Ex Parte CHOU et al

Patent Trials and Appeals Board

Feb 27, 2019

15059740 - (D) (P.T.A.B. Feb. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
15/059,740 03/03/2016
28268 7590 02/27/2019
Stanley Black & Decker, Inc.
6201 Greenleigh Avenue, MR045
Middle River, MD 21220
FIRST NAMED INVENTOR
Mark CHOU
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.
P-US-TN-15951 5647
EXAMINER
ALIE, GHASSEM
ART UNIT PAPER NUMBER
3724
MAIL DATE DELIVERY MODE
02/27/2019 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 MARK CHOU, BOJUN SHI, KEJIA WANG, and XIUBAO LAN
Appeal2018-005453
Application 15/059,740 1
Technology Center 3700
Before STEFAN STAICOVICI, MICHAEL L. HOELTER, and
JAMES P. CALVE, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE-
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision in the Final Office Action ( dated Sept. 15, 2017, hereinafter "Final
Act.") rejecting claims 1-5 and 7-15. 2 We have jurisdiction over this appeal
under 35 U.S.C. § 6(b ).
1 Black & Decker Inc. is the applicant and identified as the real party in
interest in Appellants' Appeal Brief (filed Mar. 14, 2018, hereinafter
"Appeal Br."). Appeal Br. 3.
2 Claims 6 is canceled. See Appeal Br. 3.
Appeal2018-005453
Application 15/059,740
SUMMARY OF DECISION
We AFFIRM-IN-PART.
INVENTION
Appellants' invention relates to a hand-held powered garden tool and
its attachment to a pole assembly. Spec. para. 1.
Claims 1, 8, and 14 are independent. Claims 1 and 14 are illustrative
of the claimed invention and read as follows:
1. A powered garden tool comprising:
a powerhead having a housing, the housing having an
motor chamber for holding an electric motor, a main handle
capable of being gripped by a user and having a generally
longitudinal axis extending rearwardly from a front portion of
the housing, the main handle having a first trigger to tum the
motor on or off, wherein the motor has a longitudinal axis
which extends rearwardly from the front portion of the housing
such that the main handle and motor chamber are generally
parallel to each other;
a blade assembly driveably connected to the motor and
extending out from the front portion of the housing;
a pole assembly having a coupling member capable of
removably connecting to the motor chamber of the powerhead
for use in a poled configuration.
14. A method of attaching a pole assembly to a garden tool
powerhead, comprising the steps of:
providing a powerhead having a housing with a first
handle and a motor chamber, an electric motor located in said
motor chamber, and a power cord having three electrical
contacts to supply power to the motor attached to said housing,
the first handle having a first trigger to actuate the motor, a
blade assembly extending out from a front portion of the
housing and operatively connected to the motor;
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Application 15/059,740
attaching a pole assembly to the powerhead housing, the
pole assembly having an electrical connector on a first end, and
second handle and a second power cord on a second end, the
second handle having a second trigger, the electrical connector
being electrically connected to the second power cord, and
wherein when the pole assembly is attached to the powerhead,
actuation of the motor is controlled by the second trigger and
the first trigger is in an off position.
REJECTIONS
I. The Examiner rejects claim 5 under 35 U.S.C. § 112 (b) as being
indefinite.
II. The Examiner rejects claims 1 and 5 under 35 U.S.C. § I02(a)(l) as
being anticipated by Mathiesen (US 3,731,380, iss. May 8, 1973,
hereinafter "Mathisen"). 3
III. The Examiner rejects claims 1 and 5 under 35 U.S.C. § I02(a)(l) as
being anticipated by Halstead (US 6,349,712 Bl, iss. Feb. 26, 2002).
IV. The Examiner rejects claim 7 under 35 U.S.C. § I03(a) as being
unpatentable over Mathisen and Causey et al. (US 4,207,675, iss. June
1 7, 1980, hereinafter "Causey").
V. The Examiner rejects claims 1, 5, and 7 under 35 U.S.C. § I03(a) as
being unpatentable over Grahn (US 3,579,827, iss. May 25, 1971) and
D 'Alessandro, Sr. (US 5,787,590, iss. Aug. 4, 1998, hereinafter
"D' Alessandro") or Martin (US 4,330,938, iss. May 25, 1982).
VI. The Examiner rejects claims 2--4 and 8-15 under 35 U.S.C. § I03(a)
as being unpatentable over Grahn, D 'Alessandro or Martin, and
3 As both Appellants and Examiner refer to this reference as "Mathisen," for
consistency purposes, we shall do so as well.
