Andre Ullrich et al.Download PDFPatent Trials and Appeals BoardJul 30, 201914254989 - (D) (P.T.A.B. Jul. 30, 2019) Copy Citation 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. 14/254,989 04/17/2014 Andre Ullrich 2178-1089 1445 10800 7590 07/30/2019 Maginot, Moore & Beck LLP One Indiana Square, Suite 2200 Indianapolis, IN 46204 EXAMINER LOPEZ, MICHELLE ART UNIT PAPER NUMBER 3731 MAIL DATE DELIVERY MODE 07/30/2019 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 ANDRE ULLRICH and HOLGER FROEHLING ____________ Appeal 2018-003853 Application 14/254,989 Technology Center 3700 ____________ Before JENNIFER D. BAHR, JOHN C. KERINS, and PAUL J. KORNICZKY, Administrative Patent Judges. KERINS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Andre Ullrich and Holger Froehling (Appellants)1 seek our review under 35 U.S.C. § 134 of the final rejection of claims 1–4, 6, 7, 9, and 10. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM, and enter a NEW GROUND OF REJECTION under 35 U.S.C. § 112, first paragraph, for failure to comply with the written description requirement. 1 Robert Bosch GMBH is the real party-in-interest in this appeal. Appeal Br. 2. We note here that the pages of the Appeal Brief are not numbered, and that we regard the page bearing the title “Appeal Brief” as page 1, with subsequent pages consecutively numbered. Appeal 2018-003853 Application 14/254,989 2 THE INVENTION Appellants’ invention is directed to a portable power tool. Independent claim 1, reproduced below, is illustrative: 1. A portable power tool, comprising: at least one tool receptacle that includes at least one rotation axis; at least one housing that includes at least one handle region having at least one gripping plane extending at least substantially parallel to the at least one rotation axis; and at least one operator control unit that includes an operator control element positioned on a front portion of the handle region, wherein the at least one gripping plane extends through a point on the at least one housing that is located on a side of the at least one housing that is remote from the at least one tool receptacle, such that the point is at a location on side of the at least one housing remote from the at least one tool receptacle that is closest to the at least one tool receptacle; and wherein the at least one gripping plane is at a minimum distance of greater than 4 mm from the at least one rotation axis, wherein the handle region comprises at least one gripping recess that has at least one point of intersection in common with the at least one gripping plane, wherein the at least one housing has a maximum motor housing region width extending in a plane that includes the at least one rotation axis, the maximum motor housing region width being less than 65 mm; Appeal 2018-003853 Application 14/254,989 3 wherein a rearmost portion of the gripping recess is located at a distance from a front of the control element of less than 60 mm, and wherein a ratio of the maximum motor housing region width to the distance between the control element and the gripping recess is in a range from approximately 0.86 to 1.25. THE REJECTION The Examiner rejects claims 1–4, 6, 7, 9, and 10 under 35 U.S.C. § 103(a) as being unpatentable over Andriolo (US 2003/0146008 A1, published August 7, 2003). ANALYSIS Claims 1–4, 6, 7, 9, and 10--§ 103(a)--Andriolo Appellants present arguments for independent claim 1, and represent that the arguments presented for claim 1 are relied on for the rejection of dependent claims 2–4, 6, 7, 9, and 10 as well. Appeal Br. 11. We address the arguments directed to claim 1, and the remaining claims stand or fall with claim 1. The Examiner, in the Final Action from which this appeal is taken, takes the position that claim 1 and its dependent claims are unpatentable over Andriolo “for the same reasons as set forth in the previous rejection mailed on 09/16/2016.” Final Act. 2. In that Non-Final Action, the Examiner found that Andriolo is directed to a power tool, and discloses several of the claim 1 limitations, but does not specifically disclose that a gripping plane is positioned at a distance of greater than 4 mm from a rotation axis of the tool. Non-Final Act. 3. The Examiner also Appeal 2018-003853 Application 14/254,989 4 acknowledges that Andriolo does not disclose a maximum motor housing region width of less than 65 mm, nor a control element being at a distance of less than 60 mm from a gripping recess. Id. at 4. These limitations now appear in claim 1, but, at the time of the Non-Final Action, appeared in claims depending from claim 1. For these specific dimensional limitations, the Examiner concluded that it would have been an obvious matter of design choice to have made the Andriolo power tool with same dimensions and relationships for the corresponding structural elements as recited. Non-Final Act. 3–4. The Examiner asserts that Appellants have not disclosed these dimensions and relationships as solving any stated problem solved by limiting the power tool construction to the same, and that the invention would appear to perform equally well with either Appellants’ claimed dimensions/relationships, or Andriolo’s corresponding dimensions/relationships. Id. Claim 1 additionally recites a range for a ratio between the maximum motor housing region width, and a distance of spacing between a control element (trigger) and gripping