Ex Parte Bernardi

Patent Trial and Appeal Board

Mar 16, 2017

13757823 (P.T.A.B. Mar. 16, 2017)

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.
13/757,823 02/03/2013 Walter M. Bernardi 1576-0274DIV1 2712
10800 7590 03/17/2017
Maginot, Moore & Beck LLP
One Indiana Square, Suite 2200
Indianapolis, IN 46204
EXAMINER
TECCO, ANDREW M
ART UNIT PAPER NUMBER
3721
MAIL DATE DELIVERY MODE
03/17/2017 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 WALTER M. BERNARDI
____________

Appeal 2015-005010
Application 13/757,823
Technology Center 3700
____________

Before LINDA E. HORNER, MICHAEL L. HOELTER, and
PAUL J. KORNICZKY, Administrative Patent Judges.

HORNER, Administrative Patent Judge.
DECISION ON APPEAL

STATEMENT OF THE CASE
Walter M. Bernardi (Appellant)1 seeks our review under 35 U.S.C.
§ 134 of the Examiner’s decision, as set forth in the Final Office Action,
dated June 25, 2014 (“Final Act.”) and explained in detail in the Non-Final
Office Action, dated January 15, 2014 (“Non-Final Act.”), rejecting claims
21‒27. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 Appellant identifies Robert Bosch GmbH as the real party in interest.
Appeal Br. 2.
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CLAIMED SUBJECT MATTER
Appellant’s claimed subject matter relates to “a method for oscillating
a tool.” Spec. 3, ll. 4‒5. Claim 21 is the sole independent claim and is
reproduced below.
21. A method for oscillating a tool, the method
comprising:
rotating a hub of a drive component about a first axis using
an output shaft of a motor, the motor and drive component being
located within a housing, the output shaft of the motor extending
through a fan blade, the hub having a trailing end portion and a
leading end portion, the trailing end portion being positioned
adjacent the fan blade and defining a bore in which the output
shaft of the motor is retained, the leading end portion including
an eccentric drive pin defining a second axis that is offset from
the first axis;
rotatably supporting the hub in a hub bearing, the hub
bearing being retained in position by a hub bearing structure that
is mounted within the housing in front of the motor;
oscillating a linkage with the drive pin as the drive pin is
rotated eccentrically about the first axis, the linkage including a
tool mount configured to retain the tool for oscillation with the
linkage; and
counterbalancing the eccentrically rotated drive pin using
a counterbalance structure attached to the hub, the
counterbalance structure extending radially outwardly from the
hub at a position between the hub bearing and the fan blade.
REJECTIONS
The Final Action includes the following grounds of rejection:
1. Claims 21‒26 under 35 U.S.C. § 103(a) as unpatentable over
Pollak (US 6,926,595 B2, issued August 9, 2005), Lamprecht
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(US 5,888,128, issued March 30, 1999), and Lampka
(US 7,022,002 B2, issued April 4, 2006).
2. Claim 27 under 35 U.S.C. § 103(a) as unpatentable over Pollak,
Lamprecht, Lampka, and Zaiser (US 7,108,077 B2, issued
September 19, 2006).
ANALYSIS
With regard to independent claim 21, the Examiner finds that Pollak
discloses “counterbalancing the eccentrically rotated drive pin using a
mechanical structure (60, 62)” but fails to disclose “using a counterbalance
structure attached to the hub [and] extending radially outwardly from the
hub at a position between the hub bearing and the fan blade.” Non-Final
Act. 3‒4. The Examiner finds that Lamprecht discloses “counterbalancing
(col. 3[,] lines 1‒24) the eccentrically rotated drive pin using a
counterbalance structure (27, 28) attached to the hub (@ 29), the
counterbalance structure extending radially outwardly from the hub at a
position between the hub bearing (19b) and the fan blade (15).” Id. at 4.
The Examiner determines it would have been obvious “to modify the drive
component and counterbalance arrangement of Pollak with the hub, hub
bearing, and eccentric mass counterbalance arrangement of Lamprecht.” Id.
at 5. The Examiner’s stated reason to modify the drive component and
counterbalance arrangement of Pollak with the hub, hub bearing, and
eccentric mass counterbalance arrangement of Lamprecht is to “allow a
rotating mass to offset the forces generated by the oscillating drive pin and
reduce the chance of failure through wear rather than having a constantly
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stressed and distressed set of springs which would be more susceptible to
wear.” Id. The Examiner further proposes to modify “the output shaft and
