Ex Parte Magnuson et al

Patent Trial and Appeal Board

Nov 27, 2012

10791430 (P.T.A.B. Nov. 27, 2012)

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.
10/791,430 03/01/2004 Thomas R. Magnuson 30361/00001 5397
70130 7590 11/27/2012
BULLIVANT HOUSER BAILEY PC
888 SW 5th Avenue
Ste. 300
Portland, OR 97204
EXAMINER
ALIE, GHASSEM
ART UNIT PAPER NUMBER
3724
MAIL DATE DELIVERY MODE
11/27/2012 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte THOMAS R. MAGNUSON, JAMES R. WILLS, and
JESS R. WILLS
____________________

Appeal 2010-006313
Application 10/791,430
Technology Center 3700
____________________

Before: JENNIFER D. BAHR, HYUN J. JUNG, and
JEREMY M. PLENZLER, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-006313
Application 10/791,430

2
STATEMENT OF THE CASE
Thomas R. Magnuson et al. (Appellants) appeal under 35 U.S.C.
§ 134 from the Examiner’s decision rejecting claims 41, 43, 44, and 46-56.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The Claimed Subject Matter
Claim 41, reproduced below, is illustrative of the claimed subject
matter.
41. A motor chain saw having a braking mechanism operatively
attached to a brake release wherein the brake release comprises
a brake release handle having a front wall, a rear wall, and a
light source, wherein the light source is secured within the
brake release handle and is adapted to emanate from the front
wall and wherein said front wall comprises translucent material.
Evidence
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Overy
Kopras
US 4,335,514
US 6,443,675 B1
Jun. 22, 1982
Sep. 3, 2002
Casas
Richards
US 2002/0054491 A1
US 2004/0050188 A1
May 9, 2002
Mar. 18, 2004
Appeal 2010-006313
Application 10/791,430

3
Rejections
Appellants request our review of the following rejections:1
(1) The Examiner rejected claims 41, 43, 44, 46-51, and 54-56 under
35 U.S.C. § 103(a) as unpatentable over Casas, Overy, and Richards.
(2) The Examiner rejected claims 52 and 53 under 35 U.S.C. § 103(a) as
unpatentable over Casas, Overy, Richards, and Kopras.
OPINION
Referring to figure 3, the Examiner found that Casas discloses a motor
chain saw comprising a light source 6 provided on a structure, which the
Examiner characterizes as a “handguard,” attached to the housing of the
chain saw. Ans. 3.
Figure 3 of Casas, annotated to show what we understand to be the
structure characterized by the Examiner as the “handguard,” is reproduced
below.

1 Appellants request our review of the Examiner’s objection to the
Amendment, filed May 3, 2006, adding new drawing figures 6 and 7 and
corresponding description of new figures 6 and 7 in the Specification. App.
Br. 2, 3-4. However, the propriety of the Examiner’s objection relates to a
petitionable matter and not to an appealable matter. Thus, the relief sought
by the Appellants should have been presented by a petition under § 1.181
instead of by appeal to this Board. Ex Parte Frye, 94 UPSQ2d 1072, 1077-
78 (BPAI 2010) (precedential). See also In re Berger, 279 F.3d 975, 984
(Fed. Cir. 2002) (citing In re Hengehold, 440 F.2d 1395, 1403-04 (CCPA
1971) (stating that there are many kinds of decisions made by examiners that
are not appealable to the Board when they are not directly connected with
the merits of issues involving rejections of claims, and holding that “the kind
of adverse decisions of examiners which are reviewable by the board must
be those which relate, at least indirectly, to matters involving the rejection of
claims”)).
App
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Appeal 2010-006313
Application 10/791,430

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transverse top handle 42”). On the basis of this finding, the Examiner
reasoned that it would have been obvious to use the “handguard” of the
Casas chain saw as a brake release connected to a braking mechanism as
taught by Overy, “in order to pivot the handguard and stop the rotation of the
saw chain” when desired. Ans. 3-4. Given the common location of Overy’s
handguard/brake lever and the “handguard” structure on which the Casas
light 6 is disposed, the Examiner’s reasoning has rational underpinnings. In
other words, even assuming the structure of Casas on which the light 6 is
disposed is not intended to function as a handguard, Overy’s teaching of
placing a handguard/braking mechanism release lever at such a location on
the chain saw would have prompted a person of ordinary skill in the art to
make such a modification.
Appellants also argue that Richards, the reference relied upon by the
Examiner to show that the use of translucent material or plexiglass with a
light source in tools is well known in the art (Ans. 4), is non-analogous art.
App. Br. 5. We do not agree with Appellants. Richards is reasonably
pertinent to Appellants’ invention because it addresses a problem addressed
by Appellants’ invention, namely, enclosing a light source within a housing
of a tool in such a manner that the light emanates from the light source to
illuminate the object worked upon by the tool. See Richards, paras. [0024],
[0027]; Spec., para. [0025].
Appellants additionally argue that even assuming that the Casas chain
saw were further modified in view of Richards to include a translucent cover
or front wall over the light source, as proposed by the Examiner (see Ans. 4),
“there remains no teaching or [suggestion] to internalize such a light within
a brake release handle.” App. Br. 5. This argument does not identify error
Appeal 2010-006313
Application 10/791,430

