Ex Parte 6,775,873 B2 et al

Patent Trial and Appeal Board

Jul 27, 2015

95001754 (P.T.A.B. Jul. 27, 2015)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/001,754 10/07/2011 6,775,873 B2 P401396 7913
112610 7590 07/27/2015
Christensen Fonder PA
33 South Sixth Street
Suite 3950
Minneapolis, MN 55402
EXAMINER
MCKANE, ELIZABETH L
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
07/27/2015 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 PATENT TRIAL AND APPEAL BOARD
____________

GT WATER PRODUCTS, INC.
Requester and Cross-appellant

v.

EUGENE H. LUOMA
Patent Owner and Appellant
____________

Appeal 2015-003755
Reexamination Control 95/001,754
Patent 6,775,873 B2
Technology Center 3900
____________

Before RICHARD M. LEBOVITZ, JEFFREY B. ROBERTSON, and
RAE LYNN P. GUEST, Administrative Patent Judges.

GUEST, Administrative Patent Judge.

DECISION ON APPEAL

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This is a decision on appeal by the Patent Owner from the Patent
Examiner’s decision to reject pending claims in an inter partes
reexamination of U.S. Patent 6,775,873 B2 (hereinafter the “’873 patent”).
This is also a decision on an appeal by the Third-Party Requester from the
Patent Examiner’s decision not to adopt proposed rejections of the claims.
The Board’s jurisdiction for this appeal is under 35 U.S.C. §§ 6(b), 134, and
315. We affirm-in-part the Examiner’s decision to reject pending claims.
We reverse-in-part the Examiner’s decision not to adopt proposed rejections
of the claims and, as a result, enter a new ground of rejection.

I. BACKGROUND
The ’873 patent issued August 17, 2004 to Eugene H. Luoma
(hereinafter “Patent Owner”), who is the patent owner and real party in
interest. Patent Owner’s Appeal Brief 3, filed November 18, 2013
(hereinafter “PO App. Br.”).
The Third-Party Requester is GT Water Products, Inc. See Requester
Appeal Br. 4, dated December 2, 2013 (hereinafter “Req. App. Br.”).
The ’873 patent is the subject of a litigation in the U.S. District Court
for the District of New Jersey styled Cobra Products, Inc. v. G.T. Water
Products, Inc., Civil Action No. 1:11-cv-03924-JEI-JS, which is currently
stayed pending the outcome of this inter partes reexamination. See PO App.
Br. 3; Req. App. Br. 4.
Claims 1-12 are pending and stand finally rejected by the Examiner.
The claims are drawn to an apparatus for removing hair from a drain,
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comprising an elongate flexible strip having a plurality of barbed portions.
Figure 1 and Figure 2 of the ’873 patent are reproduced below.

Figure 1 depicts a top plan view of the apparatus 10 for removing hair
from a drain, demonstrating the barbed portions 20 oriented at an angle A to
the axis X. Figure 2 depicts a side elevational view of the apparatus 10 of
Figure 1, with the flexing of the invention shown in phantom. ’873 patent,
col. 1, ll. 51-56, col. 2, ll. 1-11.
Claims 1 and 12 are representative and reads as follows:
1. Apparatus for removing hair from a drain, comprising:
(a) an elongate, flexible strip;
(b) the elongate, flexible strip having a plurality of barbed
portions, the barbed portions being adapted to grip hair in the
drain, wherein the barbed portions are oriented at an acute angle
to the axis of the elongate strip, wherein the vertex of the angle
points away from the handle; and
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(c) a handle, wherein the handle is a distinct structural element
from the elongate, flexible strip.

12. Apparatus for removing hair from a drain, comprising:
(a) an elongate, flexible strip;
(b) a handle, integrally molded with the elongate, flexible strip,
wherein the handle is a distinct structural element from the
elongate, flexible strip, the handle having an aperture
therethrough adapted to be gripped by a person's fingers;
(c) the elongate, flexible strip having a plurality of integrally
molded barbed portions, wherein the barbed portions alternate
along each side of the elongate, flexible strip, the barbed
portions being adapted to grip hair in a drain, wherein the
barbed portions are oriented at an acute angle to the axis of the
elongate strip, and wherein the vertex of the angle points away
from the handle.
PO App. Br. 27-28, Claim App’x.

IA. Appeal by Patent Owner
Patent Owner appeals the Examiner’s decision to reject the claims
under 35 U.S.C. § 102 and § 103 based on Bropson1 or Hymes2 alone or in
view of additional prior art or “general knowledge of the art.” See PO App.
Br. 5; Right of Appeal Notice, mailed August 2, 2013 (hereinafter “RAN”).

IB. Appeal by Requester
Requester appeals the Examiner’s decision not to maintain rejections
of claims 3, 4, 6-8, and 10-12 under 35 U.S.C. § 103 as obvious over Hymes
or Bropson in view of additional prior art. Req. App. Br. 6-7; RAN.

