Michael White et al.

Patent Trials and Appeals Board

Sep 27, 2019

14930983 - (D) (P.T.A.B. Sep. 27, 2019)

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.
14/930,983 11/03/2015 Michael White 1576-1759 4085
10800 7590 09/27/2019
Maginot, Moore & Beck LLP
One Indiana Square, Suite 2200
Indianapolis, IN 46204
EXAMINER
HALL JR, TYRONE VINCENT
ART UNIT PAPER NUMBER
3723
MAIL DATE DELIVERY MODE
09/27/2019 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 MICHAEL WHITE, ROBERT J. KOCHIE, and
ROBERT A. JENSEN
Appeal 2019-002559
Application 14/930,983
Technology Center 3700
Before JENNIFER BAHR, KEVIN TURNER, and BRETT C. MARTIN,
Administrative Patent Judges.
MARTIN, Administrative Patent Judge.
Appeal 2019-002559
Application 14/930,983
2
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant,1 Bosch Automotive
Service Solutions Inc., appeals from the Examiner’s decision to reject claims
1–20. Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
The claims are directed “to automotive tools, and, more particularly,
to tools used to separate a tire from a rim and/or to flip a tire.” Spec. ¶ 2.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A tool for manipulating and changing a tire, the tire having
a bead and a rim, the tool comprising:
a hollow shaft having a first end and a second end;
a weight slidably received within the shaft and configured
to slide through the first end of the shaft along a longitudinal
direction, the weight including a first end, which is always
disposed outside of the shaft, and a second end, which is always
disposed inside the shaft; and
an impact head fixedly attached directly to the second end
of the shaft, the impact head including:
a first portion configured to engage with the bead of
the tire; and
a second portion configured to engage with the rim
of the tire.
REFERENCES
The prior art relied upon by the Examiner is:

1 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as Bosch
Automotive Service Solutions Inc. and Robert Bosch GmbH. Appeal Br. 2.
Appeal 2019-002559
Application 14/930,983
3
Taylor
Gutierrez
Gallo
Al-Taweel
US 2,311,789
US 5,461,900
US 6,308,934 B1
US 9,402,337 B2
Feb. 23, 1943
Oct. 31, 1995
Oct. 30, 2001
Aug. 02, 2016