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Application 15/059,740
Weber (US 7,989,718 Bl, iss. Aug. 2, 2011) or Banta (US 5,070,576,
iss. Dec. 10, 1991).
VII. The Examiner rejects claims 8, 9, and 13 under 35 U.S.C. § I03(a) as
being unpatentable over D' Alessandro and Weber or Banta.
ANALYSIS
Rejection I
The Examiner finds that claim 5 is indefinite because "the outer
housing" limitation lacks antecedent basis. Final Act. 2.
As Appellants do not address the rejection, Appellants have waived
any argument of error. See Appeal Br. 10. Accordingly, we summarily
sustain the indefiniteness rejection of claim 5. See In re Berger, 279 F.3d
975, 984, 985 (Fed. Cir. 2002) (holding that the Board did not err in
sustaining a rejection under 35 U.S.C. § 112, second paragraph, when the
applicant failed to contest the rejection on appeal).
Rejections II and III
Independent claim 1 requires, inter alia, a "housing having a[] motor
chamber for holding an electric motor ... wherein the motor has a
longitudinal axis which extends rearwardly from the front portion of the
housing." Appeal Br. 16 (Claims App.).
The Examiner finds that Mathisen discloses a garden powered tool
including, inter alia, powerhead S having housing A that has a "motor
chamber inherently holding an electric motor (not shown) ... wherein the
motor has a longitudinal axis which extends rearwardly from the front
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portion 12 of the housing [A]." Final Act. 2-3 (citing Mathisen, Fig. 1).
The Examiner further finds that Halstead discloses a power tool including,
inter alia, powerhead 20 having housing 22 holding electric motor 28
"wherein the motor has a longitudinal axis which extends rearwardly from
the front portion of the [housing]." Id. at 3 (citing Halstead, Fig. 1).
Appellants argue that "Mathisen does not disclose the motor, let alone
its orientation, and so the Examiner's conclusions about the axis of the
motor is pure conjecture." Appeal Br. 11. Appellants make the same
argument with respect to the Halstead disclosure. Id. at 12.
We appreciate that Mathisen' s housing A and Halstead' s housing 22
include a motor. See Mathisen, col. 4, 11. 4--7, Fig. 1, Halstead, col. 2, 11. 41-
45, Fig. 1. Nevertheless, Appellants are correct that neither Mathisen nor
Halstead discloses the orientation of the motor. As such, it appears that the
Examiner is relying on a theory of inherency to establish that the
longitudinal axis of the Mathisen and Halstead motors necessarily "extends
rearwardly from the front portion of the housing[s]" A and 22, respectively.
"Inherency, however, may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a given set
of circumstances is not sufficient." In re Robertson, 169 F.3d 743, 745 (Fed.
Cir. 1999) (citation omitted). Here, just because Mathisen's housing A and
Halstead's housing 22 include a motor, this does not mean that the
longitudinal axis of the motor necessarily "extends rearwardly from the front
portion of the housing." For example, the motor can be oriented at a skew
angle to the front housing portion, or the motor can be oriented vertically
such that its longitudinal axis extends parallel to the front portion of
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Mathisen's housing A and Halstead's housing 22. See, e.g., D' Alessandro,
Fig. 1.
Furthermore, we note that in reviewing the Examiner's response to
Appellants' arguments discussed supra, the Answer does not address
Appellants' arguments. See Examiner's Answer 9-10 (dated Apr. 12, 2018,
hereinafter "Ans."). Specifically, the Examiner does not provide findings or
reasoning rebutting Appellants' arguments.
Thus, for the foregoing reasons, on the record before us, we do not
agree that the motor in Mathisen's housing A and Halstead's housing 22
necessarily has a longitudinal axis that "extends rearwardly from the front
portion of the housing," as called for by claim 1. Accordingly, we do not
sustain the rejection of claims 1 and 5 as anticipated by either Mathisen or
Halstead.
Rejection IV
The Examiner's use of the Causey disclosure does not remedy the
deficiency of Mathisen discussed supra. See Final Act. 4. Therefore, for the
reasons discussed above, we also do not sustain the rejection of claim 7 over
the combined teachings of Mathisen and Causey.
Rejection V
Appellants do not present arguments for the patentability of claims 5
and 7 apart from claim 1. See Appeal Br. 12-13. 4 Therefore, in accordance
4 Appellants erroneously refer to claims 12 and 15, whereas the Examiner's
rejection is of claims 5 and 7. Compare Appeal Br. 12, with, Final Act. 4---6.
