Ex Parte Hansen et al

Patent Trial and Appeal Board

Sep 14, 2017

12716579 (P.T.A.B. Sep. 14, 2017)

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.
12/716,579 03/03/2010 Frederick S. Hansen 081427-0385343 1016
909 7590 09/18/2017
Pillsbury Winthrop Shaw Pittman, LLP
PO Box 10500
McLean, VA 22102
EXAMINER
DAVIES, SAMUEL ALLEN
ART UNIT PAPER NUMBER
3724
NOTIFICATION DATE DELIVERY MODE
09/18/2017 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):
docket_ip@pillsburylaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FREDERICK S. HANSEN, DAVID A. WEBB, and
STEPHEN ROWLAY
Appeal 2015-006980
Application 12/716,579
Technology Center 3700
Before CHARLES N. GREENHUT, ANNETTE R. REIMERS, and
SEAN P. O’HANLON, Administrative Patent Judges.
O’HANLON, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2015-006980
Application 12/716,579
STATEMENT OF THE CASE
Frederick S. Hansen et al. (Appellants)1 appeal under 35U.S.C. § 134
from the Examiner’s decision rejecting claims 1—3, 5—11, and 13—23.2
Appellants’ representative presented oral argument on September 6, 2017.
We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
We AFFIRM.
SUMMARY OF THE INVENTION
Appellants’ disclosure is directed to “utility knives that can selectively
expose or protect a cutting edge of a replaceable blade.” Spec. 12. Claim 1,
reproduced below from page 20 (Claims Appendix) of the Appeal Brief, is
illustrative of the claimed subject matter:
1. A knife comprising:
a handle base;
a neck connected to the handle base for movement
relative to the handle base between a closed position and an
open position, wherein the knife is more compact when the
neck is in the closed position than when the neck is in the open
position;
a utility blade holder slidingly carried by the neck for
sliding movement relative to the neck between a retracted
position and an extended position;
a manually operable lock that selectively locks the blade
holder in the extended or retracted position; and
a utility blade carried by the blade holder such that
movement of the utility blade holder between its extended and
retracted positions moves the utility blade between an exposed
position in which a cutting edge of the blade is exposed, and a
1 The Appeal Brief identifies STANLEY BLACK & DECKER, INC. as the
real party in interest. Appeal Br. 4.
2 Claims 4 and 12 are canceled. Id.
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protected position in which the cutting edge of the blade is
protected by the neck,
wherein the neck’s open position comprises a position in
which the neck and handle base together define a longitudinally
elongated handle that is shaped and configured for a user to grip
the knife during use while the neck is in the open position, and
wherein a combined length of the handle base and neck
when the neck is in the open position is at least 40% longer than
the combined length of the handle base and neck when the neck
is in the closed position.
REJECTIONS
Claims 1—3, 8—11, 13, 14, and 16—23 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Jennings (US 2008/0289190 Al,
published Nov. 27, 2008) in view of Ackeret (US 6,948,409 B2, issued Sept.
27, 2005).3
Claim 5 and 6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Jennings, Ackeret, and Zeng (US 2006/0272157 Al,
published Dec. 7, 2006).
Claims 7 and 15 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Jennings, Ackeret, and Van Deursen (US 2005/0155226
Al, published July 21, 2005).
Claims 1—3, 7—11, and 13—23 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Jennings and Gringer (US 6,487,778 Bl, issued
Dec. 3, 2002).4
3 Although the heading of this rejection does not include claims 21—23, these
claims are addressed in the body of the rejection.
4 Although the heading of this rejection does not include claims 21—23, these
claims are addressed in the body of the rejection.
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Claims 5 and 6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Jennings, Gringer, and Zeng.
ANALYSIS
Rejection Based on Jennings and Ackeret
The Examiner finds that Jennings discloses a knife substantially as
recited in claim 1, including, inter alia, a utility blade holder that carries and
moves a blade between exposed and protected positions, but does not
disclose “a manually operable lock that selectively locks the blade holder in
the extended or retracted position.” Non-Final Act. 1—2 (citing Jennings
124, Figs. 1, 5—9). The Examiner finds that Ackeret discloses a similar
knife including a blade holder that carries and moves a blade between
exposed and protected positions and a manually operable lock that that locks
the blade holder in an extended or retracted position. Id. at 2—3 (citing
Ackeret 17:9-45). The Examiner reasons that it would have been obvious to
one of ordinary skill to include Ackeret’s lock with Jennings’s knife “to give
the user the option to lock a spring biased blade in an extended position.”
Id. at 3.
