Ex Parte Frauhammer et al

Board of Patent Appeals and Interferences

Jun 11, 2009

11019428 (B.P.A.I. Jun. 11, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ROBERT BOSCH GmbH
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Appeal 2009-003038
Application 11/019,428
Technology Center 3700
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Decided: June 11, 2009
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Before JAMESON LEE, SALLY C. MEDLEY, and MICHAEL P.
TIERNEY, Administrative Patent Judges.

LEE, Administrative Patent Judge.

DECISION ON APPEAL

A. STATEMENT OF THE CASE
This is a decision on appeal by the real party in interest, Robert Bosch
GmbH (RBG), under 35 U.S.C. § 134(a) from a final rejection of claims 1,
4-6, 9-13, and 19. We have jurisdiction under 35 U.S.C. § 6(b). We reverse.
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References Relied on by the Examiner
Wursch et al. (Wursch) US 2002/0145724 A1 Oct. 10, 2002
Suzuki et al. (Suzuki) US 2004/0144552 A1 Jul. 29, 2004

The Rejections on Appeal
The Examiner rejected claims 1, 4, 9, 13, and 19 under 35 U.S.C.
§ 102(b) as anticipated by Wursch.
The Examiner rejected claims 5, 6, and 10-12 under 35 U.S.C.
§ 103(a) as unpatentable over Wursch and Suzuki.

The Invention
The invention relates to a handle for an electric tool. (Spec. 1:5.) The
handle includes at least one detecting unit for detecting physical values used
for controlling operation of the tool. (Spec. 3:11-14.)
Independent claim 1 is reproduced below (Claims App’x 11:1-5):
1. A handle for an electric hand tool, wherein the handle, in use, is
detachably connectable to the electric hand tool as an auxiliary handle
and comprises at least one detection device that communicates with at
least one element selected from the group consisting of a regulating
element and a control element in the electric hand tool by a
contactless signal transmission device.

B. ISSUE
Has RBG shown that the Examiner was incorrect in finding that
Wursch teaches communication of a signal between a detection device and a
control device by a contactless signal transmission device?
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C. FINDINGS OF FACT
1. RBG’s specification, consistent with ordinary usage in the art,
discloses a “signal” as information which is transmitted from one location to
another. (Spec. 4:1-9.)
2. The ordinary meaning of “signal” is “an impulse or fluctuating
electric quantity, as voltage, current, or electric field strength, whose
variations represent coded information.” Webster’s II New Riverside
University Dictionary 1083 (1988).
3. RBG’s specification distinguishes between contactless signal
transmission devices and those that have contacting components (Spec. at
6:26-29) including contact through suitable electrical lines (Spec. at 9:18-
20).
4. Wursch discloses a positioning aid for a hand tool that assists in
the placement of the forward end of the tool relative to a work piece.
(Wursch 1: ¶ 0001.)
5. In Wursch, a signal represents a measured value from sensor 5
that is transferred to a computing unit 7 for controlling the output of a
positioning aid. (Wursch 1: ¶ 0010 & 2: ¶ 0027.)
6. Wursch’s figures show that distance measuring sensor 5 and
computing unit 7 are connected via electrical lines.
7. Wursch’s paragraph 20 reads (Wursch 2: ¶ 0020)
[0020] Preferably, the signaling is connected with a control
means of the hand tool device that, preferably, switchably,
permits the appropriate activation, of the hand tool device, only
if the measured value lies, in a preferably pre-selectable
tolerance range of, for example, + 1 cm of the desired value,
whereby, for example, in bolt settling devices, compliance with
a minimum distance between set bolts is achievable.
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8. Paragraph 11 reads (Wursch 1: ¶ 0011):
[0011] Preferably, the positioning aid is designed to be
combined with the hand tool device, and preferably, with a
standardized supplemental hand grip or connected to the
suction head of a dust extractor, whereby the positioning aid
can be easily and rapidly mounted or removed from the hand
tool device, if required.

9. Paragraph 18 reads (Wursch 2: ¶ 0018):

[0018] Preferably, the positioning aid comprises main-
independent generators or induction coils permeated by the
magnetic alternating field, of the hand tool device, as the power
source, whereby the power supply cable can be eliminated.

