Ex Parte Wang et al

Patent Trial and Appeal Board

Jun 8, 2018

15174660 (P.T.A.B. Jun. 8, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
15/174,660 06/06/2016
28268 7590 06/08/2018
THE BLACK & DECKER CORPORATION
701 EAST JOPPA ROAD, TW199
TOWSON, MD 21286
FIRST NAMED INVENTOR
Shihuai Wang
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.
P-US-TN-13001 3932
EXAMINER
LOPEZ, MICHELLE
ART UNIT PAPER NUMBER
3721
MAILDATE DELIVERY MODE
06/08/2018 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
Exparte SHIHUAI WANG and
THOMAS J. BODINE 1
Appeal2018-002619
Application 15/174,660
Technology Center 3700
Before JOHN C. KERINS, MICHAEL L. HOELTER, and
SEAN P. O'HANLON, Administrative Patent Judges.
Opinion for the Board filed by Administrative Patent Judge HOELTER.
Opinion Dissenting-in-Part filed by Administrative Patent Judge KERINS.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-18, which constitute all the claims pending in
this application. App. Br. 3. We have jurisdiction under 35 U.S.C. § 6(b ).
1 Appellants identify the real party in interest as Black & Decker Inc. App.
Br. 4.
Appeal2018-002619
Application 15/174,660
We AFFIRM.
THE CLAIMED SUBJECT MATTER
The disclosed subject matter "relates to a spindle lock assembly for a
power tool, such as a power drill or driver." Spec. ,-r 2. Apparatus claims 1,
12, and 16 are independent. Claim 1 is illustrative of the claimed subject
matter and is reproduced below:
1. A power tool comprising:
a housing assembly;
a motor received in the housing assembly;
an output spindle;
a chuck coupled to the output spindle;
a transmission configured to transmit rotary power
between the motor and the output spindle, the transmission
including a rotatable output member;
a spindle lock assembly configured to transmit rotary
motion from the rotatable output member to the output spindle
when the rotary output member is being driven by the motor and
configured to inhibit transmittal of rotary motion from the output
spindle to the rotary output member when the output spindle is
being driven by an external force, the spindle lock assembly
including a first rotatable part fixedly connected to the output
member, a second rotatable part fixedly connected to the output
member spindle and operatively engaging with the first rotatable
part, and a lock ring surrounding the first rotatable part and the
second rotatable part,
wherein the lock ring is retained to the housing in a
substantially stationary manner with at least one dampener
disposed between the lock ring and the housing and configured
to dampen movements of the lock ring relative to the housing in
a rotational direction in order to reduce instances of unlocking of
the chuck during deceleration of the motor.
Bixler et al.
Saito et al.
REFERENCES
US 2007 /0201748 Al
US 7,455,121 B2
2
Aug.30,2007
Nov. 25, 2008
Appeal2018-002619
Application 15/174,660
Hecht et al. US 2011/0214892 Al Sept. 8, 2011
REJECTIONS ON APPEAL
Claims 1-18 are rejected under 35 U.S.C. § 112(b) as being indefinite
for failing to particularly point out and distinctly claim the subject matter
which the joint inventors regard as the invention.
Claims 1-18 are rejected under 35 U.S.C. § 103 as being unpatentable
over Bixler, Hecht, and Saito.
ANALYSIS
The rejection of claims 1-18 as being indefinite
The Examiner provides three reasons as to why claims 1-18 are
indefinite. Final Act. 2; see also Appellants' summary thereof at Reply Br.
