Ex Parte Kempker et al

Patent Trial and Appeal BoardNov 8, 2017

12620999 (P.T.A.B. Nov. 8, 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. 12/620,999 11/18/2009 Jeffrey A. Kempker KLE005 P301 1638 7590 11/08/2017 James E. Shultz Jr. 16656 Pine Dunes Court Grand Haven, MI 49417 EXAMINER NGUYEN, PHONG H ART UNIT PAPER NUMBER 3724 MAIL DATE DELIVERY MODE 11/08/2017 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 JEFFREY A. KEMPKER, ORVILLE V. CRAIN, and MATTHEW JON JACOBS ____________________ Appeal 2015-002615 Application 12/620,999 Technology Center 3700 ____________________ Before JOHN C. KERINS, GEORGE R. HOSKINS, and FREDERICK C. LANEY, Administrative Patent Judges. KERINS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Jeffrey A. Kempker et al. (“Appellants”) appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1–4, 6, 7, 9, 12–18, 22, 23, and 25– 28. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2015-002615 Application 12/620,999 2 THE INVENTION Appellants’ invention is directed to a hand tool having a replaceable head. Claim 25, reproduced below, is illustrative: 25. An apparatus comprising: a replaceable cutting head having an elongated handle engagement section having an operative end-extending from the elongated handle engagement section, the replaceable cutting head comprising a polymeric body that carries a piece of metal, the piece of metal comprises a continuous sharpened linear cutting edge that defines a first blade, wherein the body comprises material on an operative end that holds the piece of metal to the elongated handle engagement section and wherein the material comprises a first overhanging shield that at least partially covers a first outer edge of the piece of metal, wherein the material combines with the first overhanging shield to define a first throat, wherein the first throat is shaped to limit access to the first blade and wherein the overhanging shield is secured in a fixed position relative to the first blade, wherein the elongated handle engagement section has an enclosed elongated opening spaced apart from the operative end and a latch is positioned within the enclosed elongated opening, wherein one end of the latch is integrally connected to an end of the enclosed elongated opening and an opposite free end of the latch has a protrusion, wherein the protrusion engages with a hole of a handle to releasably secure the replaceable head to the handle. REJECTIONS The Examiner rejects: (i) claims 1, 3, 4, 6, 7, 9, 12, 13, 15–18, 22, 23, and 25–281 under 35 U.S.C. § 103(a) as being unpatentable over Kempker (US D527,604 S, 1 The statement of rejection at page 2 of the Final Action incorrectly includes claims 5 and 24 as being rejected on these grounds, however, claims 5 and 24 have been canceled. Appeal 2015-002615 Application 12/620,999 3 issued Sept. 5, 2006) in view of Votolato (US 2005/0217114 A1, published Oct. 6, 2005), Hsieh (US 2007/0272061 A1, published Nov. 29, 2007), and O’Heeron (US 6,544,277 B1, issued Apr. 8, 2003);2 (ii) claims 2 and 14 under 35 U.S.C. § 103(a) as being unpatentable over Kempker in view of Votolato, Hsieh, and O’Heeron; and (iii) claim 12 under 35 U.S.C. § 103(a) as being unpatentable over Kempker in view of Votolato, Hsieh, O’Heeron, and Wallays (US 5,933,918, issued Aug. 10, 1999). ANALYSIS Rejection (i) Appellants principally direct their arguments to independent claim 25, and the limitations found therein. Amended Appeal Br., passim. (dated June 14, 2014, hereinafter “Appeal Brief” or “Appeal Br.”); Reply Br., passim. We first address claim 25 specifically, and thereafter the remaining claims and their relation to the arguments advanced. The Examiner finds that Kempker3 discloses a hand tool having the claimed elongated handle, and a head with two overhanging hook-shaped shields, with the handle and the shields forming first and second shielded blade throats. Final Act. 2. The Examiner finds that Kempker does not disclose a replaceable head and the additional limitations attendant to the 2 The Examiner does not apply the teachings of Hsieh or O’Heeron in the body of this rejection. Final Act. 2–4. 3 The Kempker design patent, on its face, is assigned to Klever Kutter, LLC, which appears to be the same entity as the real party in interest, Klever Kutters L.L.C, identified in the Appeal Brief. See Appeal Br. 1. Identity of inventorship exists between the Kempker design patent and the instant application, as well. Appeal 2015-002615 Application 12/620,999 4 structure of the replaceable head, including an elongated section shaped to be fitted into a recess in the handle and secured to the handle. Id. at 2–3. The Examiner turns to Votolato for its disclosure of a hand tool (cutter) having a replaceable head with an elongated section fitted into a recess and secured to the handle. Id. at 3. The Examiner concludes that it would have been obvious to modify Kempker to have a replaceable head as taught by Votolato, in order to allow a user to replace a non-functional (used) head with a new one. Id. The Examiner provides a sketch of the Kempker hand tool, as proposed to be modified in view of Votolato, at page 12 of the Answer. Appellants argue that the Examiner has not provided any reasoning as to “how or why” a person of ordinary skill in the art would modify or combine the references in arriving at the claimed invention, and, as a result the rejection is impermissibly based on the use of hindsight reconstruction. Appeal Br. 10. We note initially that the preceding paragraph in the present decision identifies the portions of the Examiner’s position as to both “why” and “how” the references would obviously be combined. Appellants specifically maintain that Votolato, as well as Hsieh, O’Heeron, and Wallays, disclose removable heads that have the blade extending in a longitudinal direction with respect to the handle, and thus a combination of these references with Kempker would not yield a replaceable cutting head with material that cooperates with an overhanging shield to define a throat for the blade. Appeal Br. 10. This argument is in the nature of arguing that the person of ordinary skill in the art would discard entirely the configuration of the cutting portion of the Kempker device, in order to bodily incorporate