Ex Parte Steele et al

Patent Trial and Appeal Board

Dec 17, 2018

14696084 (P.T.A.B. Dec. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/696,084 04/24/2015
60840 7590 12/19/2018
MICHAEL, BEST & FRIEDRICH LLP (MT)
100 EAST WISCONSIN A VENUE
SUITE 3300
MILWAUKEE, WI 53202
FIRST NAMED INVENTOR
Michael S. Steele
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.
066042-8013-US02 9631
EXAMINER
PRONE, JASON D
ART UNIT PAPER NUMBER
3724
NOTIFICATION DATE DELIVERY MODE
12/19/2018 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 MICHAEL S. STEELE, TIMOTHY KENNEY, and
STEVEN F. THIEL
Appeal2018-004912 1
Application 14/696,084
Technology Center 3700
Before EDWARD A. BROWN, CHARLES N. GREENHUT, and
JAMES P. CALVE, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant, Milwaukee Electric Tool Corporation, appeals under 35
U.S.C. § 134 from a rejection of claims 41, 43--45 and 48---61. We have
jurisdiction under 35 U.S.C. § 6(b ).
We affirm-in-part.
1 The real party in interest is Milwaukee Electric Tool Corporation. App.
Br. 1
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Application 14/696,084
CLAIMED SUBJECT MATTER
The claims are directed to a saw and accessory for a saw.
Independent claims 41 and 50, reproduced below, are at issue:
41. An angle guide coupleable to a band saw, the angle guide
compnsmg:
a guide body including
a substantially planar engaging surface for engaging a
workpiece during a cutting operation of the band saw, the
engaging surface defining a first plane;
a tool side for being positioned adjacent the band saw, the
tool side defining a second plane, wherein a cut angle is defined
by an angle between the first plane and the second plane; and
a slot for receiving a band saw blade, wherein the slot is at
least partially defined through the substantially planar engaging
surface such that the engaging surface is configured to guide the
workpiece relative to the band saw blade at a predetermined
angle during the cutting operation of the band saw.
50. A band saw for performing a cutting operation with a
continuous saw blade, the band saw comprising:
at least one wheel for supporting the continuous saw blade;
a motor operable to drive the continuous saw blade to cut a
workpiece;
a frame that supports the motor and the at least one wheel;
a workpiece bumper coupled to the frame and including a
slot configured to receive the continuous saw blade therethrough,
the workpiece bumper including a first engaging surface defining
a first plane, wherein the first engaging surface is configured to
be generally perpendicular to the continuous saw blade as the
continuous saw blade passes through the slot; and
an angle guide configured to be coupled to the workpiece
bumper, the angle guide comprising,
a second engaging surface for engaging a workpiece
during a cutting operation of the band saw, the second
engaging surface defining a second plane, and
a third surface defining a third plane wherein the
third plane is non-parallel to the second plane,
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Application 14/696,084
wherein a cut angle is defined by an angle between
the second plane and the first plane when the angle guide
is coupled to the workpiece bumper.
REJECTIONS
Claims 50-61 are rejected under 35 U.S.C. § 112, second paragraph,
as being indefinite.
Claims 41 and 43--45 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Purvis (U.S. Pat. 2,821,215, issued Jan. 28, 1958).
Claims 48 and 49 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Purvis.
OPINION
Claims 50-61: Indefiniteness
The stated basis for the Examiner's indefiniteness rejection2 is:
[I]s the guide coupled to the bumper or not? If the guide is not
connected to the bumper, the guide cannot comprised by the band
saw in that it is a separate structure from the band saw as a whole
Final Act. 3.
Appellant dismisses the issue raised by the Examiner as irrelevant:
"the question of whether or not the angle guide is coupled is immaterial to
a proper analysis of definiteness." App. Br. 4. We disagree with Appellant.
With regard to the second paragraph requirement for "particularly
pointing out and distinctly claiming the subject matter which the applicant
regards as his invention," it has been stated that the "essence of that
2 The Examiner withdrew the grounds for indefiniteness premised on the
"slot." Ans. 4; Final Act. 3.
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Application 14/696,084
requirement is that the language of the claims must make it clear what
subject matter they encompass." In re Hammack, 427 F.2d 1378, 1382
(CCPA 1970). This requirement has usually been viewed from the
perspective of a potential infringer, "so that they may more readily and
accurately determine the boundaries of protection involved and evaluate the
possibility of infringement and dominance." Hammack, 427 F.2d at 1382.
According to the preamble of claim 50, the claim is directed to a band
