Robert Bosch GmbH

Patent Trials and Appeals Board

Jun 22, 2020

15535359 - (D) (P.T.A.B. Jun. 22, 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.
15/535,359 06/12/2017 Jens Blum 2178-1772 4353
10800 7590 06/22/2020
Maginot, Moore & Beck LLP
One Indiana Square, Suite 2200
Indianapolis, IN 46204
EXAMINER
MORGAN, EILEEN P
ART UNIT PAPER NUMBER
3723
MAIL DATE DELIVERY MODE
06/22/2020 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 JENS BLUM, HEIKO ROEHM,
JOERG WELKE, and TOBIAS HERR

Appeal 2019-006594
Application 15/535,359
Technology Center 3700
____________

Before EDWARD A. BROWN, WILLIAM A. CAPP, and
LEE L. STEPINA, Administrative Patent Judges.

Opinion for the Board filed by BROWN, Administrative Patent Judge

Opinion Concurring filed by CAPP, Administrative Patent Judge

BROWN, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–10 and 12–17. We have jurisdiction
under 35 U.S.C. § 6(b).
We reverse.

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.
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CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is representative of the claimed subject
matter:
1. A machine tool system, comprising:
at least one portable machine tool including:
at least one tool receptacle having a tool receiving
face configured for attachment of a machining tool; and
at least one receiving interface;
at least one energy storage apparatus configured to be
removably mounted to the at least one receiving interface of the
at least one portable machine tool,
wherein, at least in a state when the at least one energy
storage apparatus is arranged on the at least one receiving
interface, at least 80% of a volume of the at least one energy
storage apparatus is arranged within a boundary region that is
defined by an outer extent of the tool receiving face extended in
a direction perpendicular to the tool receiving face.
Appeal Br. 19 (Claims App.).

REJECTIONS ON APPEAL
Claims 1–10 and 12–16 are rejected under 35 U.S.C. § 102(a)(2) as
anticipated by Kiss (US 2006/0068689 A1, published Mar. 30, 2006).
Claim 17 is rejected under 35 U.S.C. § 103 as unpatentable over Kiss.

