SD3, LLC

Patent Trials and Appeals Board

Apr 19, 2021

2020005831 (P.T.A.B. Apr. 19, 2021)

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.
14/829,177 08/18/2015 Jeremy J. Burke SDT 378 7497
27630 7590 04/19/2021
SawStop Holding LLC
11555 SW Myslony Street
Tualatin, OR 97062
EXAMINER
RILEY, JONATHAN G
ART UNIT PAPER NUMBER
3724
MAIL DATE DELIVERY MODE
04/19/2021 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 JEREMY J. BURKE, JOHN P. NENADIC, STEPHEN F. GASS,
J. DAVID FULMER, and PAUL H. STASIEWICZ
____________

Appeal 2020-005831
Application 14/829,177
Technology Center 3700
____________

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

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1, 4–11, and 13–17. 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(a). Appellant identifies SawStop Holding, LLC as the
Applicant and real party in interest. Appeal Br. 1.
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Application 14/829,177
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THE INVENTION
Appellant’s invention relates to table saws. Spec. 1. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. A fence for use with a table saw having a substantially
planar work surface and a circular blade extending up through
the work surface, and for use with a work piece, the fence
comprising:
a front end;
a rear end;
an elongate portion extending between the front and rear
ends, where the elongate portion has a face along which the
work piece can slide when the fence is being used with the table
saw and the work piece is being moved to contact the blade,
and where the face is substantially perpendicular to the work
surface when the fence is being used with the table saw; and
a material support shelf between the front and rear ends,
where the material support shelf has an extended position and a
retracted position relative to the face, where the material
support shelf moves between the extended and retracted
positions substantially in a plane, where the material support
shelf has a flat portion to support the work piece against gravity
when the material support shelf is in the extended position and
the fence is being used with the table saw and the work piece is
being moved to contact the blade, where the material support
shelf is substantially perpendicular to the face when the
material support shelf is in the extended position, where the
material support shelf in the extended position is located to
form a corner region with the face so that the work piece can
slide along the face while being supported by the material
support shelf, and where the flat portion of the material support
shelf is coplanar or nearly coplanar with the work surface when
the fence is being used with the table saw.

Appeal 2020-005831
Application 14/829,177
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THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
NAME REFERENCE DATE
Hurd US 5,402,581 Apr. 4, 1995
Williams US 2006/0053992 A1 Mar. 16, 2006
Friend US 2006/0201297 Al Sept. 14, 2006
The following rejections are before us for review:
1. Claims 1, 4–6, and 16 are rejected under 35 U.S.C. § 112(a) as
failing to comply with the written description requirement.
2. Claims 1, 4–6, and 16 are rejected under 35 U.S.C. § 112(b) as
indefinite for failing to particularly point out and distinctly claim the subject
matter which the inventor(s) regards as the invention. 2
3. Claims 1, 5, 7–9, 11, 14, 16, and 17 are rejected under 35 U.S.C.
§ 102(a)(1) as anticipated by Williams.
4. Claims 1, 4, 5, 7–11, 13, 14, and 17 are rejected under 35 U.S.C.
§ 102(a)(1) as anticipated by Friend.
5. Claims 4 and 13 are rejected under 35 U.S.C. § 103 as being
unpatentable over Williams and Hurd.
6. Claims 6 and 15 are rejected under 35 U.S.C. § 103 as being
unpatentable over Williams.
7. Claims 6 and 15 are rejected under 35 U.S.C. § 103 as being
unpatentable over Friend.

