Andre Ullrich et al.

Patent Trials and Appeals Board

Jul 30, 2019

14254989 - (D) (P.T.A.B. Jul. 30, 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.
14/254,989 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.
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Application 14/254,989

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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;
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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
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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.
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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
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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.
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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
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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
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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.
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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
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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)