Ex Parte Morabito

Board of Patent Appeals and Interferences

Mar 30, 2012

11307939 (B.P.A.I. Mar. 30, 2012)

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.
11/307,939 02/28/2006 Frank Morabito MORABI-48492 2938
26252 7590 03/30/2012
KELLY LOWRY & KELLEY, LLP
6320 CANOGA AVENUE
SUITE 1650
WOODLAND HILLS, CA 91367
EXAMINER
PRONE, JASON D
ART UNIT PAPER NUMBER
3724
MAIL DATE DELIVERY MODE
03/30/2012 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
____________________

BOARD OF PATENT APPEALS AND INTERFERENCES
____________________

Ex parte FRANK MORABITO

____________________

Appeal 2010-002970
Application 11/307,939
Technology Center 3700
____________________

Before: FRED E. McKELVEY, ROBERT A. CLARKE and JONI Y. CHANG,
Administrative Patent Judges.

CLARKE, Administrative Patent Judge.

DECISION ON APPEAL

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Statement of the case
Frank Morabito (Morabito), the real party in interest (App. Br.1 2), seeks 1
review under 35 U.S.C. § 134(a) of a rejection dated 13 March 2009. 2
The application was filed on 28 February 2006. 3
Claims 1, 3, 8-11, 13 and 15-25 are on appeal. 4
The Examiner relies on the following evidence: 5
Atnip et al. (Atnip) U.S. Design Patent D477,193 15 Jul. 2003
Rapoport et al. (Rapoport)

U.S. Patent 5,887,921 30 Mar. 1999
Morabito does not contest the prior art status of the evidence relied upon by 6
the Examiner. 7
We have jurisdiction under 35 U.S.C. § 134(a). 8
Findings of fact 9
The following findings of fact are supported by a preponderance of the 10
evidence. 11
Additional findings as necessary may appear in the Discussion portion of the 12
opinion. 13

1 References to App. Br. refer to the Amended Appeal Brief filed 06 August 2009.

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The invention 1
The Morabito invention is directed to a multi-purpose, hand-held garden 2
tool. Spec. [¶8]. The invention is described as having a curved portion (28) 3
extending from the shank and away from the handle that is generally U or C-4
shaped so as to be capable of reaching around the trunk or base of a vine, bush, 5
small tree or branch of a larger tree. Spec. [¶ 25]. The embodiment shown in 6
figure 3 is described as having a free end tapered to a single point 30. Providing a 7
single point is described as facilitating entry of the blade into the ground when 8
digging and cultivating. Spec. [¶ 26]. The other preferred embodiment illustrated 9
in the remaining figures provide a free end formed into two tapered points or 10
prongs 32 and 34 to facilitate severing of roots caught in notch 36 or removal of a 11
weed if the root is caught but not severed by notch 36. Spec. [¶26]. The invention 12
is described as performing several functions including the use of free end 30 and 13
36 to cultivate the ground around a plant. Spec. [¶ 27]. 14
Claims on appeal 15
Claims 1 and 13 are the independent claims. 16
Claim 1, which we reproduce from the Claims Appendix of the Appeal 17
Brief, reads [formatting and emphasis added]: 18
Claim 1 19
1. A multi-purpose hand-held garden tool, comprising: 20
a handle; 21
a single blade having 22
a substantially greater length than a width, and 23
having a top surface and a generally parallel bottom surface and first 24
and second side edges extending therebetween, 25
the first and second side edges being generally parallel to one 26

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another along substantially the length of the blade such that the 1
blade is of generally constant width, 2
the top and bottom surfaces being curved from a first free end 3
of the blade and substantially along a blade portion length 4
thereof so as to be generally U-shaped, 5
the first free end tapered to a single generally V-shaped prong, 6
the blade further including a generally straight shank portion defining 7
a second end distal the free end and connected to the handle; 8
a series of barbs or serrations formed on the first or second side edge 9
of the blade adjacent to the free end thereof; 10
at least one notch formed in the first or second side edge and generally 11
directed towards the handle, the notch being sized and configured to 12
sever off-shoots of plant life; and 13
at least one notch formed in the first or second side edge and generally 14
directed away from the handle and sized and configured to sever off-15
shoots of plant life. 16
Claim 13, which we reproduce from the Claims Appendix of the Appeal 17
Brief, reads [formatting and emphasis added]: 18
13. A multi-purpose hand-held garden tool, comprising: 19
an elongated handle; 20
a single blade having a substantially greater length than a width, and 21
having first and second side edges, 22
a curved portion having a generally U-shaped configuration including 23
a first free end and a generally straight second end connected to the 24
handle, 25
wherein the first and second side edges of the blade are generally 26
parallel to one another such that the blade is of generally constant 27
width; 28
the free end of the blade having a generally V-shaped notch formed 29
therein to define two tapered generally V-shaped prongs; 30
a series of barbs or serrations formed on at least the first or second 31
side edge of the blade adjacent to the free end of the blade; 32

