Ex Parte Hahn et alDownload PDFPatent Trial and Appeal BoardSep 28, 201713158663 (P.T.A.B. Sep. 28, 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. 13/158,663 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 Copy with citationCopy as parenthetical citation