2 The Examiner substantially narrowed this ground of rejection in the
Answer by withdrawing certain of the allegations of indefiniteness. Ans. 3.
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Application 14/829,177
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OPINION
Indefiniteness
Claims 1, 4–6, and 16
This appeal presents grounds of rejection under 35 U.S.C. §§ 112(a)
and 112(b). We will consider the grounds under Section 112(b) first. See
Ex parte Moore, 439 F.2d 1232 (CCPA 1971) (explaining that definiteness
should be determined before conducting an analysis under the written
description requirement).
Claim 1 is an independent claim and claims 4–6 and 16 depend
therefrom. Independent claim 1 has a limitation that the material support
shelf is “nearly” coplanar with the work surface. Claims App. The
Examiner states that “nearly coplanar” is a relative term that has no
definition and no firm boundary and is, therefore, indefinite.
The Examiner also expresses concern that it is unclear as to what
angle the shelf extends from the fence. The Examiner’s “angle” concern is
unfounded. Claim 1 explicitly recites that the shelf is substantially
perpendicular to the face of the fence. Claims App.
With respect to the Examiner’s concern about the word “nearly,” we
consider such term to be a word of approximation that, under the facts of this
case, does not render the claim indefinite. See Anchor Wall Sys. Inc. v.
Rockwood Retaining Walls, Inc., 340 F.3d 1298, 1311 (Fed. Cir. 2003)
(explaining that words of approximation are descriptive terms commonly
used in patent claims to avoid a strict numerical boundary to the specified
parameter). For reasons that follow, we also disagree with the Examiner’s
position that the term “nearly” lacks a “firm boundary.” Ans. 8.
In Appellant’s invention, the shelf is attached to the underside of the
fence and is disposed slightly above the table surface when the fence is over
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Application 14/829,177
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the table and the shelf is retracted. Spec. 21, ll. 6–10, Figs. 18–20. The
shelf extends between the extended and retracted positions “substantially in
a plane.” Claims App., claim 1. Shelf 414 is about 1 mm thick. Spec. 21,
ll. 6–7. Shelf 414 does not interfere with table 402 when the fence is moved
over the table, because the plane of the shelf is only “slightly above” or, in
other words, “nearly coplanar” with the plane of the table. Id. at 21, ll. 7–10.
Thus, shelf 414 is relatively thin and is disposed in close proximity between
the fence above and the table beneath. Given the facts before us, we
determine that there is sufficient disclosure to allow a person of ordinary
skill in the art to discern objective boundaries for the limitation. Liberty
Ammunition, Inc. v. United States, 835 F.3d 1388, 1395 (Fed. Cir. 2016).
We do not sustain the Examiner’s Section 112(b) indefiniteness
rejection of claims 1, 4–6, and 16.
Written Description
Claims 1, 4–6, and 16
The Examiner maintains that Appellant’s disclosure lacks written
description support for a shelf that is coplanar with the work surface. Final
Act. 3. The Examiner finds that Appellant’s disclosure indicates that the
support shelf is disposed in a plane that is above the work surface. Id.
In traversing the rejection, Appellant concedes that the Specification
teaches that the plane of the shelf is “slightly above” the plane of the table,
but, nevertheless, argues that there is support for the shelf being “nearly
coplanar” with the table. Appeal Br. 6. However, whether there is written
description support for a shelf that is “nearly” coplanar with the table is
irrelevant to the issue immediately before us, which is whether there is
support for a shelf that “is” coplanar with the table.
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Application 14/829,177
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Appellant’s Figure 1 depicts table saw 10 with fence 12 disposed
above the work surface of the table. Fig. 1. Figure 17 depicts table saw 400
with fence 412 disposed to the right of saw 400, but supported by rails 404
and 406. Fig. 17. Figure 17 depicts support shelf 414 extending from
beneath fence 412. Id. If shelf 414 was truly “coplanar” with table 402, it
would interfere with the fence being transported on rails 404 and 406 to the
relative positions of the fence and table depicted in Figure 1. Figs. 1, 17.
Shelf 414 is secured to the fence by screw 440 that passes through hole 442
