Ex Parte Weiland et al

Patent Trial and Appeal Board

Jun 29, 2018

14470792 (P.T.A.B. Jun. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/470,792 08/27/2014 Christopher Weiland
34018 7590 07/03/2018
Greenberg Traurig, LLP
77 W. Wacker Drive
Suite 3100
CHICAGO, IL 60601-1732
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.
078873.289US2 5084
EXAMINER
RILEY, JONATHAN G
ART UNIT PAPER NUMBER
3724
NOTIFICATION DATE DELIVERY MODE
07 /03/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
chiipmail@gtlaw.com
escobedot@gtlaw.com
j arosikg@gtlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER WEILAND and
PATRICK SEAN GALLAGHER
Appeal2017-005234
Application 14/470,792
Technology Center 3700
Before BRETT C. MARTIN, ANNETTE R. REIMERS, and
PAUL J. KORNICZKY, Administrative Patent Judges.
KORNICZKY, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2017-005234
Application 14/470,792
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 March 23,
2016 ("Final Act."), rejecting claims 1, 2, 4--9, 11-15, and 17-23.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
THE CLAIMED SUBJECT MATTER
The claims are directed to a cutting guide for a saw. Claims 1, 8, and
14 are the independent claims on appeal. Claim 1, reproduced below with
disputed limitations italicized for emphasis, is illustrative of the claimed
subject matter:
1. A cutting guide system for a saw, the guide system
compnsmg:
a guide body including a follower path and an outer
surface;
a plurality of indicia on the outer surface of the guide
body, the plurality of indicia including spaced apart arcuate
markings, each arcuate marking representing one substrate of a
plurality of different substrates;
a follower repositionable with respect to the guide body
along the follower path and into alignment with at least one of
the plurality of indicia, the follower including an arcuate
segment having a first diameter; and
a lock operatively coupled to the follower, the lock being
repositionable between a locked position and an unlocked
Robert Bosch GmbH ("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 23, 2016 ("Appeal Br."), at 2.
2 Claims 3, 10, and 16 are cancelled. Final Act. 2.
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Application 14/470,792
position, the locked position operative to clamp the follower to
the outer surface of the guide body to retain the guide body in a
fixed position with respect to the follower, and the unlocked
position operative to allow a relative position of the guide body
with respect to the follower to be changed,
wherein the spaced apart arcuate markings each
approximate an arc of the arcuate segment, each arcuate
marking including a first arc portion extending from a first
outer edge of the guide body to a first edge of the through
opening and a second arc portion extending from a second
outer edge of the guide body to a second edge of the through
opening, and
wherein a second diameter of each of the spaced apart
arcuate markings corresponds to the first diameter such that, in
the locked position, the arcuate segment is aligned with the first
and second arc portions so as to form a continuous arc.
REFERENCES
In rejecting the claims on appeal, the Examiner relied upon the
following prior art:
Lytle
Techter
us 944,799
us 5,010,651
Dec. 28, 1909
Apr. 30, 1991
REJECTIONS
The Examiner made the following rejections:
1. Claims 1, 2, 4--9, 11-15, and 17-19 stand rejected under 35 U.S.C.
§ 112, second paragraph, as being indefinite.
2. Claims 1, 2, 4--9, 11-15, and 17-19 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Techter and Lytle.
Appellant seeks our review of these rejections.
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Application 14/470,792
DISCUSSION
Rejection 1: Claims 1, 2, 4-9, 11-15, and 17-19 as Being Indefinite
The Examiner states that, in independent claims 1, 8, and 14, the
usage of the "follower" and "lock" is unclear. Final Act. 7; see Ans. 4
(explaining that, in view of the Appeal Brief, "[i]t is unclear how lock is
operatively coupled to the follower (which is part of 'the lock')"). In view
of Appellant's clarification that locking lever 26 (not lock 26) includes lever
handle 42 (i.e., the follower) and bolt 44 (i.e., the lock) (Reply Brief, dated
February 7, 2017 ("Reply Br."), at 2-3), the rejection is not sustained.
Claim 1
Rejection 2: Claims 1, 2, 4-9, 11-15, and 17-19
as Unpatentable Over Techter and Lytle
The Examiner finds that Techter discloses all of the limitations of
claim 1 except that Techter's indicia 50 are straight markings, not arcuate
markings, as recited in the claim. However, the Examiner finds that
Lytle teaches that it is old and well known to have spaced apart
arcuate markings (see annotated Fig. 4) each approximate an
arc of the arcuate segment (see annotated Fig. 4), each arcuate
marking including a first arc portion extending from a first
outer edge of the guide body to a first edge of the through
opening and a second arc portion extending from a second outer
edge of the guide body to a second edge of the through opening
(see annotated Fig. 4), and wherein a second diameter of each
of the spaced apart arcuate markings corresponds to the first
diameter such that, the arcuate segment is aligned with the first
and second arc portions so as to form a continuous arc (see Fig.
4).
Final Act. 10. The Examiner's annotated Figure 4 of Lytle is presented
below:
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Application 14/470,792
~'=3~
<:;:'
In Figure 4, the Examiner illustrates the spaced-apart arcuate marking.
The Examiner determines that "Lytle teaches that it is old and well
known to have spaced apart arcuate markings" and it would have been
obvious to one of ordinary skill in the art to "change the markings of Techter
to any shape, including curved, to correspond to any shape of the