3. First, the Examiner states all three independent claims (i.e., claims 1, 12,
and 18) are indefinite because the limitation directed to damping movement
to reduce instances of unlocking "is afforded light weight because it is
predicated on a future act." Final Act. 2; see also Reply Br. 4--5. Appellants
contend, "[t]here is nothing in 35 U.S.C. § 112, the implementing
regulations, or the M.P .E.P. - and Applicant is aware of no case law holding
-that a functional recitation 'predicated on a future act' is entitled to less (or
'light') patentable weight than other recitations in a claim." App. Br. 8; see
also Reply Br. 4. Therefore, as per Appellants, "[i]t is improper for the
Examiner to give less weight to a recitation simply because it is drafted
using functional language." App. Br. 8; see also Reply Br. 5. The Examiner
does not address Appellants' rebuttal, provide authority for such a position
regarding a future act, or otherwise indicate how one skilled in the art would
fail to be informed about the scope of the invention when read in light of
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Application 15/174,660
Appellants' Specification. See also Reply Br. 4 (referencing Nautilus, Inc.
v. Biosig Instruments, 134 S. Ct. 2120, 2124 (2014) (additional Federal
Circuit and MPEP citations omitted)).
We agree with Appellants' assessment and arguments. Accordingly,
the Examiner's rejection that claims 1, 12, and 18 are indefinite because they
are "predicated on a future act" (Final Act. 2) is not sustained.
Second, the Examiner determines that independent claims 1, 12, and
18 are indefinite because "it is unclear which are the structural components
that reduce unlocking of the chuck" and "there is no structural relation
between the locking/unlocking of the chuck and the dampeners." Final Act.
2; Ans. 2. Appellants disagree, stating "the independent claims clearly recite
which structural components perform the function of reducing unlocking of
the chuck." App. Br. 9 (reciting limitations directed to "movements of the
lock ring," "the spindle lock assembly," and "instances of unlocking of the
chuck"); see also Reply Br. 6. Appellants also reference Paragraphs 29-31
of Appellants' Specification where such structure, and operation thereof, is
described. Reply Br. 5---6.
We agree with Appellants that one skilled in the art, upon reviewing
these paragraphs and the recited claim language, would understand how the
claimed dampers "reduce instances of damage to the spindle lock assembly
components and reduce instances of the chuck unlocking during
deceleration." Spec. i-f 31. Accordingly, the Examiner's rejection that
claims 1, 12, and 18 are indefinite because "it is unclear how ... the
dampeners reduce unlocking on the chuck since there is no structural
relation between such components" (Ans. 2) is not sustained.
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Application 15/174,660
Third, the Examiner states that independent claims 1, 12, and 18 are
indefinite because "the limitation of 'unlocking of the chuck' lacks
antecedent basis, since the claim never defines 'locking' the chuck." Final
Act. 2. Appellants contend, "the recitation 'unlocking the chuck' does not
imply that there is a prior recitation of 'locking' a chuck"' and "[s]tated
differently, there is no requirement that the claim recite 'locking' the chuck
in order to recite 'unlocking the chuck' for the claim to be clear." App. Br.
1 O; see also Reply Br. 6. As per Appellants, "one of ordinary skill in the art
would readily understand how the dampeners can function to reduce
instances of unlocking of the chuck." Reply Br. 6. The Examiner does not
explain how Appellants' recitation is unclear or would otherwise not be
understood by one skilled in the art. See also Reply Br. 3. Accordingly, the
Examiner's rejection that claims 1, 12, and 18 are indefinite because of a
lack of antecedent basis (Ans. 2) is not sustained.
The rejection of claims 1-18
as being unpatentable over Bixler, Hecht, and Saito
Appellants argue claims 1-18 together. App. Br. 10-21. We select
independent claim 1 for review, with the remaining claims (i.e., claims 2-
18) standing or falling therewith. See 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner primarily relies on Bixler for disclosing a power tool
having a spindle lock assembly and a lock ring but acknowledges that Bixler
"fails to disclose wherein the lock ring is retained to the housing in a
substantially stationary manner." Final Act. 3. The Examiner relies on the
teaching of Hecht for this disclosure and provides a reason for their
combination. Final Act. 3--4. The Examiner further acknowledges that
Bixler, modified by Hecht, "fails to disclose wherein the lock ring is retained
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Application 15/174,660
to the housing with at least one dampener disposed between the lock ring
and the housing." Final Act. 3, 4. The Examiner relies on the teachings of
Saito for "providing an impact damping mechanism" arranged as claimed.
