Ex Parte Stones

Board of Patent Appeals and Interferences

Aug 10, 2012

10911321 (B.P.A.I. Aug. 10, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/911,321 08/04/2004 Kevin Stones P-US-GD-1080CC 9761
7590 08/10/2012
Black & Decker Corporation
701 E. Joppa Road
Towson, MD 21286
EXAMINER
PAYER, HWEI SIU CHOU
ART UNIT PAPER NUMBER
3724
MAIL DATE DELIVERY MODE
08/10/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KEVIN STONES
____________

Appeal 2010-008103
Application 10/911,321
Technology Center 3700
____________

Before STEVEN D. A. McCARTHY, JAMES P. CALVE, and RICHARD
E. RICE, Administrative Patent Judges.

RICE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the rejection of claims
1, 3, 4, 10, 12, 13, and 15. Claims 2, 5-9, 11, and 14 have been canceled.
We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM-IN-PART.
Appeal 2010-008103
Application 10/911,321

2
CLAIMED SUBJECT MATTER
Claim 1 is representative of the claimed subject matter on appeal:
1. A power tool comprising:
a housing, a motor provided in the housing, an output
shaft caused by said motor to execute reciprocating motion, a
blade assembly extending from the front of the housing along a
first axis, and a handle assembly;
wherein the handle assembly comprises a front handle
and a rear handle formed as a unitary piece with said front
handle so that both handles move in unison, a mounting portion
mounted to opposite sides of the housing permitting the handle
assembly to be rotated so that one of the front or rear handle is
above the housing and the other is below the housing; and
wherein the front handle and the rear handle are oriented
substantially perpendicular to one another and whose positions
are fixed relative to one another.

REJECTIONS
Claims 1, 3, 10, 12, 13, and 15 are rejected under 35 U.S.C. § 102(b)
as anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as obvious
over Williams (US 3,991,468, iss. Nov. 16, 1976).
Claim 4 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Williams and Ellson (US 6,973,728 B2, iss. Dec. 13, 2005).
ANALYSIS
Claims 1, 3, 10, 12, 13, and 15 as anticipated by or obvious over Williams
Appellant argues claims 1, 3, 10, 12, 13, and 15 as a group. App. Br.
8-10. Nevertheless, the Appellant’s arguments do not apply to claim 1 in the
same way that the arguments apply to claims 13 and 15. Therefore, we
select claim 1 as representative of the group including claims 1, 3, 10 and
12. We consider the Examiner’s rejection as of claims 13 and 15 separately.
Appeal 2010-008103
Application 10/911,321

3
Claims 1, 3, 10, and 12
The Examiner found that Williams disclosed a hedge trimmer with a
handle assembly (10) comprising a front handle (11) and a rear handle (14)
formed as a unitary piece with the handle (11). Ans. 4. The Examiner
further found that the disclosed handle assembly (10) was readily mountable
on and removable from the hedge trimmer. Id. The Examiner additionally
found that
[s]ince Williams specifically teaches the handle assembly (10)
is readily mountable on and removable from the hedge
trimmer (see column 1, lines 60-62), Williams’[] handles (11,
14) are deemed to be fully capable of moving in unison and can
be rotated to a position (by detaching the clamp 23 and
loosening up or detaching the fasteners 22 and by re-attaching
same) such that the front handle (11) is above the housing (1)
and the rear handle (14) is below the housing (1) as claimed.
Id. (emphasis by the Examiner). Regarding claim 1, the Examiner also
found that “when Williams’[] front handle (11) is adjusted to be
substantially parallel to and above the housing (1) and the rear handle (14) is
substantially perpendicular to and below the housing (1), the two handles
(11, 14) are oriented substantially perpendicular to one another and [their]
positions are fixed relative to one another as claimed.” Id. The Examiner
interpreted claims 1 and 10 as not requiring a handle assembly that is
rotatable about the housing or that must be attached to the power tool while
rotating about the housing. Id. 6.
Appellant argues that detaching and re-attaching the handle assembly
is not “rotating,” as there is no turning or revolving about a center point or
axis. Reply 3. Appellant further argues that the Examiner has provided no
basis, apart from conclusory statements, to explain how the rear handle
could be rotated and positioned as claimed. Id. Appellant also contends that
Appeal 2010-008103
Application 10/911,321

