Ex Parte Schieler et al

Patent Trials and Appeals Board

Mar 27, 2019

13632114 - (D) (P.T.A.B. Mar. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/632,114 09/30/2012
13570 7590 03/29/2019
Neal, Gerber & Eisenberg LLP (ITW)
2 N. LaSalle Street
Suite 1700
Chicago, IL 60602-3801
FIRST NAMED INVENTOR
Bryan R. Schieler
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.
025140-1240/61763-US 2642
EXAMINER
TECCO, ANDREW M
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
03/29/2019 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):
amasia@ngelaw.com
ipusmail@ngelaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRYAN R. SCHIELER, NATHAN MINA,
CHRISTOPHER A. HORST, and RYAN FRANCIS
Appeal2018-006350
Application 13/632, 114
Technology Center 3700
Before STEFAN STAICOVICI, BRETT C. MARTIN, and
LEE L. STEPINA, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134 from the Examiner's
non-final decision rejecting claims 1-5, 9, and 18-27. We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM.
1 The Appeal Brief indicates that the Applicant, Illinois Tool Works Inc., is
the real party in interest. Appeal Br. 2.
Appeal2018-006350
Application 13/632, 114
CLAIMED SUBJECT MATTER
Appellant's disclosure is directed to a compact pneumatic nailer
system with a supplemental air tank located between a compressor and a
pneumatic nailer. Spec. 3:15-19. Appealed claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A pneumatic nailer system comprising:
a compressor having a main storage tank;
a supplemental air storage tank;
a first air hose connectable at one end to the compressor
and at an opposite end to the supplemental air storage tank;
a second air hose connectable at one end to the
supplemental air storage tank;
and
a pneumatic nailer connectable to an opposite end of the
second air hose, the pneumatic nailer including:
a housing,
and
a trigger supported by the housing,
a workpiece contact element supported by the
housing,
a trigger valve in the housing and actuatable by
movement of both the trigger and the workpiece contact
element,
a fluid reservoir,
a cylinder having an upper end and a lower end, the
cylinder positioned in the housing,
a piston movable in the cylinder between an upper
position and a lower position,
a driver blade connected to and movable with the
piston to drive a fastener when the piston moves from the
upper position to the lower position,
a seal plate at the lower end of the cylinder and
including a surface defining an opening, wherein the
driver blade extends through the opening such that an
exhaust opening having a cross-sectional area is formed
between the surface of the seal plate and the driver blade,
2
Appeal2018-006350
Application 13/632, 114
wherein the housing includes an internal storage volume
chamber having a fixed internal storage volume and including an
upper annular column and the fluid reservoir such that
pressurized air from the second air hose can travel through the
fluid reservoir, up the upper annular column, and against the
piston responsive to actuation of the trigger valve,
wherein the housing includes a swept volume chamber
having a fixed swept volume and extending between the piston
when in the upper position and a free end of the driver blade such
that air is forced out of the cylinder and through the exhaust
opening as the piston moves from the upper position to the lower
position after actuation of the trigger valve,
wherein the housing includes a return volume chamber
having a fixed return volume and extending in a lower end of the
housing such that pressurized air can enter the cylinder from the
return volume chamber through return openings in the cylinder
to assist in pushing the piston from the lower position back to the
upper position,
wherein the supplemental air storage tank is configured to
supply additional pressurized air to the pneumatic nailer to
reduce pressure drops in the pneumatic nailer,
wherein a ratio of the internal storage volume to the swept
volume is 2.0 to 2.7, a ratio of the internal storage volume to the
return volume is 2.9 to 3.9, and a sum of the internal storage
volume, the swept volume, and the return volume is less than
1,000 milliliters to enable the pneumatic nailer to operate with
the supplemental air storage tank to maintain a drive energy of at
least 80 Joules in each actuation of the pneumatic nailer at 100
pounds per square inch.
Appeal Br. 48--49 (Claims App.).
