Ex Parte Gerstenberger et al

Patent Trial and Appeal Board

Apr 18, 2017

13177982 (P.T.A.B. Apr. 18, 2017)

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.
A 93967 7534
EXAMINER
ALIE, GHASSEM
ART UNIT PAPER NUMBER
3724
MAIL DATE DELIVERY MODE
13/177,982 07/07/2011
47988 7590 04/18/201
Walter Ottesen, P.A.
PO BOX 4026
GAITHERSBURG, MD 20885-4026
Oliver Gerstenberger
04/18/2017 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 OLIVER GERSTENBERGER,
BERTHOLD SCHELL, ALEXANDER FUCHS, and
JAN FOHRENBACH
Appeal 2015-004745
Application 13/177,982
Technology Center 3700
Before: JAMES P. CALVE, LEE L. STEPINA, and
FREDERICK C. LANEY, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35U.S.C. § 134 from a rejection of claims 1,
5—7, 9, and 27—30. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appeal 2015-004745
Application 13/177,982
CLAIMED SUBJECT MATTER
The claims are directed to a cutting assembly for a chainsaw. Claim
1, reproduced below with emphasis added, is illustrative of the claimed
subject matter.
1. A cutting assembly for a handheld motor-driven
chainsaw, said cutting assembly comprising:
a saw chain having a plurality of pivotally interconnected
chain links wherein a portion of said chain links are drive links
having respective drive bases;
a guide bar having a peripheral edge defining a guide
groove having side walls;
said guide bar being configured to guide said saw chain
along said peripheral edge;
each one of said drive bases having side surfaces and being
configured to be slidingly guided between said side walls of said
guide groove under the formation of a friction pairing;
a plurality of lubricant pockets formed in at least one of
said side surfaces and being open toward the side wall of said
guide groove corresponding to said one side surface and said
lubricant pockets being otherwise closed;
said one side surface having a flat sliding surface outside
of said lubricant pockets which is configured to slide along the
side wall of said guide groove corresponding thereto;
said lubricant pockets having a mean diameter (d) lying in
a range of 0.6 mm up to and including 1.0 mm and a maximum
depth (if lying in a range of 0.06 mm up to and including 0.10
mm; and,
said mean diameter (d) having a ratio to said maximum
depth (t) of 5.0 up to and including 25.0.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Hofmann US 6,283,389 B1 Sept. 4,2001
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Application 13/177,982
Buchholtz US 2003/0051351 A1 Mar. 20, 2003
REJECTION
Claims 1, 5—7, 9, and 27—30 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Buchholtz and Hofmann.
OPINION
Referring to Figures 1—2C, 10, and 12, the Examiner finds that
Buchholtz discloses most of the features recited in independent claims 1 and
30, but does not disclose the specific dimensions and the diameter-to-depth
ratio of the recited pockets. Final Act. 2—3. However, the Examiner finds
that Hofmann discloses lubricant pockets with a diameter of from 0.2 to 0.5
mm, a depth of from 0.02 to 0.05 mm, and a ratio of diameter to depth of
from 4 to 25. Final Act. 3. The Examiner determines that it would have
been obvious to modify the pockets of Buchholtz to have the dimensions of
the pockets in Hofmann “in order to ensure that the pockets are sufficiently
deep and wide to produce a sufficient lubrication.” Final Act. 3. As claims
1 and 30 require a minimum depth of the pocket to be .06 mm and a
minimum diameter of the pocket to be 0.6 mm, the Examiner further
determines that it would have been obvious to modify the proposed
combination of Buchholtz and Hofmann to meet this requirement as a matter
of routine optimization of a result effective variable. Final Act. 3^4.
Appellants assert that as Hofmann is directed to an injection valve,
and the claimed invention is directed to a cutter assembly for a chain saw, a
person of ordinary skill in the art “would not consider [Hofmann] in an
effort to arrive at [Appellants’] invention.” Appeal Br. 12. In this regard,
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Application 13/177,982
Appellants argue that “a cutter assembly for a motor-driven chain saw
requires a conveyance of lubricant over a longer path.” Appeal Br. 13. In
contrast, Appellants assert, in Hofmann, the lubricant centers the valve body,
lubricant is not conveyed over a distance, and there is no loss of lubrication.
See Appeal Br. 14.
In response, the Examiner states:
Appellant’s argument that Hofmann teaches an injection
valve for fuel and is not related to a chain saw is not persuasive.
Buchholtz already teaches substantially the claim invention
including a chain saw having in chain links. Buchholtz merely
is silent with regards to the diameter and the depth of the
lubricant pockets. However, as stated above, Hofmann teaches
lubricant pockets and specific dimension for the pockets as set
forth in the claims. The lubricant pockets ofHofmann are similar
in shape and size and distance from one another to the lubricant
pockets of Buchholtz. Hofmann teaches that the particular depth
and diameter for the lubricant pockets provide a proper
lubrication in the vicinity of the lubricant pockets. This concept
is reasonably pertinent to the lubricant pockets of the same shape
and size of Buchholtz.
Ans. 7 (emphasis added).
In reply, Appellants assert that the Examiner’s statement that
Hofmann’s disclosure of the dimensions of its pockets and the effect on
lubrication is “reasonably pertinent” to the lubricant pockets of the same
shape and size in Buchholtz is “not on point” because Hofmann is intended
to operate in different conditions from those in which the device of
Buchholtz operates. Reply Br. 5
As the Examiner’s statement regarding whether Hofmann is
“reasonably pertinent” implies,1 Appellants’ argument that a person of
1 The Examiner’s statement did not specifically mention whether Hofmann
was reasonably pertinent to the problem with which the inventors were
