11708087 (B.P.A.I. Jul. 30, 2012)

Ex Parte Britz et al

Board of Patent Appeals and InterferencesJul 30, 2012

11708087 (B.P.A.I. Jul. 30, 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. 11/708,087 02/15/2007 Rory Britz 207,999 8103 38137 7590 07/30/2012 ABELMAN, FRAYNE & SCHWAB 666 THIRD AVENUE, 10TH FLOOR NEW YORK, NY 10017 EXAMINER LOPEZ, MICHELLE ART UNIT PAPER NUMBER 3721 MAIL DATE DELIVERY MODE 07/30/2012 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 RORY BRITZ, RAINER ONTL, and THOMAS HOFBRUCKER ____________ Appeal 2010-007648 Application 11/708,087 Technology Center 3700 ____________ Before LINDA E. HORNER, GAY ANN SPAHN, and HYUN J. JUNG, Administrative Patent Judges. JUNG, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Rory Britz et al. (Appellants) seek our review under 35 U.S.C. § 134 of the Examiner’s rejection of claims 2, 5, 6, 9, and 10 under 35 U.S.C. § 103(a) as unpatentable over Ghode (US 6,043,575; iss. Mar. 28, 2000) and Kaufman (US 5,997,177; iss. Dec. 7, 1999). Appellants cancelled claims 1, 3, and 4. The Examiner withdrew claims 7 and 8 from consideration. We have jurisdiction under 35 U.S.C. § 6(b). Appeal 2010-007648 Application 11/708,087 2 We REVERSE. The Claimed Subject Matter The claimed subject matter “relates to a hand-held power tool.” Spec. 2, l. 3. Claim 9, the sole independent claim, reproduced below, is representative of the subject matter on appeal. 9. An electrical hand-held power tool (2), comprising a housing (4); a drive (6) located in the housing (4); ventilation means (22) for forming a suction region (28) and a pressure region (30) in the housing (4) which provide for an air flow (L) that serves for cooling at least some parts of the drive (6); and a separation element (26) arranged between the suction region (28) and the pressure region (30) and fixedly secured in the housing (4), the separation element (26) having a predetermined breakthrough region for forming, upon being broken through, a limited wire passage region (46) between the suction reg[i]on (28) and the pressure reg[i]on (30) for passing a wire therethrough. App. Br., Clms. App’x. OPINION The Examiner finds that Ghode discloses the subject matter of claim 9 substantially as claimed, except that Ghode fails to disclose that a separation element has a predetermined breakthrough region for forming, upon being broken through, a limited wire passage region. Ans. 3. The Examiner determines: it would have been recognized by one of ordinary skill in the art that applying the known technique Appeal 2010-007648 Application 11/708,087 3 of a weakening region formed by a break- t[h]rough region, e.g.[,] knock off region and/or line of slits as taught by Kaufman to the separation element of Ghode would have yielded predicable results, and resulted in an improved system, namely, a system that would positively provide a predetermined limited wire passage in Ghode’s separation element rather than an elastically deformable region. Ans. 3-4. Appellants argue: none of the prior art discloses or suggests a power tool having a separation element arranged between the suction region and the pressure region…having a predetermined break-through region for forming, upon being broken through, a limited wire passage region between the suction region and the pressure region for passing a wire therethrough. App. Br. 9-10. In particular, Appellants argue that “[t]here is no suggestion anywhere in Ghode that the separation element (60) is broken through” and “because of the flexibility and resiliency of the material, there is no need to form a predetermined break-through region for forming a wire passage.” Id. 10-11. Appellants also argue that “no articulated reasoning with rational underpinning to support the legal conclusion of obviousness has been made in the Final Office Action” (Id. 13), and that “obviousness of the present invention over the combination of Ghode and Kaufman can be gleaned only from a hindsight reconstruction” (Id.). The Examiner responds: The teaching of Kaufman was chosen to show Appellant[s] that it is obvious to provide a separation element having a weakened region, e.g.