Melissa L. Covel et al.

Patent Trials and Appeals Board

Sep 13, 2019

14881531 - (D) (P.T.A.B. Sep. 13, 2019)

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.
14/881,531 10/13/2015 Melissa L. Covel 051238/470326 7887
826 7590 09/13/2019
ALSTON & BIRD LLP
BANK OF AMERICA PLAZA
101 SOUTH TRYON STREET, SUITE 4000
CHARLOTTE, NC 28280-4000
EXAMINER
CHOI, STEPHEN
ART UNIT PAPER NUMBER
3724
NOTIFICATION DATE DELIVERY MODE
09/13/2019 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):
usptomail@alston.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MELISSA L. COVEL and TONY STEVEN PETERSON
____________________

Appeal 2018-008462
Application 14/881,531
Technology Center 3700
____________________

Before JENNIFER D. BAHR, JOHN C. KERINS, and KEVIN F. TURNER,
Administrative Patent Judges.

KERINS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) from the
Examiner’s Final Office Action dated December 8, 2017 (“Final Act.”),
rejecting claims 1–10, 19, and 20. Claims 11–18 are withdrawn from
consideration. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Leatherman Tool
Group Inc. Appeal Br. 2.
Appeal 2018-008462
Application 14/881,531

2

THE INVENTION
Appellant’s invention relates to a cutting tool. Claims 1 and 5,
reproduced below, are illustrative of the claimed subject matter.
1. A cutting tool comprising:

a first member comprising a first blade, a third blade, and a first
handle; and

a second member pivotably coupled to the first member,
comprising a second blade, a fourth blade, and a second handle;

wherein a first cutting nip is defined between the first blade and
the second blade, a second cutting nip is defined between the
third blade and the fourth blade, and a gap is defined between
the first handle and the second handle;

wherein at least one of the first blade and the second blade
comprises serrations, wherein each of the serrations comprises a
first face facing away from the first handle, and a second face
facing toward the first handle, wherein an angle between a
surface from which the serrations extend and the first face of
each serration is greater than an angle between the surface and
the second face of each serration;

wherein each of the gap, the first cutting nip, and the second
cutting nip are configured to be simultaneously opened and
closed as the first member pivots relative to the second
member,
and

wherein the gap, the first cutting nip, and the second cutting nip
are each disposed at mutually exclusive positions about a pivot
point between the first member and the second member.

5. A cutting tool comprising:

Appeal 2018-008462
Application 14/881,531

3

a first pair of blades defining a first cutting nip, wherein the
first pair of blades are pivotable with respect to one another at a
pivot point, wherein the first pair of blades comprises at least
one serrated blade, and wherein a height of the serrations
increases from a first height proximate a tip of the at least one
serrated blade to a second height, greater than the first height,
proximate the pivot point;

a second pair of blades defining a second cutting nip, wherein
the second pair of blades are pivotable with respect to one
another at the pivot point; and

a pair of handles defining a gap therebetween that are pivotable
with respect to one another at the pivot point;

wherein neither the first cutting nip nor the second cutting nip
are disposed within the gap.

THE REJECTIONS
The Examiner rejects:
(i) claims 7–9 under 35 U.S.C. § 112, second paragraph, as being
indefinite;
(ii) claims 1–8, 19, and 20 under 35 U.S.C. § 102(b) as being
anticipated by Porzky (US 3,196,540, issued July 27, 1965); and
(iii) claims 1–10, 19, and 20 under 35 U.S.C. § 103(a) as being
unpatentable over Henault (US 617,018, issued Jan. 3, 1899) in view of
Porzky.

DISCUSSION
Claims 7–9--35 U.S.C. § 112, second paragraph--Indefiniteness
Appeal 2018-008462
Application 14/881,531

4

The Examiner determines that it is not clear whether, in claim 7, the
recitation of “at least one serrated blade” refers back to the “at least one
serrated blade” recited in claim 5, from which claim 7 depends. Final Act.
2. Appellant responds by requesting cancelation of claim 7 “ahead of
allowance,” and presents no substantive arguments traversing the rejection.
Appeal Br. 7. Because there is no indication that claim 7 has been canceled,
the rejection thereof is summarily sustained.
The Examiner additionally determines that claim 8 does not make
clear whether the “second pair of blades” recited therein refers back to “a
second pair of blades” recited in claim 5, from which claim 8 depends. Final
Act. 2. Appellant responds with a request to amend claim 8 to depend from
claim 5, in anticipation of having claim 7 canceled. Appeal Br. 7. No such
amendment is of record, and no substantive argument against the rejection is
presented. Id. Accordingly, the rejection of claim 8 is summarily sustained.
Claim 9 depends from claim 8, and the rejection of claim 9 is also
summarily sustained.

