Ex Parte Scott et al

Patent Trial and Appeal Board

Dec 18, 2018

14210812 (P.T.A.B. Dec. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/210,812 03/14/2014
60840 7590 12/20/2018
MICHAEL, BEST & FRIEDRICH LLP (MT)
100 EAST WISCONSIN A VENUE
SUITE 3300
MILWAUKEE, WI 53202
FIRST NAMED INVENTOR
John S. Scott
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.
066042-845 l-US04 3152
EXAMINER
SEIF, DARIUSH
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
12/20/2018 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):
MKEIPDOCKET@MICHAELBEST.COM
milwaukeeip@milwaukeetool.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHNS. SCOTT and RY AN A. DEDRICKSON 1
Appeal2018-004094
Application 14/210,812
Technology Center 3700
Before JENNIFER D. BAHR, JAMES P. CAL VE, and JILL D. HILL,
Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1, 3-18, 41, and 42 under 35 U.S.C. § 103(a) as
unpatentable over Clark (US 2005/0279519 Al, published Dec. 22, 2005)
and Chung (US 6,360,828 Bl, issued Mar. 26, 2002). 2 We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Milwaukee Electric Tool Corporation is the applicant as provided in
37 C.F.R. § 1.46 and is identified as the real party in interest. Appeal Br. 2.
2 See Ans. 2 (listing the correct claims under rejection). Claims 2 and 19--40
have been canceled. Appeal Br. 11, 14 (Claims App'x).
Appeal2018-004094
Application 14/210, 812
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is the only independent claim and is
illustrative of the claimed subject matter.
1. An impact tool comprising:
a housing;
a motor having an output shaft defining a first axis;
a drive shaft rotatably supported by the housing about a
second axis oriented substantially normal to the first axis;
an impact mechanism coupled between the motor and the
drive shaft and operable to impart a striking rotational force to
the drive shaft, the impact mechanism including
an anvil rotatably supported by the housing and
coupled to the drive shaft, and
a hammer coupled to the motor to receive torque
from the motor and impart the striking rotational force to
the anvil; and
a locking mechanism operable to selectively lock the
drive shaft relative to the housing, the locking mechanism
including
a cam member coupled for co-rotation with the
drive shaft and having at least one cam lobe, and
a follower positioned between the cam lobe and
the housing, wherein the follower is engageable with the
housing to lock the drive shaft to the housing.
DISCUSSION
Appellant presents arguments for independent claim 1 and for
dependent claims 6 and 41, but does not present any separate arguments for
any other of the dependent claims. Appeal Br. 6-10. Thus, we decide this
appeal on the basis of claims 1, 6, and 41. Claims 3-5 and 15-18 stand or
fall with claim 1; claims 7-14 stand or fall with claim 6; and claim 42 stands
or falls with claim 41. See 3 7 C.F .R. § 41.3 7 ( c )( 1 )(iv) (permitting the Board
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Application 14/210, 812
to select a single claim to decide the appeal as to a single ground of rejection
of a group of claims argued together).
Claims 1, 3-5, and 15-18
The Examiner finds that Clark discloses most of the limitations of
claim 1, including, in particular, a drive shaft (shaft 94), but that Clark does
not disclose the claimed locking mechanism. See Non-Final Act. 3. The
Examiner finds that Chung discloses a locking mechanism in a power tool
that "allows the tool to be used manually in case of a power failure or battery
malfunction." Id. The Examiner finds that Chung's locking mechanism
includes a cam member ( cam 5), coupled for co-rotation with a drive shaft
( output shaft 2) and having at least one cam lobe (ridges 52), and a follower
(brake shoes 3) positioned between the cam lobe and the housing (housing
1 ), wherein the follower is engageable with the housing to lock the drive
shaft to the housing. Id. The Examiner determines that it would have been
obvious to provide Clark's impact tool with a locking mechanism as taught
by Chung because "Chung teaches the mechanism to be useable with such a
tool ... having a housing ... , and that the mechanism allows the tool to be
used manually in case of a power failure or battery malfunction." Id. at 3--4
(citing Clark 1:41--42; Fig. 1, housing 1).
