Padget, Bradley

Patent Trials and Appeals Board

Jan 28, 2020

14982319 - (D) (P.T.A.B. Jan. 28, 2020)

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.
14/982,319 12/29/2015 Bradley Padget 1576-1782 9703
10800 7590 01/28/2020
Maginot, Moore & Beck LLP
One Indiana Square, Suite 2200
Indianapolis, IN 46204
EXAMINER
PETERSON, KENNETH E
ART UNIT PAPER NUMBER
3724
MAIL DATE DELIVERY MODE
01/28/2020 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 BRADLEY PADGET
Appeal 2019-004608
Application 14/982,319
Technology Center 3700
Before BIBHU R. MOHANTY, MICHAEL C. ASTORINO, and
PHILIP J. HOFFMANN, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–8 and 10–13. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Robert
Bosch GmbH. Appeal Br. 2.
Appeal 2019-004608
Application 14/982,319

2
According to Appellant, “[t]he disclosure relates to hand-held power
tools, and particularly to tools having an oscillating cutting blade.” Spec.
¶ 2. Below, we reproduce claim 1 as illustrative of the appealed claims:
1. A foot for supporting a hand-held power tool on a
workpiece, the power tool having a blade operably driven at an
output portion at a working end of the tool, the foot comprising:
a plate defining a recess configured to receive and
support at least the working end of the power tool with the
blade positioned to contact the workpiece;
a plurality of elements supported by the plate, each of the
plurality of elements configured for rolling or sliding contact
with the surface of the workpiece for movement of the foot
along the surface of the workpiece,
wherein said recess is configured to retain at least the
working end of the power tool within said recess when the foot
is moved along the surface of the workpiece with the blade
positioned in contact with the workpiece.
REJECTIONS AND PRIOR ART
The Examiner rejects the claims as follows:2
I. Claims 7, 8, 12, and 13 under 35 U.S.C. § 112(a) as failing to
comply with the written-description requirement;
II. Claim 10 under 35 U.S.C. § 112(b) as indefinite;
III. Claims 1 and 3–6 under 35 U.S.C. § 102(a)(1) as anticipated by
Moreno (US 2013/0081841 A1, pub. Apr. 4, 2013);
IV. Claim 11 under 35 U.S.C. § 103 as unpatentable over Moreno
and Ende (US 7,958,641 B1, iss. June 14, 2011);

2 In the Answer, the Examiner withdraws a number of rejections from the
Final Office Action. See, e.g., Answer 14.
Appeal 2019-004608
Application 14/982,319

3
V. Claims 12 and 13 under 35 U.S.C. § 103 as unpatentable over
Moreno and Heinlen et al. (US 2003/0183303 A1, pub. Oct. 2,
2003) (“Heinlen”);
VI. Claims 1–4, 7, and 8 under 35 U.S.C. § 103 as unpatentable
over Clowers (US 4,628,605, iss. Dec. 16, 1986) and Kalb
(US 9,533,430 B1, iss. Jan. 3, 2017); and
VII. Claims 1–6 under 35 U.S.C. § 103 as unpatentable over Moreno
and Kalb.
ANALYSIS
Rejection I—Written-description rejection
For the reasons set forth below, we do not sustain the Examiner’s
written-description rejection of claims 7, 8, 12, and 13.
The Examiner rejects claims 7 and 8 based on the following:
Claims 7 and 8 recite “a blade guide feature . . . arranged
to support the planar surface of the blade,” and that said blade
guide is adjustable. However, this . . . is not shown in the
drawings. As seen in [F]igures 2 and 4, elements 27 and 28 do
not appear to guide a planar surface of the blade. It is also not
well described how it would be adjusted.
Answer 4. We agree with Appellant that at least paragraph 18 of the
Specification, as originally filed, provides written-description support for the
quoted claim recitation. Appeal Br. 6; see Spec. ¶ 18 (“Returning to
F[igures] 2 and 4, . . . hub 27 that supports one of . . . rollers 30 may be
modified to include . . . blade guide feature 28. In one embodiment, . . .
feature 28 may be a roller or similar bearing surface that bears against the
working end of . . . blade B to help prevent the blade [from] bending during
a cut.”). We also agree with Appellant that neither claim recites that the
Appeal 2019-004608
Application 14/982,319

4
blade guide is adjustable. Appeal Br. 5. Thus, we do not sustain the
Examiner’s written-description rejection of claims 7 and 8.
The Examiner rejects claims 12 and 13 based on the following:
Claims 12 and 13 recite “a recess insert,” or “a plurality
of recess inserts.” However, there is no description of how this
insert is attached to the plate. How does it “insert,” especially
since the recess goes to the edge of the plate?
Answer 4. However, we agree with Appellant that at least paragraph 20 of
the Specification, as originally filed, provides written description support for
the claim recitations. Appeal Br. 9–10; see Spec. ¶ 20 (“The foot may be
configured to accommodate a wide range of oscillating tools. In one
aspect, . . . recess 24 may be in the form of . . . recess insert 24’ that is
calibrated to a particular tool. . . . [R]ecess insert 24’ fits into a standard cut-
out (not shown) in . . . plate 22, while the surface of the recess is shaped
according to the tool being used. The foot may thus be provided with
several recess inserts 24’ for use with several different tools.”). Thus, we do
not sustain the Examiner’s written-description rejection of claims 12 and 13.

