Ex Parte Coleman

Patent Trial and Appeal Board

Oct 31, 2012

11439391 (P.T.A.B. Oct. 31, 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.
11/439,391 05/23/2006 Micah A. Coleman 0275MU-001167 4376
76237 7590 10/31/2012
Harness Dickey & Pierce, P.L.C. (Stanley B&D)
P.O. Box 828
Bloomfield Hills, MI 48303
EXAMINER
LOW, LINDSAY M
ART UNIT PAPER NUMBER
3721
MAIL DATE DELIVERY MODE
10/31/2012 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICAH A. COLEMAN
____________

Appeal 2010-004394
Application 11/439,391
Technology Center 3700
____________

Before GAY ANN SPAHN, MICHAEL C. ASTORINO, and
WILLIAM A. CAPP, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Micah A. Coleman (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s final rejection of claims 1-14 and 16-18 under 35
U.S.C. § 102(b) as anticipated by Mukoyama (US 5,219,110, issued Jun. 15,
1993). Appellant cancelled claim 15. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
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Application 11/439,391

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THE CLAIMED SUBJECT MATTER
The claimed subject matter “relates to a cordless fastening tool and
more specifically to a depth adjustment mechanism for the fastening tool.”
Spec. 1, para. [0002]. Claims 1 and 10 are independent and claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. A fastening tool for driving a fastener into a
workpiece, the fastening tool comprising:
a trigger assembly that activates a driver
sequence that drives the fastener into the
workpiece;
a contact trip mechanism having a blocking
member connected to a carrier member, said
contact trip mechanism moveable between an
extended position and a retracted position, in said
extended position said blocking member prevents
said trigger assembly from activating said driver
sequence; and
a depth adjustment assembly including an
adjuster member moveable between at least a first
position associated with a first depth setting and a
second position associated with a second depth
setting, said adjuster member moveable to abut and
end travel of said carrier member toward said
adjuster member when said contact trip mechanism
moves from said extended position to said
retracted position.

OPINION
Independent claim 1 and dependent claims 2-9 and 16
The Examiner finds that Mukoyama discloses each and every element
to anticipate independent claim 1. Ans. 3-4. In particular, the Examiner
finds that Mukoyama discloses a contact trip mechanism (contact arm 8)
having a blocking member (operation member 6d) connected to a carrier
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member (lower part 9 of contact arm 8), wherein the contact trip mechanism
(contact arm 8) is moveable between extended and retracted positions and
the extended position prevents the trigger assembly (trigger mechanism 6)
from activating a driver sequence. Ans. 3 (citing Mukoyama, col. 2, ll. 56-
68). With respect to claim 1’s recitation that the adjuster member is
“moveable to abut and end travel of said carrier member toward said
adjuster member when said contact trip mechanism moves from said
extended position to said retracted position” (App. Br., Clms. App’x.), the
Examiner finds that Mukoyama’s
depth adjustment assembly 11 has an adjuster
member 13 moveable between several positions.
Since the adjuster member 13 changes the relative
axial position between members 9 and 10, it is
deemed to “obstruct” the carrier member (the
carrier member being connected to member 10)
when the contact trip mechanism is retracted. The
adjuster member 13 is rotatable between several
positions by having cam blocks 13a corresponding
to different depth settings. The cam blocks abut
the carrier member when the adjuster member is in
each depth position. The cam blocks 13a are
spaced circumferentially from one another (Fig. 4)
and are generally flush with the same surface.
Note that because there are several depth settings
spaced circumferentially around member 13, there
are four depth positions that are spaced from one
another in 90 degree increments. The adjuster
member 13 indexes against the housing 3 in each
depth setting and is slidable between the depth
positions as can be seen in Fig. 4.
The adjuster member 13 always obstructs
the carrier member 9. Therefore, the adjuster
member always abuts and ends travel of the carrier
member toward the adjuster member.
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Ans. 3. The Examiner also finds “that the biasing of the spring 17 keeps the
carrier member abutted against the adjuster members and ends travel of the
carrier member when the operator is not adjusting the member 13. Ans. 4.
Appellant argues that the Examiner has failed to set forth a prima
facie case of anticipation because Mukoyama’s adjuster member (cam
member 13) does not abut and end travel of the carrier member (lower part 9
of contact arm 8) toward the adjuster member (cam member 13) when the
contact trip mechanism (contact arm 8) moves from the extended position to
the retracted position as required by claim 1. App. Br. 13-14. More
particularly, Appellant argues that the adjuster member (cam member 13)
must move as part of the entire contact trip assembly between open and
closed positions and thus, the adjuster member is not “movable to abut and
end travel of said carrier member toward said adjuster member”. App. Br.
14.
The Examiner responds that Mukoyama’s Figure 3 shows that the
adjuster member (cam member 13) abuts the carrier member (lower part 9 of
contact arm 8). Ans. 4. The Examiner notes that when Mukoyama’s
fastening tool is placed on or removed from a work piece, the carrier
member (lower part 9 of contact arm 8) moves together with the adjuster
member (cam member 13) in the sense the when the carrier member (lower
part 9 of contact arm 8) extends and retracts, the adjuster member (cam
member 13) extends and retracts and thus, “there is no travel of the carrier
member 9 toward the adjuster member 13.” Id. The Examiner then
contradictorily states that “[t]herefore, the adjuster member 13 abuts and
ends travel of the carrier member 9 towards the adjuster member 13” and
“[i]n addition, the adjuster member 13 is always obstructing the carrier
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Application 11/439,391

