Ex Parte Steele et al

Patent Trial and Appeal Board

Apr 7, 2016

13099833 (P.T.A.B. Apr. 7, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/099,833 05/03/2011
60840 7590 04/11/2016
MICHAEL, BEST & FRIEDRICH LLP (MT)
100 EAST WISCONSIN A VENUE
SUITE 3300
MILWAUKEE, WI 53202
FIRST NAMED INVENTOR
Michael S. Steele
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
066042-8235-01 1654
EXAMINER
ALEXANDER, MELANIE P
ART UNIT PAPER NUMBER
3727
NOTIFICATION DATE DELIVERY MODE
04/11/2016 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):
MKEIPDOCKET@MICHAELBEST.COM
milwaukeeip@milwaukeetool.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL S. STEELE, WADE BURCH,
TIMOTHY ALBRECHT, MICHAEL W. PHILLIPS, and
BRANDON MILLER
Appeal 2014-001825 1,2
Application 13/099,833
Technology Center 3700
Before NINA L. MEDLOCK, PHILIP J. HOFFMANN, and
AMEE A. SHAH, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the rejection of
claims 21and22. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellants' Specification ("Spec.," filed May 3,
2011), Appeal Brief ("Appeal Br.," filed Apr. 15, 2013), and Reply Brief
("Reply Br.," filed Nov. 13, 2013), as well as the Examiner's Answer
("Answer," mailed Sept. 13, 2013).
2 "The real party in interest is MILWAUKEE ELECTRIC TOOL
CORPORATION." Appeal Br. 2.
Appeal2014-001825
Application 13/099,833
According to Appellants, "the ... invention provides a pliers that
includes an improved handle structure that is especially resistant to
damage[,] and an arrangement of features that has been found to be
particularly useful in a lineman's pliers." Spec. i-f 25. Claim 21, which we
reproduce below, is representative of the appealed claims.
21. A pliers comprising:
a first member including a head portion and a handle portion;
a second member pivotally coupled to the first member, the
second member including a head portion and a handle portion,
the head portions of the first and the second members defining a
head of the pliers and the handle portions of the first and the
second members defining a handle of the pliers;
a first end defining a nose of the head portion;
a second end, opposite the first end, defined by the handle of the
pliers;
a first plurality of ridges disposed on the first member adjacent
the nose, the first plurality of ridges generally face a first
direction;
a second plurality of ridges disposed on the second member
adjacent the nose, the second plurality of ridges generally face a
second direction directly opposed to the first direction, and the
first and the second plurality of ridges together defining a first
grip of the pliers;
a first sharp edge disposed on the first member adjacent the first
plurality of ridges and between the first plurality of ridges and
the second end of the pliers;
a second sharp edge disposed on the second member adjacent the
second plurality of ridges and between the second plurality of
ridges and the second end of the pliers, together the first and the
second sharp edges defining a cutter of the pliers;
a pin that pivotally couples the first member and the second
member adjacent the cutter and between the cutter and the second
end of the pliers;
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Application 13/099,833
an aperture that extends through the first member adjacent the
pin and between the pin and the second end of the pliers, the
aperture and the second member defining a fastener cutter of the
pliers;
a third plurality of ridges disposed on the first member between
the fastener cutter and the second end;
a fourth plurality of ridges disposed on the second member
between the fastener cutter and the second end, the third and
fourth plurality of ridges together defining a second grip of the
pliers;
a first plurality of reaming ridges disposed on the head portion of
the first member and generally facing the second direction;
a second plurality of reaming ridges disposed on the head portion
of the second member and generally facing the first direction, the
first and second plurality of reaming ridges are configured to
define a pipe reamer of the pliers; and
a resilient grip member that abuts the head portion of the first
member such that the resilient grip member includes an outer
surface that is flush with the head portion of the first member to
define a smooth transition between the resilient grip member and
the head portion of the first member,
wherein the handle portion of the first member includes a recess
that extends laterally through the handle portion of the first
