Ex Parte Peot et al

Board of Patent Appeals and Interferences

Jun 1, 2009

10720990 (B.P.A.I. Jun. 1, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte DAVID G. PEOT and WILLIAM C. BUCK
____________________

Appeal 2009-000590
Application 10/720,990
Technology Center 3700
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Decided:1 June 1, 2009
____________________

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Before: WILLIAM F. PATE, III, JENNIFER D. BAHR and
JOHN C. KERINS, Administrative Patent Judges.

PATE, III, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
15. App. Br. 3. Claims 16-18 have been withdrawn from consideration. App.
Br. 3. We have jurisdiction under 35 U.S.C. § 6(b). The claims are directed
to a table saw having a reaction system. Claim 1 is illustrative of the claimed
subject matter and is reproduced below:

1. A table saw having a cutting region for cutting
workpieces, comprising:
a. a motor driving a movable cutting tool for cutting
workpieces in the cutting region;
b. a detection system adapted to detect one or more
conditions; and
c. a reaction system associated with the detection system
and the cutting tool wherein the reaction system is configured
to retract the cutting tool at least partially away from the cutting
region and to disengage the motor from driving the cutting tool
upon detection of at least one of one or more conditions by the
detection system, wherein the cutting tool retracts
independently of the motor.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:

Spychalla US 2,674,130 April 6, 1954
Gass US 2002/0020265 A1 Feb. 21, 2002

The Examiner rejected claims 1-15 under 35 U.S.C. § 103(a) as being
unpatentable over Gass in view of Spychalla (Ans. 3), and also over
Spychalla in view of Gass (Ans. 5). The Examiner’s supporting rationale for
the Gass in view of Spychalla rejection is that it would have been obvious to
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provide the up-cut chop saw 1181, read as the claimed “table saw”, depicted
in figure 5 of Gass, with the drive system and blade adjustment system of
Spychalla, in order to reduce the mass of the cutting tool and thereby
facilitate vertical movement. Ans. 3. The Examiner’s supporting rationale
for the Spychalla in view of Gass rejection is that it would have been
obvious to provide Spychalla’s table saw with the detection and reaction
systems taught by Gass in order to ensure the safety of the operator. Ans. 6.
Normally we do not consider the order that references are applied to
be particularly relevant to the determination of obviousness. See, e.g., In re
Bush, 296 F.2d 491, 496 (CCPA 1961). In this instance, however, the
Examiner’s proposed modification of Gass to incorporate the teachings of
Spychalla differs significantly from the Examiner’s proposed modification
of Spychalla to incorporate the teachings of Gass. For this reason, the
Examiner’s rejections of claims 1-15 as being unpatentable over Gass in
view of Spychalla, and, in the alternative, as being unpatentable over
Spychalla in view of Gass, warrant separate discussion.

ISSUES
Appellants allege that the combination of Gass and Spychalla does not
render claim 1 obvious because neither Gass nor Spychalla, alone or in
combination, teach or disclose disengaging the motor from driving the
cutting tool, or retracting the cutting tool independently of the motor, as
required by claim 1. App. Br. 5-7.
Appellants further allege that there is no reason to combine Gass and
Spychalla because they are directed to significantly different aspects of
rotating cutting systems and are only related to the extent that they deal with
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rotating cutting tools. App. Br. 7-8. Appellants also allege that Spychalla
cannot be properly combined with Gass, because in order for the systems
disclosed in Gass to operate properly those systems require a cutting tool
that can be in precise and consistent positions which cannot be achieved by
supporting a blade on the Spychalla arm. App. Br. 8. Appellants further
allege that the indirect drive system of Spychalla cannot be substituted for
the direct drive system of Gass. App. Br. 8. Appellants additionally contend
that if the rotating arm of Spychalla supporting the cutting tool were
incorporated into Gass, it would defeat the intended purpose of Gass,
because the arm of Spychalla requires manual operator action to rotate the
cutting tool, whereas Gass requires that movement occur automatically to
protect the user. App. Br. 9.
In light of these contentions, we must determine if the Appellants
have established that the Examiner erred by rejecting claim 1 as
unpatentable over Gass in view of Spychalla or, in the alternative, as
unpatentable over Spychalla in view of Gass.
Appellants additionally contend that claim 6 is not rendered obvious
by the combination of Gass and Spychalla, because neither Gass nor
Spychalla discloses or suggests a table saw including a trunion (Appellants’
spelling is adopted) carrying a motor and cutting tool, wherein the cutting
tool is mounted on a first side of the trunion, and the motor is mounted on a
second side of the trunion as required by claim 6. App. Br. 9-11. Thus, we
must also determine whether Appellants have established that the Examiner
erred by concluding that Gass and Spychalla would have taught or suggested
this feature.

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FINDINGS OF FACT
1. Spychalla discloses a table saw (figs. 1, 10, 11) having a cutting region
for cutting workpieces (proximate joiner blade 102), comprising: a motor
88 driving a movable cutting tool 102 for cutting workpieces in the
cutting region.
2. Spychalla additionally discloses that the cutting tool 102 is capable of
retracting at least partially away from the cutting region by pivoting tip
table 99 (clockwise as viewed in figs. 1 and 10), which is hingedly
mounted to extending members 103 in order to adjust the height that the
blade 102 protrudes above the table top 20. cf. figs 1 and 10; col. 4, ll.
47-74. This pivoting would cause the driven pulley 109, connected to the
cutting tool 102, to move closer to drive pulley 111, connected to the
motor 88, thereby reducing tension in belt 110’’ which would in turn
cause disengagement of the motor 88 from the cutting tool 102. See col.
5, ll. 9-17 (Explaining that engaging or disengaging the belts makes the
tool active or inactive, respectively, and that the tension on the belt is a
function of the distance between the motor’s drive pulley and the tool’s
driven pulley).
3. Spychalla fails to disclose a detection system and a reaction system
associated with the detection system. Thus, Spychalla fails to disclose
that the retraction of the cutting tool independent of the motor, which
disengages the motor from the cutting tool in Spychalla, occurs upon the
detection of at least one of one or more conditions by a detection system,
and also fails to disclose a reaction system that is configured to retract the
cutting tool.
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4. Gass teaches a machine 10 for cutting workpieces, which includes
operative structure 12 having a cutting tool 14 and a motor assembly 16
adapted to drive the cutting tool. See fig. 1 (shown schematically); para.
[0022]. Gass teaches providing a safety system 18 (para. [0022]) on the
cutting machine 10 which detects the occurrence of a dangerous
condition, via a detection subsystem 22 (para. [0026]), and, in response,
engages the operative structure 12, via a reaction subsystem 24 (para.
[0027]), to take action that will minimize the potential of a serious injury
to an operator. To this end, one of the actions that the reaction subsystem
24 may be configured to take is to retract the cutting tool from its
operative position. Para. [0027].
5. Gass contemplates the applicability of his invention to different types of
machines (para. [0022]) noting that the particular action taken by the
reaction system will vary depending upon the type of machine that the
safety system is applied to. See Paras. [0022], [0027].
6. In the embodiment depicted in figure 5, Gass discloses an up-cut chop
saw 1181 (para. [0048]) having a cutting region for cutting workpieces
(proximate guard 1184), comprising: a motor (shown schematically at 16
in fig. 1) driving a movable cutting tool 40 for cutting workpieces in the
cutting region; a detection system (shown schematically at 22 in fig. 1)
adapted to detect one or more conditions (para. [0026]); and a reaction
system 24 associated with the detection system (para. [0026]), and the
cutting tool 40, wherein the reaction system 24 is configured to retract
the cutting tool 40 (via pneumatic cylinder 1183 and arbor block 1182) at
least partially away from the cutting region upon detection of at least one
of one or more conditions by the detection system (para. [0055]).
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7. Gass does not specifically locate the motor of the up-cut chop saw 1181,
but the motor must be located so that the up-cut chop saw can be used for
its intended purpose, cutting or chopping while the blade 40 is moving
upward. See, e.g., para. [0005].
8. The Specification states that the table saw 10 includes trunion 100 which
can be adjusted up or down or at an angle with respect to the top of the
table 24. Para. [0020].

