Ex Parte Gschwend

Board of Patent Appeals and Interferences

Aug 30, 2012

11725075 (B.P.A.I. Aug. 30, 2012)

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.
11/725,075 03/15/2007 Hans Gschwend 208,064 5454
38137 7590 08/31/2012
ABELMAN, FRAYNE & SCHWAB
666 THIRD AVENUE, 10TH FLOOR
NEW YORK, NY 10017
EXAMINER
LOPEZ, MICHELLE
ART UNIT PAPER NUMBER
3721
MAIL DATE DELIVERY MODE
08/31/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HANS GSCHWEND
____________

Appeal 2010-003436
Application 11/725,075
Technology Center 3700
____________

Before PHILLIP J. KAUFFMAN, GAY ANN SPAHN, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Hans Gschwend (Appellant) seeks our review under 35 U.S.C. § 134
of the Examiner’s rejection of claims 4 and 7-10 under 35 U.S.C. § 103(a) as
unpatentable over Nikolich (US 4,403,722, issued Sep. 13, 1983) and
Ruppel (US 7,270,100 B2, issued Sep. 18, 2007). Appellant cancelled

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Application 11/725,075

2
claims 1-3. The Examiner objected to claims 5 and 6 as being dependent
upon a rejected base claim. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

THE CLAIMED SUBJECT MATTER
The claimed subject matter relates to a combustion-engined setting
tool having an electric motor as part of a generator unit for generating
electrical energy, in particular, the generator unit converts combustion
energy into electrical energy, and “[t]he generated electrical energy can be
used for recharging the electrical energy source, e.g., one or more batteries
or accumulators.” Title; Spec. 2, l. 16 to Spec. 3, l. 6. Claims 8, 9, and 10
are independent and claim 8, reproduced below, with emphasis added, is
illustrative of the subject matter on appeal.
8. A combustion-engined setting tool for
driving fastening elements in a workpiece,
comprising:
a combustion chamber (14) for an oxidant-
fuel mixture;
a ventilator (16) located in the combustion
chamber;
an electric motor (18) for driving the
ventilator (16); and
electrical energy source (24) for supplying
electrical energy to the electric motor (18), the
electric motor (18) forming part of a generator unit
(30) for generating the electrical energy, wherein
the generator unit (30) has a control unit (31) for
switching the electric motor (18) between a motor
operational state and a generator operational
state.

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OPINION
At the outset, we note that the present Application claims foreign
priority under 35 U.S.C. § 119 to a German Application, i.e., DE 10 2006
000 127.3, filed March 22, 2006. Despite this claim to foreign priority, the
present Application is only entitled to its United States filing date of March
15, 2007 until such time that priority is perfected by the filing of a certified
translation of the priority document. Appellant attaches a certified
translation of the priority document to the Reply Brief filed December 1,
2009, and argues that Ruppel has been overcome as a reference against the
present Application in accordance with the Manual of Patent Examining
Procedure (MPEP) § 201.15, because the disclosure in Ruppel that the
Examiner relied upon, i.e., column 2, lines 35-49 (see Ans. 3), is not present
in Ruppel’s parent application, i.e., US 11/071,491, filed March 3, 2005, so
that Ruppel is only entitled to US 11/477,193’s filing date of June 27, 2006.
See Reply Br. 3-4.
We are not persuaded by Appellant’s argument that Ruppel has been
overcome as a reference against the present Application. In pertinent part,
37 C.F.R. § 41.41(a) (2011) states:
(2) A reply brief shall not include any
new or non-admitted amendment, or any new or
non-admitted affidavit or other evidence. See
§ 1.116 of this title for amendments, affidavits or
other evidence filed after final action but before or
on the same date of filing an appeal and § 41.33
for amendments, affidavits or other evidence filed
after the date of filing the appeal.

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In turn, 37 C.F.R. § 41.33 (2011) states:
(d) (1) An affidavit or other evidence filed
after the date of filing an appeal pursuant to
§ 41.31(a)(1) through (a)(3) and prior to the date of
filing a brief pursuant to § 41.37 may be admitted
if the examiner determines that the affidavit or
other evidence overcomes all rejections under
appeal and that a showing of good and sufficient
reasons why the affidavit or other evidence is
necessary and was not earlier presented has been
made.
(2) All other affidavits or other evidence
filed after the date of filing an appeal pursuant to
§ 41.31(a)(1) through (a)(3) will not be admitted
except as permitted by §§ 41.39(b)(1),
41.50(a)(2)(i) and 41.50(b)(1).