saw. The recited "angle guide" is included as one of elements of which the
claimed band saw is comprised, while at the same time being described in
the claim body only as "configured to be coupled to the workpiece bumper"
element of the bandsaw. App. Br. 14 (Claims App.). The preamble suggests
the claim is directed to a complete saw while the "configured to be coupled"
description of the "angle guide" suggests that the claim covers the
combination of a band saw and angle guide in their unassembled state. This
presents an uncertainty from the standpoint of the potential infringer because
it is not clear whether the claim is infringed when the angle guide forms an
element of the saw by somehow being connected to it (for example by being
"coupled to the workpiece bumper"), as seemingly required by the
transitional term "comprising," or if the claim is infringed as soon as the
elements of the saw are sold together without actually being coupled to one
another in the manner recited, as implied by the "configured to be coupled"
language. The second paragraph of§ 112 demands more certainty for
potential infringers to ascertain the possibilities of direct and/or contributory
infringement.
Appellant's arguments do not provide any indication as to Appellant's
actual intent with regard to the question posed above. Appellant may have
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Application 14/696,084
intended claim 50 to be directed to a complete saw with an angle guide
actually coupled to the workpiece bumper. However, as Appellant
defended, as opposed to simply removing, the "configured to" language and
argues the Specification supports both a coupled and uncoupled
configuration (Reply. Br. 3), it would appear Appellant may have intended
the claim to be a kit-type claim (e.g., "[a] band saw and angle guide for
performing ... " or "a band saw kit for performing ... "), covering a
collection of interrelated parts regardless of whether or not they are actually
connected. See, e.g.,In re Venezia, 530 F.2d 956 (CCPA 1976) (discussed
at MPEP § 2173.05(g)). In any case, we need not further speculate as to
Appellant's intent. In prosecution before the PTO "[i]t is the applicants'
burden to precisely define the invention, not the PTO's." In re Morris, 127
F.3d 1048, 1056 (Fed. Cir. 1997). The Examiner was justified in requiring
the Appellant to resolve this ambiguity during prosecution while Appellant
has the opportunity to do so. See Ex Parte Miyazaki, 89 USPQ2d 1207,
1211 (BPAI 2008); accord In re Packard, 751 F.3d 1307, (Fed. Cir. 2014).
Thus, the rejection under 35 U.S.C. § 112, second paragraph, is affirmed.
Claims 41, 43-45, 48, and 49: Anticipation and Obviousness
The Examiner's anticipation and obviousness rejections rely on the
open side defined by the edges of 34 in Purvis's bandsaw machine as
satisfying the claim 41 limitation "a tool side." Final Act. 4; Ans. 6-7. It is
true that this side identified by the Examiner generally faces the tool. See
Purvis Fig. 1. However, according to claim 41, "a cut angle" must be
defined by the "angle between the first plane and the second plane" where
the "second plane" is defined by the "tool side." Thus, the "tool side"
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Application 14/696,084
according to claim 41, must cooperate with the "engaging surface" ( defining
the "first plane") to "define" a cut angle. It is not apparent, and the
Examiner does not explain, how the side identified by the Examiner, along
the edge of leg member 34 and facing the reader in Figure 3 of Purvis, has
any influence whatsoever on a cut angle. It is true that because Purvis' s saw
blade 12 is running generally parallel to the plane defined by the edge of leg
member 34, a cut angle between the blade 12 and planar surface that would
be at plate 363 (e.g., 90° in Purvis's figures) could be said to correspond to,
or be the same as, the angle between the edge of leg member 34 and top of
plate 36 (also 90° in Purvis's figures). However, mere correspondence or
coincidence does not necessarily imply that one is serving to define the
other. The angle between the edge of leg member 34 and top of plate 3 6
could be changed without having any impact whatsoever on the angle
between the blade 12 and planar surface that would be at plate 36.
Accordingly, we agree with Appellant that "Purvis does not disclose a cut
angle of the workpiece being defined by the relationship between a planar
surface and a plane of the tool side" as recited in claim 41. Reply. Br. 6.
Thus, the rejections based on Purvis cannot be sustained.
DECISION
The Examiner's indefiniteness rejection is affirmed.
The Examiner's prior-art rejections are reversed.
3 According to Purvis' s unillustrated alternate embodiment. See Purvis, col.
2, 11. 11-12.
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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 IN-PART
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