Ex Parte Orlando

Patent Trial and Appeal Board

Jun 29, 2018

14256984 (P.T.A.B. Jun. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/256,984 04/20/2014 Paul Frank Orlando
23410 7590 07/02/2018
Vista IP Law Group LLP
100 Spectrum Center Drive
Suite 900
IRVINE, CA 92618
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.
MCLLC-0202 2148
EXAMINER
ROSE, ROBERT A
ART UNIT PAPER NUMBER
3723
MAILDATE DELIVERY MODE
07/02/2018 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 PAUL FRANK ORLANDO
Appeal2017-006551
Application 14/256,984
Technology Center 3700
Before BENJAMIN D. M. WOOD, NATHAN A. ENGELS, and
PAUL J. KORNICZKY, Administrative Patent Judges.
KORNICZKY, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2017-006551
Application 14/256,984
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant appeals 1 from the
Examiner's decision, as set forth in the Final Office Action dated November
13, 2015 ("Final Act.") and the Advisory Action dated February 25, 2016
("Adv. Act."), rejecting claims 1-21. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART.
THE CLAIMED SUBJECT MATTER
The claims are directed to a setup platform apparatus for bench and
pedestal grinders. Claims 1, 13, and 17 are the independent claims on
appeal. Claim 17, reproduced below with disputed limitations italicized for
emphasis, is illustrative of the claimed subject matter:
17. A method for mounting a setup platform to a bench top or
pedestal grinder having a cutoff wheel rotatably mounted
thereon, comprising:
mounting a first end of an anchor bar to a housing of the
grinder adjacent the cutoff wheel such that the anchor bar
defines a substantially horizontal axis between the first end and
a second free end of the anchor bar;
providing a setup platform including a substantially
planar upper surface and an elongate member extending from a
lower surface of the setup platform;
positioning the elongate member along the substantially
horizontal axis at a desired location between the first end and
the second free end of the anchor bar until an inner edge of the
setup platform is positioned adjacent the cutoff wheel; and
Motion Concepts, LLC ("Appellant") is the applicant pursuant to 37
C.F .R. § 1.46, and is identified as the real party in interest. Appeal Brief,
dated August 15, 2016 ("Appeal Br."), at 2.
2
Appeal2017-006551
Application 14/256,984
securing the elongate member to the anchor bar such
that the setup platform is substantially stationary relative to the
grinder.
REFERENCES
In rejecting the claims on appeal, the Examiner relied upon the
following prior art:
Pribnow
Brooks
us 1,081,465
US 9,114,502 B2
REJECTIONS
Dec. 16, 1913
Aug. 25, 2015
The Examiner made the following rejections:
1. Claims 17 and 19 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Pribnow.
2. Claims 1-3, 5-19, and 21 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Brooks.
3. Claim 20 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Brooks.
Appellant seeks our review of these rejections.
Claim 17
DISCUSSION
Rejection 1: Claims 17 and 19
as Anticipated By Pribnow
The Examiner finds that Pribnow discloses all of the limitations of
claim 17 directed to "a method for mounting a setup platform to a bench top
or pedestal grinder." Final Act. 4. Specifically, the Examiner finds that
Pribnow discloses (id.):
3
Appeal2017-006551
Application 14/256,984
mounting of first end of an anchor bar (55) to a housing of the
grinder adjacent a cutoff wheel along a horizontal axis, providing
a setup platform (57) with planar upper surface and elongate
member (55) extending from a lower surface of the setup
platform, positioning the elongate member along the horizontal
axis, and securing the elongate member to the anchor bar by
means of a fastener (59).
Appellant asserts that the Examiner's rejection is erroneous for two
reasons. First, Appellant asserts that Pribnow does not disclose "mounting
an anchor bar, as claimed." The term "bar" and "anchor bar" are very broad
terms. However, neither Appellant nor the Specification defines the terms.
According to one dictionary, bar means "a: a straight piece (as of wood or
metal) that is longer than it is wide and has any of various uses (as for a
lever, support, barrier, or fastening," "b: a solid piece or block of material
that is longer than it is wide," or "c: a usually rigid piece (as of wood or
metal) longer than it is wide that is used as a handle or support." Merriam-
W ebster Dictionary, https://www.merriam-webster.com/ dictionary /bar, last
visited June 25, 2018. Based on the usage in the Specification and the
dictionary, we understand that "anchor bar" means "a rigid piece (as of
wood or metal) longer than it is wide that is used as a support or fastening."
In light of this definition, we agree with the Examiner that Pribnow' s
projection 55 is an anchor bar as broadly recited in claim 17. Pribnow' s
projection 55 is rigid and longer than it is wide, and is used for supporting
work table 57. Pribnow 2: 13-17.
Neither Appellant nor the Specification define the term "mount" or
"mounting," as recited in claim 17. According to one definition, mount
means, in relevant part, "to attach to a support" or "to put or have in position
- mount artillery." Merriam-Webster Dictionary, https://www.merriam-
4
Appeal2017-006551
Application 14/256,984
webster.com/dictionary/mount, last visited June 25, 2018. Based on the
usage in the Specification and the dictionary, we understand that "mounting"
means to attach to a support. In light of this definition, we agree with the
Examiner's finding that Pribnow discloses that projection 55 is attached to
and supported by Pribnow's housing, and, thus, is mounted to the housing,
as recited in claim 1. Ans. 4 ("[P]edestal (12) of Pribnow constitutes a
housing, since the grinding wheel spindle is supported in bearings which are
housed within the pedestal. Moreover, anchor bar (55) of Pribnow is shown
in a state of being mounted to the housing (12), if not by welding or some
other attachment mechanism, then by simply being solidified to the housing
when the housing and anchor bar are initially cast in a mold. The physical
bonding of the anchor bar to the rest of the housing is deemed to inherently
constitute the mounting step.").
For these reasons, we agree with the Examiner that Pribnow discloses
"mounting a first end of an anchor bar to a housing," as recited in claim 17.
Second, Appellant asserts that Pribnow does not disclose "providing a
setup platform including ... an elongate member extending from a lower
surface of the setup platform; positioning the elongate member along the
substantially horizontal axis at a desired location between the first end and
the second free end of the anchor bar until an inner edge of the setup
platform is positioned adjacent the cutoff wheel; and securing the elongate
member to the anchor bar such that the setup platform is substantially
stationary relative to the grinder," as recited in claim 17. Appeal Br. 11-12.
Other than repeating the language of this limitation and identifying elongate
member 56 and fastener 59, the Examiner does not explain how Pribnow
discloses the elements in this limitation. See Final Act. 4; Adv. Act. 2; Ans.
5
Appeal2017-006551
Application 14/256,984
3. It is incumbent on the Examiner to identify where every limitation in a
claim may be found in a reference. Here, despite Appellant's explicit
challenge about the lack of specific and explicit findings by Examiner (see,
e.g., Appeal Br. 11-12, 16-18), the Examiner does not provide the requisite
findings and explanation.
For the reasons above, the rejection of claim 17 is not sustained.
Claim 19
The Examiner did not make any findings regarding claim 19. The
rejection of claim 19 is not sustained.
Rejection 2: Independent Claims 1, 13, and 17
as Anticipated By Brooks
Independent claim 1 recites, in part, "an anchor bar including a first
end configured to be mounted to a portion of the tool." Claim 13 recites, in
part, "an anchor member including a first end secured to the housing."
Claim 1 7 recites, in part, "mounting a first end of an anchor bar to a housing
of the grinder."
The Examiner finds that Brooks discloses the limitations in claims 1,
13, and 17 including an anchor bar 33 secured to a housing 26. For
reference, Figure 3 of Brooks is presented below:
6
Appeal2017-006551
Application 14/256,984
_FIG 3
Referring to Figure 3, the Examiner finds, in part, that Brooks discloses a
mounting of first end of an anchor bar (33) to a housing of the
grinder adjacent a cutoff wheel (22) along a horizontal axis,
providing a setup platform (54) with planar upper surface and
elongate member (90) extending from a lower surface of the
setup platform, positioning the elongate member along the
horizontal axis, and securing the elongate member to the anchor
bar by means of one or more fasteners (94).
Final Act. 4; Ans. 4; see Adv. Act. 2. The Examiner finds that the "anchor
bar is mounted to the housing by way of an integral flange (Figure 3) which
constitutes a part of the housing (26)." Ans. 4--5.
Appellant asserts that the Examiner's rejection of claims 1, 13, and 17
is erroneous for two reasons. First, Appellant argues that Brooks does not
include an anchor bar mounted to a tool or a housing. See, e.g., Appeal Br.
13-16. We do not agree. As discussed above, the term "anchor bar" as
broadly recited in the claims means "a rigid piece (as of wood or metal)
longer than it is wide that is used as a support or fastening." Here, Brooks'
7
Appeal2017-006551
Application 14/256,984
wall 33 is a rigid piece that is longer than it is wide and that is used as a
support or fastening for elements such as the setup platform 50/54, elongate
member 90, fasteners 94 and the rear unlabeled fastener. Anchor wall 33 is
secured/mounted to housing 26 using rear fastener (unnumbered in Fig. 3).
Thus, Appellant's argument that Brooks does not disclose an anchor bar that
is attached to a tool/housing 26, as recited in claims 1, 13, and 17, is not
persuasive.
Second, Appellant argues that Brooks does not disclose "mounting the
sidewall 33 to the wheel shield 31 -the sidewall 33 is simply an
inseparable portion of the one-piece wheel shield 31." Appeal Br. 16
(emphasis omitted). Appellant's argument, however, mischaracterizes the
rejection which finds that anchor bar 33 is secured/mounted to housing 26
using rear fastener (unnumbered in Fig. 3). Ans. 5. Because Appellant does
not address the rejection as articulated by the Examiner, Appellant does not
identify error by the Examiner.
Because Appellant's two arguments regarding claims 1, 13, and 17 do
not identify error in the Examiner's findings, the rejection of independent
claims 1, 13, and 1 7 is sustained.
Rejections 2-3: Dependent Claims 2, 3, 5-12, 14-16, 18-21
With respect to Rejections 2-3, Appellant asserts that the Final Action
"fails to provide a sufficient basis for concluding that many of the present
claims are anticipated by or otherwise obvious over the Brooks reference."
Appeal Br. 16-18. We agree. The Examiner does not address dependent
claims 2, 3, 5-12, 14--16, and 18-21 or show how Brooks discloses every
8
Appeal2017-006551
Application 14/256,984
limitation in these claims. Thus, the rejections of these claims are not
sustained.
DECISION
For the above reasons, the Examiner's rejection of claims 17 and 19
as anticipated by Pribnow is REVERSED.
The Examiner's rejection of claims 1, 13, and 17 as anticipated by
Brooks is AFFIRMED.
The Examiner's rejection of claims 2, 3, 5-12, 14--16, 18-19, and 21
as anticipated by Brooks is REVERSED.
The Examiner's rejection of claim 20 as unpatentable over Brooks is
REVERSED.
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)(l )(iv).
AFFIRMED-IN-PART
9