Ex Parte Lewis et al

Patent Trial and Appeal BoardMay 16, 2013

11236315 (P.T.A.B. May. 16, 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. 11/236,315 09/26/2005 Darrell Lewis 530055.427 3139 500 7590 05/17/2013 SEED INTELLECTUAL PROPERTY LAW GROUP PLLC 701 FIFTH AVE SUITE 5400 SEATTLE, WA 98104 EXAMINER SCRUGGS, ROBERT J ART UNIT PAPER NUMBER 3723 MAIL DATE DELIVERY MODE 05/17/2013 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 DARRELL LEWIS and CRAIG GREEN ____________________ Appeal 2011-003627 Application 11/236,315 Technology Center 3700 ____________________ Before: CHARLES N. GREENHUT, PATRICK R. SCANLON and BART A. GERSTENBLITH, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-003627 Application 11/236,315 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1, 3-17 and 21-28. App. Br. 4. We have jurisdiction under 35 U.S.C. § 6(b). The claims are directed to a knife blade manufacturing process. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method for manufacturing a knife blade, comprising: injecting a compound including a binder and a metallic powder into a mold having a shape of the knife blade, the shape including a tang end, a point end opposite the tang end, an edge extending from adjacent to the tang to the point end, and a back opposite the edge; removing a green blank from the mold; placing the green blank in a sintering oven; sintering the green blank in an edge-up configuration to produce a sintered blank; and subjecting the sintered blank to a hot-isostatic-pressure to produce a finished blank. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Hobdell Dickinson Torti Woolley Vela Schoonover Ecer King US 2,974,941 US 3,324,508 US 3,905,723 US 4,251,086 US 5,722,306 US 6,315,935 B1 US 6,389,699 B1 US 7,140,113 B2 Mar. 14, 1961 Jun. 13, 1967 Sep. 16, 1975 Feb. 17, 1981 Mar. 3, 1998 Nov. 13, 2001 May 21, 2002 Nov. 28, 2006 Julien US 2002/0083598 A1 Jul. 4, 2002 Appeal 2011-003627 Application 11/236,315 3 REJECTIONS 1) Claims 1, 4 and 13 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Schoonover, King and Hobdell. Ans. 4-5. 2) Claim 3 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Schoonover, King, Hobdell and Julien. Ans. 5-6. 3) Claims 5 and 6 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Schoonover, King, Hobdell and Dickinson. Ans. 6. 4) Claims 7 and 21-28 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Schoonover, King, Hobdell and Ecer. Ans. 6-8. 5) Claims 8, 11 and 12 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Schoonover, King, Hobdell, Vela and Woolley. Ans. 8-9. 6) Claims 8-10 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Schoonover, King, Hobdell, Vela and Torti. Ans. 9-10. 7) Claims 14 and 17 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Schoonover, Vela and Woolley. Ans. 10-11. 8) Claim 15 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Schoonover, Vela, Woolley and Hobdell. Ans. 11-12. 9) Claim 16 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Schoonover, Vela, Woolley and King. Ans. 12. Appeal 2011-003627 Application 11/236,315 4 OPINION “an edge-up configuration” The rejection of claims 1, 4 and 13 under 35 U.S.C. § 103(a) as being unpatentable over Schoonover, King and Hobdell is argued as a group and we select claim 1 as representative. App. Br. 22-25; 37 C.F.R. § 41.37(c)(1)(vii). The Examiner concluded the basic method claimed to be taught by the combination of Schoonover and King and there does not appear to be any dispute concerning the Examiner’s factual findings and legal conclusions in that regard. The Examiner proposes to further modify Schoonover’s method, which is not described as including any specific orientation of the knives during sintering, to orient the knives as taught by Hobdell for ensuring that the knives exhibit a desired shape when cooled. Appellants do not apprise us of any errors in the Examiner’s rationale supporting such a modification to Schoonover’s method. The sole point of contention concerning this rejection is whether when Schoonover’s knife blanks are oriented in the manner described by Hobdell (the orientation of the leftmost knife as viewed at Answer, page 13 and Appeal Brief, page 23 (hereinafter the “Hobdell orientation”)) that orientation would fall within the broadest reasonable interpretation of an “edge-up configuration” as recited in claim 1. Both the Examiner and Appellants appear to agree that, were the blade depicted in Appellants’ Figure 3 rotated 180o about an axis normal to the page, such that the edge is upwards of the back of the blade, it would be in an “edge-up configuration.” App. Br. 24-25. However, we, like the Examiner see no language in the claim requiring such a relative orientation of the back and edge of the blank. Just because a particular orientation may be properly interpreted as an “edge-up configuration” does