Ex Parte Korb et al

Board of Patent Appeals and Interferences

Jun 30, 2009

10792415 (B.P.A.I. Jun. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WILLIAM B. KORB and BRIAN K. DOUGLAS
____________

Appeal 2008-006186
Application 10/792,415
Technology Center 3700
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Decided:1 June 30, 2009
____________

Before WILLIAM F. PATE III, STEVEN D.A. McCARTHY, and
STEFAN STAICOVICI, Administrative Patent Judges.

WILLIAM F. PATE III, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing Anderson appeal or commencing a
civil action, as recited in 37 CFR § 1.304, begins to run from the decided
date shown on this page of the decision. The time period does not run from
the Mail Date (paper delivery) or Notification Date (electronic delivery).
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STATEMENT OF CASE
This is an appeal from the final rejection of claims 17, 20, 21, 26-28,
30-32, 38-42, 46, 49, 50, 55-57, 59, 62, 63, 65-69 and 71-89. These are the
only claims remaining in the application. We have jurisdiction over the
appeal pursuant to 35 U.S.C. §§ 134 and 6. Oral argument was heard on
April 21, 2009.
The claimed invention is directed to a method for making a composite
utility knife blade. The blade is characterized by a cutting edge formed of
wear-resistant steel and an elongated backing strip formed of a steel of a
different composition. The blade is formed by welding the wire of wear-
resistant steel in a continuous manner to the backing strip.
Claim 32, reproduced below, is further illustrative of the claimed
subject matter.
32. A method of making composite utility knife blades, the method
comprising:
providing an elongated wire formed of wear-resistant steel, and an
elongated backing strip formed of steel and defining a first side, a second
side, and opposing lateral edges extending between the first and second
sides;
placing the wire in contact with a lateral edge of the backing strip;
applying thermal energy to an interface between the wire and the
backing strip to weld the wire to the backing strip, and forming a composite
strip defining a first metal portion formed by the steel backing strip, a
second metal portion formed by the wear-resistant steel wire, and a weld
region joining the first and second metal portions and extending from
approximately one end of the second metal portion to approximately the
other end of the second metal portion;
heat treating the composite strip;
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forming at least one facet into the second metal portion, and forming an
approximately straight wear-resistant steel cutting edge on the composite
strip; and
die cutting at least one of the first and second metal portions along
shear lines axially spaced relative to each other to thereby form a plurality of
utility knife blades from the composite strip.

REFERENCES
The references of record relied upon by the examiner as evidence of
obviousness are:
Behrman US 1,734,554 Nov. 5, 1929
Young US 2,286,047 Jun. 9, 1942
Anderson et al. US 3,315,548 Apr. 25, 1967
Anderson US 4,109,380 Aug. 29, 1978
Cox US 5,575,185 Nov. 19, 1996
Wilson US 5,701,788 Dec. 30, 1997
Huang US 5,875,551 Mar. 2, 1999

REJECTIONS
Claims 31, 38-41, 50, 56, 57, 59, 63, 65, 71, 72, 82 and 86-89 stand
rejected under 35 U.S.C. § 103 as unpatentable over Huang in view of
Young and Anderson et al.
Claims 42, 55, 83 and 84 stand rejected under 35 U.S.C. § 103 as
unpatentable over Huang, Young and Anderson et al. as applied to claim 31
and 82 and further in view of Behrman.
Claims 32, 46, 62, and 73-81 stand rejected under 35 U.S.C. § 103 as
unpatentable over in view of Huang, Young, Anderson et al. and Behrman
and further in view of Wilson.
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Claims 49 and 85 stand rejected under 35 U.S.C. § 103 as
unpatentable over Huang, Young, Anderson et al., and further in view of
Wilson.
Claims 66-69 stand rejected under 35 U.S.C. § 103 as unpatentable
over Huang, Young, and Anderson et al. as applied to claim 31 and further
in view of Behrman.
Claims 17, 20, 21, 26, 27, and 30 stand rejected under 35 U.S.C. § 103
as unpatentable over Huang, Young, Anderson et al., Wilson, and further in
view of Behrman and Cox.
Claim 28 stands rejected under 35 U.S.C. § 103 as unpatentable over
Huang, Young, Anderson et al., Wilson, Behrman, Cox and further in view
of Anderson.

