Ex Parte Arich

Board of Patent Appeals and Interferences

May 10, 2012

11321999 (B.P.A.I. May. 10, 2012)

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.
11/321,999 12/29/2005 Klaus-Dieter Arich P-US-PR-1176 2228
7590 05/10/2012
Sr. Group Patent Counsel
Black & Decker Corporation
Mail Stop TW199
701 E. Joppa Rd
Towson, MD 21286
EXAMINER
LOW, LINDSAY M
ART UNIT PAPER NUMBER
3721
MAIL DATE DELIVERY MODE
05/10/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KLAUS-DIETER ARICH
____________

Appeal 2010-000366
Application 11/321,999
Technology Center 3700
____________

Before JENNIFER D. BAHR, STEVEN D.A. McCARTHY, and
STEFAN STAICOVICI, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-000366
Application 11/321,999

2
STATEMENT OF THE CASE
Klaus-Dieter Arich (Appellant) appeals under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claims 1, 2, 4-6, 12-19, 21, 22, 24-34, and
36-43 under 35 U.S.C. § 103(a) as unpatentable over Stirm (US
2003/0230424 A1, published Dec. 18, 2003), Vick (US 3,688,848, issued
Sep. 5, 1972), and Katterjohn (US 2,602,427, issued Jul. 8, 1952). We have
jurisdiction over this appeal under 35 U.S.C. § 6.

THE INVENTION
Appellant’s invention relates to “a drive mechanism for a power tool,”
including a hollow piston 558 having a plurality of longitudinal ridges 559
and a plurality of grooves 561 formed between the ridges that retain
lubricant during normal operation of the power tool. Spec. 1, para. [0001];
Spec. 14, para. [0095]; and fig. 24b.
Claim 1 is illustrative of the claimed invention and reads as follows:
1. A drive mechanism for a power tool having a housing and a
motor disposed in the housing and having an output shaft for actuating
a working member of the tool, the drive mechanism comprising:
a substantially cylindrical reciprocating member having a
longitudinal axis, the reciprocating member adapted to be slidably
mounted relative to said housing in a sleeve member, the
reciprocating member adapted to be caused to execute reciprocating
movement relative to said sleeve member in response to rotation of
the output shaft, wherein said reciprocating member comprises a
plurality of respective protrusions formed on a surface thereof, said
plurality of protrusions adapted to slidably engage the sleeve member
to reduce the area of contact between said reciprocating member and
said sleeve member, and wherein said protrusions define a plurality of
recesses that extend along substantially an entire length of said
reciprocating member substantially parallel to the longitudinal axis
and that are adapted to hold lubricant between said reciprocating
member and said sleeve member.
Appeal 2010-000366
Application 11/321,999

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SUMMARY OF DECISION
We REVERSE.

ANALYSIS
Independent claims 1, 19, 31, and 42 require a reciprocating member,
i.e., a piston (as per claim 42), including a plurality of protrusions and
recessed portions, i.e., recesses (as per claim 1), that extend substantially
along the entire length of the reciprocating member. Br., Claims Appendix.
The Examiner found that the combined teachings of Stirm and Vick
disclose all the limitations of independent claims 1, 19, 31, and 42, with the
exception of “protrusions [that] extend along the entire length of the piston
[24] with a plurality of recessed portions disposed between the protrusions.”
Ans. 4. As such, the Examiner turned to Katterjohn to show an outer
member 10 having “protrusions and recessed portions 26 [that] extend along
the entire length of the member 10 parallel to the longitudinal axis for the
purpose of distributing lubricant throughout the entire device.” Id.
In response, Appellant argues that grooves 26 of Katterjohn do not
extend along substantially an entire length of sleeve 10. Pointing to Figure 5
of Katterjohn, Appellant notes that, “grooves 26 only extend along a top
portion of the sleeve 10.” Br. 10.
The Examiner responds that:
Katterjohn is simply relied up[on] to show that it is
well known to configure grooves in such a manner
that allows lubricant to flow from one end of a
bearing to another. In the modified device of
Stirm one skilled in the art would realize that the
grooves would have to extend the entire length in
order to ensure the lubricant is conveyed properly.
Appeal 2010-000366
Application 11/321,999

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Ans. 6.
In other words, as far as we understand the Examiner’s position,
although the Examiner appears to agree that grooves 26 of Katterjohn do not
extend along substantially an entire length of sleeve 10, nonetheless, the
Examiner finds that it would have been obvious for a person of ordinary skill
in the art to modify the grooves of the device of Stirm, Vick, and Katterjohn
to extend the entire length of reciprocating member 24 of Stirm “in order to
ensure the lubricant is conveyed properly.” Id.
At the outset, we agree with Appellant that grooves 26 of Katterjohn
do not extend substantially along an entire length of sleeve 10. See Br. 10.
Grooves 26 of Katterjohn are provided along a portion of the outer surface
of sleeve 10 until they meet shallow splines 11. See Katterjohn, figs. 3 and
4. We further note that in addition to grooves 26, sleeve 10 of Katterjohn
includes lubricant grooves 24 and 25 on its end surfaces. Katterjohn, col. 4,
ll. 44-49 and figs. 3 and 4. As such, in Katterjohn, lubricant from annular
chamber 22 passes through grooves 24, 25, and 26 to be distributed over the
entire outer surface of sleeve 10. Id., col. 4, ll. 55-58.
Hence, the reason proffered by the Examiner to modify the teachings
of Stirm, Vick, and Katterjohn, i.e., “in order to ensure the lubricant is
conveyed properly,” appears to already be performed by the Katterjohn
device. The Examiner has not provided any findings that either Stirm, Vick,
or Katterjohn recognized a problem with the conventional lubrication
technique used in Katterjohn to distribute the lubricant. Without a
persuasive articulated rationale based on rational underpinning for
modifying the reference as proposed, the Examiner's rejection appears to be
the result of hindsight analysis. See In re Kahn, 441 F.3d 977, 988 (Fed.
Appeal 2010-000366
Application 11/321,999

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Cir. 2006) (cited with approval in KSR Int'l Co. v. Teleflex Inc., 550 U.S.
398, 418 (2007)) (“rejections on obviousness grounds cannot be sustained by
mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness”). Therefore, absent hindsight, we fail to see why one having
ordinary skill in the art would have been led to modify the teachings of
Stirm, Vick, and Katterjohn in the manner claimed.
Accordingly, we cannot sustain the rejection of independent claims 1,
19, 31, and 42 and their respective dependent claims 2, 4-6, 12-18, 21, 22,
24-30, 32-34, 36-41 and 43 under 35 U.S.C. § 103(a) as unpatentable over
Stirm, Vick, and Katterjohn. See In re Fine, 837 F.2d 1071, 1076 (Fed. Cir.
1988).

SUMMARY
The decision of the Examiner to reject claims 1, 2, 4-6, 12-19, 21, 22,
24-34, and 36-43 is reversed.

REVERSED

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