Ex Parte Baxivanelis et al

Board of Patent Appeals and Interferences

Nov 29, 2010

11290902 (B.P.A.I. Nov. 29, 2010)

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.
11/290,902 11/29/2005 Konstantin Baxivanelis 207,230 8494
38137 7590 11/29/2010
ABELMAN, FRAYNE & SCHWAB
666 THIRD AVENUE, 10TH FLOOR
NEW YORK, NY 10017
EXAMINER
PAYER, HWEI SIU CHOU
ART UNIT PAPER NUMBER
3724
MAIL DATE DELIVERY MODE
11/29/2010 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 KONSTANTIN BAXIVANELIS, FRANZ-PAUL MAYR, and
JEAN-LOUIS KERAUDREN
____________

Appeal 2009-008938
Application 11/290,902
Technology Center 3700
____________

Before: JENNIFER D. BAHR, LINDA E. HORNER, and
JOHN C. KERINS, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-008938
Application 11/290,902

2
STATEMENT OF THE CASE
Konstantin Baxivanelis et al. (Appellants) seek our review under
35 U.S.C. § 134 of the Examiner’s decision rejecting claims 1 and 3-8,
which are all of the pending claims. We have jurisdiction under 35 U.S.C.
§ 6(b). We AFFIRM.
THE INVENTION
Appellants’ claimed invention is a hand-held circular saw. Spec. 2.
Claim 1, reproduced below, is representative of the subject matter on appeal.
1. A hand-held circular saw (2), comprising:
a motor (6) for driving a saw blade (8);
a control element (10) for operating the motor; and
a handle assembly having a main grip region (14) on which
the control element (10) is arranged and which is being grasped
by a first hand (H1) of a saw user and has a soft first contact
surface (22) for the first hand (H1) of the saw user to be put on,
an auxiliary grip region (16) which is being grasped by a
second hand (H2, H21) of the saw user and has a soft second
contact surface (23) for the second hand (H2, H21) of the saw
user to be put on, the first contact surface (22) and the second
contact surface (23) being formed by a single-piece soft grip
element (20), and a top (24) extending over both the main grip
region (14) and the auxiliary grip region (16), and wherein the
soft grip element (20) is provided on the top (24).
THE REJECTIONS
Appellants seek review of the following rejections:
1. Rejection of claims 1 and 3-5 under 35 U.S.C. § 103(a) as unpatentable
over Watson (US 2001/0000552 A1, published May 3, 2001).
2. Rejection of claims 6-8 under 35 U.S.C. § 103(a) as unpatentable over
Watson and Hillinger (US 5,445,479, issued August 29, 1995).
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Application 11/290,902

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ISSUE
Would it have been obvious to a person of ordinary skill in the art to
have modified Watson’s hand-held circular saw to reach the subject matter
of independent claim 1?
ANALYSIS
Rejection of claims 1 and 3-5 under 35 U.S.C. § 103(a) as unpatentable over
Watson
Appellants argue claims 1 and 3-5 as a group. App. Br. 5-6; Reply
Br. 2-3. We select claim 1 as the representative claim, and claims 3-5 stand
or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii).
Independent claim 1 is directed to a hand-held circular saw having a
handle assembly with a main grip region that includes a soft first contact
surface for the saw user’s first hand, and an auxiliary grip region that
includes a soft second contact surface for the saw user’s second hand where
the first and second contact surfaces are formed by a single-piece soft grip
element.
The Examiner found, and we agree, that Watson discloses a hand-held
circular saw (battery powered circular saw 10) having a main grip region
(primary handle 24) that includes a soft first contact surface (an over-molded
soft rubber surface) for the saw user’s first hand (“for engaging the palm of
the user’s hand”), and an auxiliary grip region (forward handle 60) for the
saw user’s second hand. Ans. 3; see also Watson 1, paras. [0009]-[0010];
id. at 2, para. [0013]; figs. 1, 3. The Examiner found, and we agree, that
Watson does not explicitly disclose a soft second contact surface on the
auxiliary grip region. Ans. 4.
The Examiner concluded that a person of ordinary skill in the art,
knowing the disclosure of Watson, would recognize that inclusion of a soft
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Application 11/290,902

