Hilti AktiengesellschaftDownload PDFPatent Trials and Appeals BoardNov 20, 20202020000907 (P.T.A.B. Nov. 20, 2020) Copy Citation 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. 14/406,480 12/08/2014 Helmut Burger 5068.1149 1062 23280 7590 11/20/2020 Davidson, Davidson & Kappel, LLC 589 8th Avenue 22nd Floor New York, NY 10018 EXAMINER MORAZA, ALEXANDER ART UNIT PAPER NUMBER 2834 NOTIFICATION DATE DELIVERY MODE 11/20/2020 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): ddk@ddkpatent.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte HELMUT BURGER, THOMAS THANNER, and RENE RICHTER ____________ Appeal 2020-000907 Application 14/406,480 Technology Center 2800 ____________ Before JEFFREY B. ROBERTSON, LILAN REN, and JANE E. INGLESE, Administrative Patent Judges. INGLESE, Administrative Patent Judge. DECISION ON APPEAL1 Appellant requests review under 35 U.S.C. § 134(a) of the Examiner’s final rejection of claims 8–17.2 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE and enter a NEW GROUND OF REJECTION under 37 C.F.R. § 41.50(b). 1 We use the word “Appellant” to refer to the “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Hilti Aktiengesellschaft as the real party in interest. Appeal Brief filed July 15, 2019 (“Appeal Br.”) at 2. 2 Final Office Action entered November 16, 2018 (“Final Act.”) at 1. Appeal 2020-000907 Application 14/406,480 2 CLAIMED SUBJECT MATTER Appellant claims a hand machine tool. Appeal Br. 2–3. Claim 8, the sole pending independent claim, illustrates the subject matter on appeal, and reads as follows: 8. A hand machine tool comprising: an integrated tool or a tool holder for accommodating a tool; an electric motor for driving the integrated tool or the tool holder; a guide insertable into a battery pack along a first direction for supplying the electric motor with power; and a contact holder, wherein multiple electrical contacts are situated in the contact holder for contacting counter contacts of the battery pack; at least one strand connected to one of the electrical contacts and having wires having a wave-shaped progression along the first direction adjoining the electrical contact. Appeal Br. 9 (Claims Appendix) (emphasis added). REJECTIONS The Examiner maintains the following rejections in the Examiner’s Answer entered September 19, 2019 (“Ans.”): I. Claims 8 and 10 under 35 U.S.C. § 102(b) as anticipated by Reeb;3 II. Claim 9 under 35 U.S.C. § 103(a) as unpatentable over Reeb in view of Baldock;4 III. Claims 11 and 12 under 35 U.S.C. § 103(a) as unpatentable over Reeb in view of Pfeifer;5 3 Reeb, Jr. et al., US 4,447,749; issued May 8, 1984 (hereinafter “Reeb”). 4 Baldock, US 2002/0002013 A1; published January 3, 2002. 5 Pfeifer et al., US 6,087,815; issued July 11, 2000 (hereinafter “Pfeifer”). Appeal 2020-000907 Application 14/406,480 3 IV. Claim 13 under 35 U.S.C. § 103(a) as unpatentable over Reeb in view of Pfeifer and Ishikawa;6 V. Claim 14 under 35 U.S.C. § 103(a) as unpatentable over Reeb in view of Tsurumaru;7 VI. Claim 15 under 35 U.S.C. § 103(a) as unpatentable over Reeb in view of Chambers;8 and VII. Claims 16 and 17 under 35 U.S.C. § 103(a) as unpatentable over Reeb in view of Roβkamp.9 FACTUAL FINDINGS AND ANALYSIS Upon consideration of the evidence relied upon in this appeal and each of Appellant’s contentions, we procedurally reverse the Examiner’s rejection of claims 8 and 10 under 35 U.S.C. § 102(b), and rejections of claims 11–17 under 35 U.S.C. § 103(a), and we enter a new ground of rejection against claims 8–17 under 35 U.S.C. § 112, second paragraph, for the reasons discussed below. Rejections I–VII Independent claim 8 recites a hand machine tool comprising, in part, a guide insertable into a battery pack along a first direction, multiple electrical contacts situated in a contact holder for contacting counter contacts of the battery pack, and at least one strand connected to one of the electrical contacts 6 Ishikawa, JP 08213087 A; issued August 1996. 7 Tsurumaru et al., US 5,964,601; issued Oct. 12, 1999 (hereinafter “Tsurumaru”). 8 Chambers, US 3,679,958; issued July 25, 1972 (hereinafter “Chambers”). 9 Roβkamp et al., US 2010/0221594 A1; publication September 2, 2010 (hereinafter “Roβkamp”). Appeal 2020-000907 Application 14/406,480 4 and having wires having a wave-shaped progression along the first direction adjoining the electrical contact. When read in light of the description provided in Appellant’s Specification (discussed below), we are unable to ascertain the metes and bounds of “one of the electrical contacts” recited in claim 8. Spec. ¶¶ 23, 24, 25, 26, 27, 33, and 38. We, therefore, cannot determine what is, and what is not, encompassed by this phrase. Consequently, we cannot determine the propriety of the Examiner’s 35 U.S.C. §102(b) rejection of claim 8, and rejections of claims 9–17, which depend from claim 8, under 35 U.S.C. §§ 102(b) and 103(a), because to do so would require considerable speculation as to the metes and bounds of the claimed subject matter, which would be inappropriate. In re Steele, 305 F.2d 859, 862 (CCPA 1962); In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970). Accordingly, we procedurally reverse the Examiner’s rejection of claims 8 and 10 