Claims 1–8, 19 and 20--35 U.S.C. § 102(b)--Porzky
Claims 1–4 and 19
The Examiner finds that Porzky discloses all limitations set forth in
independent claim 1. Final Act. 2–4. In relevant part, the Examiner finds
that a first cutting nip is defined between a first blade 12b and a second
blade 14b; that a second cutting nip is defined between a third blade 32 and
fourth blade 34; and that a gap is defined between a first handle 12a and a
second handle 14a. Id. at 3. The Examiner additionally finds that the gap,
the first cutting nip, and the second cutting nip are “each disposed at
Appeal 2018-008462
Application 14/881,531

5

mutually exclusive positions about a pivot point between a first member and
a second member,” because each of those three elements are located at
mutually exclusive locations. Id.
Appellant contends that Porzky fails to disclose that specifically the
first cutting nip and the second cutting nip are disposed at mutually
exclusive positions about a pivot point between first and second members.
Appeal Br. 8. Appellant specifically maintains that that, in Porzky, the first
and second cutting nips are disposed at the same position about the pivot
point, in that, by virtue of both nips using the same linear blade 14, the nips
are in the same position about the pivot point. Id.
Underlying the different stances taken by Appellant and the Examiner
is a claim construction issue. According to Appellant, the claim language
reciting “positions about the pivot point,” refers to directions extending from
the pivot point, with those directions being mutually exclusive (i.e.,
different) for each of the two cutting nips and the gap, per claim 1.
Appellant further argues, in this regard, that “[t]he phrase ‘about a point’ is a
commonly used phrase in the field of mechanics and mathematics, such as
symmetry about a point or rotation about a point.” Reply Br. 2. We
understand Appellant’s argument to be that the claimed pivot point is akin to
a point of origin, and that the first cutting nip, the second cutting nip, and the
gap must, according to claim 1, be positioned along different vectors
emanating from that point of origin.
The Examiner responds that the Specification does not support the
position that “positions about a pivot point” can only mean particular
angular positions about the pivot point. Ans. 3. The Examiner avers that the
term “position” would be understood to mean a point or an area occupied by
Appeal 2018-008462
Application 14/881,531

6

an object, and that the mutual exclusivity required by claim 1 would be any
locations that do not overlap each other about the pivot point. Id.
Appellant’s Specification does not appear to include the expression
“positions about a pivot point,” with the exception of its appearance in claim
1 as originally filed. The expression “positions around a pivot point”
appears once, without any definition or explanation provided as to how this
is to be interpreted. Spec. ¶ 9 (emphasis added). The Specification uses the
term “about” in a somewhat related manner, in connection with the folding
of the handles of the cutting tool, discussing, for example, a handle rotating
about a hinge point. See, e.g., Spec. ¶ 50. This latter type of use appears to
be generally consistent with the claim construction advanced by Appellant.
Ultimately, we find that Appellant’s proposed construction is the most
appropriate, and that the Examiner’s is outside the realm of being a broadest
reasonable interpretation, in light of the article recited in claim 1, and the
Specification and attendant drawings. The Examiner’s construction, i.e.,
that mutually exclusive positions are simply ones that do not overlap each
other, is effectively without regard to the existence of, or recitation of, a
pivot point. Stated another way, the three mutually exclusive positions
identified in Porzky are different positions “in space,” whether or not a pivot
point were to exist on the tool. This construction thus can be seen as reading
the further limitation, “about a pivot point,” out of claim 1.
Given our determination as to the proper construction of the disputed
term in claim 1, the Examiner’s finding that the first and second cutting nips
in the Porzky device are at mutually exclusive positions about a pivot point
is in error. The rejection of claim 1, and of claims 2–4 and 19 depending
therefrom, as being anticipated by Porzky is therefore not sustained.
Appeal 2018-008462
Application 14/881,531