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with 3 7 C.F .R. § 41.3 7 ( c )(1 )(iv), we select claim 1 as the representative
claim to decide the appeal of the rejection of these claims, with claims 5 and
7 standing or falling with claim 1.
The Examiner finds that Grahn discloses most of the limitations of
independent claim 1, but "does not explicitly teach a pole assembly having a
coupling member capable of removably connecting to the motor chamber of
the powerhead for use in a poled configuration." Final Act. 4--5 (citing
Grahn, Figs. 1-10). Nonetheless, the Examiner finds that D' Alessandro
discloses "a pole assembly 14 having a coupling member 16 capable of
removably connecting to the motor chamber of the powerhead 80 for use in
a poled configuration." Id. at 5 (citing D' Alessandro, Figs. 1-8). The
Examiner further finds that Martin discloses a pole assembly 10 having
coupling members 60, 61 "capable of removably connecting to the motor
chamber of the powerhead [tool 40] for use in a poled configuration." Id.
(citing Martin, Figs. 1-3). Thus, the Examiner concludes that "[i]t would
have been obvious to a person of ordinary skill in the art to provide Grahn' s
power tool with the pole assembly, as taught by [D ']Alessandro or Martin,
in order to enable the tool to reach the out of reach objects need[ ed] to be
cut." Id.
Appellants first argue that the pole assembly of D 'Alessandro is not
connected to the motor chamber. Appeal Br. 13. According to Appellants,
the Examiner has not properly identified where the motor is on
D' Alessandro's clipper 19. Id. Nonetheless, Appellants take the position
that even if the motor chamber in D' Alessandro is "the 'can' portion of the
housing," "pole 14 is not secured at this portion." Id. To better illustrate
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Application 15/059,740
such a position, Appellants provide an annotated Figure 1 of D 'Alessandro
as shown below:
Appellants' annotated Figure 1 of D 'Alessandro shows pole 14 having shoe
16 secured to clipper 19 (base) and a "motor chamber" ("a circular 'can'
portion") that holds a motor. Id. at 12.
We are not persuaded by Appellants' arguments because a drawing
teaches all that it reasonably discloses and suggests to a person of ordinary
skill in the art. In re Aslanian, 590 F.2d 911,914 (CCPA 1979). In this
case, we agree with Appellants that a skilled artisan would readily recognize
that the motor chamber of D 'Alessandro is the "can" portion illustrated
above. Nonetheless, the Examiner is also correct that because the motor
chamber of D 'Alessandro "is vertically positioned into the coupling member
16," inner pole 52 of extension pole 14 is "connected to the bottom portion
of the motor chamber" via coupling member (shoe) 16. Ans. 10 ( citing
D' Alessandro, Fig. 8). As such, in contrast to Appellants' position, we agree
with the Examiner that D 'Alessandro's pole assembly 14 is connected to the
motor chamber via coupling member 16, as claimed. See id.
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Second, Appellants argue that because Martin's stripping machine
does not have a unitary housing, but rather separates the motor of tool 40
from main frame member 15, it would not have been obvious to a skilled
artisan to attach a pole to Grahn's motor chamber. Appeal Br. 13.
Appellants explain that because Grahn's motor 42 is located in motor
chamber 31 that is surrounded by looped handle 23, it would be difficult to
attach bracket 47 and strap 48 of Martin to the body of Grahn "due to being
blocked by the looped handle." Id. As such, according to Appellants, "it
would be much easier for one skilled in the art to attach the pole to the
handle [28] [ of Grahn], and the Examiner has given no motivation or
rationale why one skilled in the art would either look to Martin or how such
a combination would take place." Id.
We are not persuaded by Appellants' arguments because the
Examiner's modification is an improvement to Grahn's hedge trimmer 20 to
attach it to an extension pole in the same way as taught by Martin to lead to
a predictable result, that is, "to extend the reach of the garden tool of Grahn"
(see Ans. 10), and the modification is well within the skill of one having
ordinary skill in this art. KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 417
(2007) ("[I]f 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."). Here, Martin discloses using
bracket 47 and strap 48 to connect tool 40 to tubular handle 16. See Martin,
Fig. 1. We, thus, agree with the Examiner that in a similar manner, a skilled
artisan would have readily attached an extension pole to motor chamber 26,
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31 of Grahn's hedge trimmer 20 using Martin's bracket 47 and strap 48.