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at least one notch formed in the first or second edge and generally 1
directed towards the handle, the notch being sized and configured to 2
sever off-shoots of plant life; and 3
at least one notch formed in the first or second side edge and generally 4
directed away from the handle and sized and configured to sever off-5
shoots of plant life; 6
wherein the handle is of a sufficient length so as to be grasped by two hands 7
and the handle and blade extend from a user standing erect to a ground 8
surface. 9
Scope and content of the applied prior art 10
Atnip 11
We agree with the Examiner that Atnip illustrates a shovel having a handle 12
and a blade portion. The blade portion has a curved portion across a portion of its 13
width (Fig. 5 and 6) and is generally straight where connected to the handle 14
(Fig. 1). 15
Rapoport 16
We agree with the Examiner that Rapoport figure 7describes a shovel having 17
a series of serrations formed on the first side edge adjacent the free end (53), at 18
least one notch formed in the first side (57) that is generally directed towards the 19
handle (notch extends in the both directions represented by arrow 702 20
superimposed on fig. 7 by Examiner, (Ans. 5)), at least one notch formed in the 21
first side edge and generally directed away the handle (61), at least a portion of the 22
first and second edges are sharpened (703a, 703b superimposed on fig. 7 by 23
Examiner, (Ans. 5)), wherein the exposed edges defined by the notches are 24
sharpened (57, 61), an exterior end of the notches defines a sharp point (704, 705 25
superimposed on fig. 7 by Examiner, (Ans. 5)), the notches are formed in both of 26

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the first and second side edges (61, 57), and both side edges include serrations 1
adjacent the free end (53). Fig. 7. The free end of the embodiment shown in 2
figure 7 of Rapoport is described as a deep V-shaped cutout 59 formed as the 3
center with two smaller V-grooves 61 on each side of 59. Col. 4, ll. 25-27. 4
The Rejection2 5
The Examiner rejected Claims 1-3, 8-11, 13, and 15-25 under 35 U.S.C. 6
§ 103(a) as unpatentable over Atnip in view of Rapoport. 7
PRINCIPLES OF LAW 8
In KSR, the Supreme Court explained that: 9
“[I]f a technique has been used to improve one device, and a person of 10
ordinary skill in the art would recognize that it would improve similar 11
devices in the same way, using the technique is obvious unless its actual 12
application is beyond his or her skill.” 13
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). 14
Moreover, in making a determination with regard to obviousness, we should not 15
limit ourselves to looking only at the problem Appellant was trying to solve. The 16
question is not whether the combination was obvious to Appellant but whether it 17
was obvious to a person with ordinary skill in the art. Thus, “[u]nder the correct 18
analysis, any need or problem known in the field of endeavor at the time of 19
invention and addressed by the patent can provide a reason for combining the 20
elements in the manner claimed.” Id. at 420. 21
In KSR, the Supreme Court emphasized “the need for caution in granting a 22
patent based on the combination of elements found in the prior art,” and discussed 23

2 The Examiner withdrew the rejection of Claims 1, 3, 8-11 and 20-22 under
35 U.S.C. § 112, second paragraph. Ans. 6.

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circumstances in which a patent might be determined to be obvious. Id. at 415. In 1
particular, the Supreme Court emphasized that “the principles laid down in 2
Graham reaffirmed the ‘functional approach’ of Hotchkiss” and reaffirmed 3
principles based on its precedent that “[t]he combination of familiar elements 4
according to known methods is likely to be obvious when it does no more than 5
yield predictable results.” KSR, 550 U.S. at 415 (citing Graham, 383 U.S. at 12). 6
The Court explained: 7
When a work is available in one field of endeavor, design 8
incentives and other market forces can prompt variations 9
of it, either in the same field or a different one. If a 10
person of ordinary skill can implement a predictable 11
variation, § 103 likely bars its patentability. For the same 12
reason, if a technique has been used to improve one 13
device, and a person of ordinary skill in the art would 14
recognize that it would improve similar devices in the 15
same way, using the technique is obvious unless its 16
actual application is beyond his or her skill. 17
Id. at 417. The operative question in this “functional approach” is thus “whether 18
the improvement is more than the predictable use of prior art elements according to 19
their established functions.” Id. 20
The Supreme Court stated that there are “[t]hree cases decided after Graham 21
[that] illustrate the application of this doctrine.” Id. at 416. “In United States v. 22
Adams, … [t]he Court recognized that when a patent claims a structure already 23
known in the prior art that is altered by the mere substitution of one element for 24
another known in the field, the combination must do more than yield a predictable 25
result.” Id. at 416. “Sakraida and Anderson’s-Black Rock are illustrative – a court 26

