Ex Parte Robson et al

Board of Patent Appeals and Interferences

Apr 30, 2010

10635156 (B.P.A.I. Apr. 30, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte NIGEL ROBSON and BRIAN WADGE
____________

Appeal 2008-006370
Application 10/635,156
Technology Center 3700
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Decided: April 30, 2010
____________

Before ALLEN R. MACDONALD, Vice Chief Administrative Patent Judge,
and LINDA E. HORNER and JOHN C. KERINS, Administrative Patent
Judges.

KERINS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2008-006370
Application 10/635,156

STATEMENT OF THE CASE
Nigel Robson and Brian Wadge (Appellants) seek our review under
35 U.S.C. § 134 of the final rejection of claims 9-30, the only claims
pending in the application. We have jurisdiction under 35 U.S.C. § 6(b)
(2002).

SUMMARY OF DECISION
We AFFIRM-IN-PART.

THE INVENTION
Appellants’ invention is directed to a power tool having a tool head
and a tool body, with the tool head having a connection structure that is
received in an opening of the tool body to removably attach the tool head to
the tool body, and a guide slot coupled to the opening and configured to
receive therein a guide rail such that the guide slot and guide rail resist
relative rotation between the tool head and tool body. Independent claims 9
and 22, reproduced below, are illustrative of the claimed subject matter:
9. A power tool comprising:

a tool head having a connection structure and an
input member that extends through the connection
structure;

a tool body having a housing and a motor, the
motor being housed in the housing and including
an output member, the housing defining an
opening that is configured to receive the
connection structure, the tool head being inserted
into the opening along an insertion axis to
removably attach the tool head to the tool
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body and couple the input member to the output
member;

at least one guide rail intersecting the connection
structure, each guide rail being generally parallel
to the insertion axis when the tool head is attached
to the tool body; and

at least one guide slot coupled to the opening, each
guide slot being generally parallel to the insertion
axis when the tool head is attached to the tool
body and configured to receive an associated guide
rail to thereby resist relative rotation between the
tool head and the tool body.

22. A power tool comprising:

a plurality of tool heads, each of the tool heads
having a connection structure and at least one
guide rail, the connection structure having an
insertion axis and including an alignment
projection that extends from a first abutting face
of the connection structure, the alignment
projection being circumferentially disposed about
the insertion axis, the at least one guide rail being
coupled to an outer perimeter of the connection
structure and being disposed generally parallel
to the insertion axis; and

a tool body having a housing, a motor and at least
one guide slot, the motor being housed in the
housing and including an output member, the
housing defining an opening that is configured to
receive the connection structure, the opening
extending through a second abutting face, the at
least one guide slot being formed in an inner
perimeter of the opening;

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wherein each of the tool heads is fixedly but
releasably attachable to the tool body such that the
first abutting face abuts the second abutting face,
the alignment projection extends through the
opening and is engaged to the housing, and each
guide rail being received into an associated one of
the guide slots.

THE REJECTIONS
The Examiner has rejected:
(i) claims 9-30 under 35 U.S.C. § 112, first paragraph, as failing to
comply with the enablement requirement;
(ii) claims 9-13, 15-23 and 25-30 under 35 U.S.C. 102(b) as being
anticipated by Kress (US 4,103,511, issued Aug. 1, 1978); and
(iii) claims 14 and 24 under 35 U.S.C. § 103(a) as being unpatentable
over Kress.
ISSUES
Has the Examiner established that a person of ordinary skill in the art
would be required to resort to performing undue experimentation in order to
make and use the invention set forth in claims 9-30?
Does the Kress patent disclose each and every claim element or
limitation found in claims 9-13, 15-23 and 25-30?
Does the disclosure in the Kress patent render obvious the subject
matter of claims 14 and 24?