1 US 1,825,851, issued October 6, 1931, to James Bropson.
2 US 834,135, issued October 23, 1906 to David Hymes.
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II. APPEAL BY PATENT OWNER

1. ANTICIPATION BY BROPSON
Claim 1 stands rejected as anticipated under 35 U.S.C. § 102(b) by
Bropson. RAN 6.
Claim 1 is drawn to an apparatus for removing hair from a drain
comprising an elongate flexible strip having “a plurality of barbed portions”
that are “oriented at an acute angle to the axis of the elongate strip, wherein
the vertex of the angle points away from” a handle that is “a distinct
structural element from the elongate, flexible strip.” The Examiner found
that Bropson describes these features.
Figure 1 of Bropson is reproduced below.

Figure 1 of Bropson depicts a plan view of a cleaning device, having a
handle 10, first and second elongated metal strips 11 and 12 (strip 12 not
shown), and a head 14 fastened between metal strips 11 and 12 by rivet 15.
Head 14 includes barbed side portions 17 which are shown as attached to the
flexible strip via a rivet 15. Bropson, p. 1, ll. 22-23 and 32-46.
Figure 2 of Bropson is reproduced below.
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Figure 2 of Bropson depitcts a sectional side view of the cleaning
device of Figure 1 showing both elongated metal strips 11 and 12. Id. at 25-
27 and 32-46.
Patent Owner contends that the phrase “an elongated, flexible strip” is
limited to a single strip, such that Bropson’s multiple strips 11 and 12 (see
Figure 2 above) fall outside of the claimed invention. PO App. Br. 8. Patent
Owner also contends that strips 11 and 12 have no barbed portions, and that
head 14, which contains barbed portions 17, is not elongated or
demonstrably a flexible strip. Id. 8-9. Patent Owner also contends that
Bropson describes perpendicular or 90° angled barbed portions rather than
barbed portions “oriented at an acute angle to the axis” based on the ’873
patent’s description of how angle A is to be measured. Id. 9-10.
During reexamination, “claims . . . are to be given their broadest
reasonable interpretation consistent with the specification, and . . . claim
language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (quoting In re Bond, 910 F.2d
831, 833 (Fed. Cir. 1990)).
Patent Owner’s argument, that the language “an elongated, flexible
strip” narrows the scope of claim 1 to only those structures with a single
elongated, flexible strip, is at odds with well-established precedent. “As a
general rule, the words ‘a’ or ‘an’ in a patent claim carry the meaning of
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‘one or more.’” TiVo, Inc. v. EchoStar Commc'ns Corp., 516 F.3d 1290,
1303 (Fed. Cir. 2008). “The exceptions to this rule are extremely limited: a
patentee must ‘evince[] a clear intent’ to limit ‘a’ or ‘an’ to ‘one.’” Baldwin
Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1342 (Fed. Cir. 2008).
Patent Owner presents no persuasive evidence of a clear intent to limit the
scope of the claim to a single flexible strip or a clear intent to limit the term
“a” to mean “one and only one.” The further reference in part (b) of the
claim to “the elongate, flexible strip” does not limit the strip of part (a) to
one strip, but rather establishes antecedent basis to “a” strip of part (a).
Further, we agree with the Requester that the phrase “the elongate,
flexible strip having a plurality of barbed portions” does not preclude the
structure described in Bropson. Req. Res. Br. 4. We note that claim 1 does
not recite that the barbed portions are integrally molded. Accordingly, claim
1 reads on an elongate, flexible strip “having” a plurality of barbed portions
attached to it by separate means, as taught by Bropson.
However, we agree with the Patent Owner that Bropson does not
describe with sufficient specificity a structure in which “the barbed portions
are oriented at an acute angle to the axis of the elongate strip.” As stated
above, the claims must be read in light of the specification as it would be
interpreted by one of ordinary skill in the art. Figure 1 of the ’873 patent
depicts an angle A which is measured from an axis X of the elongate strip to
an interior angle of a barbed portion 20. The ’873 patent states: “[a]s best
seen in FIG. 1, the barbed portions 20 are preferably oriented at an angle A
to the axis X of the strip 12, the angle being acute with the vertex V of the
angle pointing away from the proximal end 14.” Col. 2, ll. 8-11.
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Meanwhile the Examiner and the Requester provide the following
annotated drawing of Bropson’s Figure 1, which illustrates an angle
allegedly corresponding to the recited acute angle of the barbed portions.