10. None of those paragraphs disclose any particular type of
connection or mechanism enabling signal transmission.
D. PRINCIPLES OF LAW
To establish anticipation under 35 U.S.C. § 102, each and every
element in a claim, arranged as is recited in the claim, must be found in a
single prior art reference. Karsten Mfg. Corp. v. Cleveland Golf Co., 242
F.3d 1376, 1383 (Fed. Cir. 2001).
During examination, claim terms are given their broadest reasonable
interpretation that is consistent with the specification. In re Prater, 415 F.2d
1393, 1404 (CCPA 1969).
E. ANALYSIS
The Examiner rejected claims 1, 4, 9, 13, and 19 as anticipated by
Wursch and claims 5, 6, and 10-12 as unpatentable over Wursch and Suzuki.
RBG argues the grounds of rejection separately.
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The anticipation rejection
Dependent claims 4, 9, and 13 are argued collectively with
independent claims 1 and 19. Each of independent claims 1 and 19 include a
requirement that a detection device in a handle of an electric hand tool
communicates with either a regulating element or control element in the
hand tool “by a contactless signal transmission device.” The Examiner
found that the above-noted limitation is satisfied in Wursch. RBG disputes
that Wursch meets that requirement.
According to the Examiner, Wursch discloses “at least one infrared
(paragraph 21) detecting unit (5) in communication with a control element
(7) by contactless signal transmission.” (Ans. 3:10-12.) The Examiner stated
that the phrase “contactless signal” means “a correspondence or indicator
that does not require physical contact.” (Id. at 4:13-14.) The Examiner then
pointed to Wursch’s paragraph 20 as disclosing a contactless signal type
transmission device. (Id. at 5:1-3.) The Examiner also identified paragraphs
11 and 18 as “collectively suggest[ing] to one of ordinary skill in the art at
the time of the invention that the detection device(s) of the handle could
possibl[y] have no physical contact with the power tool, while maintaining
communication between the handle and the control element of the electric
hand tool.” (Ans. 5:13-16.)
During examination, claim terms are given their broadest reasonable
interpretation that is consistent with the specification. In re Prater, 415 F.2d
at 1404. In the context of RBG’s specification, “contactless signal
transmission” means that a signal is communicated between two components
without any physical connection between the components. By way of
example, the specification describes types of contactless communication
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such as infrared interface or radio signal transmission. (Spec. 7:1-5.)
Furthermore, the specification distinguishes between signal transmission
devices that are contactless and those that have contacting components (id.
at 6:26-29) including contact through suitable electrical lines (id. at 9:18-
20).
The Examiner’s interpretation of the term “contactless signal” as “a
correspondence or indicator that does not require physical contact” is
reasonable. As shown in Wursch’s figures, distance measuring sensor 5 and
computing unit 7 are connected via electrical lines. Indisputably, the
connection between sensor 5 and computing unit 7 is not contactless. The
Examiner’s determination that the “contactless signal transmission device”
requirement of claim 1 is satisfied by Wursch despite the wireline
connection shown in Wursch’s figures is without merit. The electrical wires
form the physical contact necessary to transmit the signal.
Moreover, the paragraphs 20, 11, and 18 in Wursch that the Examiner
relied on as disclosing the “contactless signal transmission device” also do
not suggest a signal transmission device that is contactless. Indeed, those
paragraphs do not disclose any particular type of device or connection
enabling signal transmission.
Paragraph 20 reads (Wursch 2: ¶ 0020):
[0020] Preferably, the signaling is connected with a control means of
the hand tool device that, preferably, switchably, permits the
appropriate activation, of the hand tool device, only if the measured
value lies, in a preferably pre-selectable tolerance range of, for
example, + 1 cm of the desired value, whereby, for example, in bolt
settling devices, compliance with a minimum distance between set
bolts is achievable.

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That paragraph does not describe any device as contactless. The
paragraph simply indicates that a signaling element and a control means are
“connected.” However, there is no further elaboration as to the type of
connection.
Paragraph 11 reads (Wursch 1: ¶ 0011):
[0011] Preferably, the positioning aid is designed to be combined with
the hand tool device, and preferably, with a standardized supplemental
hand grip or connected to the suction head of a dust extractor,
whereby the positioning aid can be easily and rapidly mounted or
removed from the hand tool device, if required.

The paragraph describes that a hand grip which includes a positioning
aid may be easily mounted and removed from a hand tool device. That
disclosure relates to the physical attachment of the grip to the hand tool
device and not to the transmission of any signal between the components.
Paragraph 18 reads (Wursch 2: ¶ 0018):
[0018] Preferably, the positioning aid comprises main-independent
generators or induction coils permeated by the magnetic alternating
field, of the hand tool device, as the power source, whereby the power
supply cable can be eliminated.

The paragraph discloses that the positioning aid may be powered by a
power source of the hand tool device in a manner that eliminates a power
supply cable. That disclosure teaches that there is no power supply cable
that extends between the positioning aid and the power source. However,
the Examiner fails to establish why a power source constitutes either a
regulating or control element, and why electricity supplied merely as power
constitutes a signal.
The ordinary meaning of “signal” is “an impulse or fluctuating
electric quantity, as voltage, current, or electric field strength, whose
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variations represent coded information.” Webster’s II New Riverside
University Dictionary 1083 (1988). As disclosed in RBG’s specification and
consistent with ordinary usage in the art, a “signal” represents information in
the form of a detected physical value which is transmitted to a control
element for controlling the operational behavior of an electric tool. (Spec.
4:1-9.) The Examiner has not shown how the power supplied from the
power source in Wursch is used for any informational content contained
therein.
For the foregoing reasons, we do not sustain the rejection of claims 1,
4, 9, 13, and 19 as anticipated by Wursch.
The obviousness rejection
The Examiner rejected claims 5, 6, and 10-12 as unpatentable over
Wursch and Suzuki. The Examiner’s analysis of those claims is limited to
features added by the claims and does not make up for the above-noted
deficiencies in Wursch. We do not sustain the rejection of claims 5, 6, and
10-12 as unpatentable over Wursch and Suzuki.
F. CONCLUSION
RBG has shown that the Examiner was incorrect in finding that
Wursch teaches communication of a signal between a detection device and a
control device by a contactless signal transmission device.
G. ORDER
The rejection of claims 1, 4, 9, 13, and 19 under 35 U.S.C. § 102(b) as
anticipated by Wursch is reversed.
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The rejection of claims 5, 6, and 10-12 under 35 U.S.C. § 103(a) as
unpatentable over Wursch and Suzuki is reversed.

REVERSED

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