member, and
wherein the resilient grip member extends through the recess to
fixably couple the first resilient grip member to the first member.
Appeal Br. 13, Claims App.
REJECTIONS AND PRIOR ART
The Examiner rejects the claims as follows:
claim 21under35 U.S.C. § 103(a) as unpatentable over Boyajian
(US 3,831,207, iss. Aug. 27, 1974), Crawford (US 2005/0188468 Al, pub.
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Application 13/099,833
Sept. 1, 2005), Lien-Sheng (US 6, 116, 122, iss. Sept. 12, 2000), and Watson
(US 6,782,778 B2, iss. Aug. 31, 2004); and
claim 22 under 35 U.S.C. § 103(a) as unpatentable over Boyajian and
Crawford.
See Answer 3-10.
ANALYSIS
With respect to independent claim 21, Appellants argue the rejection
is in error because it would not have been obvious to combine Boyajian,
Crawford, Lien-Sheng, and Watson as the Examiner proposes. See Appeal
Br. 7-10. More specifically, Appellants argue that
claim 21 recites a specific arrangement of accessory features on
a pliers. Claim 21 requires the pliers to include a first grip, a
cutter, a fastener cutter, a second grip, and a pipe reamer, and
claim 21 defines the location of these accessory features with
respect to each other. Claim 21 further defines a specific handle
configuration that includes a grip flush with the head of the pliers
and the grip extends through a recess in the handle.
Paragraph 0021 of Applicants' disclosure recites that
... the pliers 10 includes several accessory features, such
as a wire strippers, a wire cutter, a pipe reamer, a threaded
fastener cutter, and a first grip and a second grip. This particular
arrangement of accessory features on the pliers 10 has been
found particularly convenient and advantageous for use as a
lineman's pliers.
It is the specific arrangement of accessory features recited
in claim 21 that Applicants regard as the invention.
Id. at 7. Appellants further argue that even
[a]ssuming that the references ... disclose all of the
features of claim 21, . . . it is the Applicants' disclosure that
provides the rational[ e] to pick [specific features out] of the many
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Application 13/099,833
features from the prior art to combine with Boyajian to arrive at
the claimed invention.
Id. at 8; see also Reply Br. 3--4.
The Supreme Court discussed circumstances in which a patent might
be determined to be obvious without an explicit teaching, suggestion, or
motivation provided by the prior art. In particular, the Supreme Court
reaffirmed that, "[t]he combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Further,
the Court stated that when considering obviousness, "the analysis need not
seek out precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ." KSR at 418.
In this case, we agree with the Examiner that claim 21 would have been
obvious to a person of ordinary skill in the art at the time of Appellants'
invention based on the proposed combination of Boyajian, Crawford, Lien-
Sheng, and Watson. The Examiner establishes by a preponderance of the
evidence that the so-called "accessory features" (see Spec. i-f 21) recited in
claim 21 were known (see Answer 3-7). Further, the arrangement of these
features, as recited in claim 21, appears to provide predictable results, and
Appellants do not establish persuasively that the claimed arrangement
provides any unexpected or unpredictable results, i.e., yields more than one
would expect from such an arrangement. KSR at 417. Still further, it
appears well known to arrange various accessory features in different ways
on different, but similar, tools. See Answer 11 ("Also, [the] Examiner points
out that at least three of the references used are inventions of pliers teaching
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Application 13/099,833
several different accessory features that can be used in various
combinations.").
Thus, based on the foregoing, we are unpersuaded of Examiner error
in the rejection of claim 21. We, therefore, sustain the obviousness rejection
of claim 21.
Appellants' arguments regarding claim 22 are substantially the same
as set forth above with respect to claim 21. See Appeal Br. 10-11. We,
therefore, sustain the obviousness rejection of claim 22 for similar reasons.
DECISION
We AFFIRM the Examiner's rejections of claims 21 and 22 under
35 U.S.C. § 103(a).
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).
AFFIRMED
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