ISSUES
An obviousness rejection based on the combined teachings of Huang,
Young and Anderson et al., forms the underlying basis for all of the
rejections on appeal. Appellants argue that Anderson et al. is not analogous
art and that Huang and Young do not teach or suggest all of the features of
the claimed invention other than applying thermal energy to an interface,
and straightening, annealing and hardening the blade to a desired hardness.
Further, Appellants argue that it would not have been obvious to combine
Huang, Young and Anderson et al. Accordingly, the issues for our
consideration are whether Appellant has established that the Examiner erred
in determining: a) that Anderson et al. can be considered analogous art, b)
that Young and Huang when combined, disclose all of the features except
for applying thermal energy, straightening and annealing, and, c) that the
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combination of the teachings of Huang, Young and Anderson et al. would
have rendered the claimed subject matter prima facie obvious to one of
ordinary skill. Appellant has also furnished evidence to rebut a prima facie
case of obviousness.

FINDINGS OF FACT
1. Huang discloses a replaceable blade 16 for a utility knife. See col. 2,
ll. 37-39. The blade is generally trapezoidal in shape with a cutting edge on
the longer of the parallel sides and with two locating notches 17 formed in
the shorter parallel side. See Fig. 1. Huang is not of bimetal construction.
2. Young discloses a cutting implement in the form of a replaceable
blade of either the single or double edge type where substantial savings is
garnered in the manufacture of the blade by making the blade as a mere
skeleton of the prior art blade. See col. 1, ll. 4-12. Young discloses a double
edge configuration in which the cutting portion 15 with cutting edges 16 are
manufactured from relatively expensive Swedish or stainless steel wire. See
p. 2, col. 1, ll. 23-30. The balance of the blade is composed of cross
members--links or struts 17. See p. 2, col. 1, ll. 30-35. Young teaches that
his structure is a replacement for blades of the previous type wherein the
entire blade was formed of a strip of costly steel which had to be stamped or
otherwise cut to separate the individual blade from the strip. See p. 2, col. 1,
ll. 1-6. In this respect Young teaches away from the claimed subject matter,
since the claimed subject matter is cut into individual blades from a strip.
3. Anderson et al. discloses a method of making a band saw blade. The
blade is composed of tips or teeth formed of high-speed cutting tool steel
where the balance or the backing portion of the blade is formed of a steel
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alloy which properties are characteristic of spring steel so as to be capable of
withstanding shock and having a high resistance to fatigue failure. See col.
1, ll. 11-23. As shown in Fig. 2. Anderson et al. teaches the manufacture of
the blade by electron beam wielding a high speed steel wire 16 to a spring
steel backing 15. See col. 3, ll. 29-60.
4. The patents to Behrman, Wilson, Anderson and Cox have been cited
by the Examiner to show other features of the claimed process.

PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See
also KSR, 550 U.S. at 406-407 (“While the sequence of these questions
might be reordered in any particular case, the [Graham] factors continue to
define the inquiry that controls.”).
“‘A reference is reasonably pertinent if, even though it may be in a
different field from that of the inventor's endeavor, it is one which, because
of the matter with which it deals, logically would have commended itself to
an inventor's attention in considering his problem.’ In re Clay, 966 F.2d 656,
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659 (Fed.Cir.1992). In other words, “familiar items may have obvious uses
beyond their primary purposes.” KSR Int'l Co. v. Teleflex, Inc., 127 S. Ct.
398, 420 (2007).” In re ICON Health and Fitness, Inc, 496 F.3d 1375,
1380-1.