Original claim 1 (filed on September 30, 2012) is reproduced below.
[ Original claim] 1. A pneumatic nailer system for use
with a compressor having a main storage tank, said pneumatic
nailer system comprising:
a first air hose connected at one end to the compressor;
a supplemental air storage tank connected to an opposite
end of said
3
Appeal2018-006350
Application 13/632, 114
first air hose, and connected at a supply end to at least one
second air hose; and
at least one pneumatic nailer connected to a tool end of a
corresponding said at least one second air hose, wherein said
supplemental air storage tank is located between the compressor
and said at least one pneumatic nailer.
Spec. 17.
REFERENCES RELIED ON BY THE EXAMINER
Plunkett us 4,188,858 Feb. 19, 1980
Smith us 4,204,622 May 27, 1980
Barber US 2003/0183670 Al Oct. 2, 2003
Komazaki US 7,156,012 B2 Jan.2,2007
Ohi US 2010/0290929 Al Nov. 18, 2010
WEN 61720 3/4-Inch to 2-Inch 18-Gauge Brad Nailer
(Amazon.com)
(http://web.archive.org/web/20110903051045/http://www.amazon.co
m/WEN-61720-4-lnch-2-lnch-18-Gauge/dp/BOOOEJWIZY) (last
visited Apr. 3, 2015) (herein "NPL '01").
Hitachi 18-Gauge Finish/Brad Nailer - NT50AE2 (Walmart.com)
(http://web.archive.org/web/2011070904004 7 /http://www.walmart.co
m/ip/Hitachi-18-Gauge-Finish-Brad-Nailer-NT50AE2/142273 55)
(last visited Sept. 16, 2015) (herein "NPL '02").
THE REJECTIONS ON APPEAL
I. Claims 1-5 and 18-20 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Ohi, Plunkett, Smith, Barber, Komazaki, NPL 'O 1, and
NPL '02.
II. Claims 9 and 21-27 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Plunkett, Smith, Barber, Komazaki, NPL 'O 1, and NPL
'02.
4
Appeal2018-006350
Application 13/632, 114
OPINION
Rejection I
Appellant argues for the patentability of the claims subject to the first
ground of rejection, i.e., claims 1-5 and 18-20, as a group. See Appeal Br.
22-35. We select claim 1 as representative of the group, and claims 2-5 and
18-20 stand or fall with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner finds that Ohi discloses a pneumatic nailer system
including many of the elements recited in claim 1, including "a compressor
(20; 414) having a main storage tank (430); a supplemental air storage tank
(50; 418, 442)," the recited first and second air hoses, and "a pneumatic
nailer (figs. 16-20; paragraphs 86, 100) connectable to an opposite end of the
second air hose." Non-Final Act. 3 (emphasis omitted).
The Examiner relies on Plunkett to disclose structural details of the
pneumatic nailer, Smith and Barber to disclose the 80 Joule minimum
driving energy, and Komazaki to disclose the combined function of the
nailer's trigger and workpiece contact element as recited in claim 1. Id. at
4--8.
Additionally, the Examiner relies on NPL 'O 1 to teach operation of a
pneumatic nailer at 100 psi in each driving cycle and on the design choice
doctrine 2 and, alternatively, NPL '02, to address the 1000 ml threshold for
the sum of the internal storage volume, swept volume, and return volume.
Id. at 8-9.
2 In an office action dated April 9, 2015 (hereinafter "April 9, 2015, Office
Action"), the Examiner took official notice that the 1000 ml threshold was a
matter of design choice and now determines that, because Appellant failed to
timely contest the taking of official notice, the fact that a 1000 ml threshold
volume would have been a matter of design choice is admitted prior art.
Non-Final Act. 9; see also April 9, 2015, Office Action, 12.