The barbed end of the device shown in Figure 1 of Bropson is
depicted in an annotated form with a dotted vertical line drawn
demonstrating an axis equivalent to axis X described with respect to Figure
1 of the ’873 patent. The other annotations are dotted lines drawn “from the
vertex of each barb point 17, along the top surface of the barb to the
longitudinal axis,” forming an acute angle therewith. See RAN 17.
However, the Requester’s annotated drawing of Bropson reflects an
angle formed by an outer edge of barbed portions 17 and not an angle
formed between the interior edge of the barbed portion and the axis X as
shown in Figure 1 of the ’873 patent. Patent Owner contends that the
appropriate angle to consider is the one depicted in the annotated drawing
from Patent Owner’s appeal brief reproduced below.
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The barbed end of the device shown in Figure 1 of Bropson is
depicted in an annotated form with lines drawn demonstrating an axis X
equivalent to that described with respect to Figure 1 of the ’873 patent. The
other annotations are two dotted parallel lines drawn perpendicular to the
axis X along the flat sides of each barbed portion 17, with an angle A being
shown with respect to the axis X. See PO App. Br. 9.
Requester argues that the “claim feature does not specifically address
which parts of the barbs extend at an acute angle and therefore the barbs of
which at least some parts of the barb portions extend at an acute angle
anticipate this claim feature.” Req. Res. Br. 4-5. We disagree with the
Requester’s reasoning.
The claim language must be construed consistently with how the
skilled artisan would have understood it in context of the specification. The
skilled artisan would have understood from the description of Figure 1 and
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angle A of the ’873 Patent that the angle to be measured is the interior angle
of the barbed portions with respect to the axis X. ’873 Patent, Figure 1; col.
2, ll. 8-11. This is consistent with the teaching of a barbed portion “adapted
to grip hair in the drain.” See Id. at Figure 4; col. 2, ll. 22-23 (“Figure 4
shows . . . hair H being gripped by the barbed portions 20.”). Accordingly,
we agree with the Patent Owner that Bropson does not teach the same acute
angle that is recited in the claim.
For the foregoing reasons, we conclude that a preponderance of the
evidence does not support the Examiner’s finding that claim 1 is anticipated
by Bropson.

2. ANTICIPATION BY HYMES
Claims 1-4, 6, 7-9, 11, and 12 stand rejected as anticipated under 35
U.S.C. § 102(b) by Hymes. RAN 7.
Figures 1 and 3 of Hymes are reproduced below.

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Figure 1 of Hymes depicts a perspective view of a sewer opener in a
normal or coiled-up position. Figure 3 is a plan view of the working end of
the sewer opener of Figure 1. Hymes, col. 1, ll. 22-26. The device has a
series of concentric coils B with a working end having a number of barbs D
formed by diagonal slits a and the sharp point b, bent outward and projecting
backward from the spear point. Id., col. 1, ll. 29-45.

Claims 1, 6, 7, and 11
Patent Owner contends that Hymes does not disclose a handle that is a
“distinct structural element” from an elongate, flexible strip as recited in the
claims, but rather a person’s hands would successively move to a different
portion of the sewer rod. PO App. Br. 14. In other words, “there is no
handle.” Id. Patent Owner further contends that Hymes does not describe a
“plurality of barbed portions” along the strip. Id. at 15. Patent Owner
further contends that Hymes does not describe a handle “integrally molded
with the elongated, flexible strip.” Id. at 17.
The Examiner finds that the recited “handle” reads on coil B of
Hymes because “it is clear from the ‘873 written description that a handle
which is a ‘distinct structural element’ may be in fact, integrally formed with
the elongate, flexible strip and need not be a separate element which is
attached in some manner to the elongate, flexible strip.” RAN 21 (further
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discussing claims 6 and 11, which specifically recite and integrally molded
handle). The Examiner finds that the proximal end of coil B “is further
structurally distinct from the barbed end in that it is both coiled during use
thereof and is free of barbs.” Id.; see Req. Res. Br. 7.
The Examiner further contends that the presence of a total of 4 barbs
(two on each side) in the figures of Hymes sufficient teaches a plurality of
barbs as required by the claims. Id. at 22.
The phrase “distinct structural element” is not defined in the ’873
patent. The ’873 patent states that “handle 22 is attached to the flexible strip
12 at the proximal end 14.” Col. 2, ll. 12-13. The ’873 patent states that “a
person grips the device 10 by its handle 22. . . . The device is then inserted
into the drain D.” Id. at col. 2, ll. 18-20. Figure 4 is described by Requester
as showing “the device 10 fully inserted into the drain D.” Id. at col. 2, l. 22.
Figures 3 and 4 of the ’873 patent are reproduced below.