in the shelf and threads into screw boss 444 on the bottom of knob 416.
Spec. 19, ll. 18–21, Fig. 21. The Specification provides no teaching about
raising or lowering shelf 414 as it translates back and forth on the rails. In
other words, shelf 414 is above and, therefore not coplanar with, the table in
Figure 1 and the Specification provides no means to lower the shelf to a
different height in Figure 17.
Claim 1 recites that the support shelf is “coplanar” —“or” — “nearly
coplanar” with the work surface of the table. Claims App. “Coplanar”
cannot possibly mean the same thing as “nearly coplanar,” otherwise it
would be entirely superfluous to recite both of them in the disjunctive. We
agree with the Examiner that there is no written description support for a
material support shelf that is “coplanar” with the work surface.
We sustain the Examiner’s Section 112(a) written description
rejection of claims 1, 4–6, and 16.
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Application 14/829,177
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Anticipation of Claims 1, 5, 7–9, 11, 14, 16, and 17
by Williams
Claims 1, 5, and 16
The Examiner finds that Williams discloses each and every element of
claim 1. Final Act. 6–7. We disagree.
Williams discloses a variable angle miter box for use with a miter saw
or a radial arm saw. Williams ¶ 1. Members of the wood working art
understand the difference between miter saws and radial arm saws, on the
one hand, and table saws, on the other hand. With a miter saw or radial arm
saw, the work piece is held in a fixed position and the blade is moved
through the work piece to make a cut. In contrast, with a table saw, the
rotating blade is fixed in position and the work piece is advanced into the
blade to make a cut. A competent and safety conscious wood worker would
never use Williams with a table saw in the manner suggested by the
Examiner.
The Examiner’s effort to read the limitations of the table saw fence
and support shelf of claim 1 onto Williams’ miter box is fanciful and
imaginative, at best. A person of ordinary skill in the art would not, for
personal safety reasons if for nothing else, attempt to use Williams’ miter
box to guide a work piece through the blade of a table saw. In Williams,
elements 10 and 11 are not used as a guiding face to feed stock through a
blade, rather, they hold a work piece, such as crown molding, in a fixed
position so that the work piece may cut by the moving blade of a radial arm
saw or miter saw.
For a prior art reference to anticipate a claim, it must disclose all of
the limitations of the claim, “arranged or combined in the same way as in the
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claim.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1370 (Fed.
Cir. 2008). Williams does not anticipate claim 1.
We do not sustain the Examiner’s Section 102 rejection of claim 1 or
of claims 5 and 16 that depend therefrom.
Claims 7–9, 11, and 14
Claim 7 is an independent claim that is substantially similar in scope
to claim 1. Claims App. Claims 8, 9, 11, and 14 depend from claim 1. Id.
The Examiner’s rejection of these claims suffers from the same infirmity
that was identified above with respect to claim 1. Thus, for essentially the
same reason expressed above in connection with claim 1, we do not sustain
the rejection of claims 7–9, 11, and 14.
Claim 17
Claim 17 is an independent claim that is substantially similar in scope
to claim 1. Claims App. As with claim 1, the Examiner tries to read the
table saw fence and support shelf limitations of claim 17 onto Williams’
miter box. For essentially the same reason expressed above with respect to
claim 1, we do not sustain the Examiner’s rejection of claim 17.
Anticipation of Claims 1, 4, 5, 7–11, 13, 14, and 17
by Friend
Claims 1, 4, and 5
The Examiner finds that Friend discloses each and every element of
claim 1. Final Act. 12–13. In particular, the Examiner finds that the upper
surface of rollers 30 in Friend satisfy the claim limitation directed to a
material support shelf that has a flat portion to support a work piece against
gravity when the work piece is being moved to contact the blade. Id. The
Appeal 2020-005831
Application 14/829,177
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Examiner also finds that the flat portion of the rollers is nearly coplanar with
the work surface of the table saw. Id. at 13.
Friend is directed to a powered feed system for use with a table saw.
Friend, Abstract. Friend features fence 18 which is disposed on the right
