Ex Parte Pozgay et al

Board of Patent Appeals and Interferences

May 24, 2012

11592603 (B.P.A.I. May. 24, 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.
11/592,603 11/03/2006 David Pozgay 1576-0122 2807
28078 7590 05/24/2012
MAGINOT, MOORE & BECK, LLP
CHASE TOWER
111 MONUMENT CIRCLE
SUITE 3250
INDIANAPOLIS, IN 46204
EXAMINER
LOW, LINDSAY M
ART UNIT PAPER NUMBER
3721
MAIL DATE DELIVERY MODE
05/24/2012 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 DAVID POZGAY, HARALD KRONDORFER,
JOHN B. FREESE, JOHN DeCICCO, and
STEPHEN C. OBERHEIM
____________________

Appeal 2010-000441
Application 11/592,603
Technology Center 3700
____________________

Before JOHN C. KERINS, EDWARD A. BROWN, and
WILLIAM V. SAINDON, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL
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Application 11/592,603

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the rejection of
claims 1-24. (App. Br. 2). We have jurisdiction over this appeal under 35
U.S.C. § 6(b).
We AFFIRM-IN-PART.
THE INVENTION
The invention is directed to an articulating hand power tool. (Spec.
para. [0002]). Independent claim 1, reproduced below, is representative of
the appealed claims.
1. An articulating hand power tool comprising:
a main housing having a longitudinal axis;
a head portion rotatably engaged with the
main housing for rotation within a plane which
includes the longitudinal axis of the main housing
and placement at a plurality of angles with respect
to the longitudinal axis of the main housing;
an integrated circuit board located within the
main housing; and
at least one controller accessible from
outside of the main housing for controlling the
integrated circuit board.

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THE REJECTIONS
The Examiner rejected the following claims under 35 U.S.C. § 103(a)
as unpatentable over the noted combinations of references: 1, 2
1. Claims 1 and 5 over Ng (US 6,938,706 B2, iss. Sep. 6, 2005)
and Chan (US 6,749,028 B1, iss. Jun. 15, 2004).
2. Claims 2-4 over Ng, Chan, and Rice (US 6,973,748 B2, iss.
Dec. 13, 2005).
3. Claims 6-8 over Ng, Chan, and Potter (US 6,461,088 B2, iss.
Oct. 8, 2002).
4. Claims 9, 13, 20, 21, and 24 over Ng, Chan, and Barth (US
5,533,581, iss. Jul. 9, 1996).
5. Claims 10-12, 22, and 23 over Ng, Chan, Barth, Potter, and
Admitted Prior Art.
6. Claim 14 over Ng, Chan, Barth, and Rice.
7. Claim 15 over Ng, Chan, Barth, Sebastian (US 5,410,229, iss.
Apr. 25, 1995), and Lindley (US 7,097,384, iss. Aug. 29, 2006).
8. Claims 16-19 over Ng, Chan, Barth, and Sebastian.
ANALYSIS
Claims 1 and 5 – Ng and Chan