5
Appeal2018-006350
Application 13/632, 114
As for the recited 2.0 to 2.7 ratio of the internal storage volmne to the
swept volume and the recited 2.9 to 3.9 ratio of internal storage volume to
return volume, the Examiner finds that these ratios would have been matters
of design choice, or, alternatively, routine optimization. Id. at 10. 3
From page 18 to page 30 of the Appeal Brief, Appellant (i)
summarizes the Examiner's findings and reasoning, (ii) makes five generic
statements that the Examiner does not explain why a person of ordinary skill
in the art would have found it obvious to make the Examiner's proposed
modifications, (iii) states, in general, that the Examiner relied on improper
hindsight, and then (iv) summarizes the modifications the Examiner
proposes to make to the system taught by Ohi.
Appellant's discussion on these points does not apprise us of
Examiner error because it amounts to a non-specific statement that the
Examiner relied on improper hindsight without explaining why the explicit
reasoning the Examiner applied to the proposed modifications Ohi is
deficient.
Filing a Board appeal does not, unto itself, entitle an appellant to
de nova review of all aspects of a rejection. If an appellant fails
to present arguments on a particular issue - or, more broadly,
on a particular rejection - the Board will not, as a general
matter, unilaterally review those uncontested aspects of the
rejection.
Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
3 In the April 9, 2015, Office Action, the Examiner took official notice that
these ratios were a matter of design choice or optimization and now
determines that, because Appellant failed to timely contest the taking of
official notice, these findings are admitted prior art. Non-Final Act. 9; see
also April 9, 2015, Office Action, 13-15.
6
Appeal2018-006350
Application 13/632, 114
Smith
Appellant then addresses the Examiner's reliance on Smith, asserting
"Smith discloses an electric impact tool ... [which] does not operate in the
same way that a pneumatic nailer operates. Smith makes no mention of
pneumatic nailers. Smith does not address the problems that the inventors of
the present application were trying to solve (as described above)." Appeal
Br. 30. In the Reply Brief, Appellant reiterates that "none of the 'reasons'
provided by the Examiner are directed to the problems identified and solved
by the claimed invention." Reply Br. 5. As for the fact that the nailer in
Smith operates on electricity rather than compressed air, Appellant contends,
"if a POSIT A [ (person of ordinary skill in the art)] was going to look at
Smith to improve a nailer, Smith would teach a POSIT A to replace the
pneumatic nailer system of the Ohi/Plunkett combination with the electric
nail driving system." Appeal Br. 31.
Appellant's contention regarding problems not addressed by Smith,
i.e., problems addressed by the claimed invention, is unavailing because the
motivation to combine references does not have to address the same problem
solved by the Appellant. See In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir.
1996). "[NJ either the particular motivation nor the avowed purpose of the
[Appellant] ... controls" in an obviousness analysis. KSR Int'! Co. v.
Teleflex Inc., 550 U.S. 398,419 (2007). The Examiner's rationale for
configuring the pneumatic nailer disclosed by Ohi to operate with a
minimum energy of 80 Joules is that Smith provides "evidence [ ofJ how
much energy is typically needed to perform the functions of driving a nail"
and providing this configuration in Ohi' s nailer "would allow the device to
perform its basic function of driving nails into a workpiece." Non-Final Act.
7
Appeal2018-006350
Application 13/632, 114
6, 8. Appellant provides no explanation as to why this rationale is
inadequate. See Appeal Br. 30-31, Reply Br. 30-31.
As for the fact that Smith discloses an electric nailer rather than a
pneumatic one, we agree with the Examiner that Smith "is used simply as
evidence that in order for a nailer to drive a fastener as Ohi/Plunket does, it
would need to generate on the order of 169.5 Joules." Ans. 7. In other
words, the teaching in Smith that 169.5 Joules of energy are required to
drive a 3.25 inch nail into semi-hard wood is not affected by whether the nail
is driven by an electric nailer or a pneumatic nailer. See Smith 5:39--50.