PRINCIPLES OF LAW
The dispositive issue for the enablement requirement set forth in the
first paragraph of 35 U.S.C. § 112, is whether Appellants’ disclosure,
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considering the level of ordinary skill in the art as of the date of Appellants’
application, would have enabled a person of such skill to make and use
Appellants’ invention without undue experimentation. In re Strahilevitz, 668
F.2d 1229, 1232 (CCPA 1982). In calling into question the enablement of
Appellants’ disclosure, the Examiner has the initial burden of advancing
acceptable reasoning inconsistent with enablement so as to shift the burden
to Appellants to show that one of ordinary skill in the art could have
practiced the claimed invention without undue experimentation. Id. See
also In re Marzocchi, 439 F.2d 220 (CCPA 1971).
Factors to be considered in determining whether a disclosure would
require undue experimentation include (1) the quantity of experimentation
necessary, (2) the amount of direction or guidance presented, (3) the
presence or absence of working examples, (4) the nature of the invention, (5)
the state of the prior art, (6) the relative skill of those in the art, (7) the
predictability or unpredictability of the art, and (8) the breadth of the claims.
In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).

ANALYSIS
Claims 9-30--Enablement under 35 U.S.C. § 112, first paragraph
The claim terms “guide rail” and “guide slot”, present in both
independent claim 9 and independent claim 22, are not employed in
Appellants’ Specification. The Examiner takes the position that at least two
different structures in Appellants’ disclosed embodiments could be regarded
as the claimed “guide rail”, to wit, ribs 112 and projection 130. (Answer 3).
This finding, according to the Examiner, is pertinent to the enablement
requirement because claims 9 and 22 call for “at least one guide rail” and,
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while the Specification discloses a plurality of ribs 112, it discloses only one
projection 130. (Id.). The Examiner concludes from this that Appellants’
disclosure is not enabling for a plurality of projections. (Answer 3-4).
The Examiner similarly takes the position that at least two different
structures in Appellants’ disclosed embodiments could be regarded as being
the claimed “guide slot”, namely, the “cylindrical openings at 22” and recess
or slot 132. (Answer 4). This finding, again, is deemed to be pertinent to
the enablement requirement because the claims call for “at least one guide
slot”, whereas the Specification discloses only one recess, and thus the
disclosure is asserted to not be enabling for a plurality of recesses or slots
132. (Id.).
Appellants argue that the Examiner erred in asserting that ribs 112 and
the cylindrical opening 22 could be regarded as meeting the claim terms “at
least one guide rail” and “at least one guide slot”, respectively. (Appeal Br.
7). Appellants further contest the Examiner’s conclusion that the disclosure
of a projection 130 and a recess 132 fails to provide an enabling disclosure
of those two claim terms. (Appeal Br. 7-11). We agree with Appellants on
both fronts.
Addressing first Appellants’ former contention, the claimed “at least
one guide rail” is recited in claims 9 and 22 as being “generally parallel to
the insertion axis”. (Appeal Br., Claims Appendix). There appears to be no
dispute that projection 130 is generally parallel to the insertion axis. The
alternative structure asserted by the Examiner to meet the guide rail
limitation is a plurality of ribs 112 extending radially from insertion axis
110. The Examiner characterizes these ribs as having surfaces or
components that are parallel to the insertion axis, thus meeting the limitation
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requiring the guide rail to be “generally parallel to the insertion axis”.
(Answer 3). The ribs 112, however, as seen clearly in Figure 6, protrude
from a cylindrical hollow spigot 102 in a direction generally perpendicular
to the insertion axis 110. (Spec., Fig. 6). That the ribs happen to have an
outer peripheral surface that could be regarded as being parallel to the
insertion axis does not result in the ribs having that orientation.
Furthermore, the claimed “at least one guide slot” is recited in claim 9
as being “coupled to [an] opening [in a tool body housing]”, being
“generally parallel to the insertion axis”, and being “configured to receive an
associated guide rail to thereby resist relative rotation between the tool head
and the tool body.” (Appeal Br., Claims Appendix). The “at least one guide
slot” of claim 22 is recited as being “formed in an inner perimeter of the
opening [in a tool body housing]” and having “each guide rail . . . received
into an associated one of the guide slots.” (Id.). As with projection 130,
there appears to be no dispute that recess 132 meets these limitations. On
the other hand, it is not even entirely clear what structure the Examiner
contends is the possible alternative structure that could be regarded as a
guide slot. The Examiner initially refers to “the cylindrical openings at 22”
as potentially being a plurality of guide slots. (Answer 4). Later, in
responding to Appellants’ arguments, the Examiner quotes a number of
passages mainly from page 4 of Appellants’ Specification, and appears to
conclude that “the slots are 106 and 22”. (Answer 11-12).
Reference numeral 22 is, unfortunately, used by Appellants to refer to
both a splined member and a cylindrical opening. (Spec. p. 3, l. 27 “splined
