Ex Parte Butzen et al

Patent Trial and Appeal Board

Jul 30, 2018

13281540 (P.T.A.B. Jul. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/281,540 10/26/2011
60840 7590 08/01/2018
MICHAEL, BEST & FRIEDRICH LLP (MT)
100 EAST WISCONSIN A VENUE
SUITE 3300
MILWAUKEE, WI 53202
FIRST NAMED INVENTOR
Robert W. Butzen
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
066042-8236-01 2707
EXAMINER
CHOI, STEPHEN
ART UNIT PAPER NUMBER
3724
NOTIFICATION DATE DELIVERY MODE
08/01/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
MKEIPDOCKET@MICHAELBEST.COM
milwaukeeip@milwaukeetool.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT W. BUTZEN, AUSTIN J. KAZDA, and
ANDREW J. SCHULZ
Appeal2017-008068
Application 13/281,540
Technology Center 3700
Before: CHARLES N. GREENHUT, BENJAMIN D. M. WOOD,
PAUL J. KORNICZKY, Administrative Patent Judges.
GREENUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from a rejection of
claims 10, 11, 13, 14, 16-18, 20, 21, 23-25, 30-32, 34--38, and 41. We have
jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
1 According to Appellant, Milwaukee Electric Tool Corporation is the real
party in interest in this appeal. App. Br. 2.
Appeal2017-008068
Application 13/281,540
CLAIMED SUBJECT MATTER
The claims are directed to a reciprocating saw blade. Claim 10,
reproduced below, is illustrative of the claimed subject matter:
10. A reciprocating saw blade for use with a reciprocating saw,
the reciprocating saw blade comprising:
a body defining a longitudinal axis;
an attachment portion coupled to the body, the attachment
portion including a tang and an aperture configured to couple to
the reciprocating saw; and
a cutting portion formed on the body, the cutting portion
including a plurality of cutting teeth and a plurality of gullets
positioned between the plurality of cutting teeth, each cutting
tooth including a tip, a rake face extending from the tip generally
toward the longitudinal axis and at least partially defining one of
the plurality of gullets, a relief surface extending from the tip,
and a protrusion extending from an end of the relief surface
opposite the tip;
wherein each gullet includes a base, a first curved surface
extending from the rake face of a corresponding cutting tooth to
the base, and a second curved surface extending from the base to
an adjacent cutting tooth, and wherein the protrusion of each
cutting tooth is located on the cutting tooth between the relief
surface of the cutting tooth and the second curved surface of an
adjacent gullet;
wherein the tips of the plurality of cutting teeth define a
first plane that is generally parallel to the longitudinal axis and
the protrusions of the plurality of cutting teeth define a second
plane that is generally parallel to the longitudinal axis, and
wherein a distance between the first plane and the second plane
is at most approximately 0.035 inches; and
wherein a distance between the protrusion of one cutting
tooth and the tip of an adjacent cutting tooth, measured generally
parallel to the longitudinal axis, is approximately 0.08 inches.
2
Appeal2017-008068
Application 13/281,540
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Haselton
Hoffman
Bucks et al.
us 293,576
US 2002/0078813 Al
US 2009/0145280 Al
REJECTI0N2
Feb. 12, 1884
June 27, 2002
June 11, 2009
Claims 10, 11, 13, 14, 16-18, 20, 21, 23-25, 30-32, 34--38, and 41 are
rejected under 35 U.S.C. § I03(a) as being unpatentable over Bucks in view
of Haselton and Hoffman.
ANALYSIS
As an initial matter, the subject matter of the prior art references cited
in the Examiner's rejection can be summarized as follows:
(1) Bucks discloses a reciprocating saw blade (10) that comprises a
plurality of cutting teeth (22), but lacks, inter alia, protrusions formed at one
end of each tooth opposite the tips (30) thereof, as required by claims 10, 17,
25, and 35 (Bucks, Fig. 3; Final Act., 5, 7, 10, 14);
(2) Haselton discloses a circular saw blade (A) comprising a plurality
of cutting teeth (C), each tooth comprising a protrusion (E) at one end of the
tooth opposite the tip (D) (Haselton, Fig. 3); and
(3) Hoffman discloses a circular saw blade (10) comprising a plurality
of cutting teeth (14), each tooth comprising a protrusion (50) at one end of
the tooth opposite the tip (15), and specifically states that "the present
2 The Examiner withdrew a rejection under 35 U.S.C. § 112, second
paragraph. Adv. Act. Nov. 28, 2016.
3
Appeal2017-008068
Application 13/281,540
invention can be used with ... hacksaws, handsaws, handsaws and the like."
Hoffman ,r 0048; Fig. 7.
The Examiner rejects independent claims 10, 17, 25, and 35 over
Bucks in view of Haselton and Hoffman, concluding it would have been
obvious "to employ a protrusion as taught by Haselton on the device of
Bucks as suggested by Hoffman in order to prevent any rigid substance from
catching an adjacent tooth." Final Act. 6, 8, 11, 15. The Examiner's stated
rationale in the Answer, although phrased somewhat differently, is
substantially the same as in the Final Action: "[T]he proposed modification
proposes to include the protrusion (i.e., a heel E) of Haselton to the device of
Bucks as evidenced by Hoffman in order to guard a cutting edge from
catching any rigid substance." Ans., 14--15. In view of these statements, we
understand the Examiner's reliance on Haselton and Hoffman in modifying
Bucks to be such that: Haselton's heel (E) teaches the structure of the
claimed "protrusion," while Hoffman teaches that protrusions on the teeth of
a circular saw blade, such as Haselton's, can be incorporated into the teeth of
a reciprocating saw blade, such as Bucks' s.
Appellant challenges the Examiner's conclusion of obviousness for at
least two reasons. 3 First, insofar as Hoffman is relied upon as teaching that
