Ex Parte Vosbikian et al

Board of Patent Appeals and Interferences

Nov 29, 2010

11425772 (B.P.A.I. Nov. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PETER S. VOSBIKIAN and ROBERT E. PETNER
____________

Appeal 2009-008593
Application 11/425,772
Technology Center 3600
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Before: LINDA E. HORNER, STEVEN D.A. MCCARTHY, and
FRED A. SILVERBERG, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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STATEMENT OF THE CASE
Peter S. Vosbikian and Robert E. Petner (Appellants) seek our review
under 35 U.S.C. § 134 of the Examiner’s decision rejecting claims 1 and 4-8.
We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We REVERSE.
INVENTION
Appellants’ claimed invention relates to implements comprising
handles and working ends, such as brooms or mops. Spec. 1, para. [0002].
Claim 1, reproduced below, is representative of the subject matter on appeal.
1. An implement comprising:
a handle including a first end and an integrally threaded
second end, wherein a length extending between the first and
second ends is within a range of about 31.0 inches to about 47.0
inches, and a working end including a top portion and a bottom
portion, wherein the first end of the handle is attached to the top
portion of the working end; and
a handle-attachment member adapted to extend the handle
length, wherein the handle attachment member includes a
handle-attachment member length within a range of 12 inches to
15 inches, and the handle-attachment member further includes
an integrally threaded section for mating with the integrally
threaded second end of the handle.
REJECTIONS
Appellants seek review of the following Examiner’s rejections:
1. Rejection of claims 1, 4, and 5 under 35 U.S.C. § 103(a) as being
unpatentable over Dory (US 2,639,454, issued May 26, 1953) and Berry
(US 6,530,487 B1, issued March 11, 2003).
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2. Rejection of claims 6 and 7 under 35 U.S.C. § 103(a) as being
unpatentable over Dory, Berry, and Smith (US 1,665,988, issued April 10,
1928).2
3. Rejection of claim 8 under 35 U.S.C. § 103(a) as being unpatentable
over Dory, Berry, Ritrovato (US 6,889,405 B2, issued May 10, 2005), and
Gullotti (US 6,637,180 B2, issued October 28, 2003).
ISSUE
Is the rejection of independent claim 1 based upon a sufficient reason
with a rational underpinning to explain why a person of ordinary skill in the
art would have modified Dory’s handle and handle-attachment member to
have lengths within the ranges called for in independent claim 1?
ANALYSIS
Rejection of claims 1, 4, and 5 under 35 U.S.C. § 103(a) as being
unpatentable over Dory and Berry
Independent claim 1 is directed to an implement that comprises a
handle having a length within a range of about 31.0 inches to about 47.0
inches, and a handle-attachment member adapted to extend the handle length
and having a length within a range of 12 inches to 15 inches.
The Examiner found that Dory discloses an implement that comprises
a handle and a handle-attachment member adapted to extend the handle

2 Appellants mistakenly refer to this rejection in the Appeal Brief as over
Dory and Smith (App. Br. 7, 12). However, claims 6 and 7 stand rejected
over Dory, Berry, and Smith. Ans. 6, 8 (noting Appellants’ error); see also
Office Action dated August 15, 2007 at 3-4. Appellants correct this error in
the Reply Brief. Reply Br. 2, 6.
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length, but that Dory does not explicitly disclose the lengths of the handle or
the handle-attachment member within the ranges called for by claim 1.
Ans. 4-5. We agree with these findings.
Dory discloses a kit for use by motorists during snowy and icy
weather that includes: snow pusher 15, shovel 16, ice and snow scraper 17,
and single sectional handle 18 (formed of front section 22 and rear section
23). Dory, col. 1, ll. 3-4; col. 2, ll. 20-27, 39-42; figs. 1-5. Dory discloses
that the kit fits compactly within container 10. Dory, col. 2, ll. 22-25; fig. 1.
Thus, Dory discloses an implement (e.g., shovel 16) that comprises a handle
(front section 22) and a handle-attachment member (rear section 23) adapted
to extend the handle length, but Dory does not disclose the lengths of handle
or the handle-attachment member.
We also agree with the Examiner’s finding that it was known in the
art to provide long-handled implements with a handle section having an
overall length in the range of 42 to 66 inches as evidenced by Berry. Ans. 5;
Berry, col. 9, ll. 20-30; figs. 3, 5, 6.
The Examiner concluded that knowing the overall length of the handle
as disclosed by Berry, selection of the ranges of the lengths of the handle
and the handle-attachment member called for in claim 1 would have been
obvious “to ergonomically fit a user employing the implement” and would
have been within the routine skill of a person of ordinary skill in the art.
Ans. 5, 9. We cannot agree with these conclusions.
A person of ordinary skill in the art, knowing the disclosure of Dory,
would know that a handle may be comprised of two sections (front section
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22 and rear section 23) in order to make the handle compact for storage.
Further, a person of ordinary skill would know that handles for implements,
such as long-handled garden implements, can have an overall length in the
range of about 42 to about 66 inches. However, we fail to see, and the
Examiner has failed to articulate, what would lead a person of ordinary skill
in the art to configure Dory’s handle (the front section 22 and the rear
section 23) to have lengths within the ranges called for in independent
claim 1. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006))).
Contrary to the Examiner’s conclusion (Ans. 10), the case at hand is
not analogous to In re Woodruff, 919 F.2d 1575 (Fed. Cir. 1990). In
Woodruff, the claim was directed to a process for inhibiting the growth of
fungi on vegetables and the claimed ranges used in the method overlapped
the ranges disclosed in the prior art. Woodruff, 919 F.2d at 1576. Thus, the
court in Woodruff decided that Woodruff’s newly-discovered benefit of
inhibiting the growth of fungi was not sufficient to render the claimed
process patentable because merely discovering and claiming a new benefit
of an old process cannot render the process again patentable. Id. at 1578. In
this case, the claims are not directed to a new benefit of an old process.
Rather, we are reviewing apparatus claims that recite a novel structure.
Further, the Examiner has made no finding here that the claimed ranges for
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the lengths of the handle and handle-attachment member overlap with the
lengths of Dory’s front and rear sections. Ans. passim.
Nor does In re Aller, 220 F.2d 454 (CCPA 1955) support the
Examiner’s conclusion of obviousness. See Ans. 11. Aller established two
conditions for a conclusion of obviousness: one, the general conditions of
the claim must be disclosed in the prior art; and two, discovery of the
optimum or workable range must be a matter of routine experimentation for
a person of ordinary skill in the art. Aller, 220 F.2d at 456. Here, the
Examiner inadequately addresses the second condition of Aller by failing to
explain how optimization of the lengths of the handle and handle-attachment
member using routine skill would have resulted in lengths within the
claimed ranges. In fact, it seems contrary to the purpose of Dory’s kit, i.e.,
to make the handle compact for storage, to modify Dory’s handle so that the
front section is considerably longer than the rear section, as called for in
claim 1. Such a modification would result in a storage container of
increased size as compared to front and rear sections having equal length.
For these reasons, we cannot sustain the rejection of independent
claim 1. We also cannot sustain the rejection of claims 4 and 5, which
depend from independent claim 1, because their rejection is based upon the
same insufficient reasoning.
Rejection of claims 6 and 7 under 35 U.S.C. § 103(a) as being unpatentable
over Dory, Berry, and Smith; and rejection of claim 8 under 35 U.S.C.
§ 103(a) as being unpatentable over Dory, Berry, Ritrovato, and Gullotti
Claims 6-8 depend, directly or indirectly, from independent claim 1.
The Examiner’s rejections of claims 6-8 rely upon the same reasoning for
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the modification of Dory’s device used for the rejection of independent
claim 1, supra. Consequently, the rejections of claims 6-8 are also not based
upon sufficient reasoning with a rational underpinning, and we cannot
sustain these rejections.
CONCLUSIONS
The rejection of independent claim 1 is not based upon a sufficient
reason with a rational underpinning to explain why a person of ordinary skill
in the art would have modified Dory’s handle and handle-attachment
member to have lengths within the ranges called for in independent
claim 11.
DECISION
The decision of the Examiner to reject claims 1 and 4-8 is
REVERSED.

REVERSED

nlk

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