member (22)”; p. 4, l. 23 “splined member (22)”; p. 4, l. 19 “cylindrical
opening (22)”; p. 4, ll. 21-22 “cylindrical opening (22)”; Fig. 1). There do
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not appear to be cylindrical openings [plural] shown in Appellants’ Figure 1,
whereas the splined member does have a plurality of slots extending along
its length. However, since the slots on the splined member will not interact
with the ribs 112 asserted by the Examiner to meet the guide rail limitation,
we consider that it is the opening surrounding the splined member that the
Examiner asserts to be a guide slot.
The Examiner appears to assert that the ribs 112 interact with opening
22, by means of a snug fit, to resist relative rotation between the tool head
and tool body, so as to meet the limitation imposed by claim 9. (Answer
11). However, we are unable to find any disclosure that either of the ribs
112 forms a snug fit with opening 22. The Examiner makes reference only
to a disclosed snug fit between a rearwardly extending spigot 104 on the tool
head and the corresponding cylindrical opening 106 in the tool body.
(Answer 10-11). Spigot 104 is not, however, asserted to meet the limitation
calling for a guide rail, although apparently opening 106 is, as noted above,
asserted to be a guide slot.
Appellants’ Figure 4 makes evident that if spigot 104 is sized to form
a snug fit with opening 106, then ribs 112 (see Figure 6 for reference
numerals), being of a much smaller diameter, would not fit snugly in
opening 106. Perhaps more importantly, the Examiner’s position that
opening 106 may be regarded as a claimed “at least one guide slot” is belied
by the requirement in claim 1 that the guide slot be “coupled to [an] opening
[in a tool body housing]”, and the requirement in claim 22 that the guide slot
be “formed in an inner perimeter of the opening [in a tool body housing].”
Given these claim limitations, opening 106 can not be regarded as both the
claimed opening and the guide slot.
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We thus conclude that the claimed “at least one guide rail” and “at
least one guide slot” find support in Appellants’ disclosed embodiments,
only by the projection 130 and recess 132, and that the Examiner erred in
asserting that ribs 112 and opening(s) 22, 106 can be regarded as
corresponding to those claim elements.
Appellants’ second contention is that the Examiner erred in
concluding that the disclosure of projection 130 and recess 132 fails to
enable the claimed “at least one guide rail” and “at least one guide slot”.
The Examiner, seeking to correctly apply the legal standard established in
Marzocchi and its progeny, asserts that the person of ordinary skill in the art
“would not be able to make the claimed device without some confusion as to
what structure the ‘at least one guide rail’ or ‘at least one guide slot’ refers
to, without undue experimentation, by building several different models to
determine what structure is actually being disclosed and claimed.” (Answer
4). We have, above, determined that a person of ordinary skill in the art
would not face the dilemma of having to determine what structure those
terms refer to. Even assuming, arguendo, that the person of ordinary skill
would have to determine what disclosed structure corresponds to the claim
terms, we note that the Examiner has not established that, even if the
building of several models were necessary to make such a determination,
such effort would amount to undue experimentation. In this regard, the
Examiner’s analysis points to the presence of only two possibilities each for
the guide rail and guide slot (only one of which we find to be viable), and
has otherwise not undertaken any analysis of the Wands factors to support
the contention that undue experimentation would be required.
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Apart from the contentions that different components could be seen as
meeting the guide rail and guide slot claim terms, the Examiner also asserts
that Appellants’ disclosure fails to provide an enabling disclosure for a
device having a plurality of guide rails and guide slots if the projection 130
and recess 132 are regarded as being a guide rail and a guide slot. (Answer
3-4).
The Examiner, in this regard, acknowledges that the projection 130
and recess 132 would “support” (by which we assume is meant “enable”)
claim limitations in the form of “a guide slot” and “a guide rail”1, but not the
actual claim limitations, “at least one guide rail” and “at least one guide
slot”. (Answer 10). As Appellants correctly note (Appeal Br. 8), the use of
the phrase “at least one” in characterizing the claimed guide rail and guide
slot has the same effect as introducing those elements with the article “a”,
given the use in the preamble of claims 9 and 22 of the open-ended
transition term “comprising”. See Scanner Tech. Corp. v. ICOS Vision Sys.
Corp., 365 F.3d 1299 (Fed. Cir. 2004). Each has the effect of requiring and
encompassing within its scope one guide rail and guide slot, or more than
one guide rail and guide slot.
As noted above, the Examiner acknowledges that one embodiment
falling within the scope of the terms “at least one guide rail” and “at least
one guide slot” is enabled by the disclosure of projection 130 and recess
132. The Examiner presents no findings, rationale, or analysis as to why it
would require, or how it would amount to, undue experimentation on the
part of persons of ordinary skill in the art to make and use other
embodiments falling within the scope of those terms, i.e., embodiments