Barber
In addition to the disclosure in Smith, the Examiner relies on Barber
to teach drive energies of at least 80 Joules as recited in claim 1, and the
Examiner uses the same reasoning for modifying Ohi based on the teachings
of Barber as discussed above regarding Smith. See Non-Final Act. 6.
Appellant asserts "[ w ]hile Barber mentions that known pneumatic
hand tools generally limit drive energy to around 120 joules, Barber makes
no mention of how pneumatic hand tools generate their drive energy."
Appeal Br. 32. Appellant also contends "[i]t is unclear (and the Examiner
provides no real explanation) how or why a POSITA would have given any
attention to Barber's disclosure of an electric impact device when
considering the problems that the inventors set out to solve." Id. at 33; see
also Reply Br. 4--5
These arguments regarding Barber do not apprise us of Examiner
error because, as discussed above, the Examiner's reasoning (Non-Final Act.
6) regarding configuring the nailer in Ohi to operate with a driving energy of
at least 80 Joules is adequate, the reasoning does not have to be based on the
same problem solved by the inventors, and Barber's teaching regarding the
8
Appeal2018-006350
Application 13/632, 114
drive energy used to drive nails (Barber ,r 6) is not contingent upon "how
pneumatic hand tools generate their drive energy" (Appeal Br. 32).
Appellant asserts that Barber does not disclose various elements
required by claim 1. See Appeal Br. 32-33. For example, Appellant states,
"Barber also makes no mention of whether those pneumatic hands tools that
generate drive energies of around 120 Joules do so wherein a ratio of the
internal storage volume to the return volume is 2.9 to 3.9, as in claim 1." Id.
at 32. As the Examiner relies on Barber to teach a drive energy of at least 80
Joules, not to teach any of the elements Appellant asserts (in the Appeal
Brief) that Barber fails to disclose, this argument amounts to an attack on the
cited references individually rather than on the combination of references
proposed by the Examiner. One cannot show nonobviousness by attacking
references individually where the rejections are based on combinations of
references. See In re Keller, 642 F.2d 413,426 (CCPA 1981).
NPL 'OJ
The Examiner proposes to modify the pneumatic nailer disclosed by
Ohi to operate at 100 psi in each actuation, in light of the disclosure in NPL
'O 1, reasoning that "it would have been obvious to one of ordinary skill in
the art at the time the invention was made to incorporate the psi setting of
the nailer ofNPL '01 with the invention of Ohi" because "Ohi shows a
similar type of nailer and incorporating the brad nailer would allow a user to
fix moldings and perform other common functions of such a device."
Non-Final Act. 8 (emphasis added).
Appellant contends that, "[s]imilar to Smith and Barber, NPL '01 does
not contemplate the problems that the inventors were trying to solve[, and
t]he NPL '01 pneumatic nailer makes no mention of exactly how the NPL
'01 pneumatic nailer generates its drive energy." Appeal Br. 33; see also
9
Appeal2018-006350
Application 13/632, 114
Reply Br. 5---6. Appellant also asserts, "[i]t is unclear (and the Examiner
provides no real explanation) how or why a POSITA would use the NPL '01
disclosure regarding the pneumatic nailer when considering the problems
that they set out to solve." Appeal Br. 34.
In response, the Examiner states that a rationale for the proposed
modification "is clearly outlined in the Office Action of record." Ans. 7. In
reply, Appellant reiterates the arguments relating to NPL 'O 1 made in the
Appeal Brief. Reply Br. 5---6.
We agree with the Examiner that the Non-Final Office Action
articulated a sufficient rationale for the Examiner's proposed modification,
namely, to "allow a user to fix moldings and perform other common
functions of such a device." See Non-Final Act. 8. Appellant's argument
does not identify any error in, or even specifically address, the reasoning set
forth by the Examiner, which is supported by rational underpinnings. 4 See
NPL 'O 1, 2-3. As discussed above, the problem addressed by the
Examiner's proposed modification need not be the same problem addressed
by the inventors. See Kemps, 97 F.3d at 1430.