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must ask whether the improvement is more than the predictable use of prior art 1
elements according to their established function.” Id. at 417. 2
Analysis 3
Claim 1 4
Regarding Claim 1, Morabito argues that neither Atnip nor Rapoport 5
disclose a free end of a blade tapered to a single generally V-shaped prong. The 6
Examiner relies on point 701(a) added to figure 7 of Rapoport (Ans. 5) as 7
providing this feature. 8
As discussed above the embodiment of figure 7 of Rapoport is described as 9
having a deep V-shaped cutout 59 formed as the center with two smaller 10
V-grooves 61 on each side of 59. Col. 4, ll. 25-27. The Examiner relies on one of 11
two symmetrical points on either side of the deep V-shaped cutout as the single 12
V-shaped prong. Morabito’s specification makes clear that the single prong 13
embodiment functions differently from the dual prong embodiment, the former 14
facilitating entry into the ground and the later facilitating cutting of roots or 15
removing weeds. If one skilled in the art would have applied Rapoport’s 16
description of a free end having a deep V-shaped cutout 59 with two symmetrically 17
points to the device of Atnip, we cannot agree that the result would have been a 18
free end tapering to one point rather than two. Accordingly, we cannot agree with 19
the Examiner’s rejection of Claim 1 and consequently the rejection of Claims 3, 8-20
11 and 20-22. 21
We recognize that Atnip has a free end that tapers to a single point as do 22
several of the non-relied upon embodiments of Rapoport. The Examiner has not 23
explained why one skilled in the art would have modified only the side edges of 24

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Atnip in view of the teachings of the embodiment shown in figure 7 of Rapoport 1
which describes modification of both the free end and the side edges. 2
New Grounds of Rejection 37 C.F.R. § 41.50(b) 3
As we discussed above, Atnip and Rapoport as applied by the Examiner fail 4
to provide for a tool having a free end that tapers into a single point while also 5
having side edges having sharpened edges. Green3 teaches a multi-purpose tool 6
having a free end that tapers to a single point and a side edge having sharpened 7
serrations to provide a multi-purpose tool for entering soil and for severing small 8
limbs. See figures 5, 8 and 10B; and Col. 4, ll. 17-28. As the prior art recognized, 9
a tool such as the Green device used to cultivate soil could be improved by 10
providing the tool with a free end that tapers to a single point and a side edge 11
having sharpened serrations. Therefore, one of ordinary skill in the art would 12
recognize that modifying Atnip’s device as proposed by the Examiner in view of 13
the teaching of Rapoport to include a free end that tapers to a single point while 14
retaining the sharpened edges is obvious. Using our authority under 37 C.F.R. 15
§ 41.50(b) , we reject Claims 1, 3, 8-11 and 20-22 by modifying the rejection made 16
by the Examiner based on Atnip and Rapoport to include the Green patent’s 17
teaching to provide a free end that tapers to a single point while retaining the 18
sharpened edges. 19
Morabito argues that the Examiner has not established sufficient motivation 20
or suggestion to combine Atnip with Rapoport. We consider this argument as if 21

3 U.S. Patent number 5,377,374, issued January 3, 1995. Paragraph 6 of
Morabito’s specification provides a short description of the Green patent.

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made with respect to the new ground of rejection. As KSR reaffirmed as 1
appropriate, the Examiner found that the inclusion of known elements, here the 2
serrations provided on the side edges and the free end tapering to two points, with 3
no change to their respective function in the shovel of Atnip would have provided 4
predictable results, here the improve use in soils containing roots. Similarly, we 5
have found that Green teaches to use the tool in soil and to sever limbs from trees 6
and we have found that the inclusion of a single tip with serration containing side 7
edges in the Atnip modified by Rapoport device with no change in their respective 8
functions would have provided predictable results. We note that Morabito’s 9
specification describes similar functions of his tool (¶¶ 26-28). 10
Morabito argues that neither Atnip nor Rapoport teach a blade that is curved 11
from a first end thereof substantially along a length thereof so as to be generally U-12
shaped. App. Br. 17. We agree with the Examiner that Atnip discloses top and 13
bottom surfaces being curved from a first free end of the blade and substantially 14
along a blade portion so as to be generally U-shaped (Figs. 5 and 6). Ans. 3. 15
Accordingly, we are not persuaded by this argument. 16
Morabito argues that the teaching of Atnip and Rapoport would not have 17
suggested a U-shaped blade to allow the blade’s notches to reach around trunks of 18
trees, bushes, grapevines, and the like. App. Br. 14. Claim 1 does not exclude 19
curvature only across the width of the blade rather than along its length. 20
Accordingly, we are not persuaded by this argument. 21
Morabito argues that the shovels of Atnip and Rapoport are non-analogous 22
to each other and to the appellant’s invention. App. Br. 15. We disagree. 23
Morabito describes his invention as providing for cultivation of soil by entry of the 24

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blade into soil. Spec. [¶ 26]. Shovels also provide for entry of a blade into soil. 1
Rapoport, Col. 4, ll. 18-21. Similarly, Green describes use of the tool to both enter 2
soil and to sever small limbs. Green, Col. 4, ll. 9-31. 3
Morabito argues that neither Atnip nor Rapoport describe a notch in a side 4
edge directed towards the handle. App. Br. 18. The Examiner relies on notch 57 5
of figure 7 of Rapoport for this feature. We agree with the Examiner that notch 57 6
is directed towards the handle. Accordingly, we are not persuaded by this 7
argument. 8
Claims 8-10 9
Morabito argues that Claims 8-10 require that the edges of the tool be 10
sharpened. Morabito argues that Atnip nor Rapoport describe sharpening of any 11
edges. The Examiner found that one skilled in the art would have understood that 12
the exposed edges of Rapoport would be sharpened in order to provide superior 13
soil piercing. We agree. Moreover, Rapoport specifically describes proving saw 14
teeth which are comparably fine along the side edges in order to provide superior 15
piercing of the soil. Col. 4, ll. 18-23. Similarly, Green describes sharpening the 16
side edge of his tool to provide a sharp severing edge. Col. 4, ll. 18. Accordingly, 17
we are not persuaded by this argument. 18
Claim 13 19
Claim 13 is directed to the other disclosed embodiment of Morabito having a 20
free end having a generally V-shaped notch defined by two tapered generally 21
V-shaped prongs rather than a single point. 22

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Morabito incorporates by references arguments made with respect to the 1
rejection of Claim 1 in arguing that the rejection of Claim 13 was in error. As 2
Claim 13 is directed to a different disclosed embodiment that performs some 3
functions differently than the embodiment covered by Claim 1, some of the 4
arguments are inconsistent with the explicit language of Claim 13. 5
Morabito argues that the Examiner has not established sufficient motivation 6
or suggestion to combine Atnip with Rapoport. As KSR reaffirmed as appropriate, 7
the Examiner found that the inclusion of known elements, here the serrations 8
provided on the side edges and the free end tapering to two points, with no change 9
to their respective function in the shovel of Atnip would have provided predictable 10
results, here the improve use in soils containing roots. We note that Morabito’s 11
specification describes a similar function of their tool (¶ 26). We agree with the 12
Examiner, particularly since the function described in Rapoport is one of the 13
functions of Morabito’s invention, namely the use of the blade in soil containing 14
roots. 15
Morabito argues that neither Atnip nor Rapoport teach a blade that is curved 16
from a first end thereof substantially along a length thereof so as to be generally U-17
shaped. App. Br. 17. First, claim 13, unlike claim 1, does not require that the 18
curved portion be along the length. Moreover, we agree with the Examiner that 19
Atnip discloses top and bottom surfaces being curved from a first free end of the 20
blade and substantially along a blade portion so as to be generally U-shaped (Figs. 21
5 and 6). Ans. 3. Accordingly, we are not persuaded by this argument. 22
Morabito argues that the teaching of Atnip and Rapoport would not have 23
suggested a U-shaped blade to allow the blade’s notches to reach around trunks of 24

