Ex Parte Fuchs

Patent Trial and Appeal Board

Mar 29, 2018

13818780 (P.T.A.B. Mar. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/818,780 06/10/2013
10800 7590 03/29/2018
Maginot, Moore & Beck LLP
One Indiana Square, Suite 2200
Indianapolis, IN 46204
FIRST NAMED INVENTOR
Rudolf Fuchs
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.
2178-0557 7246
EXAMINER
FRY,PATRICKB
ART UNIT PAPER NUMBER
3721
MAILDATE DELIVERY MODE
03/29/2018 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 RUDOLF FUCHS
Appeal2017-005314
Application 13/818,780 1
Technology Center 3700
Before: CHARLES N. GREENHUT, MICHELLE R. OSINSKI, and
BRENT M. DOUGAL, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1-
6 and 9. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 According to Appellant the Real Party in Interest is Robert Bosch GmbH.
App. Br. 2.
Appeal2017-005314
Application 13/818,780
CLAIMED SUBJECT MATTER
The claims are directed to a system having at least two oscillation
insert tools. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A system comprising:
a first oscillating insert tool that is configured to be
operatively coupled to an oscillating hand power tool; and
a second oscillating insert tool that differs from the first
oscillating insert tool and that, as an alternative to the first
oscillating insert tool, is configured to be operatively coupled to
the oscillating hand power tool,
wherein at least one of the first and second oscillating
insert tools includes at least one compensating unit configured to
adapt a first mass moment of inertia of the first oscillating insert
tool about an oscillation axis in an operating state of the
oscillating hand power tool and a second mass moment of inertia
of the second oscillating insert tool about the oscillation axis in
the operating state to one another in such a way that a difference
between the first mass moment of inertia and the second mass
moment of inertia is less than 20% of a greater of the first mass
moment of inertia and the second mass moment of inertia.
REJECTIONS
Claims 1-6 are rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite.
Claims 1--4 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over reference Gundlapalli (2008/0027449 Al; Jan. 31, 2008).
Claims 5 and 6 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over reference Gundlapalli and Wuensch (DE 10 2006 022
804; Nov. 22, 2007).
Claim 9 is rejected is rejected under 35 U.S.C. § 103(a) as being
unpatentable over reference Gundlapalli and Pollak (US 2003/0220058 Al;
Nov. 27, 2003).
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Application 13/818,780
OPINION
The claims were rejected as indefinite because, according to the
Examiner:
it is unclear how the compensating unit can affect both oscillating
insert tools ... in the event that only the first oscillating insert
tool includes the compensating unit, it is unclear how the second
mass moment of inertia of the second oscillating insert tool is
altered.
Final Act. 3. However, the Examiner is incorrectly reading the claim to
require a compensating unit that "affect[ s ]" or "alter[ s ]" both tools. The
claim requires first and second oscillating insert tools, allows for more than
one compensating unit, but if there is only one, it must "adapt" one tool to
the other, meaning "[ t ]he compensating unit modifies [a] mass moment of
inertia in such a way that the mass moments of inertia [of the first and
second oscillating insert tools] are closer to one another." Reply Br. 3. The
claim language does not require affecting or altering both tools, only the
difference between their respective moments of inertia. The difference
between the tools' respective moments of inertia can be altered or adapted
by only modifying the moment of inertia of one of the tools.
The next basis for the Examiner's indefiniteness rejection relates to
the phrase, "a difference between the first mass moment of inertia and the
second mass moment of inertia is less than 20% of a greater of the first mass
moment of inertia and the second mass moment of inertia." The Examiner
reasons:
The phrase could be interpreted as the first and second moment
of inertia is less than 20% of either the first or second moment of
inertia or could be interpreted as the combined first and second
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Application 13/818,780
moments of inertia is less than 20% of either the first or second
moment of inertia.
Final Act. 3.
However, neither of the Examiner's proposed constructions is consistent
with the plain language of the claim. The first quantity defined for the
comparison is, "the difference between the first mass moment of inertia and
the second mass moment of inertia." It is unclear why the Examiner believes
that either one or both of the moments of inertia could be interpreted as this
first quantity because neither moment of inertia alone, nor the combined sum
of the moments of inertia could be interpreted as a "difference between [the
moments of inertia.]" The second quantity to be compared is "a greater of
the first mass moment of inertia and the second mass moment of inertia."
Reply Br. 4. Although this could be either the first or second moment of
inertia, as the Examiner states, this phrase still refers to only a single
moment of inertia, whichever one of the two is greater. With this
understanding of the two quantities defined by the claim, there does not
appear to be any issue of indefiniteness in requiring the first quantity to be
less than 20% of the second quantity.
Regarding the prior-art rejections, the Examiner, without a detailed
and fact-specific discussion, holds that even though the prior art does not
disclose the range discussed above, the claimed subject matter would
nevertheless have been obvious because "it has been held that discovering
the optimum value of the result effective variable involves only routine skill
in the art." Final Act. 5 (citing MPEP § 2144.0S(II)(B)). This is the only
rationale provided by the Examiner for modifying the prior art to arrive at
the claimed subject matter. As both the Examiner and the Appellant appear
to recognize, the cited portion of the MPEP cautions, that our reviewing
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Application 13/818,780
court's predecessor held, "a particular parameter must first be recognized as
a result-effective variable ... before the determination of the optimum or
workable ranges of said variable might be characterized as routine
experimentation." Final Act. 5; App. Br. 11.
Appellant correctly argues that the moment of inertia itself, the
criticality of which is recognized in the Gundlapalli and Wuensch references,
is a different variable than that which must be optimized to arrive at the
claimed subject matter: "a difference between the first mass moment of
inertia and the second mass moment of inertia." App. Br. 12-13. Although
each moment of inertia itself will influence a difference between moments of
inertia, the absence of any evidence or technical reasoning to demonstrate
why one would seek to optimize the difference between the two results in a
logical gap in the Examiner's basis for rejecting the claims.
The key to supporting any prima facie conclusion of obviousness
under 35 U.S.C. § 103 is the clear articulation of the reason(s) why the
claimed invention would have been obvious. The Supreme Court in KSR
Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) noted that the analysis
supporting a rejection under 35 U.S.C. § 103 should be made explicit. The
Federal Circuit has stated that "rejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness." In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006),
cited with approval in KSR, 550 U.S. at 418. The Examiner has not carried
this burden.
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Application 13/818,780
DECISION
The Examiner's rejections are reversed.
REVERSED
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