Ex Parte Oberheim

Patent Trial and Appeal Board

May 7, 2013

11803769 (P.T.A.B. May. 7, 2013)

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.
11/803,769 05/16/2007 Stephen C. Oberheim 0212.78272 7145
10800 7590 05/07/2013
Maginot, Moore & Beck LLP
One Indiana Square, Suite 2200
Indianapolis, IN 46204
EXAMINER
LEE, LAURA MICHELLE
ART UNIT PAPER NUMBER
3724
MAIL DATE DELIVERY MODE
05/07/2013 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 STEPHEN C. OBERHEIM
____________________

Appeal 2011-001707
Application 11/803,769
Technology Center 3700
____________________

Before: LINDA E. HORNER, CHARLES N. GREENHUT, and
NEIL A. SMITH, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-001707
Application 11/803,769
2
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1-
8. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

The claims are directed to a table saw having a measurement and
display system. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A table saw having a main table top surface and a saw
blade that is at least partially extendable above the top surface
of the table saw, said table saw comprising:
a fence rail located on the front of said saw;
a removable fence that is laterally adjustable relative to
the blade of the saw along said fence rail;
a rotational position transducer unit having a retractable
flexible elongated member extending from the unit, said unit
being configured to provide signals that are indicative of the
length that said elongated member extends from said unit;
one of said position transducer unit and said elongated
member being operatively connected to the fence and the other
being operatively connected to the table saw and oriented to
extend and retract said member relative to said unit as said
fence is moved along the fence rail;
a processing unit in communication with said position
transducer unit for receiving said signals and for calculating the
distance between said fence and a reference position and for
generating display signals indicative of said calculated distance;
a switch operatively connected to said processing unit for
establishing a reference position when activated; and
a display unit electrically connected to said processing
unit configured to receive said display signals and provide a
digital display of said calculated distance.

Appeal 2011-001707
Application 11/803,769
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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Smith
Bergqvist
Caldwell
Orlando
Shiotani
Buskness
Dick
US 3,811,196
US 4,366,623
US 4,551,847
US 4,791,757
US 5,282,408
US 5,460,070
US 2002/0157515 A1
May 21, 1974
Jan. 4, 1983
Nov. 5, 1985
Dec. 20, 1988
Feb. 1, 1994
Oct. 24, 1995
Oct. 31, 2002
Hadaway
Schoene
US 2005/0268764 A1
US 6,986,370 B1
Dec. 8, 2005
Jan. 17, 2006

REJECTIONS
Claims 1, 2 and 6-8 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Dick or, in the alternative, under 35 U.S.C. § 103(a) as
unpatentable over Dick, any one of Hadaway, Schoene, Buskness, or
Shiotani, with or without Orlando. Ans. 4.
Claims 3-5 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dick, any one of Hadaway, Schoene, Buskness, Shiotani
and further in view of and Bergqvist. Ans. 7.
Claims 1, 2 ,5, 7 and 8 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Smith, Caldwell, and any one of Hadaway,
Schoene, Buskness or Shiotani. Ans. 9.

