Ex Parte McROBERTS et al

Patent Trial and Appeal Board

Jul 31, 2018

13858983 (P.T.A.B. Jul. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/858,983 04/09/2013
28268 7590 08/01/2018
THE BLACK & DECKER CORPORATION
701 EAST JOPPA ROAD, TW199
TOWSON, MD 21286
FIRST NAMED INVENTOR
Jason McROBERTS
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.
P-US-TN-12241-B 3565
EXAMINER
MORGAN, EILEEN P
ART UNIT PAPER NUMBER
3723
MAIL DATE DELIVERY MODE
08/01/2018 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 JASON McROBERTS, TERRY L. TURNER,
JENNIFER A. RESH, and TIMOTHY W. FRENCH JR., 1
Appeal2016-008034
Application 13/858,983
Technology Center 3700
Before STEVEN D.A. McCARTHY, JILL D. HILL, and
NATHAN A. ENGELS, Administrative Patent Judges.
HILL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Rudolf Bierl et al. ("Appellants") appeal under 35 U.S.C. § 134(a)
from the Examiner's final decision rejecting claims 1-26. We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 Appellant identifies the Real Party in Interest as Black & Decker Inc.
Appeal Br. 3.
Appeal 2016-008034
Application 13/858,983
BACKGROUND
Independent claims 1, 11, and 1 7 are pending. Independent claim 1,
reproduced below, represents the claimed invention, with certain limitations
italicized.
1. A sander, comprising:
a housing;
an electric motor disposed in the housing having a stator
and an armature, the stator having field coils and the armature
having an armature shaft on which a commutator is affixed;
a pair of brush boxes disposed in the housing on opposite
sides of the commutator;
an orbit mechanism coupled to the armature shaft; and
a platen coupled to the orbit mechanism;
wherein the field coils comprise a first field coil facing a
front of the sander and a second field coil facing a rear of the
sander; and
wherein the brush boxes are rotationally offset from the
field coils with respect to a vertical axis of the sander.
REJECTIONS
I. Claims 1-7, 9, 11-14, and 21-23 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Applicant's Admitted Prior Art
("AAPA"). Final Act. 3.
II. Claims 10, 15, 17-20, and 24--26 stand rejected under 35
U.S.C. § 103(a) as unpatentable over AAPA and Sanders (US 4,715,732, iss.
Dec. 29, 1987) 1. Id. at 2, 4.
1 We address the rejections in a different order than presented. In addition,
we address the separate rejections over AAP A and Sanders together, because
they rely on the same prior art.
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Appeal 2016-008034
Application 13/858,983
III. Claims 8 and 16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over AAPA and Deshpande (US 2005/0245183 Al, pub. Nov.
3, 2005). Final Act. 5.
ANALYSIS
Rejection I- Obviousness of Claims 1-7, 9, 11-14, and 21-23 over AAPA
Claims 1-7, 9, 21, and 22
Appellants' claimed invention differs from AAP A by rotating the
location of the coils 406 ninety degrees relative to a vertical axis, and
similarly rotating the brush boxes 432 ninety degrees relative to a vertical
axis, allowing the brush boxes to reside in empty space and provide a more
compact arrangement of sander parts. Spec. ,r,r 32-34, Figs. 3-8. The more
compact arrangement allows the height of the sander to decrease (id. at ,r,r
11, 36), which decreases fatigue during use of the sander by moving the
handle closer to the surface being sanded (id. at ,r 5).
Regarding independent claim 1, the Examiner finds that AAP A
discloses a housing, an electric motor, a stator, field coils, an armature, brush
boxes, a switch, a terminal block, an orbit mechanism, a platen, and "the
coils offset from the brush boxes." Final Act. 3.
The Examiner concludes, regarding recitation of the field coils 406
facing a front and rear of the sander, that orienting "the coils at 90 degrees
from AAP A or a slight variation therefrom would not produce an
unexpected outcome and would have therefore constituted an obvious
design/mechanical expedient at the time of [Appellants'] invention." Id. at
4.
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Application 13/858,983
Initially, we note that the Examiner erred in determining that AAP A
discloses "the coils offset from the brush boxes." Claim 1 recites the brush
boxes being "rotationally offset from the field coils with respect to a vertical
axis of the sander," and AAPA discloses the brush boxes 332 being aligned
with the field coils 306. See Spec. at Figs. 3, 5, and 7. Further, the
Examiner appears to be concluding that the claimed orientation of the field
coils at 90 degrees from AAP A is an obvious matter of design choice within
the skill in the art. Final Act. 4.
Appellants argue that the Examiner's conclusion contains error
because, inter alia, that orientation of the field coils to face a front and a rear
of the sander allows brush box rotation into a space between the coils, which
in tum "allows for a reduced height sander." Appeal Br. 14--15 (citing Spec.
at ,r,r 32-33).
We agree with Appellants. Design choice is an insufficient basis for a
conclusion of obviousness where use of the claimed feature solves a stated
problem. See In re Kuhle, 526 F.2d 553, 555 (CCPA 1975) (use of claimed
feature solves no stated problem and presents no unexpected result and
"would be an obvious matter of design choice within the skill of the art"); In
re Gal, 980 F.2d 717, 719 (Fed. Cir. 1992) (design choice precluded when