1 These exact phrases are not present in independent claims 9 and 22.
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having more than one projection 130 and more than one recess 132. As
such, the Examiner has not adequately established that the disclosure of a
projection 130 and a recess 132 fails to enable “at least one guide rail” and
“at least one guide slot”.
The rejection of claims 9-30 under 35 U.S.C. § 112, first paragraph, as
lacking an enabling disclosure, will not be sustained.

Claims 9-13, 15-23 and 25-30--Anticipation--Kress
Appellants do not contest the Examiner’s findings, relative to
independent claim 9, that Kress discloses a tool head having a connection
structure and an input member, and a tool body having a housing, a motor,
and an output member, with the housing defining an opening configured to
receive the connection structure of the tool head, and with the tool head
being inserted into the opening to attach the tool head to the tool body and
couple the input member to the output member. (Answer 5; Appeal Br.,
passim). Appellants assert that the Examiner’s findings that Kress discloses
the at least one guide rail and the at least one guide slot, as claimed,
mischaracterize the Kress structure. (Appeal Br. 17-19).
The Examiner presents two different interpretations of the structure
disclosed by Kress that are contended to be responsive to the claimed guide
rail and guide slot. The guide rail, as claimed, intersects the connection
structure of the tool head, and the guide slot is recited as being coupled to
the opening defined in the housing of the tool body and configured to
receive an associated guide rail to thereby resist relative rotation between the
tool head and the tool body. (See claim 9, reproduced above).
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In one interpretation of Kress, the Examiner asserts that the guide rails
are either tabs 26 or 40, and that the guide slots are the openings between the
tabs for accepting tabs 26 or 40. (Answer 5). Appellants contend that these
tabs and slots are not configured such that the guide rail and guide slot
operate to resist relative rotation between the tool head and tool body.
(Appeal Br. 18). The Examiner replies, in the Response to Argument
section of the Answer, that the guide slots are configured to receive tabs 26
and 40, and that each tab “cooperates with a guide slot, in that the tab must
enter a guide slot before being rotated to clamp with tabs 40.” (Answer 13).
This clamping together of tabs 26 and 40 is apparently what the
Examiner contends will result in the joined structure providing a resistance
to relative rotation between the tool head and tool body. However, this does
not meet the limitation set forth in claim 9 that requires a guide slot to be
configured to receive a guide rail, with the guide slot and guide rail
functioning to resist relative rotation of the tool head and body. Rather it is
the two structures that the Examiner finds to meet the guide rail limitation
that function to, as asserted by the Examiner, resist relative rotation between
the head and body. The Examiner thus erred in finding that Kress
anticipates claim 1 using this interpretation of Kress.
The Examiner’s other interpretation of Kress has pins 20 (Kress, Fig.
1) disposed on the tool body as meeting the guide rail limitation, and the
recesses 66 (Kress, Fig. 11) into which pins 20 are received as meeting the
guide slot limitation. Appellants acknowledge that these pins and recesses
are employed to guide the tool head and tool body into engagement with one
another and function to resist relative rotation between the head and body.
(Appeal Br. 18). Appellants, however, contend that these cited elements of
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Kress cannot constitute the guide rail and guide slot as claimed, due to the
presence of other claim language defining structural relationships between
the guide rail and guide slot, and other elements of the claimed power tool.
(Appeal Br. 19).
More specifically, Appellants contend that “[c]laim 9 recites that the
guide rail is coupled to a connection structure formed on the tool head and
that the connection structure is received into an opening that is defined in the
housing of the tool body”, whereas the pins 20 in Kress are fixedly coupled
to the tool body (housing 12). (Id.). However, as correctly pointed out by
the Examiner, claim 9 calls for the guide rail to “intersect” the connection
structure, not necessarily that it be coupled thereto. The Examiner
characterizes the “connection structure” of Kress as “that part of the head
that structurally interacts with the body” (Answer 5), a characterization that
Appellants do not appear to contest. (Appeal Br. 19). The Examiner notes
that the pins intersect, by crossing through, the connection structure of the
