Ex Parte Prokop

Patent Trial and Appeal Board

Mar 21, 2013

11758816 (P.T.A.B. Mar. 21, 2013)

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.
11/758,816 06/06/2007 INV001David Prokop OKC01391 5166
33900 7590 03/21/2013
Hall Estill Attorneys at Law
(MDMMY)
100 NORTH BROADWAY
SUITE 2900
OKLAHOMA CITY, OK 73102-8820
EXAMINER
CHIN, PAUL T
ART UNIT PAPER NUMBER
3652
MAIL DATE DELIVERY MODE
03/21/2013 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DAVID PROKOP
____________________

Appeal 2010-011566
Application 11/758,816
Technology Center 3600
____________________

Before: PHILLIP J. KAUFFMAN, PATRICK R. SCANLON, and
NEIL A. SMITH, Administrative Patent Judges.

KAUFFMAN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-011566
Application 11/758,816

2
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1-
7, 9-10, 12-14, and 16-20. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

The Invention
Claims 1, 12, and 18 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter (emphasis
added):
1. A gardening apparatus comprising:
a single rigid body providing a working
surface; and
a copper rich material covering the working
surface, wherein upon engaging an object with the
work surface a portion of the copper rich material
is transferred to the object; and
a plurality of metallic buttons
communicating directly and only with the single
rigid body.

The Rejections and Evidence Relied Upon
The following rejections are before us on appeal:
I. Claims 1-4, and 12-14 under 35 U.S.C. § 103(a) as unpatentable over
Marshall (US 6,027,153; iss. Feb. 22, 2000), Wherry (US
2005/0006111 A1; pub. Jan. 13, 2005), and Fracker (US 2,960,230;
Nov. 15, 1960).
II. Claims 5-7 under 35 U.S.C. § 103(a) as unpatentable over Marshall,
Wherry, Fracker, and Holder (US 3,976,564; iss. Aug. 24, 1976).
Appeal 2010-011566
Application 11/758,816

3
III. Claims 9, 10, and 16-20 under 35 U.S.C. § 103(a) as unpatentable
over Marshall, Wherry, Fracker, and either Smith (D395,582; Jun. 30,
1998) or Asay (US 4,910,893; iss. Mar. 27, 1990).

ISSUE
Each of independent claims 1, 12, and 18 call for a plurality of
buttons. All of the rejections rely upon the Examiner’s finding that
Fracker’s perforations 20 correspond to buttons as claimed. Ans. 4-5, 7-8.
Appellant argues that holes, such as Fracker’s perforations 20, are not
buttons as claimed. App. Br. 10-11; Reply Br. 2-4.
The issue in this appeal is whether Fracker discloses buttons as
claimed.

OPINION
The buttons of claim 1 are metallic, those of claim 12 are metal, and
those of claim 18 are a metal alloy. Fraser’s perforations 20 are not metallic,
metal, or metal alloy; rather, perforations 20 are the absence of any material.
See Fracker, col. 2, ll. 52-57 (perforations 20 are formed by removing
material); figs. 1-4. The Examiner’s interpretation that perforations, which
are an absence of material, correspond to metallic, metal, or metal alloy
buttons is unreasonably broad.
Consequently, Appellant has demonstrated that the Examiner’s
conclusion of obviousness for each of the three rejections is based upon an
erroneous finding of fact.

Appeal 2010-011566
Application 11/758,816

4
DECISION
We reverse the Examiner’s decision to reject claims 1-7, 9-10, 12-14,
and 16-20.

REVERSED

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