13837429 (P.T.A.B. Dec. 20, 2018)

Ex Parte Timmons et al

Patent Trial and Appeal BoardDec 20, 2018

13837429 (P.T.A.B. Dec. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/837,429 03/15/2013 60840 7590 12/25/2018 MICHAEL, BEST & FRIEDRICH LLP (MT) 100 EAST WISCONSIN A VENUE SUITE 3300 MILWAUKEE, WI 53202 FIRST NAMED INVENTOR Terry L. Timmons 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. 066042-8473-01 3820 EXAMINER DIAB, YASIRA ART UNIT PAPER NUMBER 3722 NOTIFICATION DATE DELIVERY MODE 12/25/2018 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 TERRY L. TIMMONS, ANDREW M. PLOWMAN, GARETH MUECKL, and JAMES WEKWERT Appeal2018-002123 Application 13/837,429 1 Technology Center 3700 Before LINDA E. HORNER, ANNETTE R. REIMERS, and NATHAN A. ENGELS, Administrative Patent Judges. ENGELS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. Â§ 134(a) from a rejection of claims 1-5, 7, 8, and 22-33. Claims 6, 9-21, and 34 are canceled. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We affirm. 1 Appellants identify Milwaukee Electric Tool Corporation as the real party in interest. Appeal Br. 2. Appeal2018-002123 Application 13/837,429 ILLUSTRATIVE CLAIMS Claims 1 and 22 are independent claims and are reproduced below as illustrative of the claimed subject matter: 1. A magnetic drill press comprising: a base housing; a magnetic base coupled to the base housing for selective engagement with a ferromagnetic workpiece; a motor carriage slidably coupled to the base housing; an electric motor supported by the motor carriage; a bit received by the electric motor for rotation about a bit axis; and an illumination system coupled to a top of the magnetic base, the illumination system having a first light and a second light, each of which is spaced laterally from the bit axis, wherein each of the first light and the second light is aligned to illuminate a work area of the workpiece intersected by the bit axis. 22. A drill press comprising: a housing; a magnetic base coupled to the housing for engagement with a workpiece; a drill unit coupled to the housing and defining a bit axis; a switch coupled to the housing; and an illumination system coupled to a top of the magnetic base, the illumination system having a light aligned to illuminate a work area of the workpiece intersected by the bit axis; wherein the illumination system is electrically coupled and selectively controlled by the switch. THE REJECTIONS Claims 1 and 4 stand rejected under 35 U.S.C. Â§ I03(a) as being unpatentable in view of Williamson (US 2,887,910; May 26, 1959) and Jones (US 6,223,794 Bl; May 1, 2001). 2 Appeal2018-002123 Application 13/837,429 Claims 2 and 3 stand rejected under 35 U.S.C. Â§ I03(a) as being unpatentable in view of Williamson, Jones, and Nichtnennung (DE 2362550 Al; June 19, 1975). Claim 7 stands rejected under 35 U.S.C. Â§ I03(a) as being unpatentable in view of Williamson, Jones, and Kopras et al. (US 6,890,135 B2; May 10, 2005). Claim 8 stands rejected under 35 U.S.C. Â§ I03(a) as being unpatentable in view of Williamson, Jones, and Mirrielees (US 1,388,875; Aug. 30, 1921). Claims 5, 22-24, 28, 29, and 31 stand rejected under 35 U.S.C. Â§ I03(a) as being unpatentable in view of Williamson, Jones, and Kikuchi et al. (JP 2002254227 A; Sept. 10, 2002). Claims 25 and 26 stand rejected under 35 U.S.C. Â§ I03(a) as being unpatentable in view of Williamson, Jones, Kikuchi, and Nichtnennung. Claim 27 stands rejected under 35 U.S.C. Â§ I03(a) as being unpatentable in view of Williamson, Jones, Kikuchi, and Kopras. Claim 30 stands rejected under 35 U.S.C. Â§ I03(a) as being unpatentable in view of Williamson, Jones, Kikuchi, and Mirrielees. Claim 32 stands rejected under 35 U.S.C. Â§ I03(a) as being unpatentable in view of Williamson, Jones, Kikuchi, Rantsch (US 3,130,633; Apr. 28, 1964), and Buck (US 2,932,194; Apr. 12, 1960). Claim 33 stands rejected under 35 U.S.C. Â§ I03(a) as being unpatentable in view of Williamson, Jones, and Rantsch. 