Ex Parte Herr et al

Patent Trial and Appeal Board

Jul 27, 2017

13759345 (P.T.A.B. Jul. 27, 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.
13/759,345 02/05/2013 Jeffrey Herr 20123.0001USC1 7137
52835 7590 07/31/2017
HAMRE, SCHUMANN, MUELLER & LARSON, P.C.
45 South Seventh Street
Suite 2700
MINNEAPOLIS, MN 55402-1683
EXAMINER
HONG, DANNY
ART UNIT PAPER NUMBER
3727
NOTIFICATION DATE DELIVERY MODE
07/31/2017 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):
PTOMail @hsml. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFFREY HERR and MATT HERR
Appeal 2016-004793
Application 13/759,345
Technology Center 3700
Before: CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-004793
Application 13/759,345
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
19-41.1 Claims 1—18 are canceled. Br. 17 (Claims App.). We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
THE INVENTION
The claims are directed to a tactical entry tool. Spec. 1:17. Claims
19, 29, 36, and 37 are independent. Br. 17—21 (Claims App.). Claim 19,
reproduced below (and slightly reformatted for clarity), is illustrative of the
claimed subject matter:
19. A tactical entry tool comprising:
a shaft; and
a head portion attached to a first end of the shaft,
the head portion including
two heads with each head including
a head shaft extending from the shaft
to form a ‘Y’ shaped structure and
a breaker portion attached to the head
shaft at an opposite end from which the
head shaft is connected to the shaft,
wherein the head portion is configured to create an
entry point for an operator through a building
structure.
REFERENCES
Boyd-Dunlop
Petrick
Lebessis
Herr US 8,387,487 B2
US 4,072,197
US 4,274,202
US 5,497,556
Feb. 7, 1978
June 23, 1981
Mar. 12, 1996
Mar. 5,2013
1 See note 2, infra.
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Appeal 2016-004793
Application 13/759,345
REJECTIONS2
Claims 19-23, 26—32, and 35—40 stand rejected3 on the ground of
nonstatutory double patenting over claims 1—18 of Herr in view of Boyd-
Dunlop. Ans. 3.
Claims 19-21, 29—32,4 36—38, and 41 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Petrick. Ans. 4.5
Claims 22, 23, 27, 28, and 35 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Petrick and Lebessis. Ans. 6.6
2 We understand the Examiner statement on page 8 of the Answer to indicate
withdrawal of the § 1031a) rejections of claims 21—23. 27. 28. 32. 35. 39. and
40 set forth in the Final Action. The Examiner objects to claims 24, 25, 33,
34, 39, and 40 as dependent on a rejected base claim, but deems these claims
allowable if rewritten in independent form including all of the limitations of
the base claim and any intervening claims, and, presumably, the double­
patenting rejection is overcome. Ans. 7. Claim 26 has not been expressly
rejected, but also has not been deemed allowable if rewritten in independent
form.
3 We understand the Examiner’s use of the term “provisional” to be
misplaced as this rejection is based on an issued patent. MPEP § 804(I)(B).
4 Claims 21 and 32 were added to this rejection in the Examiner’s Answer as
new grounds of rejection. Ans. 6.
5 Although the Examiner’s Answer includes claim 38 as subject to this
rejection, the May 23, 2014, Final Action did not. Final Act. 6. Because
claim 38 is omitted from the list of claims that the Examiner’s Answer
identifies as allowable if rewritten in independent form, we assume that the
rejection as stated in the Examiner’s Answer—which includes claim 38—is
correct.
6 The Examiner designated this rejection as new grounds of rejection.
Ans. 6.
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Appeal 2016-004793
Application 13/759,345
ANALYSIS
Claims 19—23, 26—32, and 35—40—Double Patenting
Over Claims 1—18 of Herr in view of Boyd-Dunlop
The Examiner provisionally rejects claims 19-23, 26—32, and 35—40
on the ground of nonstatutory double patenting over claims 1—18 of Herr in
view of Boyd-Dunlop. Final Act. 5. Appellants do not present any
argument pertaining to this rejection. Therefore, we summarily sustain this
rejection. See Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI2010)
(precedential) (“If an appellant fails to present arguments on a particular
issue—or , more broadly, on a particular rejection—the Board will not, as a
general matter, unilaterally review those uncontested aspects of the
rejection.”); Manual of Patent Examining Procedure § 1205.02 (9th ed.,
Rev. 7, Nov. 2015) (“If a ground of rejection stated by the [Ejxaminer is not
addressed in the [Ajppellant’s brief, [Ajppellant has waived any challenge to
that ground of rejection and the Board may summarily sustain it, unless the
examiner subsequently withdrew the rejection in the [Ejxaminer’s
[Ajnswer.”).
Claims 19—21, 29—32, 36—38, and 41—Anticipated by Petrick
Claims 19—21 and 36—38
Independent claims 19, 36, and 37 each recite, in addition to structural
limitations, the following functional limitation: “wherein the head portion is
configured to create an entry point for an operator through a building
structure.” Br. 17, 20-21 (Claims App.). Claims 20, 21, and 38 depend
from claim 19. Id. at 17, 21. The Examiner finds that Petrick discloses all
of the structural limitations of the subject claims. Final Act. 6—7; see also
Ans. 4—6. As for the functional limitation in each of the claims, the
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Appeal 2016-004793