PRINCIPLES OF LAW
The examiner bears the initial burden of factually supporting any
prima facie conclusion of obviousness. The key to supporting any prima
facie conclusion of obviousness under 35 U.S.C. § 103 is the clear
articulation of the reason(s) why the claimed invention would have been
obvious. The Court in KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418
(2007) noted that the analysis supporting a rejection under 35 U.S.C. § 103
should be made explicit. The Federal Circuit has stated that “rejections on
obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR, 550 U.S. at
418.
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR, 550 U.S. at 416. A prima facie conclusion of obviousness may be
supported by a showing that the claims are directed to a process, machine,
manufacture, or composition of matter already known in the prior art that is
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altered by the mere substitution of one element for another known in the
field, and such modification yields a predictable result. See id. (citing
United States v. Adams, 383 U.S. 39, 40 (1966)). The Court further stated
that:
[I]f a technique has been used to improve one device, and a
person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill.
KSR, 550 U.S. at 417. When considering the obviousness of a combination
of known elements, the operative question is thus “whether the improvement
is more than the predictable use of prior art elements according to their
established functions.” Id.

ANALYSIS
Spychalla discloses the basic structure of the saw described in claim 1.
Fact 1. Spychalla also discloses that the cutting tool is arranged in relation
to the driving motor in a manner that enables the cutting tool to retract
independently of the motor, away from the cutting region, which would
result in the disengagement of the motor from the cutting tool. Fact 2.
Spychalla uses this movement in order to adjust the height of the blade 102
above the surface of the table top 20 and not for the purpose of safety. See
Fact 2. Thus, Spychalla does not disclose a detection system that cooperates
with a reaction system to produce the claimed movement upon the detection
of one or more conditions that, for example, may put the operator in danger.
Fact 3.
Gass teaches that cutting machines 10 may be provided with a safety
system 18 which detects the occurrence of a dangerous condition, via a
detection subsystem 22, and, in response, engages the operative structure 12
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of the machine 10, via a reaction subsystem 24. Fact 4. Gass contemplates
the applicability of his invention to different types of cutting machines. Fact
5. One particular example is depicted in figure 5, wherein Gass
demonstrates the application of his inventive concept to an up-cut chop saw
1181. See Fact 6. In order to apply his invention to the up-cut chop saw
depicted in figure 5, Gass, at least in part, employs some of the existing
operative structure of the chop saw 1181, namely the pneumatic cylinder
1183 and arbor block 1182. See Fact 6. Thus, when the up-cut chop saw
1181 is modified with Gass’s safety system, the pneumatic cylinder 1183
and arbor block 1182 of the up-cut chop saw are used not only to allow the
user to control the raising or lowering of the blade 40 relative to the table top
in the ordinary operation of the saw (See paras. [0005], [0049]), but also
they are additionally employed to retract the blade 40 in response to the
detection of a dangerous condition (See para. [0055]).
Similar to the up-cut chop saw depicted in Figure 5 of Gass, the joiner
portion of Spychalla already has operative structure in place for raising and
lowering the blade 102 relative to the table top 20, namely, a tip table 99,
which is hingedly mounted to extending members 103 and vertically located
by nuts 106, 106’ residing on bolt 105.
It is important to note that Gass does not claim to have invented the
up-cut chop saw that is depicted in figure 5. Figure 5 serves merely to
demonstrate the application of Gass’s inventive concept to one of a variety
of cutting machines (cf. e.g., figs. 3 and 4). Contrary to the Examiner’s
assertion (Ans. 3, 9), what the combination of Gass and Spychalla would not
have suggested is the modification of the up-cut chop saw depicted in figure
5 to include the drive system or the blade adjustment system of Spychalla. A
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primary purpose of an up-cut chop saw, such as the one depicted in figure 5,
is to cut during the upward movement of the blade 40. See Fact 7. If the
drive system or the blade adjustment system of Spychalla were employed in
the up-cut chop saw depicted in figure 5 of Gass, this functionality would be
lost. Thus, there is no rational underpinning to support the Examiner’s