4
the motor housing (1) and the handle portion (4) would have obstructed
rotation of the tubular handle components (11, 14) around the fasteners (22).
App. Br. 9-10. Appellant further contends that the Examiner has not
articulated any reason why one skilled in the art would have rotated
Williams’ handle assembly relative to the motor housing. App. Br. 9.
A skilled artisan would understand that claims 1 and 10 require a
handle assembly with a “mounting portion” that attaches the handle
assembly to the motor housing such that the handle assembly can be
“rotated” from one position to another relative to the motor housing while
attached. Appellant’s Specification supports this claim construction. The
housing (3) of the hedge trimmer described in the Specification can pivot
relative to the handle assembly (2). (Spec. 8, ll. 16-18, Figs. 8, 9). More
specifically, the housing (3) engages the handle assembly (2) at a cylindrical
pivot such that the housing can be rotated relative to the handle assembly (2)
around the axis of the pivot. (Spec. 9, ll. 19-24, Figs. 2, 8, 17a, 17b). In the
position shown in Figure 2, the forward handle (6) extends forward of the
pivot and the rear handle (7) extends rearward of the pivot. The handle
assembly (2) can be rotated from that position relative to the housing (3), as
shown in Figure (8), such that the rear handle (7) is positioned below the
housing and the forward handle (6) is positioned above the housing. In
operation, a latching mechanism secures the hedge trimmer in one or the
other of those two positions.
Appellant’s Figures 2 and 8 are reproduced below:
App
App

Figu
Figu
trimm
struc
close
col.
faste
be re
15; s
func
comp
Col.
inclu
eal 2010-0
lication 10

re 2 is a si
re 8 is a pe
er.
William
ture of tub
to the gro
1, ll. 22-28
ners remo
adily deta
ee also co
tions “for
onent to t
1, ll. 40-4
Figure 1
ding: a fir
08103
/911,321
de view of
rspective
s discloses
ular const
und while
; Fig. 1. W
vably mou
ched perm
l. 1, ll. 28-
securely cl
he existing
3.
of William
st U-shape
a hedge tr
view of th
a hedge tr
ruction en
remaining
illiams fu
nt the han
itting ordi
32. Willia
amping th
handle p
s depicts
d handle c
5
immer em
e handle a
immer ha
abling the
in a stand
rther disc
dle attachm
nary use o
ms additio
e rearward
ortion of th
a handle a
omponent
phasizing
ssembly at
ving a han
user to ho
ing positi
loses that
ent to the
f the trimm
nally disc
ly extendi
e trimmer
ttachment
(11) deta
the rear h
the rear o
dle attachm
ld the hedg
on. Abstr
“[a] clamp
trimmer w
er.” Abst
loses that
ng, second
motor ho
structure
chably sec
andle.
f the hedg
ent
e trimmer
., ll. 1-4;
and
hich may
r., ll. 12-
the clamp
handle
using.”
(10)
ured to a
e

App
App

moto
comp
clam
hous
repro

Figu
comb
to an
discl
mou
be ro
hand
inter
attac
eal 2010-0
lication 10
r housing
onent (14
p (23) abo
ing (1). C
duced bel
re 1 of Wi
ination w
The disc
d removab
ose that th
nted to opp
tated” (cla
le assemb
pretation o
hed to the
08103
/911,321
(1) by fast
) including
ut the rear
ol. 2, ll. 4
ow:
lliams is a
ith a powe
losure that
le from th
e handle a
osite side
im 1) or “
ly being ca
f claims 1
power too
eners (22)
a lower m
wardly ex
4-49, 65-6
perspectiv
red hedge
the handl
e hedge tr
ttachment
s of the ho
a mountin
pable of r
and 10 as
l while be
6
; and a sec
ember (1
tending ha
8; col. 3 ll
e view of
trimmer.
e attachme
immer doe
structure i
using perm
g portion m
otating” (c
not requir
ing rotated
ond U-sha
6) detacha
ndle porti
. 6-9. Fig
the handle
nt structu
s not expr
ncludes a
itting the
ounted to
laim 10).
ing the ha
about the
ped handl
bly secure
on (4) of th
ure 1 of W
attachme
re (10) is m
essly or in
“mounting
handle as
the housi
The Exam
ndle assem
housing a
e
d by a
e motor
illiams is

nt in
ountable
herently
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sembly to
ng . . . the
iner’s
bly to be
nd

