Ex Parte KAN

Board of Patent Appeals and Interferences

Sep 28, 2010

11379383 (B.P.A.I. Sep. 28, 2010)

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.
11/379,383 04/20/2006 Man Kit Elvin KAN 10270 9751
7590 09/29/2010
Eric Chan
42 Pin Oaks Drive
Phoenixville, PA 19460
EXAMINER
PATEL, BHARAT C
ART UNIT PAPER NUMBER
3724
MAIL DATE DELIVERY MODE
09/29/2010 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MAN KIT ELVIN KAN
____________

Appeal 2009-009469
Application 11/379,383
Technology Center 3700
____________

Before LINDA E. HORNER, JOHN C. KERINS, and STEVEN D.A.
McCARTHY, Administrative Patent Judges.

KERINS, Administrative Patent Judge.
DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-009469
Application 11/379,383

2
STATEMENT OF THE CASE
Man Kit Elvin Kan (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s final rejection of claims 1-3, the only claims
pending in the application. We have jurisdiction under 35 U.S.C. § 6(b)
(2002). We REVERSE.

THE INVENTION
Appellant’s invention is directed to a cigar cutter having a safety lock
feature. Claim 1, reproduced below, is illustrative of Appellants’ invention:
1. A cigar cutter with a safety device comprising

a casing and a blade, and the casing has a through
hole in the middle, and the blade is connected to a
grip, which is disposed outside the casing, and the
grip can be flexibly pulled out or pushed in as
against the casing, thereby actuating the blade to
move away from or pass through the through hole,

wherein the cigar cutter also comprises a movable
ring, one end of which is connected to near the
middle part of the casing, and which can rotate at
least 180° as opposed to the casing;

and the casing and the grip have a groove along
their peripherals, the shape and size of the groove
correspond to the shape and thickness of the
movable ring; the shape and size of the movable
ring correspond to those of the casing and the grip
and can fit onto the grip and part of the casing;

the movable ring is fixed inside the grooves along
the peripherals of the casing and the grip at a first
position to fix the grip and the casing together, and
is rotated 180° to a second position to be fixed
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Application 11/379,383

3
inside the groove of the casing’s peripheral to form
a second grip opposite to the grip.

THE REJECTIONS
The Examiner has rejected claims 1-3 under 35 U.S.C. § 103(a) as
being unpatentable over Roberts (US 5,946,753, issued September 7, 1999)
in view of evidence in the form of a sheet containing photocopies of a
product referred to as a Pocket Pen, the sheet bearing the signature of
Primary Examiner Stephen Choi and attesting that the Pocket Pen product
has been in existence for at least ten years prior to March 5, 2008 (hereafter,
the Pocket Pen).
ISSUE
Did the Examiner err in concluding that the claimed cigar cutter with
the movable ring would have been obvious in view of the teachings of
Roberts and the Pocket Pen?
ANALYSIS
The Examiner found that the Roberts patent discloses a cigar cutter
having a casing, a blade, and a grip, with the casing having a through hole,
and the grip being designed to be pulled away from and pushed toward the
casing. (Ans. 3). The Examiner acknowledged that Roberts does not
disclose a movable ring or the claimed features associated with it. (Id.). The
Examiner found that the Pocket Pen teaches the elements missing from
Roberts (Ans. 3-4), and concluded that it would have been obvious to
provide grooves on the Roberts casing and grip, and a movable ring
assembly, in order to enable the user to protect the cutting edge of the blade
by moving the cutting blade from an operative position to an inoperative
position. (Ans. 4).
Appeal 2009-009469
Application 11/379,383

4
Appellant argues that the Pocket Pen does not teach a movable ring
structure that operates to rotate 180° from a first position to a second
position, at which the movable ring forms a second grip opposite to the first
grip. (Appeal Br. 9). The Examiner, in reply, maintains that
when the movable ring 5 of the Pocket pen in Fig.
1 of Appendix-I is rotated 180 degrees, there are
two grips simultaneously formed in the pocket pen,
namely the grip portion as lower portion of 4 and
the movable ring 5. . . . the lower of casing 4 is
considered to be a second grip that is accessible to
the user or formed when the movable ring 5 is
rotated 180°.
(Ans. 6).
This interpretation of the Pocket Pen thus describes what the
Examiner previously found to be the casing (element 4) to now be not only
the casing, but also a “lower portion” of the casing is now regarded as a grip.
Element 4 in the Pocket Pen structure is a unitary element. It cannot
reasonably be said to constitute two separate elements set forth in the claim.
Consistent with the principle that all limitations in a claim must be
considered to be meaningful, it is improper to rely on the same structure in
the Pocket Pen construction as being responsive to two different elements
(casing and grip) in claim 1. See Lantech, Inc. v. Keip Machine Co., 32 F.3d
542 (Fed. Cir. 1994)(in infringement context, a single conveyor held to not
meet claim element requiring at least two conveyors); In re Robertson, 169
F.3d 743 (Fed. Cir. 1999)(claim requiring three separate means not
anticipated by structure containing two means where one of the two means
was argued to meet two of the three claimed means). Accordingly, we agree
with Appellant that the Examiner has not established how the combined
teachings of Roberts and the Pocket Pen yields a construction in which a
Appeal 2009-009469
Application 11/379,383

5
movable ring is rotated 180° from a position at which the grip and casing are
fixed together by the ring, to a second position where the ring forms a
second grip opposite to the other grip.
Moreover, the stated reason to combine the teachings of the Pocket
Pen with the Roberts cigar cutter is lacking in rational underpinnings. The
Examiner characterizes the addition of a movable ring to the Roberts device
as a means to protect the cutting edge of the blade by moving the blade
“from an operative position to an inoperative position.” (Ans. 4). This
choice of language appears to be an attempt to harmonize the function
performed by the movable ring in the Pocket Pen with that of the claimed
movable ring, while disregarding that the movable ring in the Pocket Pen
does not lock a grip to the casing to render the grip inoperative; instead it
(along with grip 3) renders the pen inoperative by physically shielding the
tip of the pen. Nothing in Roberts or in the Pocket Pen appears to disclose
or suggest that a movable ring could be employed to lock the grip to the
casing in Roberts.
The rejection of independent claim 1, and of claims 2 and 3 depending
therefrom, as being unpatentable over Roberts and Pocket Pen will not be
sustained.
CONCLUSION
The Examiner erred in concluding that Appellant’s claimed cigar
cutter with the movable ring would have been obvious over Roberts and
Pocket Pen.

Appeal 2009-009469
Application 11/379,383

6
DECISION
The decision of the Examiner to reject claims 1-3 is reversed.

REVERSED

mls

ERIC CHAN
42 PIN OAKS DRIVE
PHOENIXVILLE, PENNSYLVANIA 19460