Application 13/759,345
Examiner states, “Petrick discloses a perforating device capable of creating
an entry point.” Final Act. 2; see also Ans. 9. Appellants respond by
arguing, inter alia, that the Examiner’s statement regarding Petrick’s
capability is “conclusory,” and “[wjithout any clear articulation of how
Petrick discloses a head portion configured to create an entry point for an
operator through a building structure, the Examiner has failed to provide a
proper anticipation rejection.” Br. 7.
“[Cjhoosing to define an element functionally, i.e., by what it does,
carries with it a risk.” In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir.
1997). The risk is that when the structural limitations are found in a single
prior-art device, and when the examiner has “reason to believe” that the
prior art device is capable of performing the claimed function, the burden
shifts to the applicant to show that the functional limitation cannot be
performed by the device. Schreiber, 128 F.3d at 1478. However, the
Examiner’s belief that the prior-art device is capable of performing the
claimed function “must be tethered to or grounded in some rationale so as to
establish a prima facie case of anticipation.” In re Chudik, 674 Fed. Appx.
1011, 1015 (Fed. Cir. 2017) (citing Schreiber, 128 F.3d at 1478). A bare
assertion of capability, as here, is insufficient. Chudik, 674 Fed. Appx. at
1015. In other words, the Examiner failed to explain how the prior-art blade
could perform the claimed function, and therefore failed to make the
necessary prima facie showing that is “tethered to or grounded in some
rationale” in order to shift the burden of persuasion to Appellants. Id.
Accordingly, based on the record presented and the instructions above, the
Examiner has not established a prima facie case of anticipation, and as such,
we do not sustain the rejection of claims 19-21 and 36—38.
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Appeal 2016-004793
Application 13/759,345
Claims 29—32 and 41
Claim 29 is drawn to a tactical entry tool having a hammer plate that
includes “a middle portion and two side portions, each side portion
extending away from opposite sides of the middle portion at an angle
towards one of the breaker portions.” App. Br. 18—19 (Claims App.).
Claims 30—32 and 41 ultimately depend from claim 29. Id. at 19, 21. The
Examiner identifies ‘L’-shaped angled member 21 of Petrick’s device as
corresponding to the claimed hammer plate. Final Act. 7; see also Ans. 5.
Appellants respond, “while the side portions of the angled member 21 may
extend perpendicularly from the middle portion, Petrick is silent as to the
two side portions extending away from opposite sides of the middle
portion.” Br. 8.
We are not persuaded that angled member 21 corresponds to the
claimed hammer plate. The Examiner provides an annotation of Petrick’s
Figure 1 (see Ans. 5) and identifies two side portions of member 21 that
extend from a bend line. The Examiner identifies this bend in the angled
member as corresponding to the middle portion, but does not explain how
the two side portions extend from “opposite sides” of the bend. Ans. 4. We
note that even though Appellants specifically raised this issue in the Appeal
Brief (see Br. 8), the Examiner did not elaborate or provide further
explanation other than to reference the annotated drawing. Ans. 4. Because
we are not persuaded that Petrick discloses the recited structure of the
claimed hammer plate, we do not sustain the Examiner’s rejection of claims
29—32 and 41 as anticipated by Petrick.
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Appeal 2016-004793
Application 13/759,345
Claims 22, 23, 27, 28, and 35—Unpatentable over Petrick andLebessis
Claims 22, 23, 27, and 28 ultimately depend from claim 19. Br. 17—
18 (Claims App.). In rejecting claims 22, 23, 27, and 28 as unpatentable
over Petrick and Lebessis, the Examiner relies on the finding that Petrick’s
device is capable of performing the claimed function discussed above. Ans.
6—7. Because the Examiner does not provide a rationale justifying that
belief, and Lebessis is not relied upon to cure this deficiency, we do not
sustain the rejection of claims 22, 23, 27, and 28 as unpatentable over
Petrick and Lebessis.
Claim 35 depends from claim 29. Br. 20 (Claims App.). In rejecting
claim 35 as unpatentable over Petrick and Lebessis, the Examiner relies on
the finding that Petrick’s angled member 21 corresponds to the claimed
hammer plate. Ans. 7. Because, as discussed above, we are not persuaded
that this finding is correct, and Lebessis is not relied upon to cure this
deficiency, we do not sustain the Examiner’s rejection of claim 35 as
unpatentable over Petrick and Lebessis.
DECISION
The Examiner’s rejection of claims 19—23, 26—32, and 35—40 on the
ground of nonstatutory double patenting over claims 1—18 of U.S. Patent No.
8,387,487 in view of Boyd-Dunlop is affirmed.
The Examiner’s rejection of claims 19—21, 29-32, 36—38, and 41 as
anticipated by Petrick is reversed.
The Examiner’s rejection of claims 22, 23, 27, 28, and 35 as
unpatentable over Petrick and Lebessis is reversed.
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).
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Appeal 2016-004793
Application 13/759,345
AFFIRMED-IN-PART
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