3 Appeal2018-002123 Application 13/837,429 ANALYSIS The Examiner cites Williamson for most of the limitations of independent claims 1 and 22, including an illumination system coupled to a top of a magnetic base. Final Act. 2-3, 7. The Examiner notes that Williamson discloses its base as having two parts, a lower section and an upper section, and the Examiner finds that Williamson teaches or suggests that its light is coupled at the top of the lower section. Final Act. 2-3; Ans. 12-13. As Williamson discloses only a single light source, though, the Examiner cites Jones for its disclosures of a drill press having two lights, albeit lights located at the top of the drill press. Final Act. 3. Appellants argue the light of Williamson is positioned within a recess in the mid-portion of the base of Williamson's drill, not coupled to a top of the magnetic base. Appeal Br. 6-7; Reply Br. 2. Appellants quote Williamson's statement that the lamp is disposed in a recess "formed at the end of the lower section of the base." Appeal Br. 7 (quoting Williamson 3:30-32). We disagree with Appellants and agree with the Examiner that the combined teachings of the prior art teach or at least reasonably suggest "an illumination system coupled to a top of the magnetic base," as claimed. Claim 1 recites "a base housing" and "a magnetic base coupled to the base housing for selective engagement with a ferromagnetic workpiece," and claim 22 similarly recites a "housing" and "a magnetic base coupled to the housing for engagement with a workpiece." Appellants' Figures 2 and 12, copied below, depict the magnetic base and base housing, among other elements. 4 Appeal2018-002123 Application 13/837,429 flG. 2 ; ,/Â·.-Â·Â·Â·~\, .. .J.=l-~, -.-.,,.-x1Â·-~ .. Â·.-,.~,' _ r Â·,i .Â·\ -. ' ~ ... "'-.~.-.-â€¢.. Â·-Â·::.Â·::Â·::> I' v:f"". :, IÂ·:, .,:,.._ -~---- ;;,; ,,,:;~~t:~'t\~ ?" !/~./' \ 1J, Ii , 1 , , ~/ >/ pfi i ii ks i ,lf' /./ "~i : 11 ~ i , n / :? \\ \ \\ \ '\) \ '-:: \ ,,.~----,, { :\ " J' ve; 'i ~--- NG, n ,,.-1; >t ~J[l ,::: Figures 2 & 12 of Appellants' Specification Figure 2 depicts a sectional view of a magnetic drill press having base housing 12, magnetic base 20, and magnets 22. Spec. ,r,r 21-22. Figure 12 depicts a front view of a magnetic drill press having base housing 182, base 190 having a top portion 198, and workpiece illumination system 194. Spec. ,r,r 39-40. The Specification's description of Figure 12 states that "workpiece illumination system 194 is coupled to a top portion 198 of the magnetic base 190." Spec. ,r 40. These disclosures are consistent with the claim language that requires an illumination system "coupled to a top of the magnetic base." But as the Examiner points out, the claims do not define the top of the base, and, reading the claims in light of the Specification, the claims stop short of requiring that the illumination system is, for example, disposed on top of the 5 Appeal2018-002123 Application 13/837,429 base. Consistent with the Examiner's interpretation of "a top of the" base (Ans. 12-13), the Specification provides that the illumination system is coupled to "a top portion" of the magnetic base (Spec. ,r 40), and neither Appellants' Figures nor the remainder of Appellants' Specification describes or limits the coupling of the illumination system and the base to a more precise location (see Fig. 12). Cf Spec. ,r,r 4 ( describing in the Summary section "at least one illuminator module coupled to a surface of the magnetic base"), 6 ( describing in the Summary section "[a] workpiece illumination system ... coupled to at least one of the motor carriage, the base housing, and the magnetic base"). As cited by the Examiner, Williamson discloses a two-part "base" comprised of an upper section 14 and a lower section 16, with electromagnet 122 in lower section 16 and drill motor switch 106 in upper section 14, among other parts. As cited by Appellants, Williamson describes a lamp disposed in a recess of the lower section of the base (Williamson 3 :30-32), but Williamson's Figure 2, copied below, at least suggests that lamp 130 is located at or near the top of the lower portion 16 of base 12. In fact, Williamson's Figure 5, also copied below, additionally depicts a cross section through upper portion 14 with lamp 130 at or in upper portion 14. 