Ans. 10. Appellants' assertion that the Examiner's modification "would be
difficult if not impossible due to ... looped handle [23]" (see Appeal Br. 13)
is unsupported attorney argument and cannot take the place of evidence in
the record. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). For
example, the skilled artisan would have readily appreciated to attach an
extension pole to motor chamber 31 of Grahn's hedge trimmer 20 by
positioning the extension pole through the loop of handle 23 and connecting
to the motor chamber 26, 31 using Martin's bracket 47 and strap 48. See
Grahn, Figs. 1, 2.
In conclusion, for the foregoing reasons, we sustain the rejection of
claim 1 under 35 U.S.C. § 103(a) as unpatentable over Grahn and
D 'Alessandro or Martin. Claims 5 and 7 fall with claim 1.
Rejection VI
Claims 2 and 9
Claim 2 requires, inter alia, "a first power cord having at least three
electrical contacts" and "an adapter that connects to the first power cord."
See Appeal Br. 16 (Claims App.). Similarly, claim 9 requires a "first power
cord having at least three electrical contacts"5 and "an adapter cord capable
of connecting the first power cord to an electrical outlet." See id. at 18.
The Examiner finds that D 'Alessandro discloses "an adapter 45 that
connects to the first power cord (the cord that is connected to the adapter 45)
5 This limitation appears in independent claim 8 from which claim 9
depends. See Appeal Br. 17 (Claims App.).
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on the powerhead 19 ... the adapter capable of connecting to a power
outlet." Final Act. 6 (citing D' Alessandro, Fig. 3).
In response, Appellants argue that D 'Alessandro discloses only first
and second power cords. Appeal Br. 14. According to Appellants, the
Examiner's interpretation of D' Alessandro's male receptacle 45 as the
claimed adapter is inconsistent with Appellants' Specification, which
describes an adapter as "a separate cord that is releasably connected to the
tool power cord so that it can be plugged into a wall outlet." Id. Thus,
Appellants contend that the claimed adapter "is not a part of the first (tool)
power cord." Id.
We note that the Examiner finds the combined teachings of Grahn and
D 'Alessandro or Martin lacking the limitation of a "first power cord
ha[ ving] three electrical contacts." See Final Act. 6. Thus, the Examiner
turns to either Weber or Banta to disclose that "the use of a cord with three
electrical contacts is old and well known in the art." Id. at 6-7 (citing
Weber, Fig. 8, Banta, Fig. 1 ). More specifically, the Examiner finds that
Weber discloses "a tool 10 having two connectors 42, 44 each having three
electrical contacts" and Banta discloses "a garden tool 100 including a first
cord 129 having three electrical contacts." Id. (citing Weber, Fig. 8, Banta,
Fig. 1 ). Thus, according to the Examiner it would have been obvious to a
skilled artisan "to provide Grahn' s power tool, as modified by Alessandro or
Martin, with three connectors, as taught by Weber or Banta, in order to
provide more voltage to the motor." Id. at 7.
As such, in the Examiner's rejection, the "first power cord" of Grahn,
as modified by Alessandro or Martin, and Weber or Banta, includes three
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electrical contacts (connectors). Accordingly, we do not agree with the
Examiner's interpretation of D' Alessandro that "the cord that is connected to
the adapter 45" constitutes the claimed "first power cord." See Final Act. 6.
Such a "cord" does not include "three electrical contacts," and, thus, does
not constitute a "first power cord," as called for by each of claims 2 and 9.
Hence, in order for the Examiner's "cord that is connected to the adapter 45"
to constitute the claimed "first power cord," male receptacle 45 must be
included as part of the "first power cord." Hence, Appellants are correct that
D 'Alessandro's male receptacle 45 is part of the "first power cord" and,
therefore, cannot also be construed as an adapter that connects to the first
power cord, as called for by each of claims 2 and 9. See Appeal Br. 14.
In conclusion, for the foregoing reasons, we do not sustain the
rejection of claims 2 and 9 under 35 U.S.C. § 103(a) as unpatentable over
Grahn, D 'Alessandro or Martin, and Weber or Banta.
Claims 4, 10, and 14
Each of claims 4, 10, and 14 requires, inter alia, using the second
trigger to actuate the motor and placing the first trigger in an "OFF" position
when the pole assembly is secured to the garden tool. See Appeal Br. 17-19
(Claims App.).
The Examiner finds that "Grahn in view of Martin teaches ... that ...
in the poled configuration, the first trigger i[s] in the off position." Final
Act. 7.