recess, with the range being from 0.86 to 1.25. This limitation did not appear in any claim presented at the time the Non-Final Action was mailed, and, therefore, the Non-Final Action does not state that Andriolo fails to disclose this limitation. However, because it is apparent that Andriolo does not include such disclosure, we understand the Examiner to be treating the limitation in the same manner as other limitations not disclosed in Andriolo, i.e., that the configuration defined by the claimed ratio range would have been an obvious design choice for the same reasons stated with respect to the other undisclosed dimensions and relationships. Appeal 2018-003853 Application 14/254,989 5 Appellants’ respond that the Specification describes that the claimed dimensions and relationships at issue solve problems associated with the ergonomics of the power tool, including operating comfort and reduction in premature fatigue of the hand of an operator. Appeal Br. 5–7. Appellants also maintain that the limitations in claim 1 result in a power tool configuration in which “the housing can be grasped using only the index finger and the thumb while leaving the remaining fingers of the hand to be used to grasp the handle and the middle finger to actuate the operator control element.” Id. at 6. As to the latter assertion, although there is some discussion in the Specification that this type of grip may be preferred, it is unclear how the particular limitations in claim 1 necessarily result in achieving that configuration. As an example, the claimed distance at which the gripping plane is to be spaced from the rotational axis of the tool is to be greater than 4 mm, which means that the distance could greatly exceed 4 mm. At such greater distances, the type of grip Appellants wish to achieve might not result. As to the former assertion, to the effect that the dimensions and relationships solve problems related to improving ergonomics to increase comfort and to delay the onset of fatigue, these problems are fairly generic in nature, and, indeed, the Andriolo disclosure focuses on ergonomic design as well. See, e.g., Andriolo 28 (particular configuration for maintaining optimum ergonomic conditions); 34 (consideration of normative type, in defining grips for power tools); 41 (distance between trigger and groove on housing desirably extremely reduced); 45 (desire to obtain comfort and reduction in operator fatigue); 46 (compactness and reduction in Appeal 2018-003853 Application 14/254,989 6 encumbrance being market-driven considerations). As such, Appellants have not identified any part of the Specification that discloses any specific problem that is particularly addressed and solved by tool configurations falling within the scope of claim 1 on appeal. We thus believe that the Examiner has the better position, that the various dimensions and relationships claimed would have been obvious design choices in view of Andriolo. Appellants also contend that Andriolo teaches away from the claimed configuration. Appeal Br. 8. Appellants maintain that Andriolo does not disclose a configuration that allows a user to place the index finger and thumb on the body of the housing, and to use the middle finger to actuate the trigger or control element. This line of argument presumes that claim 1 recites a configuration that provides this ability. Yet, as noted above, it appears that a power tool meeting all limitations of claim 1 would not necessarily result in such a configuration. Further, instead of “teaching away” from such a configuration, Andriolo provides a road map to achieve a configuration of the type Appellants describe, if it is indeed desired to have only the index finger and thumb engaging the housing. Andriolo, in comparing a different prior art power tool to its power tool configuration, notes that reducing the distance between the trigger (push-button) and the holding groove allow for a comfortable, neutral, posture of the hand and forearm. Andriolo 41. Although Andriolo specifically discloses a grip in which both the index and middle finger engage the housing, were it instead desired to have the middle finger engage the trigger, Andriolo at least suggests that this can be achieved by further reduction of the distance between the trigger and holding groove. Appeal 2018-003853 Application 14/254,989 7 Id. We are therefore not persuaded that Andriolo teaches away from the claimed invention. We note that Appellants and the Examiner additionally exchange positions as to whether Andriolo discloses the general conditions of the dimensions and relationships not specifically disclosed in Andriolo, and disagree as to whether the subject matter of claim 1 would have resulted from discovering optimal or workable ranges for those features, involving only routine skill in the art, in the Andriolo device. We need not and do not reach the merits of this issue, in that we above agree with the Examiner that the differences amount to only obvious design choices. In view of the foregoing, we sustain the Examiner’s rejection of claims 1–4, 6, 7, 9, and 10, as being unpatentable over Andriolo. Claims 1–4, 6, 7, 9, 10--§ 112, first paragraph--NEW GROUND OF REJECTION Claims 1–4, 6, 7, 9, and 10 are rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. The application as filed, including the written Specification and the drawings, fails to evidence that Appellants were in