The Examiner explains that "a person having ordinary skill in the art
would recognize that the locking mechanism would be best provided on the
second axis ([ output axis] 91) of Clark" because "the torque moment would
be aligned with the second axis when in manual use." Id. at 8. According to
the Examiner, because Clark's second axis ( output axis 91) "is where the
torque is being applied to the tool," "it is the ideal, and most obvious
position to place the locking mechanism of Chung." Id. The Examiner
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Application 14/210, 812
further explains that "[a] person having ordinary skill in the art would
recognize the optimal and obvious location for the locking mechanism of
Chung would be as close to the point at which the torque is being transferred
to the tool (i.e., on the second axis)," to avoid having to transmit
unnecessary torque through components disposed between the tool ( e.g.,
screwdriver bit, drive socket, etc.) and the locking mechanism. Id. at 9; see
Clark ,r 26 (describing illustrative outputs for use with Clark's right angle
impact driver).
Appellant points out that Chung teaches the back flat face of driving
disk 4, and not the flat face of bevel gear portion 92, having the attached
lugs of the locking mechanism. Appeal Br. 7. Appellant asserts that
"Chung's driving disk 4 is a carrier that is part of a planetary gear train also
having individual planet gears supported upon the respective poles 43 on the
driving disk 4." Id. Thus, Appellant contends that "in deciding where to
arrange Chung's locking mechanism on Clark's right-angle impact driver,
Chung's teachings would have led one of ordinary skill in the art to have
positioned Chung's cam 5 on Clark's cam shaft 40, and Chung's stops 411
on Clark's carrier 36 ... , with Chung's brake shoes 3 surrounding the cam
5." Id.
The Examiner responds that a person having ordinary skill in the art
would not have placed any particular significance on the planetary gear
system of Chung with respect to deciding where to place the locking
mechanism in Clark's right angle impact driver. Ans. 2. According to the
Examiner, a person having ordinary skill in the art would recognize that
Chung's locking mechanism requires only "a rotating input source ... that
includes a flat face ... capable of receiving lug features like [ circular
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Application 14/210, 812
protrusion] 41 and [ elongated stop] 411 of [Chung's] locking mechanism."
Id. "In other words," the Examiner explains, "the locking device doesn't
know or care whether it is a planetary gear train or any other well-known
rotating driving means that drives the rotation of the lugs and shaft." Id. at
2-3. The Examiner notes that Clark provides at least two such flat faces
suitable for providing the lugs of the locking mechanism-the back face of
bevel gear portion 92 of gear-output 90 and the back face of the planetary
gear system comprising planet gears 32, planet gear pins 34, and carrier 36.
Id. at 3.
The Examiner then reiterates the position that a person having
ordinary skill in the art would recognize Clark's second axis (output axis 91)
as the best and "most obvious" location for the locking mechanism because
"the torque moment would be aligned with the second axis when in manual
use," and the second axis "is where the torque is being applied to the tool."
Id. at 4. Thus, placing the locking mechanism on Clark's axis 91 would
avoid having to transmit unnecessary torque through components disposed
between the output tool and the locking mechanism. Id. at 5.
Appellant contends that the Examiner's reasoning requires that one of
ordinary skill in the art ignore Chung's teaching to place the locking
mechanism on the face of the carrier of the planetary gear system and place
it instead on the face of bevel gear portion 92 of gear-output 90 and, thus, "is
nothing more than impermissible hindsight reconstruction." Reply Br. 2.
Appellant submits that the Examiner's rationale about eliminating
unnecessary torque transfer through components disposed between the tool
and the locking mechanism "simply highlights the improvement that the
claimed invention provides over the prior art." Id. at 3.
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Appellant's argument that, in applying the locking mechanism
teaching of Chung to Clark's right angle impact driver, a person having
ordinary skill in the art would only consider placing the locking mechanism
on Clark's carrier 36 of the planetary gear system is not persuasive. This
argument appears to assume a bodily incorporation of the structure of Chung
into Clark's driver, and fails to take into account the creativity and
inferences that a person of ordinary skill in the art would employ.
Notably, Chung's power tool is a single axis tool, not a right angle
impact driver like that of Clark. See Chung, Fig. 1. Thus, Chung's output
shaft 2 and the axis along which it extends may reasonably be analogized to
either Clark's cam shaft 40 and motor axis 22, respectively, or Clark's shaft
94 and output axis 91, respectively. In fact, Chung's use of the terminology
"output shaft" for shaft 2 mirrors the terminology "output axis 91" and
"gear-output 90" used by Clark in connection with the components on output
axis 91, rather than in connection with motor axis 22. See Chung 2:6;
Clark ,r 24. Thus, Appellant's insistence that the modification of Clark
suggested by Chung would be a locking mechanism operable to lock Clark's
camshaft 40, not gear-output 90 (Appeal Br. 8), is not factually supported by
Chung.