Appellants traverse, first arguing that the Examiner’s modification
“would defeat the central auto-retracting safety feature of Jennings’ ‘Pocket
Safety Cutter.’” Appeal Br. 14 (citing Jennings, title). Appellants explain
that Jennings’s “blade carrier/holder 104 is spring-loaded so as to safely
move the blade carrier/holder 104 into its retracted position as soon as a user
releases the actuator portions 146 and 148.” Id. (citing Jennings 129)
(emphasis omitted). Thus, Appellants argue, the Examiner’s modification of
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Jennings to include a lock is inappropriate because the modification “would
defeat the safety purpose of Jennings’ knife by preventing the blade from
automatically retracting when a user releases the blade holder,” rendering
Jennings unsatisfactory for its intended purpose and changing its principle of
operation. Id. at 14—15; see also Reply Br. 5—6. For the same reasons,
Appellants argue that “Jennings explicitly teaches away from” such a
modification. Appeal Br. 15.
Appellants’ arguments focus on the word safety as used in the title of
Jennings, arguing that a “safety cutter,” by definition, cannot include a lock
that retains the blade in an extended position. This interpretation, however,
is contradicted by Jennings itself. Jennings discloses a second embodiment
of its safety cutter, in which the blade is automatically moved to (and
retained in) the extended position when the housing is rotated out of the
handle. See Jennings 32—33; see also id. ]Hf 14—21 (describing the knife
described in paragraphs 32—33 as a “pocket safety cutter”). The blade is
retracted (by spring 206) only when the housing is rotated back into the
handle. Id. 133. Thus, as used in Jennings, a “safety cutter” includes knives
in which the blade is retained in an exposed position. Therefore,
incorporating a manually operable lock, such as disclosed by Ackeret, into
Jennings’s knife embodiment illustrated in Figures 1—9 would not per se
preclude the modified knife from being a “safety cutter.” Appellants’
arguments to the contrary are unpersuasive.
Furthermore, incorporating Ackeret’s lock into Jennings’s knife
would still allow the blade to be automatically retracted. Ackeret discloses
that its blade 120 is moved to the extended position by pressing actuating
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button 139 inwards to overcome the force of leaf spring 137, and displacing
slide 136 (and blade 120) outward relative to blade holder 124 to overcome
the force of spring 135. Ackeret 17:9-45. Actuating button 139 is then
released, and the force of leaf spring 137 causes peg 138 to engage catch
124b' and retain blade 120 in an extended position. Id.', see also id. at Figs.
42a, 42b. Upon again pressing actuating button 139 inwards to disengage
peg 138 from catch 124b', spring 135 retracts blade 120 to a retracted
position. Id.
The same operation of Ackeret’s lock would be retained when
incorporating it into Jennings’s knife. Once the user disengages peg 138
from notch 124b'—that is, once the actuator is released—Jennings’s spring
106 would automatically pull blade carrier 104 back to the blade retracted
position. Thus, we are not persuaded that incorporating Ackeret’s lock into
Jennings’s knife would “defeat” the auto-retracting feature of Jennings.
Even if we consider the auto-retracting feature to be the central requirement
of Jennings, as asserted by Appellants, the Examiner’s modification does not
render Jennings unsatisfactory for its intended purpose or change its
principle of operation.
Nor does Jennings teach away from the Examiner’s modification. A
reference teaches away from a claimed invention or a proposed modification
if “a person of ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or would be led
in a direction divergent from the path that was taken by the applicant.” In re
Kubin, 561 F.3d 1351, 1357 (Fed. Cir. 2009) (citing In re Gurley, 27 F.3d
551, 553 (Fed. Cir. 1994)). Prior art does not teach away from claimed
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subject matter unless the prior art also criticizes, discredits, or otherwise
discourages the solution claimed. See In re Fulton, 391 F.3d 1195, 1201
(Fed. Cir. 2004). Appellants do not cite to any such criticism, and, thus,
have failed to persuade us that Jennings teaches away from the Examiner’s
modification. Furthermore, as explained above, Jennings’s spring 106
would automatically pull blade carrier 104 back to the blade retracted
position once the actuator is released. We additionally note that the
Examiner’s modification is similar to the second embodiment disclosed by
Jennings, in which the blade is automatically moved to (and retained in) the
extended position when the housing is rotated out of the handle. See
Jennings 32—33.
Appellants also interpret the Examiner’s statement that “Ackeret
enables both modes of operation” (see Non-Final Act. 31) to mean that the
Examiner is asserting that Ackeret discloses both “an auto-retracting safety
mode and a locking mode that locks the blade holder in the extended
position.” Appeal Br. 15. Appellants assert that the Examiner’s statement is
in error because “Ackeret’s manually operable lock selectively locks the
blade holder 136 in the extended or retracted position,” but “Ackeret’s knife
does not include an auto-retracting safety feature.” Id. (emphasis omitted);
see also Reply Br. 6—8.