protrusions on a circular saw blade can be incorporated into a reciprocating
saw blade, such reliance is misplaced because the "invention" of Hoffman is
3 We note that Appellant also challenges the Examiner's reliance on a
"design choice" rationale (see Final Act., 6) with regard to the
dimensional/ distance requirements of claims 10, 1 7, and 3 5. However, we
find the Examiner's reliance on Haselton and Hoffman to be sufficiently
erroneous as to merit reversal. Consequently, we do not address the design
choice issue.
4
Appeal2017-008068
Application 13/281,540
a surface finish, not the blade shown in Figure 7 or the protrusions on the
cutting teeth thereof. App. Br., 11-12; Reply, 2. Second, one of ordinary
skill in the art would not have modified Bucks according to Haselton
because doing so would change the principle operation of Bucks' s
reciprocating saw blade. App. Br., 13; Reply, 3.
For the reasons discussed below, we find Appellant's arguments as to
both issues to be persuasive.
Hoffman
Where there is a reason to modify or combine the prior art to achieve
the claimed invention, the claims may be rejected as obvious provided there
is also a reasonable expectation of success. In re Merck & Co., Inc., 800
F.2d 1091 (Fed. Cir. 1986). However, it is improper to base a conclusion of
obviousness upon facts gleaned only through hindsight. "To draw on
hindsight knowledge of the patented invention, when the prior art does not
contain or suggest that knowledge, is to use the invention as a template for
its own reconstruction-an illogical and inappropriate process by which to
determine patentability." Sensonics Inc. v. Aerosonic Corp., 81 F.3d 1566,
1570 (Fed. Cir. 1996) (citing W.L. Gore &Assoc. v. Garlock, Inc., 721 F.2d
1540, 1553 (Fed. Cir. 1983)).
The Examiner's reliance on Hoffman is misplaced because the
knowledge the Examiner ascribes to Hoffman-that protrusions on circular
saw blades could be applied to reciprocating saw blade teeth-is simply not
present. Although Hoffman does include a discussion of a circular saw
blade having anti-kickback elements formed on its cutting teeth, Hoffman
states that such anti-kickbacks are "well known in the art[.]" Hoffman ,r 46.
5
Appeal2017-008068
Application 13/281,540
Moreover, the discussion of the anti-kickbacks is focused on how they must
overcome friction during operation, and why "the high precision polishing of
the anti-kickback further reduces friction." Id. From the discussion of the
anti-kickbacks, and a review of Hoffman as a whole, it is clear that the
"invention" of Hoffman lies in the high precision finish for saw blades,
rather than the particular blade shown in Figure 7 or the protrusions thereon
themselves. Consequently, the Examiner's expansion of "the present
invention" of Hoffman to include the protrusions was in error, because one
of ordinary skill in the art would not reasonably expect, on the basis of
Hoffman, that adding protrusions from the teeth of a circular blade to
Bucks's reciprocating blade would be a successful combination.
Haselton
If a proposed modification or combination of the prior art would
change the principle of operation of the prior art invention being modified,
then the teachings of the references are not sufficient to render the claims
obvious. In re Ratti, 270 F.2d 810 (CCPA 1959).
The proposed combination of Bucks and Haselton would change the
principle operation of Bucks, and, therefore, be nonobvious for at least two
reasons. First, a review of Bucks and Haselton reveals that although there
are some structural similarities between the two devices, there is a
fundamental difference between them, specifically in the manner in which
they operate. On the one hand, Bucks is intended to "rapidly plunge[] into
the work-piece to provide an accurate [sic, kerfJ while enabling fast cutting
of the workpiece." Bucks ,r 3 (emphasis added). On the other hand,
Haselton is intended to separate cotton fiber "while the seeds, twigs, and
6
Appeal2017-008068
Application 13/281,540
other foreign matter are undisturbed." Haselton 1, first col., 11. 17-19
( emphasis added). In short, Bucks blade is intended to cut through rigid
objects during operation, whereas Haselton's is not. Consequently, the
proposed modification of Bucks according to Haselton would be to modify
one device that is designed to cut through rigid objects by adding features
from another device that is designed to eject rigid objects without damaging
them. Given such a fundamental difference in function, the proposed
combination would change the manner in which the Bucks blade operates.
Second, if Haselton's heel (E) were added to Bucks so as to meet
Appellant's "protrusion," such a protrusion would ostensibly be longer (i.e.,
taller) than the tips of the Bucks cutting teeth, given that the Haselton heel
(E) is "raised a little above the point (D)." Haselton 1, second col., 11. 60-
61. Consequently, if the modified Bucks blade were used in the manner
intended by Bucks (i.e., to plunge-cut a rigid workpiece, and/or reciprocate
longitudinally), only the protrusions, and not the cutting teeth, would make
contact with the workpiece. As such, the tips of the modified Bucks blade
would be inhibited from penetrating the workpiece, which would result in a
change in the principle operation of the original Bucks blade.
In sum, because Hoffman provides no nexus between the teeth of
circular blades and those of reciprocating blades, and because adding the
Haselton protrusions to Bucks would change the principle operation of
Bucks, the Examiner's conclusion of obviousness cannot be sustained.
DECISION
The Examiner's rejection of claims 10, 11, 13, 14, 16-18, 20, 21, 23-
25, 30-32, 34--38, and 41 is reversed.
7
Appeal2017-008068
Application 13/281,540
REVERSED
8