under 35 U.S.C. § 102(b), and rejections of claims 11–17 under 35 U.S.C. § 103(a), and enter a new ground of rejection against these claims under 35 U.S.C. § 112(b), set forth below. We emphasize that this is a technical reversal of the rejections under 35 U.S.C. §§ 102(b) and 103(a), and is not a reversal based on the merits of the rejections. New Rejection Under 35 U.S.C. § 112, second paragraph Claims 8–17 are rejected under 35 U.S.C. § 112, second paragraph as being indefinite for failing to particularly point out and distinctly claim the subject matter that the inventors regard as the invention. The evaluation of a claim with respect to prior art begins with understanding the meaning of the claim. “It is the applicants’ burden to precisely define the invention, not the PTO’s. [35 U.S.C. § 112, second Appeal 2020-000907 Application 14/406,480 5 paragraph] puts the burden of precise claim drafting squarely on the applicant.” In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997). After giving claims a broadest reasonable interpretation consistent with the Specification, if the metes and bounds of the claimed subject matter cannot be determined, the claims are indefinite and should be rejected. In re Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2014). As discussed above, claim 8 recites a hand machine tool comprising, in part, a guide insertable into a battery pack along a first direction, multiple electrical contacts situated in a contact holder for contacting counter contacts of the battery pack, and at least one strand connected to one of the electrical contacts and having wires having a wave-shaped progression along the first direction adjoining the electrical contact. We are unable to ascertain the metes and bounds of “one of the electrical contacts” recited in claim 8 when the plain language of the claim is read in light of the description provided in Appellant’s Specification. The Specification discloses a hand-held power tool (hand machine tool) that includes multiple electrical contacts situated in a contact holder, and a guide into which a battery pack may be inserted. Spec. ¶¶ 1, 3. The Specification discloses that the battery pack includes counter contacts that contact the power tool’s electrical contacts when the battery pack is inserted in the guide. Spec. ¶¶ 3, 21. The Specification describes and illustrates embodiments of Appellant’s invention in which the power tool’s electrical contacts are designated using reference numeral 31 and the battery pack counter contacts are designated using reference numeral 32. The Specification refers to the power tool electrical contacts as “electrical contacts 31” and “contacts 31.” Spec. ¶¶ 23, 24, 25, 26, 27, 33, and 38. The Specification variously refers to Appeal 2020-000907 Application 14/406,480 6 the battery pack counter contacts as “electrical counter contacts 32,” “counter contacts 32,” “electrical contacts 32,” and “contacts 32.” Spec. ¶¶ 23, 25, 26, 27, and 33. In view of the nomenclature used in the Specification to refer to the contacts of Appellant’s power tool and battery pack—and particularly the Specification’s reference to both types of contacts as “electrical contacts”—it is unclear whether the recitation in claim 8 of “one of the electrical contacts” refers to only the earlier recited “multiple electrical contacts” of the hand machine tool, or refers to both the earlier recited electrical contacts of the hand machine tool and the earlier recited counter contacts of the battery pack. Because either interpretation is plausible in view of the plain language of claim 8 when considered in view of the description provided in Appellant’s Specification, one of ordinary skill in the art would be unable to determine the metes and bounds of “one of the electrical contacts” recited in claim 8, rendering the scope of the claim unclear. Ex parte Miyazaki, 89 USPQ 2d 1207, *5 (BPAI 2008) (precedential) (“[I]f a claim is amenable to two or more plausible claim constructions, the USPTO is justified in requiring the applicant to more precisely define the metes and bounds of the claimed invention by holding the claim unpatentable under 35 U.S.C. § 112, second paragraph, as indefinite.”). We, accordingly, reject claim 8, and claims 9–17, which each depend from claim 8, under 35 U.S.C. § 112, second paragraph being indefinite for failing to particularly point out and distinctly claim the subject matter that the inventors regard as the invention. Appeal 2020-000907 Application 14/406,480 7 CONCLUSION Claims 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Ground 8, 10 102(b) Reeb 8, 10 9 103(a) Reeb, Baldock 9 11, 12 103(a) Reeb, Pfeifer 11, 12 13 103(a) Reeb, Pfeifer, Ishikawa 13 14 103(a) Reeb, Tsurumaru 14 15 103(a) Reeb, Chambers 15 16, 17 103(a) Reeb, Roβkamp 16, 17 8–17 112 Indefiniteness 8–17 Overall Outcome 8–17 8–17 This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b), which provides that a “NEW GROUND OF REJECTION pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . Appeal 2020-000907 Application 14/406,480 8 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). REVERSED NEW GROUND OF REJECTION PURSUANT TO 37 C.F.R. § 41.50(b) Copy with citationCopy as parenthetical citation