
compensate for the lack of teaching of forming an oblique bead, we
disagree. These cases hold that the size of an article under consideration is
not ordinarily a matter of invention. Rose, 220 F.2d at 463; Yount, 171 F.2d
at 318. The issue here, however, is the angle of the bead relative to the
longitudinal axis of the knife, not the size of the bead. Therefore, these
cases are inapposite.
Because the two cited references, alone or in combination, fail to
teach or suggest all the limitations of claim 1, and the Examiner has not
provided adequate justification for finding obviousness despite this failure,
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Appeal 2016-004785
Application 13/698,735
we do not sustain the Examiner’s rejection of claim 1, and its dependent
claims 3 and 4, as unpatentable over Brothers and Sachsische.
Claims 1, 3, and 4—Obviousness over Cutts and Sachsische
Appellant does not separately argue the claims on appeal. See App.
Br. 5—7. Therefore, we select claim 1 as representative and decide the
appeal of this rejection on the basis of claim 1 alone. 37 C.F.R.
§ 41.37(c)(l)(iv).
The Examiner finds that upset portion 18 in Figure 4 of Cutts
corresponds to the claimed bead, and that “the left border of [the] bead seen
in figure 4 (which parallels the axis thereof) is angled at about 15 degrees
relative to the longitudinal axis of the blade blank.” Ans. 4. The Examiner
further asserts that it would have been obvious
to forge the bolster of Cutts at an oblique angle [of] about 30
degrees from the longitudinal axis of a knife as taught to be a
normal angle for such bolsters by [Sachsische], since it has been
held that changing the size or range of an article is not ordinarily
a matter of invention.
Ans. 4.
Appellant disputes that Figure 4 of Cutts depicts a bead having a
longitudinal axis that extends obliquely to the knife longitudinal axis. App.
Br. 7. Appellant contends, instead, that “the line delimiting the upset area 18
to the right is perfectly perpendicular to the knife longitudinal axis.” App.
Br. 7. Appellant also argues that Cutts’ finished bolster is perpendicular,
suggesting that the bead from which the bolster was made must have been
perpendicular as well. App. Br. 5—6; Reply Br. 1. Finally, Appellant argues
that “the idea of using upsetting to create an angled bolster in a knife is
neither shown nor suggested by the art.” Reply Br. 3.
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Appeal 2016-004785
Application 13/698,735
There is no indication that the Examiner erred in rejecting claim 1 as
obvious over Cutts and Sachsische. As an initial matter, it is clear that
“upset portion 18” in Figure 4 of Cutts is made by an upsetting process, as
claim 1 requires. See Cutts 2:71—3:11. To determine the angle of the
“longitudinal axis” of this portion, the Examiner focuses on the angle of its
left edge. Ans. 4. While Appellant prefers to focus on the right edge of the
portion to determine the angle, such preference is not indicative that the
Examiner erred by addressing Cutts’ left edge. Neither the claims nor the
rest of the Specification expressly defines the longitudinal axis so as to
preclude the Examiner’s interpretation. Further, claim 1 expressly indicates
that the “extending obliquely” limitation is satisfied by only “at least one
side.” Thus, based on the current record, it is reasonable to conclude that
Cutts’ oblique edge would define the area’s longitudinal axis.
We are also not persuaded that Cutts’ perpendicular bolster means that
the bead from which it is made must be perpendicular. As discussed in the
Specification, it was known in the art to forge an oblique bolster from a
perpendicular bead. See Spec. 1:17—24. Appellant does not explain why it
would not be equally possible to forge a perpendicular bolster from an
oblique bead. We also note that the Examiner relies on Sachsische, not
Cutts, to teach an angled bolster. Ans. 4. Finally, we are not persuaded by
Appellant’s contention that “the idea of using upsetting to create an angled
bolster in a knife is neither shown nor suggested by the art.” Reply Br. 3.
On the contrary, the Specification admits as much. See Spec. 1:17—24
(stating that “it is known” to upset a flat piece to form a bead and then forge
the bead to form a bolster that may extend obliquely to the longitudinal axis
of the knife).
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Appeal 2016-004785
Application 13/698,735
Accordingly, and based on the record presented, we are not persuaded
the Examiner erred in rejecting claims 1,3, and 4 as unpatentable over Cutts
and Sachsische, we sustain the Examiner’s rejection.
DECISION
We REVERSE the Examiner’s decision to reject of claims 1, 3, and 4
as unpatentable over Brothers and Sachsische.
We AFFIRM the Examiner’s decision to reject of claims 1, 3, and 4 as
unpatentable over Cutts and Sachsische.
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
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