Ex Parte Groer et al

Patent Trial and Appeal Board

Mar 20, 2017

13158799 (P.T.A.B. Mar. 20, 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.
13/158,799 06/13/2011 Stefan Groer 708163 1177
23548 7590 03/22/2017
LEYDIG VOIT & MAYER, LTD
700 THIRTEENTH ST. NW
SUITE 300
WASHINGTON, DC 20005-3960
EXAMINER
CHUKWURAH, NATHANIEL C
ART UNIT PAPER NUMBER
3721
NOTIFICATION DATE DELIVERY MODE
03/22/2017 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):
DCpatent@leydig.com
Chgpatent @ ley dig. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEFAN GROER, WOLFGANG BECK, and KLAUS BERTSCH
Appeal 2014-009524
Application lS/158,7991
Technology Center 3700
Before STEFAN STAICOVICI, GEORGE R. HOSKINS, and
ARTHUR M. PESLAK, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Stefan Groer et al. (Appellants) appeal under 35 U.S.C. § 134(a) from
the Examiner’s final decision rejecting claims 1—20. We have jurisdiction
over this appeal under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We REVERSE.
1 According to Appellants, Hilti Aktiengesellschaft is the real party in
interest. Br. 1 (filed May 29, 2014).
Appeal 2014-009524
Application 13/158,799
INVENTION
Appellants’ invention relates to a method and “device for driving a
fastening element into a substrate.” Spec. 1.
Claims 1 and 9 are independent. Claim 1 (with formatting added) is
illustrative of the claimed invention and reads as follows:
1. A method for driving a fastening element into a substrate,
comprising
placing the fastening element in contact with a device
comprising
a mechanical-energy storage device for storing
mechanical energy;
an energy-transfer element that can move between
a starting position and a setting position for transferring
energy from the mechanical-energy storage device to the
fastening element;
an energy-transfer mechanism for transferring
energy from an energy source to the mechanical-energy
storage device, wherein the energy-transfer mechanism
comprises
a motor operable in a tensioning direction
against a load torque that is exerted by the
mechanical-energy storage device on the motor
and operable essentially load-free in a restoring
direction opposite the tensioning direction; and,
a motor control mechanism comprising
power electronics for controlling the motor,
wherein the motor control mechanism can regulate
the current intensity received by the motor to a
specified desired current intensity, for rotation of
the motor in the tensioning direction, and, can
regulate the rotational speed of the motor to a
specified desired rotational speed, for rotation of
the motor in the restoring direction; and,
operating the device, wherein the energy-transfer element
moves between a starting position and a setting position and
transfers energy from the mechanical-energy storage device to
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Application 13/158,799
the fastening element, driving the fastening element into the
substrate.
REJECTIONS
The following rejections are before us for review:
I. The Examiner rejected claims 1—6 and 8—20 under 35 U.S.C.
§ 103(a) as being unpatentable over Simonelli (US
2009/0236387 Al, pub. Sept. 24, 2009) and Shaw (US
5,563,482, iss. Oct. 8, 1996).
II. The Examiner rejected claim 7 under 35 U.S.C. § 103(a) as
being unpatentable over Simonelli, Shaw, and Crutcher (US
5,511,715, iss. Apr. 30, 1996).
ANALYSIS
Rejection I
The Examiner finds that Simonelli discloses, inter alia, a device for
driving a fastening element 154 into a substrate including mechanical-energy
storage device 403, energy transfer element 410, energy transfer mechanism
401 for transferring energy from energy source 405 to mechanical-energy
storage device 403, motor 405, and motor control mechanism 429. Final
Act. 3 (transmitted Nov. 14, 2013); see also Simonelli, Fig. 16. The
Examiner further finds that Simonelli “fails to disclose power electronics for
controlling the motor . . . [that] can regulate the current intensity received by
the motor to a specified desired current intensity and can regulate the
rotational speed of the motor to a specified desired motor control rotational
speed.” Final Act. 3^4. Nonetheless, the Examiner finds that
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Application 13/158,799
Shaw teaches power electronics (30; col. 4, lines 41-46;
col. 8, lines 22-29) for controlling the motor, wherein the motor
control mechanism can regulate the current intensity received by
the motor to a specified desired current intensity, and regulate
the rotational speed of the motor to a specified desired motor
control rotational speed for the purpose of monitoring the current
of the motor of the tool.
Id. at 4. Thus, the Examiner concludes that “it would have been obvious to
one having ordinary skill in the art at the time of invention to provide
Simonelli with the power electronics in order to monitor the current of the
motor of the tool.” Id.
Appellants argue that neither Simonelli nor Shaw discloses that “in