ANALYSIS
Claims 1–10 and 12–16 as anticipated by Kiss
As to claim 1, the Examiner finds that Kiss discloses a grinding
machine tool assembly (grinder 10) comprising a machine tool including a
tool receptacle (vibrating bodies 20/22) having a tool receiving face
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(grinding disk 18), a receiving interface (printed circuit board 33), and a
removable energy storage unit (battery 26) received on the receiving
interface. Final Act. 2. The Examiner explains that the “Kiss device is
formed from two half shells 14, 16 that mate together and are kept together
by screws [0044]. The battery is clearly removable when the shell halves
are separated.” Id. at 4 (citing Kiss ¶ 44).
In contrast, Appellant contends that Kiss does not disclose an energy
storage apparatus that is removably mounted to the receiving interface, as
claimed. Appellant contends that the Examiner’s finding is based on an
unreasonably broad interpretation of “removable” that is contrary to the
interpretation that a person of ordinary skill in the art would reach. Appeal
Br. 5–6. Appellant contends that the plain meaning of “‘removable’ is
‘inclined or given to the action of being moved from a place or position
occupied.” Id. at 7. Appellant also contends that persons skilled in the art of
power tools would understand that a removable energy storage apparatus
refers to one that is easily removed, without having to disassemble the power
tool to charge or replace the energy storage apparatus. Id. Thus, Appellant
contends, “a ‘removable energy storage apparatus’ is an energy storage
apparatus that is removable (inclined or given to the action of being moved
from a place or position occupied) from the power tool without
disassembling the power tool.” Id. at 8.
Appellant contends that the Specification confirms the plain meaning
of a removable energy storage apparatus. Appeal Br. 7. Particularly,
Appellant points out the Specification describes that the energy storage
apparatus is “‘arranged removably on the receiving interface of the portable
machine tool” (citing Spec. 1:26–30, 15:6–11, 15:19–23), and “‘[t]he
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receiving interface preferably includes at least one contact element that
electrically connects to a counter-contact element of the energy storage
apparatus’” (citing id. at 3:31–4:2). Id.
Appellant further contends that the Examiner’s interpretation of a
“removable energy storage apparatus” as encompassing Kiss’s batteries is
unreasonable. Appeal Br. 8. Appellant points out that, in Kiss, “five screws
(40–45) would need to be unscrewed to decouple the upper half shell (16)
from the lower half shell (14), and then the two half-shells (16, 14) would be
separated from one another to expose the batteries.” Id.
Further, Appellant contends, the Examiner has not established that
Kiss’s battery would actually be removable even after separating the housing
shells from each other. Id. at 9. Appellant contends that Kiss does not
explicitly disclose such removability (id.), and the Examiner has not
provided evidence that Kiss’s batteries are necessarily (i.e., inherently)
removable when the housing is disassembled (id. at 10). To the contrary,
Appellant contends, Kiss’s batteries do not appear to be removable. Id.
First, Appellant notes that the batteries are “positionally secured, without
play, and tensed in the upper region of the grip,” and are “‘integrated into
the strength structure of the grip, and the battery increases the dimensional
stability of the grip.’” Id. (citing Kiss ¶ 18). Appellant submits that the
Kiss’s batteries “are actually necessary for the structural integrity of the
grip, and may in fact be fixed to the housing in such a way that they are not
removable even with the housing disassembled.” Id. Second, Appellant
contends that Kiss’s battery 26 is electrically connected, with fixed electrical
connections, to an electronics unit 32 mounted on a printed circuit board 33.
Id. (citing Kiss ¶ 46; see Kiss annotated Figure 1). Appellant contends that
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because Kiss contemplates a battery that is rechargeable via the charging
plug without removing the battery, there is no reason that the battery needs
to be “easily removable.” Id. at 11 (citing Kiss ¶¶ 17, 46).
The Examiner responds that paragraphs 17 and 18 of Kiss do not
describe that the battery is not removable. Ans. 5. The Examiner submits
that “the battery [of Kiss] merely needs to be capable of being removed to
anticipate the claim limitation,” and “[i]t is also reasonable, if not inherent,
that the battery [of Kiss] is capable of being replaced when they cease to
charge so that they can be replaced instead of throwing away the entire
machine.” Id. The Examiner also disagrees that “removable means ‘without
disassembling.’” Id.
Appellant’s position is more persuasive. As for the meaning of
“removably mounted,” “[t]he correct inquiry in giving a claim term its
broadest reasonable interpretation in light of the specification is . . . an
interpretation that corresponds with what and how the inventor describes his
invention in the specification, i.e., an interpretation that is ‘consistent with
the specification.’” In re Smith Int’l, Inc., 871 F.3d 1375, 1382–83 (Fed.
Cir. 2017) (citing In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997)
(citation and internal quotation marks omitted)). Consistent with
Appellant’s definition of “removably mounted,” Appellant’s Specification
and drawings do not disclose that the claimed removable mounting
arrangement of the energy storage apparatus on the receiving interface
requires first disassembling any structure that fully encases the energy
storage apparatus. In this regard, Figures 1 and 3 show the energy storage
apparatus 18a as exposed, and thus, directly accessible externally of the
machine tool assembly 10a (i.e., from the right side of energy storage
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apparatus). This arrangement of the energy storage apparatus 18 allows
access to it without first disassembling the surrounding housing of the
machine tool, as is required by Kiss’s machine tool construction. Further as
to the machine tool system depicted in Appellant’s Figures 1 and 3, the
Specification describes that the energy storage apparatus 18a is “‘arranged
removably on the receiving interface of the portable machine tool.’” Appeal
Br. 7. The arrangement of energy storage apparatus 18a shown in Figures 1
and 3 and described in the Specification is consistent with Appellant’s
position that the energy storage apparatus is removable from the receiving
interface “without dissembling” the machine tool system. Appeal Br. 8.
In contrast to the arrangement of the energy storage apparatus
disclosed by Appellant, to even potentially be able to access battery 16 in
Kiss’s arrangement, the half-shells 14, 16 must first be detached and
separated from each other. See Kiss ¶ 44. Additionally, Appellant’s
disclosed removable mounting arrangement of the energy storage apparatus
on the receiving interface does not involve severing electrical connections.
Even assuming Kiss’s battery 26 would be accessible after the half-shells
have been separated from each other, the Examiner does not establish with
evidence that battery 26 would then be capable of being removed without
having to destroy electrical connections, for example. Construing the phrase
“removably mounted” to encompass such separation that would destroy the
claimed receiving interface and/or energy storage apparatus would be
unreasonable, as it would be inconsistent with the disclosure and not give
appropriate weight to the term “removably.” See, e.g., Stumbo v. Eastman
Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007) (denouncing claim
constructions that render claim language superfluous). The Examiner’s
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finding that battery 26 is removably mounted to the “receiving interface” is
premised on speculation and not on evidence. Thus, the Examiner does not
establish that Kiss discloses all limitations of claim 1 under a proper
construction of “removably mounted.”
Furthermore, the Examiner has not asserted that modifying Kiss by
making battery 26 removably mounted, as claimed, would have been
obvious to a person of ordinary skill in the art.
For the foregoing reasons, we do not sustain the rejection of claim 1,
and dependent claims 2–10 and 12–16, as anticipated by Kiss.