Figure 3 of the ’873 Patent depicts a perspective view of the device 10
being inserted into a drain via a handle 22 which is a rectangular portion of
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the molded device 10 that is wider than the elongated, flexible strip 12. ’873
Patent, col. 1, ll. 57-58; col. 2, ll. 1-3. Figure 4 depicts a cross section of a
drain showing the device 10 in place in the drain. ’873 Patent, col. 1, ll. 59-
60. Figure 4 shows the device with some of the elongated, flexible strip 12
positioned within drain D.
The PTO has been counseled to avoid the temptation to limit broad
claim terms solely on the basis of the exemplary embodiments described
therein. Absent claim language carrying a narrow meaning, the PTO should
only limit the claim based on the specification when those sources expressly
disclaim the broader definition. In re Bigio, 381 F.3d 1320, 1324-25 (Fed.
Cir. 2004); In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993)
(“[L]imitations are not to be read into the claims from the specification.”);
Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (“[A]lthough
the specification often describes very specific embodiments of the invention,
we have repeatedly warned against confining the claims to those
embodiments.”).
Patent Owner directs us to no express disclaimer in the specification
limiting the term “handle” to having any particular structure. We decline to
read into the claims any particular structural feature of the exemplified
handle 22 of the figures. Accordingly, we agree with the Examiner that the
broadest reasonable meaning of the term “handle” would read on the
proximal coiled portion B of Hymes’ device, because it is this portion that is
held by a user and is distinct from the elongate portion having barbs. During
reexamination, as during the original prosecution, Patent Owner could have
amended the claims to limit the “handle” to having a particular structure
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supported by the specification that distinguishes the coil B of Hymes. The
term “distinct structural element” does not distinguish the device of Hymes
because no particular structure is required. The coil B is “distinct” or
recognizably different from the “working end” of Hymes device having the
barbs D and spear-point C, which serves as “an elongate, flexible strip” as
required by claim 1. Thus, as noted by the Examiner, the structure of the
coil B is structurally distinct from other parts of Hymes’ device because it
does not contain barbs. RAN 21.
Further, the term “plurality” is generally recognized as meaning “two
or more.” The ’873 patent does not define “barbed portions,” but refers to
each separate barb of elongate, flexible strip 12 as a “barbed portion 20.”
See col. 2, ll. 4-7. Patent Owner has not explained why the disclosure of two
sets of oppositely facing barbs in Hymes, for a total of four barbs (see Figure
1 and 3), is not a disclosure of a plurality (i.e., two or more) “barbed
portions.”
Likewise, Patent Owner has not explained why coil B is not integrally
molded with the elongated, flexible strip comprising the barbed portions, as
the entire structure is one single metal piece.
For the foregoing reasons, a preponderance of the evidence supports
the Examiner’s finding that claims 1, 6, 7 and 11 are anticipated by Hymes.

Claims 2 and 8
Claims 2 and 8 recite that the plurality of “barbed portions are
integrally molded with the elongate strip.” Patent Owner contends that
Hymes’ barbed portions are not “integrally molded” but are rather formed by
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slitting the metal and bending the pointed formed thereby outward. PO App.
Br. 15.
We note that claims 2 and 8 are directed to an apparatus or device,
and not to a method of removing hair or to a method of manufacturing said
device. Patent Owner appears to argue that the phrase “integrally molded”
requires that the device be made by a molding process. However, it is the
patentability of the product defined by a product claim, rather than the
process for making it that we must gauge in light of the prior art. In re
Wertheim, 541 F.2d 257, 271 (CCPA 1976); In re Brown, 459 F.2d 531, 535
(CCPA 1972). It has long been held that “‘[i]f the product in a product-by-
process claim is the same as or obvious from a product of the prior art, the
claim is unpatentable even though the prior product was made by a different
process.’” SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1317
(Fed. Cir. 2006) (quoting In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985));
In re Marosi, 710 F.2d 799, 803 (Fed. Cir. 1983) (“Where a product-by-
process claim is rejected over a prior art product that appears to be identical,
although produced by a different process, the burden is upon the applicants
to come forward with evidence establishing an unobvious difference
between the claimed product and the prior art product.”) (internal citations
omitted).
We find that the device of Hymes has all of the structural features
recited in claim 2, including the barbed portions. We note that “molded”
does not require any particular molded material, for example metal can be
“molded” when cast in a single piece. To the extent that the barbed portions
were made after the fact by slicing and bending and not during a “molding”
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process of making the rest of the elongate, flexible strip, Patent Owner has
not demonstrated a structural difference between the claimed product and
the prior art product.
For the foregoing reasons, a preponderance of the evidence supports
the Examiner’s finding that claims 2 and 8 are anticipated by Hymes.

