Ex Parte Ashfield

Board of Patent Appeals and Interferences

Mar 26, 2012

10674852 (B.P.A.I. Mar. 26, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte LEA ANTONY ASHFIELD
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Appeal 2009-012859
Application 10/674,852
Technology Center 3700
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Before JOHN C. KERINS, STEVEN D.A. McCARTHY and
MICHAEL C. ASTORINO, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL

The Appellant1 appeals under 35 U.S.C. § 134 from the Examiner’s 1
final decision rejecting claims 1-10 and 12-20. The Examiner rejects: 2
claims 1, 4-6, 10, 14-16 and 20 under 35 U.S.C. § 102(b) 3
as being anticipated by Juratovac (US D408,246, issued Apr. 4
20, 1999);5

1 The Appellant identifies the real party in interest as Homelite
Technologies, Limited of Hamilton, Bermuda.
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claims 2, 3, 12 and 13 under 35 U.S.C. § 103(a) as being 1
unpatentable over Juratovac and Gassen (US 5,016,355, issued 2
May 21, 1991); 3
claims 9 and 19 under 35 U.S.C. § 103(a) as being 4
unpatentable over Juratovac and Anthony (US 5,213,913, 5
issued May 25, 1993); and 6
claims 7, 8, 17 and 18 as being unpatentable over 7
Juratovac. 8
Claim 11 is cancelled. We have jurisdiction under 35 U.S.C. § 6(b). 9
We REVERSE. 10
Claims 1, 6, 10 and 20 are independent. Claim 1 recites: 11
1. A battery operated chain saw 12
comprising: 13
a frame comprising a housing and a chain 14
bar, wherein the frame forms a front handle and a 15
rear handle; 16
an electric motor connected to the frame; 17
and 18
a battery coupled to the electric motor; 19
wherein the battery is located at a position 20
on the frame proximate the front handle; and 21
wherein the battery is located on the frame to 22
provide a front-to-rear chain saw center-of-gravity 23
located at least partially beneath or at least 24
partially in front of the front handle. 25
Claim 6 recites a battery operated chain saw including a battery 26
“located at a position on the frame proximate the front handle to provide a 27
front-to-rear chain saw center-of-gravity located proximate the front 28
handle.” Each of claims 10 and 20 recites a chain saw including a power 29
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pack “removably connected to the frame proximate a lateral side of the 1
frame.” 2
Juratovac is a design patent depicting a housing for a battery operated 3
chain saw. (Juratovac, claim). Juratovac’s design as depicted in Figures 1, 4 4
and 6 includes an oval shaped member projecting laterally from the housing 5
immediately behind a vented housing portion. 6
Gassen describes a chain saw having a plastic housing. (Gassen, col. 7
3, ll. 6-8 and 17-20). 8
Anthony describes a cordless electrical power tool 10 provided with a 9
battery pack 30. The battery pack 30 has a generally cup-shaped body 31 10
which is generally pentagonal in cross-section formed integrally with an 11
upwardly projecting post 34. (Anthony, col. 3, ll. 4-7 and 56-64). The 12
battery pack 30 is secured to a handle portion 15 of the tool 10 by latching 13
members 40. (Anthony, col. 4, ll. 15-18). 14
The Examiner finds, and the Appellant concedes, that Juratovac’s 15
battery operated chain saw includes a battery. (Ans. 3; Br. 5). The 16
Examiner additionally finds that the “battery and power pack is the oval 17
shaped member shown in the figures [of Juratovac].” (Ans. 3). The 18
Appellant contests this finding, arguing that the structure forming 19
Juratovac’s battery “is unknown because it is not shown and, of course, not 20
described.” (Br. 5). Since the structure forming the battery and power pack 21
is not shown, the position of the battery and power pack relative to the frame 22
or the front handle cannot be ascertained. 23
The subject matter of a claim is anticipated only if “a single prior art 24
reference discloses each and every limitation of the claimed invention. . . . 25
Moreover, a prior art reference may anticipate without expressly disclosing a 26
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feature of the claimed invention if that missing characteristic is necessarily 1
present, or inherent, in the single anticipating reference.” Schering Corp. v. 2
Geneva Pharmas., Inc., 339 F.3d 1373, 1377 (Fed. Cir. 2003) (citations 3
omitted). A prior art reference does not inherently describe a structural 4
element merely because the structure expressly described in the reference 5
probably includes the element. In re Robertson, 169 F.3d 743, 745 (Fed. 6
Cir. 1999). 7
Under limited circumstances, an examiner may require an applicant to 8
produce evidence rebutting a finding of inherency. For example: 9
where the Patent [and Trademark] Office has 10
reason to believe that a functional limitation 11
asserted to be critical for establishing novelty in 12
