Nathan Hitson

Patent Trials and Appeals Board

Jul 28, 2020

2020000173 (P.T.A.B. Jul. 28, 2020)

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.
15/193,312 06/27/2016 Nathan Hitson PHJC2174-002 1743
26948 7590 07/28/2020
VENJURIS, P.C.
1938 E. OSBORN RD
PHOENIX, AZ 85016-7234
EXAMINER
CROSBY JR, RICHARD D
ART UNIT PAPER NUMBER
3724
NOTIFICATION DATE DELIVERY MODE
07/28/2020 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@venjuris.com
vclmdocket@venjuris.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NATHAN HITSON
Appeal 2020-000173
Application 15/193,312
Technology Center 3700
Before JILL D. HILL, LEE L. STEPINA, and ARTHUR M. PESLAK,
Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–11. See Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as the inventor, Nathan
Hitson. Br. 2.
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Application 15/193,312

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CLAIMED SUBJECT MATTER
Appellant’s invention relates to animal shears/clippers. Claim 1,
reproduced below with emphasis added, is illustrative of the claimed subject
matter.
1. A shear comprising:
a shear portion including a shear head interface, wherein
an interchangeable shear or clipper head couples to the shear
portion via the shear head interface;
a handle portion including a motor casing, a switch, and a
battery slide, wherein the battery slide receives a removable
battery and the motor casing houses a brushless direct current
motor;
wherein the shear or clipper head couples to the shear
portion of the shear via the shear head interface with a pair of
helical gears that are integrated in the shear or clipper head and
a drive shaft of the motor to create gear on gear motion of the
shear or clipper head.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Osada US 6,282,797 B1 Sept. 4, 2001
Heerlein US 8,769,824 B2 July 8, 2014
Comminges US 2005/0060893 A1 Mar. 24, 2005
Dyer US 2014/0366383 A1 Dec. 18, 2014

REJECTIONS
I. Claims 1–11 are rejected under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement.
II. Claims 1, 2, and 6 are rejected under 35 U.S.C. § 103 as
unpatentable over Heerlein and Comminges.
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III. Claims 3 and 4 are rejected under 35 U.S.C. § 103 as
unpatentable over Heerlein, Comminges, and Dyer.
IV. Claim 5 is rejected under 35 U.S.C. § 103 as unpatentable over
Heerlein, Comminges, and Osada.
V. Claims 7–9 and 11 are rejected under 35 U.S.C. § 103 as
unpatentable over Heerlein, Comminges, and Dyer.
VI. Claim 10 is rejected under 35 U.S.C. § 103 as unpatentable
over Heerlein, Comminges, Dyer, and Osada.
The Examiner additionally objects to certain amendments to the
Specification filed under 35 U.S.C. § 132 as introducing new matter. Final
Act. 2–3. The reasons for the objection to the Specification appear to be
coextensive with the reasons for the rejection of the claims under 35 U.S.C.
§ 112(a) as failing to meet the written description requirement which is
further discussed below. See Final Act. 3–4.
OPINION
Rejection I; Written Description
Claim 1 recites, in part:
wherein the shear or clipper head couples to the shear portion of
the shear via the shear head interface with a pair of helical gears
that are integrated in the shear or clipper head and a drive shaft
of the motor to create gear on gear motion of the shear or clipper
head.
Br. 23 (Claims App.). Independent claim 7 includes the same limitation.
Br. 23–24 (Claims App.).
The Examiner finds that this limitation fails to comply with the
written description requirement because “it does not appear to be supported
by the original specification.” Final Act. 3. The Examiner considers that
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although the drawings provide support for gear 180 and gear 185, as labeled
by Appellant, “any further specifics were not originally disclosed within the
specification,” and “[t]he original specification does not mention the gears,
or the specifics of how these gears interact via each other, or the motor.”
Final Act. 4.
Appellant argues that the disclosure of the drawings included in the
original filing is sufficiently detailed to show possession of the claimed
invention. Br. 9. Appellant contends that “[a] person of ordinary skill
would have been able to clearly recognize the helical gears and their
function within the working of the device as shown in the originally filed
drawings.” Id.
The “written description requirement is satisfied by the patentee’s
disclosure of ‘such descriptive means as words, structures, figures, diagrams,
formulas, etc., that fully set forth the claimed invention.”’ Enzo Biochem,
Inc. v. Gen-Probe Inc., 323 F.3d 956, 969 (Fed. Cir. 2002)(quoting
Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997)).
“The disclosure must allow one skilled in the art to visualize or recognize
the identity of the subject matter purportedly described.” Id. at 968 (citation
omitted).
We agree with Appellant’s assertion that a person of ordinary skill
would have been able to recognize the gears and their function based on the
original disclosure. See Br. 9. Paragraph 31 of the application as filed
discloses “shear heads 116 or clipper heads 117 couple to the drive shaft of
the motor 175 that provides the operational movement of the shear heads
116 or clipper heads 117.” Spec. ¶ 31. Given that Figures 1–3 depict a
shear portion with motor 175 having a drive shaft with a helical gear at an
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end thereof, and given that Figures 8 and 10 depict a shear head 116 with a
second helical gear, one of ordinary skill would have been able to recognize
that coupling the shear head “to the drive shaft of the motor” entails
coupling the gear in the shear head to the gear on the drive shaft to
“provide[s] the operational movement of the shear head,” as disclosed in
paragraph 31. Thus, the figures and the disclosed coupling of the drive shaft
allow one skilled in the art to visualize or recognize that coupling the shear
head to the shear portion of the shear is through a pair of helical gears, one
that is integrated in the shear head and the other on the drive shaft of the
motor, and that such coupling creates gear on gear motion of the shear head
to provide operational movement thereof.
We do not sustain the Examiner’s rejection of claims 1 and 7, and
claims 2–6 and 8–11 depending therefrom, as failing to comply with the
written description requirement.