Claims 3, 9, and 12
Claims 3, 9, and 12 recite “wherein the handle has an aperture
therethrough adapted for gripping with a person’s fingers.” The Examiner
found that “the coils B have an aperture defined by the open space bordered
by the innermost coil.” RAN 8. According to the Examiner, the open space
is “adapted for gripping with a person’s fingers inasmuch as it is capable of
being so used.” Id. at 23.
Patent Owner argues that Figure 1 is not sufficient disclosure to find
that “the open space bordered by the innermost coil is of a size that would
permit gripping with a person’s fingers” because there is no suggestion of
size or scale in the figures. PO App. Br. 16. Patent Owner further argues
that the alleged “aperture” disappears when the device is uncoiled. Id.
Additionally, Patent Owner contends that the skilled artisan would not use
the device with a finger inserted as suggested by the Examiner because “the
person’s finger would be at risk of being cut by the edges of the device as
the device was coiled and uncoiled.” Id.
“[R]ejections under 35 U.S.C. § 102 are proper only when the
claimed subject matter is identically disclosed or described in ‘the prior
art.’” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir.
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2008) (quoting In re Arkley, 455 F.2d 586, 587 (CCPA 1972)). Therefore,
in order to anticipate, a reference must identify something falling within the
claimed subject matter with sufficient specificity to constitute a description
thereof within the purview of § 102. In re Schaumann, 572 F.2d 312, 317
(CCPA 1978); Verve, LLC v. Crane Cams, Inc., 311 F.3d 1116, 1120 (Fed.
Cir. 2002) (“A single reference must describe the claimed invention with
sufficient precision and detail to establish that the subject matter existed in
the prior art.”).
We agree with Patent Owner that Hymes provides an insufficient
disclosure to support a finding that it teaches “an aperture . . . adapted for
gripping with a person’s fingers.” There is no dispute that Hymes does not
describe using the hole formed by the innermost coil for gripping coil B with
a person’s finger. It is reasonable to find that one would only be capable of
using a finger to grip the hole defined by the innermost coil of coil B if the
size and scale of the structure is such that a finger could be used in a manner
to “grip” the coil. Hymes does not disclose the size of the innermost coil,
the number of coils, or any other reference as to the size of the innermost
coil. Moreover, there is insufficient disclosure to find that one could “grip”
the coil using the space surrounding the innermost coil with a person’s
fingers. Accordingly, we cannot find sufficient evidence that Hymes teaches
the claimed aperture with sufficient specificity to anticipate this feature.
For the foregoing reasons, a preponderance of the evidence does not
support the Examiner’s finding that claims 3, 9, and 12 are anticipated by
Hymes. We therefore reverse the Examiner’s rejection of claim 3, 9, and 12
under 35 U.S.C. § 102(b) as anticipated by Hymes.
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Claims 4 and 7
Claims 4 and 7 recite “wherein the barbed portions alternate along
each side of the elongate, flexible strip.” The Examiner found that Figures 2
and 3 of Hymes shows barbed portions D alternating “up and down along
the length of the strip,” even if not in the same alternating manner shown in
the Figures of the ’873 patent. RAN 23. Patent Owner contends that the
barbed portions D of Figure 2 of Hymes are not alternating, but rather are
“directly opposite each other along the two sides of the coil B.” PO App.
Br. 17. Patent Owner further explains that “even after the barbs D are bent
in different directions, the barbs D remain located directed opposite each
other along the two sides of coil B.” PO Reb. Br. 12.
The claims do not define the “sides” upon which the barbed portions
are to alternate, do not describe any particular direction the barbs must
extend from any particular “side,” and do not preclude barbed portions
disposed “directly opposite” one another. While Figure 1 of the ’873 patent,
reproduced above, shows barbed portions 20 projecting on sides 18, such
that there are no barbs directly opposite one another, we do not read specific
embodiments into the claims absent language in the claim that would require
it. See ’873 patent, col. 2, ll. 6-7 (“Preferably, the barbed portions 20
alternate along the sides 18 of the elongate, flexible strip 12.”). The
Specification of the ’873 patent also refers to the barbs as “interspersed
along the length of the shaft, rather than being limited to one end of the
shaft” and that the barbs “alternate with one another along the strip, rather
than being helically configured.” See id. at col. 1, ll. 36-45. The barbs of
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Hymes are dispersed along the “elongated flexible strip” and are not
helically configured as distinguished by the ’873 patent. Moreover, the
claim does not specify that the barbed portions “alternate with one another
along the strip” or that they are “interspersed” as stated in the patent, which
could have given a more restricted interpretation of the claim. Accordingly,
we interpret “wherein the barbed portions alternate along each side of the
elongate, flexible strip” broadly to include alternating in position, direction,
or other fashions.
Thus, we agree with the Examiner that the barbed portions D, best
illustrated in Figure 3 of Hymes, “alternate along each side of the elongate,
flexible strip” in that one barb projects upward while the next barb “along
each side of the elongate, flexible strip” projects downward, and alternate so
forth. We further note that barbed portions D do not project “directly
opposite” one another as argued by Patent Owner because one barb is
directed up while the laterally opposite barb, as well as the next adjacent
barb on a particular side, is directed down, as illustrated in Figure 3 of
Hymes.
For the foregoing reasons, a preponderance of the evidence supports
the Examiner’s finding that claims 4 and 7 are anticipated by Hymes.