conclusion that it would have been obvious to modify the up-cut chop saw
1181 depicted in Gass with the drive system or the blade adjustment system
of Spychalla. App. Br. 7-9.
Though Appellants correctly point out the flaws in the Examiner’s
reasoning advanced in support of the Examiner’s rejection of claims 1-15 as
unpatentable over Gass in view of Spychalla, Appellants do not provide any
substantive arguments that serve to rebut the Examiner’s alternative
reasoning advanced in support of the Examiner’s rejection of claims 1-5 as
unpatentable over Spychalla in view of Gass.
Applying Gass’s detection and reaction systems to the cutting
machine of Spychalla so that the cutting tool 102 will retract from its
operative position upon detection of at least one condition amounts to
applying Gass’s known safety technique to Spychalla’s known cutting
machine, in order to obtain the predictable result of minimizing the potential
of a serious injury to an operator, and therefore the resulting structure would
have been obvious to one having ordinary skill in the art. Ans. 6. The
Spychalla device, as modified with the safety system of Gass, would result
in a device wherein the motor becomes disengaged from the cutting tool by
virtue of its retraction below the table 20 which causes a loss of tension on
belt 110’’. Contra App. Br. 5-7.
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The fact that the machines that Gass uses to demonstrate the
application of his invention may have the motors directly connected to a
cutting tool (App. Br. 7-9) does not support the conclusion that one of
ordinary skill in the art would have interpreted Gass’s safety system as being
applicable only to those types of machines. Gass contemplates applicability
to a range of machines (Fact 5), and therefore would have suggested to one
having ordinary skill in the art that Gass’s safety system, which includes the
detection and reaction subsystems, may be applied to a machine which has a
pulley drive arrangement and a cutting tool that moves independently of the
motor, such as the one depicted in Spychalla.
Regarding claim 6, which depends from claim 5, read in light of the
Specification, the claimed trunion requires at least some structure on the
table saw which carries the motor on a first side and the cutting tool on a
second side, and is capable of moving to effectuate the adjustment of the
blade. See Fact 8. The Examiner cites to reference numeral 12 in figure 5 of
Gass and to figures 1-12 of Spychalla in addressing this limitation. Ans. 4,
6-7, 10. Reference numeral 12 is used by Gass to refer to the operative
structure generally. Thus, it is unclear what particular element of Gass the
Examiner considers to be the claimed “trunion.” In any case, Gass does not
specifically locate the motor of the up-cut chop saw 1181 depicted in figure
5. Fact 7. Therefore, it amounts to speculation and conjecture to conclude
that Gass teaches or suggests that the motor of saw 1181 is carried by a
trunion that also carries the cutting tool mounted on another side. The motor
88 and cutting tool 102 of Spychalla are each carried on their own movable
structures, carriage 90 and tip table 99, respectively. Thus, Spychalla also
does not teach or suggest the claimed table saw including a trunion that
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carries both the cutting tool and the motor on the respective first and second
sides thereof as required by claim 62.

CONCLUSION OF LAW
On the record before us, Appellants have established that the
Examiner erred by concluding it would have been obvious to modify the up-
cut saw depicted in figure 5 of Gass with the drive system or the blade
adjustment system of Spychalla. However, Appellants have failed to
establish that the Examiner erred by concluding that it would have been
obvious to modify the cutting machine of Spychalla with the safety system,
including the reaction and detection subsystems, of Gass. Further,
Appellants have established that the Examiner erred by concluding that the
combination of Sypchalla and Gass would have taught or suggested a table
saw including a trunion carrying a motor and cutting tool, wherein the
cutting tool is mounted on a first side of the trunion, and the motor is
mounted on a second side of the trunion as required by claim 6.

DECISION
For the above reasons, the Examiner's rejection of claims 1-5 as being
unpatentable over Spychalla in view of Gass is affirmed. The Examiner’s
rejections of claims 6-15 as being unpatentable over Gass in view of
Spychalla, or in the alternative, as being unpatentable over Spychalla in view
of Gass, are reversed.

2 Claims 7-15 depend from claim 6.
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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) (2007).

AFFIRMED-IN-PART

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