Ex Parte Glogger et al

Patent Trial and Appeal Board

Mar 17, 2016

12655736 (P.T.A.B. Mar. 17, 2016)

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.
12/655,736 01/05/2010 Josef Glogger 210,672 1498
38137 7590 03/17/2016
ABELMAN, FRAYNE & SCHWAB
666 THIRD AVENUE, 10TH FLOOR
NEW YORK, NY 10017
EXAMINER
GATES, ERIC ANDREW
ART UNIT PAPER NUMBER
3722
MAIL DATE DELIVERY MODE
03/17/2016 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 JOSEF GLOGGER, HERBERT GINTER, and INGO LOESCHKY
____________

Appeal 2014-003278
Application 12/655,7361
Technology Center 3700
____________

Before ANTON W. FETTING, MICHAEL C. ASTORINO, and
TARA L. HUTCHINGS, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 2, 4, 5, and 7–11 under 35 U.S.C. § 103(a) as
unpatentable over Kishi (EP 0 799 674 A1, pub. Oct. 8, 1997) and Fabris
(US 5,667,228, iss. Sept. 16, 1997). We have jurisdiction over the appeal
under 35 U.S.C. § 6(b). We AFFIRM.

1 According to the Appellants, “[t]he real party in interest is the assignee of
the subject application, the Liechtenstein company, Hilti
Aktiengesellschaft.” Appeal Br. 2.
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Application 12/655,736

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Claimed Subject Matter
Claim 10, the sole independent claim, is representative of the subject
matter on appeal and is reproduced below.
10. A suction hood for drillings and drilling dust
produced during drilling, comprising a base body
(12) having a receiving space (13), a union (14) for
connection with a hose of a vacuum source and
projecting from the base body (12), and an opening
(15); at least one sealing element (23) for sealing the
opening (15) and having a through-opening (22) for
a tool, the base body (12) having a plurality of fixing
pins (18) projecting from the base body (12) around
the opening (15) and the at least one sealing element
(23) having a plurality of aligned openings (24)
through which the corresponding fixings pins
extend; a holding member (31) for securing the at
least one sealing element (23) on the base body (12),
the sealing element (23) being clamped between the
holding member (31 )and the base body (12) in a
mounted condition of the holding member (31), the
base body (12) having a securing section (16)
projecting therefrom and on which the holding
member (31) is securable; and bayonet means for
securing the holding member (31) on the securing
section (16) of the base body (12) without use of any
tool.

ANALYSIS
The Examiner finds that Kishi discloses substantially all of the
claimed subject matter required by independent claim 10, except “bayonet
means for securing the holding member on the securing section of the base
body without use of any tool.” Final Act. 2–3. The Examiner relies on
Fabris’s teaching of a bayonet means to remedy the deficiency of Kishi with
regard to the subject matter of claim 10. Id. at 3. The Examiner concludes
Appeal 2014-003278
Application 12/655,736

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that “it would have been obvious to one having ordinary skill in the art . . . to
have combined the suction hood of Kishi with the bayonet arrangement of
Fabris in order to be able to more quickly and easily attach the holding
member to the base body.” Id. (emphasis added).
The Appellants contend Fabris is not a relevant reference, i.e., is non-
analogous prior art, because Fabris is not in the field of the Appellants’
endeavor and not reasonably pertinent to a particular problem with which the
Appellants are concerned. See Appeal Br. 5–6 (citing In re Oetiker, 977
F.2d 1443 (Fed. Cir. 1992)).
Notably, the Examiner can satisfy the analogous-art test by showing
that Fabris is reasonably pertinent to a particular problem with which the
Appellants are concerned. See In re Kahn, 441 F.3d 977, 986–87 (Fed. Cir.
2006) (citing Oetiker at 977 F.2d 1447). Also, as pointed out by the
Appellants, “[i]f 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.” Appeal Br. 6 (citing In re
Clay, 966 F.2d 656, 659 (Fed. Cir. 1992)).
The Appellants support their contention by asserting that the
Appellants’ and Fabris’s inventions solve different problems. Appeal Br. 6.
More particularly, the Appellants assert that “object of the [Appellants’]
invention is to provide a suction hood with an easily replaceable sealing
element supported between to [sic] parts,” whereas “[t]he object of Fabris[‘s
invention] is to provide for quick replacement of a machine tool mandrel
formed of two parts fixedly connected together by bayonet interlocking
connection and capable of tolerating heavy mechanical forces involved in
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Application 12/655,736

