Ex Parte Hansen et al

Patent Trial and Appeal BoardDec 15, 2017

12716579 (P.T.A.B. Dec. 15, 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 12/19/2017 Pillsbury Winthrop Shaw Pittman, LLP PO Box 10500 McLean, VA 22102 EXAMINER DAVIES, SAMUEL ALLEN ART UNIT PAPER NUMBER 3724 NOTIFICATION DATE DELIVERY MODE 12/19/2017 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 REQUEST FOR REHEARING In reply to the Decision on Appeal mailed September 18, 2017 (“Decision” or “Dec.”), Frederick S. Hansen et al. (Appellants) filed a Request for Rehearing pursuant to 37 C.F.R. § 41.52, on November 15, 2017 (“Req.”), requesting that we reconsider our Decision affirming the rejections of claims 1—3, 5—11, and 13—23. Specifically, Appellants request that we designate our affirmance of the Examiner’s rejections as new grounds of rejection. Req. 1. For the reasons set forth below, we decline to so designate. Appeal 2015-006980 Application 12/716,579 ANALYSIS The Examiner rejected claim 1 as being unpatentable over Jennings and Ackeret (Final Act. 1—3) and as being unpatentable over Jennings and Gringer {id. at 14—16). In each of these rejections, the Examiner relied on Jennings to disclose a knife substantially as recited in the claim, but relied on Ackeret and Gringer to teach locks to retain the blade in an extended or a retracted position. Id. at 1—3, 14—16 (relying on the embodiment illustrated in Jennings’s Figs. 1—9 (hereafter “first embodiment”)). In traversing the Examiner’s rejections, Appellants focused on the title of Jennings—“Pocket Safety Cutter.” See, e.g., Appeal Br. 12, 14 (each citing Jennings, title). Appellants asserted that the “safety” feature of Jennings’s knife is the automatic retraction of the blade upon release of holding pressure by the user. See, e.g., Reply Br. 5 (“the auto-retracting safety feature that is even in the title of Jennings’ application,” “Jennings’ auto-retraction mechanism provides Jennings’ ‘safety’ (Jennings, title) feature”). Thus, as set forth in the Decision, we understand Appellants to argue that a “safety cutter,” by definition, cannot include a lock that retains the blade in an extended position. See Dec. 5. This understanding was confirmed during the September 6, 2017, oral hearing, during which Appellants’ representative asserted that “safety knives work by automatically retracting the blade holder as soon as the user releases an actuator button.” Tr. 3:8—9. Our reliance in the Decision on the embodiment illustrated in Jennings’s Figures 10—17 (hereafter “second embodiment”) did not introduce new facts or rationale to the Examiner’s rejections, nor did it change the thrust of the Examiner’s rejections. Rather, we relied on the 2 Appeal 2015-006980 Application 12/716,579 second embodiment to evidence the fallacy of Appellants’ asserted interpretation of the phrase “safety cutter” regarding the first embodiment of Jennings. Dec. 5. Jennings’s second embodiment moves the blade into an extended position when the housing is rotated out of the handle, and retains the blade in the extended position until the housing is rotated back into the handle. Jennings 32—33. By referring to this second embodiment as a safety cutter (see id. Tflf 14—21), it is clear that Appellants’ assertion that “safety cutter” means automatic blade retraction upon release of holding pressure is an incorrect interpretation. As such, Appellants’ arguments regarding the alleged impropriety of the Examiner’s combinations of Jennings’s first embodiment with other prior art, which arguments are premised on the asserted incorrect interpretation of “safety cutter,” are unpersuasive. For the foregoing reasons, Appellants’ Request fails to apprise us that we overlooked or misapprehended any matter in the Decision, or that the Decision contained any undesignated new ground of rejection. DECISION We have granted Appellants’ Request to the extent that we have reconsidered our Decision, but we deny the Request with respect to making any changes thereto. 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). DENIED 3