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3. OBVIOUSNESS BASED ON HYMES IN VIEW OF THE GENERAL
KNOWLEDGE IN THE ART
Claim 5 stands rejected as obvious under 35 U.S.C. § 103(a) over
Hymes in view of the general knowledge of the art.3 RAN 12. Claim 10
stands rejected as obvious under 35 U.S.C. § 103(a) over Hymes in view of
the general knowledge in the art. Id. at 13.
Claims 5 and 10 each recite that “the handle further comprises a flat,
rectangular plate.” The Examiner determined that the shape of the plate
handle would have been obvious because “this change in shape does not
change the function of the device, is well-known in the art as demonstrated
by Requester, and is no more than a matter of choice.” RAN 29 (citing In re
Dailey, 357 F.2d 669 (CCPA 1966)). Further, the Examiner notes that
rectangular shaped handles are “well-known in the art as demonstrated by
Requester.” RAN 29. The Requester contends that it “has provided
commonly known examples for rectangular handles, such as for letter
openers available at Office Depot®, Staples® and many other retailers,
silverware, tools, or handles inside machines such as computers or copy
machines, or tabs for pulling open all kinds of containers.” Req. Res. Br. 16.
Patent Owner argues that

3 Claim 5 is further rejected based on Bropson in view of the general
knowledge of the art. RAN 12. However, the Examiner applies the same
anticipation rationale discussed above with respect to “the barbed portions
are oriented at an acute angle to the axis of the elongate strip” recitation in
claim 1. Accordingly, for the same reasons, we reverse the Examiner’s
rejection of claim 5 under 35 U.S.C. § 103(a) as unpatentable over Bropson
in view of the general knowledge of the art.
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the shape of a handle comprising a flat, rectangular plate is not
a choice of “aesthetic design” at all, because the shape of the
handle provides significant practical advantages aside from any
consideration of aesthetics. The shape of the flat handle allows
the apparatus to lie flat, for easy storage and requires a
minimum of molded plastic to form-persuasive evidence
beyond mere matter of design choice which offers patentable
distinctions over the prior art.
PO App. Br. 23. Further, Patent Owner argues that the Examiner’s assertion
of “general knowledge in the art” is not based upon record evidence. Id.
(citing In re Zurko, 258 F.3d 1379, 1385 (Fed. Cir. 2001)).
We are not persuaded of error by the Examiner. Initially, Patent
Owner’s arguments directed to adding a rectangular shaped handle to the
coil (see generally PO App. Br. 22-23) are not availing because the
Examiner’s rejection is based on the concept that the choice of handle, be it
coiled or flat and rectangular, without demonstration of a change in function
of the device, would have been obvious. The Examiner’s reasoning is not
based on the further addition of a flat, rectangular handle to the coiled
structure of Hymes. Patent Owner makes no persuasive arguments that the
device of Hymes would not function with a flat, rectangular handle instead
of the coiled handle, only that “a compact circular coil could no longer be
achieved if a flat (i.e., uncoiled), rectangular plate were added to the Hymes
device” and that “inclusion of a flat, rectangular plate would change the
principle of operation of the device.” PO App. Br. 23.
We disagree with Patent Owner’s characterization of the principle of
operation of Hymes device as “compact coiling.” Hymes device is
described as a “means for clearing out congested sewers and other pipe
connections and passages that have become clogged,” namely one that “may
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be used with the greatest facility and success in opening up straight or
tortuous passages.” Hymes, ll. 8-14. Hymes further describes that the
“working end is provided with the sharp spear point C, which will readily
penetrate any obstruction lodged in the passage” and “a number of barbs D”
that “on the pull-back will very soon disintegrate the mass and open up the
passage so that it may be slushed out.” Id., ll. 36-53. Accordingly, the
principle of operation is not reflected by the coiled end of the device, but by
the spear point and barbed “working end” of the device used to unclog
passages. It is reasonable for the Examiner to find, without any persuasive
arguments or evidence to the contrary, that the “working end” of Hymes
device would function to clear out congested passages as intended with a
flat, rectangular handle as with the coiled handle described therein. As such,
the use of a flat, rectangular handle would be no more than the predictable
use of prior art handles according to their established functions. KSR Int'l
Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
Moreover, we disagree with Patent Owner that the Examiner’s
assertion of “general knowledge in the art” is not sufficiently supported in
the record. On page 16 of Requester’s Comments filed March 26, 2013,
Requester identified known objects for which a flat, rectangular shaped
handle was known, including “letter openers . . . silverware or tools or inside
machine such as computers or copy machines for pulling out elements or on
tabs for pulling open all kinds of containers.” Such reasoning is sufficient
for the Examiner to take Official Notice without documentary evidence
because the finding itself is limited to the existence of flat and rectangular
handles and because the existence of flat and rectangular handles on such
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devices is capable of instant and unquestionable demonstration as being
well-known. In re Ahlert, 424 F.2d 1088, 1091 (CCPA. 1970) (“the Patent
Office appellate tribunals, where it is found necessary, may take notice of
facts beyond the record which, while not generally notorious, are capable of
such instant and unquestionable demonstration as to defy dispute.”). One
can find such examples of flat and rectangular handles on the items noted by
Requester and many others such devices with little effort.
Moreover, Patent Owner does not present persuasive evidence or
argument to dispute the merits of the Examiner’s finding that such devices
existed at the time of the invention having flat and rectangular handles. See
In re Lundberg, 244 F.2d 543, 551 (CCPA 1957) (examiner’s statement
accepted as true in light of appellant’s failure to question its accuracy or to
present contradicting evidence); In re Fox, 471 F.2d 1405, 1406-07 (CCPA
1973) (affirming rejection under 35 U.S.C. § 103 without citation of any
prior art based on facts that were unchallenged by the appellant); In re Boon,
439 F.2d 724, 728 (CCPA 1971) (the appellants failed to rebut a finding of
official notice when they offered only a bald challenge to the Examiner’s
findings without presenting the requisite information or argument that
creates, on its face, a reasonable doubt regarding the validity of the
Examiner’s findings). Though Patent Owner disputes the Examiner taking
notice without supporting evidence, the underlying finding itself is not
disputed.
Further, in identifying advantages of known flat and rectangular
handles, such as minimal material requirements and flat easy storage, Patent
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Owner does not make any persuasive arguments that such advantages were
unknown or would not have been obvious to one of ordinary skill in the art.
For the foregoing reasons, a preponderance of the evidence supports
the Examiner’s determination that claims 5 and 10 are obvious over Hymes
in view of general knowledge in the art.