1 A rejection of claims 1-12 and 20-24 under 35 U.S.C. § 112, second
paragraph, was withdrawn by the Examiner. (Ans. 2).
2 Claims 1-24 are provisionally rejected on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over claims 1-
2 and 10-12 of co-pending App. No. 11/592,829. (Ans. 2). The '829
Application issued May 4, 2010, as US 7,708,085. Appellants have not
indicated that this rejection is to be reviewed in this appeal. (App. Br. 6-7).
Accordingly, we summarily sustain this rejection.
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Regarding claim 1, the Examiner found Ng discloses a hand power
tool comprising a main housing (handle 6), a head portion (drill head 4), and
a controller (button 30, direction selector 40). (Ans. 3; see also Ng col. 3, ll.
63-66, col. 4, ll. 25-26 & ll. 51-53). The Examiner found that the trigger 30
is part of a variable speed control (Ans. 3, citing Ng col. 4, ll. 25-50). The
Examiner found Ng does not disclose an integrated circuit board in the tool.
(Id. at 4).
The Examiner found Chan discloses an integrated circuit board
(electronic operating circuitry 400) used with the trigger to operate a
variable speed control and reverse motor control. (Ans. 4, citing Chan col.
3, l. 28). The Examiner also found that the integrated circuit board allows
the motor speed to be increased as the trigger is depressed further, and has a
slide switch (reversal switch 460) which allows the motor to rotate forward
and backward. (Ans. 4; see also Chan col. 2, ll. 60-65). The Examiner
concluded that it would have been obvious to one of ordinary skill in the art
to provide an integrated circuit board to Ng's device to facilitate variable
speed control and reverse motor control. (Ans. 4).
Appellants contend the Examiner did not clearly articulate why
modifying Ng's device with an integrated circuited board would have been
obvious. (App. Br. 9). Appellants contend Ng already provides the result
proposed by the Examiner (Id.), and that the Examiner did not explain why
an integrated circuit board would "facilitate" the capabilities already
provided by Ng (Id. at 10). These contentions are not persuasive.
The Examiner explained that both Ng and Chan use electronic
variable speed control with the trigger. (Ans. 9). The Examiner further
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explained that "it is well known in the art that electronic circuitry is a fast
and reliable means for operating various parts of power tools." (Id.).
Accordingly, the Examiner found that providing Chan's integrated circuit
board in Ng's device would result in fast and reliable variable speed control
and reverse motor control. Appellants have not apprised us of error in this
finding. In addition, Appellants have not presented any persuasive argument
or evidence that the modification needed to effect the combination would
have been uniquely challenging for one of ordinary skill in the art, and more
than "the simple substitution of one known element for another." See KSR
Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Appellants also have not
provided any persuasive reasoning or evidence to show that the combination
of teachings to use an integrated circuit board would not have yielded
predictable results. In view of the above, we sustain the rejection of claim 1.
Claim 5 depends from claim 1 and recites "a finger platform extending
from the main housing" and "the at least one controller comprises a button
slidable within the finger platform between a first and a second position."
(Emphasis added). The Examiner found Ng discloses a finger platform and
a button (direction selector 40, forward button 42) slidable within the finger
platform. (Ans. 3). The Examiner's annotated version of Figure 2 of Ng
shows the location of the "platform portion." (Ans. 10). The Examiner
found that the platform extends from the main housing, and includes button
40, which is slidable within the platform and therefore "slidable within the
finger portion." (Id.).
Appellants contend that Ng's device does not include any feature
extending out of the clamshells 8 and 10 above the trigger 30. (App. Br. 12).
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Appellants also contend that even if the area in which the trigger 30 is
located is a platform, the button 40 is located above the platform, not within
it. (Id. at 13). These contentions are not persuasive.
Annotated Figure 2 of Ng shows that the button 40 is located within
the "platform," not above it. This figure also shows that the "platform"
including the "finger portion" where button 40 is located extends from a part
of Ng's main housing below reference number 8. Hence, we also sustain the
rejection of claim 5.
Claims 2-4 – Ng, Chan, and Rice
Appellants do not separately argue any specific limitations of claim 2,
but rely on its dependency from claim 1 for patentability. (App. Br. 14).
However, because we find no deficiency in the rejection of claim 1 as
discussed supra, we also sustain the rejection of claim 2.
Claim 3 depends from claim 2 and recites "a trigger switch which
extends outwardly from the main housing." Appellants contend that Ng's
trigger 30 extends outward of the portion identified as a platform by the
Examiner, not the main body. (App. Br., 15-16). This contention is not
persuasive.
In response to this contention, the Examiner explained that the
designated platform in Ng is part of, and extends from, the main housing,
and therefore the trigger extends from the main housing. (Ans. 11).
Appellants have not provided any persuasive argument why the Examiner's
findings and reasoning are incorrect. Hence, we sustain the rejection of
claim 3.