Final Act. 4 (referencing Saito Fig. 7); see also Ans. 3. The Examiner also
provides a reason for the additional inclusion of the teachings of Saito to
those of Bixler and Hecht. Final Act. 4; see also Ans. 3.
Appellants do not dispute the structural teachings of these references,
but contend, "[t]he proposed rationale for making this combination is
improper." App. Br. 12; see also Reply Br. 7-8. Appellants state, "[t]here
is no evidence in Bixler, Hecht, or elsewhere in the record that the type of
spindle locks shown in Bixler and Hecht are subject to impact loads. Rather,
such impact loads are only present in tools like the impact driver disclosed in
Saito." App. Br. 12; see also Reply Br. 8. In other words, "the spindle locks
of Bixler and Hecht seek[] to solve a problem with these tools that does not
exist" because they are not "subject to impact loads." App. Br. 12-13.
Indeed, the reason relied upon by the Examiner in combining Bixler
(as modified by Hecht) with the teachings of Saito is "in order to damp
impact loads between the ring and the housing." Final Act. 4. The
Examiner states that, with respect to Bixler, "it is strongly suggested that
there could be impacts in a rotary direction between the ring and the
housing, since rotary motion is transmitted from the motor through the
spindle lock assembly to the output spindle." Ans. 3. 2 This is consistent
2 We note that Bixler discloses that its power tool 10 can be a hammer drill
or driver, further identifying "an output spindle assembly 20 (including a
hammer mechanism 19, FIG. 3) contained within a spindle housing 21."
Bixler i-f 45.
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Application lS/174,660
with Paragraph 101 of Bixler describing "drill or driver planetary gear
transmission that transmits the power from the transmission to the output
spindle assembly 20." This same paragraph of Bixler also states, "[t]he
spindle lock assembly 428 may provide an abutment to apply a force to the
chuck 22 to, for example, tighten or loosen the chuck 22" such that "[ w ]hen
doing so, the spindle lock assembly 428 may prevent the tightening or
loosening force from back-driving the transmission of the power tool 10."
In view of such teachings, Appellants do not explain how Bixler is thus, not
subject to "impacts in a rotary direction" as stated by the Examiner. Instead,
Appellants contend that Saito addresses "impact forces of a hammer" and
"fails to teach or suggest dampeners that dampen movements of a lock ring
in a spindle lock assembly." Reply Br. 7. Appellants' reliance on Saito's
"hammer" forces, and not "impacts in a rotary direction" as described above
in Bixler, is not responsive to the basis of the Examiner's rejection. Nor is
Appellants' contention correct because Saito expressly discloses dampers
Sg, Sh ("facing in the direction of rotation") that dampen impact between
lock ring 7 and the housing (not shown). See Saito S:20-28 and Fig. 7.
Additionally, the Examiner states (and again Appellants do not
dispute), "Bixler discloses exactly the same spindle lock assembly, as
disclosed in claim [ 1], without the dampeners." Ans. 3 (compare
Appellants' Fig. 4, with Bixler's Fig. 22A). The Examiner deems the
addition of Saito' s dampers S g and Sh would have been obvious in view of
Saito's specific disclosure of these dampers in the recited location (i.e.,
"between the lock ring and the housing"). 3 See Saito S :20-41; see also Final
3 The Examiner reiterates, "Saito is relied upon to show the use of
dampeners to dampen loads [in] a rotational direction between two
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Application 15/174,660
Act. 4. Compare, for example, the location of the dampers vis-a-vis the lock
ring shown in Appellants' Fig. 6 with that shown in Saito' s Fig. 7.
Regarding a disclosure of structural similarity while, perhaps, lacking
a disclosure of similar functionality, we are instructed, "the absence of a
disclosure relating to function does not defeat [a] finding of anticipation." In
re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). Although Schreiber is
directed to anticipation, there is no reason such analysis fails to likewise
apply to an obviousness analysis. Furthermore, we are instructed,
"apparatus claims cover what a device is, not what a device does." Hewlett-
Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990).
Appellants further seek to discredit the Examiner's findings and/or
conclusions by asserting, "[t]he Office Action contains no such findings"
that Saito' s damping members could be combined with the Bixler/Hecht
combination. App. Br. 13. However, as stated above, the Examiner relied
on the ability of one skilled in the art to employ Saito' s damping members,
and Appellants do not indicate how such inclusion in the manner and
location disclosed by Saito (see Fig. 7) would have been beyond their
ability.
Appellants also contend that Saito' s damping members "would not
perform the same function" because Saito describes these members as
"perform[ing] a wholly different function." App. Br. 13 (referencing Saito
2:36-38). Although the Examiner relied on a different passage in Saito as
components" and as such, "[i]t would be within the abilities of one having
ordinary skill in the art to apply Saito's concept of using dampeners to
Bixler's modified invention in order to dampen loads in a rotary direction
between the lock ring and the housing." Ans. 3.
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Application 15/174,660
the basis for the Examiner's conclusion (see Final Act. 4 referencing Saito
5:20-42), both such passages address Saito's desire to dampen rotational
forces. Appellants do not assert otherwise.
Appellants further contend there is no teaching or suggestion that
adding Saito' s damping members to the Bixler/Hecht combination "would
yield predictable results." App. Br. 14. However, Appellants do not explain
how using Saito's "vibration-insulating rubber, soft plastics materials, felts
and so on, which have a damping effect" (Saito 5 :39--40) would fail to
provide the damping function as stated by the Examiner.
Appellants additionally contend, "there is no finding or teaching in the
cited references or elsewhere in the record that adding similar damping
members to the lock ring 908 of Bixler, as modified by Hecht, would
dampen movement of the lock ring." App. Br. 14. However, a reason for
the combination need not be found in the "cited references" or "in the
record" as Appellants assert. Id. This is because we are instructed, "[t]he
obviousness analysis cannot be confined by a formalistic conception of the
words teaching, suggestion, and motivation" such as those found in the cited
references or in the record. KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 419
(2007). Instead, we are instructed, "it can be important to identify a reason
that would have prompted a person of ordinary skill in the relevant field to
combine the elements in the way the claimed new invention does." Id. at
418. Thus, in order to facilitate review, the Examiner's analysis "should be
made explicit" and "there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness." Id.
Consequently, Appellants' focus on reasons for the combination recited in
the references or in the record is misplaced. Further, Appellants do not
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persuasively explain how the Examiner's reasons for the combination of
Bixler, Hecht, and Saito is faulty.
Appellants proffer other attempts to discredit the Examiner's findings
such as discussing simple substitution, using known techniques, obvious to
try, market forces, and motivation scenarios. App. Br. 14--21. However,
Appellants themselves acknowledge the Examiner's statement that such
contentions have been considered but found not to be applicable because (a)
"Saito is relied upon to show the use of dampeners between a ring fixedly
attached to a housing for dampening purposes" and (b) "[i]t would be within
the abilities of one having ordinary skill in the art to apply Saito's
dampening concept to Bixler' s device in order to damp impact loads
between the ring and the housing." App. Br. 21 (referencing Final Act. 6).
Accordingly, and based on the record presented, we are not persuaded
the Examiner's rejection of claims 1-18 as being obvious over Bixler,
Hecht, and Saito is in error. We sustain the Examiner's rejection of these
claims.
DECISION
The Examiner's rejection of claims 1-18 as indefinite is reversed.
The Examiner's rejection of claims 1-18 as being obvious over
Bixler, Hecht, and Saito 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).
AFFIRMED
10
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte SHIHUAI WANG and
THOMAS J. BODINE
Appeal2018-002619
Application 15/174,660
Technology Center 3700
Before JOHN C. KERINS, MICHAEL L. HOELTER, and
SEAN P. O'HANLON, Administrative Patent Judges.
KERINS, Administrative Patent Judge, dissenting-in-part.
I join the majority in reversing the rejection of claims 1-18 under
35 U.S.C. § 112, second paragraph. I respectfully dissent as to the rejection
of those claims under 35 U.S.C. § 103(a).
Appellants cogently point out that the Examiner's proffered reason to
further modify the Bixler/Hecht device in view of Saito, i.e., "in order to
damp impact loads between the ring and the housing," is not supported by
rational underpinnings. App. Br. 12-13; Final Act. 4. Appellants point out
that the Examiner has cited to no evidence in the Bixler or Hecht references,
or elsewhere, that the type of spindle locks disclosed in Bixler and Hecht are
subject to impact loads. App. Br. 12. Absent such evidence, the Examiner's
reason to combine is, as Appellants characterize it, "seek[ing] to solve a
problem with these tools that does not exist." Id. at 13.
Appeal2018-002619
Application 15/174,660
In apparent recognition of this shortcoming, the Examiner takes the
position that Bixler "strongly suggest[ s] that there could be impacts in a
rotary direction between the ring and the housing, since rotary motion is
transmitted from the motor through the spindle lock assembly to the output
spindle." Ans. 3. Notably, the Examiner fails to cite to any portion of
Bixler that suggests at all, let alone strongly suggests, that the tool disclosed
therein would experience impacts in a rotary direction. The mere provision
of a rotary drive mechanism would not indicate to a person of ordinary skill
in the art that the rotary drive would be subject to impact forces in a rotary
direction.
It appears that the majority finds that the mention in Bixler4 that the
power tool therein may be a hammer drill or driver undermines the positions
advanced by Appellants. The majority also appears to take the position that
Bixler's disclosure of including a hammer mechanism within a spindle
assembly, and of the spindle lock assembly providing an abutment to apply a
force to a chuck to tighten or loosen the chuck and to prevent that force from
back-driving the power tool transmission, constitute evidence that Bixler, in
some way, is subject to impacts in a rotary direction. It is unclear from the
Bixler disclosure, including the portions cited by my colleagues, however,
what the precise configuration and operation of such a hammer drill would
be, and therefore what impact forces might be experienced on which
component( s ), such that it could be said that it would have been obvious to
provide damping in any particular area. In any event, the Examiner does not
cite specifically to this disclosure in Bixler, or provide any explanation along
4 Bixler i-fi-145, 101.
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Application 15/174,660
the lines of that appearing in the Majority decision, in support of the
rejection. The Majority's admonishment that "Appellants do not explain
how Bixler is thus, not subject to 'impacts in a rotary direction' as stated by
the Examiner," is, in my view, an improper attempt to shift the burden to
Appellants to explain away that which the Examiner has failed to adequately
explain in the first instance. Opinion 7.
The Examiner additionally attempts to backfill by stating that "Saito is
relied upon to show the use of dampeners to dampen loads on [sic] a
rotational direction between two components," and that it would be within
the ability of a person of ordinary skill in the art to apply the concept of
using dampers as disclosed in Saito to Bixler' s modified invention, "in order
to dampen loads in a rotary direction." Ans. 3. As to the latter point, that a
prior art device can be modified using only an ordinary level of skill in the
art does not establish that it would have been obvious to do so. In re
Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984). Further, notwithstanding that
the damping action provided in Saito is damping in a rotational direction,
none of the references cited in this rejection, and no other evidence relied on
by the Examiner, point to anything other than a need to dampen impact
forces, which are experienced in the Saito device, but which have not been
shown to be experienced in the Bixler and Hecht devices.
I would reverse the rejection of claims 1-18 as being unpatentable
over the combined teachings of Bixler, Hecht, and Saito.
3