Ex Parte Bruggmueller et al

Board of Patent Appeals and Interferences

Aug 17, 2012

11796041 (B.P.A.I. Aug. 17, 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.
11/796,041 04/25/2007 Peter Bruggmueller 208,199 2603
38137 7590 08/20/2012
ABELMAN, FRAYNE & SCHWAB
666 THIRD AVENUE, 10TH FLOOR
NEW YORK, NY 10017
EXAMINER
LOW, LINDSAY M
ART UNIT PAPER NUMBER
3721
MAIL DATE DELIVERY MODE
08/20/2012 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 PETER BRUGGMUELLER
and ROBERT SPASOV
____________

Appeal 2009-014319
Application 11/796,041
Technology Center 3700
____________

Before: NEAL E. ABRAMS, JOHN C. KERINS and STEFAN
STAICOVICI, Administrative Patent Judges.

ABRAMS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Peter Bruggmueller et al. (Appellants) seek our review under
35 U.S.C. § 134 of the final rejection of claims 1-6. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.
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Application 11/796,041

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The Invention
The claimed invention is directed to a hand-held drive-in tool for
driving fastening elements in a workpiece.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A hand-held drive-in tool for driving
fastening elements in a workpiece, comprising a
drive-in ram (13); a guide (12) in which the drive-
in ram (13) is displaceable; a driving unit (30) for
displacing the drive-in ram (13) and having at least
one elastomeric band (31) that displaces the drive-
in ram (13); a device (70) having an electric
driving motor (71) for tensioning the at least one
elastomeric band (31); and a locking device (50)
for releasably securing the drive-in ram (13) in a
tensioned position of the at least one elastomeric
band (13).

The Prior Art
The Examiner relies upon the following as evidence of
unpatentability:
Gegere US 4,807,585 Feb. 28, 1989
Choma US 5,220,906 Jun. 22, 1993
Butler US 5,575,482 Nov. 19, 1996
Gieseke US 6,672,239 B1 Jan. 6, 2004

The Rejection
The following Examiner’s rejection is before us for review:
Claims 1-6 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Gegere in view of Gieseke, Butler, and Choma.

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Application 11/796,041

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OPINION
The Examiner found that Gegere, which is directed to a rubber band
powered gun, discloses “the same invention substantially as claimed except
for the tensioning device having an electric driving motor,” and that
Gieseke, Butler, and Chomo each teach using an electric motor to tension
bands in a driving unit for the purpose of reducing the amount of force
needed by a user to operate the device. Ans. 4. Noting that Gieseke and
Butler teach the tensioning of elastomeric bands, the Examiner then
concludes that it would have been obvious to one of ordinary skill in the art
to provide an electric motor for Gegere’s tensioning device (Ans. 4), and
that “[r]eplacing Gegere’s tensioning device 16 with an electric motor would
aid in reducing the force needed to tension the elastomeric band for firing, as
taught by Gieseke, Butler, and Choma.” Ans. 6. On this basis the Examiner
has rejected the subject matter recited in independent claim 1 and dependent
claims 2-6.
The Appellants argue that the rejection is improper because none of
the references relate to a drive-in tool for driving fastening elements in a
workpiece, and therefore are not in field of the Appellants’ endeavor and
are not reasonably pertinent to the particular problem to which the
Appellants are concerned. Br. 4-6. They go on to state that “[e]ven if the
cited prior art was considered to be analogous” the rejection fails because if
Gegere were somehow modified to include an electric driving motor, it
would require a substantial redesign of the elements, in particular, the slide
would no longer be needed to manually engage and move the mechanism to
the cocked position, a feature which allows the user to be more involved in
the use of the toy gun and adds to the enjoyment of its use. Br. 6-8. These
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Application 11/796,041