REJECTIONS
Claims 1, 2, 4, 5, 11–14, and 17–20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Gallo and Gutierrez. Ans. 3.
Claim 3 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gallo, Gutierrez, and Taylor. Ans. 9.
Claims 6–10, 15, and 16 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Gallo, Gutierrez, and Al-Taweel. Ans. 10.
OPINION
We address Appellant’s arguments on the bases of the prior art
references cited in the rejections listed above and Appellant’s arguments
regarding those prior art references. See App. Br. 4–21; Reply Br. 2–6.
Gallo and Gutierrez
Appellant first argues that the Examiner’s rejection is not clear
“exactly what modification and/or substitution would have been obvious to
one of ordinary skill in the art.” Reply Br. 2. Appellant’s own argument,
however, makes clear what the Examiner’s bases are for the rejection. The
Examiner essentially makes two potential, alternative modifications of Gallo
in view of Gutierrez. First, the Examiner states that it “is not necessary to
use the second prying section.” Final Act. 11. Under this modification, the
entire slide mechanism of Gutierrez could be incorporated into Gallo,
including the handle at the end. Alternatively, the Examiner simply uses the
slide aspects of Gutierrez without otherwise modifying Gallo such that “the
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Application 14/930,983
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pry section (20) disclosed by Gallo is capable of being grasped by a user’s
hand.” Id. The Examiner makes clear that either alternative would have
been acceptable. We see no ambiguity in the Examiner’s rejection merely
because two potential modifications are stated in the alternative. Although
the Examiner sets forth two alternatives, we focus primarily on the second
alternative in the analysis that follows.
Appellant next argues that the Examiner failed to provide a reasonable
basis with rational underpinnings for making the proposed modification,
stating “the Examiner’s sole reason for modifying Gallo with the sliding
tube and shaft arrangement of Gutierrez is because they are alleged
alternatives.” Reply Br. 4. We find this to be a sufficient basis upon which
to make the modification. The Examiner merely points out that the slide
configurations in Gallo and Gutierrez are known alternatives and that one of
skill in the art could have easily substituted one for the other. Ans. 14.
Further, the fact that this modification results in “at least one shortcoming as
compared to the unmodified Gallo pry bar” (see Reply Br. 4) is
unpersuasive. There are often trade-offs in any combination. Here, the
absence of a handle provides for a tool that can be used with a slide hammer
on either end. We further note that, in operation, even in an unmodified
state, a user would have to grasp tool end 24 when using the slide impact at
tool end 20 or vice versa. The Examiner’s combination does not radically
change the manner in which Gallo would be used; it merely changes the
configuration of the slide hammer. See Final Act. 3. As such we sustain the
rejection of claim 1 and its dependent claims.
Specifically regarding claim 5, Appellant argues that the Examiner
failed to provide a clear articulation of the reasons for obviousness as well as
stating that the reasoning lacks rational underpinning. App. Br. 9. As
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Application 14/930,983
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Appellant points out, however, the Examiner laid out at least five reasons as
to why the addition of a second slot would have been obvious. See Ans. 3,
App. Br. 9–10. As to the third basis, in which the Examiner finds that
duplicating the slot on both sides rather than on just one side would provide
equal leverage for left- and right-handed users, Appellant merely argues that
“prying a nail is typically not something performed with a single hand.”
App. Br. 10. Appellant offers no evidence in support of this argument and
again, equivocates on the statement against the Examiner’s combination.
Even if it is not typically done, the Examiner has stated a reasonable basis
with rational underpinnings as to why one of skill in the art might have
added a second slot, per claim 5. We are not persuaded of error in the
rejection of claim 5.
As to claims 12–14, Appellant asserts that the Examiner has
misinterpreted the term “approximately.” Reply Br. 4. Appellant asserts
that the Examiner failed to “analyze why one of ordinary skill in the art
would have considered 5.33 to be approximately 7. Id. We disagree. The
Examiner has made a reasonable finding that the two ratios are approximate
and they are not so far apart for the finding to be invalid on its face. It is
then incumbent on Appellant to explain why the two are not close enough to
be approximately the same. The only argument Appellant makes is 5.33 is
nearly twenty-five percent less than 7 without providing any basis as to why,
in this particular application, the two are too far apart to be considered
approximate. Simply stating, as Appellant does, that “[o]ne of ordinary skill
in the art would not reasonably have considered a value that is 25% less than
the reference value to be approximately, almost, or roughly exactly the
reference value,” is insufficient to overcome the Examiner’s finding without
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Application 14/930,983
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more explanation as to why this difference is too great. Reply Br. 5.
Accordingly, we are not persuaded of error.
Appellant also argues that the Examiner’s alternative finding, that the
claimed ratio is nothing more than routine optimization, is improper because
the Examiner did not “provide any variable that modifying the ratio of
wedge width to notch width, wedge width to slot width, or slot width to slot
length would effect a desired result on.” Reply Br. 4 (citing MPEP
§ 2144(II)). This section of the MPEP merely states that the “strongest
rationale” is one where “some advantage or expected beneficial result would
have been produced by their combination.” MPEP § 2144(II). According to
the Examiner’s proposed optimization, one of skill in the art would
understand that, given Gallo’s acknowledgement that the claimed ratio has
an effect on performance, such optimization could be tailored to the specific
task at hand such that an increase from 5.33 to 7 would be within the skill in
this art. Appellant provides no evidence in the form of prior art or
declaration that the Examiner’s proposed optimization is in error.
Accordingly, we sustain the Examiner’s rejection of claims 12–14.
Taylor
As to claim 3, Appellant argues that the Examiner’s combination is in
error because it allegedly “would no longer be suitable for” its intended
purpose. Reply Br. 6. Appellant misses the point of the Examiner’s
combination. The Examiner points out that nothing in Gallo specifies where
“the flatness [of Gallo’s pry bar] is due to the roof engagement as Appellant
claims.” Ans. 17. The Examiner goes on to explain that both Gallo and
Taylor are used to provide leverage for removing an object and that Taylor’s
concave taper “allows for enhanced engagement with an object to be acted
on while providing additional leverage for removing an object.” Id. We
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Application 14/930,983
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note that, again, Appellant provides no evidence supporting the argument
that Taylor would no longer be suitable and even equivocates as to this fact
by stating that Gallo’s “flat surfaces presumably facilitate the first prying
section (18) being wedged between a flat roof and the flashing” and that
modifying “Gallo with the concave shape of the Taylor tool would appear to
make it more difficult to wedge the Gallo prying section under the roof
flashing.” App. Br. 16 (emphasis added). Not only is this unsupported by
evidence, but Appellant cannot even argue with certainty that such a result
would actually occur. Accordingly, we do not find this argument
persuasive.
Al-Taweel
Regarding claim 6 and the claims dependent therefrom, Appellant
argues that the Examiner’s addition of Al-Taweel’s footrest “would be
superfluous, since the horizontal use of the pry bar renders it impossible to
position a users’s foot to apply force at the first pry section.” App. Br. 19.
Even if the footrest would be superfluous in the horizontal direction,
flashing is also installed vertically as well as at other angles besides
horizontal, as noted by the Examiner. Ans. 18. Appellant does not argue
that the footrest would interfere with the operation in the horizontal position,
merely that it would make operation more difficult and it would be
unnecessary because it could not be used to pry horizontal flashing. Any
combination is often a trade off in costs and benefits and we agree with the
Examiner that the inclusion of a footrest could be beneficial, at least when
prying non-horizontal flashing.
Appellant further argues that Al-Taweel is non-analogous art because
it “is clearly not in the field of automotive tools.” App. Br. 20. First,
Appellant defines the related art too narrowly. We note that Appellant does
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Application 14/930,983
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not argue that Gallo is non-analogous art even though it is also not an
automotive tool, but is used to pry flashing. Gallo is appropriately used
because it functions to pry in a similar manner to Appellant’s claimed
device. Similarly, Al-Taweel adds foot loops to provide additional impact.
Ans. 11. This additional impact is the same purpose for which Appellant
adds foot loops to its tool. As such, Al-Taweel, although for a different
application, solves the same problem as Appellant and does so with the same
feature, namely foot loops. Accordingly, we are not persuaded of error in
the Examiner’s combination.
DECISION
For the reasons stated above, all of the Examiner’s rejections are
Affirmed.
DECISION SUMMARY
Claims
Rejected
Basis Affirmed Reversed
1, 2, 4, 5, 11–14, and
17–20
§ 103 over Gallo and
Gutierrez
All None
3 § 103 over Gallo,
Gutierrez, and Taylor
3 None
6–10, 15, and 16 § 103 over Gallo,
Gutierrez, and Al-Taweel
All None
FINALITY AND RESPONSE
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)(1)(iv).
Appeal 2019-002559
Application 14/930,983
9
AFFIRMED