tool head (Answer 5), a finding again not contested by Appellants.
Appellants also contend that the pins 20 in Kress are spaced apart
from the structure that carries the bayonet coupling tabs 26, and that the
recesses 66 that receive pins 66 are spaced apart from the opening in the tool
body, apparently arguing that this positioning of pins 66 does not meet the
claim limitation requiring the guide slot to be coupled to the opening in the
tool body. (Appeal Br. 19). The Examiner’s position is that,
notwithstanding that the recesses are spaced apart from the opening, they are
coupled to the opening “when the tool is assembled, as all the structure is
linked together.” (Answer 5).
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The Examiner is charged with giving claim terms under examination
their broadest reasonable interpretation consistent with the Specification. In
the absence of an express definition of a claim term in the specification or a
clear disclaimer of scope, the claim term is interpreted as broadly as the
ordinary usage of the term by one of ordinary skill in the art would permit.
In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007).
Here, Appellants’ Specification does not employ the phrase “coupled to”.
The Specification speaks of only a “co-operating recess (132) in the second
cylindrical section (54)”, which, as depicted in Figure 1, is adjacent the
opening 106 in the body. (Spec., p. 5, ll. 14-15).
Notwithstanding the illustration of the recess/guide slot being in direct
communication with the opening in Appellants’ Figure 1, the term “coupled
to” is broader in scope. Indeed, an ordinary and customary meaning of the
noun “couple” is “[s]omething that joins or connects two things together; a
link.” THE AMERICAN HERITAGE® DICTIONARY OF THE ENGLISH LANGUAGE
(4th ed. 2009), accessed at Dictionary.com, last viewed on April 26, 2010.
This plainly evidences that a direct connection between two elements is not
required to have one element coupled to the other. Appellants’ Specification
does not employ the term in a manner so as to exclude this ordinary and
customary meaning, thus a connection of the guide slot to the opening via an
intermediate structure fastening the tool head to the tool body, which has the
effect of coupling the recesses 66 to the opening, is a reasonable
interpretation that is not inconsistent with the Specification.
We thus do not find error in the Examiner’s position that pins 20 and
recesses 66 constitute a disclosure of the claimed guide rail and guide slot,
together with the limitations associated therewith. The rejection of claim 9
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as being anticipated by Kress will be sustained. No separate arguments are
presented for claims 17-20, which depend from claim 9, therefore those
claims will fall with claim 9. 37 C.F.R. § 41.37(c)(1)(vii) (2007).
Appellants argue claim 10 separately from claim 9, and purport to
group claims 11-13 with claim 10. (Appeal Br. 21-22). As a preliminary
matter, however, claim 13 depends not from claim 10, but from claim 9.
The argument advanced with respect to claim 10 is not directed to any
limitations found in claim 13, and Appellants present no arguments
specifically directed to the limitations added by claim 13. Thus claim 13
will be considered as falling with claim 9, for the reasons presented above.
Clam 10 calls for the connection structure on the tool head to have a
projection that extends rearwardly from an end wall that is to abut the tool
body, with the projection being sized to engage the opening to thereby align
the tool head to the tool body. (Appeal Br., Claims Appendix.). The
Examiner cites to grip ring 56 in Kress as being responsive to this claimed
projection. (Answer 7). The Examiner finds that the projection is sized to
“engage” the opening in the tool body in the sense that it is sized to “enter”
the tool body. (Id.).
The term “engage” is used in claim 10 to aid in defining that the
projection will function to align the tool head to the tool body, implying that
projection will physically interact with the opening to effect the alignment.
No reasonable interpretation of the claim phrase “sized to engage the
opening” is broad enough to include merely being sized so as to be able to
enter the opening. The grip ring 56, relied upon by the Examiner, is plainly
of a much smaller radial dimension than what the Examiner has found to be
the opening, such that it would not possibly engage the opening to align the
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tool head to the tool body. (Kress, Fig. 5). The rejection of claim 10, and of
claims 11 and 12 depending therefrom, will not be sustained.
Claims 15, 16 and 21 depend from claim 9 and were each separately
argued by Appellants. We note however, that the rejections of these claims
