Ex Parte Bihlmaier

Patent Trial and Appeal BoardJan 11, 2019

13548986 (P.T.A.B. Jan. 11, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/548,986 07/13/2012 Michael J. Bihlmaier 25534 7590 01/11/2019 CAHN & SAMUELS LLP 1100 17th STREET NW SUITE401 WASHINGTON, DC 20036 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. 1264.0012 6281 EXAMINER NGUYEN, SON T ART UNIT PAPER NUMBER 3643 MAIL DATE DELIVERY MODE 01/11/2019 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 MICHAEL J. BIHLMAIER Appeal2017-004308 Application 13/548,986 1 Technology Center 3600 Before JOHN C. KERINS, KEN B. BARRETT, and ARTHUR M. PESLAK, Administrative Patent Judges. KERINS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Michael J. Bilhmaier ("Appellant") appeals under 35 U.S.C. Â§ 134(a) from a final rejection of claims 1, 9, and 21-26. We have jurisdiction under 35 U.S.C. Â§ 6(b). An oral hearing was conducted on December 17, 2018, with Frederick N. Samuels, Esq., appearing on behalf of Appellant. We AFFIRM-IN-PART. 1 According to the Appellant, the real party in interest is Pet Product Innovations, LLC. Appeal Br. 3. Appeal2017-004308 Application 13/548,986 THE INVENTION Appellant's invention is directed to an apparatus for shearing an animal claw. Claim 1, reproduced below, is illustrative: 1. An apparatus for shearing an animal claw comprising: a first arm and a second arm, the first arm connected to the second arm and movable relative to the second arm; a first conical well disposed proximate to an end of the first arm, the first conical well including a first aperture disposed at an apex, and a cutting blade disposed along a periphery of the first aperture; a second conical well disposed proximate to an end of the second arm, the second conical well including a second aperture disposed at an apex and a cutting blade disposed along a periphery of the second aperture; wherein in a first position, the first conical well abuts the second conical well such that the first aperture and the second aperture are aligned. THE REJECTION The Examiner rejects claim 1, 9, and 21-26 under 35 U.S.C. Â§ 102(b) as being anticipated by Newman (US 1,013,889, issued Jan. 9, 1912). ANALYSIS Appellant presents separate arguments for independent claim 1, independent claim 22, and dependent claim 23. Appeal Br. 5-10. No separate arguments are provided directed to dependent claims 9, 21, and 24-- 26, and each of those claims stands or falls with the independent claim it depends from. Id. at 10-11. 2 Appeal2017-004308 Application 13/548,986 Claim 1 The Examiner finds that Newman discloses a cigar tip cutter that is capable of being used for shearing an animal claw, as claimed. Final Act. 2. In terms of the main issue joined on appeal, the Examiner indicates that the Newman device includes first and second conical wells in the area of reference numerals 1 a and 2a disposed, respectively, proximate ends of first and second arms, with each of the conical wells having an aperture disposed at an apex, with a cutting blade disposed along the periphery of the aperture. Id. Appellant argues that claim 1 specifically recites a conical well and a cutting blade as two separate elements, and that the Examiner erroneously relies on only a single structure or component in Newman as meeting those limitations. Appeal Br. 6-8; Reply Br. 2--4. Appellant cites to several Federal Circuit decisions that are said to support the argument that the Examiner's position is not proper. Appeal Br. 6-7. Appellant points to the description at paragraphs 53-55 of the Specification as further evidencing that two separate elements are disclosed, and notes that different reference numerals are used to designate the conical wells and the cutting blades. 2 Id. Appellant additionally includes a drawing figure from an unrelated patent, 3 which shows a cutting edge strip as a different element from the remainder of the knife, and asserts that, "[i]f Appellant were to have 2 Appellant argues that "claim 1 recites a conical wall having a aperture at its apex and a separate and independent cutting blade disposed along a periphery of the aperture." Appeal Br. 8. Appellant, however, maintained at oral hearing that the conical wall and cutting blade could be formed from a single piece of material, and one element would be distinguished from the other by having different slopes or angles of taper. 3 US 2,319,607, issued May 18, 1943. 3 Appeal2017-004308 Application 13/548,986 included an exploded view of cutting blade 28 its cross section would have appeared as a typical blade like [Figure 3 reproduced from the patent]." Appeal Br. 7. Appellant additionally points to a Declaration of Harry Yablon, a retail tobacconist, attesting that elements If and 2/ of Newman would be understood to refer to the cross-section of the knife edge of a cutting blade, as well as providing an opinion that neither the cigar cutter illustrated in the Declaration, nor the Newman cutter, has a conical well to guide an animal's paw through a clipper opening does, and that there is no need to guide a cigar into an opening in a cigar cutter. Id. at 8 (citing Yablon Declaration). None of Appellant's arguments apprise us of Examiner error. The Examiner's position, effectively, is that the tapered portions of elements 1 and 2 in Newman form the claimed first and second conical wells, as illustrated in Appellant's Figure 1, and the continued taper to a sharp edge provides the claimed cutting blades disposed along the periphery of the first and second conical walls. Notwithstanding that the recitation of two elements might, in certain if not most cases, imply or carry a presumption that the two elements are distinct components, the Becton, Dickinson4 decision cited by Appellant is instructive that the specification might either support or undermine such an implication or presumption. Cf id. at 1254-55 (review of specification evidencing that two recited elements described as separate structures). In the present case, the Specification uses two different terms, i.e., conical well and cutting blade, that are identified by reference numerals 24 4 Becton, Dickinson and Co. v. Tyco Healthcare Group, LP, 616 F.3d 1249 (Fed. Cir. 2010). 4 Appeal2017-004308 Application 13/548,986 and 28, respectively, that consistently, throughout the drawing figures forming part of the specification, refer to a general portion and a more specific portion of the same sloped or beveled surface, and not to two distinct elements. Spec., paras. 53-55, Figs. 1-8. Thus, contrary to what the specification evidence showed in Becton, Dickinson, here, the Specification provides evidence supporting the Examiner's claim construction that both a conical well and a cutting blade may exist on a single sloping or beveled surface. See, e.g., Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005)( claims do not stand alone, specification always highly relevant to claim construction analysis). The rejection of claim 1 as being anticipated by Newman is therefore sustained. Claims 9 and 11 fall with claim 1. Claim 22 Although presented under a separate subheading, Appellant's arguments for the patentability of claim 22 are essentially identical to those presented for claim 1. For the reasons set forth above, we do not find Examiner error in the rejection, and sustain the rejection of claim 22 as being anticipated by Newman. Claims 24--26 fall with claim 22. Claim 23 Claim 23 depends from claim 22, and further recites that the first and second apertures are sized to allow only a tip of an animal's claw to pass therethrough. The Examiner takes the position that this is a functional recitation, and that the Newman apertures are "capable of being sized to allow only a tip of the animal's claw to pass through if the user wishes to modify the apertures to such size," and the Newman device "would be capable of performing the intended function or to be modif-1ied] to have 5 Appeal2017-004308 Application 13/548,986 smaller apertures." Final Act. 3--4. The Examiner appears to attempt to clarify this position by stating that, "Newman allows some expansion and contraction of the aperture for different cigar size; thus, again, depending on the size of the animal's claw, the opening in the cutter of Newman would be able to perform the intended function of allowing the tip of the animal's claw to be cut." Ans. 9. It is not entirely clear if the Examiner's position is that the individual apertures can be modified to particular sizes in order that the device meets the claim requirement that only a tip of an animal's claw will be able to pass therethrough, or is that an opening formed by the amount of overlapping of the two apertures may be adjusted depending on the size of a particular animal's claw. Neither position, however, provides an adequate basis upon which to sustain a rejection based on anticipation. In order for a reference to anticipate claimed subject matter, every element of the claimed invention must be literally present, arranged as in the claim. Perkin-Elmer Corp. v. Computervision Corp., 732 F.2d 888, 894 (Fed. Cir.), cert. denied, 469 U.S. 857 (1984). This means that anticipation does not lie in situations in which a reference is to be modified to meet the claim, as in the former position advanced by the Examiner. As to the latter, claim 23 does not refer to an opening or aperture that results from a particular positioning of the first aperture relative to the second aperture, it refers to the sizing of the first and second apertures themselves. Accordingly, the rejection of claim 23 as being anticipated by Newman is not sustained. 6 Appeal2017-004308 Application 13/548,986 DECISION The rejection of claims 1, 9, 21, 22, and 24--26 as being anticipated by Newman is affirmed. The rejection of claim 23 as being anticipated by Newman is reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). See 37 C.F.R. Â§ 4I.50(f). AFFIRMED-IN-PART 7