Ex Parte Hahn et al

Patent Trial and Appeal Board

Sep 28, 2017

13158663 (P.T.A.B. Sep. 28, 2017)

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.
13/158,663 06/13/2011 Wolfram Hahn 708127 9908
23548 7590 10/02/2017
LEYDIG VOIT & MAYER, LTD
700 THIRTEENTH ST. NW
SUITE 300
WASHINGTON, DC 20005-3960
EXAMINER
CHUKWURAH, NATHANIEL C
ART UNIT PAPER NUMBER
3721
NOTIFICATION DATE DELIVERY MODE
10/02/2017 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 WOLFRAM HAHN and ULRICH SCHIESTL
Appeal 2016-003306
Application 13/158,663
Technology Center 3700
Before JOHN C. KERINS, EDWARD A. BROWN, and
LYNNE H. BROWNE, Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Wolfram Hahn and Ulrich Schiestl (Appellants) appeal under 35
U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1—20. We
have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
CLAIMED SUBJECT MATTER
Appellants’ invention relates to a device for driving a fastening
element into a substrate. Spec. para. 1.
Appeal 2016-003306
Application 13/158,663
Claim 1 is independent. Claim 1 is representative of the claimed
invention and reads as follows:
1. A device for driving a fastening element into a substrate,
comprising an energy-transfer element that can move along a
setting axis between a starting position and a setting position for
transferring energy to the fastening element; and a deceleration
element for decelerating the energy-transfer element, wherein
the deceleration element comprises a stop element with a stop
face for the energy-transfer element, and an impact-damping
element; wherein the stop element is made from a metal or an
alloy, and the impact-damping element is made from an
elastomer, the impact-damping element and the stop element
each having a mass, wherein the mass of the impact-damping
element equals at least 15% of the mass of the stop element.
THE REJECTIONS
The Examiner has rejected:
(i) claims 1—8, 12, 16, and 20 under 35 U.S.C. § 103(a) as being
unpatentable over Hahn (US 2007/0057007 Al, published Mar. 15, 2007);
(ii) claim 17 under 35 U.S.C. § 103(a) as being unpatentable over
Hahn in view of Jensen (US 3,842,942, issued Oct. 22, 1974);
(iii) claim 9 under 35 U.S.C. § 103(a) as being unpatentable over
Hahn in view of Honsa (US 5,054,562, issued Oct. 8, 1991);
(iv) claims 10, 11, and 18 under 35 U.S.C. § 103(a) as being
unpatentable over Hahn in view of Almeras (US 5,010,811, issued Apr. 30,
1991); and
(v) claims 13—15 and 19 under 35 U.S.C. § 103(a) as being
unpatentable over Hahn in view of Simonelli (US 2008/0041914, published
Feb. 21,2008).
2
Appeal 2016-003306
Application 13/158,663
ANALYSIS
Claims 1—8, 12, 16, and 20—Obviousness—Hahn
In regard to claim 1, the Examiner finds that Hahn discloses most of
the limitations including a device 10, comprising an energy-transfer element
20 that can move along a setting axis between a starting position and a
setting position for transferring energy to the fastening element; and a
deceleration element 30 for decelerating the energy-transfer element 20,
wherein the deceleration element 30 comprises a stop element 31 with a stop
face for the energy-transfer element 20, and an impact-damping element 35;
wherein the stop element 31 is made from a metal, the impact damping
element 35 is made from an elastomer, and the impact-damping element 35
and the stop element 31 each have a mass. Non-Final Act. 3 (citing Hahn,
para. 32).
The Examiner acknowledges that Hahn does not disclose that the
mass of the impact-damping element equals at least 15% of the mass of the
stop element. Id. at 3—A. The Examiner takes the position that it would have
been an “obvious matter of engineering design preference” to modify
Hahn’s device to have the claimed mass ratio in order to “prevent rebound of
the setting piston to a most possible extent and for a longer service life, since
discovering an optimum value of a result effective variable involves only
routine skill in the art.” Id. at 4; see also Ans. 4. Accordingly, the
Examiner’s rejection appears to be premised on an understanding in the art
that the claimed mass ratio is a known result-effective variable such that
persons of ordinary skill in the art would have found it obvious to vary the
ratio to produce a desired result in the device’s rebounding performance or
service life.
3
Appeal 2016-003306
Application 13/158,663
In making the rejection employing this principle, the Examiner must
establish that the mass ratio is an art-recognized result-effective variable,
thus rendering its optimization within the grasp of one of ordinary skill in
the art. See In re Antonie, 559 F.2d 618, 620 (CCPA 1977). Here, the
Examiner has failed to do so. It is not readily apparent that the ratio of the
impact-dampening element’s mass to the stop element’s mass is an art-
recognized result-effective variable. The Examiner points to nothing in
Hahn in support of this proposition, and we do not find such evidence in the
Hahn disclosure.
In contrast to the Examiner’s failure to establish that the claimed mass
ratio would be understood to be a result-effective variable, Appellants
present evidence in the form of a Declaration by inventor Wolfram Hahn
dated April 4, 2015 (“Declaration”). Appellants point out that the inventor
“was surprised” that the ratio of the impact-dampening element’s mass and
stop element’s mass effected a difference on the piston stresses in his device.
Id. at 5 (citing Declaration, para. 15). This is akin to saying that the
inventor, whose credentials establish him to be a person of at least ordinary
skill in the art, did not recognize the mass ratio to be a result-effective
variable. Thus, Appellants effectively vitiate the Examiner’s conclusion of
obviousness based on the mass ratio being a result-effective variable.
As such, the Examiner's position is not supported by a preponderance
of evidence. The rejection of claim 1, and that of claims 2—8, 12, 16, and 20
depending therefrom, is not sustained.
Claim 17—Obviousness—Hahn/Jensen
The Examiner does not rely on Jensen in any manner that would
remedy the above-noted deficiency in the rejection of claim 1, from which
4
Appeal 2016-003306
Application 13/158,663
claim 17 depends, over Hahn and Jensen. Non-Final Act. 8. For the same
reasons discussed supra, we do not sustain the rejection under 35 U.S.C.
§ 103(a) of claim 17.
Claim 9—Obviousness—Hahn/Honsa
The Examiner does not rely on Honsa in any manner that would
remedy the above-noted deficiency in the rejection of claim 1, from which
claim 9 depends, over Hahn and Honsa. Id. at 8—9. For the same reasons
discussed supra, we do not sustain the rejection under 35 U.S.C. § 103(a) of
claim 9.
Claims 10, 11, and 18—Obviousness—Hahn/Almeras
The Examiner does not rely on Almeras in any manner that would
remedy the above-noted deficiency in the rejection of claim 1, from which
claims 10, 11, and 18 depend, over Hahn and Almeras. Id. at Act. 9. For the
same reasons discussed supra, we do not sustain the rejection under 35
U.S.C. § 103(a) of claims 10, 11, and 18.
Claims 13—15 and 19—Obviousness—Hahn/Simonelli
The Examiner does not rely on Simonelli in any manner that would
remedy the above-noted deficiency in the rejection of claim 1, from which
claims 13—15 and 19 depend, over Hahn and Simonelli. Id. at 9-10. For the
same reasons discussed supra, we do not sustain the rejection under 35
U.S.C. § 103(a) of claims 13—15 and 19.
DECISION
The rejections of claims 1—20 are reversed.
5