were based on only the Examiner’s first interpretation of the Kress patent, in
which the guide rails were asserted to be either tabs 26 or 40, and the guide
slots were asserted to be the openings between the tabs for accepting tabs 26
or 40. As detailed above, we find this interpretation to be in error.
Accordingly, the rejection of claims 15, 16 and 21 will not be sustained, for
the same reasons presented in the discussion above of the Examiner’s first
interpretation of the Kress disclosure.
Claim 22 is a second independent claim that is separately argued by
Appellants. Appellants further present separate and additional arguments
directed to dependent claims 25 and 30, but do not present any separate
arguments for dependent claims 23 and 26-29.
Appellants criticize the rejection of claim 22 as anticipated by Kress
firstly by noting that the Examiner does not identify specific structural
elements in Kress as constituting the claimed connection structure on the
tool head and the opening in the tool body configured to receive the
connection structure. (Appeal Br. 26). This is essentially an accurate
characterization of the grounds for rejection presented in the Final Office
Action dated July 12, 2004. However, the Examiner’s Answer does identify
that the part of the tool head that structurally interacts with the tool body is
regarded as the claimed connection structure, and that the claimed opening is
met by the opening formed by the cup shape of the tab 26 support. (Answer
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5, 6, 13). Appellants did not contest these findings in a Reply Brief (none
was filed).
The Examiner found that inwardly projecting tabs 40 on the tool head
(Kress, Fig. 4) are responsive to the claimed at least one guide rail, and that
the claimed at least one guide slot is presented on the tool body in the form
of the slots disposed between tabs 26 (Kress, Fig. 3). Appellants purport to
contest these findings, yet Appellants’ arguments are directed to structural
features in Kress other than those relied on by the Examiner. Appellants
first mischaracterize the Examiner’s findings, stating that the Examiner “has
indicated that the bayonet coupling tabs (26) and the circular aperture (22)
could constitute the ‘guide rail’ and ‘guide slot’ elements, respectively.”
(Appeal Br. 26).
Appellants proceed from there to an argument that, “the opening (i.e.,
un-numbered aperture in housing (36)) cannot be both the opening in the
housing and the guide slot as recited.” (Id.). Nowhere do we find the
Examiner’s position to be that the un-numbered aperture in the housing 36 in
Kress meets the claim limitation calling for an “opening” in the housing of
the tool body or the claim limitation requiring at least one guide slot.
Appellants’ final contention is that, when the tool head 34 of Kress is
coupled to the tool body 10, the bayonet coupling tabs 26 are rotated so as to
be aligned with tabs 40, and are thus not received in associated guide slots.
(Appeal Br. 26-27). We find this unpersuasive of error in the rejection. The
Examiner found that tabs 40 meet the claim limitation calling for at least one
guide rail, and the slots between tabs 26 to be the at least one guide slot. In
assembling the tool head to the tool body in Kress, the guide rails 40 are
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received through the slots between tabs 26 (Kress, col. 5, ll. 3-7), and
Appellants’ claim 22 requires nothing more in this respect.2
We do not find that the Examiner erred in rejecting claim 22 as
anticipated by Kress. The rejection of claim 22, and of claims 23 and 26-29,
will be sustained.
Appellants argue dependent claim 25 separately from independent
claim 22. Appellants do not contest the Examiner’s finding that tabs 40 are
generally rectangular in shape in a direction that is transverse to the insertion
axis, as is required of the guide rails in claim 25. (Appeal Br. 29-30).
Appellants instead argue that the tabs 40 are not guide rails, but are instead
helical locking means against which the mating bayonet connection may be
made. (Appeal Br. 30).
Appellants are correct that the tabs 40 do function, once the tool head
and tool body of Kress are brought into abutment and tabs 26 are rotated into
position behind tabs 40, as a helical locking means together with tabs 26.
(Kress, col. 5, ll. 3-7). That does not, however, preclude the tabs 40 from
functioning as guide rails being received in guide slots disposed between
tabs 26 as the tool head is assembled to the tool body. Appellants have
pointed to no structural limitations or features set forth in either claim 25 or
claim 22 that structurally distinguish the claimed guide rails such that tabs
40 would not meet the claim limitation calling for at least one guide rail.
Indeed, as alluded to above with respect to claim 22, tabs 40 must be aligned