Rejections on obviousness grounds must be supported by "some
articulated reasoning with some rational underpinning" to combine the
known elements in the manner required in the claim at issue. KSR Int 'l Co.
v. Teleflex Inc., 550 U.S. 398,418 (2007) (quoting In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006)). However, "the analysis need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for [the PTO] can take account of the inferences and creative steps
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that a person of ordinary skill in the art would employ." KSR, 550 U.S. at
418. "A person of ordinary skill is also a person of ordinary creativity, not
an automaton." Id. at 421. The obviousness inquiry does not ask "whether
the references could be physically combined but whether the claimed
inventions are rendered obvious by the teachings of the prior art as a whole."
In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en bane); see also In re
Keller, 642 F.2d 413,425 (CCPA 1981) (stating, "[t]he test for obviousness
is not whether the features of a secondary reference may be bodily
incorporated into the structure of the primary reference"). Rather, in a case
such as this where each of the elements of the claim are known to the art, the
obviousness inquiry requires a finding that the combination of known
elements was obvious to a person with ordinary skill in the art. KSR, 550
U.S. at 420.
The Examiner articulates reasons why a person of ordinary skill in the
art would have been prompted to place the locking mechanism on the second
axis (output axis 91}-namely, to locate the locking mechanism close to the
point at which Clark's driver applies torque to the output (screwdriver bit,
drive socket, adaptor, etc.) and to avoid having to transmit unnecessary
torque through components disposed between the locking mechanism and
the output. Non-Final Act. 3--4, 8-9; Ans. 4--5. These reasons have rational
underpinnings, and Appellant does not identify any flaw in this reasoning.
As mentioned above, Appellant alleges that the Examiner's reasoning
amounts to impermissible hindsight reconstruction and that, more
particularly, the Examiner's rationale about eliminating unnecessary torque
transfer through components disposed between the tool and the locking
mechanism "simply highlights the improvement that the claimed invention
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Application 14/210, 812
provides over the prior art." Reply Br. 2-3. Appellant does not identify any
flaw in the Examiner's reasoning or point to any knowledge relied on by the
Examiner that was gleaned only from Appellant's disclosure and that was
not otherwise within the level of ordinary skill in the art at the time of the
invention, thereby failing to support Appellant's hindsight assertion. See In
re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971) ("Any judgment on
obviousness is in a sense necessarily a reconstruction based upon hindsight
reasoning, but so long as it takes into account only knowledge which was
within the level of ordinary skill at the time the claimed invention was made
and does not include knowledge gleaned only from applicant's disclosure,
such a reconstruction is proper."). In particular, Appellant does not point to
any teaching in Appellant's Specification regarding the advantages of
placing the locking mechanism on the second axis, much less any disclosure
or suggestion in the Specification that the particular location of the locking
mechanism is an improvement over a right angle impact tool comprising a
locking mechanism disposed on the first axis (i.e., the axis aligned with the
motor shaft). Thus, Appellant does not provide any factual evidence to
support the assertion that the Examiner's rationale was gleaned only from
Appellant's disclosure.
For the above reasons, Appellant does not apprise us of error in the
rejection of claim 1 as unpatentable over Clark and Chung. Accordingly, we
sustain the rejection of claim 1, as well as claims 3-5 and 15-18, which fall
with claim 1, as unpatentable over Clark and Chung.
Claims 6-14, 41, and 42
Appellant's arguments contesting the rejection of claims 6 and 41 are
predicated on Appellant's proposed combination of Clark and Chung, in
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Application 14/210, 812
which the locking mechanism is placed on Clark's motor axis 22, rather than
on Clark's output axis 91. See Appeal Br. 8-10. Thus, Appellant's
arguments are not responsive to the rejection set forth by the Examiner and,
for the reasons discussed above, fail to apprise us of error. Accordingly, we
sustain the rejection of claims 6 and 41, as well as claims 7-14, which fall
with claim 6, and claim 42, which falls with claim 41, as unpatentable over
Clark and Chung.
DECISION
The Examiner's decision rejecting claims 1, 3-18, 41, and 42 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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