ANALYSIS
Appellants’ first argument is that Anderson et al. is not analogous art
with respect to Appellants’ invention. However, in our view, Anderson et
al. is directed to forming a composite blade of two steels with different
properties. Therefore, it is our view that Anderson et al. is directed to
subject matter which logically would have commended itself to the
inventors’ attention when considering their problem. Accordingly, it is our
finding that Anderson et al. is analogous prior art.
Appellants’ other principal argument is that the subject matter of the
claims would not have been obvious from the combined teachings of Huang,
Young and Anderson et al. Huang teaches a conventional prior art
trapezoidally-shaped utility knife blade. Huang is not of bimetal
construction. Young teaches a blade that has neither a backing strip nor a
blade substrate. Young teaches a skeleton blade structure with a Swedish or
stainless steel cutting edge and a relatively soft steel for the reinforcing
struts. While we agree with the Examiner that Huang and Young when
combined would teach a composite cutting structure, we must emphasis that
Young teaches that such a structure should take the form of a skeleton blade
arrangement for the purpose of substantially reducing the stock material cost
of the blade. Therefore, Huang, when combined with Young does not teach
the structure of a blade with the backing strip or a blade substrate extending
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from approximately one end of the second metal portion to approximately
the other end of the second metal portion as recited in claims 31 and 50, for
example. We agree with the Appellants, that as taught by Young, most of
the blade structure would not have any backing blade substrate at all when
combined with the teachings of Huang. The Examiner remarks that Young
is only used to teach making a blade out of two different materials. We
agree that Young teaches this, but as part and parcel of this teaching, Young
teaches two materials in a skeleton structure.
As noted above, we also recognize that Young expressly teaches away
from making blades in strip form and then cutting the strip in to individual
blades. See Young at p. 2, col. ll. 4-6. This is another factor of
incompatibility of Young as opposed to Huang.
Turning to Anderson et al., while we do believe that this blade is
analogous prior art, the Examiner fails to convince us that the teachings in
this reference would have ameliorated the above-noted difficulties with
Huang and Young. First of all, it is not clear that the band saw blade has the
correct properties for use in a utility knife blade. A band saw blade demands
a certain suppleness so that it may be bent around an axis which is parallel to
the depth of the blade in the direction of the cut. While Young does not
have any structure in the middle of the blade and seemingly might be
bendable around an axis normal to the long sides, we believe that the Huang
blade is relatively stiff and suppleness is an undesirable feature in a utility
knife blade.
Secondly, while Young may teach forming a blade as a composite
structure, the reference does not teach forming the claimed backing and weld
regions. Therefore, to choose the composite feature but ignore the skeleton
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structure of Young is to pick and choose through hindsight only those
features of Young that may support the obviousness rejection. In this
respect, we agree with Appellant that the Examiner is ignoring other
portions of Young that lead away from the claimed subject matter.
Furthermore, since a band saw blade is utilized in one endless loop,
Anderson et al. is essentially irrelevant to the issue raised by Huang and
Young as to whether or not blades should be individually manufactured or
cut from a strip. Brief 9:10-12; Reply 6:5-12.
In short, while we agree with the Examiner that Anderson et al. is
analogous prior art, we do not find in the Examiner’s rejection any rational
basis for the combination of the teachings of Huang, Young and Anderson et
al. This being the case, we must conclude that the Examiner’s rejection is
based on impermissible hindsight reconstruction of the claimed subject
matter. Therefore, the obviousness rejections of the claims on appeal cannot
be sustained.
While we have considered the prior art teachings of Behrman, Wilson,
Anderson and Cox, we find therein no teaching or suggestion that would
mitigate the difficulties that we have found with the prima facie case of
obviousness based on the three patents to Huang, Young and Anderson et al.
Accordingly, the rejection of all of the claims on appeal is reversed. We
acknowledge Appellants’ evidence furnished for rebutting the prima facie
case of obviousness. Inasmuch as we have not found the independent claims
on appeal to be prima facie obvious, a lengthy consideration of this evidence
is considered moot.

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ORDER
The rejection of claims 31, 38-41, 50, 56, 57, 59, 63, 65, 71, 72, 82
and 86-89 as unpatentable over Huang in view of Young and Anderson et al.
is reversed.
The rejection of claims 42, 55, 83 and 84 under 35 U.S.C. § 103 as
unpatentable over Huang, Young and Anderson et al. and further in view of
Behrman is reversed.
The rejection of claims 32, 46, 62, and 73-81 as unpatentable over
Huang, Young, Anderson and Behrman and further in view of Wilson is
reversed.
The rejection of claims 49 and 85 under 35 U.S.C. § 103 as
unpatentable over Huang, Young, Anderson et al., and further in view of
Wilson is reversed.
The rejection of claims 66-69 under 35 U.S.C. § 103 as unpatentable
over Huang, Young, and Anderson et al. and further in view of Behrman is
reversed.
The rejection of claims 17, 20, 21, 26, 27, and 30 under 35 U.S.C.
§ 103 as unpatentable over Huang, Young, Anderson et al., Wilson, and
further in view of Behrman and Cox is reversed.
The rejection of claim 28 under 35 U.S.C. § 103 as unpatentable over
Huang, Young, Anderson et al., Wilson, Behrman, Cox and further in view
of Anderson is reversed.
REVERSED

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