Ex Parte Kraenzler et al

Board of Patent Appeals and Interferences

Jul 27, 2012

10049546 (B.P.A.I. Jul. 27, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/049,546 06/05/2003 Ernst Kraenzler 1969 7609
7590 07/27/2012
Michael J Striker
Striker Striker & Stenby
103 East Neck Road
Huntington, NY 11743
EXAMINER
CHUKWURAH, NATHANIEL C
ART UNIT PAPER NUMBER
3721
MAIL DATE DELIVERY MODE
07/27/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ERNST KRAENZLER, MANFRED RUFF,
HARALD KRONDORFER, RALPH DAMMERTZ,
JOERG GOEHNER, and MARIO FRANK
____________________

Appeal 2010-003977
Application 10/049,546
Technology Center 3700
____________________

Before LINDA E. HORNER, STEVEN D.A. McCARTHY, and
EDWARD A. BROWN, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-003977
Application 10/049,546

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the rejection of
claims 16, 17, 19-28, and 33-39. (App. Br. 3).1 Claims 1-15 and 29-32 have
been cancelled, and claim 18 allowed. (Id. at 2). We have jurisdiction over
this appeal under 35 U.S.C. § 6(b).
We REVERSE.
THE CLAIMED SUBJECT MATTER
Claim 16, reproduced below, is the sole independent claim:
16. A power tool with at least one handle, said
handle comprising at least one grip part that is
firmly connected to and firmly held at a mounting
part by at least one elastic, vibration-damping
element located between the grip part and the
mounting part, wherein the grip part is affixed to a
housing via the mounting part which is screwed
into the housing so that the elastic element is
mounted to the housing through the mounting part
and also mounted to the grip part; and wherein the
connection between the grip part and the mounting
part by means of the elastic element is secured by
at least one movable retaining element that
prevents a separation of the grip part from the
housing if the elastic element is damaged and
ensures control of the power tool via the grip part
at all times.

1 We refer to the Appeal Brief filed on Oct. 5, 2009.
Appeal 2010-003977
Application 10/049,546

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THE REJECTIONS
The following rejections are before us for review:2
1. The rejection of claims 16, 17, 19, 20, 22-26, 28, and 33-39
under 35 U.S.C. § 103(a) as unpatentable over Förderer (US 5,699,865,
issued Dec. 23, 1997) and Dorner (US 5,046,566, issued Sep. 10, 1991).
2. The rejection of claims 21 and 27 under 35 U.S.C. § 103(a) as
unpatentable over Förderer and Radle (US 5,697,456, issued Dec. 16,
1997).3
ANALYSIS
Claims 16, 17, 19, 20, 22-26, 28, and 33-39 – Förderer and Dorner
Regarding claim 16, the Examiner found Förderer discloses a power
tool with a handle comprising a grip part (bail handle 19), a mounting part
(base 35 of plug 31, base 45 of plug 41), and an elastic, vibration-damping
element (attenuating section 22 of base body 6) between the grip part and
mounting part, with the grip part affixable to a housing (motor unit 2) via the
mounting part, and the connection between the grip part and mounting part
being secured by at least one movable retaining element (coupling member
50). (Ans. 3). The Examiner found Förderer does not disclose a "specific

2 Claim 36 in the Claims Appendix to the Appeal Brief includes the
amendment that was presented in the "Supplemental Request for
Reconsideration" filed on May 23, 2007. The Examiner indicated that the
amendment to claim 36 would be entered for purposes of Appeal and also
overcome the rejection of this claim under 35 U.S.C. § 112, ¶2 (see
Advisory Action dated June 5, 2007; Office Comm. dated Jul. 20, 2009).
3 As claims 21 and 27 depend from claim 16, we understand this rejection to
be over Förderer, Radle, and Dorner.
Appeal 2010-003977
Application 10/049,546

