Ex Parte Haman et al

Patent Trial and Appeal Board

Dec 18, 2018

14208531 (P.T.A.B. Dec. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/208,531 03/13/2014
10800 7590 12/18/2018
Maginot, Moore & Beck LLP
One Indiana Square, Suite 2200
Indianapolis, IN 46204
FIRST NAMED INVENTOR
Brian Kenneth Haman
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2178-1939 6087
EXAMINER
WITTENSCHLAEGER, THOMAS M
ART UNIT PAPER NUMBER
3731
MAIL DATE DELIVERY MODE
12/18/2018 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 BRIAN KENNETH HAMAN,
HECTOR RUIZ,
STEPHEN C. OBERHEIM, and
DAVID POZGA Y 1
Appeal 2018-004651
Application 14/208,531
Technology Center 3700
Before MICHAEL L. HOELTER, JAMES P. CAL VE, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from the
Examiner's Final Rejection of claims 1-3, 7, and 8. App. Br. 1. We have
jurisdiction under 35 U.S.C. § 6(b). For the reasons explained below, we do
not find error in the Examiner's rejection of these claims. Accordingly, we
AFFIRM the Examiner's rejection.
1 The Application Data Sheet dated March 13, 2014 identifies both "Robert
Bosch Tool Corporation" and "Robert Bosch GmbH" as Applicants. In
accordance with 37 C.F.R. § 1.46, we understand "Robert Bosch Tool
Corporation" and "Robert Bosch GmbH" as Appellants. See also App. Br.
2.
Appeal2018-004651
Application 14/208,531
THE CLAIMED SUBJECT MATTER
The disclosed subject matter "relates to power hand tools and more
specifically to power hand tools which create vibration." Spec. ,r 1. Claim 1
is the sole independent claim; is illustrative of the claims on appeal; and, is
reproduced below.
1. A power hand tool, comprising:
a housing containing a working shaft; and
a vibration isolation assembly, the vibration isolation
assembly including
at least one base member including a base portion
fixed with respect to the housing,
at least one vibration isolation portion including a
first portion operably connected to the at least one base member,
the at least one vibration isolation portion configured to isolate
vibration in at least one direction, and
a grip member having an outer surface configured
to be gripped by a user and an inner surface operably connected
to an outer portion of the at least one vibration isolation portion
such that the grip member is supported by the housing through
the at least one vibration isolation portion.
REFERENCE RELIED ON BY THE EXAMINER
Berger et al. us 6,148,930 Nov. 21, 2000
THE REJECTION ON APPEAL
Claims 1-3, 7, and 8 are rejected under 35 U.S.C. § 102(b) as
anticipated by Berger. 2
2 The Examiner also listed claim 21, but this claim has subsequently been
withdrawn. See Amendment After Final dated January 18, 2018; see also
Ans. 2 (updating the heading of the rejection to omit claim 21 ).
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Application 14/208,531
ANALYSIS
Appellants argue claims 1, 2, and 8 together (App. Br. 3-5) and
argues claims 3 and 7 together (App. Br. 5-10). We select claims 1 and 3
for review, with the remaining claims (i.e., claims 2, 7, and 8) standing or
falling with their respectively grouped claim 1 or 3. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
Claim 1
Claim 1 includes the limitation "a grip member having an outer
surface configured to be gripped by a user." The Examiner correlates this
recitation to Berger's "grip member (24, 26- Fig. 1) having an outer surface
configured to be gripped by a user." Final Act. 4. Figure 1 of Berger is
replicated below.
I 14
10
22
26
"FIG. 1 shows a partly sectional, schematic side view of a breaking
and/or drilling hammer." Berger 2:59-60. Depicted are casing 12, U-
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Application 14/208,531
shaped handle 14, legs 16, 18, guide sleeves 24, 26, bushing 28, liner 32,
collar 36, and shoulders 38, 40.