Rejection II—Indefiniteness rejection
The Examiner rejects claim 10 as indefinite, because “[c]laim 10
depends from a cancelled claim.” Answer 5. Appellant does not argue that
the Examiner errs. See generally Appeal Br. Thus, we summarily sustain
claim 10’s indefiniteness rejection.

Rejection III—Anticipation rejection of claims 1 and 3–6, based on
Moreno
For the reasons discussed below, the Examiner does not support
adequately that Moreno discloses all of independent claim 1’s recitations.
Appeal 2019-004608
Application 14/982,319

5
Thus, we do not sustain the Examiner’s anticipation rejection of claim 1, or
of claims 3–6 that depend from claim 1.
Claim 1 recites, in relevant part, “a plate defining a recess configured
to receive and support at least the working end of the power tool with the
blade positioned to contact the workpiece.” Appeal Br., Claims App.
Consistent with Appellant’s argument (Appeal Br. 12–19), the Examiner
does not support adequately that Moreno’s recess supports the tool’s
working end (Answer 17–19). We acknowledge the Examiner’s citation to
Moreno’s Figure 3, which appears to show “Moreno’s ‘working end’ . . .
sitting in the recess.” Answer 18. However, we agree with Appellant that
there is not enough in the drawings of Moreno to establish
unequivocally that the area around the pinion gear is supported
by the unlabeled recess in the plate. For example, Fig[ure] 32
of Moreno clearly leaves open the possibility of a clearance in
the area between the working end of the tool and the recess
in . . . foot (456).
Reply Br. 7 (citation to Appeal Brief omitted); see also Appeal Br. 17 (“As
can be seen in [Moreno’s] Fig[ure] 32, even when the power tool is in its
lowest position such that . . . clamping component (590) is at the
bottommost point of . . . slot (498), the ‘recess’ does not appear to support
any portion of . . . foot (456).”). Further, the Examiner does not rely on
anything in Moreno describing that “the ‘recess’ supports, or even so much
as contacts the bottom contour of . . . pinion gear (256).” Reply Br. 7. Thus,
we determine that the Examiner relies on conjecture to determine that the
recess supports the tool’s working end, which is insufficient to support an
anticipation rejection. Therefore, the Examiner fails to adequately support
the finding that Moreno discloses all of independent claim 1’s recitations.
Consequently, we do not sustain this rejection of claims 1 and 3–6.
Appeal 2019-004608
Application 14/982,319

6
Rejections IV and V—Obviousness rejections of claims 11–13, based
on Moreno and either Ende or Heinlen
Claims 11–13 depend from claim 1. The Examiner does not rely on
Ende or Heinlen to disclose anything that would remedy the above-discussed
deficiency in claim 1’s rejection as anticipated by Moreno. Accordingly, we
do not sustain the Examiner’s obviousness rejections of claims 11–13.

Rejection VI—Obviousness rejection of claims 1–4, 7, and 8, based on
Clowers and Kalb
For the reasons discussed below, the Examiner does not support
adequately that Clowers discloses certain of independent claim 1’s
recitation. Consequently, we do not sustain the Examiner’s obviousness
rejection of claim 1, or of claims 2–4, 7, and 8 that depend from claim 1.
As set forth above, claim 1 recites, in relevant part, “a plate defining a
recess configured to receive and support at least the working end of the
power tool with the blade positioned to contact the workpiece.” Appeal Br.,
Claims App. According to the Examiner, everything below the raised edge
of Clowers’s base 21 is the claimed recess defined in the plate. See, e.g.,
Answer 25. According to Appellant, such an arrangement may not properly
be interpreted as disclosing a recess defined in a plate. See, e.g., Appeal
Br. 44–47.
Thus, the question is whether the Examiner adequately supports that
Clowers’s base 21 discloses the claimed plate with a recess. See, e.g.,
Answer 25. We determine that the Examiner does not. The Examiner does
not point to anything in the record supporting adequately that base 21 is
recognized as a plate with a recess. Instead, inasmuch as almost all of
Clowers’s base 21 is a flat plate that is below the raised edge, it appears to us
Appeal 2019-004608
Application 14/982,319

7
that base 21 is a plate with a raised edge rather than a plate that defines a
recess. See Appeal Br. 44–47. Accordingly, we do not sustain this
obviousness rejections of independent claim 1 and dependent claims 2–4, 7,
and 8.

Rejection VII—Obviousness rejection of claims 1–6, based on Moreno
and Kalb
In this rejection, the Examiner appears to rely on Moreno to disclose
the claimed plate defining a recess configured to receive and support a
power tool’s working end. See, e.g., Answer 13. Thus, we do not sustain
this obviousness rejection of claims 1–6 for substantially the same reasons
that we do not sustain the anticipation rejection based on Moreno, discussed
supra.
CONCLUSION
We REVERSE the Examiner’s written description, anticipation, and
obviousness rejections of claims 1–8 and 11–13.
We AFFIRM the Examiner’s indefiniteness rejection of claim 10.

Appeal 2019-004608
Application 14/982,319

8
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
7, 8, 12, 13 112(a) Written description 7, 8, 12, 13
10 112(b) Indefiniteness 10
1, 3–6 102(a)(1) Moreno 1, 3–6
11 103 Moreno, Ende 11
12, 13 103 Moreno, Heinlen 12, 13
1–4, 7, 8, 103 Clowers, Kalb 1–4, 7, 8
1–6 103 Moreno, Kalb 1–6
Overall
Outcome
10 1–8, 11–13
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED IN PART