possession of an invention in which a power tool configuration has “a ratio of the maximum motor housing region width to the distance between the control element and the gripping recess is in a range from approximately 0.86 to 1.25,” as recited in claim 1. The purpose of the written description requirement is to prevent an applicant from later asserting that he invented that which he did not; the applicant for a patent is therefore required “to recount his invention in such detail that his future claims can be determined to be encompassed within his Appeal 2018-003853 Application 14/254,989 8 original creation.” Amgen Inc. v. Hoechst Marion Roussel Inc., 314 F.3d 1313, 1330 (Fed. Cir. 2003) (citing Vas Cath Inc. v. Mahurkar, 935 F.2d 1555, 1561 (Fed. Cir. 1991)). An applicant shows possession of a claimed invention by describing the claimed invention with all of its limitations using such descriptive means as words, structures, figures, diagrams, and formulas that fully set forth the claimed invention. Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). That a person skilled in the art might realize from reading the disclosure that such a feature is possible is not a sufficient indication that the feature is a part of the invention. Application of Barker, 559 F.2d 588 (CCPA 1977). An applicant need not “describe exactly the subject matter claimed,” but “the description must clearly allow persons of ordinary skill in the art to recognize that . . . [the applicant] invented what is claimed.” In re Gosteli, 872 F.2d 1008, 1012 (Fed. Cir. 1989) (citation omitted); see also Barker, 559 F.2d at 589, 591. The application as originally filed fails to describe that any particular relationship between a maximum motor housing region width and a distance between the control element and the gripping recess is contemplated as being part of Appellants’ invention, let alone that a ratio between the housing width and the distance between the trigger (control element) and gripping recess is to fall within the particular claimed range of ratios. In making this rejection, we are cognizant that the specific lower and upper limits of the claimed ratio range, i.e., 0.86 and 1.25, are calculated from values extracted from the Specification as originally filed. See, e.g., Appeal Br. 4.2 The basis for the rejection is not that those values do not 2 The lower end point of 0.86 is determined from a minimum preferred housing width of 50 mm and a maximum preferred trigger/gripping recess Appeal 2018-003853 Application 14/254,989 9 appear in the Specification, but rather that there is no indication whatsoever that a configurational relationship between the two recited parameters is of any consequence or significance in the power tool that is the subject of the invention. Additionally, there is an utter lack of suggestion that upper and lower values of the exemplary preferred ranges for the values of the two parameters are regarded by Appellants as endpoints by which the claimed ratio range of 0.86 to 1.25 is derived. The width and distance parameters are independently discussed in the original Specification as generally providing ergonomic benefits, but no indication is given that any particular benefit is obtained by providing a power tool in which the disclosed preferred ranges for both parameters are present. That the two parameters were seen as being independent from one another in conferring certain ergonomic benefits is additionally evidenced by the fact that each parameter was included in a dependent claim to original claim 1,3 and no originally-presented claim included both parameters as limitations. Accordingly, the application as originally filed fails to evidence that Appellants were in possession of an invention directed to a power tool having any particular ratio of motor housing width to trigger/gripping recess distance, let alone a ratio within the range currently set forth in claim 1. distance of 58 mm. The upper end point is determined from a maximum preferred housing width of 60 mm and a minimum preferred trigger/gripping recess distance of 48 mm. Appeal Br. 4 (citations to Specification). 3 Original claim 5 included a limitation directed to the distance of the operator control element to the gripping recess, whereas original claim 8 included a limitation directed to a maximum motor housing width. Spec. 8. Each claim was separately dependent from independent claim 1. Id. Appeal 2018-003853 Application 14/254,989 10 Claims 2–4, 6, 7, 9, and 10 are rejected along with claim 1, in that they depend from that claim and include the same limitation. DECISION The rejection of claims 1–4, 6, 7, 9, and 10 under 35 U.S.C. § 103(a) as being unpatentable over Andriolo is affirmed. Claims 1–4, 6, 7, 9, and 10 are rejected, in a new ground of rejection pursuant to 37 C.F.R. § 41.50(b), under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Section 41.50(b) also provides: When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground 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 prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new evidence not previously of record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been Appeal 2018-003853 Application 14/254,989 11 misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. 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; 37 C.F.R. § 41.50(b) Copy with citationCopy as parenthetical citation