the tensioning direction, the current is controlled and kept constant at a
specified desired intensity.” Br. 5.
In response, the Examiner takes the position that the limitation argued
by Appellants, namely, “that the current is controlled and kept constant at
a desired intensity . . . was not claimed or disclosed in the [Specification.”
Ans. 3 (transmitted July 2, 2014). According to the Examiner, Shaw
discloses “a control mechanism that can regulate current [in the] motor
according to a fastening operation.” Id. (citing Shaw, col. 9,11. 31—36); see
also Adv. Act. 2 (transmitted Mar. 11, 2014).
Independent claim 1 requires, inter alia, a “motor control mechanism
[that] can regulate the current intensity received by the motor to a specified
desired current intensity, for rotation of the motor in the tensioning
direction.” Br. 7 (Claims App.). Independent claim 9 requires a similar
limitation. Id. at 8. Although we appreciate the Examiner’s position that the
claims do not require that the motor current be “kept constant at a desired
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Appeal 2014-009524
Application 13/158,799
intensity” (emphasis omitted), nonetheless, the claims do require that the
motor current be “controlled at a desired intensity.” See Ans. 3.
Claims under examination before the PTO are given their broadest
reasonable interpretation consistent with the Specification. In re Am. Acad.
ofSci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). In this case, an
ordinary and customary meaning of the term “regulate” is “to fix or adjust
the time, amount, degree, or rate of.” Merriam-Webster’s Collegiate
Dictionary (10th ed. 2005). Appellants’ Specification describes operating
the motor in a “current intensity-regulated manner” where the “desired
current intensity is defined according to specified criteria before operation of
the motor.”2 Spec. Tflf 157, 159 (emphasis added). As such, in light of
Appellants’ Specification, we construe the limitation of a “motor control
mechanism” for “regulating] the current intensity received by the motor to a
specified desired current intensity[] for rotation of the motor” to mean a
motor control mechanism that, for motor rotation, fixes the motor current
intensity to a specific, desired current intensity value.
Shaw discloses that the current in the motor is a function of the
fastening element size and hardness of the workpiece into which the
fastening element is driven. Shaw, col. 9,11. 31—34. For a given fastening
element and workpiece, Shaw teaches that the current in the motor increases
as the fastening element penetrates the surface of the substrate (Tl), remains
substantially constant as the fastening element advances into the substrate
(T2), and increases rapidly as the head of the fastening element comes into
contact with the substrate (T3). Id., col. 1,11. 41—53, Fig. 4. Shaw further
2 An ordinary and customary meaning of the term “define” is “to fix or
mark the limits.” Merriam-Webster’s Collegiate Dictionary (10th ed. 2005).
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Application 13/158,799
discloses control circuit 30 for monitoring the current in the motor and
stopping the motor when detecting an increase in the rate of change of
current. Shaw, Abstract.
Hence, Shaw’s control circuit 30 merely monitors the variation of the
current in the motor during motor rotation, rather than fixing, i.e., regulating,
the current intensity to a specific, desired current intensity value, as called
for by each of independent claims 1 and 9. Moreover, we note that even
assuming that fixing the current to zero to stop Shaw’s motor constitutes
regulating the current intensity to a specific, desired current intensity value,
as called for by each of independent claims 1 and 9, the claims require
“regulating] the current intensity ... for rotation of the motor,” not for
stopping of the motor, as Shaw discloses.
In conclusion, for the foregoing reasons, we agree with Appellants
that Shaw fails to disclose “that the current is regulated to a specified
desired current intensity.” Br. 5. Accordingly, we do not sustain the
rejection under 35 U.S.C. § 103(a) of independent claims 1 and 9, and
claims 2—6, 8, and 10-20 that depend therefrom, as being unpatentable over
Simonelli and Shaw. See In re Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988)
(If an independent claim is nonobvious under 35 U.S.C. § 103, then any
claim dependent therefrom is nonobvious).
Rejection II
The Examiner’s use of the disclosure of Crutcher does not remedy the
deficiency of Simonelli and Shaw as discussed supra. See Final Act. 8.
Therefore, for the same reasons as discussed above, we also do not sustain
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the rejection under 35 U.S.C. § 103(a) of claim 7 as unpatentable over
Simonelli, Shaw, and Crutcher.
SUMMARY
The Examiner’s decision to reject claims 1—20 is reversed.
REVERSED
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