4
teaching of the retaining element firmly connected to a fastening screw
located in [the] mounting part."4 (Id.).
The Examiner found Dorner teaches a retaining element (plugs 50,
60) firmly connected to a fastening screw (55) in a mounting part (cap 41)
for holding the elastic element fixedly to the motor. (Ans. 4; see also
Dorner col. 4, ll. 30-33, 55-59, col. 5, ll. 3-5; Fig. 2). The Examiner
concluded that it would have been obvious to one of ordinary skill in the art
to provide Förderer's power tool with a fastening screw "to hold the elastic
element fixedly to the motor and to prevent transferring vibrations from the
motor to the handle unit." (Ans. 4). The Examiner stated "[t]he teaching of
Dorner et al. was chosen to show Appellant that it is obvious to provide a
screw in place of [a] non-screw retainer." (Ans. 8).
Regarding Förderer, Appellants contend that there is no direct contact
between plug 41 and handle 9 because section 40 of vibration-damping
element 6 is located between them. (App. Br. 9). Appellants contend that if
a complete loss of the elastic element occurs, the handle 9 will separate from
the machine part. (App. Br. 10). Förderer discloses that "[w]ith a break of
the base body 6, an axially inseparable connection between the motor unit 2
and the handle unit 9 is maintained because the lock element 100 cannot exit
from the lock opening 61 of the plug 41. The plugs 31 and 41 are essentially
held by a friction lock so that they cannot rotate." (Förderer col. 5, ll. 33-
39). While Förderer describes means to retain the handle unit 9 connected to
the motor unit 2 if the base body "breaks," we agree with Appellants that in

4 This claim limitation appears only in dependent claim 24. To the extent
the Examiner relied on the disclosure of Förderer alone to anticipate
independent claim 16, for the reasons discussed infra, we find that Förderer
fails to disclose each and every limitation of claim 16.
Appeal 2010-003977
Application 10/049,546

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the event base body 6 were sufficiently damaged, e.g., if portion 40 of base
body 6 were to become completely separated from the remainder of base
body 6 and from plug 41, Förderer's structure would not prevent handle unit
9 from separating from motor unit 2. Rather, in the event of such damage to
base body 6, lock element 100 would retain plug 41, but not handle unit 9,
connected to motor unit 2. As such, Förderer does not disclose a movable
retaining element that "ensures control of the power tool via the grip part at
all times," as called for in claim 16.
Appellants contend that Dorner does not disclose a retaining element
for preventing loss of the handle 4 from the motor system 2' in the event of
failure of the vibration damping elements 20, 21, 22, and 23. (App. Br. 10).
Figure 2 of Dorner shows antivibration elements 20, 22, and 23, which each
include a plug 50 received in a base body 30 and attached to a cap 41 by a
fastener 55, and a second plug 60. We agree with Appellants' contention
that if Dorner's elastic element is torn, the handle will separate from the
machine part, because screw 55 has no retaining function, but serves
exclusively for mounting of plug 50. (Id.).
We agree with Appellants that the combination of Förderer and
Dorner does not support the rejection. The Examiner did not specifically
explain how Förderer's device would be modified in view of Dorner.
However, based on Dorner's teachings in regard to the placement and
function of the fasteners 55 in the antivibration elements, incorporating a
fastener 55 into Förderer's structure would appear to result in the fastener 55
extending through plug 31 and into motor unit 2, but not through plug 41.
Even if the fastener 55 were used to secure plug 41 to motor unit 2, the
modified structure would not meet the limitations of claim 16. Appellants
Appeal 2010-003977
Application 10/049,546

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correctly state that "[i]n Förderer, the plug 41 in connection with the
coupling 50 and the second plug 31 can operate as a retaining element only
as long as the elastic element 22 is in a position to reliably hold the plug 41."
(Reply Br. 4). In the modified Förderer structure, if damage to base body 6
results in it being unable to hold plug 41, the fastener 55 would not then
prevent the handle 9 from separating from the motor unit 2. As such, the
incorporated fastener 55 would not satisfy the claim limitation, "at least one
movable retaining element that prevents a separation of the grip part from
the housing if the elastic element is damaged and ensures control of the
power tool via the grip part at all times." (Emphasis added).
In view of the above, we do not sustain the rejection of claim 16, and
claims 17, 19, 20, 22-26, 28, and 33-39, which depend from claim 16.
Claims 21 and 27 – Förderer, Radle, and Dorner
The Examiner's application of Radle to the rejection of claims 21 and
27 does not cure the deficiencies of the Examiner's reliance on Förderer and
Dorner discussed supra, with respect to claim 16. Hence, we do not sustain
the rejection of claims 21 and 27.
DECISION
The Examiner's decision rejecting claims 11-18 is reversed.

REVERSED

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