Since Appellant’s certified translation of the priority document
constitutes other evidence filed after the date of the filing of an appeal in
accordance with 37 C.F.R. § 41.33(d)(2) and since none of 37 C.F.R.
§§ 41.39(b)(1), 41.50(a)(2)(i) and 41.50(b)(1) apply, Appellant’s certified
translation of the priority document has not been admitted into the record of
the present Application. Consequently, Ruppel has not been overcome as a
reference against the present Application.
Obviousness based on Nikolich and Ruppel
Independent claim 8
The Examiner finds that Nikolich substantially discloses the claimed
subject matter of independent claim 8, including a combustion chamber 21, a
ventilator 22, an electric motor 61, and an electrical energy source (battery
20). Ans. 3. However, the Examiner also finds that Nikolich fails to
disclose that “the electric motor forms part of a generator unit for generating
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Application 11/725,075

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the electrical energy, wherein the generator unit has a control unit for
switching the electric motor between a motor operational state and a
generator operational state.” Id. To cure the deficiency of Nikolich, the
Examiner turns to Ruppel to teach
the concept of an electrical machine comprising an
electric motor (12) for activating a shaft (S),
electrical energy source, i.e.[,] battery (14,18) for
supplying electric energy to the electric motor
(12), wherein the electric motor (12) forms part of
a generator unit for generating the electrical energy
(col. 2, lines 32-38), and the generator unit having
a control unit, i.e.[,] switch (16) for switching the
electric motor between a motor operational state
(as shown in col. 2, lines 18-22) and a generator
operational state (when the switch 16 is turned to
an "on" position as shown in col. 2, lines 32-49)
for the purposes of automatically generating
electrical energy and recharging the power source
(i.e.[,] battery), enhancing the apparatus versatility
and portability.

Ans. 3-4. The Examiner concludes that it would have been obvious to one
of ordinary skill in the art “to have provided Nikolich’s electric motor as part
of a generator unit as taught by Ruppel in order to automatically generate
electrical energy to recharge the power source.” Ans. 4.
Appellant sets forth four arguments against the Examiner’s
obviousness rejection of claim 8 based on Nikolich and Ruppel. App. Br. 9-
17. First, Appellant argues that the combination of Nikolich and Ruppel
“lack[s] a control unit for switching the electric motor between a motor
operational state and generator operational state,” because Ruppel’s motor
only has a single operational state. App. Br. 10 and 13.
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The Examiner responds that Ruppel teaches “a machine having an
electric motor used in two operational modes, e.g.[,] a motor operational
mode and a generator operational mode.” Ans. 5 (citing to col. 2, ll. 18-22
for the motor operational mode that rotates and turns a crankshaft to start the
engine, and to col. 2, ll. 32-49 for the generator operational mode to generate
electricity and recharge the power source or battery).
In view of the Examiner’s finding that Ruppel discloses a control unit
in the form of switch 16, and that the switch 16 is capable of switching the
electric motor 12 between motor operational and generator operational
states, we are not persuaded by Appellant’s argument that the combination
of Nikolich and Ruppel lacks a control unit. In addition, as the Examiner
specifically cites to Ruppel’s disclosure that turning the switch 16 to the
START position to rotate and turn the crankshaft of the engine to start the
engine (col. 2, ll. 20-22), and turning the switch 16 to the ON position to cut
off current from the battery 18 so that the electric motor 12 becomes a
generator to supply electric current to the battery 18 to recharge the battery
18 (col. 2, ll. 32-36), we are not persuaded that Ruppel has only a single
operational state. Appellant has not pointed to any evidence to the contrary
and an attorney's arguments in a brief cannot take the place of evidence. See
In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974).
Second, Appellant argues that Ruppel is non-analogous art as not
being in the field of Appellant’s endeavor and not being reasonably pertinent
to the particular problem with which Appellant’s invention was concerned.1

