Ex Parte Frauhammer et al

Board of Patent Appeals and Interferences

Jun 17, 2009

11326046 (B.P.A.I. Jun. 17, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
____________________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
____________________ 6
7
Ex parte KARL FRAUHAMMER, GERHARD MEIXNER, 8
HEIKO ROEHM, WILLY BRAUN, AXEL KUHNLE, 9
ANDREAS STRASSER, RALPH DAMMERTZ, 10
JOACHIM SCHADOW, CHRISTIAN KOEPF 11
and JUERGEN LENNARTZ 12
____________________ 13
14
Appeal 2009-001693 15
Application 11/326,046 16
Technology Center 3700 17
____________________ 18
19
Decided:1 June 17, 2009 20
____________________ 21
22
Before WILLIAM F. PATE, III, LINDA E. HORNER, and 23
FRED A. SILVERBERG, Administrative Patent Judges. 24
25
SILVERBERG, Administrative Patent Judge. 26
27
28
DECISION ON APPEAL29

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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Application 11/326,046

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STATEMENT OF THE CASE 1
Appellants appeal under 35 U.S.C. § 134 (2002) from a rejection of 2
claims 1-9, which are all of the pending claims. We have jurisdiction under 3
35 U.S.C. § 6(b) (2002). 4
5
SUMMARY OF DECISION 6
We AFFIRM. 7
8
THE INVENTION 9
The Appellants’ claimed invention is directed to a hand-held power 10
tool with a vibration damped handle (Spec. 3:11-Spec. 4:5). Claim 1, 11
reproduced below, is representative of the subject matter on appeal. 12
1. A hand-held power tool, comprising a main element; a 13
main handle fastened to said main element, said main handle 14
being supported such that said main handle is movable relative 15
to said main element, said main element including a tool fitting 16
that defines a longitudinal tool axis and a center of gravity, 17
wherein a normal direction which is oriented perpendicular to 18
said longitudinal tool axis points toward said center of gravity; 19
and means for fastening said main handle to said main element 20
configured so that when said main element is moved out of a 21
stationary position toward said main handle a portion of at least 22
10% by weight of said main element is guided along a 23
trajectory having a movement component in the normal 24
direction oriented perpendicular to said longitudinal tool axis. 25
26
THE REJECTIONS 27
The Examiner relies upon the following as evidence of 28
unpatentability: 29
Meixner US 2004/0040729 A1 Mar. 4, 2004 30
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The following rejections by the Examiner are before us for review: 1
1. Claims 1-3 and 5-9 are rejected under 35 U.S.C. § 102(b) as being 2
anticipated by Meixner. 3
2. Claim 4 is rejected under 35 U.S.C. § 103(a) as being unpatentable 4
over Meixner. 5
6
ISSUE 7
The issue before us is whether the Appellants have shown that the 8
Examiner erred in rejecting claims 1-9 over Meixner. This issue turns on 9
whether Meixner discloses movement of its housing in a direction that is 10
perpendicular to a longitudinal tool axis when the housing is moved toward 11
the handle as called for in claim 1. 12
13
FINDINGS OF FACT 14
We find that the following enumerated findings are supported by at 15
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 16
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for 17
proceedings before the Office). 18
1. The Appellants’ Specification discloses a hand-held power tool 19
including a main element 2a and a main handle 4a, the handle 4a 20
connected to the main element 2a by rotating elements 20a, 22a, 21
the rotating element 20a having pivot axes 24a, 26a and the 22
rotating element 22a having pivot axes 28a, 30a, and a spring 32 23
between the main element 2a and the handle 4a (Spec. 12:3-17; 24
fig. 1). 25
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2. The Appellants’ Specification still further discloses that the main 1
element 2a includes a tool fitting 8 defining a tool axis 38 and a 2
direction 44a, which is perpendicular to the tool axis (Spec. 13:3-3
10 and fig. 2). 4
3. The Appellants’ Specification further discloses that the rotating 5
elements 20a, 22a are of equal length (Spec. 15:1-7 and fig. 1). 6
4. Meixner discloses a hand power tool having a housing 1 and a 7
handle 3 connected to the housing 1, the handle having two legs 5, 8
7 extending nearly parallel to the longitudinal axis of the hand 9
power tool ([0015] and fig. 1), the legs 5, 7 having ends that extend 10
into pockets 11, 13 integrally molded on the housing 1, the legs 5, 11
7 bearing against the housing 1 by spring elements 15, 17 ([0016), 12
and a lever 19, 21 hingedly mounted on each of the legs 5, 7, 13
respectively ([0017]). 14
5. Meixner further discloses that the levers 19, 21 are of equal length 15
and are oriented substantially at right angles to the longitudinal 16
axis 9 ([0017]). 17
6. Meixner still further discloses that the hinged mounting includes 18
roundings 27, 29 having cooperating teeth 31, 33, wherein lever 19 19
has hinge points 23, 35 and lever 21 has hinge points 25, 37 20