OPINION
The Examiner found Dick discloses the subject matter of claims 1, 2,
and 6-8. The Examiner found the fence of Dick to be inherently removable.
Ans. 5-7. In the alternative, the Examiner further found that any one of
Hadaway, Schoene, Buskness or Shiotani teach “removable fences.” Ans. 5-
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6. The Examiner found that the “retractable flexible elongated member” of
claim 1 is disclosed by Dick. Ans. 4-5. The Examiner alternatively found
that Orlando, which Dick incorporates by reference, teaches the use of a
chain as a “retractable flexible elongated member” as part of a positioning
system. Ans. 6-7.
The Examiner found Smith discloses the subject matter of claims 1,
2, 5, 7 and 8 except for the features of the rotational position transducer unit.
Ans. 9-10. The Examiner further found that Caldwell teaches the use of a
rotational position transducer unit with a retractable flexible elongated
member that is usable on a rip fence of a table saw. Ans. 10-11.
Appellant first directs our attention to the claim limitation “removable
fence” and the alleged failure of Dick to disclose this limitation. App. Br.
10-11 and 15; Reply Br. 2-4. The Examiner found that the claims as drafted
merely require that the fence be “removable” without anything more. Ans.
14. While the Appellant argues that Dick fails to disclose the “removable”
feature of the fence, the Examiner is correct in finding that the claims are not
limited to any particular range of removability. Id.
Appellant argues that the Specification requires a more narrow
interpretation of “removable.” See Reply Br. 3-4. Yet the Specification
does not provide evidence of what the narrow scope of “ease of separation”
argued by Appellant would be. During prosecution claims must be given
their broadest reasonable interpretation in light of the specification. See
Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005). Appellant has
not shown what limitations in the claims require the more narrow
interpretation that they advance. Additionally, Appellant has not explained
how the Examiner’s claim interpretation is overly broad and unreasonable in
light of the Specification. Further, “ease” is a relative term that implies a
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Application 11/803,769
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wide breadth of scope. The Specification does not provide for how the
“ease” is measured. “Ease” is both a subjective term, and one of degree; it is
not readily measurable. As such, the “removable” limitation of claim 1 was
reasonably interpreted broadly, in light of the Specification.
The Examiner reasonably found that one would be able to remove the
fence of Dick by simply removing the clamps 42a/b. Ans. 13-14. After
removing such clamps, the fence of the saw shown in Figure 1 of Dick
would be able to slide off of the fence rail 26. Thus, the Examiner
reasonably found that the fence disclosed by Dick would be inherently
“removable.” Id. Appellant has not provided persuasive evidence or
arguments as to why Dick does not disclose a “removable fence.” See In re
Swinehart, 439 F.2d 210, 213 (CCPA 1971) (“[W]here the Patent Office has
reason to believe that a functional limitation asserted to be critical for
establishing novelty in the claimed subject matter may, in fact, be an
inherent characteristic of the prior art, it possesses the authority to require
the applicant to prove that the subject matter shown to be in the prior art
does not possess the characteristic relied on.”). As such, we agree with the
Examiner that Dick discloses the “removable fence” of claim 1.
The Examiner presents an alternative rationale to the anticipation
rejection in view of Dick. Ans. 4-6. The Examiner concluded that the
removable feature of the fence would have been obvious to one of ordinary
skill in the art as it is taught by Hadaway (see para. [0056]), Schoene (see
fig. 1, fence stored under table top), Buskness (see fig. 2) or Shiotani (handle
120 for uncoupling). Ans. 4-6 and 14-15. Appellant does not appear to
challenge any of the Examiner’s factual findings in this regard. At best,
Appellant argues generally that the combination was made “without any
motivation provided by the references themselves or by common sense.”
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Reply Br. 9. We do not agree. The Examiner concluded that one of
ordinary skill in the art would have been motivated to use a removable fence
as taught by any of the alternative references “to allow for movement and
replacebility of the fence system.” Ans. 6. Additionally, Buskness
explicitly teaches why one would be motivated to use a “removable fence”
stating, the fence “must be completely removed from the saw table in order
to utilize the table saw for large pieces of wood, or when not in use.” Col. 1,
ll. 18-21. Appellant additionally argues that the obviousness rejection
should be overruled based on improper hindsight combination of six
references. Reply Br. 9. However, the rejections are based on the
alternative combination with any one of Hadaway, Schoene, Buskness, or
Shiotani – not all four. Further, reliance on a large number of references in a
rejection does not, without more, weigh against the obviousness of the
claimed invention. In re Gorman, 933 F.2d 982, (Fed. Cir. 1991). Thus, we
agree with the Examiner’s conclusion that it would have been obvious to one
of ordinary skill in the art to include in Dick the removable fence as taught
by Hadaway, Schoene, Buskness, or Shiotani. Such a combination would
yield the predictable result discussed by Buckness—the ability to
accommodate large pieces of wood.
Appellant next argues that the limitation “said unit being configured
to provide signals that are indicative of the length that said elongated
member extends from said unit” is not disclosed by the prior art. App. Br.
11-14 and Reply Br. 4-6. The Examiner reasonably interpreted this
limitation to mean that the rotational transducer unit is the structural element
creating the “signal,” and that the “elongated member” need not actively
send any signal to the rotational transducer unit. Rather, the signal must
only be “indicative” of the length that the “elongated member” extends from
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the rotational transducer unit. Ans. 16. The term “indicative” is defined as
“serving as a sign; suggestive.” 1 While the specification should be used to
interpret the meaning of a claim, it is improper to confine the claims to the
embodiments found in the specification. In re Trans Texas Holdings Corp.,
498 F.3d 1290, 1299 (Fed. Cir. 2007) (citations omitted). In addition to the
specification, dictionary definitions are also pertinent in this analysis. Id.
The Examiner found that the controller of Dick anticipates the “rotational
transducer unit” of claim 1, and that the coiled cable 38 is a part of the
controller as it is attached at one end. Ans. 16. The Examiner found that the
coiled cable 38 of Dick stretches as the fence is moved away from the
controller 30. Ans. 16. Therefore, the Examiner correctly concluded that
the “signal” produced by the controller to show the distance that the fence
moves is indicative of the distance which the coiled cable is stretched. Id.
The Examiner correctly concluded that the claim language does not
require that the “retractable elongated flexible member” “recoil” back into
the “rotational transducer unit.” Id. Thus, we agree that Dick’s cable 38
meets the claim limitation of a “retractable elongated flexible member.” TIn
the alternative, the Examiner also found that Dick incorporates by reference
Orlando, and that Orlando explicitly teaches the use of a chain 48, the lower
run of which is drawn back into positioner 36. The combination proposed
by the Examiner would result in a controller having the rotational transducer
unit 30 of Dick with the “flexible elongated member,” the lower run of chain
48, of Orlando. Ans. 16-17. The Examiner concluded that since Dick
explicitly incorporated Orlando by reference, and expressly suggested use of
Orlando’s positioning device, it would have been obvious to one of ordinary