We find Appellants’ arguments unpersuasive of error. Even
considering Appellants’ assertions to be true—that is, that Ackeret only
discloses a knife having a manually operable lock that selectively locks the
blade holder in an extended or a retracted position—this does not apprise us
of error because it is this locking feature that the Examiner relies upon to
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modify Jennings. See Non-Final Act. 2—3. Furthermore, for similar reasons
as explained above, modifying Jennings’s knife to have a lock to selectively
lock the blade holder in the extended or retracted position would not prevent
Jennings’s spring 106 from automatically pulling blade carrier 104 back to
the blade retracted position once the lock is disengaged.
Accordingly, for the foregoing reasons, we sustain the rejection of
claim 1 and its dependent claims 2, 3, 8—10, 18, and 20-23, which are not
argued separately, as being unpatentable over Jennings and Ackeret.
Appellants rely on the same arguments discussed above in asserting the
patentability of independent claims 11 and 13. Appeal Br. 17. Accordingly,
we also sustain the rejection of claim 11, its dependent claims 16 and 19,
which are not argued separately, claim 13, and its dependent claims 14 and
17, which are not argued separately, as being unpatentable over Jennings and
Ackeret.
Rejection Based on Jennings, Ackeret, and Zeng
With respect to the rejection of claims 5 and 6, Appellants rely on the
arguments presented above in regard to the rejection of claim 1. Id. at
17—18. Accordingly, for the same reasons as discussed above, we also
sustain the rejection of these claims as being unpatentable over Jennings,
Ackeret, and Zeng.
Rejection Based on Jennings, Ackeret, and Van Deursen
With respect to the rejection of claims 7 and 15, Appellants rely on
the arguments presented above in regard to the rejection of claim 1. Id. at
18. Accordingly, for the same reasons as discussed above, we also sustain
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the rejection of these claims as being unpatentable over Jennings, Ackeret,
and Van Deursen.
Rejection Based on Jennings and Gringer
The Examiner finds that Jennings discloses a knife as described
above. Non-Final Act. 14—15 (citing Jennings 124, Figs. 1, 5—9). The
Examiner finds that Gringer discloses a similar knife including a blade
holder that carries and moves a blade between exposed and protected
positions and a manually operable lock that locks the blade holder in an
extended or retracted position. Id. at 15 (citing Gringer 3:21—27, 3:36-4:3).
The Examiner reasons that it would have been obvious to one of ordinary
skill to include Gringer’s lock with Jennings’s knife “to assist a user in
retaining the blade in an extended position while permitting automatic
retraction of the blade.” Id. at 16 (citing Gringer 1:41—45). The Examiner
further finds that “Gringer discloses a deep notch (20) that provides better
locking of the blade holder in that position,” and reasons that “one of
ordinary skill in the art would recognize that auto-retracting knives can be
had with full locking in extended positions, partial locking with reduce[d]
user input or user input provides all of the force to [counteract] the return
spring.” Ans. 32; see also Gringer 4:23—28.
Appellants traverse, first arguing that Gringer does not disclose a lock.
Appeal Br. 10. According to Appellants, “[w]hile Gringer reduces the
thumb force required to keep the blade carrier 12 in the extended position,
Gringer makes clear that such force must not be eliminated.” Id. at 11
(emphasis omitted). Appellants interpret Gringer column 3, line 57 to
column 4, line 3 as disclosing that “the user’s manual thumb force is always
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required, such that Gringer’s blade holder can never be locked in the
extended position.” Id. (emphasis omitted). Appellants acknowledge that
Gringer discloses that its “notches 20 provide a ‘partial locking’
mechanism,” but describe such locking mechanism as “just a reduction in
the effective retraction spring force,” but “not a ‘locking’ mechanism.” Id.
at 12; see also Reply Br. 2—3.
Gringer explains that “[a]s thumb piece 14 slides along guide slot 18,
protuberance 32 becomes partly or fully depressed into each notch 20 as it
passes the notch.” Gringer 3:50-53 (boldface font omitted). Gringer further
explains that this protuberance-notch interfacing “causes a partial locking of
the blade carrier 12” and “reduces the forward force required to offset the
reverse tension applied to blade carrier 12 by return spring 6 during
extension of blade 10.” Id. at 3:53—57 (boldface font omitted). Thus,
Gringer discloses two benefits: locking force to reduce the amount of
forward tension needed to maintain the blade in an extended position, and
speed of automatic blade retraction via the return spring. See id. at 3:57—65.
Gringer further discloses increasing the locking force by altering the shape
and size of the notch, and that a relatively deep notch with steep side
surfaces “better lock[s] the blade in position.” Id. at 4:4—28.