side of the table saw blade in Figures 1 and 2. Id. Figs. 1, 2. Friend also
features motorized feed system 10 that is disposed on the left side of the
table saw blade in Figures 1 and 2. Id. ¶¶ 24–36. One component of the
motorized feed system is cylindrically shaped rollers 30, which are oriented
with the flat surfaces of the cylindrical shape in a horizontal position. Id.
Figs. 1, 2. In operation, work piece 12 is advanced into the blade between
fence 18 on the right and feed system 10 on the left. Id. The work piece
rests, via gravity, on surface 16 of the table saw. Id. ¶ 24, Figs. 1, 2. Thus,
in operation, rollers 30 engage work piece 12 on the cylindrical, vertical
sides of the rollers, not on the horizontal, upper sides of the rollers. Id. Feed
system 10 features biasing spring 70 that urges rollers 30 against work
piece 12 so that the work piece slidingly abuts the face of fence 18. Id.
¶¶ 24–26, 32; Fig. 2.
As can be readily seen in Figure 2 of Friend, the upper horizontal
surface of rollers 30 that the Examiner characterizes as a support shelf reside
substantially above the plane of work surface 16. Fig. 2. If work piece 12 is
moved so as to extend between the upper surface of rollers 30 and fence 18,
the bottom side of work piece 12 would not rest, at all, on work surface 16
before contacting blade 14. In the Answer, the Examiner mentions the
possibility of making the vertical, cylindrical sides of rollers 30 only 1 mm
in height. Ans. 27. Even if we were to agree that such is plausible (we do
not), that does not address the issue that Friend’s rollers are designed and
Appeal 2020-005831
Application 14/829,177
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intended to engage the work piece on the vertical, cylindrical sides of the
rollers, not the horizontal, upper surface that the Examiner erroneously
characterizes as a support shelf.
The Examiner errs in characterizing Friend’s motorized feed
system 10 as a fence. In Friend, element 18 is the fence and element 10 is a
means for advancing a work piece toward the blade and urging the work
piece to slidingly abut the true fence. The Examiner also errs in finding the
upper surface of rollers 30 to constitute a material support shelf that supports
a work piece against gravity when the work piece is moved to contact a table
saw blade. In Friend, rollers 30 engage the work piece from the side, not so
as to support the work piece from beneath. The Examiner further errs in
finding that the upper surface of rollers 30 is nearly coplanar with work
surface 16 of the table saw.
A competent and safety conscious wood worker would never operate
Friend in the manner suggested by the Examiner’s attempt to read the claim
language of claim 1 onto Friend. We do not sustain the Examiner’s
Section 102 anticipation rejection of claim 1 by Friend. For the same reason
expressed above, we do sustain the rejection of claims 4 and 5.
Claims 7–11, 13, and 14
Claim 7 is an independent claim that is substantially similar in scope
to claim 1 and claims 8–11, 13, and 14 depend therefrom. Claims App. The
Examiner’s rejection of these claims suffers from the same infirmity that
was identified above with respect to claim 1 and, for that reason, is not
sustained.
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Claim 17
Claim 17 is an independent claim that is substantially similar in scope
to claim 1. Claims App. The Examiner’s rejection of claim 17 suffers from
the same infirmity that was identified above with respect to claim 1 and, for
that reason, is not sustained.
Unpatentability of Claims 4, 6, 13, and 15
Williams, Friend, or Williams and Hurd
The deficiencies we have noted above with respect to Williams and
Friend apply with equal force to the Examiner’s various grounds of rejection
of these claims under Section 103. Specifically with respect to claims 4
and 13, we note that the deficiencies of Williams are not cured by any
teachings in the Hurd reference relied on by the Examiner.
We do not sustain any of the Examiner’s various Section 103
rejections of claims 4, 6, 13, and 15.
CONCLUSION
Claim(s)
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1, 4-6, 16 112 Written Description 1, 4-6, 16
1, 4-6, 16 112 Indefinite 1, 4-6, 16
1, 5, 7-9, 11,
14, 16-17
102 Williams 1, 5, 7-9, 11,
14, 16-17
1, 4, 5, 7-11,
13, 14, 17
102 Friend 1, 4, 5, 7-11,
13, 14, 17
4, 13 103 Williams, Hurd 4, 13
6, 15 103 Williams 6, 15
6, 15 103 Friend 6, 15
Overall
Outcome
1, 4-6, 16 7-11, 13-15,
17

Appeal 2020-005831
Application 14/829,177
12
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED IN PART