not mean that Appeal 2011-003627 Application 11/236,315 5 other orientations cannot also be so interpreted. Appellants’ argument that the edge up configuration must be rotated 180o from Figure 3 because the Examiner characterizes the Figure 3 orientation as “edge down” is similarly flawed. We are not apprised of any reason to require a complete 180o rotation and we are not apprised of any reason Figure 3 is the sole configuration that may be properly interpreted as “edge-down.” In the Hobdell orientation, the edge of Schoonover’s blades would be “up” relative to the tang, and the portion of the edge near the knife point would be “up” relative to the remainder of the blade due to the curvature of the edge. See, e.g., Schoonover, Fig. 2. Each of these facts is a reason to conclude that “an edge-up configuration” includes the Hobdell orientation. We agree that there is no express requirement in the claim for the edge to be “up” relative to any other specific structure of the blank. The Specification also does not contain any disclosure which would serve to limit the meaning of the claim term “edge-up configuration” to one in which the edge of the blade must be disposed upwardly of some other specific structure such as the back of the blade. The entire disclosure in the Specification regarding this feature is that “[b]y providing a rack configured to hold blades upright in the sintering oven, with their edges upward, the shrinkage is more even, and warping is minimized.” Spec. 11:15-17. Appellants contrast this orientation to one in which the “component to be sintered is placed in the sintering oven on its broadest side.” Id. at 11:11-12. At best, all that can be gleaned from this disclosure is that the “edge-up configuration” is one in which the knife is not placed on its broad side. There is no illustration of what is considered to be an “edge-up configuration” nor does the Specification use the same language as the claim which might further aid in understanding the meaning of the claim term. In Appeal 2011-003627 Application 11/236,315 6 any case, reading a claim in light of the specification, to thereby interpret limitations explicitly recited in the claim, is a quite different thing from reading limitations of the specification into a claim, to thereby narrow the scope of the claim by implicitly adding disclosed limitations which have no express basis in the claim. In re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. In re Van Geuns, 988 F.2d 1181, 1184-85 (Fed. Cir. 1993). We see no language in the claim or remainder of the Specification requiring the recited “edge” to be “up” relative to any specific structure when the blank is in “an edge-up configuration.” Thus, the fact that Schoonover’s edge would be “up” relative to the tang end when in the Hobdell orientation is sufficient reason to conclude that the broadest reasonable interpretation of one skilled in the art of the term “edge-up configuration” would include the Hobdell orientation. Appellants have not apprised us of a sufficient reason to adopt the narrower claim construction that Appellants now advance. Appellants argue claim 3 based solely upon dependency (App. Br. 25) and claims 15 (App. Br. 43-44) and 27 (App. Br. 34) for similar reasons as claim 1. These arguments are unpersuasive for the reasons discussed above. “an insert” In rejecting claims 5 and 6 as being unpatentable over Schoonover, King, Hobdell and Dickinson, in addition to the findings and conclusions discussed above, the Examiner relies on Dickinson as teaching placing a label, an “insert” as recited in claim 5, into a mold prior to injecting a compound. Appellants argue claims 5 and 6 together essentially taking issue Appeal 2011-003627 Application 11/236,315 7 with the fact that Dickinson molds plastic bottles as opposed to metal knives. App. Br. 26-27. Appellants do not cite and we are not aware of any support for the position that the specific product produced by a process defines the scope of analogous art. Rather, the structure and function of the claimed subject matter must be explored. In re Bigio, 381 F.3d 1320, 1326 (Fed. Cir. 2004). Methods can have similar functions and use similar structure without working on the same articles. See, e.g., Manual of Patent Examining Procedure (MPEP) § 904.01(c) (8th ed., Rev. 9, Aug. 2012) (“a tea mixer and a concrete mixer may both be regarded as relating to the mixing art, this being the necessary function of each. Similarly a brick-cutting machine and a biscuit cutting machine may be considered as having the same necessary function.”). Both Appellants’ process and Dickenson’s process function to forcibly shape or mold a flowable or malleable material into a solid structure. Such similarity in function places these processes within the same field of endeavor. At the very least, we cannot agree with Appellants