Ex Parte Horton

Patent Trial and Appeal BoardApr 18, 2013

11937918 (P.T.A.B. Apr. 18, 2013)

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. 11/937,918 11/09/2007 Mark Horton 38710-00CON 2738 32300 7590 04/19/2013 BRIGGS AND MORGAN P.A. 2200 IDS CENTER 80 SOUTH 8TH ST MINNEAPOLIS, MN 55402 EXAMINER PRONE, JASON D ART UNIT PAPER NUMBER 3724 MAIL DATE DELIVERY MODE 04/19/2013 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 MARK HORTON ____________________ Appeal 2011-002957 Application 11/937,918 Technology Center 3700 ____________________ Before: PHILLIP J. KAUFFMAN, BARRY L. GROSSMAN, and BART A. GERSTENBLITH, Administrative Patent Judges. KAUFFMAN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-002957 Application 11/937,918 2 STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 2 and 4-6.1 We have jurisdiction under 35 U.S.C. § 6(b). We reverse. The Invention Claim 2 is the sole independent claim on appeal, and is reproduced below: 2. A method of cutting substantially flat foods comprising: providing a cutting device having a cutting wheel attached to a first end of a handle having a curved top surface and curved bottom surface extending between the first end and a second end, said handle further including a pair of parallel side surfaces extending from the first end to the second end, with said second end being tapered, said top surface extending away from the second end with a first portion being curved in a first direction and a finger stop being curved in a direction opposite the first portion, with said finger stop including an insert extending from a top surface of the finger stop and being aligned substantially parallel to said pair of parallel side surfaces; placing an index finger of a user longitudinally along the curved top surface of the handle with a tip of the index finger engaging the insert of the finger stop, with the index finger curving along the second portion of the handle and a user's 1 It is unclear if Appellant’s amendment dated March 9, 2010, seeking to cancel claims 1 and 3 was entered. However, Appellant elected not to appeal the rejections of these claims. App. Br. 4; Reply Br. 2. Therefore we consider these claims withdrawn from the appeal. We suggest appropriate action upon return of jurisdiction of this application to the Examiner. See Ex Parte Ghuman, 88 USPQ2d 1478, 1480 (BPAI 2008) (precedential); Manual of Patent Examining Procedure (MPEP) § 1215.03 (8th ed., Rev. 9, Aug. 2012). Appeal 2011-002957 Application 11/937,918 3 palm containing the second end of the handle while the tip of the index finger is maintained against the finger stop; engaging one of the pair of side surfaces with a thumb finger of the user while maintaining the tip of the index finger against the finger stop; engaging the other of the pair of side surfaces with one or more fingers of the user adjacent to the user's index finger; and rolling the cutting wheel across the flat food item to cut the food item with the index finger tip engaging the stop structure, a portion of the index finger engaging the top surface and the second end of the handle engaging the palm of the user. The Rejections and Evidence Relied Upon The following rejections are before us on appeal: I. Claims 2 and 4-6 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. II. Claims 2 and 4-6 under 35 U.S.C. § 103(a) as unpatentable over Saliaris (US 4,809,437; iss. Mar. 7, 1989), Chen (US 5,144,749; iss. Sep. 8, 1992), and Miller (US 5,027,511; iss. Jul. 2, 1991). OPINION I. Written description requirement Claim 2 was amended to add the phrase, “an insert extending from a top surface of the finger stop and being aligned substantially parallel to said pair of parallel side surfaces.” The Examiner contends that this phrase is new matter that is not described in the original Specification so that a person of ordinary skill in the art would recognize that Appellant possessed the claimed invention. Ans. 3. Specifically, the Examiner finds that the insert lies along the top surface of the handle, that top surface is not parallel to the Appeal 2011-002957 Application 11/937,918 4 side surfaces of that handle, therefore the insert also cannot be parallel to the side surfaces. Ans. 3-4. Appellant’s Specification does not explicitly disclose that the insert is aligned substantially parallel to the pair of parallel side surfaces. However, explicit disclosure is not prerequisite to meeting the written description requirement. In re Wright, 866 F.2d 422, 425 (Fed. Cir. 1989) (the claimed subject matter need not be described “in haec verba” in the original specification in order to satisfy the written description requirement) (emphasis added). Rather, “the test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” See Ariad Pharm., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Claim 2 calls for the handle of the cutting device to include a pair of parallel side surfaces. In parity with this claim language, the Specification states that side surfaces 22, 23 are parallel to each other and perpendicular to top surface 24 of handle 20. Spec., paras. [007], [011], [012]; fig. 1a. Claim 2 calls for the insert to be aligned substantially parallel to the pair of parallel side surfaces. The Specification states that the top surface 24 of handle 20 includes a portion 25 that includes a finger stop structure 30 that engages a user’s index finger 32 during use. Spec., para. [012]; figs. 1- 3. Finger stop structure 30 may be an insert of different material. Id. In left side perspective view, finger stop 30 extends on the top surface 24 of handle 20, remaining equidistant from the side surface 22 along the longitudinal axis of handle 20. Spec., para. [006]; fig. 1. Therefore, a person of ordinary skill in the art would recognize Appellant possessed a method that utilized a Appeal 2011-002957 Application 11/937,918 5 cutting device having a finger stop structure 30 (in the form of an insert) aligned substantially parallel to the side surfaces 22, 23 of the handle 20. See App. Br. 9-10; Reply Br. 6 (providing illustrations consistent with Appellant’s disclosure). Consequently, we do not sustain the rejection of claim 2 and its dependent claims 4-6. II. Obviousness over Saliaris, Chen, and Miller Independent claim 2 calls for a finger stop that includes an insert that aligns substantially parallel to the pair of parallel side surfaces. The Examiner’s conclusion of obviousness is based upon the finding that Miller’s rib projections 30 correspond to an insert as claimed because Miller’s rib projections 30 are a linear strip of material that protrudes from a surface, demonstrating that it is old and well known to “incorporate an insert that is [a] linear strip of material protruding from a surface.”2 Ans. 6. To begin, the Examiner’s finding is premised on a claim interpretation that an insert as claimed is a linear strip of material that protrudes from a surface. The Specification does not define an insert as a linear strip of material that protrudes from a surface. Nor does the Examiner provide an explanation for this deviation from the ordinary meaning of the term “insert.” See App. Br. 12 (providing the ordinary definition of insert as “‘something inserted or to be inserted’”); Ans. 6-7, 9-10; see also Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1342 (Fed. Cir. 2001) (“[W]ords in patent claims are given their ordinary meaning in the usage of the field of 2 We note that the Examiner did not take Official Notice that inserts on handles were well known. Appeal 2011-002957 Application 11/937,918 6 the invention, unless the text of the patent makes clear that a word was used with a special meaning.”) (Internal quotations and citation omitted). Appellant correctly points out that Miller’s rib projections 30 are perpendicular to handle portion 16 rather than parallel to the side surfaces of handle portion 16, and rib projections 30 protrude from the surface of handle portion 16 and are not inserted into that handle. See App. Br. 11-12; Reply Br. 7-8; see also Miller, col. 2, ll. 5-10, figs. 1-4 (ribs 30 disclosed and depicted as projecting from the outer face of body portion 26 perpendicular to the longitudinal axis of handle 16). Given that the Examiner’s conclusion of obviousness is based upon this erroneous finding of fact, we do not sustain the rejection of claim 2 and its dependent claims 4-6. DECISION We reverse the Examiner’s decisions to reject claims 2 and 4-6. REVERSED hh