Ex Parte Roehm

Patent Trial and Appeal Board

Mar 16, 2018

12737849 (P.T.A.B. Mar. 16, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121737,849 05/03/2011
24972 7590 03/20/2018
NORTON ROSE FULBRIGHT US LLP
1301 Avenue of the Americas
NEW YORK, NY 10019-6022
FIRST NAMED INVENTOR
Reiko Roehm
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.
BOSC.P6720US/l 1602953 3265
EXAMINER
TECCO, ANDREW M
ART UNIT PAPER NUMBER
3721
NOTIFICATION DATE DELIVERY MODE
03/20/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
nyipdocket@nortonrosefulbright.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte REIKO ROEHM
Appeal2017-003540
Application 12/737,849
Technology Center 3700
Before KEN B. BARRETT, WILLIAM A. CAPP, and
LEE L. STEPINA, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant 1 seeks our review under 35 U.S.C. § 134(a) of the final
rejection of claims 16, 18-22, and 25-35 as unpatentable under 35 U.S.C.
§ 103(a) over Eisenhardt (US 7,044,882 B2, iss. May 16, 2006) and
Fanchang (US 5,550,416, iss. Aug. 27, 1996). We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant identifies Robert Bosch GmbH as the real-party-in-interest.
Appeal Br. 1.
Appeal2017-003540
Application 12/737,849
THE INVENTION
Appellant's invention relates to a gear device for a power tool.
Spec. 1. Claim 16, reproduced below, is illustrative of the subject matter on
appeal.
16. A power tool gear device, comprising:
a first gear stage;
a second gear stage; and
a switching element configured to be moved by an operator
using an actuating element, wherein the switching element at
least partially surrounds at least one of the first and second gear
stages in at least one operating position along a circumferential
direction, and wherein the switching element is configured to
switch between a first operating position and a second operating
position, and wherein the switching element has at least one
first component configured as a switching ring and second
component configured as a ring gear,
wherein the switching element has at least one further
component which is at least partially formed by an elastic
element,
wherein the first component is connected to the second
component at least via the elastic element.
OPINION
Appellant argues claims 16, 18-20, 22, and 25-32 as a group and does
not otherwise separately argue claims 33-35.2 Appeal Br. 3--4. We select
claim 16 as representative and claims 18-20, 22, and 25-35 stand or fall
with claim 16. See 37 C.F.R. § 41.37(c)(l)(iv).
2 We do not recognize the mention of a single element of claim 35 on page 4
of the Appeal Brief as a separate argument for patentability. See 37 C.F.R.
§ 41.37(c)(iv) ("A statement which merely points out what a claim recites
will not be considered an argument for separate patentability of the claim").
2
Appeal2017-003540
Application 12/737,849
Claims 16, 18-20, 22, and 25-35
The Examiner finds that Eisenhardt discloses the invention
substantially as claimed except for the "first component" of the switching
element configured "as a ring" (i.e., not a complete ring). Final Action 2-3.
The Examiner relies on Fanchang as disclosing a comparable first
component configured as a ring. Id. at 3. The Examiner concludes that it
would have been obvious to a person of ordinary skill in the art at the time
of the invention to modify the partial ring component of Eisenhardt to be a
full ring as in Fanchang so as to achieve the claimed invention. Id.
According to the Examiner, a person of ordinary skill in the art would have
done this to make the switching element stronger or to better position it as it
is rotated by providing more points of contact. Id.
Appellant traverses the Examiner's rejection by arguing that the cited
art fails to disclose a first component connected to a second component via
the elastic element. Appeal Br. 3. In that regard, Appellant identifies
Eisenhardt's housing 20 as the "first component." Id. 3--4.
The Examiner responds by pointing out that the "first component" in
the rejection is not housing 20. Ans. 3. Instead, the Examiner reminds us
that the rejection recites elements 29-31, 33 as the "first component" and
elements 18, 22, 27-28 as the "second component." Id. The Examiner
further explains that: "[t]he actual cited first component is connected ... to
the second component at least via the elastic element (19, 32; col. 5 lines 49-
54), which is what the claim language requires." Id.
In reply, Appellant raises, for the first time, an entirely new argument
that the Examiner errs in identifying a plurality of elements as a "first
component" and another plurality of elements as a "second component."
3
Appeal2017-003540
Application 12/737,849
Reply Br. 2. According to Appellant: "the Examiner takes several
components to represent each of the at least one first component and the
second component." This new argument is untimely and will not be
considered. See 37 C.F.R. § 41.41(b)(2).
Eisenhardt is directed to a switchable gearbox of a handheld power
tool. Eisenhardt, Abstract. As shown in Figure 1, the gearbox is a planetary
gear with sun wheel 24, planetary wheels 23, and ring gear 22. Id. col. 4,
1. 58 - col. 5, 1. 1. Eisenhardt's gear arrangement is axially movable for
switching between two switching stages. Id. col. 5, 11. 1--4. Eisenhardt
contains the following disclosure concerning an actuator switch.
The actuator 7 has centrally a switch button 26 for manual
actuation that projects in the radial direction. Radially inwardly
relative to the switch button 26, a leaf spring 33 is provided.
On both sides of the switch button 26, the actuator 7 has a U-
shaped cross-section that is comprised of arcshaped
circumferential walls 29 and legs 30. The circumferential
walls 29 and the legs 30 span the spring holder 28 with minimal
play. The actuator 7 is thus rotatable in the circumferential
direction 10 and is secured in the axial direction 3 (FIG. 3) on
the switching member 18.
Symmetrically arranged relative to the normal axis 40, a
spring arrangement of two springs 19 is provided; in the
illustrated embodiment, they are compression springs 32. The
compression springs are secured with pretension between the
respective spring holders 28 and the correlated springs stops 31
of the actuator 7.
Id. col. 5, 11. 39-54.
In view of the foregoing, the Examiner's respective findings of fact
concerning the first component, the second component, the further
component, and the elastic element connecting the first component to the
second component are supported by a preponderance of the evidence.
4
Appeal2017-003540
Application 12/737,849
Appellant's arguments to the contrary are not supported by the record and do
not apprise us of error.
Accordingly, we sustain the Examiner's unpatentability rejection of
claims 16, 18-20, 22, and 25-35.
Claim 21
Claim 21 depends from claim 16 and adds the limitation: "wherein
the first component is movably mounted relative to the second component."
Claims App. The Examiner finds that Eisenhardt first component (29-31,
33) is movably mounted relative to second component (18, 22, 27, 28).
Final Action 5. Appellant argues, once again, that Eisenhardt's "first
component" is housing 20. Appeal Br. 4.
Appellant's argument based on housing 20 being the "first
component" in the Examiner's rejection is unpersuasive here for the same
reasons it was unpersuasive with respect to the rejection of claim 16
discussed above.
We sustain the rejection of claim 21.
DECISION
The decision of the Examiner to reject claims 16, 18-22, and 25-35 is
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)(l )(iv).
AFFIRMED
5