Ex Parte Kraenzler et alDownload PDFBoard of Patent Appeals and InterferencesJul 27, 201210049546 (B.P.A.I. Jul. 27, 2012) Copy Citation 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 2 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 3 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 5 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 6 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 Klh Copy with citationCopy as parenthetical citation