([0018] and [0020]; fig. 1). 21
7. Meixner still further discloses that “[t]he levers 19 and 21 ensure 22
that the handle 3 can make a motion relative to the machine 23
housing 1 nearly exclusively in the direction of the machine’s 24
longitudinal axis 9” ([0019]). 25
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8. Meixner still further discloses that “[o]ther component motions, 1
e.g., tilting or tipping of the handle 3, are nearly ruled out” 2
([0019]). 3
9. Meixner still further discloses that when the two levers 19, 20 are 4
displaced during operation of the machine, the distance d between 5
the hinge point 35 on lever 19 and hinge point 37 on lever 21 6
changes within a range of approximately 0.0 mm to 0.1 mm 7
([0020] and fig. 1). 8
10. The ordinary meaning of the word “nearly” includes “almost but 9
not quite.” Merriam-Webster’s Collegiate Dictionary (10th ed. 10
1999). 11
12
PRINCIPLES OF LAW 13
Appellants have the burden on appeal to the Board to demonstrate 14
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 15
(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a 16
rejection [under § 103] by showing insufficient evidence of prima facie 17
obviousness or by rebutting the prima facie case with evidence of secondary 18
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355 19
(Fed. Cir. 1998)). 20
Anticipation is established only when a single prior art reference 21
discloses, expressly or under the principles of inherency, each and every 22
element of a claimed invention. RCA Corp. v. Applied Digital Data Sys., 23
Inc., 730 F.2d 1440, 1444 (Fed. Cir. 1984). In other words, there must be no 24
difference between the claimed invention and the reference disclosure, as 25
viewed by a person of ordinary skill in the field of the invention. Scripps 26
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Clinic & Research Found. v. Genentech Inc., 927 F.2d 1565, 1576 (Fed. Cir. 1
1991). It is not necessary that the reference teach what the subject 2
application teaches, but only that the claim read on something disclosed in 3
the reference, i.e., that all of the limitations in the claim be found in or fully 4
met by the reference. Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772 5
(Fed. Cir. 1983). 6
“Section 103 forbids issuance of a patent when ‘the differences 7
between the subject matter sought to be patented and the prior art are such 8
that the subject matter as a whole would have been obvious at the time the 9
invention was made to a person having ordinary skill in the art to which said 10
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 11
(2007). The question of obviousness is resolved on the basis of underlying 12
factual determinations including (1) the scope and content of the prior art, 13
(2) any differences between the claimed subject matter and the prior art, (3) 14
the level of skill in the art, and (4) where in evidence, so-called secondary 15
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See 16
also KSR, 550 U.S. at 406-407 (“While the sequence of these questions 17
might be reordered in any particular case, the [Graham] factors continue to 18
define the inquiry that controls.”). 19
“[T]he ‘broadest reasonable interpretation’ that an examiner may give 20
means-plus-function language is that statutorily mandated in paragraph six. 21
Accordingly, the PTO may not disregard the structure disclosed in the 22
specification corresponding to such language when rendering a patentability 23
determination.” In re Donaldson, 16 F.3d 1189, 1194-95 (Fed. Cir. 1994). 24
“The plain and unambiguous meaning of [35 U.S.C. § 112] paragraph 25
six is that one construing means-plus-function language in a claim must look 26
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to the specification and interpret that language in light of the corresponding 1
structure, material, or acts described therein, and equivalents thereof, to the 2
extent that the specification provides such disclosure.” Id. at 1193. 3
Once a court concludes that a claim limitation is a means-plus-4
function limitation, two steps of claim construction remain: 1) the court must 5
first identify the function of the limitation; and 2) the court must then look to 6
the specification and identify the corresponding structure for that function. 7
Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 8
1210 (Fed. Cir. 2003). 9
10
ANALYSIS 11
Appellants argue claims 1-3 and 5-9 as a group (Br. 8). As such, we 12
select claim 1 as representative of the group, and claims 2, 3 and 5-9 will 13
stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2007). In contesting 14
the rejection of claim 4 under 35 U.S.C. § 103(a) as being unpatentable over 15
Meixner, Appellants simply rely on the arguments made with respect to the 16
rejection of claim 1 under 35 U.S.C. § 102(b) as being anticipated by 17
Meixner (Br. 8). 18
19
Rejection of claims 1-3 and 5-9 under 35 U.S.C. § 102(b) as being 20
anticipated by Meixner 21
Appellants contend that Meixner does not disclose movement of the 22