Rejection II; Unpatentability Based on Heerlein and Comminges
The Examiner finds that Heerlein disclose many of the limitations of
the shear of claim 1 including a shear head 6 that couples to a shear portion
at an interface. Final Act. 4. The Examiner finds that the coupling in
Heerlein is not with a pair of helical gears that are integrated in the shear or
clipper head and a drive shaft of the motor to create gear on gear motion of
the shear or clipper head. Final Act. 5. Nonetheless, the Examiner finds that
Comminges teaches “a pair of helical gears (9) that are integrated in the
clipper head and a drive shaft (3A) of a motor (3) to create gear on gear
motion of the clipper head.” Id. (emphasis added). The Examiner concludes
that it would have been obvious to use the gear arrangement of Comminges
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in the device of Heerlein, because all elements were known in the art and
could have been combined by known methods with no change in their
respective functions and the combination would have yielded predictable
results.” Id.
Appellant argues that Heerlein does not disclose gear on gear
movement and that the combination of Heerlein with Comminges would not
create the claimed movement. Br. 11.
We agree with Appellant for the following reasons. Comminges
discloses a plurality of gears, as seen in Figure 2, reproduced below.

Figure 2 shows, respectively, a view in front perspective and a view in
rear perspective of a planetary reducer in engagement with an oscillating
finger. Comminges ¶ 10. Comminges discloses that “stationary crown 8 is
provided internally with teeth. These interior teeth of the crown 8 coact by
engagement with at least two satellites 9 themselves driven by a pinion 10
carried by the output shaft 3A of the electric motor 3.” Id. ¶ 14.
Comminges also discloses that “electric motor 3 permits actuating, with
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reciprocating movement, by means of an oscillating finger 4, a cutting comb
6 at the head of the clipper.” Id. ¶ 12; Fig. 3. Thus, although we appreciate
that there is gear on gear motion in Comminges, such motion is based on
gears 8 and 9 interacting with pinion gear 10 connected to output shaft 3A
(drive shaft), each of which is within the clipper body 2. See Comminges
¶ 13. The Examiner does not identify, nor do we discern any gear of
Comminges that is integrated in the shear or clipper head. Indeed, any
motion in Comminges causes oscillating finger 4 to move to reciprocate
cutting comb 6 (shear head), and we do not discern any gear on gear motion
of the shear or clipper head, as recited.
Accordingly, the Examiner's finding that Comminges’s pair of helical
gears 9 are integrated in the clipper head and drive shaft 3A to create gear on
gear motion of the clipper head is not supported by a preponderance of the
evidence. Consequently, the Examiner's proposed combination of the
teachings of Heerlein and Comminges does not meet all of the limitations
recited in claim 1. Therefore, we do not sustain the rejection of claim 1, and
associated dependent claims 2 and 6, as unpatentable over Heerlein and
Comminges.

Rejections III–IV; Heerlein and Comminges in combination with any
of Dyer and Osada
The Examiner’s use of the teachings of Dyer and Osada does not
remedy the deficiency discussed above regarding Rejection II. See Final
Act. 5–7. Accordingly, we do not sustain Rejections III–IV.

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Rejection V; Heerlein, Comminges, and Dyer
Independent claim 7 and claims 8, 9, and 11 depending therefrom also
require coupling of the shear or clipper head to the shear portion with a pair
of helical gears that are integrated in the shear or clipper head and a drive
shaft of the motor to create gear on gear motion of the shear or clipper head,
and the Examiner relies on the same findings of fact in support of the
rejection of these claims. See Br. 23–24 (Claims App.); Final Act. 7–9. The
Examiner’s use of the teachings of Dyer does not remedy the deficiency
discussed above regarding Rejection II. See Final Act. 9. Accordingly, for
the same reasons discussed above regarding the rejection of claim 1, we do
not sustain the rejection of claims 7–9 and 11 as unpatentable over Heerlein,
Comminges, and Dyer.

Rejection VI; Heerlein, Comminges, Dyer, and Osada
The Examiner’s use of the teachings of Osada does not remedy the
deficiency discussed above regarding Rejection V. See Final Act. 10.
Accordingly, we do not sustain Rejection VI.
CONCLUSION
The Examiner’s rejections are reversed.
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DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–11 112(a) Written Description 1–11
1, 2, 6 103 Heerlein, Comminges 1, 2, 6
3, 4 103 Heerlein, Comminges,
Dyer
3, 4
5 103 Heerlein, Comminges,
Osada
5
7–9, 11 103 Heerlein, Comminges,
Dyer
7–9, 11
10 103 Heerlein, Comminges,
Dyer, Osada
10
Overall
Outcome:
1–11

REVERSED