the claimed subject matter may, in fact, be an 13
inherent characteristic of the prior art, it possesses 14
the authority to require the applicant to prove that 15
the subject matter shown to be in the prior art does 16
not possess the characteristic relied on. 17
In re Best, 562 F.2d 1252, 1254-55 (CCPA 1977) (quoting In re Swinehart, 18
439 F.2d 210, 212-213 (CCPA 1971)). Alternatively, where claimed and 19
prior art products are identical or substantially identical, 20
the [Patent and Trademark Office] can require an 21
applicant to prove that the prior art products do not 22
necessarily or inherently possess the characteristics 23
of [the] claimed product. Whether the rejection is 24
based on ‘inherency’ under 35 U.S.C. § 102, on 25
‘prima facie obviousness’ under 35 U.S.C. § 103, 26
jointly or alternatively, the burden of proof is the 27
same, and its fairness is evidenced by the PTO’s 28
inability to manufacture products or to obtain and 29
compare prior art products. 30
Id., 562 F.2d 1252, 1255 (CCPA 1977)(citations omitted). Articles or 31
compositions of matter fabricated from the same starting materials using the 32
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same processes of manufacture may be presumed, absent evidence to the 1
contrary, to be identical in structure and properties. In re Spada, 911 F.2d 2
705, 708 (Fed. Cir. 1990). 3
The oval shaped member probably is a battery and power pack. 4
Nevertheless, the recitations of the battery or power pack, and of their 5
locations relative to a frame or front handle, are not purely functional 6
limitations. Juratovac does not describe the internal structure of the oval 7
shaped member. Neither does Juratovac describe the process by which the 8
oval shaped structure was fabricated. Since the internal structure of the oval 9
shaped member or the method by which the member was fabricated are 10
unknown, the oval shaped member is not necessarily identical or 11
substantially identical either to a battery in general or specifically to the 12
battery pack 30 described in Anthony. 13
The Examiner reasons that: 14
One of ordinary skill in the art would have 15
interpreted the oval-shaped member shown in the 16
figures . . . as a Battery/Power Pack because the 17
size of the oval-shaped member is proportional to 18
the size of the battery needed to operate other 19
battery-powered tools, such as the battery/power 20
pack 30 in the Anthony, III reference. 21
(Ans. 5). This reasoning is not supported by a preponderance of the 22
evidence. 23
Any relationship which might be derived by comparing the size of the 24
battery 30 as depicted in Figure 1 of Anthony with the size of the oval 25
shaped member in Figures 1, 4 and 6 of Juratovac is of limited probative 26
value, since neither of the drawing figures is presumed to have been drawn 27
to a scale. See Hockerson-Halberstadt, Inc. v. Avia Group Int’l, Inc., 222 28
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F.3d 951, 956 (Fed. Cir. 2000). Even were we to assume for purposes of 1
this appeal only that a proportional size of Anthony’s battery 30 were similar 2
to a proportional size of the Juratovac’s oval shaped member, the capacity of 3
a structural element to function as a battery or power pack is not dictated by 4
its proportional size. In other words, all structures which are roughly the 5
same size as a battery are not batteries. While we believe that the oval 6
shaped structure depicted in Figures 1, 4 and 6 of Juratovac probably is a 7
battery, the structure is not necessarily or inherently a battery. 8
Since the Examiner has not identified any structure described by 9
Juratovac which is necessarily a battery, Juratovac does not describe the 10
location of a battery relative to a frame or front handle. Therefore, we do 11
not sustain the rejection of claims 1, 4-6, 10, 14-16 and 20 under § 102(b) as 12
being anticipated by Juratovac. 13
The reasoning underlying the rejection of claims 7, 8, 17 and 18 as 14
being unpatentable over Juratovac is dependent on the finding that the oval 15
shaped member depicted in Figures 1, 4 and 6 of Juratovac is a battery. (See 16
Ans. 5). Since this finding is not correct, we do not sustain the rejection. 17
See Robertson at 746. Since the teachings of Gassen do not remedy the 18
deficiencies in the teachings of Juratovac, we do not sustain the rejection of 19
claims 2, 3, 12 and 13 under § 103(a) as being unpatentable over Juratovac 20
and Gassen. Since the teachings of Anthony do not remedy the deficiencies 21
in the teachings of Juratovac, we do not sustain the rejection of claims 9 and 22
19 under § 103(a) as being unpatentable over Juratovac and Anthony. 23
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DECISION 1
We REVERSE the Examiner’s decision rejecting claims 1-10 and 12-2
20. 3
4
REVERSED 5
6
7
8
Klh 9