Ex Parte Hirschburger

Patent Trial and Appeal Board

Oct 29, 2018

14125556 (P.T.A.B. Oct. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/125,556 10/21/2014
10800 7590 10/29/2018
Maginot, Moore & Beck LLP
One Indiana Square, Suite 2200
Indianapolis, IN 46204
FIRST NAMED INVENTOR
Wolfgang Hirschburger
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.
2178-0957 9981
EXAMINER
JALLOW, EYAMINDAE CROSSAN
ART UNIT PAPER NUMBER
3731
MAIL DATE DELIVERY MODE
10/29/2018 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 WOLFGANG HIRSCHBURGER
Appeal2018-000786
Application 14/125,556
Technology Center 3700
Before JENNIFERD. BAHR, MICHAEL L. HOELTER, and
LEE L. STEPINA, 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 1-8 and 10. App. Br. 1. We have
jurisdiction under 35 U.S.C. § 6(b). For the reasons explained below, we
find error in the Examiner's rejections.
Accordingly, we REVERSE.
Appeal2018-000786
Application 14/125,556
THE CLAIMED SUBJECT MATTER
The disclosed subject matter is directed to a hand-held power tool
having a rotational speed higher than 10,000 rpm. Spec. 1: 18-21.
Apparatus claim 1 is the sole independent claim. Claim 1 is illustrative of
the claims on appeal and is reproduced below.
1. A hand-held power tool, comprising:
at least one tool spindle defining a first axis of rotation;
and
a drive unit connected in a gearless fashion to the at least
one tool spindle and configured to drive the at least one tool
spindle at a rotational speed higher than 10,000 rotations per
minute, the drive unit including a brushless electric motor
defining a second axis of rotation that is coaxial with the first
axis of rotation.
REFERENCES RELIED ON BY THE EXAMINER
Abolhassani et al.
Roth et al.
Oomori et al.
US 7,821,217 B2
US 2011/0303428 Al
US 2013/0126202 Al
THE REJECTIONS ON APPEAL
Oct. 26, 2010
Dec. 15, 2011
May 23, 2013
Claims 1, 2, 5-7, and 10 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Oomori and Abolhassani.
Claims 3, 4, and 8 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Oomori, Abolhassani, and Roth.
ANALYSIS
The rejection of claims 1, 2, 5-7, and 10
as unpatentable over Oomori and Abolhassani
Sole independent claim 1 recites a "gearless" drive unit that drives "at
least one tool spindle at a rotational speed higher than 10,000 rotations per
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Appeal2018-000786
Application 14/125,556
minute." The Examiner relies on Oomori for disclosing the "gearless"
limitation, and on Abolhassani for teaching the "higher than 10,000" rpm
limitation. See Final Act. 3. The Examiner reasons that it would have been
obvious to combine the two references "in order to electronically control the
motor or a power tool over a wide speed range." Final Act. 3 (referencing
Abolhassani 1 :57---64); see also Ans. 2.
Appellant contends that "Oomori expressly teaches away from the
modification proposed by the Examiner." App. Br. 5. This is because when
Oomori discusses a gearless embodiment ( Oomori also discusses using
gears), Oomori states, "because a gear mechanism (reducer) is not provided,
the motor 403 with a low rotational speed is used." App. Br. 5 (referencing
Oomori ,r 121). Appellant states, "[a]ccording to FIG. 13 and paragraph
[0097] of Oomori a 'high' rotational speed corresponds to about 17,000 rpm,
a medium rotational speed corresponds to about 6, 000 rpm, and a low
rotational speed corresponds to about 3,000 rpm." App. Br. 6. Hence,
according to Appellant, Oomori, at best, teaches a speed of about 3,000 rpm
when not employing a gear reducer. App. Br. 6.
Appellant also finds support for this assertion when addressing the
teachings of Abolhassani, which discloses the range "between 20,000 rpm -
5,000 rpm." App. Br. 6; Abolhassani 7:65. Appellant contends that the
"low rotational speed" described in Oomori likewise corresponds to
Abolhassani's lower speed of 5,000 rpm, as contrasted with Abolhassani's
higher speed of 20,000 rpm. Hence, according to Appellant, "Oomori
teaches away from the modifications proposed by the Examiner" (i.e.,
rotating the gearless drive "at a rotational speed higher than 10,000" rpm).
App. Br. 6.
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Appeal2018-000786
Application 14/125,556
There is merit to Appellant's contention. The Examiner's basis of
modifying Oomori to provide a speed above 10,000 rpm is based on
Abolhassani's teaching of controlling the motor "over a wide speed range."
Final Act. 3; Abolhassani 1:60-63; see also Ans. 2. Granted, Abolhassani
teaches a speed range in excess of 10,000 rpm ("between 20,000 rpm-
5,000 rpm" to be exact, Abolhassani 7:65), however, it is not clear that the
Examiner's reason of "over a wide speed range" (see supra) correlates to a
speed above 10,000 rpm for a gearless drive. See Oomori ,r,r 118, 121. This
is because to drive Oomori's gearless embodiment above 10,000 rpm would
seem to run counter to Oomori's express teaching that a gearless drive is
associated with a "low rotational speed." Oomori ,r 121. Although Oomori
does not exactly define what speed is considered a "low" speed, Oomori
specifically identifies a speed of 17,000 rpm as a "high" speed, and also
discusses such lower speeds as 6,000 and 3,000 rpm. See Oomori ,r 97.
Hence, when considering what "low" speed range Oomori restricts a
gearless drive to, we agree with Appellant that Oomori would direct one
skilled in the art to employ a "low" speed of, perhaps, 3,000 rpm as
contrasted with Oomori' s "high" speed of 17,000 rpm, or even Oomori' s
mid-speed of 6,000 rpm. App. Br. 6; Oomori ,r 97. The Examiner does not
explain how it would have been obvious for one skilled in the art to
disregard Oomori' s "low" speed teachings and, instead, modify Oomori' s
gearless drive to have "a rotational speed higher than 10,000" rpm, as
recited.
In summation, the Examiner's expressed reliance on Abolhassani for
controlling a motor "over a wide speed range" (Final Act. 3, Ans. 2,
Abolhassani 1:63), when considered in view of Oomori's more restrictive
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Appeal2018-000786
Application 14/125,556
teachings of a low speed for a gearless drive, is not sufficient articulated
reasoning with rational underpinning to support a legal conclusion of
obviousness. See KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Accordingly, and
based on the record presented, we do not sustain the Examiner's rejection of
claim 1, or dependent claims 2, 5-7, and 10, as being obvious in view of
Oomori and Abolhassani.
The rejection of claims 3, 4, and 8
as unpatentable over Oomori, Abolhassani, and Roth
The Examiner relies on the additional teachings of Roth for disclosing
use of a converter and also the use of a lithium-based accumulator. Final
Act. 5-6. Neither of these teachings cures the defect of the combination of
Oomori and Abolhassani discussed above. See also App. Br. 9.
Accordingly, we likewise do not sustain the Examiner's rejection of
dependent claims 3, 4, and 8 as being obvious over Oomori, Abolhassani,
and Roth.
DECISION
The Examiner's rejections of claims 1-8 and 10 are reversed
REVERSED
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