4
positions were emphasized in the Reply Brief, with the additional thought
expressed that the Examiner failed to indicate where Gegere discusses that
the amount of force necessary to tension the elastic band is a problem.
Reply Br. 3.
Gegere discloses a toy pistol that propels projectiles such as B-Bs,
spherical pellets, and other corresponding projectiles through a barrel. Col.
3, ll.12-16. The objective of the invention is to replace prior art pneumatic
mechanisms, which are subject to corrosion and leakage and whose
replacement is impractical and expensive, with a rubber band propulsion
means that is “easily and inexpensively replaceable and therefore satisfies
the long-felt need in the toy gun field for a projectile firing mechanism
which is easily discarded and replaced when worn.” Col. 1, ll. 31-52. In
operation, slide 16 is pulled rearward by the user, which causes a projectile
to be loaded into traveler 20 and the rubber band 18 to be stretched to the
cocked position. At this point, the user moves the slide forward, while the
rubber band and the traveler remain in the cocked position. When the
trigger is actuated, the traveler is pulled forwardly by the stretched rubber
band, propelling the projectile through the barrel and out of the gun.
ABSTRACT; col. 6, l. 50-col. 7, l. 47.
Gieseke discloses a launch assembly for propelling from a submarine
“countermeasures, defensive weapons, offensive weapons, and other
devices.” Col. 1, ll. 21-23. The stated improvement over the prior art is the
use of an elastomeric tube 22 closed at its inner end by a plate 32 to at least
partially receive device 16 and to push it from its inner end to launch it from
the submarine. Col. 1, ll. 53-55. In order to stretch the elastomeric tube so it
can propel the device from the submarine, Gieseke provides an electric
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motor 44 which rotates rails 26 to drive apart the ends of the elastomeric
tube, after which the inboard end of the tube is released and the device is
propelled outwardly. Col. 4, ll. 8-46; Figs. 3-6. Although the level of force
required is not stated, it is our view that it would be quite substantial when
compared to those necessary to launch a projectile from the Gegere toy
pistol, since the device being launched by Gieseke can be expected to be
large and is being propelled into a body of water.
Butler is directed to an apparatus for launching sports balls such as
volleyballs for use by players in practice. The launching force is provided
by elastic bands 77, which are stretched into operating position by a battery
powered electric motor 67 through a screw drive 68 that is disengaged prior
to launching each ball. Fig. 4; col 4, ll. 9-46. Since the purpose of the
device is to deliver a “human-like impetus to launch the ball” (col. 1, ll. 65-
66), as was the case with Gieseke it is our view that the force provided by
the elastic bands to cock the system in Butler is significantly greater than
that required in Gegere.
This clearly also is the case with regard to the Choma system for
drawing a crossbow, as attested to by Choma’s explanation that one method
of increasing the speed at which the arrow is propelled by the bow is to
increase the bow’s stiffness, which is useless if the user is not strong enough
to draw the bow and hold it in the drawn position for a sufficient time to aim
the arrow. Col. 1, ll. 34-41. According to Chomo, this means that “the user
must be strong enough to draw the full draw weight of the bow.” Col. 1, ll.
63-64. To solve this problem, Choma provides a screw shaft 22 driven in
rotation by a battery powered electric motor 31, which shaft engages bow
string 16 by means of yoke 71 to draw the bow and the string to cock the
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system for firing the arrow. ABSTRACT. This mechanism can be
permanently or temporarily attached to the crossbow. Col. 5, ll. 4-9.
From our perspective, given that the Gegere device is a toy firing B-
Bs, there is no demonstrated need to provide a large force to propel the
projectile. Therefore, operating the slide to cock the device does not require
the user to input a force of the level of those required to operate the systems
disclosed by Gieseke, Butler, and Choma. Moreover, the interaction
between the user and the Gegere toy pistol, such as pulling back on the slide
to load the projectile, adds to the realism and enjoyment of using it. We
have carefully considered the arguments advanced by the Examiner and the
evidence provided in support thereof. However, we are not persuaded that
one of ordinary skill in the art would have found it obvious in view of the
cited references to modify the Gegere toy pistol by providing an electric
driving motor for stretching the rubber band because such is unnecessary
for the successful operation of the gun, would detract from the realism of
operating the pistol, and would complicate its construction and operation.

DECISION
The decision of the Examiner to reject claims 1-6 under 35 U.S.C.
§ 103(a) as being unpatentable over Gegere in view of Gieseke, Butler and
Chomo is reversed.
REVERSED

JRG