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member 9 when moving from an extend[ed] position to a retracted position.”
Ans. 4-5.
To support the above-quoted findings, the Examiner only cites to
Mukoyama’s Figures 3 and 4, and column 2, lines 56-68. We cannot glean
from the portions of Mukoyama cited by the Examiner that the adjuster
member (cam member 13) meets claim 1’s recitation of being “movable to
abut and end travel of said carrier member toward said adjuster member
when said contact trip mechanism moves from said extended position to said
retracted position.” In view of the Examiner’s admission that “there is no
travel of the carrier member 9 toward the adjuster member 13” (Ans. 4) we
are constrained to find that the Examiner has not met the burden of
supporting the above-quoted findings by a preponderance of the evidence.
Accordingly, we do not sustain the Examiner’s rejection of
independent claim 1, and claims 2-9 and 16 dependent thereon, under 35
U.S.C. § 102(b) as anticipated by Mukoyama.
Independent claim 10 and dependent claims 11-14 and 17
Independent claim 10 is directed to a fastening tool for driving a
fastener into a workpiece and includes a contact trip mechanism and depth
adjustment assembly having an adjuster member, “wherein said portion of
said contact trip mechanism contacts a portion of said adjuster member
within a housing of the fastening tool.” App. Br., Clms. App’x.
The Examiner finds that Mukoyama discloses each and every element
to anticipate independent claim 10. Ans. 3-4. In particular, with respect to
claim 10’s recitation that a portion of the contact trip mechanism “contacts a
portion of said adjuster member within a housing of the fastening tool,”
(App. Br., Clms. App’x.), the Examiner finds that Mukoyama has a
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magazine portion surrounding the depth adjustment mechanism which is
considered to be a part of the housing and “[t]herefore, the contact trip
mechanism contacts a portion of the adjuster member within a housing of
the fastening tool.” Ans. 4.
Appellant argues that “the fastener magazine 2 in Mukoyama is not a
housing of the tool housing and no portion of the contact trip mechanism is
within the tool housing or the fastener magazine.” App. Br. 16. Appellant
also argues that Mukoyama’s fastener magazine 2 “is outside of the tool
housing,” and “[t]he fastener magazine 2 only surrounds fasteners within the
fastener magazine 2 but in no way surrounds any portion of the contact trip
mechanism, as the contact trip mechanism snakes around the fastener
magazine 2.” App. Br. 17.
We agree with Appellant that Mukoyama’s magazine 2 houses
fasteners, but is not a part of the housing (unnumbered) of the fastener
driving tool 1 and does not house any portions of the contact trip mechanism
(contact arm 8) and the adjuster mechanism (cam member 13). Appellant
correctly notes that Mukoyama’s adjuster member (cam member 13) “is
required to extend outside of the housing 2 and the housing 3 in order to
correctly function,” because if the adjuster member (cam member 13) “were
within the housing 2 or the housing 3, the [adjuster member (]cam member
13[)] . . . would be inaccessible to the user.” App. Br. 17-18. Appellant also
correctly notes that the lower portion of Mukoyama’s adjuster member (cam
member13), as illustrated in Figure 3, has numbers 2, 3, and 4 thereon, to act
as indicators corresponding to the level of the cam recesses 13a which are
used by an operator to achieve the requisite depth adjustment and thus,
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which must remain visible to the user for proper functioning of the fastening
tool 1.
Accordingly, we do not sustain the Examiner’s rejection of
independent claim 10, and claims 11-14 and 17 dependent thereon, under 35
U.S.C. § 102(b) as anticipated by Mukoyama.

DECISION
We reverse the Examiner’s decision to reject claims 1-14 and 16-18.

REVERSED

Klh