Ex Parte Wood

Patent Trial and Appeal Board

Dec 16, 2015

12805953 (P.T.A.B. Dec. 16, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/805,953 08/26/2010
49455 7590 12/18/2015
STEIN IP, LLC
1400 EYE STREET, NW
SUITE 300
WASHINGTON, DC 20005
FIRST NAMED INVENTOR
Robert P. Wood
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
0193.1001 9556
EXAMINER
PIERCE, WILLIAM M
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
12/18/2015 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
docketing@steinip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT P. WOOD
Appeal2013-006931
Application 12/805,953
Technology Center 3700
Before DEBORAH KATZ, ROBERT L. KINDER, and SCOTT C. MOORE
Administrative Patent Judges.
KATZ, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2013-006931
Application 12/805,953
Appellant 1 seeks our review, under 35 U.S.C. § 134(a), of the
Examiner's decision to reject claims 1-5 and 11, all of the pending claims.
(Br. 5.) We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.
The Examiner rejected claims 1-5 and 11under35 U.S.C. § 103(a) as
being unpatentable over Kubotan 7 inch Gold Keychain2 ("Kubotan") in
view of Woodall' s Custom Workshop 3 ("Woodall") and further in view of
Hinderer Titanium Kubotan Set4 ("Hinderer"). (Final Office Action ("Final
Act.") at 2.) Appellant does not contest the status of these references as
prior art against its claimed invention.
Appellant argues that claim 1 is not rendered obvious by the prior art,
but does not provide specific arguments regarding the additional elements of
dependent claims 3-5 and 11 (see Br. 10). Accordingly, we focus on claim
1 in our review. See 37 C.F.R. § 41.37(c)(l)(iv).
Appellant's Specification is directed to a weapon for injuring an
attacker and for collecting DNi\. by scratching his or her skin. (Spec. if 2.)
In an Advisory Action issued January 30, 2013, the Examiner entered
Appellant's amendments to the claims filed on November 14, 2012. In light
of those amendments, Appellant's claim 1 recites:
1 The inventor names no real party-in-interest other than himself. (Br. 3.)
2 Listed as available at
http://web.archive.org/web/20040821172215/http://www.ninja-
weapons.com/W eapons/Defensive_Keychains/ 44 3 5. shtml.
3 Listed as available at
http://customwhorkship.biz/ osCommerce/ catalog/product_ info. php ?products
_id= 131&osCsid=07332b26ce14b6342c54bd0dcb9cc032
4 Listed as available at
http://www.knives.pl/forum/index.php?topic+ 108253 .0.
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Appeal2013-006931
Application 12/805,953
An anti-assault weapon comprising:
a) a hollow body made of a rigid material and sized to fit in the
hand of a user;
b) a first opening at one end of said body and a second opening
at the opposite end of said body;
c) a closure sealing one end of said body;
d) a reversible end cap sealing the other end of said body;
e) a stub shaft projecting axially from said second end cap in a
first direction;
t) serrations defined on the exposed face of said stub shaft;
g) said serrations being configured to (1) inflict pain or
discomfort on a potential attacker, and (2) simultaneously collect
DNA, and
h) a knife joined to said reversible end cap and extending in an
axial direction away from said serrations;.
i) said knife normally extending into the interior of said body
and being concealed from view, and
j) said knife being exposed when said reversible end cap is
inverted and secured to said body so that said serrations on the face of
said stub shaft are located within said body.
Figure 1 of Appellant's Specification is depicted below.
23
FIG. 1 17
Figure 1 depicts a weapon with an end cap (16) having a stub shaft
(22) on one end, the stub shaft being defined by serrations or ridges on its
face (Spec., i-f 18), and a knife (32) on the other end (id. at i-f 21 ).
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Appeal2013-006931
Application 12/805,953
Kubotan teaches a tool (called a "kubotan") that serves as either a
keychain, with a key ring on one end, or as a weapon, with a knife on the
other end. (See Kubotan, picture.) The knife in this tool is secured on a
reversible end cap, allowing it to be either stored interiorly or mounted
exteriorly.
The tool of Kubotan is not shown to have a face of the "stub shaft"
with serrations configured to inflict pain and simultaneously collect DNA as
claimed.
Hinderer teaches a kubotan with multiple attachments, including two
reversible end caps. (Hinderer, pp. 1, 3.) Although the Examiner did not
rely on a translation of Hinderer, the readable English portion states it is a
long strike bezel with a "DNA Scraper" component. (Id. at 1.) The
Examiner finds that this DNA scraper element is configured with serrations,
as required in claim 1. (Ans. 5.) Because a "DNA Scraper" must
necessarily have some degree of unevenness on its surface in order to collect
a sample (a completely smooth surface would be unable to scratch the skin),
the Examiner's finding that the "DNA Scraper" has serrations is supported
by the record. Furthermore, despite the poor quality of the pictures in
Hinderer, the undulating ridges on the surface of the end element on the left
side of the strike bezel depicted on the top of page 3 appear to be serrations
for scraping to collect DNA. Accordingly, we are not persuaded by
Appellant's argument that Hinderer fails to teach a stub shaft projecting
from an end cap and having serrations on the exposed face, configured as
recited in elements ( e ), ( f), and (g) of claim 1. (Br. 10.)
The Examiner finds that those of skill in the art would have had
reason to combine the DNA Scraper end of the kubotan of Hinderer with
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Appeal2013-006931
Application 12/805,953
tool ofKubotan as a style choice. 5 (Final Act. 2.) We are not persuaded by
Appellant's argument that the Examiner used only impermissible hindsight
to combine the cited references (Br. 19). "[W]hen a patent claims a structure
already known in the prior art that is altered by the mere substitution of one
element for another known in the field, the combination must do more than
yield a predictable result." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416
(2007).
We are also not persuaded by Appellant's argument alleging that the
cited documents are from nonanalogous arts. (Br. 11-12.) As we understand
the argument, because Appellant's invention has the dual capabilities of
scraping and stabbing, the cited references are not from the same field of
endeavor and do not relate to the same problem. (Id.) We disagree with
Appellant that none of the cited references teaches an element for evidence
collection, as discussed above. Because all of the cited references teach
kubatons \~1ith various attachments and 1A~ppellant' s invention is a kubaton
with attachments as taught by those references, the references are from art
analogous to that of Appellant's invention.
Appellant has failed to persuade us that the Examiner erred in
rejecting the pending claims.
Conclusion
Upon consideration of the record and for the reasons given, the
rejection of Appellant's claims is sustained.
Therefore, we affirm the decision of the Examiner.
5 Woodall was cited as teaching a compartment as recited in Appellant's
claim 5. (Final Act. 2.) Appellant does not present arguments regarding the
teachings of Woodall.
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Appeal2013-006931
Application 12/805,953
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.
AFFIRMED
sl
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