1 Appellant cites to In re Clay, 966 F.2d 656, 658-59 (Fed. Cir. 1992) (“Two
criteria have evolved for determining whether prior art is analogous: (1)
whether the art is from the same field of endeavor, regardless of the problem
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App. Br. 10-11. In particular, Appellant alleges that “[t]he present invention
is directed to solving a problem of operating a setting tool independently of
availability of external power source,” while Ruppel’s object “is to provide
for an electric start of the gasoline engine of a mini-cultivator.” App. Br. 11
(citing to Ruppel, col. 1, l. 23).
Appellant characterizes Ruppel’s object too narrowly. In view of the
holding in KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 420 (2007) that “any
need or problem known in the field of endeavor at the time of invention and
addressed by the patent can provide a reason for combining the elements in
the manner claimed,” the second part of the analogous art test as stated in
Clay must be expanded to require a determination of whether the reference,
even though it may be in a different field from that of the inventor's
endeavor, is one which, because of the matter with which it deals, logically
would have commended itself to an artisan's (not necessarily the inventor's)
attention in considering any need or problem known in the field of endeavor.
In the instant case, Ruppel relates to the problem of an “electric motor [that]
may also act as a generator supplying electric current to the battery to charge
the battery.” Ruppel, Abstract. Appellant’s problem is “not having to
withdraw batteries from the tool in which they are used in order to recharge
the batteries.” See Spec. 2, ll. 7-10. As such, Ruppel logically would have
commended itself to an inventor’s attention in considering his problem of
“making an electric motor part of a generator unit for generating electrical
energy.” See Ruppel, Abstract.

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.”).
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Third, Appellant argues that “[t]o use the Nikolich electric motor as a
generator, a substantial reconstruction and redesign of the Nikolich structure
would be required.” App. Br. 12.
We disagree. Appellant’s argument actually relates to the “basic
principles” under which the prior art device was designed to operate. See In
re Ratti, 270 F.2d 810, 813 (CCPA 1959) (“This suggested combination of
references would require a substantial reconstruction and redesign of the
elements shown in [the primary reference] as well as a change in the basic
principles under which the [primary reference] construction was designed to
operate.” (Emphasis added)). In Ratti, the modification suggested by the
Examiner changed the basic principle of sealing from attaining sealing
through a rigid, press-fit, interface between the components, to attaining
sealing by providing a resilient interface between the components. Id. at
811-13. This modification fundamentally changed the technical basis of
how a seal performed its sealing function and how a sealed interface was
attained. In the case before us, making an electric motor function as a
generator to supply electric current to a battery only requires a switch and a
relay which still permits the electric motor and the battery to operate in the
same manner. This is not a “change in the basic principles” of operation and
would not require a substantial reconstruction and redesign of the Nikolich
structure.
Fourth, Appellant argues that since Ruppel “does not suggest an
electric motor having two different modes of operation,” claim 8 is only
rendered obvious by the combination of Nikolich and Ruppel with the use of
impermissible hindsight. App. Br. 13. Stated another way, Appellant argues
that “[o]ne of ordinary skill in the art of setting tools would not look for
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9
solution of his/her problem to the field of cultivators or electric motors
therefor[] unless she/he is guided by the [teachings of the] present
invention.” Id.
As discussed supra with respect to Appellant’s first argument, the
Examiner has shown by a preponderance of the evidence that Ruppel
discloses two different modes of operation. Thus, Appellant’s argument is
based upon an incorrect premise and Appellant has failed to establish that
the Examiner has relied on impermissible hindsight.
Accordingly, we sustain the Examiner’s rejection of independent
claim 8 under 35 U.S.C. § 103(a) as unpatentable over Nikolich and Ruppel.
Independent claim 9 and dependent claims 4 and 7
Appellant argues claims 4, 7, and 9 as a group, and we select
independent claim 9 as the representative claim. See App. Br. 15-17; see
also 37 C.F.R. § 41.37(c)(1)(vii) (2011). Claims 4 and 7 stand or fall with
claim 9.
Independent claim 9 is directed to a combustion-engined setting tool
for driving fastening elements in a workpiece and recites, inter alia, “idle
means (47) for connecting the generator shaft (37) with a rotor shaft (17) of
the electric motor (18).” App. Br., Clms. App’x.
The Examiner makes the same findings as discussed supra with
respect to independent claim 8, but also finds that Ruppel discloses “the
generator unit has a generator shaft (12A) . . . and idle means (13A, 13B) for
connecting the generator shaft with a rotor shaft (S).” Ans. 4.
Appellant argues that the combination of Nikolich and Ruppel
“lack[s] at least one claim limitation, namely, idle means that connect the
generator shaft with a rotor shaft of the electric motor.” App. Br. 16. In
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particular, Appellant characterizes the present invention’s “idle means (47)
[as] provid[ing] for shifting of the electric motor to the generator operational
state,” whereas in Ruppel, “the rotor shaft (13a) is directly and continuously
connected with the ‘generator’ shaft (crankshaft S).” Id (citing to Ruppel,
col. 2, ll. 13-14).
With respect to the idle means, Appellant’s Specification indicates
that Figure 4 particularly shows “the generator shaft 37 is connected with the
rotor shaft 17 of the electric motor 18 by idle means 47 that is supported by
a first bearing 48 and a support bracket 41.” Spec. 10, ll. 14-17. In order for
a prior art element to meet a section 112, sixth paragraph, means-plus-
function limitation, the prior art element must either be the same as the
disclosed structure or be a section 112, sixth paragraph, equivalent. In re
Donaldson Co., 16 F.3d 1189, 1195 (Fed. Cir. 1994). Two structures may
be “equivalent” for purposes of section 112, sixth paragraph, if they perform
the identical function, in substantially the same way, with substantially the
same result. Kemco Sales, Inc. v. Control Papers Co., 208 F.3d 1352, 1364
(Fed. Cir. 2000). Since claim 9 recites open-ended comprising language, we
are not persuaded by Appellant’s argument that Ruppel’s rotor shaft is
continuously connected with the generator shaft, because if the rotor and
generator shafts are always connected, then the rotor and generator shafts
satisfy claim 9’s language of being connected. As Ruppel’s idle means 13A,
13B appears to perform the identical function of connecting the generator
shaft 12A with the rotor shaft S of the electric motor 61, in substantially the
same way, with substantially the same result, we find that Ruppel’s structure
is equivalent for the purposes of section 112, sixth paragraph. Moreover,
Appellant’s statement that “the idle means (47) provide for shifting of the
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11
electric motor to the generator operational state” is not recited in claim 9,
nor has Appellant pointed out where the Specification discloses this.
Accordingly, we sustain the Examiner’s rejection of independent
claim 9, and claims 4 and 7 dependent thereon, under 35 U.S.C. § 103(a) as
unpatentable over Nikolich and Ruppel.
Independent claim 10
Independent claim 10 is directed to a combustion-engined setting tool
for driving fastening elements in a workpiece, and calls for an electric motor
to form part of a generator unit that charges an electrical energy source for
supplying electrical energy to electrical consumers of the setting tool.
The Examiner makes the same findings as discussed above with
respect to independent claim 8.
Appellant argues that the combination of Nikolich and Ruppel does
not “suggest a setting tool having a ventilator the electric motor of which
forms part of a generator unit for charging the electrical energy source that
supplies electrical energy to electrical consumers of the setting tool,
including the electric motor.” App. Br. 17.
In contesting the rejection of claim 10, Appellant recites some of the
limitations set forth in claim 10 and baldly alleges that the cited references
do not teach these limitations. App. Br. 17. This vague statement does not
constitute a separate argument for patentability of claim 10 pursuant to 37
C.F.R. § 41.37(c)(1)(vii). See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir.
2011) (holding that the Board had reasonably interpreted 37 C.F.R.
§ 41.37(c)(1)(vii) as requiring “more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art.”). Appellant’s
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statement does not specifically address the Examiner's findings and
proposed combination of the teachings of Nikolich and Ruppel (Ans. 3-4) or
point out why they are in error.
Accordingly, we sustain the Examiner’s rejection of claim 10 under
35 U.S.C. § 103(a) as unpatentable over Nikolich and Ruppel.

DECISION
We affirm the Examiner’s decision to reject claims 4 and 7-10.
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

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