Appellant also asserts that NPL 'O 1 does not disclose various elements
required by claim 1. See Appeal Br. 33-34. For example, Appellant states,
"NPL '01 makes no mention of whether the pneumatic nailer ofNPL '01
operates with a drive energy of 80 Joules, as in claim 1." See id. As the
4 Although not relied upon, we note that Appellant's Specification admits
that conventional pneumatic nailers operate at or above 100 psi. See Spec.
1 :7-11 ("Conventional pneumatic nailers, such as those disclosed in [U.S.]
Patent No. 3,638,532 and [U.S.] Patent Application Publication No.
2012/0223120-Al, both of which incorporated by reference herein, are
connected to a source of compressed air, typically a compressor, via an
extended length hose. Per industry standards, the compressors are set at a
maximum output of 120 psi.").
10
Appeal2018-006350
Application 13/632, 114
Examiner relies on NPL 'O 1 to teach actuation of a pneumatic nailer at a
pressure of 100 psi, not to teach any of the elements Appellant asserts (in the
Appeal Brief) NPL 'O 1 fails to disclose, this argument amounts to an attack
on the cited references individually rather than on the combination of
references proposed by the Examiner. Thus, this argument does not address
the rejection of claim 1. Keller, 642 F .2d at 426; In re Merck & Co., Inc.,
800 F.2d 1091, 1097 (Fed. Cir. 1986).
Although Appellant does not dispute that NPL '01 discloses actuation
of a pneumatic nailer at 100 psi, Appellant argues in the Reply Brief, for the
first time, that
NPL '01, by mentioning that the pneumatic nailer operates at 60
to 100 pounds per square inch, makes no mention that each
actuation of the pneumatic nailer is at 100 pounds per square
inch, or if the pneumatic nailer of NPL '01 operates as other
pneumatic nailers known at the time of the claimed invention
(i.e., that first actuation is at 100 pounds per square inch and then
subsequent actuations are at less than 100 pounds per square
inch).
Reply Br. 6. Thus, Appellant asserts that the pneumatic nailer disclosed by
NPL '01 is silent on whether "each," i.e., every actuation is performed with a
pressure of 100 psi. See id.
This argument was not made in the Appeal Brief and is not responsive
to any new position raised in the Examiner's Answer. See Appeal Br.
18--47, Ans. 3-14. Appellant does not show good cause why this new
argument should be considered. Accordingly, this argument is waived and
will not be further addressed. See 37 C.F.R. § 4I.47(b )(2).
Design Choice and NPL '02
The Examiner determined that it would have been a matter of design
choice to provide the recited volume of less than 1000 ml (Non-Final Act.
11
Appeal2018-006350
Application 13/632, 114
9), and Appellant does not contest this finding (see Appeal Br. 34--35, Reply
Br. 6-7). Accordingly, Appellant has waived any argument with respect to
this determination. Thus, we need not reach Appellant's arguments as to the
Examiner's alternative finding that NPL '02 discloses this limitation.
We have considered all of Appellant's timely arguments in support of
the patentability of claim 1, but they do not apprise us of Examiner error.
Accordingly, we sustain the rejection of claim 1 and claims 2-5 and 18-20
depending therefrom.
Rejection II
Appellant argues for the patentability of the claims subject to the
second ground of rejection, i.e., claims 9 and 21-27, as a group. See Appeal
Br. 35. We select claim 9 as representative of the group, and claims 21-27
stand or fall with claim 9. 3 7 C.F .R. § 41.3 7 ( c )(1 )(iv).
From page 36 to page 40 of the Appeal Brief, Appellant summarizes
the rejection, and, after summarizing the Examiner's position for each of
Smith, Barber, Komazaki, NPL '01, and NPL '02, asserts "[t]he Examiner
does not explain why a POSIT A would or would need to add these
features from [Smith, Barber, Komazaki, NPL 'O 1, and NPL '02] to modify
the pneumatic nailer of Plunkett."
These arguments do not apprise us of Examiner error because the
Examiner set forth explicit reasoning in the Non-Final Office Action as to
why it would have been obvious to a person of ordinary skill in the art to
incorporate the teachings of the above-noted references in the pneumatic
nailer disclosed by Plunkett. See Non-Final Act. 19-21. The arguments on
pages 36 to 40 of the Appeal Brief fail to address this reasoning.
On pages 40 through 41 of the Appeal Brief, Appellant (i) states, in
general, that the Examiner relied on improper hindsight, (ii) summarizes the
12
Appeal2018-006350
Application 13/632, 114
modifications the Examiner proposes to make to the pneumatic nailer taught
by Plunkett, and (iii) concludes, "the Examiner is using the claimed
invention to pick and choose components from the references to reconstruct
the claimed invention" (Appeal Br. 41). These assertions do not address the
specific findings and reasoning set forth by the Examiner in the rejection of
claim 9 (see Non-Final Act. 16-24), and, therefore, do not apprise us of
Examiner error.
On page 42 of the Appeal Brief, Appellant asserts that the fact that the
nailer disclosed by Smith is powered by electricity rather than compressed
air precludes the Examiner's reliance on Smith to teach a drive energy of at
least 80 Joules. As discussed supra, this argument is unavailing because the
teaching in Smith that 169.5 Joules of energy are required to drive a 3.25
inch nail into semi-hard wood is not affected by whether the nail is driven by
an electric nailer or a pneumatic nailer. See Smith 5:39--50.
Appellant attacks the Examiner's use of the teachings of Barber,
asserting that Barber does not disclose certain elements for which the
Examiner relies upon other references. See Appeal Br. 43--44. Appellant
then states, "[i]t is unclear (and the Examiner provides no real explanation)
how or why a POSIT A would have given any attention to Barber's
disclosure of an electric impact device when considering the problems that
the inventors set out to solve." Id. at 44. However, Appellant's individual
attack on Barber, when the rejection of claim 9 is based on the combination
of the teachings of Barber with those of other references does not address the
Examiner's rejection. See Keller, 642 F.2d at 426.
Additionally, contrary to Appellant's assertion, the Examiner set forth
reasoning for the combination of the teachings of Barber and Plunkett on
page 19 of the Non-Final Office Action, which Appellant does not traverse.
13
Appeal2018-006350
Application 13/632, 114
On page 45 of the Appeal Brief, in relation to the Examiner's reliance
on the disclosure ofNPL '01, Appellant states, "NPL '01 does not
contemplate the problems that the inventors were trying to solve." As
discussed supra, there is no requirement that the reasoning for combining
teachings of multiple references be the same as that of the inventors. See
Kemps, 97 F.3d at 1430.
Appellant next asserts that the Examiner's reliance on NPL '02 to
teach a sum of the internal storage volume, the swept volume, and the return
volume is less than 1,000 milliliters is improper because NPL '02 "does not
contemplate the problems that the inventors were trying to solve." This
argument does not address the Examiner's finding (Non-Final Act. 21) that
providing this feature in the pneumatic nailer of Plunkett would have been a
matter of design choice, and, thus, Appellant's argument is unavailing.
We have considered all of Appellant's arguments in support of the
patentability of claim 9. None of these arguments apprises us of Examiner
error. Accordingly, we sustain the rejection of claim 9. Claims 21-27 fall
with claim 9.
DECISION
I. We affirm the rejection of claims 1-5 and 18-20 as
unpatentable over Ohi, Plunkett, Smith, Barber, Komazaki, NPL 'O 1, and
NPL '02.
II. We affirm the rejection of claims 9 and 21-27 as unpatentable
over Plunkett, Smith, Barber, Komazaki, NPL '01, and NPL '02.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
14
Appeal2018-006350
Application 13/632, 114
AFFIRMED
15