4. OBVIOUSNESS BASED ON BROPSON IN VIEW OF FORDER
Claims 3 and 6 stand rejected as obvious under 35 U.S.C.
§ 103(a) over Bropson in view of Forder.4 RAN 8-9. However, the
Examiner applies the same anticipation rationale discussed above with
respect to “the barbed portions are oriented at an acute angle to the axis of
the elongate strip” recitation in claim 1, from which claims 3 and 6 depend.
See RAN 9. Accordingly, for the same reasons, we reverse the Examiner’s
rejection of claims 3 and 6 under 35 U.S.C. § 103(a) as obvious over
Bropson in view of Forder.

III. APPEAL BY REQUESTER
The Examiner did not adopt the proposed rejection of claims 3 and 6
under 35 U.S.C. § 103(a) as obvious over Hymes in view of Forder or the
proposed rejection of claims 11 and 12 under 35 U.S.C. § 103(a) as obvious
over Hymes in view of Frick5 and Forder. RAN 9 and 15. The reasons the
Examiner provided for not adopting the rejection is solely because “the
claims have been deemed to be anticipated over Hymes for the reasons set

4 GB 219,609, published April 8, 1924, and naming James Charles Forder as
inventor.
5 US 566,570, issued August 25, 1896, to Fredrick A. Frick.
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forth above.” Id. Requester appeals the Examiner’s decision not to adopt
the rejection of claim 3 under 35 U.S.C. § 103(a) as obvious in view of
Hymes and Forder and the rejection of claim 12 as obvious over Hymes in
view of Frick and Forder “just in case any fact finder in the subsequent
proceedings might come to a different conclusion,” as is the case here. Req.
App. Br. 8-9 and 16-17.
Claims 3, 9, and 12 are not anticipated by Hymes for the reasons
discussed above. Additionally, as discussed above, claim 3 would not have
been obvious over Bropson in view of Forder. Accordingly, it becomes
necessary to review whether claims 3, 9, and 12 would have been obvious to
one of ordinary skill in the art based on Hymes in view of Forder.
Claim 3 depends from claim 1. Claim 12 is an independent claim,
which includes all of the limitations of claims 1-4 and 6, of which all but the
subject matter of claim 3 is anticipated by Hymes. Claim 9 depends from
claim 7, which is anticipated by Hymes as discussed above.
Claims 3, 9, and 12 further recite that “the handle has an aperture
therethrough adapted for gripping with a person’s fingers.” Requester
contends that Forder teaches a “handle or gripping means [having] an
aperture therethrough adapted for gripping with a person’s fingers.” Request
24. In fact, Forder describes a device that is “provided with a gripping
means” and illustrates the handle 2 being circular shaped and having an
aperture therein. Forder, p. 1, ll. 22-23, p. 1, l. 72 to p. 2, l. 1, p. 2, ll. 15-16,
and Figures 1 and 2. Accordingly, Requester’s position is supported by a
preponderance of the evidence.
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Requester contends that “it would have been obvious from many other
similar devices to provide an aperture through a handle, for instance from
Forder a handle or gripping means 2 as shown in figure 2. . . . The person
skilled in the art would have no difficulties in combining this teaching from
Forder [] with Hymes.” Request 25. We agree with the Requester that the
skilled artisan would have provided a handle with an aperture for gripping to
the apparatus of Hymes, as taught by Forder to aid in “draw[ing] up and
through” a narrow passage, as is the function of the handle in Forder.
Forder, p. 1, ll. 31-34 and p. 2, ll. 25-30.
Initially, Patent Owner response is directed to the above argument that
Hymes does not teach a handle and that there would have been no basis for
providing a handle, such as that taught by Forder. PO Res. Br. 8. This
argument is unpersuasive for the reasons discussed above, which interprets a
“handle” as reading on coil B of Hymes. Patent Owner further argues that,
in incorporating the rigid handle of Forder, the Hymes device would no
longer be able to coil, thus changing the principle of operation of the device.
Id. Patent Owner points to the teaching in Hymes that “when the device is
withdrawn, it assumes the coiled up compact form shown.” Id. (quoting
Hymes, col. 1, ll. 34-36).
As discussed above, we disagree with Patent Owner’s characterization
of the principle of operation of Hymes device. The principle of operation is
not reflected by the coiled end of the device, but by the spear point and
barbed “working end” of the device used to unclog passages.
Patent Owner has not provided persuasive argument or evidence for
us to determine that incorporating an aperture in a handle of the device of
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Hymes for gripping with a finger, as taught by Forder, would change the
ability of the working end of the device of Hymes from operating to unclog
passages, as described therein. Further, Patent Owner’s arguments are based
on unsupported speculation about the operation of a device based on the
bodily incorporation of the handle structure of Forder into or replacing the
coil handle of Hymes. Such speculation does not consider how one of
ordinary skill in the art would have adapted the teachings of a handle having
an aperture for gripping into the device of Hymes. The concept of a handle
with an aperture for gripping is known in the art, but the skilled artisan is not
limited to the precise embodiment described in Forder. “The test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference. . . . Rather,
the test is what the combined teachings of the references would have
suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413,
425 (CCPA 1981). “A person of ordinary skill is also a person of ordinary
creativity, not an automaton.” KSR, 550 U.S. at 421.
Accordingly, we enter a new ground of rejection of claims 3, 9, and
12 under 35 U.S.C. § 103(a) as unpatentable over Hymes in view of Forder.