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trees, bushes, grapevines and the like. App. Br. 14. Claim 13 does not require the 1
curved section include the notches. Moreover, Claim 13 does not exclude 2
curvature only across the width of the blade rather than along its length. 3
Accordingly, we are not persuaded by this argument. 4
Morabito argues that the shovels of Atnip and Rapoport are non-analogous 5
to each other and to the appellant’s invention. App. Br. 15. We disagree. 6
Morabito describes his invention as providing for cultivation of soil by entry of the 7
blade into soil. Spec. [¶ 26]. Shovels also provide for entry of a blade into soil. 8
Rapoport, Col. 4, ll. 18-21. Moreover, both Morabito and Rapoport describe the 9
use of a free end tapering to two points as being useful in soil containing roots. 10
Accordingly, we are not persuaded by this argument. 11
Morabito argues that neither Atnip nor Rapoport describe a notch in a side 12
edge directed towards the handle. App. Br. 18. The Examiner relies on notch 57 13
of figure 7 of Rapoport for this feature. We agree with the Examiner that notch 57 14
is directed towards the handle. Accordingly, we are not persuaded by this 15
argument. 16
Claims 15-18 17
Morabito argues that Claims 15-18 require that the edges of the tool be 18
sharpened. Morabito argues that Atnip nor Rapoport describe sharpening of any 19
edges. The Examiner found that one skilled in the art would have understood that 20
the exposed edges of Rapoport would be sharpened in order to provide superior 21
soil piercing. We agree. Moreover, Rapoport specifically describes proving saw 22
teeth which are comparably fine along the side edges in order to provide superior 23

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piercing of the soil. Col. 4, ll. 18-23. Accordingly, we are not persuaded by this 1
argument. 2
3
Other arguments 4
We have considered the remaining arguments advanced by Appellant and 5
find none that warrant reversal of the Examiner’s Rejection of claims 13, 15-19, 6
and 23-25. Cf. Hartman v. Nicholson, 483 F.3d 1311, 1315 (Fed. Cir. 2007). 7
FINALITY OF DECISION 8
Regarding the affirmed rejection, 37 C.F.R. § 41.52(a)(1) provides 9
"Appellant may file a single request for rehearing within two months from 10
the date of the original decision of the Board." 11
In addition to affirming the Examiner's rejection of one or more 12
claims, this decision contains new grounds of rejection pursuant to 37 C.F.R. 13
§ 41.50(b) (2007). 37 C.F.R. § 41.50(b) provides "[a] new ground of 14
rejection pursuant to this paragraph shall not be considered final for judicial 15
review." 16
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO 17
MONTHS FROM THE DATE OF THE DECISION, must exercise one of 18
the following two options with respect to the new grounds of rejection to 19
avoid termination of the appeal as to the rejected claims: 20
(1) Reopen prosecution. Submit an appropriate 21
amendment of the claims so rejected or new evidence relating 22
to the claims so rejected, or both, and have the matter 23

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reconsidered by the Examiner, in which event the proceeding 1
will be remanded to the Examiner. . . . 2
3
(2) Request rehearing. Request that the proceeding be 4
reheard under § 41.52 by the Board upon the same record. . . . 5
6
Should Appellant elect to prosecute further before the Examiner 7
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek 8
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection, 9
the effective date of the affirmance is deferred until conclusion of the 10
prosecution before the Examiner unless, as a mere incident to the limited 11
prosecution, the affirmed rejection is overcome. 12
If Appellant elects prosecution before the Examiner and this does not 13
result in allowance of the application, abandonment or a second appeal, this 14
case should be returned to the Board of Patent Appeals and Interferences for 15
final action on the affirmed rejection, including any timely request for 16
rehearing thereof. 17
No time period for taking any subsequent action in connection with 18
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 19
§ 1.136(a)(1)(iv) (2007). 20
21
Decision 22
Upon consideration of the appeal, and for the reasons given herein, it is 23

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ORDERED that the decision of the Examiner rejecting Claims 1, 3, 8-1
11 and 20-22 as being unpatentable under 35 U.S.C. § 103(a) over Atnip in view of 2
Rapoport is reversed. 3
FURTHER ORDERED that the decision of the Examiner rejecting 4
Claims 13, 15-19 and 23-25 as being unpatentable under 35 U.S.C. § 103(a) over 5
Atnip in view of Rapoport is affirmed. 6
FURTHER ORDERED that Claims 1, 3, 8-11 and 20-22 are rejected 7
under 35 U.S.C. § 103(a) over Atnip, Rapoport and Green. This is a new ground 8
of rejection under 37 C.F.R. § 41.50. 9
AFFIRMED-IN-PART 10
37 C.F.R. § 41.50(b) 11
Ack 12