Claim 17 as unpatentable over Kiss
Claim 17 depends from claim 1. The Examiner’s proposed
modification of Kiss to include the limitations recited in claim 17 does not
cure the deficiency in Kiss as to claim 1. Final Act. 3–4. Accordingly, we
do not sustain the rejection of claim 17 as unpatentable over Kiss.

DECISION SUMMARY
In summary:

Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–10, 12–16 102(a)(2) Kiss 1–10, 12–16
17 103 Kiss 17
Overall
Outcome
1–10, 12–17

REVERSED

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

Ex parte JENS BLUM, HEIKO ROEHM,
JOERG WELKE, and TOBIAS HERR

Appeal 2019-006594
Application 15/535,359
Technology Center 3700

OPINION CONCURRING
CAPP, Administrative Patent Judge
I concur in the result reached by the majority. However, I write
separately to offer my own personal comments regarding the battery in a
hand-held tool being “removable.”
The last decade or so has witnessed a sea-change in how hand-held
tools are powered. A generation ago, hand-held tools, in the main, received
electrical power through a wire from a wall plug/socket arrangement or, in
some cases, were powered by small, two-stroke gasoline engines. Now,
however, with recent technological advances in batteries that have paved the
way for hybrid vehicles and electric cars, our economy is seeing more and
more hand-held tools that are powered by batteries. Some of these tools are
for indoor use, such as sanders, drills, and saws, etc. Other hand-held tools
are for outdoor use, such as leaf blowers, hedge clippers, and chain saws,
etc. The batteries that tend to power this new generation of tools generally
slide into a battery receptacle on the exterior housing of the tool and, when
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the battery is discharged, it is slid out of the receptacle and then slid into a
similar receptacle in a battery recharging unit that plugs into an electrical
wall outlet.
This trend has changed the way we think when we think of a
“removable battery.” A generation ago, we might have considered a car
battery, flashlight battery, or smoke alarm battery to be “removable” in the
sense that an enclosure or housing could be opened to gain access to a
storage compartment that holds the battery and then the battery could be
disconnected from battery terminals and then removed from the housing.
Today, however, we might still consider such batteries to be “replaceable,”
but not necessarily “removable” in the way that we now use the term in
everyday parlance. I would add that this is not just a matter of the evolution
of a “term of art” within the glossary of technical terms used by a person of
ordinary skill in the art. Rather, it is matter of how even lay persons think of
and use the term when they go to the hardware store to purchase a hand-held
tool.
In my opinion, the Examiner has hearkened back to a by-gone era to
construe “removable” in an archaic manner that should, in our more modern
times, be considered inappropriate and overbroad. Under the broadest
reasonable interpretation standard that we use during patent prosecution,
claim terms are given their ordinary and customary meaning as would be
understood by one of ordinary skill in the art in the context of the entire
disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed.
Cir. 2007). Notably, it is the use of the words in the context of the written
description and as customarily used by those of skill in the relevant art that
accurately reflects both the ‘ordinary’ and ‘customary’ meaning of the terms
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in the claims.” Ferguson Beauregard/Logic Controls, Div. of Dover Res.,
Inc. v. Mega Sys., LLC, 350 F.3d 1327, 1338 (Fed. Cir. 2003). Thus,
construing the terms of a claim without considering the context in which
those terms appear is not reasonable. Trivascular, Inc. v. Samuels, 812
F.3d 1056, 1062 (Fed. Cir. 2016).
Here, the Examiner construes the word “removable” in a manner that
is inconsistent with how such term is used and understood in the
contemporary culture that surrounds the time of invention, whether by lay
persons or those of ordinary skill. In this, the Examiner commits reversible
error and, for the reasons expressed in the majority decision as augmented
by the foregoing remarks, I am fully in accord with the decision to reverse
the Examiner’s rejection.