5. REMAINING REJECTIONS ON APPEAL
In addressing all the claims on appeal as unpatentable on other
grounds, we decline to address the merits of additional proposed, but non-
adopted, grounds of rejection appealed by the Requester. See In re Gleave,
560 F.3d 1331, 1338 (Fed. Cir. 2009) (holding that obviousness rejections
need not be reached upon affirming a rejection of all claims as anticipated);
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cf. Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (having
decided a single dispositive issue, the ITC was not required to review other
matters decided by the presiding officer).

DECISION
In sum, we affirm the Examiner’s decision to reject:
Claims 1, 2, 4, 6-8, and 11 under 35 U.S.C. § 102(b) as
anticipated by Hymes; and
Claims 5 and 10 under 35 U.S.C. § 103(a) as obvious over
Hymes in view of the general knowledge in the art.

We reverse the following rejections:
Claim 1 under 35 U.S.C. § 102(b) as anticipated by Bropson;
Claims 3, 9, and 12 under 35 U.S.C. § 102(b) as anticipated by
Hymes;
Claims 3 and 6 under 35 U.S.C. § 103(a) as obvious over
Bropson in view of Forder; and
Claim 5 under U.S.C. § 103(a) as obvious over Bropson in view
of the general knowledge in the art.

We reverse the Examiner’s decision not to adopt and as a result enter
a new ground of rejection of:
Claims 3, 9, and 12 under 35 U.S.C. § 103(a) as obvious over
Hymes in view of Forder.

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NEW GROUND OF REJECTION
37 C.F.R. § 41.77(b) states:
(b) Should the Board reverse the examiner’s determination not
to make a rejection proposed by a requester, the Board shall set
forth in the opinion in support of its decision a new ground of
rejection; or should the Board have knowledge of any grounds
not raised in the appeal for rejecting any pending claim, it may
include in its opinion a statement to that effect with its reasons
for so holding, which statement shall constitute a new ground of
rejection of the claim. Any decision which includes a new
ground of rejection pursuant to this paragraph shall not be
considered final for judicial review. When the Board makes a
new ground of rejection, the owner, within one month from the
date of the decision, must exercise one of the following two
options with respect to the new ground of rejection to avoid
termination of the appeal proceeding as to the rejected claim:

(1) Reopen prosecution. The owner may file a response
requesting reopening of prosecution before the examiner. Such
a response must be either an amendment of the claims so
rejected or new evidence relating to the claims so rejected, or
both.

(2) Request rehearing. The owner may request that the
proceeding be reheard under § 41.79 by the Board upon the
same record. The request for rehearing must address any new
ground of rejection and state with particularity the points
believed to have been misapprehended or overlooked in
entering the new ground of rejection and also state all other
grounds upon which rehearing is sought.

Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.

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AFFIRMED-IN-PART; NEW GROUND OF REJECTION

PATENT OWNER:
CHRISTENSEN FONDER PA
33 SOUTH SIXTH STREEET
SUITE 3950
MINNEAPOLIS, MN 55402

THIRD-PARTY REQUESTER:

ALEXANDER R. SCHLEE
SCHLEE IP INTERNATIONAL P.C.
3770 HIGHLAND AVE., SUITE 203
MANHATTAN BEACH, CA 90266