Appeal 2010-008103
Application 10/911,321

7
therefore the handle can be removed, rotated to a desired position, and then
re-attached to the housing (Ans. 6) is not consistent with the language of
claims 1 and 10 when interpreted in light of Appellant’s Specification as
discussed supra. Furthermore, the Examiner’s finding that merely loosening
the fasteners (22) would necessarily have permitted rotation of the handle
assembly (10) lacks a sound basis because, as Appellant asserts and as
shown in Figures 1 and 3 of Williams, the lower member (16) of the second
handle component (14) is attached to the inside of the first handle
component (11) so that the lower member (16) lies above the motor housing
and cannot be rotated downward. App. Br. 9. For these reasons, the
Examiner’s rejection of claims 1, 3, 10, and 12 for anticipation lacks a sound
basis.
With respect to the rejection in the alternative for obviousness, the
Examiner has not articulated a persuasive reason why the person of ordinary
skill in the art would have modified Williams’ handle attachment structure
(10) to make it rotatable relative to the motor housing (1). The Examiner
found that when Williams’ first handle component (11) “is adjusted to be
substantially parallel to and above the housing (1),” Williams’ second handle
component (14) “is substantially perpendicular to and below the housing
(1).” Ans. 4. However, the Examiner articulated no reasoning to explain
why a person of ordinary skill in the art would have modified the handle
attachment structure (10) to permit rotatation when Williams discloses that
the handle is firmly attached to the housing by fasteners 22 and clamp 23.
Col. 1, ll. 40-46; col. 3, ll. 19-26; fig. 3; see App. Br. 9. Nor did the
Examiner make a finding as whether or how the clamp (23) could be re-
attached to secure the handle attachment structure (10) to the motor housing
Appeal 2010-008103
Application 10/911,321

8
(1) when the first handle component (11) was substantially parallel to and
above the housing (1). Thus, the Examiner’s alternative obviousness
rejection is not supported by some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.
For these reasons, we do not sustain the Examiner’s rejection of
independent claims 1 and 10 or claims 3 and 12, which depend from claims
1 and 10, respectively.

Claims 13 and 15
Appellant argues that “claims 1, 10, and 13 … recite that the front and
rear handle[s] are rotatable about the housing ….” App. Br. 8. With respect
to claim 13, however, the Examiner separately concluded that “independent
claim 13 does NOT even require a ‘rotatable’ handle assembly.” Ans. 6
(emphasis by the Examiner). We agree with the Examiner. Claim 13 lacks
a limitation corresponding to the “permitting the handle assembly to be
rotated” limitation of claim 1 or “the handle assembly being capable of
rotating” limitation of claim 10. As Appellant has not provided any separate
argument to persuade us of error in the Examiner’s finding that Williams
discloses the features of the power tool recited in claims 13 and 15 (Ans. 4-
6), we sustain the Examiner’s rejection of those claims.
Claim 4 as obvious over Williams and Ellson

Independent claim 4 recites the handle assembly comprising “a
mounting portion mounted to the housing permitting the handle assembly to
be rotated so that one of the front or rear handle is above the housing and
the other is below the housing.” The Examiner relied on Williams to
disclose this feature and Ellson to disclose the first and second switching
Appeal 2010-008103
Application 10/911,321

9
means that also are recited in claim 4. We agree with Appellant that
Williams does not disclose a rotatable handle assembly for the reasons
discussed supra for claims 1 and 10. As such, we cannot sustain the
rejection of claim 4.
DECISION
The rejection of claims 1, 3, 4, 10, and 12 are REVERSED.
The rejection of claims 13 and 15 are 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)(1)(iv).

AFFIRMED-IN-PART

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