Ex Parte Schnell et al

Patent Trial and Appeal Board

Dec 18, 2018

13605104 (P.T.A.B. Dec. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/605,104 09/06/2012
10800 7590 12/18/2018
Maginot, Moore & Beck LLP
One Indiana Square, Suite 2200
Indianapolis, IN 46204
FIRST NAMED INVENTOR
Pascal Schnell
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.
2178-0498 1715
EXAMINER
KATCOFF, MATTHEW GORDON
ART UNIT PAPER NUMBER
3725
MAIL DATE DELIVERY MODE
12/18/2018 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 PATENT TRIAL AND APPEAL BOARD
Ex parte PAS CAL SCHNELL, TOM ST AEUBLI,
ARNO LENZI, and HERMANN SCAIBLE 1
Appeal2018-004774
Application 13/605,104
Technology Center 3700
Before MICHAEL L. HOELTER, JAMES P. CAL VE, and
WILLIAM A. CAPP, Administrative Patent Judges.
CAL VE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Office Action
finally rejecting claims 1 and 5-11. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
1 Robert Bosch GmbH is identified as the real party in interest. Appeal
Br. 2.
Appeal2018-004774
Application 13/605,104
CLAIMED SUBJECT MATTER
Appellant claims a portable power tool bearing device with a main
body unit having a bearing surface configured to bear on a workpiece and
"two guiding edges which intersect each other at a 90Q angle." Spec. 1-2, 6,
8-9. This configuration allows the router tool to be guided around a comer.
Id. at 2. Claims 1, 5, and 8 are independent. Claim 1 is reproduced below.
1. A bearing device of a portable power tool comprising:
at least one main body unit configured as a comer guiding unit
having:
at least one bearing surface configured to bear on a workpiece;
two guiding edges which intersect each other at a 90°
angle when considered in a plane which runs substantially
parallel to the at least one bearing surface;
a further guiding edge configured as an arc of a circle,
the guiding edges connected to each other via the further
guiding edge;
at least one bore through which an insert tool configured
to perform work on a workpiece is led, the at least one bore
extending through the at least one main body unit in a direction
perpendicular to the at least one bearing surface; and
at least one guiding-device receiving element formed in
the at least one mam body unit, the at least one guiding-device
receiving element extending substantially parallel to one of the
two guiding edges, the at least one guiding device receiving
element configured to fix a guiding device on the at least one
main body unit.
Appeal Br. 20 (Claims App.).
REJECTION
Claims 1 and 5-11 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Mair (US 7,448,420 B2, iss. Nov. 11, 2008) and Wolff
(US 4,572,715, iss. Feb. 25, 1986).
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Appeal2018-004774
Application 13/605,104
ANALYSIS
Appellant illustrates the guiding edges 22, 24 of the claimed bearing
device in Figure 2 of their Application, which we reproduce below.
1···· ..... · ....... F/- /
·= .. ~···
12
,/i / i
Figure 2 is a plan view of portable power tool 12 and comer guiding
main body unit 14, which includes guiding edges 20, 22. Guiding edge 20,
22 intersect at a point ( shown in dashed lines under handle 66) to enclose an
angle a of 90°. The other ends of each guiding edge 20, 22 are connected to
each other by further guiding edge 24 of main body unit 14, which is an arc
of a circle as shown above in Figure 2. Spec. 8: 13-9:8.
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Appeal2018-004774
Application 13/605,104
The Examiner relies on Mair to disclose a power tool bearing device
with "two guiding edges which intersect each other at a 90Q angle" as recited
in independent claims 1, 5, and 8. Final Act. 2-3. The Examiner annotates
these findings on Figure 3 of Mair, which is reproduced below.
FIG. 3
Figure 3 above is a plan view of router 1 with offset attachment 4 and
base 8. Mair, 10:26-50. The Examiner illustrates the two guiding edges on
base 8 with annotations "El" and "E2." See Final Act. 3, 10; Ans. 9-10.
The Examiner finds that guiding edges El, E2 intersect each other at a 90Q
angle, and another guiding edge E3 configured as an arc of a circle connects
the other ends of guiding edges El, E2 to one another. Final Act. 3, 10.
The Examiner's finding that guiding edges El and E2 "intersect each
other at a 90Q angle" is inconsistent with the language of claims 1, 8, and 11
interpreted in light of the Specification.
An ordinary meaning of "intersect" includes "to meet and cross at a
point" and "to share a common area." Definition of intersect by Merriam-
Webster at http://www.merriam-webster.com/dictionary/intersect (viewed
Dec. 9, 2018).
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Appeal2018-004774
Application 13/605,104
This ordinary meaning of intersect is consistent with the Specification,
which defines "a comer guiding unit" to mean "a unit which is bounded by
two straight contour lines which intersect at at least one point." Spec. 2: 13-
15. Appellant's two straight contour lines (guiding edges 20, 22) connect to
each other at a point of intersection. A line segment in the shape of an arc
( further guiding edge 24) connects the ends of the contour lines that are
remote from the point of intersection. Id. at 2: 19-3 :7, 9: 1-8.
Appellant's Figure 2, reproduced above, illustrates this arrangement.
Claims 1, 8, and 11 recite this arrangement by requiring two guiding edges
to intersect each other at a 90Q angle and connect to each other via a further
arc-shaped guiding edge. The claims thus distinguish guiding edges that
intersect (i.e., that meet, cross, or connect at a point) from guiding edges that
connect to a further arc-shaped guiding edge.
Figure 3 of Mair (relied on by the Examiner) shows guiding edges El,
E2 connected to a rounded comer rather than intersecting each other at a 90Q
angle. Appeal Br. 9; Reply Br. 2-3. In fact, Figure 3 of Mair shows guiding
edges El, E2, connected to arc-shaped/curved guiding edges at each end. At
no point do guiding edges El, E2 intersect each other as claimed.
Thus, we do not sustain the rejection of claims 1 and 5-11.
DECISION
We reverse the rejection of claims 1 and 5-11.
REVERSED
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