2 Claim 22 does not require, as does independent claim 9, that the guide slot
be configured to receive an associated guide rail to thereby resist relative
rotation between the tool head and tool body. Claim 22 requires only that
each guide rail merely be received into an associated guide slot. (Appeal
Br., Claims Appendix.).
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with the slots between tabs 26 to guide the tool head into an abutting
relationship to the tool body.
We will sustain the rejection of claim 25 as being anticipated by
Kress.
Dependent claim 30, also separately argued by Appellants, requires
that the connection structure of the tool head have a reduced diameter
portion that is axially adjacent to two portions that are relatively larger than
the reduced diameter portion. The Examiner states that the guide rail 40 is a
reduced diameter portion that is axially adjacent to flange 39 and flange 15,
which are asserted to meet the limitation calling for two relatively larger
portions. (Answer 8).
Appellants contend that the Examiner has not explained how the tabs
40 of Kress can constitute both the claimed guide rail and the claimed
reduced diameter portion of the claimed connection structure. (Appeal Br.
31). We agree. Consistent with the principle that all limitations in a claim
must be considered to be meaningful, it is improper to rely on the same
structure in the Kress reference as being responsive to two different elements
in claim 30. See In re Robertson, 169 F.3d 743 (Fed. Cir. 1999)(claim
requiring three separate means not anticipated by structure containing two
means where one of the two means was argued to meet two of the three
claimed means). The rejection of claim 30 as anticipated by Kress will not
be sustained.
Claims 14 and 24--Obviousness--Kress
The rejections of claims 14 and 24, which depend from claims 9 and
22, respectively, will be sustained in that Appellants do not present any
arguments different from those advanced with respect to claims 9 and 22.
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As above, we do not find error in the Examiner’s rejections of claims 9 and
22, and thus do not find error in the rejection of claims 14 and 24 as being
obvious in view of Kress.

CONCLUSIONS
The Examiner erred in concluding that the subject matter of claims 9-
30 is not enabled by Appellants’ disclosure. The Examiner did not err in
finding that the Kress patent explicitly or inherently discloses all elements
set forth in claims 9, 13, 17-20, 22, 23 and 25-29. The Examiner erred in
finding that the Kress patent anticipates the subject matter of claims 10-12,
15, 16, 21 and 30. The Examiner did not err in rejecting claims 14 and 24 as
being obvious over Kress.

DECISION
The decision of the Examiner to reject claims 9, 13, 14, 17-20 and 22-
29 is affirmed. The decision of the Examiner to reject claims 10-12, 15, 16,
21 and 30 is reversed.
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).

AFFIRIMED-IN-PART

Klh

HARNESS, DICKEY & PIERCE, P.L.C.
P.O. BOX 828
BLOOMFIELD HILLS, MICHIGAN 48303
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