4
operation of a machine tool.” Id. The Appellants’ argument is not
persuasive.
The Examiner finds “Fabris is analogous art because it relates to the
particular problem of attaching two objects together.” Ans. 5. And, the
Examiner explains that the benefit of Fabris’s bayonet means, as compared
to Kishi’s device, is to be able to attach, more quickly and easily, a holding
member, e.g., Fabris’s workpiece receiving member 14, to a base body, e.g.,
Fabris’s adaptor 12. See Final Act. 3. The Appellants’ Specification
describes:
Advantageously, the securing section and the
holding member form parts of a bayonet
arrangement. Thereby, by pivoting the holding
member over a small angle, the sealing element can
be easily placed on or removed from the base body.
Spec. 5 (emphases added). As such, according to the Appellants’
Specification, the purpose of the bayonet arrangement, or means, is directed
to easy attachment, and complementarily, easy removal. And, the purpose
of Fabris’s invention is for quick mounting (i.e., attachment) or removal of
two structures. See Fabris, col. 1, ll. 17–23. Hence, Fabris’s disclosure has
the same purpose as the Appellants’ invention. Stated differently, Fabris is
reasonably pertinent to a particular problem with which the inventors are
concerned, because the matter with which Fabris deals logically would have
commended itself to an inventor’s attention in considering his problem. See
Clay at 966 F.2d 659.
The Appellants also contend that “the use of Fabris in Kishi would
require a complete redesign of the Kishi structure and would be contrary to
the intended use of Kishi.” Appeal Br. 6. The Appellants then state:
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Application 12/655,736

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Kishi relates to a dust collector capable of
effectively collecting broken pieces of dust particles
of concrete generate during crushing operation on a
construction site. The object of Kishi is to provide
a dust collector capable of collecting small pieces
and dust particles by vacuum suction, without
scattering them over the work site. To this end,
Kishi provides a bowl-shaped dust catching body
having a large opening at one end and work port for
a crushing tool at the opposite end, and sealing
means fixed to the periphery of the work port (165)
of the dust catching body. Providing a bayonet of
Fabris in Kishi structure would require a complete
redesign of the bowl-shaped body and of the sealing
means and would destroy the intended operation of
the dust collector.
Id. at 7.
The Appellants’ contention is not persuasive because the Appellants
fail to explain, persuasively, how or why the combination of Kishi’s suction
hood and Fabris’s teaching of a bayonet means would require a complete
redesign of the bowl-shaped body and of the sealing means and destroy the
intended operation of the dust collector. We have considered the remainder
of the Appellants’ arguments in the Appeal Brief and have determined that
they are not persuasive.
Turning to the Reply Brief, the Appellants argue that “the
combination of Kishi and Fabris would not include a base body having a
plurality of fixing pins projecting from the base body and extending through
aligning openings of the at least one sealing element.” Reply Br. 2
(emphasis added and omitted). More specifically, the Appellants contend,
“Kishi does not disclose a base body having a plurality of pin projecting
from the base body (have-to possess, contain. Dictionary.com unabridged.
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Application 12/655,736

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Based on the Random House Dictionary, Random House and Inc. 2013).”
Id. at 2–3. Further, the Appellants argue that “[i]f bayonet means is used for
connecting the holding member to the base body, the bolts (211) would have
to be eliminated” and as such, “the combination of Kishi and Fabris would
not include a base body having a plurality of fixing pins projecting from the
base body.” Id. at 3 (emphasis added).
However, the Appellants’ arguments raised in the Reply Brief were
not raised in the Appeal Brief, and are not responsive to an argument raised
in the Examiner’s Answer. As such, these arguments are considered new
arguments as they are presented for the first time in the Reply Brief. The
Appellants have not shown good cause for the Board to consider these new
arguments. As such, the Appellants’ arguments will not be considered by
the Board for purposes of the present appeal. See 37 C.F.R. § 41.41(b)(2)
(2015).2
Thus, the Examiner’s rejection of independent claim 10 as
unpatentable over Kishi and Fabris is sustained. Claims 2, 4, 5, 7–9, and 11
depend either directly or indirectly from claim 10 and are not argued
separately. Thus, we also sustain the Examiner’s rejection of claims 2, 4, 5,
7–9, and 11.

2 37 C.F.R. § 41.41(b)(2) states “[a]ny argument raised in the reply brief
which was not raised in the appeal brief, or is not responsive to an argument
raised in the examiner's answer, including any designated new ground of
rejection, will not be considered by the Board for purposes of the present
appeal, unless good cause is shown.”
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Application 12/655,736

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DECISION
We AFFIRM the Examiner’s decision rejecting claims 2, 4, 5, and 7–
11.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED