Ex Parte Hoffmann et al

Patent Trials and Appeals Board

Jul 8, 2019

14264495 - (D) (P.T.A.B. Jul. 8, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/264,495 04/29/2014
10800 7590 07/09/2019
Maginot, Moore & Beck LLP
One Indiana Square, Suite 2200
Indianapolis, IN 46204
FIRST NAMED INVENTOR
Andre Hoffmann
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2178-1098 8352
EXAMINER
CROSBY JR, RICHARD D
ART UNIT PAPER NUMBER
3724
MAIL DATE DELIVERY MODE
07/09/2019 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 ANDRE HOFFMANN and MICHAEL LAETT
Appeal 2018-004536
Application 14/264,495
Technology Center 3700
Before BIBHU R. MOHANTY, AMEE A. SHAH, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON APPEAL 1
The Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
final decision rejecting claims 1, 3, 4, 12, 13, and 15.3 We have jurisdiction
under 35 U.S.C. § 6(b). We AFFIRM.
1 Throughout this Decision, we refer to the Appellants' Appeal Brief
("Appeal Br."), filed Sept. 28, 2017, Reply Brief ("Reply Br."), filed Mar.
26, 2018), and Specification ("Spec."), filed Apr. 29, 2014, and to the
Examiner's Answer ("Ans."), mailed Jan. 26, 2018, and Final Office Action
("Final Act.," mailed May 2, 2017).
2 According to the Appellants, the real party in interest is Robert Bosch
GmbH. Appeal Br. 2.
3 Claim 2 has been cancelled and claims 7-11 are withdrawn. See
Amendment filed Aug. 24, 2017, entered by Advisory Action mailed
Sept. 5, 2017 ("Advisory Action"). Claims 5, 6, and 14 have been indicated
as allowable over the prior art. Final Act. 7.
Appeal 2018-004536
Application 14/264,495
STATEMENT OF THE CASE
The Appellants' invention relates to a "hand tool machine that
comprises a rapid clamping system that can be operated in a simple manner
and at least during a corresponding unlocking procedure can be operated in a
singlehanded operation." Spec. 2.
Claims 1 and 12 are the independent claims on appeal. Claim 1
(Appeal Br. 16 (Claims App.)) is illustrative of the subject matter on appeal
and is reproduced below:
1. A hand tool machine comprising:
a tool receiving device configured to receive an
application tool, the tool receiving device allocated a
mechanically actuated locking element configured to lock the
application tool in the hand tool receiving device; and
an electric actuator system having an actuator configured
to drive an actuating element configured to actuate the locking
element in a mechanical manner.
THE REJECTI0N4
Claims 1-4, 12, 13, and 155 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Limberg et al. (US 8,230,607 B2, iss. July 31, 2012)
("Limberg"). 6
4 The rejection under 35 U.S.C. § 112 of claims 1-6 and 12 has been
withdrawn. See Advisory.
5 The Examiner's omission of claim 15 is considered in advertent error. See
Advisory (including claim 15 as being rejected).
6 The Examiner cites to In re Venner, 262 F.2d 91 (CCAP 1958) ("Venner")
and Chiou et al. (US 8,291,733 B2, iss. Oct. 23, 2012) ("Chiou") as
evidence.
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Application 14/264,495
ANALYSIS
Claims 1-3, 12, 13, and 15
The Appellants contend that the Examiner's rejection of independent
claims 1 and 12 is in error because Chiou is non-analogous art (see Appeal
Br. 4-12), "the Examiner never explains what structure from a 'reasonable
automated system' would replace the manual system of Limberg" (Reply
Br. 2) ( emphasis omitted), and "Limberg fails to disclose all the limitations
of independent claim l" (id.). After careful review of the record, we are not
persuaded that the Examiner erred.
Claim 1 requires, in relevant part, a mechanically actuated locking
element to lock a tool and an electric actuator system with an actuator
driving an actuating element to "actuate the locking element in a mechanical
manner." Appeal Br. 16. Claim 12 similarly requires, in relevant part, a
rotatable actuated locking element to lock a blade and an electric actuator
system with an actuator driving an actuating element to "rotate the locking
element in a rotating manner." Id.
The Appellants' arguments reflect a misunderstanding of the
Examiner's rejection as claims 1 and 12 being obvious over the combination
of Limberg and Chiou (see Appeal Br. 3-12; Reply Br. 2-5), whereas the
Examiner rejects the claim as obvious over Limberg and cites Venner and
Chiou as evidence (see Final Act. 5-7; Ans. 6-7). The Examiner finds that
Limberg teaches "a rotatable actuated locking element configured (188, 122)
to lock the saw blade in the tool receiving device." Final Act. 5, 6. The
Examiner further finds that Limberg teaches "an actuator system ( 18, 3 8,
126, 142) configured to mechanically actuate the locking element," with
"actuator (18) configured to drive an actuating element (126)." Id. The
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Application 14/264,495
Appellants do not contest the Examiner's findings (see Final Act. 6;
Limberg col. 4, 11. 13-16, 29-33, 53-57, col. 5, 11. 4-15) that Limberg
discloses a manual or mechanical actuator system comprising blade clamp
mechanism 3 8 that includes blade clamp actuator 18, collar 126, and
lever 142.
The Examiner acknowledges that "Limberg does not teach an electric
actuator system configured to mechanically actuate the locking element."
Final Act. 6. However, the Examiner:
utilize[ s] the legal precedent of In re Venner[] to state it would
have been obvious to one having ordinary skill in the art at the
time the invention was made to have replaced the manual locking
mechanism shown within the Limberg reference, with any
reasonable automated locking system, including an electric
actuator system, since it has been held that broadly providing a
mechanical or automatic means to replace manual activity which