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in the Examiner’s rejection because, as pointed out by the Examiner (Ans.
8), claim 41 does not require that the light source be internalized within a
brake release handle. Instead, claim 41 only requires that “the light source is
secured within the brake release handle.” The limitation “secured within the
brake release handle” in claim 41 does not require any particular surface
profile of the brake release handle. As such, the Examiner did not err in
considering the cover in front of the light bulb of Casas as modified in view
of Overy and Richards to be part of the brake release handle (Ans. 8). The
Examiner additionally correctly found that the light source of Casas is
located within the handguard/brake release handle, because “it is located in
the middle of the handle or the guard.”2 Id.
For the above reasons, Appellants’ arguments do not apprise us of
error in the Examiner’s rejection of claim 41. Thus, we sustain the rejection
of claim 41 as unpatentable over Casas, Overy, and Richards. We also
sustain the like rejection of dependent claims 43, 44, 46, 49-51, and 54-56,
for which Appellants do not assert any separate arguments. See App. Br. 5-
6.
Claim 47 requires the light source to be “affixed to a plate secured
within the brake release handle” and claim 48 recites that “the plate is
attached to an interior surface of the rear wall.”3

2 We understand the Examiner’s language “in the middle of” to mean
intermediate the peripheral edges of the handle/guard.
3 Claim 48, which depends from claim 41, lacks antecedent basis for “the
plate.” For purposes of this appeal, we treat claim 48 as depending from
claim 47, but we suggest that, in the event of further prosecution of the
claimed subject matter, Appellants and the Examiner take appropriate action
to address this error in claim 48.
Appeal 2010-006313
Application 10/791,430

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Appellants argue that “Casas does not in any way teach or suggest that
a plate be located within the brake release handle, or is attached to an
interior surface of the rear wall.” App. Br. 5. This argument does not
address the Examiner’s rejection, which is grounded on a combination of
Casas, Overy, and Richards. The Examiner acknowledged that Casas does
not teach these features, but found that “Richards teaches that the light
source 30 is affixed to a plate attached to a rear wall 56.” Ans. 5. The
Examiner determined that it would have been obvious to modify Casas, as
modified in view of Overy, to attach the plate of the light source to an
interior surface of the rear wall in the handle, “as taught by Richards, since
the light source works the same whether it is attached to the front wall or the
rear wall of the release handle, and in both cases light emanates from the
front wall of the handle.” Id.
Appellants also argue that “Richards does not provide a handle with a
front and rear wall, but a sensor device with a light source 30 that pushes
through a plate 56 internal to the sensor device.” App. Br. 5. Appellants’
contention that Richards does not provide a handle with a front and rear wall
attacks Richards individually, and not as combined with Casas and Overy as
proposed by the Examiner. The light-emitting diodes (LEDs) of Richards’
light source 30 pass through holes in mounting plate 56. Para. [0028]; fig. 1.
However, this fact does not detract from Richards’ disclosure that the light
source 30 is “affixed” to the mounting plate 56, and that the mounting plate
56 is maintained within the housing 12. Para. [0028].
Aside from these arguments, Appellants merely rely on the arguments
asserted against the rejection of claim 41 in contesting the rejection of
claims 47 and 48. App. Br. 5. These arguments, as discussed above, do not
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Application 10/791,430

8
apprise us of error in the Examiner’s rejection. Thus, we sustain the
rejection of claims 47 and 48 as well.
In contesting the rejection of claims 52 and 53 as unpatentable over
Casas, Overy, Richards, and Kopras, Appellants merely add that Kopras
does not teach or suggest “embedding any light source inside a motor chain
saw brake release handle, let alone two or more light emitting diodes.” App.
Br. 6. This argument does not identify error in the Examiner’s rejection,
because claims 52 and 53 do not require that the light source be “embedded”
inside a motor chain saw brake release handle. Thus, for the reasons
discussed above in regard to claim 41, we also sustain the rejection of claims
52 and 53.
DECISION
The Examiner’s decision rejecting claims 41, 43, 44, and 46-56 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED

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