Ex Parte Gibson et al

Patent Trial and Appeal Board

Oct 31, 2016

13005577 (P.T.A.B. Oct. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/005,577 01/13/2011
22045 7590 11/02/2016
BROOKS KUSHMAN P.C.
1000 TOWN CENTER
TWENTY-SECOND FLOOR
SOUTHFIELD, MI 48075
FIRST NAMED INVENTOR
ROYDEN H. GIBSON
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.
288903-00565 2818
EXAMINER
HONG, DANNY
ART UNIT PAPER NUMBER
3727
NOTIFICATION DATE DELIVERY MODE
11/02/2016 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):
docketing@brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROYDEN H. GIBSON, MARCUS E. NORDEN,
SAM D. HECTOR, JIM H. BENNETT, and CARL R. WALKER
Appeal2015-001888 1
Application 13/005,5772
Technology Center 3700
Before PHILIP J. HOFFMANN, JAMES A. WORTH, and
CYNTHIA L. MURPHY, Administrative Patent Judges.
WORTH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-11. We have jurisdiction under 35 U.S.C. §§ 134
and 6(b).
We REVERSE.
1 Our decision refers to the Appellants' Appeal Brief ("Appeal Br.," filed
July 1, 2014) and Reply Brief ("Reply Br.," filed Nov. 17, 2014), and the
Examiner's Final Office Action ("Final Act.," mailed May 7, 2014) and
Answer ("Ans.," mailed Oct. 23, 2014).
2 According to Appellants, the real party in interest is The Ames
Companies, Inc. (Appeal Br. 1 ).
Appeal2015-001888
Application 13/005,577
Introduction
Appellants' disclosure "relates to a wood tool handle having an
overmold and, more specifically, to a wood handle wherein substantially all
of the handle surface is protected by the overmold." (Spec. 1, 11. 5-7).
Claim 1, reproduced below, is the sole independent claim on appeal
and is representative of the subject matter on appeal:
1. A tool handle assembly comprising:
an elongated wood member having a first
end, a medial portion and a second end; and
an overmold applied to substantially all of
said medial portion and said second end.
(Appeal Br., Claims App.)
Rejections on Appeal
The Examiner maintains, and Appellants appeal, the following
rejections:
I. Claims 1--4, 8, and 9 stand rejected under pre-AIA
35 U.S.C. § 102(b) as being unpatentable by Macioce
(US 2003/0029278 Al, pub. Feb. 13, 2003).
II. Claims 5 and 10 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Macioce and Olroyd
(US 8,506,532 B2, iss. Aug. 13, 2013).
III. Claims 6 and 11 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Macioce and
Keathley (US 4,287 ,640, iss. Sept. 8, 1981 ).
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Appeal2015-001888
Application 13/005,577
Rejection I (Anticipation)
ANALYSIS
Independent claim 1 and dependent claims 2--4, 8, and 9
We are persuaded by Appellants' argument that Macioce fails to
disclose "an overmold applied to substantially all of said medial portion and
said second end," as recited by independent claim 1. The Examiner relies on
grip cover 16 of Macioce, depicted below as annotated by the Examiner:
Figure 1 of Macioce as annotated by the Examiner
(Final Act. 2). In particular, Appellants argue that the Examiner; s implicit
construction of "medial portion" is inconsistent with the Specification (see
Appeal Br. 9). Appellants point to a portion of the Specification, which
states as follows:
[t]he handle member first end 26 may have a cross-sectional
area that is smaller than the handle member medial portion 28
immediately adjacent the handle member first end 26.
Preferably, the transition between the handle member first end
26 and the handle member medial portion 28 is a flange 32 that
extends generally perpendicular to the longitudinal axis of the
wood 22.
The handle member medial portion 28 includes the
portion of the wood member 22 below ... the flange 32 to the
handle member second end 30
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Appeal2015-001888
Application 13/005,577
(Spec. 4, 11. 6-9). Although the description following the word "preferably"
represents a preferred embodiment, the portion of the disclosure preceding
the word "preferably" is definitional, i.e., medial portion 28 is "immediately
adjacent" first end 26. However, Macioce's overmold is not adjacent the
first end.
The Examiner reasons that "regardless of definition," Macioce covers
"substantially all" of the medial portion, as recited (Ans. 5). On the facts of
this case, we find insufficient evidence that Macioce' s overmold covers
"substantially all" of the medial portion. First, one cannot rely on figures for
mathematical values unless drawn to scale. Hockerson-Halberstadt, Inc. v.
Avia Group Int'!, 222 F.3d 951, 956 (Fed. Cir. 2000). Second, even looking
at the proportions of the figures, we do not agree with the Examiner's
findings. At most, Macioce' s overmold covers half of the handle portion
adjacent the handle's first end (i.e., half of the medial portion of the handle).
Therefore, we do not sustain the Examiner's rejection under§ 102 of
independent claim 1, and of claims 2--4, 8, and 9, which depend therefrom.
Rejections II and III (Obviousness)
Claims 5-7, 10, and 11 depend from claim 1, and stand rejected under
§ 103 as obvious over Macioce and one of Olroyd and Keathley. Neither
Olroyd nor Keathley remedies the deficiency in the Examiner's rejection
under§ 102 of independent claim 1. Nor does the Examiner supply
reasoning as to why it would have been obvious to cover the entire medial
portion of the handle. Accordingly, we do not sustain the Examiner's
rejection under§ 103 of claims 5-7, 10, and 11 over Macioce and one of
Olroyd and Keathley.
4
Appeal2015-001888
Application 13/005,577
DECISION
The Examiner's decision to reject claims 1-11 is reversed.
REVERSED
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