that distinctions in the specific material or temperature used, or in the form of the final product, would render Dickenson not reasonably pertinent to Appellants’ specific problem of placing a manufacturer’s desired graphic onto a molded product. Spec. 12:14-23. “If a reference disclosure has the same purpose as the claimed invention, the reference relates to the same problem, and that fact supports use of that reference in an obviousness rejection.” In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). We must also agree with the Examiner that differences in the material used or the temperature it can withstand relate only to the specific structure disclosed by Dickinson and not the molding technique taught. App. Br. 26- 27. “Combining the teachings of references does not involve an ability to combine their specific structures.” In re Nievelt, 482 F.2d 965, 968 (CCPA Appeal 2011-003627 Application 11/236,315 8 1973). If one skilled in the art wished to employ Dickinson’s label insertion technique to manufacture a metallic product, one skilled in the art would select a suitable material for withstanding the temperatures associated with that process. “particles . . . bound in a metal matrix” In rejecting claims 7 and 21-26 under 35 U.S.C. § 103(a) as being unpatentable over Schoonover King, Hobdell and Ecer, in addition to the findings and conclusions discussed above, the Examiner cites Ecer as teaching the use of particles bound in a metal matrix during the sintering step as recited in claims 7 and 21. We, like Appellants, recognize that in stating the rejection the Examiner did not adhere to the exact claim language, as is preferable, regarding the term “bound in.” App. Br. 28, 31. However, in light of the entirety of the rejection, we do not believe that the Examiner misconstrued the scope of claims 7 and 21 to overlook the fact that discrete particles bound in the matrix are required by the claims. Contra App. Br. 27-29, 31-33. Ecer discloses a discrete central layer 65 of the blade 10 having particles bound therein used for some of the same purposes as Appellants, for example, increasing hardness and wear resistance. Col. 8, ll. 31-56, col. 9, ll. 50-55, Figs. 8a-d; Spec.14:2-9. Many of the materials suggested by Ecer for the particles would remain discrete after undergoing an alloying or sintering process of a surrounding metal. Indeed, Ecer provides that hard material insert or hard material deposit may be a metal, metal alloy, ceramic, or a cermet of hard particles of carbides, oxides, nitrides, borides, diamond, diamond-like carbon powders bonded and held together by a metal or an alloy, or a composite of these materials. Appeal 2011-003627 Application 11/236,315 9 Ecer, col. 9, ll. 18-23. Appellants’ argument concerning Ecer’s user of a discrete layer (App. Br. 29-30, 32-33) again improperly focuses on the specific structure of Ecer alone when the rejection is predicated upon the combined teachings of the references. Schoonover suggests use of various alloys (col. 2, ll. 15-19) and a variety of additives (col. 3, ll. 20-26). Ecer is cited for demonstrating a known technique of placing particular beneficial particles in a metal matrix in a knife blade. We must agree with the Examiner that one skilled in the art would recognize that Ecer’s technique has applicability beyond use in the specific discrete layer 65 used by Ecer. We must also agree that application of Ecer’s technique could be seen as predictably improving Schoonover’s process to produce a harder, more wear-resistant, knife regardless of whether the distribution of such particles is controlled so as to segregate them to a central area of the blade. Contra App. Br. 29. Appellants take issue with the Examiner’s grouping of claim 28 with the claims related to particles as opposed to those related to the preform. App. Br. 35. As the Examiner correctly points out, there is no language in the claim or remainder of the Specification requiring Appellants’ proposed interpretation. That the claim is broad enough to cover Appellants’ disclosed embodiments directed to the preform does not mean that the claim is not also broad enough to cover those embodiments relating to the particles. The Examiner does not appear to have misinterpreted the claim to include a “component” which is also part of the mixture. Contra App. Br. 35. The fact that the Examiner has stated that it would have been obvious to bind the particles in the mixture in rejecting other claims does not mean that the prior art mixture must be interpreted as containing the particles, interpreted as the “component” of the knife blade, for purposes of claim 28. The Examiner Appeal 2011-003627 Application 11/236,315 10 reasonably interpreted the broad term “knife blade component” as including the particles disclosed by Ecer and the mixture to be the alloy that surrounds