Ex Parte Ginter

Patent Trial and Appeal Board

Apr 26, 2017

13332632 (P.T.A.B. Apr. 26, 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.
13/332,632 12/21/2011 Herbert Ginter 5068.1080 6674
23280 7590 04/28/2017
Davidson, Davidson & Kappel, LLC
589 8th Avenue
16th Floor
New York, NY 10018
EXAMINER
MARKOFF, ALEXANDER
ART UNIT PAPER NUMBER
1711
NOTIFICATION DATE DELIVERY MODE
04/28/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ddk @ ddkpatent .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HERBERT GINTER1
Appeal 2016-002861
Application 13/332,632
Technology Center 1700
Before CHUNG K. PAK, BRIAN D. RANGE, and DEBRA L. DENNETT,
Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134(a) from the
Examiner’s decision2 finally rejecting claims 1-7, 9-11, and 13-18, which
are all of the claims pending in the above-identified application. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellants identify the real party in interest as “Hilti Aktiengesellschaft, a
corporation having a place of business in Schaan, Liechtenstein!)]” Appeal
Brief filed June 30, 2015 (“App. Br.”) at 2.
2 Final Action entered February 18, 2015 (“Final Act.”) at 2-7; the
Examiner’s Answer entered November 20, 2015 (“Ans.”) at 2-7.
Appeal 2016-002861
Application 13/332,632
STATEMENT OF THE CASE
The subject matter of the claims on appeal relates to a tool and a
method for cleaning a drilled hole. Spec. 112. Figures 1 and 2, which
illustrates such tool and method, are reproduced below:
Fig. 1 Fig. 2
Figures 1 and 2 show tool 10 comprising at least one conveying element 20
for removing drilling dust 22 from drilled hole 12 attached to tool shank 14
having axial attachment end 16 and opposite axial cleaning end 18, with at
least one conveying element 20 “arranged in the axial direction like a helix
around tool shank 14.” Spec. 8 128 and 10 Tflf 36-37. At least one
conveying element 20 has continuous dust impermeable concave transport
surface 26 defining channel 24. Spec. 8 129 and 9^30. Aside from at least
one “conveying element 20, on the tool shank 14, there is additionally at
least one brush 28 extending radially towards the outside for cleaning the
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Appeal 2016-002861
Application 13/332,632
wall 30 of a drilled hole [12] (see Figure 2).” Spec. 9131. “Starting from
the brush 28, an axial distance to the conveying element 20 in the direction
of the attachment end 16 is smaller than [an axial distance to the conveying
element 20] in the direction of the cleaning end 18.” Spec. 9 132. Stated
differently, brush 28 is closer to (“directly adjacent to”) convex surface 32 of
conveying element 20 than concave transport surface 26 of conveyor 20
located below the convex surface 32 of conveying element 20 and nearer to
cleaning end 18 than the convex surface 32 of conveying element 20. Id.
Details of the appealed subject matter are recited in representative
claim l,3 which is reproduced below from the Claims Appendix of the
Appeal Brief (with disputed limitations italicized):
1. A tool for cleaning a drilled hole comprising:
a tool shank having, relative to a shank axis, an axial
attachment end and an opposite axial cleaning end; and
at least one conveyor for removing drilling dust from the
drilled hole, the conveyor being attached to the tool shank and
arranged helically in the axial direction around the tool shank,
the conveyor configured as a channel open in a direction of the
attachment end; and
a brush extending radially outwards and attached to the
tool shank to clean a wall of the drilled hole, wherein starting
from the brush, an axial distance to the conveyor in a direction
of the attachment end is smaller than in another direction of the
cleaning end.
App. Br., Claims Appendix A.
3 For purposes of this appeal, we limit our discussion to the broadest claim
on appeal, namely claim 1.
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Appeal 2016-002861
Application 13/332,632
The Examiner has maintained, and Appellant seeks review of, the
following grounds of rejection:
1. Claims 1-8 and 13-18 under 35 U.S.C. § 103(a) as
unpatentable over the disclosure of Reinholdt (DE 2 403 722 published
August 1, 1974 or FR 2 215 285 published August 23, 1974)4;
2. Claims 10 and 11 under 35 U.S.C. § 103(a) as unpatentable
over the combined disclosures of Reinholdt and Haussmann (US 5,002,139
issued March 26, 1991);
3. Claim 1-5, 7, 9-11, 13-15, 17, and 18 under 35 U.S.C.
§ 103(a) as unpatentable over the disclosure of Haussmann; and
4. Claim 6 under 35 U.S.C. § 103(a) as unpatentable over the
combined disclosures of Haussmann and Reinholdt. Final Act. 2-7; Ans. 2-
7; and App. Br. 3.
DISCUSSION
Upon consideration of the evidence relied upon by the Examiner and
Appellants in light of each of Appellant’s contentions, we determine that a
preponderance of the evidence does not support the Examiner’s
determination that Reinholdt and/or Haussmann would have rendered the
subject matter recited in claims 1-7, 9-11, and 13-18 obvious to one of
ordinary skill in the art within the meaning of 35 U.S.C. § 103(a). In
particular, the Examiner has not demonstrated that either Reinholdt or
Haussmann teaches or would have suggested the limitation “starting from
the brush, an axial distance to the conveyor in a direction of the attachment
4 Our reference to Reinholdt is to the English (machine) translations of DE 2
403 722 and FR 2 215 285 relied upon by the Examiner.
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Appeal 2016-002861
Application 13/332,632
end is smaller than [an axial distance to the conveyor] in another direction of
the cleaning end” recited in claim 1. While this limitation requires placing
brush 28 closer to convex surface 32 of conveyor 20 than concave transport
surface 26 of conveyor 20 located below the convex surface 32 of conveyor
20 as indicated supra, the Examiner has not identified any disclosures in
Reinholdt and/or Haussmann, which would have suggested employing such
a conveyor/brush arrangement in either Reinholdt’s or Haussmann’s drilling
tool. See Ans. 3-5. The Examiner’s position relating to the rearrangement
of parts, i.e., a screw conveyor in the form of bristles (designated as brushes)
and even-cords (designated as a conveyor) in Reinholdt (in reference to page
8 of the English translation of the French patent publication and page 4 of
the German patent publication) or strip brush 17 (designated as a conveyor)
and bristle bundle 28 (designated as brushes) in Figure 8 of Haussmann,
without more, does not demonstrate that the resulting arrangement would
meet the conveyor/brush arrangement recited in claim 1. Id.
Accordingly, we reverse the Examiner’s decision rejecting claims 1-
7, 9-11, and 13-18 under 35 U.S.C. § 103(a).
ORDER
Upon consideration of the appeal record, and for the reasons given, it
is
ORDERED that the decision of the Examiner to reject claims 1-8 and
13-18 under 35 U.S.C. § 103(a) as unpatentable over the disclosure of
Reinholdt is REVERSED;
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Appeal 2016-002861
Application 13/332,632
FURTHER ORDERED that the decision of the Examiner to reject
claims 10 and 11 under 35 U.S.C. § 103(a) as unpatentable over the
combined disclosures of Reinholdt and Haussmann is REVERSED;
FURTHER ORDERED that the decision of the Examiner to reject
claim 1-5, 7, 9-11, 13-15, 17, and 18 under 35 U.S.C. § 103(a) as
unpatentable over the disclosure of Haussmann is REVERSED; and
FURTHER ORDERED that the decision of the Examiner to reject
claim 6 under 35 U.S.C. § 103(a) as unpatentable over the combined
disclosures of Haussmann and Reinholdt is REVERSED.
REVERSED
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