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Appellants argue that "Martin shows only a first trigger on the electric
drill, and similarly, Grahn only shows a single trigger for the
hedgetrimmer." Appeal Br. 14.
We are not persuaded by Appellants' arguments because the
Examiner is correct that Martin discloses squeezing second trigger 57 on
hand grip 50 for activating drill tool 40, whereas a first trigger on drill tool
40 is not activated, that is, it is placed in an "OFF" position. Ans. 11 ( citing
Martin, col. 3, 11. 26-32). We further agree with the Examiner's position
that "the first trigger on the drill [tool 40] could not be triggered or touched
when the device or drill is in a poled configuration." Id. (citing Martin, Fig.
1 ).
Accordingly, for the foregoing reasons, we sustain the rejection of
claims 4, 10, and 14 under 35 U.S.C. § 103(a) as unpatentable over Grahn,
Martin, and Weber or Banta.
However, we agree with Appellants that although D 'Alessandro
discloses second trigger 51 on pole assembly 14, D 'Alessandro further
discloses that when activating second trigger 51, a first trigger that activates
clippers 19 is depressed, that is, it is placed in an "ON" position, via
VELCROâ„¢ strap 34. Appeal Br. 14 (citing D' Alessandro, col. 3, 11. 23-28).
As such, we do not sustain the rejection of claims 4, 10, and 14 over the
combined teachings of Grahn, D' Alessandro, and Weber or Banta.
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Claims 3, 8, 11-13, and 15
As claim 3 depends from claim 2, for the reasons discussed supra, we
also do not sustain the rejection of claim 3 over the combined teachings of
Grahn, D 'Alessandro or Martin, and Weber or Banta.
Appellants do not address the rejection of claims 8 and 11-13. See
Appeal Br. 13-14. Hence, Appellants have waived any argument of error.
Accordingly, we summarily sustain the rejection of claims 8 and 11-13
under 35 U.S.C. § 103(a) as unpatentable over Grahn, D' Alessandro or
Martin, and Weber or Banta.
As to the rejection of claim 15, because claim 15 depends from claim
14, for the reasons discussed supra in the rejection of claim 14, we also
sustain the rejection of claim 15 under 35 U.S.C. § 103(a) as unpatentable
over Grahn, Martin, and Weber or Banta. However, we do not sustain the
rejection of claim 15 over the combined teachings of Grahn, D 'Alessandro,
and Weber or Banta.
Re} ection VII
As Appellants do not address the rejection, Appellants have waived
any argument of error. See Appeal Br. 10-15. Accordingly, we summarily
sustain the rejection of claims 8, 9, and 13 under 35 U.S.C. § 103(a) as
unpatentable over D 'Alessandro and Weber or Banta.
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SUMMARY
The Examiner's decision to reject claim 5 under 35 U.S.C. § 112(b) as
being indefinite is affirmed.
The Examiner's decision to reject claims 1 and 5 under 35 U.S.C.
§ 102( a)( 1) as being anticipated by Mathisen is reversed.
The Examiner's decision to reject claims 1 and 5 under 35 U.S.C.
§ 102( a)( 1) as being anticipated by Halstead is reversed.
The Examiner's decision to reject claim 7 under 35 U.S.C. § 103(a) as
being unpatentable over Mathisen and Causey is reversed.
The Examiner's decision to reject claims 1, 5, and 7 under 35 U.S.C.
§ 103(a) as unpatentable over Grahn and D' Alessandro or Martin is
affirmed.
The Examiner's decision to reject claims 2, 3, and 9 under 35 U.S.C.
§ 103(a) as unpatentable over Grahn, D' Alessandro or Martin, and Weber or
Banta, is reversed.
The Examiner's decision to reject claims 4, 10, 14, and 15 under
35 U.S.C. § 103(a) as unpatentable over Grahn, D' Alessandro, and Weber or
Banta, is reversed.
The Examiner's decision to reject claims 4, 10, 14, and 15 under
35 U.S.C. § 103(a) as unpatentable over Grahn, Martin, and Weber or Banta,
is affirmed.
The Examiner's decision to reject claims 8 and 11-13 under 35 U.S.C.
§ 103(a) as unpatentable over Grahn, D' Alessandro or Martin, and Weber or
Banta, is affirmed.
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The Examiner's decision to reject claims 8, 9, and 13 under 35 U.S.C.
§ 103(a) as unpatentable over D' Alessandro and Weber or Banta is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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