has accomplished the same result involves only routine skill in
the art.
Ans. 7 ( emphasis omitted); see also Final Act. 6. In Venner, the court found
that the claimed subject matter was obvious in view of the prior art, stating
"it is well settled that it is not 'invention' to broadly provide a mechanical or
automatic means to replace manual activity which has accomplished the
same result." 262 F.2d at 95 (citation omitted). The Appellants do not
provide argument or reasoning why the application of Venner here is in
error.
The Examiner cites to Chiou "as evidence to note the existence that
locking mechanisms, which are capable of being either manual or electronic,
are known within the prior art." Ans. 6-7; see also Final Act. 6. Chiou
helps to demonstrate why Venner is applicable in teaching an electric lock
with an electronic controller input unit with buttons. Chiou, Abstract, Fig. 1.
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Appeal 2018-004536
Application 14/264,495
The Appellants appear to understand Chiou as teaching the concept of a
locking element actuated manually or electrically. Appeal Br. 7 ("the
electric door lock of Chiou uses a series of gears ... [ and wheels] to
accomplish the function of either manually or electrically locking or
unlocking a door"); 10 ("Applicants' invention uses no such series of
interlocking gears, drive wheel and transmission to lock and unlock a door
lock either manually or electrically"). The Appellants do not otherwise
provide argument or reasoning why Chiou's teaching is in error.
Thus, the Appellants' arguments that "the Examiner never explains
what structure from a 'reasonable automated system' would replace the
manual system of Limberg" (Reply Br. 2-3), that Limberg does not disclose
all of the elements (id.), and that Chiou is not analogous art (see Appeal
Br. 4-12) are misplaced. The Examiner is not combining Venner or Chiou
with Limberg, "replacing" a system in Limberg, or relying solely on
Limberg for disclosing every element.
Based on the foregoing, we are not persuaded of error in the
Examiner's rejection of independent claims 1 and 12 under 35 U.S.C.
§ 103(a). Thus, we sustain the rejection of independent claims 1 and 12, and
of dependent claims 3, 13, and 15, which were not argued separately.
Claim 4
The Appellants contend that the Examiner's rejection of dependent
claim 4 is in error because "the Examiner cites to col. 4, lines 9-19 of
Limberg, but fails to cite any specific structure that actually meets the
limitations of claim 4." Appeal Br. 13 ( citing Final Act. 7). The Appellants
further contend that "[i]t is clear from the above quoted text [from Limberg,
col. 4, lines 9-40] that Limberg does not include 'a drive shaft configured to
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Appeal 2018-004536
Application 14/264,495
be driven by the actuator and a sliding element configured to be actuated by
the drive shaft,' as required by claim 4." Id. at 14.
The Examiner cites to Limberg at columns 4, lines 9-19 for teaching
these limitations. Final Act. 7. Specifically, the Examiner finds that
Limberg teaches "within the text of Limberg; a drive shaft, which is not
shown [in the Figures], is interconnected to a spindle (110) [ a sliding
element] and the actuator ( 18) is connected to the blade clamp mechanism
which is coupled to the spindle (110)." Ans. 9. Limberg discloses that the
blade clamp mechanism 3 8, that includes blade clamp mechanism
actuator 18, "is coupled to a reciprocatable spindle 110 (FIGS. 6-8)
interconnected with a drive shaft of the tool motor (not shown)." Limberg,
col. 4, 11. 13-19.
The Appellants argue that "the Examiner's rejection of claim 4 based
on this fuller identification of elements still fails, because Limberg fails to
disclose all the elements of claim 4." Reply Br. 3. Viewed as a whole, the
Appellants' arguments amount to a recitation of the claim language and a
summary of the Examiner's statement of the rejection followed by a
quotation of the cited portion of the prior art reference, from which the
Appellants summarily conclude that the quoted language of the reference
does not meet the quoted claim language. The Appellants offer no
substantive arguments to rebut the Examiner's findings that Limberg' s drive
shaft teaches the claimed drive shaft and Limberg' s spindle teaches the
claimed sliding element with arguments as to how they are in error. The
Appellants further have not identified error in the Examiner's interpretations
of the cited references or the claim language. And we decline to examine
the claims sua sponte, looking for distinctions over the prior art. Cf In re
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Application 14/264,495
Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) ("It is not the
function of this court to examine the claims in greater detail than argued by
an appellant, looking for ... [patentable] distinctions over the prior art.").
In the absence of a more detailed explanation, we are not persuaded of
error on the part of the Examiner. See In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) ("[I]t has long been the Board's practice to require an applicant to
identify the alleged error in the examiner's rejections," citing Ex Parte Frye,
94 USPQ2d 1072 (BP AI 2010) (precedential) ("The panel then reviews the
obviousness rejection for error based upon the issues identified by appellant,
and in light of the arguments and evidence produced thereon.")). Thus, we
sustain the Examiner's rejection of claim 4 under 35 U.S.C. § 103(a).
DECISION
The Examiner's rejection of claims 1-4, 12, 13, and 15 under
35 U.S.C. § 103 is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a)(l )(iv).
AFFIRMED
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