Ex Parte Randa

Patent Trial and Appeal Board

Sep 30, 2014

12387471 (P.T.A.B. Sep. 30, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MARK D. RANDA
____________________

Appeal 2012-008072
Application 12/387,471
Technology Center 3700
____________________

Before: CHARLES N. GREENHUT, MICHAEL L. HOELTER,
and MICHAEL L. WOODS, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE

Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1
and 2. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
The claims are directed to a pneumatic impact tool. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A ground piercing tool, comprising:
an elongated tubular tool body, including a front anvil
having a lengthwise bore therein
a striker disposed for reciprocation within an internal
chamber of the body to impart impacts to a rearward impact
surface of the anvil for driving the tool forwardly through the
ground;
Appeal 2012-008072
Application 12/387,471

2
a chisel including a front head and a rearwardly
extending bit shaft slidably disposed in the bore of the anvil,
which chisel is movable between a rearward position at which a
rear end portion of the bit shaft protrudes from the bore of the
anvil to receive an initial impact from the striker, and a forward
position at which the striker impacts on a rear impact surface of
the anvil;
a distributing mechanism that reciprocates the striker in
response to a supply of compressed fluid;
wherein the body and bit shaft cooperate to define a front
chamber that decreases in volume as the chisel moves forward
relative to the body and a rear chamber increases in volume as
the chisel moves forward relative to the body and a rear
chamber, the distributing mechanism including one or more
passages that conduct compressed fluid to the front chamber,
which front chamber is configured to form a gas spring using
such compressed fluid; and
a valve including a passage that permits communication
between the front chamber and the rear chamber when the bit
shaft is in a forwardmost position wherein it contacts a front
stop, which valve permits compressed air to pass from the front
chamber to the rear chamber, negating the gas spring when the
bit shaft is in the fowardmost position.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Roemer
Randa
US 4,886,128
US 7,066,279 B2
Dec. 12, 1989
June 27, 2006

REJECTIONS
Claims 1 and 2 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Roemer and Randa. Ans. 3.

Appeal 2012-008072
Application 12/387,471

3
OPINION
In the Office Action from which this appeal is taken (Final Rej. July
26, 2011) the Examiner found Roemer to disclose “a valve (combination of
bore 8 and end wall 11) including a passage (4) that permits communication
between the front chamber (6) and the rear chamber (7).” In the statement of
rejection in that Office Action, the Examiner relied on Randa only as
teaching a gas spring. Final Rej. 3. However, in responding to Appellant’s
arguments, in both the Final Rejection and the Examiner’s Answer, the
Examiner cites the passage in Randa that describes the leakage of the seals
diminishing the gas (air) spring effect. Final Rej. 4; Ans. 6–7 (emphasizing
“leak”).
Appellant only responds to the Examiner’s finding of a valve
according to claim 1 in Roemer. Appellant correctly argues that the
chambers 6, 7, respectively interpreted by the Examiner as the recited front
and rear chambers, are not in fluidic communication permitted by “bore 8
and end wall 11,” the structure of Roemer interpreted by the Examiner as the
recited “valve.” App. Br. 5–6; Ans. 5. The Examiner does not contest
Appellant’s argument on this point, or reaffirm that Roemer discloses a
valve and a communication arrangement according to claim 1. Ans. 6.
Thus, the Examiner appears to concede that Appellant is correct as to
Roemer’s lack of communication between the identified chambers by a
valve.
The second, or alternate, position advanced by the Examiner appears
to interpret Randa’s seal bearing 48, which “leak[s],” as the recited valve.
Ans. 6–7 (emphasizing “leak”). This seal bearing 48 normally isolates
Appeal 2012-008072
Application 12/387,471

4
forward chamber 781 from the chamber (unenumerated, proximate tapered
transition 31) formed between seal bearings 48 and 49. It is true that when
seal bearing 48 begins to leak, fluid will be communicated between the
chambers as recited in the claims, and described in Appellant’s
Specification. Ans. 6–7 (citing Randa col. 6, ll. 21–32); Spec. 4:1–15.
However, it is not clear from Randa whether seal bearing 48 is designed to
operate in this manner, i.e., to leak, or permit fluid passage, under certain
conditions. Randa instead describes a “special vent” that is added to
counteract the effect of any seal leakage that may occur. Randa col. 6, ll.
21–27. Appellant’s Specification equates vents 26 in cooperation with
bushing 21 and seal 25, which function to create or remove passages
between chambers 13 and 17, to a valve. Spec. 4:1–15; Figs. 2–4. Thus, the
first problem with the position taken by the Examiner in the “Response to
Argument” section is that, from the minimal discussion in Randa about the
leakage or failure of seal bearing 48, it is not clear whether this seal bearing
is reasonably interpreted as the recited “valve,” in light of Appellant’s
Specification.
The next problem with the Examiner’s reliance on Randa is that
Randa does not demonstrate recognition of any benefit being derived from
the leakage of the seals. The leakage that occurs in the embodiments
depicted in Figures 1–6 and 8 of Randa is only described in connection with
the description of the alternate embodiment depicted in Figure 9. Randa,
supra. The embodiment depicted in Figure 9 of Randa has a structure, vent
passage 111, which is open to atmosphere via grooves 112 and gap 113, and

1 Randa uses reference numeral 78 to refer to the chamber forward of
shoulder 46 in Figures 4-7 and also to refer to the chamber rearward of
shoulder 46 in Figure 9.
Appeal 2012-008072
Application 12/387,471

5
is designed specifically to alleviate any excess pressure in the chamber 782
rearward of seal 48 that may occur if seal 48 leaks. Randa col. 6, ll. 21-32.
Appellant, on the other hand, seeks to improve upon Randa’s device (Spec.
3:24) by intentionally allowing pressure to accumulate in chamber 17, to
force bit shaft 11 and head assembly 12 to the forwardmost position. Spec.
4:14–19. The Examiner appears to recognize that passages 111–113 of
Randa are designed to reduce pressure in the rearward chamber (Ans. 7), so
it is unclear why the Examiner believes that it would have been obvious to
provide a leaking seal bearing, i.e., 48, to allow the forward and rearward
passages to communicate, essentially creating the problem that Randa’s vent
passages 111–113 solve.
We do not have the benefit of a complete briefing by Appellant on the
issues raised by the Examiner’s alternate basis for rejecting claims 1 and 2.
However, in light of the Examiner taking a different position in responding
to Appellant’s arguments than was taken in initially rejecting the claims, we
cannot confidently say that the Examiner provided prior notice to the
Appellant of all matters of fact and law asserted prior to an appeal before the
Board. See In re Stephan Co., 660 F. 3d 1341, 1345 (Fed. Cir. 2011). In
light of the weaknesses in the Examiner’s position, as discussed above, even
without the benefit of a complete briefing by Appellant, on the record before
us, the Examiner has not carried the burden of establishing that the subject
matter of claim 1 would have been obvious in view of Roemer and Randa.
In re Oetiker, 977 F. 2d 1443, 1446 (Fed. Cir. 1992) (“[T]he conclusion of
obviousness vel non is based on the preponderance of evidence and
argument in the record.”).

2 See note 1.
Appeal 2012-008072
Application 12/387,471

6
DECISION
The Examiner’s rejection is reversed.

REVERSED

Klh