Ex Parte Porter et al

Board of Patent Appeals and Interferences

Jul 17, 2012

11942437 (B.P.A.I. Jul. 17, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte DAVID R. PORTER and ANGELA L. PORTER
__________

Appeal 2011-003061
Application 11/942,437
Technology Center 3600
__________

Before LORA M. GREEN, FRANCISCO C. PRATS, and
JACQUELINE WRIGHT BONILLA, Administrative Patent Judges.

PRATS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims to a method of
using a pet grooming tool. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
Appellants’ claims relate to a pet grooming tool that has a toothed
brush portion and a handle portion with an air passage portion between the
toothed portion and the handle portion (see Spec. [0006]). The air passage
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portion has an opening adjacent to the teeth of the toothed portion, and has
“another opening that is configured to be attached to a vacuum hose. As
such, a vacuum can be generated adjacent the toothed portion of the teeth
while the pet grooming tool is being used to remove loose fur from a pet”
(id.).
Claims 13-18 stand rejected and appealed (App. Br. 3). Claim 13, the
only independent claim, is representative and reads as follows:
13. A method comprising:
providing a pet grooming tool, the pet grooming tool
comprising a toothed portion, a handle portion, and at least one
threaded fastener, the toothed portion comprising a plurality of
teeth arranged in a row and a plurality of edge segments, there
being a gap between each adjacent pair of teeth, the edge
segments being adapted to engage loose fur in a pet’s coat as
such loose fur extends through the gaps in a manner removing
the loose fur from the pet’s coat, the handle portion being
connected to the toothed portion via the at least one threaded
fastener and comprising a grip portion, the grip portion being
configured and adapted to be grasped by a hand of a person;
disconnecting the handle portion from the toothed portion
by unscrewing the at least one threaded fastener;
providing an air passage portion, the air passage portion
comprising a first opening, a second opening, and a fluid
passageway, the second opening being adapted and configured
to couple to an air hose, the fluid passageway extending from
and operatively connecting the first opening to the second
opening;
securing the handle portion to the toothed portion with
the air passage portion between the handle portion and the
toothed portion via at least one threaded fastener in a manner
such that the first opening is positioned adjacent to the toothed
portion.

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The following grounds of rejection are before us for review:
(1) Claims 13-15, under 35 U.S.C. § 103(a) as obvious over Wang1,
Porter2, and Romani3 (Ans. 3); and
(2) Claims 16-18, under 35 U.S.C. § 103(a) as obvious over Wang,
Porter, Romani, and Parker4 (Ans. 6).
DISCUSSION
The Examiner found that Wang described a process of assembling a
pet grooming tool substantially as recited in claim 13, but conceded that
Wang’s tool did not have the plurality of edge segments adapted to engage
loose fur, as required by claim 13 (Ans. 3-4). The Examiner also conceded
that Wang differed from claim 13 in that Wang’s tool did not have an air
passage portion (id. at 4).
To address the first deficiency, the Examiner cited Porter as disclosing
a pet grooming tool having a toothed portion with a plurality of edge
segments “adapted to engage loose fur in a pet’s coat as such loose fur
extends through the gaps in a manner removing the loose fur from the pet’s
coat” (id.). The Examiner concluded it would have been obvious to modify
the tool of Wang with the edge segments of Porter in order to facilitate
efficient removal of loose fur (id.).
To cure the remaining deficiency of Wang, the Examiner cited
Romani as disclosing a pet grooming tool with an air passage portion
secured to the tool with “at least one threaded fastener . . . in a manner such

1 U.S. Patent App. Pub. 2008/0078333 A1 (published Apr. 3, 2008).
2 U.S. Patent No. 6,782,846 B1 (issued Aug. 31, 2004).
3 U.S. Patent No. 5,088,199 (issued Feb. 18, 1992).
4 U.S. Patent No. 5,067,444 (issued Nov. 26, 1991).
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that the first opening is positioned adjacent the toothed portion” as required
by claim 13 (id. at 4-5). Based on the references’ teachings, the Examiner
reasoned:
It would have been obvious to one having ordinary skill
in the art at the time the invention was made to have modified
the pet grooming tool of Wang to include an air passage portion
as taught by Romani since such a modification would have
improved the cleanliness of a grooming area by collecting
through a fluid passageway, the loose fur that has been removed
from a pet’s coat.
(Id. at 5).
As stated in In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992):
[T]he examiner bears the initial burden . . . of presenting a
prima facie case of unpatentability. . . .
After evidence or argument is submitted by the applicant
in response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration
to persuasiveness of argument.