Appellants contend, " [ t ]he Examiner has mischaracterized Berger"
and references Berger's statement, "[ e Jach guide sleeve 24 and 26 has a
bushing 28, which is permanently fitted in the handle" 14. App. Br. 4
(referencing Berger 3:13-14). "Accordingly, the outer surfaces of the guide
sleeves 24/26 are configured to fit within legs 16 and 18 of the handle 14."
App. Br. 4. Appellants conclude, "[a]n outer surface which is configured to
fit within a leg is not the same as an outer surface which is configured to be
gripped by a user." App. Br. 4; see also Reply Br. 3 (asserting "the guide
sleeves are located within the handle and thus not accessible to a user").
As expressed by Berger above, it is Berger's bushing 28 that is
"permanently fitted in the handle," not guide sleeves 24, 26. This is
confirmed elsewhere where Berger states, "the guide sleeve in each case
comprises a fixed bushing in the handle." Berger 2:24--25 (emphasis added).
Hence, Appellants' above citation to Berger is not understood to mean that
"the outer surfaces of the guides sleeves 24/26 are configured to fit within
legs 16 and 18 of the handle" as Appellants assert. See supra.
The Examiner further addresses Appellants' above reference to Berger
(i.e., Berger 3:13-14) concluding that the Examiner's analysis "is further
supported by Fig. 1" (which the Examiner initially relied upon (see Final
Act. 4)). Ans. 4--5. The Examiner finds that Figure 1 "depicts the guide
sleeves as the outer elements of the legs. Because the guide sleeves are
outer elements, they are capable of being gripped." Ans. 5. Appellants,
however, contend "the guide sleeves of Berger are not configured for that
purpose" (Reply Br. 2) but Appellants do not explain how guide sleeves 24,
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Application 14/208,531
26 (depicted as being flush with and forming part of handle 14) cannot be
gripped. The Examiner's findings also appear consistent with Appellants'
assertion that a proper claim construction can be achieved "simply by
requiring the 'grip member' to be a structure which is specifically designed
to be gripped by a user." 3 Reply Br. 4. Appellants do not explain how this
is not the case with respect to Berger's guide sleeves 24, 26.
Appellants also argue that the proper inquiry is "whether it would
have been obvious to modify the prior art apparatus." Reply Br. 2
(referencing In re Giannelli, 739 F.3d 1375, 1380 (Fed. Cir. 2014)); see also
id. at 3. However, this is an anticipation rejection, and further, the Examiner
is not modifying Berger, only correlating Berger's guide sleeves 24, 26 to
the recited grip members. See Final Act. 4.
Appellants also address Figure 1 of Berger and contrasts that which is
illustrated therein with Berger's text stating, "a guide sleeve formed in the
handle." Reply Br. 5; Berger 2:18-19. Appellants reference a dictionary
definition of "formed" asserting that Berger's text "can reasonably be
construed to mean that the guide sleeves are 'arranged in' the handle."
Reply Br. 5. Thus, Appellants question Berger's Figure 1 because "there is
no depiction of the guide sleeves being 'in' the handle 14." Reply Br. 6.
Appellants explain this by stating, "one of skill in the art would understand
that [Berger's] FIG. 1 is simply a schematic view, as stated at column 2 lines
59-60, not a precise view." Reply Br. 6. Appellants conclude that because
3 Despite this broad claim construction by Appellants, Appellants
nevertheless criticize the Examiner for "eviscerat[ing] any real meaning
from the phrase 'grip member having an outer surface configured to be
gripped by a user"' by construing it "so broadly as to mean any structure
which is capable of being gripped." Reply Br. 4; see also id. at 5.
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Application 14/208,531
Berger's Figure 1 is a schematic view, this figure was "not intended to
depict the precise structural relationship between the guide sleeves and the
handle" and thus the Examiner is in error. Reply Br. 6; see also id. at 8.