the blade configuration of Votolato or one of the other Appeal 2015-002615 Application 12/620,999 5 references. The argument is not responsive to the specifics of the rejection, which, instead, maintains the general configuration of the cutting portion of the Kempker hand tool, and simply makes the head replaceable. See, e.g., Ans. 11–12. In addition, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference. In re Keller, 642 F.2d 413, 425 (CCPA 1981) (internal citations omitted). The person of ordinary skill in the art is not compelled to blindly follow the teaching of one prior art reference over the other without the exercise of independent judgment. See Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984). Appellants next argue that there is no teaching, suggestion, or motivation to separate the Kempker cutter at a point that would result in the replaceable head and handle meeting the limitations involving the shield, and the shield and material of the head combining to define a throat that limits access to the blade. According to Appellants, a separation of the Kempker cutter that would result in these limitations being met “would be completely arbitrary,” and the Examiner does not provide any rationale as to why that point would have been obvious. Appeal Br. 10–11. Appellants, in responding to the Examiner’s Answer, also allege, in this regard, that the Examiner “continues to rely on a portion of a handle in combination with an overhanging shield” as the components defining the claimed first throat, and that the Examiner has not shown that the cutting head, in particular, includes material that cooperates with the overhanging shield to define the throat, as required by claim 25. Reply Br. 2 (emphasis omitted). Appellants note that the removable cutting head of Votolato does Appeal 2015-002615 Application 12/620,999 6 not include material that combines with an overhanging shield to define a first throat. Id. The language employed by the Examiner is somewhat imprecise as it relates to the limitation in claim 25 requiring that material that is part of the replaceable cutting head acts in concert with a first overhanging shield to define a first throat limiting access to the blade. However, the sketch appearing at page 12 of the Answer clearly evinces that the Examiner’s proposed modification of the Kempker cutting tool to make the cutting head replaceable results in material, formerly part of the handle, and now part of the replaceable cutting head, cooperating with the overhanging shield to define a throat limiting access to the cutting blade. The cutting head end of the Examiner’s sketch of the modified Kempker cutting tool is shown below. Reproduced above is a sketch prepared by the Examiner, based on Figure 2 of Kempker, modified as proposed by the Examiner to have a replaceable cutting head. The sketch shows, with dashed lines, what Appellants refer to as a hole in the handle, and shows the elongated handle engagement section of Votolato positioned within the handle hole. Those features do not extend to the farthest extent of the handle, which is indicative Appeal 2015-002615 Application 12/620,999 7 that the Examiner proposes that the replaceable cutting head is to have material that was formerly part of the handle now making up part of the replaceable cutting head. This material of the replaceable cutting head, in combination with a shield at the outer end of the blade, defines a first throat limiting access to the blade, which is identified by the right-most arrow in the Examiner’s sketch. In response to Appellants’ argument that such a separating point would be completely arbitrary, we note that the Examiner includes, next to the sketch of the modified Kempker device, an inverted image of the cutting head portion of Figure 2 of Votolato, which shows a similar separation point, with the base 10a of the cutting head, which will abut the handle when secured thereto, having a contour that matches that of the handle, in essentially the same manner as the material in Kempker that the Examiner proposes to include on the replaceable cutting head, in the modification of Kempker. We thus do not agree that the Examiner’s positioning of the separation point is arbitrary, rather, it has a rational underpinning that the evidence of record supports. Moreover, given that the proposed modification is to make the head replaceable, and that the throat portion is what protects a user from accidentally getting cut by the blade, maintaining a throat portion by including, on the replaceable head, material cooperating with the overhanging shield to form the throat would preserve the safety aspects provided by the throat. Appellants additionally argue that Votolato does not disclose that its removable blade cartridge includes material that combines with an overhanging shield to define a first throat. Reply Br. 2. The argument does not address the basis for the rejection, which does not rely on Votolato as Appeal 2015-002615 Application 12/620,999 8 teaching that limitation. Appellants also note that Votolato has a moveable shield over its blade, whereas the claimed invention has the overhanging shield fixed in place. Id. at 2–3. Again, the Examiner does not rely on Votolato in any manner involving its specific shield, so the argument is not germane to the rejection. None of Appellants’ arguments thus apprise us of any error in the Examiner’s rejection of claim 25. The rejection is, therefore, sustained. Appellants present no substantive arguments for any of the remaining claims, and merely cite to the arguments advanced for claim 25. Accordingly, the rejection is sustained as well with respect to claims 1, 3, 4, 6, 7, 9, 12, 13, 15–18, 22, 23, and 26–28. Rejections (ii) and (iii) Appellants present no arguments specific to these grounds of rejection. We, therefore, assume that the arguments directed to rejection (i) are intended to apply to these rejections as well. For the reasons discussed above, we are not apprised of error in rejection (i), and rejections (ii) and (iii) directed to claims 2, 12, and 14 are, therefore, sustained. DECISION The rejections of claims 1–4, 6, 7, 9, 12–18, 22, 23, and 25–28 under 35 U.S.C. § 103(a) are affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED