Ex Parte Ullrich et al

Patent Trial and Appeal Board

Jun 12, 2018

13536462 (P.T.A.B. Jun. 12, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/536,462 06/28/2012
10800 7590 06/12/2018
Maginot, Moore & Beck LLP
One Indiana Square, Suite 2200
Indianapolis, IN 46204
FIRST NAMED INVENTOR
Andre Ullrich
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.
2178-0252 6028
EXAMINER
TECCO, ANDREW M
ART UNIT PAPER NUMBER
3721
MAIL DATE DELIVERY MODE
06/12/2018 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 ANDRE ULLRICH and HOLGER RUEBSAAMEN
Appeal2017-000960
Application 13/536,462
Technology Center 3700
Before LINDA E. HORNER, JEFFREY A. STEPHENS, and
PAUL J. KORNICZKY, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 seek our review under 35 U.S.C. § 134(a) from the
Examiner's Final Office Action ("Final Act.") rejecting claims 1---6, 9, 10,
12, and 14, which are all the claims pending in the application. We have
jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 The real party in interest is identified as Robert Bosch GmbH. Br. 2.
Appeal2017-000960
Application 13/536,462
Claimed Subject Matter
Claim 1, the only independent claim on appeal, is reproduced below
and illustrates the claimed subject matter.
1. A drywall screwdriver, comprising:
a housing;
an electric motor in the housing having a diameter of less
than 44 mm and having a motor spindle, the electric motor being
configured to be powered by at least one battery having a
nominal voltage that is in a range between 10.8V and 12V;
a screw-in depth limiting element;
a gearing unit including at least one planetary gear set
connected to the motor spindle;
an output spindle configured to be driven to rotate by the
at least one planetary gear set of the gearing unit;
a coupling unit that couples the output spindle to the at
least one planetary gear set;
a tool receptacle attached to the output spindle and
configured to retain a tool bit, wherein the housing has a hand
grip region, the hand grip region defining a battery receptacle
region configured to receive and retain the at least one battery for
powering the electric motor,
wherein the electric motor and the gearing unit are
configured to rotate the output2 spindle at a maximum rotational
speed of between 2000 rpm and 7000 rpm in an unloaded state,
and
wherein the drywall screwdriver has an overall weight of
less than 1.2 kg.
2 Claim 1, as reproduced here, reflects Appellants' amendment filed on
March 29, 2016, which was subsequently entered by the Examiner by the
Advisory Action dated April 7, 2016. The amended claim limits the
rotational speed of the "output" spindle rather than the "motor" spindle.
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Application 13/536,462
Rejections3
I. Claims 2-5 stand rejected under pre-AIA 35 U.S.C. § 112,
second paragraph, as being indefinite. Final Act. 4--5.
II. Claims 1, 9, and 10 stand rejected underpre-AIA 35 U.S.C.
§ I03(a) as unpatentable over Vassos (US 4,081,704, issued Mar. 28, 1978),
Van Laere (US 4,619,162, issued Oct. 28, 1986), Akazawa (US 5,360,073,
issued Nov. 1, 1994), and Brennenstuhl (US 2011/0139478 Al, published
June 16, 2011 ). Final Act. 6-11.
III. Claims 2-5 stand rejected under pre-AIA 35 U.S.C. § I03(a) as
unpatentable over Vassos, Van Laere, Akazawa, Brennenstuhl, and Non-
Patent Literature ("NPL") '01. 4 Final Act. 11-16.
IV. Claim 6 stands rejected under pre-AIA 35 U.S.C. § I03(a) as
unpatentable over Vassos, Van Laere, Akazawa, Brennenstuhl, and Rejman
(US 2010/0221592 Al, published Sept. 2, 2010). Final Act. 16-17.
V. Claim 12 stands rejected under pre-AIA 35 U.S.C. § I03(a) as
unpatentable over Vassos, Van Laere, Akazawa, Brennenstuhl, and Lohr
(US 7,498,526 B2, issued Mar. 3, 2009). Final Act. 17-18.
3 The Examiner withdrew the rejection of claims under pre-AIA 35 U.S.C.
§ 112, first paragraph. Advisory Action (dated Apr. 7, 2016); Ans. 2.
4 The Examiner uses "NPL 'O 1" to refer to an archived page from the
website www.blackanddecker.com (dated March 12, 2011), which describes
a "PIVOTDRIVERâ„¢ Cordless Rechargeable Screwdriver MODEL
# PD400LG," available at http://web.archive.org/web/20110312045614/
http://www.blackanddecker.com/power-tools/
PD400LG.aspx#divTechSpecs. Final Act. 11.
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Application 13/536,462
VI. Claim 14 stands rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Vassos, Van Laere, Akazawa, Brennenstuhl, and NPL
'03. 5 Final Act. 18.
DISCUSSION
Rejection I - Indefiniteness of Claims 2-5
The Examiner rejects claims 2-5 as indefinite based on the recited
terms "a first overall length" ( claim 2), "a first ergonomic overall length"
(claim 3), "a second overall length" (claim 4), and "a second ergonomic
overall length" (claim 5). Final Act. 4--5. The Examiner determines that the
Specification "set[ s] some broad boundaries" for these terms, but "does so in
terms of hypothetical planes which have preferable (i.e.[,] optional, and
therefore indefinite) landmarks." Id.
Appellants argue the Specification includes definitions for each of the
above-recited terms of claims 2-5. For example, argue Appellants, "the
'first overall length' is defined with respect to a first extremity and a second
extremity," and "[a] person of ordinary skill in the art would be able to
easily identify the first and second extremities of the drywall screwdriver
without regard to what parts of the device actually form the extremities."
Br. 4. Appellants contend the Specification's statement that the first
extremity is "preferably" the screw-in depth limiting element and the second
extremity is "preferably" the housing means only that these are the parts of
5 The Examiner uses "NPL '03" to refer to an archived page from the
website www.northemtool.com ( dated April 18, 2011 ), which describes a
"Milwaukee M12 Li-Ion Battery, Model# 48-11-2401," available at
https://web.archive.org/web/20110418204 714/http://www.northemtool.com/
shop/tools/product_200382873_200382873. Final Act. 18.
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Application 13/536,462
the drywall screwdriver that preferably form the respective extremities. Id.
Appellants argue that, even if other parts formed the extremities, the lengths
are still defined with reference to the extremities. See id.
We agree with Appellants that the above-recited "length" terms of
claims 2-5 are reasonably clear. Each of these lengths is shown in Figure 1
and defined in the Specification6 at pages 3-8. See also Spec. 16, 23. The
Examiner's rejection relies on the use of the term "preferably" in the
description at pages 3-8 of the Specification. Having reviewed these
passages, however, we agree with Appellants that the term "preferably" is
used only to identify portions of the screwdriver that may form the
extremities. This description does not change that each of the lengths is
defined with respect to one or more planes in which various extremities of
the screwdriver lie. Regardless whether a particular drywall screwdriver
has, for example, a screw-in depth limiting element like the preferred
embodiment described in the Specification, the extremity corresponding to
the one formed by the screw-in depth limiting element shown in Figure 1 of
Appellants' drawings would be the one that helps define the first plane used
in determining the first overall length and the first overall ergonomic overall
length. A similar analysis may be used to determine the second extremity on
the opposite end of the screwdriver, which is used to define the second
plane, see Spec. 3--4, as well as the third and fourth planes, see Spec. 6-8.
We note that the fifth and sixth planes are defined in part with respect to an
apex of a grip recess, see Spec. 5, 7-8, 23, and the Examiner has not
identified these planes as hypothetical or formed from optional landmarks.
6 Unless otherwise noted, citations are to the Specification filed June 28,
2012.
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Application 13/536,462
In view of the foregoing, we do not sustain the Examiner's rejection
under 35 U.S.C. § 112, second paragraph, of claims 2-5.
Rejection II- Obviousness of Claims 1, 9, 10
Appellants argue claims 9 and 10 as a group with claim 1. Br. 10.
We select claim 1 as representative, with claims 9 and 10 standing or falling
therewith. 37 C.F.R. § 4I.37(c)(l)(iv).
Appellants argue Van Laere does not teach an electric motor "having
a diameter of less than 44 mm," as recited in claim 1. Br. 6-7. Appellants
contend column 10, lines 27-29, of Van Laere teach only that the assembled
armature and two pole shoes have a diameter of 43mm, and argue that this
does not represent the full diameter of the motor, which Appellants contend
also "includes at least an outer hull 34 if not the full casing 1." Id.
The Examiner responds that Van Laere's 43 mm diameter includes all
moving parts of the motor, as shown in Figure 2, and is "effectively the
entire diameter of the motor that actually generates the spindle force and is
deemed to be a motor diameter." Ans. 3. The Examiner further finds that, at
the very least, Van Laere teaches the general conditions of the claimed
subject matter and "[t]here is no evidence or argument put forward by the
Appellant that the motor of Van Laere which at least has an inner diameter
of 43mm would be significantly functionally different than a motor with a
diameter less than 44mm as claimed." Ans. 3--4. The Examiner concludes
"[i]t is well established that finding the optimal or working ranges involves
only routine skill when the general conditions are met." Ans. 4.
We agree with the Examiner's finding that Van Laere teaches an
electric motor having a diameter of less than 44 mm. Van Laere' s table of
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Application 13/536,462
motor parameters provides that the diameter of the assembled armature and
two pole shoes, which is designated as "Dm," is 43 mm. Van Laere col. 10,
11. 27-29. Appellants do not persuasively challenge the finding that this
diameter includes all moving parts of the motor and the permanent magnets,
and Appellants have not explained why the maximum motor diameter
recited in claim 1 must necessarily include a housing, particularly
considering that claim 1 recites that the motor is held in the housing of the
drywall screwdriver. In addition, the Examiner's alternative finding, that
Van Laere teaches the general conditions of the claim and finding the
optimal or working ranges involves only routine skill, is unrebutted by
Appellants.
Appellants next contend it would not have been obvious to
incorporate the battery of Van Laere into the tool of Vassos because Van
Laere teaches use of an automobile battery to power its tool. Br. 7-8. The
Examiner clarifies that Van Laere is relied on for teaching common voltage
ranges of power tools and their batteries, and Akazawa is relied on to teach a
battery mounted on a grip region of a tool. Ans. 4-5. In addition, the
Examiner finds that since Van Laere was published "batteries ... are well-
known to have become lighter and more compact as in Akazawa," and that
"[a]t the time of the Appellant[s'] invention it was well within the level of
ordinary skill to have a 12 volt battery be of a type of that presented in
Akazawa." Id. These findings are not persuasively challenged by
Appellants. Therefore, Appellants do not inform us of error in the rejection
of claim 1 on this basis.
Appellants also argue Van Laere does not teach "the electric motor
and the gearing unit are configured to rotate the output spindle at a
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maximum rotational speed of between 2000 rpm and 7000 rpm in an
unloaded state" (the "rotational speed" limitation), as recited in claim 1. Br.
9. Appellants acknowledge Van Laere's teaching that the driven shaft has
an "idling speed" of above 1200 and up to 4000 r.p.m. Id.; see Van Laere
col. 6, 11. 22-24. Appellants also agree that Van Laere's use of the term
"idling speed" implies the motor is in an unloaded state, but argue "there is
nothing in Van Laere that would lead a person of ordinary skill in the art to
conclude that the idling speed in Van Laere is the same thing as, or
equivalent to, a maximum rotational speed for the driven shaft in an
unloaded state." Br. 9.
We agree with the Examiner that Van Laere' s description of the
driven shaft with an "idling speed" overlapping the claimed range teaches
the rotational speed limitation. Appellants do not dispute that Van Laere' s
"idling speed" means an unloaded speed, but Appellants' arguments suggest
that Van Laere' s power tool may reach speeds above the disclosed
maximum "idling speed." As the Examiner finds, an idling speed for an
engine generally means the rotational speed of the engine when it is
uncoupled to the drivetrain and the throttle pedal is not depressed. Ans. 5.
In the context of Van Laere' s electric rotary power tool, in the absence of
disclosure of the equivalent of a throttle to vary the speed of the motor, one
of ordinary skill in the art would have understood Van Laere' s use of "idling
speed" simply to mean the driven shaft is operating without a load.
Accordingly, for the reasons discussed above and by the Examiner,
we are not informed of error in the Examiner's rejection of representative
claim 1 under 35 U.S.C. § 103(a) as unpatentable over Vassos, Van Laere,
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Akazawa, and Brennenstuhl. Thus, we sustain the rejection of claims 1, 9,
and 10.
Rejections III-VI
Appellants contend the rejections of claims 2---6, 12, and 14 are in
error because those claims depend from claim 1. Br. 10. Thus, we sustain
the rejections of dependent claims 2---6, 12, and 14 as set forth in Rejections
III-VI for the same reasons that we sustain the rejection of claim 1.
DECISION
We reverse the Examiner's rejection of claims 2-5 under pre-AIA
35 U.S.C. § 112, second paragraph, as being indefinite.
We affirm the Examiner's rejections of claims 1---6, 9, 10, 12, and 14
under pre-AIA 35 U.S.C. § 103(a).
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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