housing 1 in a direction that is perpendicular to the longitudinal tool axis 23
when the housing is moved toward the handle as called for in claim 1 (Br. 4-24
5). We find that the structure referred to above is claimed as a means-plus-25
function limitation, “means for fastening … having a movement component 26
in the normal direction oriented perpendicular to said longitudinal axis” (cl. 27
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1, ll. 6-11). The “broadest reasonable interpretation” that an examiner may 1
give means-plus-function language is that statutorily mandated in paragraph 2
six. Accordingly, the PTO may not disregard the structure disclosed in the 3
specification corresponding to such language when rendering a patentability 4
determination. See In re Donaldson, 16 F.3d at 1194-95. We now must 5
identify the function of the limitation; and then look to the Specification and 6
identify the corresponding structure for that function. See Med. 7
Instrumentation, 344 F.3d at 1210. We find that the function of the 8
limitation “means for fastening … having a movement component in the 9
normal direction oriented perpendicular to said longitudinal axis” (cl. 1, ll. 10
6-11) is to fasten the handle to the main element so that the main element 11
can move along a trajectory having a movement component perpendicular to 12
the longitudinal tool axis. We find that the corresponding structure in 13
Appellants’ Specification for performing this function is rotating elements 14
20a and 22a having pivot axes 24a, 26a and 28a, 30a, respectively, and a 15
spring 32 between the main element 2a and the handle 4a (Fact 1), wherein 16
the main element 2a includes a tool axis 38 and a direction 44a, which is 17
perpendicular to the tool axis (Fact 2). We find that Meixner discloses an 18
equivalent structure, that is, Meixner discloses rotating elements (legs 5 and 19
7) having pivot axes (hinge points 23, 35 and 25, 37, respectively) and 20
spring elements 15, 17 between the housing 1 and the handle 3 (Facts 4, 6). 21
We further find that Meixner’s structure performs that same function 22
as called for in claim 1. In particular, we find that Meixner discloses that the 23
equal length levers 19, 21 (Fact 5) ensure that the handle 3 can make a 24
motion relative to the housing 1 nearly exclusively in the direction of the 25
longitudinal axis 9 (Fact 7) and that the distance d between the hinge point 26
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35 on lever 19 and hinge point 37 on lever 21 changes within a range of 1
approximately 0.1 mm (Fact 9). The ordinary meaning of the word “nearly” 2
includes “almost but not quite.” Merriam-Webster’s Collegiate Dictionary 3
(10th ed. 1999) (Fact 10). Therefore, we find that in Meixner, the relative 4
motion between the housing 1 and the handle 3 (Fact 7) is not entirely in one 5
direction and that there is, albeit small, movement that is not in the direction 6
of the longitudinal axis. This small movement in Meixner is at an angle to 7
the longitudinal axis. We find that in Meixner, such movement at an angle 8
to the longitudinal axis has both a movement component in a direction along 9
the longitudinal axis 9 and a movement component in a direction 10
perpendicular to the longitudinal axis 9. Therefore, we agree with the 11
Examiner’s analysis (Ans. 5-6), and find that the Examiner correctly 12
concluded that Meixner does, in fact, disclose a movement component of the 13
housing 1 in a direction that is perpendicular to the longitudinal tool axis 14
when the housing is moved toward the handle as called for in claim 1. 15
Therefore, we conclude that Appellants have not demonstrated that the 16
Examiner erred in rejecting claim 1 and claims 2, 3 and 5-9 depending 17
respectively therefrom over Meixner. 18
19
Rejection of claim 4 under 35 U.S.C. § 103(a) as being unpatentable over 20
Meixner 21
Appellants’ contentions (Br. 8-9) regarding the rejection of claim 4 as 22
being unpatentable over Meixner are not persuasive for the reasons set forth 23
above in our discussion of the rejection of claim 1 as being anticipated by 24
Meixner. Therefore, we conclude that Appellants have not demonstrated 25
that the Examiner erred in rejecting claim 4 over Meixner. 26
27
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CONCLUSIONS OF LAW 1
We conclude that the Appellants have not shown that the Examiner 2
erred in rejecting claims 1-3 and 5-9 under 35 U.S.C. § 102(b) as being 3
anticipated by Meixner, and claim 4 under 35 U.S.C. § 103(a) as being 4
unpatentable over Meixner. 5
6
DECISION 7
The decision of the Examiner to reject claims 1-9 over Meixner is 8
affirmed. 9
No time period for taking any subsequent action in connection with 10
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2007). 11
12
AFFIRMED 13
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mls 18
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STRIKER, STRIKER & STENBY 20
103 EAST NECK ROAD 21
HUNTINGTON NY 11743 22