it. Appellants do not apprise us of any errors in the Examiner’s position in this regard. “placing a preformed knife blade component into a mold” Independent claim 14 requires “placing a preformed knife blade component into a mold.” The Examiner relies upon Vela as teaching the technique of placing a blank 20, interpreted as the recited “preform,” into a container 51 along with an additional layer 27 or powder 67 that is also placed in the container for joining to the blank. Ans. 9-11. The first issue raised by Appellants is whether the Examiner properly characterized Vela’s container as a mold. App. Br. 36-38. We think the answer to this question is of no consequence. We recognize that, as Appellants point out, Vela’s container 51 is intended to be deformed and machined away after a hot-isostatic-pressure (HIP) process. As we have discussed above, however, we cannot regard the teachings of the prior art as limited and applicable only to the specific structures used therein. Both HIP and molding processes confine a raw and malleable form of a product to produce a more finished version, and both are capable of joining two materials. While Vela combines the two components 20, 27/67 in a container used in an HIP process, one skilled in the art would have a reasonable expectation that this same technique could be employed to predictably construct a two-material knife blank via an injection molding process as in Schoonover. Vela is clear as to the benefits of such a product: Appeal 2011-003627 Application 11/236,315 11 the Fe/TiC material is strongly bonded to the metal substrate. It is small relative to the structure to which it is bonded. Breakage due to brittleness is nearly entirely eliminated, because there is no long unsupported length of Fe/TiC such as exists in knives which are made entirely from that material. Col. 3, ll. 31-36. We think the rejection of claim 14 is sustainable based on Schoonover and Vela alone. See, e.g., In re Boyer, 363 F.2d 455, 458 n.2 (CCPA 1966). It is unclear why the Examiner relies on Woolley for purposes of claim 14 as the Examiner’s discussion of Woolley in the rejection of claims 14 and 17 appears to only be directed to limitations contained in claim 17. Ans. 10-11. In response to Appellants’ arguments, the Examiner states: Vela was merely a linking reference that taught of forming a blade from two metal components since the other teaching reference Wooley [sic] taught of attaching a pre-formed blade component to a non-metal blade component. Ans. 21. While the meaning of this statement is not entirely clear to us, it seems to indicate that, in our discussion of Vela above, we have apparently relied on facts and reasoning not advanced by the Examiner. Thus, we designate our affirmance of the Examiner’s 35 U.S.C. § 103(a) rejections of claims 14-17 as “new grounds” pursuant to our authority under 37 C.F.R. § 41.50(b) so as to afford Appellants a fair opportunity to respond. See In re Leithem, 661 F.3d 1316, 1319 (Fed. Cir. 2011). Thus, we consider claim 14 to be unpatentable over Schoonover and Vela, claim 17 to be unpatentable over Schoonover, Vela and Woolley, claim 15 which is argued only for reasons already addressed, to be unpatentable over Schoonover, Vela and Hobdell and claim 16, which is argued solely based upon dependency, to be unpatentable over Schoonover, Vela and King. We adopt the Examiner’s Appeal 2011-003627 Application 11/236,315 12 findings and conclusions (Ans. 11-12) with respect to claims 15 and 16 regarding Hobdell and King as our own. Since we need not rely on Woolley regarding the patentability of claim 14, we do not regard the issue of whether Woolley is properly within the scope of prior art one would consider regarding the subject matter of claim 14 to be dispositive as to the rejection of that claim. In any case, we do not find such arguments persuasive regarding either claim 14 or claim 17. As discussed above we cannot agree with Appellants that the product to be molded defines the scope of the relevant art. While the molded product will be somewhat influential on the structure and function of the devices and methods for molding it is that structure and function that is relevant to the field of endeavor. In re Bigio, supra. One skilled in the art would recognize that devices and methods may share similar structure and function despite the fact that they are for molding different products. Further, one skilled in the art would recognize that devices and methods for molding one product may be reasonably pertinent to the problems associated with molding others. See In re Clay, supra. Here, both devices function similarly in that a flowable material surrounds a preformed one within a mold in order to attach the materials together. Further, Woolley’s blade-attachment technique and structure are reasonably pertinent to the problem of