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Appeal 2015-004745
Application 13/177,982
ordinary skill in the art would not “consider” Hofmann amounts to an
assertion that Hofmann is non-analogous art. Determining whether prior art
is analogous requires consideration of “(1) whether the art is from the same
field of endeavor, regardless of the problem addressed, and (2) if the
reference is not within the field of the inventor's endeavor, whether the
reference still is reasonably pertinent to the particular problem with which
the inventor is involved.” In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992)
(citation omitted).
We find that Appellants’ field of endeavor, cutting assemblies for
chainsaws, is not the same as Hofmann’s fuel injection valve for internal
combustion engines. Accordingly, we address the second prong of the test
discussed in Clay, whether Hofmann’s disclosure is reasonably pertinent to
the problem with which the inventors in this case were concerned.
Precedent provides guidance as to when a reference is reasonably
pertinent to the problem:
A reference is reasonably pertinent if... it is one which,
because of the matter with which it deals, logically would have
commended itself to an inventor's attention in considering his
problem. If a reference disclosure has the same purpose as the
claimed invention, the reference relates to the same problem, and
that fact supports use of that reference in an obviousness
rejection.
Innovention Toys, LLCv. MCA Entm’t, Inc., 637 F.3d 1314, 1321 (Fed. Cir.
2011) (citing Clay, 966 F.2d at 659). “The pertinence of the reference as a
concerned and instead refers to the lubricant pockets of Buchholtz (and,
therefore, the problem these pockets address). However, we understand the
Examiner to use the correct rule regarding whether a reference is analogous
art inasmuch as Buchholtz and Appellants’ claimed assembly both address
the problem of the occurrence of local dry friction in a cutting assembly.
See, e.g., Buchholtz 13; see also Spec. 1:10—2:16
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Application 13/177,982
source of solution to the inventor’s problem must be recognizable with the
foresight of a person of ordinary skill, not with the hindsight of the
inventor’s successful achievement.” Scientific Plastic Products, Inc. v.
Biotage AB, 766 F.3d 1355, 1359 (Fed. Cir. 2014).
We agree with Appellants’ characterization of Hofmann as having an
objective of “centering” a valve body. See Appeal Br. 12. In this regard,
Hofmann states:
The fuel injection valve for internal combustion engines
according to the present invention, has the advantage over the
prior art that a tilting of the valve member and consequently a
one-sided wear on the guide surfaces can be reliably prevented.
This is achieved in an advantageous manner through the
provision of one more recesses producing a hydraulic wedge
between the valve member and the guide bore in the valve body,
and this hydraulic wedge extends over the essential part of the
guide surface between the valve member and the bore and
therefore hydraulically centers the valve member in the bore.
These recesses in the guide surface of the valve member are
preferably disposed in substantially even distribution over its
circumference so that a uniform pressure compensation on the
valve member is produced, which prevents local pressure peaks
between the valve member and the guide bore and therefore
reliably prevents the one-sided introduction of lateral forces.
Hofmann, 1:59—2:8 (emphases added). In contrast, Appellants’ claimed
arrangement solves the problem of the occurrence of local dry friction in a
cutting assembly. See, e.g., Spec. 1:10—2:16. Although the structure of the
recesses disclosed by Hofmann is similar to the structure of the pockets
recited in Appellants’ claims, the specific purpose of these structures is
different. Thus, we do not find Hofmann’s disclosure to be reasonably
pertinent to the problem with which Appellants were concerned.
Accordingly, we agree with Appellants that a person of skill in the art would
not have consulted Hofmann as proposed by the Examiner, and we reverse
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Application 13/177,982
the rejection of claims 1, 5, 6, 9, and 27—30 for this reason. Further, we are
not persuaded that a skilled artisan, aware of Hofmann’s teachings regarding
lubrication pockets and their dimensions for fuel injection valves, would
have been motivated to experiment and arrive at the claimed ranges for a
chainsaw, which has very different operating conditions than Hofman’s
valve because it must convey lubricant over a path. See Reply Br. 4—5;
Appeal Br. 12—17. It is not clear how a skilled artisan would have arrived at
the claimed ranges based on the teachings of Hofman, particularly where
Appellants disclose their pockets as dimensioned to produce a lubricant film
at friction surfaces and to maintain lubricant reservoirs and turbulent flow
areas. Spec. 4:3—5:8, 15:1—16:7, Fig. 7.
Independent claim 7 recites similar features to those discussed above
regarding claims 1 and 30, except for the lubricant pocket having a depth
ranging from 0.04 mm to 0.12 mm. Appeal Br. 21 (Claims Appendix). The
Examiner relies on Buchholtz and Hofmann for the same features and
reasoning as claims 1 and 30. Final Act. 4—6.2 Appellants make similar
arguments for the patentability of independent claim 7 to those discussed
above regarding claim 1 (Appeal Br. 17—18), and for the same reasons
discussed above, we reverse the rejection of claim 7 as unpatentable over
Buchholtz and Hofmann.
DECISION
The Examiner’s rejection of 1, 5—7, 9, and 27—30 is reversed.
REVERSED
2 The Examiner recognizes that Hofmann’s pocket depth of 0.02—0.05 mm is
within the claimed range of 0.04—0.12 mm. The Examiner relies on routine
optimization for the claimed diameter range. See Final Act. 5—6.
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