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Claim 4 depends from claim 3 and recites "a finger platform
extending from the main housing adjacent to the trigger switch." Appellants
contend Ng does not disclose a finger platform, and that Ng's trigger extends
outwardly from the main housing, and the main housing cannot extend
outward from itself. (App. Br. 17). These contentions are not persuasive.
The Examiner explained that the finger platform is where a user
places a hand, including a finger above the trigger. (Ans. 10). The
Examiner's annotation to Figure 2 of Ng shows that this "finger platform"
both extends from the main housing and is adjacent to trigger 30. Hence, we
also sustain the rejection of claim 4.
Claims 6-8 – Ng, Chan, and Potter
Claim 6 depends from claim 1 and recites "the first and second
controller defining an axis generally parallel to the longitudinal axis of the
main housing." The Examiner found Ng fails to disclose a controller for
controlling torque placed on the motor. (Ans. 5). The Examiner found
Potter discloses a torque controller (transmission activation switch 42), and
concluded it would have been obvious to provide a torque controller in Ng's
modified device to prevent motor overload. (Id.; see also Potter col. 3, ll. 1-
5).
Appellants contend that Potter's controller 42 is located on the side
opposite the front side, and so the two controllers define an axis extending
from the upper right portion to the lower left portion of Ng's device. (App.
Br. 20, citing Fig. 1 of Potter). We understand Appellants to be referring to
the location of the switch 42 shown in Figure 1 of Potter. However, the
Examiner does not state that the finding made in regard to Potter's teaching
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of the switch 42 is limited to only the embodiment shown in Figure 1. (See
Ans. 5.) Figure 3 of Potter shows the switch 42 located above the motor
activation member 44. Modifying Ng's device to incorporate Potter's switch
42 above trigger 30 would appear to result in first and second controllers
defining an axis generally parallel to the longitudinal axis of Ng's main
housing. Accordingly, Appellants' contentions are not persuasive, and we
sustain the rejection of claim 6.
Claim 7 depends from claim 6 and recites "the integrated circuit
board extends generally parallel to the longitudinal axis of the main
housing." The Examiner found Chan's circuit board, which the sliding
contact 324 slides against, is oriented parallel to the main housing axis such
that the sliding contact 324 can slide against it and contact the strips. (Ans.
12; see also Chan col. 3, ll. 24-35). Appellants contend that Chan's contact
324 moves left and right in Figure 5, and thus the circuit board would be
positioned perpendicularly to the longitudinal axis of the housing 210.
(App. Br. 22). Appellants contend that modifying Ng's device to include
Chan's circuit board would not result in an orientation of the circuit board
generally parallel to the longitudinal axis of the main housing. (Id.). These
contentions are not persuasive.
Claim 7 does not specify that the longest dimension of the integrated
circuit board extends generally parallel to the longitudinal axis, as
Appellants appear to contend. When Chan's integrated circuit board extends
in a direction perpendicular to the longitudinal axis (i.e., the direction of
sliding contact 324 movement), it also extends in a direction generally
parallel to the longitudinal axis (i.e., the board is in a plane parallel to the
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plane of the page in Fig. 5 of Chan). (See also Chan, col. 3, ll. 24-35)
(describing the position and operation of the sliding contacts 324). As
Appellants have not apprised us of any error in the Examiner's findings and
conclusion, we also sustain the rejection of claim 7.
Claim 8 depends from claim 7 and recites "each of the first, the
second and the third controller lie generally in the plane." Claim 1 from
which claim 7 depends recites "a plane which includes the longitudinal axis
of the main housing." The Examiner found that in Ng's device, button 40 is
the "third controller," and modifying Ng with Potter's second controller (i.e.,
switch 42) would result in the first controller 30, second controller 42, and
third controller 40 each lying within the same plane. (Ans. 12-13).
Appellants contend that Ng, Chan, and Potter "necessarily do not teach three
controllers positioned to define an axis which is generally parallel to a
longitudinal axis of a main housing." (App. Br. 24). This contention is not
persuasive.
Claim 8 does not require the first, second, and third controllers to be
positioned to define an axis generally parallel to the longitudinal axis of the
main housing, but to "lie generally in the plane." As discussed supra, Potter
discloses that the switch 42 can be located on the front face of the tool.
Appellants have not provided any persuasive argument why placing Potter's
switch 42 on the front face of Ng's tool would not result in the three
controllers lying generally in a plane. Hence, we also sustain the rejection of
claim 8.
Claims 9, 13, 20, 21, and 24 – Ng, Chan, and Barth
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Claim 9 depends from claim 1 and recites "a motor within the main
housing" and "an articulating gear system operably coupled to the motor and
the bit holder for transferring force between the motor and the bit holder at
each of the plurality of angles with respect to the longitudinal axis of the
main housing." The Examiner found that the modified Ng device does not
include a motor in the main housing, or an articulating gear system operably
