Ex Parte Cherry

Patent Trial and Appeal BoardApr 15, 2015

12260670 (P.T.A.B. Apr. 15, 2015)

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. 12/260,670 10/29/2008 Guy A. Cherry CHE025 P301 3120 277 7590 04/15/2015 PRICE HENEVELD LLP 695 KENMOOR SE P O BOX 2567 GRAND RAPIDS, MI 49501 EXAMINER KUE, KAYING ART UNIT PAPER NUMBER 3729 MAIL DATE DELIVERY MODE 04/15/2015 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 THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte GUY A. CHERRY ____________ Appeal 2013-005130 Application 12/260,670 Technology Center 3700 ____________ Before JENNIFER D. BAHR, LINDA E. HORNER, and RICHARD H. MARSCHALL, Administrative Patent Judges. MARSCHALL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Guy A. Cherry (Appellant) seeks our review under 35 U.S.C. § 134 of the Examiner’s decision rejecting claims 1–8, 13 and 14, all of which remain pending. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. THE CLAIMED SUBJECT MATTER Appellant’s claimed subject matter relates to “a tool useful for removing remnant pieces of spark plug boots.” Spec. para. 2. The “remnant pieces” occasionally break off when the spark plug boot is removed. Id. Appeal 2013-005130 Application 12/260,670 2 Claims 1, 13 and 14 are independent. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1 1. A tool for removing a remnant piece of material on a spark plug located in a difficult to access location on an engine, where the remnant piece is a portion of an insulating boot from a conductor assembly formerly attached to a top of the spark plug, and where the location is a deep recess defining a small clearance adjacent the remnant piece, comprising: a stiff long shaft; a handle at one end for partially rotating the shaft and then pulling the long shaft; and an unradiused pronged tip configured to slip into a position adjacent the remnant piece, the tip having a protruding sharp portion for digging into the remnant piece upon the partial rotation of the shaft and for pulling the remnant piece as the shaft is pulled out of the deep recess. THE EVIDENCE The Examiner relies upon U.S. Patent No. 4,202,088, issued May 13, 1980, to Hansen (“Hansen”). 1 Appellant filed an amendment simultaneously with the filing of the Appeal Brief. Br. 2. We note that 37 C.F.R. § 41.33(b) provides that amendments filed on or after the date of filing an appeal brief may be admitted to cancel claims or to rewrite dependent claims into independent form. Appellant’s amendment sought to amend independent claim 1. As such, the amendment does not appear to seek either of the two permitted amendments under the rule. For purposes of this appeal, pending claim 1 is the claim that was pending at the time of issuance of the final rejection. Appeal 2013-005130 Application 12/260,670 3 THE REJECTIONS Appellant seeks review of the Examiner’s rejection of claims 1–8, 13 and 14 under 35 U.S.C. § 102(b) as anticipated by Hansen. ANALYSIS Claim 1 The Examiner found that Hansen anticipates claim 1, and that Hansen discloses a “tip having a protruding portion (11, Figs. 2) for digging into or slipping (see col. 4, lines 43–62) under the remnant piece.” Final Act. 3. We agree with Appellant that Hansen fails to disclose a “tip having a protruding sharp portion for digging into the remnant piece” as claimed in claim 1. Appeal Br. 6 (arguing that Hansen does not “disclose or suggest a tip with a ‘sharp portion for digging into a remnant piece’ as defined in claim 1”). There are two independent reasons why the Examiner has failed to support the rejection of claim 1. First, the Examiner failed to point to any disclosure in Hansen that describes or suggests a protruding portion “for digging into the remnant piece.” The Examiner determined that Hansen’s “base portion 11” disclosed the claimed tip as well as the claimed protruding portion. Hansen at col. 2, l. 62; Figs. 2 and 3; Final Act. 3. The Examiner then concluded that Hansen’s base portion 11 also disclosed a protruding portion “for digging into or slipping . . . under the remnant piece.” Final Act. 3 (citation omitted) (emphasis added). Claim 1, however, does not include the “slipping under” language. Appeal Br. 10 (App. A); see also Ans. 3–4 (no comment on summary of claimed subject matter or appendix of claims). Disclosing a tip with a protruding portion that is merely capable of “slipping under” the boot Appeal 2013-005130 Application 12/260,670 4 is insufficient to satisfy this limitation. Hansen discloses a protruding tip, but not a tip that digs into the boot of the spark plug. Instead, the fingers that form the tip are “inserted beneath the boot” and pulled upward, as described in the text cited by the Examiner: [T]he spaced apart parallel fingers 31 [sic, 13] and 14 are inserted beneath the boot 41 and around the post 40 at the top of the spark plug porcelain insulator 39. The semi-circular notch 12 of the tool lies in abutting engagement with the terminal post 40 of the spark plug 34. At this time the service man exerts an upward pulling force on the handle 19 in the direction of the arrow 43 causing the boot 41 to be stripped free of the terminal post 40. Hansen, col. 4, ll. 51–59. Figure 5 is reproduced below. Appeal 2013-005130 Application 12/260,670 5 Figure 5 depicts the position of the base portion 11 (the claimed “tip” with “protruding portion”) under the boot 41, not digging into it as required by claim 1. Neither the text relied on by the Examiner nor Figure 5 supports the Examiner’s position that Hansen discloses a protruding portion “for digging into the remnant piece” as required by claim 1. Accordingly, this aspect of the anticipation rejection is unsupported by sufficient findings by the Examiner. 