6 Appeal2018-002123 Application 13/837,429 ' , Fig.2 Figure 2 of Williamson Rg.5 Figure 5 of Williamson w l I ' ' Accordingly, reading the claim language in light of Appellants' Specification, we agree with the Examiner that Williamson teaches or 7 Appeal2018-002123 Application 13/837,429 reasonably suggests an illumination source "coupled to a top of the magnetic base," as claimed. We are also unpersuaded by Appellants' arguments that Williamson's lamp 130 projects light forwardly onto the workpiece in purported contrast to the illumination system of Appellants' claims that "can project light downward onto the workpiece." Reply Br. 2. Contrary to Appellants' arguments, nothing in either of claims 1 or 22 requires projecting light downward. Moreover, as explained above, Williamson depicts its lamp as elevated from the work surface such that light would, in fact, project downwardly onto the work surface. Appellants raise an additional argument regarding claim 22, arguing that the Examiner erred in finding that the combination of references teaches or suggests "a switch coupled to the housing." Appeal Br. 10. In addition to the switch, the plain language of claim 22 provides that the housing is "coupled" to a magnetic base and a drill unit. Looking to the Specification for additional context and understanding of what claim 22 requires with a switch "coupled" to the "housing," we note that the Summary of Claimed Subject Matter in Appellants' Appeal Brief identifies Figure 2 and its related description in paragraph 22 as support for the claimed "switch" (Appeal Br. 4), but Figure 2 depicts switch 28 removed from and only indirectly "coupled" to housing 12. 2 Similarly, Appellants 2 We also note that Figure 2 and paragraph 22 relate to an embodiment in which the illumination system is "coupled to a first side portion 62 of the magnetic base 20" (Spec. ,r 26 (describing Figures 1 and 3)), not "a top of the magnetic base" as required by claim 22. See Spec. ,r 9 (stating that Figure 2 is a sectional view of the drill press of Figure 1 ), Figure 1 ( depicting an illumination module on a side of the magnetic base), Figure 3 ( depicting illumination modules on each side of the magnetic base). 8 Appeal2018-002123 Application 13/837,429 identify Figures 1 and 12 and paragraphs 21 and 39 as support for the recited "housing" (Appeal Br. 4), but none of Figures 1 or 12 or paragraphs 21 or 39 depicts a switch, much less a switch attached or coupled to the identified housing 12 (Figure 1) or housing 182 (Figure 12). In addition, paragraphs 21 and 39 identify two different housings: "base housing" 12/182 and "motor housing" 14/186. Claim 22 recites "a drill unit coupled to the housing," and as support for the claimed drill unit, Appellants identify elements 14, 18, and 46 in Figures 1 and 2 and related descriptions in paragraphs 21, 23, and 24. As is evident in Figure 2, copied above, though, drill unit 14, 18, and 46 is spaced apart from base housing 12 and only indirectly "coupled" to base housing 12 through many intermediate parts, including at least rack 32 and motor carriage 30. Reading the plain language of claim 22 in light of Appellants' Specification, it is clear that the term "coupled" does not require a direct connection. See Ans. 14 (interpreting "coupled" to include connections through intermediate parts). Williamson teaches two switches, a switch 124 that controls electricity to electromagnet 122 and a drill motor control switch 106. Williamson 3: 11-3 5. Drill motor control switch 106 is "carried by the upper section 14" and switch 124, which illuminates lamp 130 when electromagnet is turned on, is "carried by the lower section 16." Id. We agree with the Examiner3 that Williamson teaches or at least reasonable suggests "a switch coupled to the housing," even if the switch is indirectly connected to the housing. Ans. 14. 3 Although we agree with Appellants that it is not clear what in Kikuchi' s Figures is identified by the Examiner as teaching or suggesting a switch (see Ans. 13-14; Reply Br. 3), the reference to Kikuchi is unnecessary, as we agree with the Examiner's alternative findings regarding Williamson. 9 Appeal2018-002123 Application 13/837,429 Accordingly, having considered the Examiner's rejection in light of each of Appellants' arguments and the evidence of record, we agree with the Examiner and sustain the Examiner's rejection of independent claims 1 and 22, as well as dependent claims 2-5, 7, 8, and 23-33, which Appellants do not address individually. DECISION We affirm the Examiner's rejection of claims 1-5, 7, 8, and 22-33. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). See 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 10