connected to the motor and bit holder. (Ans. 5). The Examiner found Barth
discloses an electric drill including the motor in the main housing, and an
articulating gear system 17 to rotate the head portion relative to the motor.
(Ans. 5). The Examiner concluded that it would have been obvious to one
of ordinary skill in the art to provide Ng's motor in the main housing and
provide an articulating gear system to rotate the head portion to reduce the
amount of weight to be rotated in the head portion. (Ans. 5-6; see also Ans.
13).
Appellants contend that modifying Ng's device would not result in the
claimed invention, because the rotation in Barth is not within a plane that
includes the longitudinal axis of the main housing. (App. Br. 26).
Appellants contend that if Ng's device were modified to include Barth's gear
mechanism, rotation of the drill head would cause power not to be
transmitted from a motor located in the main housing to the drill bit. (Id. at
27). These contentions are persuasive.
As shown in Figure 3 of Ng, the drill head 4 is rotatable about axis
Z-Z. We agree with the Examiner that the drill head 4 rotates in a plane that
includes the longitudinal axis of the main housing. (Ans. 13). However,
Barth's hand tool is constructed to allow turning of the housing part 101
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relative to the housing part 102 in a particular way based on the design of the
transmission gearing system 17, as depicted in Figures 1 and 2. In light of
the different way that Ng's drill head rotates with respect to the main
housing, the Examiner has not adequately explained how Ng's device would
be modified to incorporate Barth's gear system and motor in place of Ng's
drill head rotation mechanism and motor, and result in "a head portion
rotatably engaged with the main housing for rotation within a plane which
includes the longitudinal axis of the main housing," as recited in claim 1. As
such, the Examiner has not articulated an adequate reason with rational
underpinnings why one of ordinary skill in the art would have modified Ng
in view of Barth to result in the claimed subject matter. Hence, we do not
sustain the rejection of claim 9.
Independent claim 13 is directed to a hand power tool and recites "a
head portion configured to be engaged with the main housing at a plurality
of angles with respect to the longitudinal axis of the main housing, each of
the plurality of angles within a single plane," and an "articulation gear
system for providing motive force to a bit holder in the head portion." We
agree with Appellants that the Examiner did not adequately explain how
modifying Ng's device in view of Barth would result in the claimed hand
power tool. (App. Br. 29). For reasons similar to those discussed above
with respect to claim 9, we also do not sustain the rejection of claim 13.
Independent claim 20 is directed to a method of operating a hand
power tool and recites "rotating a head portion of the power tool within a
plane including the longitudinal axis of a main housing of the power tool to
one of a plurality of angles with respect to the longitudinal axis,"
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"controlling the speed of a motor located within the main housing based
upon the variable speed signal," and "transferring motive force from the
motor to a component within the head portion." For reasons similar to those
discussed above with respect to claim 9, we also do not sustain the rejection
of claim 20, and claims 21 and 24, which depend from claim 20.
Claims 10-12, 22, and 23 – Ng, Chan, Barth, Potter, and Admitted Prior
Art; Claim 14 – Ng, Chan, Barth, and Rice; Claim 15 - Ng, Chan, Barth,
Sebastian, and Lindley; Claims 16-19 - Ng, Chan, Barth, and Sebastian
Claims 10-12 depend directly or ultimately from claim 9, and claims
22 and 23 depend from claim 20. The Examiner's application of Potter and
Admitted Prior Art for claims 10-12, 22, and 23 (Ans. 6-7) does not remedy
the deficiencies of the Examiner's reliance on Ng, Chan, and Barth for the
rejection of claims 9 and 20, as discussed supra. Hence, we do not sustain
the rejections of claims 10-12, 22, and 23.
Claims 14, 15, and 16-19 depend directly or ultimately from claim 13.
The Examiner's application of Rice for claim 14 (Ans. 7), Sebastian and
Lindley for claim 15 (Ans. 7-8), and Sebastian for claims 16-19 (Ans. 8-9)
does not remedy the deficiencies of the Examiner's reliance on Ng, Chan,
and Barth for the rejection of claim 13, as discussed supra. Hence, we do
not sustain the rejections of claims 14-19.
DECISION
1. We AFFIRM the rejection of claims 1 and 5 under 35 U.S.C.
§ 103(a) as unpatentable over Ng and Chan.
2. We AFFIRM the rejection of claims 2-4 under 35 U.S.C.
§ 103(a) as unpatentable over Ng, Chan, and Rice.
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3. We AFFIRM the rejection of claims 6-8 under 35 U.S.C.
§ 103(a) as unpatentable over Ng, Chan, and Potter.
4. We REVERSE the rejection of claims 9, 13, 20, 21, and 24
under 35 U.S.C. § 103(a) as unpatentable over Ng, Chan, and Barth.
5. We REVERSE the rejection of claims 10-12, 22, and 23 under
35 U.S.C. § 103(a) as unpatentable over Ng, Chan, Barth, Potter, and
Admitted Prior Art.
6. We REVERSE the rejection of claim 14 under 35 U.S.C.
§ 103(a) as unpatentable over Ng, Chan, Barth, and Rice.
7. We REVERSE the rejection of claim 15 under 35 U.S.C.
§ 103(a) as unpatentable over Ng, Chan, Barth, Sebastian, and Lindley.
8. We REVERSE the rejection of claims 16-19 under 35 U.S.C.
§ 103(a) as unpatentable over Ng, Chan, Barth, and Sebastian.
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-IN-PART

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