7

Claims 5–8 and 20
The Examiner also finds that Porzky discloses all limitations set forth
in independent claim 5. Final Act. 2–4. As with claim 1, the issue joined by
Appellant and the Examiner is one of claim construction.
Claim 5 recites a cutting tool having a first pair of blades, with at least
one of the pair being a serrated blade, “wherein a height of the serrations
increases from a first height proximate a tip of the at least one serrated blade
to a second height, greater than the first height, proximate the pivot point.”
Appeal Br. 15 (Claims Appendix). The Examiner finds that Porzky meets
this limitation, taking the position that “the height of the serrations can be
measured from an edge surface of the blade 14 to tips of the serrations.”
Final Act. 5. To visually demonstrate how the Examiner measures the
height of the serrations, the Examiner provides an annotated version of
Figure 1 of Porzky, showing a serrated blade portion of the Porzky cutting
tool. Id. at 4. That annotated version is reproduced below:

Depicted above is an Examiner-annotated version of a serrated blade
portion of the cutting tool in Figure 1 of Porzky, which is a plan view,
rotated approximately 45º counterclockwise relative to its appearance in the
Appeal 2018-008462
Application 14/881,531

8

Porzky patent. In the drawing above, the Examiner has indicated where and
from what position a first height and a second height of the serrations are
measured, with the second height, proximate the pivot point, being greater
than the first height, thus meeting the language of claim 5.
Appellant assigns error to using a claim construction allowing the
measurement to be made in this manner, asserting that the Specification
clearly identifies and defines that the height of the serrations is to be
measured from the surface from which they protrude, to the tip of the
serration.2 Appeal Br. 9. Appellant maintains that it is therefore
unreasonable to interpret the claimed height as being measured from the
opposite side of the blade, as the Examiner does in rejecting claim 5 as
anticipated by Porzky. Id.
The Examiner agrees with Appellant that paragraph 40 of the
Specification and attendant Figure 5 provide a definition as to how the
height of the serrations is to be determined, but takes the position that this
applies only to Appellant’s preferred embodiment. Ans. 4. The Examiner
continues, positing that, under an ordinary and customary meaning, “height”
can be a distance upward from a given level to a fixed point, as in, for
example, with an object on a table, the object’s height can be measured from
the surface that the table rests on, to the top of the object. Id. at 4–5. The
Examiner notes that claim 5 does not specify how the height is to be

2 Appellant’s Figure 5, which illustrates a plurality of the serrations in detail,
shows the height of the serrations being constant across the span shown, and
thus does not show an increase in the height of the serrations as claimed.
Paragraph 41 of the Specification, which provides the definition as to the
height of the serrations, explicitly states that the height may increase as the
serrations are closer to the hinge point.
Appeal 2018-008462
Application 14/881,531

9

measured, and that it is therefore reasonable to measure, as with the object
on the table, the height of the Porzky serrations from the back edge of the
blade to the tips of the serrations. Id. at 5.
The Examiner’s position might be reasonable under certain
circumstances, but not here, where the Specification explicitly provides a
different and contrary definition. Although, technically, the Specification
describes one or more preferred embodiments, the definition provided by the
Specification does not include any such qualifier. Accordingly, and
consistent with the definition provided in the Specification, the claimed
height of each of the serrations is to be interpreted as “the distance between
the surface from which [the serration] extend[s] and the top of [the]
serration.” Spec. ¶ 41.
As such the Examiner’s finding that the serrated blade in the cutting
tool of Porzky has serrations which increase in height from the tip of the
blade toward a point proximate the pivot point is in error. The rejection of
claim 5, and of claims 6–8 and 20 depending therefrom, as being anticipated
by Porzky is therefore not sustained.

Claims 1–10, 19, and 20--35 U.S.C. § 103(a)--Henault/Porzky
Claims 1–4
Appellant argues claims 1–4 as a group, and does not present
arguments for the separate patentability of claims 2–4. We take claim 1 as
representative of the group, and claims 2–4 stand or fall with claim 1.
The Examiner finds that Henault discloses all limitations set forth in
claim 1, with the exception of the first pair of blades comprising at least one
serrated blade. Final Act. 7–8. The Examiner turns to Porzky for the
Appeal 2018-008462
Application 14/881,531

