11167360 (B.P.A.I. Aug. 29, 2012)

Ex Parte Lind

Board of Patent Appeals and InterferencesAug 29, 2012

11167360 (B.P.A.I. Aug. 29, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/167,360 06/27/2005 Lesley Lind 3-001 7263 42067 7590 08/30/2012 Andrew F. Knight 904 N. York Rd. Sterling, VA 20164 EXAMINER SZPIRA, JULIE ANN ART UNIT PAPER NUMBER 3731 MAIL DATE DELIVERY MODE 08/30/2012 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 LESLEY LIND ____________________ Appeal 2010-005289 Application 11/167,360 Technology Center 3700 ____________________ Before: PHILLIP J. KAUFFMAN, CHARLES N. GREENHUT, and JOHN W. MORRISON, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-005289 Application 11/167,360 2 STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1- 20. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. The claims are directed to a skin care file and method. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1 A skin care file, comprising: a substantially linear handle portion; a substantially rounded file portion having an edge; and a substantially linear arm portion connecting the handle portion to the file portion, wherein an angle between the handle portion and the arm portion is between approximately 15° and 60°, wherein the file portion has a maximum dimension between approximately 0.5 and 1.75 inches, and wherein the file portion comprises on at least one side and on at least a portion of the edge a grit surface having a grit between approximately 120 and 60 grit. REJECTIONS Claims 1, 4-8, and 10-14 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Savage (US 5,088,509, iss. Feb. 18, 1992). Ans. 3. Claims 2 and 3 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Savage and Choi (US D532,933 S, iss. Nov. 28, 2006). Ans. 5. Claims 9 and 15-20 are rejected under 35 U.S.C. 103(a) as being unpatentable over Bernaz (US 2004/0092959 A1, pub. May 13, 2004) in view of Rhoades (US 2001/0018061 A1 pub. Aug. 30, 2001). Ans. 6. Appeal 2010-005289 Application 11/167,360 3 OPINION Regarding the Examiner’s rejection of independent claim 1 and of claims 2-81 depending therefrom, we agree with and adopt as our own Appellant’s claim construction analysis. Br. 4-5. While the term “edge” read in isolation may be amenable to multiple meanings, in the context of claim 1, which requires a surface—an inherently two-dimensional feature— thereon, we must agree with Appellant that the “edge” recited in claim 1 is also at least two-dimensional. The Examiner relies on flawed logic to conclude otherwise. See Ans. 8. Just because a surface may be described as “the boundary of a three-dimensional figure” does not mean anything that can be characterized as the boundary of a three-dimensional figure must be a surface. Accordingly, we cannot sustain the Examiner’s rejections that are predicated on this erroneous claim construction. Turning to independent claim 10, and claims 11-14 depending therefrom, we like the Examiner, are mindful of case law that interprets the term “integrally” as including something other than a unitary construction. However, where the remainder of the specification attached to the claims clearly evinces that a term used in those claims has a particular meaning, it is that meaning gleaned from the Specification, and not from other disparate cases, that must be applied. Phillips v. AWH Corp., 415 F. 3d 1303, 1315- 17 (Fed. Cir. 2005). Giving claim terms their broadest reasonable construction does not permit construing them in a manner inconsistent with the Specification. In re NTP, Inc., 654 F. 3d 1279, 1287-90 (Fed. Cir. 2011). Here, the Specification, by use of the term “alternatively,” contrasts coatings 1 We will presume that Appellant intended to argue that the Examiner erred in determining the subject matter of claims 2 and 3 would have been obvious by relying on an improper construction of claim 1 in that analysis. Appeal 2010-005289 Application 11/167,360 4 and other structures which are not formed from the underlying surface itself with those that are formed “integrally” therewith. Spec. 6:4-16. Thus, this portion of the Specification relied upon by the Examiner2 (Ans. 8) does not support the Examiner’s proposed construction. Rather, it supports Appellant’s interpretation that “integrally forming” does not include Savage’s “mounting” of the grit surface. Br. 5-6. Accordingly, we cannot sustain the Examiner’s rejections that are predicated on this erroneous claim construction. Regarding method claims 9, 15 and 16-20 the Examiner does not provide us or Appellant with any notice regarding why the specific structural limitations present in these claims are not entitled to patentable weight. Rather, the Examiner simply states “[i]t has been held that to be entitled to weight in method claims, the recited structure limitations therein must affect the method in a manipulative sense, and not to amount to the mere claiming of a use of a particular structure.” Ans. 7 (citing Ex parte Pfeiffer 135 USPQ 31 (BPAI 1961)). Ex parte Pfeiffer appears to be one of several cases from that era debating the issue of whether a process is patentable because it employs some structure that may be novel and unobvious. In re Durden, 763 F. 2d 1406, 1408-9 (Fed. Cir. 1985) (citing Ex parte Wagner, 88 USPQ 217 (BPAI 1950) and Ex parte MacAdams, 206 USPQ 445 (BPAI 1978)). In addressing the issue, our reviewing court, acknowledging that different cases may warrant different outcomes (Cf. Durden, supra, with In re Kuehl, 475 F.2d 658 (CCPA 1973)), has rejected the notion that the PTO may rely upon 2 Presumably as paragraph [0028] of Pre-Grant Publication No. 20050216034 Appeal 2010-005289 Application 11/167,360 5 some generalized rule for such a situation. In re Durden, 763 F. 2d at 1411. More recent cases reaffirm this principal: Suffice it to say that we do not regard Durden as authority to reject as obvious every method claim reading on an old type of process, such as mixing, reacting, reducing, etc. The materials used in a claimed process as well as the result obtained therefrom, must be considered along with the specific nature of the process, and the fact that new or old, obvious or nonobvious, materials are used or result from the process are only factors to be considered, rather than conclusive indicators of the obviousness or nonobviousness of a claimed process. When any applicant properly presents and argues suitable method claims, they should be examined in light of all these relevant factors, free from any presumed controlling effect of Durden. Durden did not hold that all methods involving old process steps are obvious; the court in that case concluded that the particularly claimed process was obvious; it refused to adopt an unvarying rule that the fact that nonobvious starting materials and nonobvious products are involved ipso facto makes the process nonobvious. Such an invariant rule always leading to the opposite conclusion is also not the law. In re Dillon, 919 F. 2d 688, 695 (Fed. Cir. 1990)(en banc); See also In re Ochiai, 71 F. 3d 1565, 1571-2 (Fed. Cir. 1995). The Examiner’s analysis of claims 9, 15 and 16-20 does not include any discussion of the specific claim limitations involved, nor the specific facts relied upon by the Examiner to reach a conclusion that the claimed subject matter as a whole would have been obvious to one having ordinary skill in the art. Rather, the Examiner appears to have engaged in exactly the type of analysis that was disapproved by our reviewing court as discussed above. We cannot sustain the Examiner’s rejection on this basis. Appeal 2010-005289 Application 11/167,360 6 DECISION The Examiner’s rejections of claims 1-20 are reversed. REVERSED MP