claimed structure and the function it performs are different from the prior
art). Appellants' Specification states that the field coils 406 facing a front
and a rear of the sander, and the relative offset of the brush boxes 432 with
respect to the field coils, allows a reduced height sander that decreases user
fatigue. Spec. ,r,r 5, 11, 32-34, and 36; Figs. 3-8. Reducing fatigue solves a
problem.
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Application 13/858,983
For this reason, we do not sustain the rejection of claim 1. Claims 2-
7, 9, 21, and 22 depend directly or indirectly from claim 1.
Claims 11-14 and 23
Independent claim 11 recites, inter alia, a housing having first and
second halves mated together, and field coils that "extend across the housing
from one half to the other half."
According to the Examiner, the AAP A housing halves could easily be
molded such that the halves mate along a line perpendicular to the line
shown in Fig 1, in which case the coils in the AAP A would extend across
the housing from one half to another, making orientation of the field coils
with respect to the housing halves "within the level of ordinary skill and
[not] patentably distinguish[able] over AAP A." Ans. 8, 11. The Examiner
again appears to be concluding that the claimed orientation of the field coils
with respect to the housing halves is an obvious matter of design choice
within the skill in the art. Final Act. 4.
Appellants do not set forth an explicit reason why it is not an obvious
matter of design choice to mold the AAP A housing halves such that they
mate along a line perpendicular to the line shown in Figure 1, in which case
the AAP A coils would extend across the housing from one half to the other
as claimed. The assertedly unexpected result of allowing for the sander to
be shorter (Reply Br. 9) does not appear to apply to changing the orientation
of the housing halves.
We discern no error in the Examiner's findings and conclusions
regarding the unpatentability of claim 11. We therefore sustain the rejection
of claim 11. Claims 12-14 and 23 depend from claim 11. Appellants make
no argument that claims 12-14 or 23 would be patentable over AAP A if
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Application 13/858,983
claim 11 is not patentable thereover. For this reason, we sustain the
rejection of claims 11-14 and 23.
Rejection II- Obviousness of Claims 10, 15, 17-20, and 24-26
Independent claim 1 7 recites, inter alia, brush boxes being held by a
brush ring that is supported by the stator, the brush boxes being rotationally
offset from the field coils with respect to the vertical axis of the sander. The
brush boxes being held by a brush ring that is supported by the stator is also
recited in dependent claims 10 and 15.
The Examiner finds that AAP A discloses the claimed invention
except for the brush ring, and the Examiner finds that Sanders discloses the
claimed brush ring 39 that holds brush boxes 79. Final Act. 2.
Regarding the brush boxes being rotationally offset from the field
coils with respect to the vertical axis of the sander, the Examiner finds this
disclosure in AAP A. As set forth above regarding independent claim 1, the
Examiner erred in determining that AAP A discloses "the coils offset from
the brush boxes." Final Act. 2. AAPA discloses the brush boxes 332 being
aligned with the field coils 306. See Spec. at Figs. 3, 5, and 7. Further,
because the relative offset of the brush boxes 432 with respect to the field
coils allows a reduced height sander that decreases user fatigue, the offset is
not an obvious matter of design choice. Spec. ,r,r 5, 11, 32-34, and 36; Figs.
3-8.
For this reason, we do not sustain the rejection of claim 17 and claims
18-20 and 24--26 that depend therefrom. Regarding claim 10, which
depends from claim 1, we do not sustain the rejection thereof for the reasons
set forth above. We sustain the rejection of claim 15, which depends from
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Appeal 2016-008034
Application 13/858,983
claim 11, for the reasons set forth above and the reasons indicated regarding
claim 11.
Rejection III-Obviousness of Claims 8 and 16 over AAP A and
Deshpande
Claim 8 depends from claim 1. The Examiner does not find that
Deshpande cures the deficiency of the rejection of claim 1 over AAP A. We
therefore do not sustain the rejection of claim 8. We sustain the rejection of
claim 16, which depends from claim 11, for the reasons indicated regarding
claim 11.
DECISION
We REVERSE the rejection of claims 1-7, 9, 21, and 22 under 35
U.S.C. § 103(a) as unpatentable over AAPA.
We AFFIRM the rejection of claims 11-14, and 23 under 35 U.S.C. §
103(a) as unpatentable over AAPA.
We REVERSE the rejection of claims 10, 17-20, and 24--26 under 3 5
U.S.C. § 103(a) as unpatentable over AAPA and Sanders.
We AFFIRM the rejection of claim 15 under 35 U.S.C. § 103(a) as
unpatentable over AAP A and Sanders.
We REVERSE the rejection of claim 8 under 35 U.S.C. § 103(a) as
unpatentable over AAP A and Deshpande.
We AFFIRM the rejection of claim 16 under 35 U.S.C. § 103(a) as
unpatentable over AAP A and Deshpande.
No time period for taking any subsequent action in connection with
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Appeal 2016-008034
Application 13/858,983
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
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