hub of Pollak in view of Lamprecht to have it be at least two separate pieces
connected via a bore such as that in Lampka . . . [to] allow individual parts
to be removed and replaced in the event of a repair rather than a larger single
element.” Id. at 7. Lampka, like Lamprecht, teaches a counterbalance
arrangement using a counterweight. Lampka, col. 4, l. 11.
Appellant argues that the proposed modification would not have been
obvious because it would render the device of Pollak unsuitable for its
intended purpose. Appeal Br. 11. In particular, Appellant contends:
A counterbalance arrangement as taught by Lamprecht
and Lampka would not be capable of absorbing movement,
overcoming inertia, and regaining speed of an oscillating
element, such as the pivot element 28 of Pollak. Therefore,
modifying Pollak to replace the spring elements 60, 62 with a
counterbalance arrangement would eliminate any improvements
in motion conversion efficiency and wear reduction that are
enabled by the use of the spring elements 60, 62.
Id. at 11–12.
In response to Appellant’s argument, the Examiner replies that “both
Pollak and Lamprecht teach alternative mechanisms by which tool vibration
is reduced, each having their own pros and cons.” Ans. 4. The Examiner
further states that “the prior art (including the cited Lamprecht and Lampka)
repeatedly demonstrate how eccentric masses can be used to offset vibration
and inertia of other eccentric elements. As such, they are deemed to be
suitable alternatives to the springs of Pollak which would enable the
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invention of Pollak to perform its intended purpose of providing an
oscillatory hand tool.” Id. at 7.
Pollak discloses objects of the invention include providing an
oscillatory drive which minimizes wear during operation, transmits
relatively high power, generates relatively small vibrations even when
operated at relatively high power, and has relatively high efficiency. Pollak,
col. 1, ll. 51‒60. Pollak achieves these objectives through two
improvements: (1) providing “[a] line-like contact between the spherical
outer surface of the eccentric element and the inner surface of the pivot
element;” and (2) “biasing the pivot element at its free end . . . on both outer
sides against the housing by means of spring elements.” Id. at col. 2, ll. 1‒8,
38‒43. Pollak discloses that the spring elements 60, 62 help to reduce the
power necessary to drive the motor by helping to decelerate the pivot
element towards the dead locations and helping to accelerate the pivot
element after passing the dead locations. Id. at col. 2, ll. 46‒57; see also id.
at col. 5, ll. 36‒39. Pollak discloses that “[a]lso noise emission is reduced
and the vibrations individually felt by the user of the oscillatory drive are
reduced.” Id. at col. 2, ll. 57‒59; see also id. at col. 5, ll. 39‒43.
Although we agree that both the springs of Pollak and the
counterweights of Lamprecht and Lampka act to reduce vibrations felt by
the user, another important objective of Pollak is to improve effectiveness of
the conversion of rotating drive motion from the drive shaft into oscillating
motion of the tool drive shaft. As noted supra, Pollak achieves this
objective by using the potential spring energy of springs 60, 62 to overcome
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inertia and help accelerate the pivot element after passing dead locations.
There is no discussion in either Lamprecht or Lampka of using
counterweights to overcome inertia and accelerate a linkage element.
Further, the Examiner has not provided sufficient evidence or explanation of
how counterweights, such as those in Lamprecht, when implemented in the
system of Pollak, would be able to achieve this objective. As such, the
Examiner’s stated reason for modifying the device of Pollak with the hub,
hub bearing, and counterweights of Lamprecht lacks rational underpinnings.
For these reasons, we do not sustain the rejection of independent claim 21
and its dependent claims 22‒26 under 35 U.S.C. § 103(a) as unpatentable
over Pollak, Lamprecht, and Lampka.
The Examiner does not rely on Zaiser in the second ground of
rejection to overcome the above-noted deficiencies in the combination of
prior art relied on the rejection of independent claim 21. Thus, for the same
reasons, we also do not sustain the rejection of dependent claim 27 under
35 U.S.C. § 103(a) as unpatentable over Pollak, Lamprecht, Lampka, and
Zaiser.
DECISION
The decision of the Examiner to reject claims 21‒27 is REVERSED.

REVERSED