Appellants’ arguments do not persuade us that a preponderance of the
evidence fails to support the Examiner’s prima facie case of obviousness as
to claim 13.
As the Supreme Court explained in KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 417 (2007), “if a technique has been used to improve one device,
and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill.”
Here, as the Examiner points out, and as required by claim 13,
Romani discloses that securing an air flow passage 24 to a pet grooming
clipper 10, such that a first opening 16 (also designated as 32) of the air
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passage is adjacent to the device’s clipper blades 14, provides the advantage
that, “as hair is cut by the clipper 10, the loose hair cuttings will be sucked
into the suction head 12 through its front inlet 32 located immediately 25
rearward of the cutting blades 14” (Romani, col. 3, ll. 23-26; see also
Figures 1 and 4). We thus agree with the Examiner that an ordinary artisan
would have been prompted, when reassembling Wang’s device, to have
secured a similar air flow passage to the device, with the opening adjacent to
the toothed portion 51 (see Wang Figure 2), so as to facilitate hair removal
when using the device.
Appellants argue that because the handle portion of Romani’s tool “is
not spaced from the toothed portion of the Romani tool . . . the air passage
portion of the Romani tool cannot be positioned in the space that separates
the handle portion from the toothed portion of the Romani tool” (App. Br.
4). Rather, Appellants urge, “the air passage portion of the Romani tool is
merely attached to the side of the handle portion of the Romani tool. Thus,
the air passage portion of the Romani tool does not lie between the handle
portion and the toothed portion, as is required by each of claims 13-15” (id.).
Further, Appellants argue, an ordinary artisan would not have
considered it obvious to modify Romani’s tool “by positioning the air
passage portion of the Romani tool in any space between the handle portion
and the toothed portion of the Romani tool because the clipper tool of
Romani is electrically powered and the handle portion houses the electric
motor which drives the clipper blade” (id.).
However, as the Examiner pointed out (see Ans. 5), at least the apical
portion of the cutting blades 14 of Romani’s clipper are separated from the
handle portion by the air passage portion. We are therefore not persuaded
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that the Examiner interpreted claim 13 unreasonably in finding that Romani
teaches or suggests claim 13’s feature of securing the handle portion to the
toothed portion with the air passage portion being between the handle and
toothed portions. Moreover, the fact that an ordinary artisan might not have
wanted to modify Romani’s tool is not pertinent to the rejection at issue,
since the Examiner’s position is that an ordinary artisan would have been
prompted to modify Wang’s device to incorporate Romani’s vacuum air
passage.
Further, as seen in Romani (see, e.g. Figure 1), an ordinary artisan
would have understood that the intake opening of the air passage should be
located adjacent to the clipping blades of the grooming device. One obvious
option that would have located the air passage intake opening adjacent to the
blade of Wang’s device would have been to place the air passage between
the handle 40 and toothed portion 51 (see Wang, Fig. 2).
Appellants argue that Romani “fails to disclose any fastener that
connects a toothed portion to a handle portion.” (App. Br. 5). While
Appellants concede that Wang discloses such a fastener, Appellants
nonetheless urge that Wang “fails to disclose how such a fastener could
possibly position the toothed portion with an air passage portion between the
handle portion and the toothed portion.” (App. Br. 5).
We are not persuaded. As the Examiner points out (see Ans. 7), and
as seen in Romani, an ordinary artisan would have recognized that one
method of attaching an air passage to a device was to use a threaded fastener
44 that passed through the passage (see Romani, Fig. 1). Thus, an ordinary
artisan prompted by Romani to attach an air passage to Wang’s device
would have reasoned that Wang’s threaded fasteners would have been
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suitable for effecting a similar attachment. As the Supreme Court has noted,
“[a] person of ordinary skill is also a person of ordinary creativity, not an
automaton.” KSR, 550 U.S. at 421.
In sum, Appellants’ arguments do not persuade us that a
preponderance of the evidence fails to support the Examiner’s prima facie
case of obviousness as to claim 13. We therefore affirm the Examiner’s
rejection of that claim as obvious over Wang, Porter, and Romani. As they
were not argued separately, claims 14 and 15 fall with claim 13. See 37
C.F.R. § 41.37(c)(1)(vii).
In rejecting claims 16-18 as obvious over Wang, Porter, Romani, and
Parker, the Examiner relied on Wang, Porter, and Romani for the teachings
discussed above, and cited Parker to meet claim 16’s additional requirement
of applying pressurized air to the second opening of the air passage portion
by coupling a hose to the second opening (Ans. 6-7). Based on the
references’ teachings, the Examiner reasoned that an ordinary artisan would
have considered it obvious to modify “the method of providing a pet
grooming tool of Wang, as modified by Porter et al. and Romani, to include
a method of applying heated pressurized air as taught by Parker since such a
modification would have enabled a single operator to effectively groom and
dry a pet” (id. at 7).
Appellants argue only that Parker does not remedy the deficiencies of
Wang, Porter, and Romani, discussed above, as to claim 13 (App. Br. 5). As
discussed above however, we are not persuaded that Wang, Porter, and
Romani would have failed to render claim 13 obvious to an ordinary artisan.
Thus, as Appellants do not identify any deficiency in the Examiner’s
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combination of Wang, Porter, Romani, and Parker, and as we detect none,
we affirm the Examiner’s rejection of claims 16-18.
SUMMARY
We affirm the Examiner’s obviousness rejection of claims 13-15 over
Wang, Porter, and Romani.
We also affirm the Examiner’s obviousness rejection of claims 16-18
over Wang, Porter, Romani, and Parker.

TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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