[,] a knock off portion, formed by a Appeal 2010-007648 Application 11/708,087 4 “breakthrough region” and/or predetermined hole portion formed by a line of slits for the purposes of facilitating the opening and/or knocking off of said weakened region to provide passage through the hole[.] Ans. 6. The Examiner stated that “[t]his suggests in Kaufman the need of a region configured to be broken, if desired, to provide a predetermined limited passage.” Id. It is undisputed that Ghode fails to describe “the separation element (26) having a predetermined breakthrough region for forming, upon being broken through, a limited wire passage region (46) between the suction region (28) and the pressure region (30) for passing a wire therethrough.” See App. Br., Clms. App’x.; see also Ans. 3 and App. Br. 9-10. Ghode describes a power tool that “includes an air deflector . . . to substantially prevent exhaust air from the outlet air ports from entering the inlet air ports” (Ghode, col. 1, l. 64 to col. 2, l. 5) and “since the air deflector 60 is formed of flexible and resilient material, it will deform around wires 82, 84 connecting the trigger button 42 to the motor 46 so as . . . to attempt to form a seal against and around them” (Id., col. 4, ll. 22-26). Kaufman relates to a “beverage container having a tamper-evident opening system through which [a] straw is pierced to access the beverage” (Kaufman, col. 1, ll. 8-10) and describes an “[o]pening system 12 [that] includes a pierceable straw hole 22 . . . provided . . . by a series of slits 24” (Kaufman, col. 3, ll. 1-3). As far as we understand, the Examiner is proposing to use the pierceable straw hole 22 as taught by Kaufman in the air deflector 60 of Ghode. See Ans. 3. According to the Examiner, the use of the pierceable straw hole as taught by Kaufman in place of Ghode’s flexible and deformable air deflector 60 “would have been recognized by one of ordinary skill in the art [as] applying Appeal 2010-007648 Application 11/708,087 5 the known technique of a weakening region formed by a . . . line of slits as taught by Kaufman to the separation element of Ghode . . . [to] positively provide a predetermined limited wire passage in Ghode’s separation element rather than an elastically deformable region.” Ans. 3-4. Although Ghode discloses that it was known in the art to allow wires to pass through an air deflector, we find the Examiner’s rejection insufficient to explain what in the prior art would have prompted a person having ordinary skill in the art to use Kaufman’s pierceable straw hole in Ghode’s air deflector, which already has flexible and resilient material that deforms and seals around wires. The Examiner has not provided any findings that either Ghode or Kaufman recognized a problem with the conventional technique used in Ghode to pass wires through an elastic and deformable air deflector. See Ghode, col. 4, ll. 22-26. Thus, the reason proffered by the Examiner to modify the teachings of Ghode to include the pierceable straw hole of Kaufman, i.e., “an improved system . . . that would positively provide a predetermined limited wire passage” (Ans. 4), appears to already be performed by the air deflector of Ghode. Indeed, the conformance of the flexible and resilient material around the wires 82, 84 in Ghode may provide a better seal around the wires 82, 84 than would the pierceable hole of Kaufman. Moreover, we are not persuaded that it would have been recognized by one of ordinary skill in the art that the application of a weakening region formed by a break-through region, such as the line of slits taught by Kaufman, to the air deflector of Ghode was a known technique in the art, as the Examiner suggests. The Examiner has not provided any evidence that one of ordinary skill in the art would have applied the pierceable straw hole Appeal 2010-007648 Application 11/708,087 6 of Kaufman to function as the predetermined break-through region in the air deflector of Ghode. Without an articulated reason based on a 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. Cir. 2006) (cited with approval in KSR, 550 U.S. at 418) (“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 Ghode and Kaufman in the manner claimed. In view of the foregoing, we are constrained to reverse Examiner’s rejection of claims 2, 5, 6, 9, and 10 under 35 U.S.C. § 103(a) as unpatentable over Ghode and Kaufman. DECISION We reverse the Examiner’s rejection of claims 2, 5, 6, 9, and 10 under 35 U.S.C. § 103(a) as unpatentable over Ghode and Kaufman. REVERSED hh