Ex Parte Laub

Patent Trial and Appeal BoardAug 25, 2014

12139075 (P.T.A.B. Aug. 25, 2014)

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. 12/139,075 06/13/2008 Mauricio Laub BPMLB0001ML 1673 27939 7590 08/26/2014 Philip H. Burrus, IV Burrus Intellectual Property Law Group LLC 222 12th Street NE Suite 1803 Atlanta, GA 30309 EXAMINER DAVIES, SAMUEL ALLEN ART UNIT PAPER NUMBER 3724 MAIL DATE DELIVERY MODE 08/26/2014 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 MAURICIO LAUB ____________ Appeal 2012-008016 Application 12/139,0751 Technology Center 3700 ____________ Before NINA L. MEDLOCK, KEVIN W. CHERRY, and JAMES A. WORTH, Administrative Patent Judges. WORTH, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1, 2, and 5–21.2 We have jurisdiction under 35 U.S.C. §§ 134 and 6(b). We REVERSE. 1 According to Appellant, Mauricio Laub is the real party in interest (App. Br. 2). 2 Our decision refers to the Appellant’s Appeal Brief (“App. Br.,” filed Aug. 19, 2012) and Reply Brief (“Reply Br.,” filed Jan. 6, 2012), and the Examiner’s Answer (“Ans.,” mailed Nov. 7, 2011). Appeal 2012-008016 Application 12/139,075 2 Introduction Appellant’s disclosure relates to a culinary tool for cutting and transporting food (Spec. ¶ 18). The specification discloses a curvilinear ridge, which surrounds the spatula portion of the tool, to provide a backstop for food during transport (Spec. ¶¶ 19, 30, 60; see also ¶ 6; Ans. 5). Claim 1 is the independent claim on appeal. Claim 1, reproduced below, is representative of the subject matter on appeal. 1. A culinary tool suitable for both cutting and transporting food, the culinary tool comprising: a tool member beginning at an asymmetrical base region and tapering along a major face to a distal tip, the tool member comprising a curvilinear medial ridge passing from the asymmetrical base region across the tool member thereby defining a cutting portion that includes the distal tip and is disposed along one side of the curvilinear medial ridge, and a spatula portion disposed along an opposite side of the curvilinear medial ridge; and a handle affixed to the asymmetrical base region; wherein the cutting portion comprises at least thirty percent of the major face by area, and wherein the spatula portion, surrounded along an interior of the tool member by the curvilinear medial ridge, comprises at least forty percent of the major face by area. App. Br. 22, Claims App’x. Prior Art Relied Upon Shelton US 164,880 June 22, 1875 Barden et al. US D27,254 June 29, 1897 Barden US D28,186 Jan. 18, 1898 Tupper US 2,938,267 May 31, 1960 Kelly US D255,637 July 1, 1980 Bowman US D418,723 Jan. 11, 2000 Beaton US 6,564,685 B1 May 20, 2003 Appeal 2012-008016 Application 12/139,075 3 Rejections On Appeal The Examiner maintains, and the Appellant appeals, the following rejections: 1) Claims 1, 2, 10, 19, and 20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Barden ‘186 and Shelton (Ans. 4, 14– 15). 2) Claims 5–7, 11–14, and 17 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Barden ‘186, Shelton, and Tupper (Ans. 6–7, 10–11, 13). 3) Claim 8 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Barden ‘186, Shelton, Tupper, and Kelly (Ans. 7–8). 4) Claim 9 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Barden ‘186, Shelton, and Barden ‘254 (Ans. 11–12). 5) Claim 15 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Barden ‘186, Shelton, Tupper, and Bowman (Ans. 11). 6) Claim 16 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Barden ‘186, Shelton, Tupper, and Beaton (Ans. 12). 7) Claim 18 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Barden ‘186, Shelton, Barden ‘254, and Bowman (Ans. 14). 8) Claim 21 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Barden ‘186, Shelton, Tupper, and Barden ‘254 (Ans. 16). Appeal 2012-008016 Application 12/139,075 4 FINDINGS OF FACT We have determined the findings of fact in the Analysis section below are supported at least by a preponderance of the evidence.3 ANALYSIS Independent claim 1 and dependent claims 2, 10, 19, and 20 The Examiner finds that Barden ‘186 discloses a medial ridge that separates a knife from a spatula but does not teach the medial ridge being “curvilinear” or the spatula portion being “surrounded along an interior of the tool member by the curvilinear ridge,” as required by claim 1 (Ans. 5). The Examiner concludes that it would have been obvious to modify the ridge of Barden ‘186 in view of Shelton to provide a curvilinear ridge (Ans. 5). Appellant argues that the reasoning provided by the Examiner for the modification of Barden ‘186 in view of Shelton is deficient. The Examiner sets forth the reasoning for the proposed modification as follows: Because Barden [‘186] and Shelton teach medial ridge configurations on [a] cutting tool, it would have been obvious to one skilled in the art to substitute one configuration for the other to achieve the predictable result of separating two separate portions of the cutting tool thereby allowing a handle configured to connect to a different shaped tang to connect to the tang of the tool. Ans. 5–6. Appellant argues that there would have been no reason to modify the ridge of Barden ‘186 because Barden ‘186 already has a ridge that separates 3 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Patent Office). Appeal 2012-008016 Application 12/139,075 5 the two separate portions of the cutting tool (App. Br. 11). The Examiner explains that a person of ordinary skill would have been motivated to pursue known configurations of the same device to separate parts of a tool (Ans. 17). The Examiner determines that the purpose of Shelton is to allow the tang of the blade to be flat in order to use a different handle configuration (Id.). We agree with Appellant that the Examiner has not established that a person of ordinary skill in the art would have had an apparent reason to modify the tang or handle of Barden ‘186 in view of Shelton; Barden ‘186 already has a ridge that separates the two separate portions of the cutting tool. Further, even if a person of ordinary skill in the art desired a flat tang, we disagree with the Examiner that it would have been obvious to choose a curvilinear ridge to accomplish this result. Appellant correctly asserts that Shelton has a curvilinear ridge but also has a curvilinear blade (App. Br. 17). Appellant argues that the only suggestion to combine a curved ridge with a non-curved blade comes from Applicant’s disclosure (App. Br. 17). We agree with Appellant that the Examiner’s reasoning, variously stated as a predictable result of a substitution and as a motivation, i.e., to create a flat tang, does not explain the proposed combination of Barden ‘186 and Shelton. We note in this regard the Examiner’s finding that Bowman, which has no ridge, has a flat tang (Ans. 18–19; Reply Br. 6–7). We conclude that there is an insufficient articulated reasoning with rational underpinning to support the legal conclusion of obviousness. Thus, we cannot sustain the rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable in view of Barden ‘186 and Shelton. We, therefore, do not sustain the rejection of dependent claims 2, 10, 19, and 20 under 35 U.S.C. Appeal 2012-008016 Application 12/139,075 6 § 103(a) as unpatentable in view of Barden ‘186 and Shelton, for the same reasons. Dependent claims 5–9, 11–18, and 21 The Examiner has rejected claims 5–9, 11–18, and 21, which all depend, directly or indirectly, from claim 1, under 35 U.S.C. § 103(a) as being unpatentable over Barden ‘186 and Shelton, and further in view of one or more of Tupper, Kelly, Barden ‘254, Beaton, and Bowman. The rejections fall for the same rationale as above. DECISION The decision of the Examiner to reject claims 1, 2, and 5–21 is reversed. REVERSED Klh