2 2 The Examiner made no findings regarding inherency or obviousness related to this limitation and we decline to do so for the first time on appeal. Appeal 2013-005130 Application 12/260,670 6 The Examiner also failed to cite any support or provide any explanation in support of the rejection as it relates to the “sharp” limitation. Claim 1 requires a “protruding sharp portion,” yet the Examiner never acknowledges this limitation in the Final Office Action or the Examiner’s Answer. The Specification provides an example of a “sharp portion” in the form of a “relatively sharp corner 18 defining a protruding portion.” Spec. para. 21; see also Fig. 3 (depicting sharp corner 18). Hansen makes no mention of the sharpness of its protruding portion and has no need for sharp surfaces because it does not rely on digging into the boot to remove it from the spark plug. Figure 3 of Hansen is reproduced below. Figure 3 depicts the base portion 11 with fingers 13 and 14. The fingers have rounded ends that do not end in sharp portions. Accordingly, we disagree with the Examiner’s findings as to the disclosure of Hansen. For these reasons, we reverse the rejection of claim 1, as well as claims 2–8 that depend from claim 1, as anticipated by Hansen. Claim 13 Claim 13 requires a “protruding portion for digging into the remnant piece.” The “for digging into the remnant piece” limitation was also present in claim 1 and discussed above. For the same reasons, we disagree with the Appeal 2013-005130 Application 12/260,670 7 Examiner’s finding that Hansen discloses a protruding portion for digging into a remnant piece. Claim 13 also requires a “recessless tip” and goes on to state that the tip’s protruding portion does not have “a recess for receiving the spark plug.” Appeal Br. 11 (App. A). The Examiner relied on item 1 in Figures 1–5 as support for the disclosure of the recessless tip in Hansen. Final Act. 4; Ans. 8. There is no item 1 in Hansen, but even assuming that the Examiner was relying on the base portion 11 shown in Figures 1–5, that base portion does not disclose a recessless tip. On the contrary, as shown in Figure 3 above, the base portion 11 includes “a semi-circular cut-out portion 12” or “semi-circular notch 12.” Hansen, col. 2, ll. 62–63; col. 4, l. 54; Fig. 3. This cut-out portion or notch is a recess within base portion 11. Therefore, even if base portion 11 in Hansen corresponds to the claimed tip that includes the claimed protruding portion, it does not meet the “recessless” requirement. The Examiner also found that Hansen discloses a tip having a protruding portion without “a recess for receiving the spark plug,” and points to column 4, lines 43–62 of Hansen for support. Final Act. 4; Ans. 6. That passage from Hansen, however, states the opposite—the purpose of the recess 12 in Hansen is to receive the spark plug. Hansen, col. 4, ll. 54–56 (“The semi-circular notch 12 of the tool lies in abutting engagement with the terminal post 40 of the spark plug.”). Hansen fails to disclose this limitation. Accordingly, we disagree with the Examiner’s findings as to the disclosure of Hansen. For these reasons, we reverse the rejection of claim 13 as anticipated by Hansen. Appeal 2013-005130 Application 12/260,670 8 Claim 14 Claim 14 requires a “protruding portion for digging into the remnant piece.” The “for digging into the remnant piece” limitation was also present in claim 1 and discussed above. For the same reasons, we disagree with the Examiner’s finding that Hansen discloses a protruding portion for digging into a remnant piece. Claim 14 also requires “a single continuous strip of metal having interconnected portions forming a stiff long shaft, a handle, and a tip.” Appeal Br. 13 (App. A). The Examiner asserts that the base portion 11, L- shaped steel member 10 and handle 19 of Hansen collectively disclose this limitation. Final Act. 5; Ans. 9. We agree with the Appellant that Hansen fails to disclose this limitation because handle 19 in Hansen is made of flexible silicone rubber. Appeal Br. 8; Hansen, col. 3, ll. 7–8. A rubber handle cannot be part of a “single continuous strip of metal” as required by claim 14. For these reasons, we reverse the rejection of claim 14 as anticipated by Hansen. DECISION The decision of the Examiner to reject claims 1–8, 13 and 14 is REVERSED. REVERSED mls