1 (2000). In Collins English Dictionary, retrieved from
http://www.credoreference.com/entry/hcengdict/indicative
Appeal 2011-001707
Application 11/803,769
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skill in the art to use the chain arrangement of Orlando to actuate Dick’s
fence. Ans. 6. In the resulting device, the signal produced by the rotational
transducer unit would be indicative of the length the lower run of chain 48
extends from the transducer to the fence. Id.
Appellant argues with regards to the rejection of claims 3-5 that
Bergqvist lacks a teaching of limitations found in claim 1. App. Br. 14. The
Examiner does not cite to Bergqvist to teach any of the elements of claim 1 –
Dick is relied on for that purpose. See Ans. 7-9. We note that
nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Appellant next argues that the combination of Smith and Caldwell
fails to disclose “a table saw, nor does it have a fence rail, or a removable
fence laterally adjustable relative to the blade of the saw along the fence
rail.” App. Br. 15-16. The Examiner found that Smith discloses a
“removable fence” because the fence is set on the table and rests in the slots
on the table. Ans. 9 citing col. 4, ll. 24-25. While Smith discloses that the
fence is secured to the table via additional structural elements, the Smith
Specification provides a clear road map of how assembly is put together.
See “SET-UP AND USE” at col. 4, l. 20 et seq. There does not appear to be
any structure in Smith preventing the fence from being removed should the
installation process be reversed. Further, Appellant has not provided
substantive arguments, or evidence, as to why Smith fails to disclose the
removable fence. Therefore, we agree with the Examiner’s finding that the
fence disclosed by Smith is “removable.”2 Ans. 20. Further, Caldwell

2 Our discussion above of the Examiner’s alternative reliance on Hadaway,
Schoene, Buskness, or Shiotani, applies here as well.
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explicitly suggests use of the disclosed invention on a table saw. See col. 3,
ll. 46-48. As such Appellant’s argument that “Caldwell is merely a digital
tape measure” (App. Br. 16) is unpersuasive.
Appellant argues that Caldwell fails to teach “a rotational position
transducer unit,” “a processing unit” and a switch which would allow “a
reference position to be established at any of various locations.” App. Br.
16-17. The Examiner found that Caldwell teaches a “rotational position
transducer unit,” which includes “device 10; sprocket ring 64; teeth 66; and
holes in the tape 68 and/or encoding disk 74;” the “retractable flexible
elongated member,” tape 16; and “a processing unit” as shown as a block
diagram in figure 9 is in communication with the position transducer unit.
Ans. 21. The Examiner concluded that replacing the Smith tape measurer
for the Caldwell tape measurer “would be an obvious improvement [to one
having ordinary skill in the art for] allowing for the ability to quickly switch
between English and metric units, and an overall more advanced, accurate,
and precise system of measurement. . .” Ans. 22. We agree with the
Examiner’s factual findings and legal conclusion in this regard.
Appellant lastly argues that the Caldwell reference fails to teach a
switch to “permit a reference position to be established at any of various
locations.” App. Br. 16-17 and Reply Br. 6-9. Appellant’s arguments are not
commensurate with the scope of the claims. Claim 1 merely requires “a
switch operatively connected to said processing unit for establishing a
reference position when activated.” Nowhere does the claim language
require that the switch need to be capable of establishing multiple reference
positions. Caldwell teaches using the switch 48 as a means to zero out the
counter in the processing unit. Whether the zeroing out switch is activated
when the measurement device is fully retracted, or fully or partially
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extended, Caldwell is capable of setting the displayed distance to zero and
establishes a reference position at that point.

DECISION
The Examiner’s rejections of claims 1-8 are affirmed.

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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