Ex Parte Stein et al

Patent Trial and Appeal Board

Jan 23, 2013

11497106 (P.T.A.B. Jan. 23, 2013)

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.
11/497,106 08/01/2006 Gunter Stein A 92 666/Ir 5795
7590 01/24/2013
ROBERT W. BECKER & ASSOCIATES
Suite B
707 Highway 66 East
Tijeras, NM 87059
EXAMINER
NGUYEN, PHONG H
ART UNIT PAPER NUMBER
3724
MAIL DATE DELIVERY MODE
01/24/2013 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 GUNTER STEIN,
EBERHARD BOHNAKER, WOLFGANG WEISSERT, and JOHANNES
MENZEL

Appeal 2010-008350
Application 11/497,106
Technology Center 3700

Before STEVEN D.A. MCCARTHY, MICHAEL L. HOELTER, and
REMY J. VANOPHEM, Administrative Patent Judges.

VANOPHEM, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-008350
Application 11/497,106
 
 
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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 5, 6, 8-11, and 13-15. We have jurisdiction under 35 U.S.C. §
6(b).

CLAIMED SUBJECT MATTER
Claim 1 is illustrative of the subject matter on appeal.
1. A manually guided implement,
comprising:
an engine housing;
a handle housing, wherein said engine
housing and said handle housing are
interconnected by means of anti-vibration means,
wherein said handle housing is provided with a
longitudinal support having, relative to a
conventional operating position of said implement,
a front end face that is disposed transverse to a
longitudinal axis of said longitudinal support, and
wherein said front end face is disposed at an angle
of from 0 to 20° relative to a perpendicular to said
longitudinal axis;
a front tubular handle having a
securement end that rests against and is secured to
said front end face of said longitudinal support;
and
a clamping element, wherein said
securement end of said tubular handle is positively
held between said front end face of said
longitudinal support and said clamping element,
wherein said clamping element is in the form of a
clamping shell that surrounds said securement end
of said tubular handle, wherein at least one
securement screw is provided for effecting a screw
connection of said securement end of said tubular
handle to said front end face of said longitudinal
Appeal 2010-008350
Application 11/497,106

 
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support, wherein said at least one securement
screw is disposed perpendicular to a plane of said
front end face and hence is disposed at least
approximately in the direction of said longitudinal
axis of said longitudinal support, and wherein said
clamping element is provided with a point of
attachment for said anti-vibration means.

REJECTION
Claims 1, 5, 6, 8-11, and 13-15 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over the teachings of Frederickson (US
3,542,095; Iss. Nov. 24, 1970) in view of the teachings of Inaga (US
3,934,344; Iss. Jan. 27, 1976).

ANALYSIS
Regarding claim 1, the Examiner finds that Frederickson teaches the
invention with the exception of the anti-vibration element. Ans. 3-4. The
Examiner further finds that Inaga teaches providing an anti-vibration
element 14 between an engine housing and a longitudinal support. See Fig.
1. Ans. 4.
Therefore, the Examiner concludes it would have been obvious to one
skilled in the art at the time the invention was made to provide an anti-
vibration element between the engine housing and the longitudinal support
in the guided implement of Frederickson for damping the vibration
generated by the engine housing as taught by Inaga. Id.
Appellants contend that as set forth in claim 1, a clamping element 11
is provided, wherein the securement end 8 of the tubular handle 4 is
positively held, i.e., is clamped between the front end face 7 of the
Appeal 2010-008350
Application 11/497,106

 
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longitudinal support of the handle housing 2 and the clamping element,
which is in the form of a clamping shell 11 that supports the securement end
8 of the tubular handle. Thus, Appellants’ clamping shell 11 is a separate
component and is not part of the longitudinal support 5. In addition, the
clamping shell 11, as further defined in claim 1, is provided with a point of
attachment 14 to carry the anti-vibration means. Thus, according to claim 1,
the anti-vibration means 3 is attached to the clamping shell 11 and not to the
longitudinal support 5. App. Br. 7.
The Appellants further contend Frederickson teaches a rigid handle
frame with no anti-vibration elements so as to achieve a rigid handle frame
that ensures good guidance properties. Inaga teaches the use of anti-
vibration elements provided within the handle frame. Therefore, the handle
frame of Inaga is not rigid. Reply Br. 2-3.
Appellants point out that if a person skilled in the art were to combine
the teachings of Frederickson and Inaga, the anti-vibration element 14 of
Inaga would be disposed within the clamping connection, as also recognized
by the Examiner on page 9 of the Examiner’s Answer. However, if one
disposes the anti-vibration element 14 of Inaga in this manner in the rigid
handle frame of Frederickson, then, contrary to the teaching of Frederickson,
an anti-vibration element would be disposed within the rigid handle frame.
This would contradict the teachings of Frederickson, so that there can be no
teaching or suggestion to combine the two references in the manner
proposed. Reply Br. 3-4.
We agree with the Appellants’ reasoning. The Examiner has failed to
explain why a person of ordinary skill in the art would have sought to
combine the teachings of Inaga’s anti-vibration features with Frederickson’s
Appeal 2010-008350
Application 11/497,106

 
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handle means and therefore, the Examiner failed to provide any articulated
reasoning with some rational underpinning to support the rejection of claims
1, 5, 6, 8-11, and 13-15 with the proposed combination of Inaga and
Frederickson. Accordingly, we cannot sustain the rejection of independent
claims 1 and 13 under 35 U.S.C. § 103(a).

DECISION
The rejection of claims 1, 5, 6, 8-11, and 13-15 under 35 U.S.C. §
103(a) is reversed.

REVERSED

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