Ex Parte Franz et alDownload PDFPatent Trial and Appeal BoardDec 13, 201713158837 (P.T.A.B. Dec. 13, 2017) 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. 13/158,837 06/13/2011 Karl Franz 708166 1263 23548 7590 12/15/2017 LEYDIG VOIT & MAYER, LTD 700 THIRTEENTH ST. NW SUITE 300 WASHINGTON, DC 20005-3960 EXAMINER LONG, ROBERT FRANKLIN ART UNIT PAPER NUMBER 3721 NOTIFICATION DATE DELIVERY MODE 12/15/2017 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): DCpatent@leydig.com Chgpatent @ ley dig. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KARL FRANZ, HARALD FIELITZ, and ULRICH SCHIESTL Appeal 2017-0039691 Application 13/158,8372 Technology Center 3700 Before MURRIEL E. CRAWFORD, BRUCE T. WIEDER, and KENNETH G. SCHOPFER, Administrative Patent Judges. SCHOPFER, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 from the rejection of claims 1—14, 16—19, 21, and 22. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Our decision references the Appeal Brief (“Br.,” filed Sept. 21, 2016), the Examiner’s Answer (“Ans.,” mailed Nov. 2, 2016), and the Final Office Action (“Final Act.,” mailed June 9, 2016). 2 According to Appellants, the real party in interest is Hilti Aktiengesellschaft. Br. 1. Appeal 2017-003969 Application 13/158,837 BACKGROUND According to Appellants, “[t]he application relates to a device for driving a fastening element into a substrate.” Spec. 11. ILLUSTRATIVE CLAIM Claim 1 is illustrative of the appealed claims and recites: 1. A device for driving a fastening element into a substrate, comprising a mechanical-energy storage device comprising a spring that stores mechanical energy; an energy-transfer element comprising a piston that moves between a starting position and a setting position and transfers energy from the mechanical-energy storage device to the fastening element, such that the energy-transfer element moves in a setting direction from the starting position toward the setting position; and, an energy-transfer mechanism that transfers energy from an energy source to the mechanical-energy storage device and transports the energy-transfer element from the setting position into the starting position, wherein the energy source comprises a battery or an accumulator and the energy-transfer mechanism transports the energy-transfer element from the setting position against the setting direction without storing mechanical energy in the mechanical-energy storage device. Br. 7. REJECTION The Examiner rejects claims 1—14, 16—19, 21, and 22 under 35 U.S.C. § 102(b) as anticipated by Pedicini.3 DISCUSSION With respect to claim 1, the Examiner finds that Pedicini discloses a device for driving a fastening element as claimed, and in particular, the Examiner finds that Pedicini discloses: 3 Pedicini et al., US 6,705,503 Bl, iss. Mar. 16, 2004. 2 Appeal 2017-003969 Application 13/158,837 an energy-transfer element (2/6) comprising a piston (11) that moves between a starting position and a setting position and transfers energy from the mechanical-energy storage device to the fastening element, such that the energy-transfer element (2) moves in a setting direction from the starting position toward the setting position (col. 6, lines 1-21, figs. l-4)[.] Final Act. 2—3. The Examiner relies on similar findings with respect to independent claim 16. Id. at 3^4. Appellants argue that because “Pedicini teaches biasing the anvil 11 in the opposite direction of the ramming direction,” Pedicini fails to disclose: a “mechanical-energy storage device comprising a spring that stores mechanical energy, an energy-transfer element comprising a piston that moves between a starting position and a setting position and transfers energy from the mechanical-energy storage device to the fastening element, such that the energy-transfer element moves in a setting direction from the starting position toward the setting position,” as recited in claim 1 (emphasis added); or, a “mechanical-energy storage device comprising a spring that stores mechanical energy, an energy-transfer element comprising a piston that moves between a starting position and a setting position and transfers energy from the mechanical-energy storage device to the fastening element,” as recited in claim 16 (emphasis added). Br. 3^4. Appellants also assert that claims 1 and 16 “clearly defme[]” the setting and starting positions for the device. Id. at 4—5. We agree with and adopt the Examiner findings regarding independent claims 1 and 16. See Final Act. 2-4; Adv. Act. 2; Ans. 2—3. As discussed below we are not persuaded of reversible error by Appellants’ arguments. 3 Appeal 2017-003969 Application 13/158,837 Without further explanation, we fail to see any distinction between Pedicini as described by Appellants and the claim structure cited by Appellants. Appellants first indicate only that Pedicini does not disclose a mechanical energy storage device because “Pedicini teaches biasing the anvil 11 in the opposite direction [(i.e. toward the starting position)] of the ramming direction [(i.e. the setting direction)].” Br. 3. However, we see no indication in the cited portions of claims 1 and 16 that a particular biasing direction is required. Rather, taking claim 1 for example, the cited portion refers to a mechanical energy storage device that stores mechanical energy and an energy-transfer element that moves between starting and setting positions and also transfers energy from the mechanical-energy storage device to the fastening element. These limitations do not expressly refer to any particular biasing direction for the energy transfer element, and Appellants do not provide an explanation as to why the particular direction in which Pedicini’s anvil is biased shows that these limitations are not disclosed in Pedicini. Further, Appellants assert “that the setting direction, as well as the starting and setting positions, are clearly defined” in claim 1. Br. 4. However, Appellants fail to explain how any definition of these claimed elements shows that Pedicini does not disclose a device as claimed. For example, Appellants do not explain how Pedicini’s biasing direction for the anvil results in different starting and setting positions from those claimed. Thus, we agree with the Examiner’s that Appellants essentially do no more than provide a general allegation that the claims define a patentable invention without an adequate explanation as to how the language of the claims is patentably distinct from the art cited. See Ans. 2—3. Accordingly, 4 Appeal 2017-003969 Application 13/158,837 we are not persuaded of reversible error with respect to the rejection of claims 1 and 16 and we sustain the rejection. Dependent claims 2—14, 17— 19, 21, and 22 are not separately argued and therefore fall with independent claims 1 and 16. See 37 C.F.R. § 41.37(c)(iv). CONCLUSION We AFFIRM the rejection of claims 1—14, 16—19, 21, and 22 for the reasons provided. 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 5 Copy with citationCopy as parenthetical citation