'follower.'" Final Act. 12, 25-26. The Examiner reasons that (id.):
what matters is that there is an alignment between the follower
and the position on the guide body. If the follower was oval, then
the corresponding markings would be oval. If the follower had
two angled surfaces, then the corresponding markings would be
two angled surfaces. If the follower was a star shaped, then the
markings would be star shaped. Here, changing the markings
from straight to match a straight line on a follower to a curve to
match curved lines on a follower is a simple substitution of one
known element for another to obtain predictable results.
Appellant asserts that the Examiner's rejection is erroneous because
"Techter's indicia and Lytle's curved lines are not substitutes." Appeal Br.
13; see id. at 13-17. Appellant asserts that "Lytle ... teaches a measuring
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Application 14/470,792
device for a carpenter to determine the length and bevel of rafters without a
square or bevel." Id. at 14. According to Appellant, because "all of the
graduations (F, G, G', I, J, J1, J2) that are actually used to align with one
another in Lytle are linear, not curved," "the relevant teachings of Lytle are
to align two straight graduations with one another." Id. at 15. Appellant
argues that the "curved lines at the outside of the window (C3), which the
Examiner alleges correspond to the claimed arcuate markings (see Office
Action at page 11 ), are not actually used to align with the curved line on the
plate (A)," and, "[i]nstead, these lines are always positioned along the line
on the plate (A) so that the user can determine which line to read off for a
given measurement." Id. at 15 (citing Lytle, 1:89-105, FIG. 4). Appellant
also argues that "Lytle's curved lines do not function the same as Techter's
indicia" which "indicate the depth of cut of the saw." Id. at 15 (citing
Techter 4:56-62). Finally, Appellant argues that the Examiner's "proposed
substitution would not have been predictable" because "the Techter straight
line indicia and the Lytle curved lines are not known elements with known
equivalent functions, [and] one of ordinary skill in the art could not have
predictably substituted one for the other." Id. at 16.
Appellant's arguments to "incorporate" Lytle' s rafter length/beveling
structures and functions into Techter's saw are not persuasive. "The test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference .... [r]ather,
the test is what the combined teaching of those references would have
suggested to those of ordinary skill in the art." In re Keller, 642 F.2d 413,
425 (CCPA 1981); see also In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir.
1983) ("[I]t is not necessary that the inventions of the references be
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Application 14/470,792
physically combinable to render obvious the invention under review."); KSR
Int'! Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) ("[I]f a technique has
been used to improve one device, and a person of ordinary skill in the art
would recognize that it would improve similar devices in the same way,
using the technique is obvious unless its actual application is beyond his or
her skill.").
Here, Appellant has mischaracterized the Examiner's rejection. The
Examiner does not propose bodily incorporating Lytle's rafter
length/beveling structures and functions into Techter. Instead, the Examiner
determines that "Lytle teaches that it is old and well known to have spaced
apart arcuate markings" and proposes to use the arcuate shape of Lytle's
markings. As the Examiner explains, it would have been obvious to one of
ordinary skill in the art to "change the markings of Techter to any shape,
including curved, to correspond to any shape of the 'follower."' Final Act.
12, 25-26. The Examiner reasons that "what matters is that there is an
alignment between the follower and the position on the guide body" and
"changing the markings from straight to match a straight line on a follower
to a curve to match curved lines on a follower is a simple substitution of one
known element for another to obtain predictable results." Id. Appellant
does not explain why one skilled in the art would not have known to modify
the marking's shape to correspond to the follower's arcuate shape. Because
Appellant does not address the rejection as articulated by the Examiner,
Appellant does not identify error.
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Claims 2 and 4--7
Claims 2 and 4--7 depend from claim 1. Appellant does not present
additional arguments addressing specifically the rejection of claims 2 and 4--
7. Appeal Br. 1 7. Thus, we sustain the rejection of claims 2 and 4--7 for the
reasons set forth above for claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
Claims 8, 9, 11-15, and 17-19
Appellant's arguments relating to the rejections of independent claims
8 and 14 are the same as those presented for claim 1. Appeal Br. 17-19.
We sustain the rejection of claims 8 and 14 for the reasons set forth above
for claim 1.
Appellant does not present additional arguments addressing
specifically the rejection of dependent claims 9, 11-13, 15, and 17-19. Id.
Thus, we sustain the rejection of these claims for the reasons set forth above
for claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
DECISION
For the above reasons, the Examiner's rejection of claims 1, 2, 4--9,
11-15, and 17-19 under 35 U.S.C. § 112, second paragraph, is REVERSED.
The Examiner's rejection of claims 1, 2, 4--9, 11-15, and 17-19 under
35 U.S.C. § 103(a) as being unpatentable over Techter and Lytle 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)(l )(iv).
AFFIRMED
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