10

disclosure of a pair of blades, one of which includes serrations, and
concludes that it would have been obvious to modify Henault to provide
serrations on one of the pair of blades, in view of Porzky, in order to provide
a better holding surface to minimize slipping during shearing action. Id. at
8.
Appellant does not contest the Examiner’s position regarding the
obviousness of the proposed modification of Henault in view of Porzky, and
instead argues that Porzky fails to correct a deficiency in the teachings of
Henault. Appeal Br. 12. In this regard, Appellant asserts that “a cutting nip
between blades 5 and 7 of Henault will always be disposed in a position that
is aligned with the gap between handles (4).” Appeal Br. 12. As such,
according to Appellant, this second cutting nip and a gap between the
handles are not disposed in mutually exclusive positions about the pivot
point of the two scissors members. Id. at 11. Appellant provides (Appeal
Br. 12) an annotated version of Figure 3 of Henault that is asserted to
evidence the alignment of the second cutting nip and the gap between the
handles, which is reproduced below:

Figure 3 of Henault, above, is a side elevation of a combination cutting tool.
Henault, col. 1, ll. 32–33.
Appeal 2018-008462
Application 14/881,531

11

Appellant annotates Figure 3 by adding a dashed line which we
understand to be the asserted common direction about the pivot point along
which second cutting nip and the gap between the handles lie. By the
placement of this dashed line, it is apparent that Appellant takes the position
that the gap between the handles in Henault is to be regarded as a spacing
between what appear to be stop members at the distal ends of the handles.
However, Appellant’s Specification describes only that “[a] gap may be
defined between the first handle and the second handle,” and the only more
specific discussion as to what the gap constitutes is in reference to an
opening of the handles “creat[ing] a gap 160 therebetween.” Spec. ¶¶ 9, 36.
Reference numeral 160 appears in Appellant’s Figure 3, and points not to the
distal ends of the handles, but rather toward the interior intersection of the
handles near the pivot point.3
As such, contrary to Appellant’s assertion that the second cutting nip
and the gap will always be aligned, the dashed line annotation evidences that
the gap between the handles (at or near the intersection proximate the pivot
point) starts in a position that is offset downwardly from the purported
direction of the second cutting nip. Further, as the handles are separated, the
gap will continue to be unaligned with the dashed line until, at best, the
lower edge of the handle facing out of the page in Figure 3 intersects an

3 This is consistent with the identification of the first and second cutting nips
155, 190. Spec., Figure 3. In addition, if the gap could be elsewhere
between the handles, i.e., at any point or area between the handles, the claim
would be at risk of being found indefinite, in that a determination as to
whether the first and second cutting nips would be at “mutually exclusive
positions about a pivot point” from the gap would depend on what area is
designated as the gap.

Appeal 2018-008462
Application 14/881,531

12

upper surface of the opposing handle, approximately in the region where the
dashed line reaches that surface.
Accordingly, we are not apprised of error in the Examiner’s finding
that, in Henault, each of the first cutting nip, the second cutting nip, and the
gap are disposed at mutually exclusive positions about a pivot point between
the first member and second member. The rejection of claim 1 as being
unpatentable over Henault and Porzky is sustained. Claims 2–4 fall with
claim 1.
Claims 5–10, 19 and 20
Independent claim 5 and claim 19, which depends from claim 1, each
recites that the height of the serrations increases from proximate the tip to
proximate the pivot point, which limitation is discussed above with respect
to the anticipation rejection of claim 5. The Examiner relies on the same
flawed interpretation of the height of the serrations disclosed in Porzky in
the rejection of these claims as being unpatentable over Henault and Porzky.
Final Act. 10. Accordingly, this rejection of claims 5 and 19 is not
sustained. Claims 6–10 and 20 depend from claim 5, and the rejection is
similarly not sustained as to those claims.

DECISION
The rejection of claims 7–9 under 35 U.S.C. § 112, second paragraph,
as being indefinite, is affirmed.
The rejection of claims 1–8, 19, and 20 under 35 U.S.C. § 102(b) as
being anticipated by Porzky is reversed.
The rejection of claims 1–4 under 35 U.S.C. § 103(a) over Henault
and Porzky is affirmed.
Appeal 2018-008462
Application 14/881,531

13

The rejection of claims 5–10, 19, and 20 under 35 U.S.C. § 103(a)
over Henault and Porzky is reversed.

CONCLUSION
In summary:
Claims
Rejected
Basis Affirmed Reversed
7–9 § 112, ¶2
indefiniteness
7–9
1–8, 19, 20 § 102(b) Porzky 1–8, 19, 20
1–10, 19, 20 § 103(a)
Henault, Porzky
1–4 5–10, 19, 20
Overall Outcome 1–4, 7–9 5, 6, 10, 19,
20

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART