Ex Parte RandaDownload PDFPatent Trial and Appeal BoardSep 30, 201412387471 (P.T.A.B. Sep. 30, 2014) Copy Citation 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 Copy with citationCopy as parenthetical citation