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first contact surface (an over-molded soft rubber surface) on the main grip
region (primary handle 24) to engage the user’s first hand is a known
technique that could be used to improve the auxiliary grip region (forward
handle 60) in the same way, and in so doing, predictably provide an
improved, more comfortable grip. Ans. 4-5.
For the reasons that follow, we find the Examiner’s reasoning to be
based on a rational underpinning. A person of ordinary skill in the art would
recognize that Watson’s main and auxiliary handles (primary handle 24 and
forward handle 60) are similar devices in that each provides a grip for one of
the saw user’s hands. See Watson, 2, para. [0013]. Further, a person of
ordinary skill in the art would also recognize that Watson’s addition of a soft
contact surface on the main grip region (primary handle 24) provides a soft
surface to engage the saw user’s hand, and such a technique would improve
the auxiliary grip region (forward handle 60) in the same way. See KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (“if a technique has been used
to improve one device, and a person of ordinary skill in the art would
recognize that it would improve similar devices in the same way, using the
technique is obvious unless its actual application is beyond his or her
skill.”). Further, the Examiner concluded that because Watson’s main and
auxiliary grip regions are continuous, and because Watson teaches
overmolding the soft contact rubber material on the main grip region, a
person of ordinary skill in the art would recognize the soft first and second
contact surfaces could be formed from a single-piece soft grip element
(overmolded) in order to simplify production. Ans. 5.
Appellants do not challenge the Examiner’s findings regarding
Watson, nor do Appellants contend that application of the proposed
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modification of Watson’s device is beyond the skill of a person of ordinary
skill in the art. App. Br. passim; Reply Br. passim. Rather, Appellants
argue that Watson “gives no hint or suggestion to form such a continuous
soft surface onto two grip regions, to provide a continuous soft region
ranging from a first grip region up to a second grip region, as in the present
invention.” App. Br. 5-6; Reply Br. 2. As explained, supra, the Examiner
found that the disclosure in Watson did indeed provide an implicit
suggestion to make the proposed modification and the Examiner provided a
specific rationale for the addition of a soft second contact surface to the
auxiliary grip region and for forming the first and second contact surfaces of
a single-piece soft grip element. Appellants’ argument is unpersuasive in
that it fails to address the Examiner’s rationale.
Appellants further argue that the modification proposed by the
Examiner would increase the costs of Watson’s device, and a person of
ordinary skill in the art “would try and avoid cost-intensive changes.” Reply
Br. 3. While we agree that a person of ordinary skill in the art would have
considered the cost of modifications to Watson’s device, cost is not the sole
factor a person of ordinary skill in the art would have considered. For
example, a person of ordinary skill in the art also would have considered the
value added to the device (i.e., the hand-held saw) by such modifications,
which might take the form of increased comfort to the user and potentially
an increase in the number of sales or in the sales price. Appellants’
suggestion that cost alone is a determinative factor, without consideration of
other important concerns, does not persuade us of the non-obviousness of
their device.
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We thus sustain the rejection of independent claim 1, and claims 2, 3,
and 5 fall with independent claim 1.
Rejection of claims 6-8 under 35 U.S.C. § 103(a) as unpatentable over
Watson and Hillinger
Rather than address the specific rejection of claims 6-8 as articulated
by the Examiner, Appellants argue that neither Watson nor Hillinger
discloses or suggests forming the first and second contact surfaces from a
single-piece soft grip element, as called for in claim 1. App. Br. 6-8; Reply
Br. 4-6. For the same reasons provided in our analysis of claim 1, supra,
Appellants’ argument is unpersuasive because it fails to address the rationale
provided by the Examiner.
We therefore sustain the rejection of claims 6-8.
CONCLUSION
A person of ordinary skill in the art would have found it obvious to
have modified Watson’s hand-held circular saw to reach the subject matter
of independent claim 1.
DECISION
We AFFIRM the Examiner’s decision to reject claims 1 and 3-8.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

nlk

ABELMAN, FRAYNE & SCHWAB
666 THIRD AVENUE, 10TH FLOOR
NEW YORK NY 10017