Upon considering the totality of Gringer’s disclosure, we are not
persuaded that Gringer, in all embodiments, requires the user to exert thumb
force to maintain the blade in an extended position or that Gringer’s blade
holder can never be locked in the extended position as asserted by
Appellants. Rather, as noted above, Gringer discloses the balancing of
locking force strength and automatic retraction speed.
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Constructing the notch so as to exert sufficient locking force to overcome
the automatic retraction force exerted by the spring is merely a product of
that balancing. One skilled in the art would understand Gringer’s teachings
in this regard as implying that, if desired, the notch could be constructed
with a geometry that provides sufficient force to lock the blade against
retraction without additional force being applied by the user regardless of
whether Gringer expressly discloses this particular arrangement. See, e.g.,
In re Baxter TravenolLabs, 952 F.2d 388, 390 (Fed. Cir. 1991) (the
dispositive question is “whether one skilled in the art would reasonably
understand or infer” that a reference teaches or discloses all of the elements
of the claimed invention); In re Preda, 401 F.2d 825, 826 (CCPA 1968)
(stating, “in considering the disclosure of a reference, it is proper to take into
account not only specific teachings of the reference but also the inferences
which one skilled in the art would reasonably be expected to draw
therefrom”). Furthermore, as correctly noted by the Examiner, Gringer
discloses a deep notch, thereby “better locking the blade in position.”
Gringer 4:23—28; see also Ans. 32. We see no reason to construe variations
on the same term, lock and locking, in the same art as having dissimilar
meanings. Thus, we find that the Examiner’s interpretation that Gringer
teaches a manually operable lock that locks the blade holder in an extended
or retracted position is supported by a preponderance of the evidence. We
further note that, once the user moves Gringer’s thumb piece 14 such that its
protuberance is disengaged from notch 20, return spring 6 would move blade
10 to its retracted position as disclosed by Gringer. Thus, automatic
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retraction is still achieved when the notch is designed to fully lock the blade
holder in the extended position.
Appellants also argue that the Examiner’s modification “would defeat
the central auto-retracting safety feature of Jennings’ ‘Pocket Safety
Cutter,”’ would render Jennings unsatisfactory for its intended purpose, and
would change Jennings’s principle of operation. Appeal Br. 12 (citing
Jennings, title, 129); see also Reply Br. 3^4. Appellants further argue that
Jennings teaches away from the Examiner’s modification.5 Appeal Br. 12.
As explained above, when the user moves Gringer’s thumb piece 14
such that its protuberance is disengaged from notch 20, Gringer’s return
spring 6 moves blade 10 to its retracted position. See, e.g., Gringer 3:50-
4:28. The same is true when incorporating Gringer’s lock into Jennings’s
knife; once the user moves actuator 146, 148 such that the added
protuberance disengages from the added notch—that is, once the actuator is
released—spring 106 would automatically pull blade carrier 104 back to the
blade retracted position. Thus, we are not persuaded that incorporating
Gringer’s lock into Jennings’s knife would “defeat” the auto-retracting
feature of Jennings. Even if we consider the auto-retracting feature to be the
central requirement of Jennings, as asserted by Appellants, the Examiner’s
5 Although Appellants stated “Gringer’s safety knife disclosure teaches
away from [the Examiner’s] modification” (Appeal Br. 12 (emphasis
added)), we understand this to be a typographical error, with the intended
assertion being that Jennings teaches away. To the extent that Appellants
did mean to reference Gringer, the argument is unpersuasive for the reasons
set forth above.
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modification does not render Jennings unsatisfactory for its intended purpose
or change its principle of operation.
For the same reasons as discussed above, we are not persuaded that
Jennings teaches away from the Examiner’s modification.
Accordingly, for the foregoing reasons, we sustain the rejection of
claim 1 and its dependent claims 2, 3, 7—10, 18, and 20-23, which are not
argued separately, as being unpatentable over Jennings and Gringer.
Appellants rely on the same arguments discussed above in asserting the
patentability of independent claims 11 and 13. Appeal Br. 13. Accordingly,
we also sustain the rejection of claim 11, its dependent claims 16 and 19,
which are not argued separately, claim 13, and its dependent claims 14, 15,
and 17, which are not argued separately, as being unpatentable over Jennings
and Gringer.
Rejection Based on Jennings, Gringer, and Zeng
With respect to the rejection of claims 5 and 6, Appellants rely on the
arguments presented above in regard to the rejection of claim 1. Appeal Br.
13—14. Accordingly, for the same reasons as discussed above, we also
sustain the rejection of these claims as being unpatentable over Jennings,
Gringer, and Zeng.
DECISION
The Examiner’s decision to reject claims 1—3, 5—11, and 13—23 is
affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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