Presuming, for the sake of argument only, that there actually is a
discrepancy between the text of Berger and Figure 1 of Berger, the fact
remains that our reviewing court has provided instructions that "we did not
mean that things patent drawings show clearly are to be disregarded." In re
Mraz, 455 F.2d 1069, 1072 (CCPA 1972). We have also been instructed
that "a drawing in a utility patent can be cited against the claims of a utility
patent application even though the feature shown in the drawing was
unintended or unexplained in the specification of the reference patent." In re
Aslanian, 590 F.2d 911,914 (CCPA 1979). Stated another way, "if a
drawing clearly suggests to one skilled in the art the way in which the result
sought is accomplished by a later applicant, it is immaterial whether the
prior patentee's showing was accidental or intentional." In re Wagner, 63
F.2d 987 (CCPA 1933). Thus, even presuming Berger's text might differ
from Berger's figure as indicated by Appellants (see supra), Appellants do
not explain how Berger's corresponding guide sleeves 24, 26, depicted in
Figure 1, fail to disclose an exposed outer surface or how that outer surface
is unable to be gripped by a user. See Final Act. 4.
Accordingly, and based on the record presented, we sustain the
Examiner's rejection of claims 1, 2, and 8 as being anticipated by Berger.
Claim 3
Claim 3 recites "a first member" and "a second member." Appellants
proffer several definitions of the term "member" concluding "[ t ]he only
definition which makes sense within the construct of the claim is 'a
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Application 14/208,531
structural unit, such as a beam or a wall."' App. Br. 7. The Examiner does
not specifically disagree with this selection by Appellants, but also
references an alternative definition listed by Appellants, i.e., "[a] distinct
part of a whole." Ans. 5 (quoting App. Br. 6). The Examiner states that
Berger's "shoulders" 38 and 40 (which correspond to the recited "members"
(see Final Act. 5)) "are clearly identified as distinct parts of the collar" 36.
Ans. 5.
Appellants allege first that "claim 3 requires two structural units"
(App. Br. 8; see also id. at 9) but does not indicate how the Examiner failed
to identify a plurality of such "members." Any concern regarding the
"shoulders" being "structural" is allayed by Berger's disclosure that collar
36 engages liner 32, and that collar 36 "is able to transmit axial forces to the
liner 32 ... by way of an annular shoulder 38 and 40." Berger 3:27-30.
Nevertheless, Appellants contend "the sides of the collar (the annular
shoulders) are not structural units." App. Br. 9. It is puzzling as to why
Berger's annular shoulders are not considered to be structural units when
Appellants identify its own front and rear washers (items 146, 148, 164, 166)
as "first and second members." App. Br. 8. In other words, it is not made
clear why Appellants' washers can be considered "members" but Berger's
annular shoulders cannot be so considered. 4 Further, the above analysis
would be the same whether understanding "member" to be a "structural
4 Appellants contend that the claims "are to be interpreted in light of the
specification in giving them their 'broadest reasonable interpretation."'
Reply Br. 9 (citation omitted). This would seem to support the Examiner's
interpretation of Berger's "shoulders" 38 and 40 as properly corresponding
to Appellants' claimed "members."
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Application 14/208,531
unit" as proposed by Appellants or as being "part of a whole" as discussed
by the Examiner.
Appellants also allege that "in the context of the claim, the 'members'
are required to be 'fixedly supported by' the pin. The two sides of the pin of
Berger are notfixedly supported by the pin, they are the pin." Reply Br. 10.
However, as indicated above, the Examiner is correlating the collar's
shoulders 38 and 40 as corresponding to the recited "members," not Berger's
pins 20, 22. Thus Appellants' focus on Berger's pins, and not on Berger's
shoulders, is not persuasive of Examiner error.
Accordingly, and based on the record presented, we are not persuaded
of Examiner error. We sustain the Examiner's rejection of claims 3 and 7 as
being anticipated by Berger.
DECISION
The Examiner's rejection of claims 1-3, 7, and 8 is affirmed.
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
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