fabricating a knife from multiple component parts. See Spec. 14:26-15:1. Dependent claim 8 is more specific in that it requires “placing a preformed knife edge into the mold prior to injecting the compound.” While the Examiner’s rejections of claim 8 are not entirely clear, apparently the Examiner interprets Vela as just teaching the “back” portion of the blade as opposed to the edge as the preform. The Examiner appears to rely entirely Appeal 2011-003627 Application 11/236,315 13 on Woolley or Torti, in the alternative, for the specific teaching of the knife “edge” being the placed preform. Ans. 9, 10, 11. The Examiner reasons: The term “knife blade” as claimed by the appellant does not add limitations that would prevent one from interpreting the blade of Torti (or even Wool[l]ey) as being a “knife blade” . . . . The blade taught by Torti has an edge and this edge is interpreted as being knife-edge. Ans. 25. We cannot agree with the Examiner that one skilled in the art would understand the claim term “knife edge,” in the context of the claim and remainder of the Specification, to include the edges of Woolley’s skate blade or Torti’s turbine blade. App. Br. 38, 41. While those structures might be characterized as “blades” of some type, they are not blades of a knife, such as a sporting or kitchen knife. See, e.g., Spec. 2:5-9. We think the Examiner’s interpretation of Woolley’s skate blade and Torti’s turbine blades as having knife edges is clearly divorced from the Specification. See, e.g., In re NTP, 654 F.3d 1279, 1288 (Fed. Cir. 2011). As such, the Examiner has not adequately explained why the subject matter of claim 8 would have been obvious in view of the cited prior art. Accordingly, we cannot sustain the Examiner’s rejections of claims 8-12. DECISION The Examiner’s rejection of claims 1, 4 and 13 under 35 U.S.C. § 103(a) as being unpatentable over Schoonover, King and Hobdell is sustained. The Examiner’s rejection of claim 3 under 35 U.S.C. § 103(a) as being unpatentable over Schoonover, King, Hobdell and Julien is sustained. Appeal 2011-003627 Application 11/236,315 14 The Examiner’s rejection of claims 5 and 6 under 35 U.S.C. § 103(a) as being unpatentable over Schoonover, King, Hobdell and Dickinson is sustained. The Examiner’s rejection of claims 7 and 21-28 under 35 U.S.C. § 103(a) as being unpatentable over Schoonover King, Hobdell and Ecer is sustained. The Examiner’s rejection of claims 8, 11 and 12 under 35 U.S.C. § 103(a) as being unpatentable over Schoonover, King, Hobdell, Vela and Woolley is reversed. The Examiner’s rejection of claims 8-10 under 35 U.S.C. § 103(a) as being unpatentable over Schoonover, King, Hobdell, Vela and Torti is reversed. The Examiner’s rejection of claim 14 under 35 U.S.C. § 103(a) as being unpatentable over Schoonover, Vela and Woolley is sustained but modified so as not to include Woolley and designated as a new ground of rejection. The Examiner’s rejection of claim 15 under 35 U.S.C. § 103(a) as being unpatentable over Schoonover, Vela, Woolley and Hobdell is sustained but modified so as not to include Woolley and designated as a new ground of rejection. The Examiner’s rejection of claim 16 under 35 U.S.C. § 103(a) as being unpatentable over Schoonover, Vela, Woolley and King is sustained but modified so as not to include Woolley and designated as a new ground of rejection. The Examiner’s rejection of claim 17 under 35 U.S.C. § 103(a) as being unpatentable over Schoonover, Vela and Woolley is sustained and designated as a new ground of rejection. Appeal 2011-003627 Application 11/236,315 15 FINALITY OF DECISION Regarding the affirmed rejection(s), 37 C.F.R. § 41.52(a)(1) provides “Appellant[s] may file a single request for rehearing within two months from the date of the original decision of the Board.” In addition to affirming the Examiner’s rejections of one or more claims, this decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.50(b) (2008). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the Examiner, in which event the proceeding will be remanded to the Examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . Should Appellants elect to prosecute further before the Examiner pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection, the effective date of the affirmance is deferred until conclusion of the prosecution before the Examiner unless, as a mere incident to the limited prosecution, the affirmed rejection is overcome. If Appellants elect prosecution before the Examiner and this does not result in allowance of the application, abandonment or a second appeal, this Appeal 2011-003627 Application 11/236,315 16 case should be returned to the Patent Trial and Appeal Board for final action on the affirmed rejection, including any timely request for rehearing thereof. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b) hh