Ex Parte Wascow

Board of Patent Appeals and Interferences

May 24, 2012

10613717 (B.P.A.I. May. 24, 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.
10/613,717 07/03/2003 Joseph Wascow 0212.66426 4989
24978 7590 05/24/2012
GREER, BURNS & CRAIN
300 S WACKER DR
25TH FLOOR
CHICAGO, IL 60606
EXAMINER
CHOI, STEPHEN
ART UNIT PAPER NUMBER
3724
MAIL DATE DELIVERY MODE
05/24/2012 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 JOSEPH WASCOW
____________

Appeal 2009-014668
Application 10/613,717
Technology Center 3700
____________

Before GAY ANN SPAHN, MICHAEL C. ASTORINO, and
JAMES P. CALVE, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Joseph Wascow (Appellant) seeks our review under 35 U.S.C. § 134
of the Examiner’s rejection of claims 32-35 and 37-42. Appellants cancelled
claims 1-11 and 22-31. The Examiner indicated claims 12-21 were
allowable and objected to claim 36 as being dependent upon a rejected base
claim. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
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The Claimed Subject Matter
The claimed subject matter is directed to “a circular saw that provides
accurate multiple saw blade depth settings and[] bevel angle of cut settings
through the use of an adjustable blade depth detent mechanism and a bevel
angle adjustment detent mechanism[, respectively]” in order to “eliminate[]
the need for an operator to hold the saw blade in place . . . at the desired
depth and[] bevel angle setting[, respectively,] while locking the blade in
position.” Spec. 3, ll. 14-19. Claims 32 and 42 are the independent claims
on appeal. Claim 32, reproduced below, with emphasis added, is illustrative
of the subject matter on appeal.
32. A circular saw comprising:
a housing;
a motor disposed within said housing and
configured for rotating a circular saw blade
rotatably driven by said motor;
a foot having a generally fiat bottom
surface; and
a saw blade adjustment detent mechanism
pivotally interconnecting said foot to said housing
such that the circular saw blade is adjustable to
said foot through a range of saw blade positions
relative to said foot, said saw blade adjustment
detent mechanism including a detent holding
assembly carrying a pivotable saw blade
adjustment detent with a pivot axis on one end
portion, a transverse ridge spaced from said pivot
axis and a spring for biasing said detent into
engagement with one of a plurality of spaced
position recesses, and an arcuate member defining
the plurality of spaced position recesses, each
matingly and releasably engageable with said
transverse ridge of said saw blade adjustment
detent to provide predetermined position settings
within said range of positions, said detent being
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disengaged from one of said position recesses
when said foot is moved responsive to a user
applying a releasing force to said foot without
initiating any other action.

Independent claim 42 is directed to a circular saw including, inter
alia, a foot, and an adjustment detent mechanism having a detent and an
arcuate member defining a plurality of spaced position recesses, such that
“said detent being disengaged from one of said position recesses as a direct
result of a user applying a releasing force to said foot which moves said foot
without any other action.” Emphasis added.

The Rejections
The following Examiner’s rejections are before us for review.
Claims 32-35 are rejected under 35 U.S.C. § 102(b) as anticipated by
Clark (US 4,011,782, issued Mar. 15, 1977).
Claims 32, 37, 38, and 42 are rejected under 35 U.S.C. § 102(b) as
anticipated by Ando (JP 59167202 A, published Sep. 20, 1984).
Claims 39-41 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Ando and Lewin (US 6,691,418 B1, issued Feb. 17, 2004).

OPINION
Anticipation based on Clark
The Examiner determines that Clark anticipates independent claim 1.
Ans. 3. With respect to the italicized language in claim 32 supra, the
Examiner finds that Clark “teaches a device including a foot (e.g., 22)
capable of being moved responsive to a user applying a releasing force to the
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foot to release the foot from a position on a supporting surface to another
position on the supporting surface without initiating any other action while
the detent being disengaged from one of the position recesses” (Ans. 5). The
Examiner further explains that
claim 32 does not preclude other releasing force
other than a force to release the detent from one of
the position recesses. The recitation “a user
applying a releasing force” can include several
steps. The user can hold a trigger member to
disengage the detent from one of the recesses at
the same time (i.e., when) moving or rotating the
rest of the saw assembly by applying the releasing
force to the foot. The claim does not call for “a
releasing force” being a force to cause
disengagement of the detent. The claim merely
calls for the releasing force to move the foot and
the detent being disengaged when the foot is
moved.
Ans. 5.
Appellant argues that Clark fails to disclose that “said detent [is]
disengaged from one of said position recesses when said foot is moved
responsive to a user applying a releasing force to said foot without initiating
any other action.” App. Br. 10. Appellant explains that the claim recites “a
cause and effect relationship” with the significance “that a user can change
the depth of cut or bevel angle of the saw by applying a force to the foot
without other manipulation.” Reply Br. 2; see also App. Br. 11. Appellant
asserts that Clark’s detent 124 is not disengaged from the recess 128
responsive to the user applying a releasing force to the foot without initiating
any other action and therefore, Clark does not anticipate claim 32. See App.
Br. 11.
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We begin our analysis by construing claim 32’s language that “said
detent [is] disengaged from one of said position recesses when said foot is
moved responsive to a user applying a releasing force to said foot without
initiating any other action.” Although we appreciate the Examiner’s position
that the use of the term “when” merely indicates the simultaneousness of
two actions in Clark (i.e., the user holding Clark’s trigger member to
disengage the detent from one of the recesses and at the same time, the user
moving or rotating the rest of the saw assembly by applying the releasing
force to the foot) satisfies claim 32’s language, nonetheless, we find that
claim 32 requires that upon the user applying a releasing force to the foot
and without initiating any other action, the foot moves and movement of the
foot causes the detent to disengage from one of the plurality of position
recesses.
Clark discloses a power miter saw 10 including a bridge-like base 12
having a top plate portion 24, arcuate front flange portion 26 extending
forwardly of the top plate portion 24, leg portions 22 with feet 34, and a
work fence 14 having a slot 18. Clark, col. 3, ll. 23-31 and 35-44. A saw
means 20 including a saw blade 56 is supported above the top plate portion
24 on a saw arm 52 which is connected via mounting means 42 to a first end
of a swinging lever 36 that extends partially beneath the top plate and front
flange portions 24, 26. Clark, Figs. 1 and 3, and col. 3, l. 51 through col. 4,
ll. 48. A second end of the lever 36 attaches to a lock and detent means 44
which extends forwardly from the front flange portion 26. Id. The lock and
detent means 44 allows for changing the angular position of the saw blade
56 and includes a handle member 130 and finger-operated trigger latch
member 118. Clark, Fig. 3 and col. 5, l. 46 through col. 6, l. 52. The trigger
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latch member 118 is pivotally connected via pin 116 to a stepped portion
110 of the lever 36 and includes a rear end detent portion 122 having a
detent lug 124. Clark, Fig. 7. The detent lug 124 is for mating with one of a
plurality of detent recesses 128 formed in the underside of front flange
portion 26. Clark, Figs. 7 and 8. In operation, the user twists the handle
member 130 approximately ¼ or ½ turn to loosen it, while at the same time
with the index finger of the same hand the user presses the trigger latch
member 118 upwardly thus unseating the detent lug 124 from recess 128 and
moving the rear detent portion 122 downwardly to compress spring 126.
Clark, col. 6, ll. 55-63. With the detent lug 124 unseated from the recess
128, the user uses handle member 130 to swing the entire lever 36 and the
saw means to either another mating detent and recess position or some other
angular position. Clark, col. 6, ll. 63-68.
The Examiner has failed to show by a preponderance of the evidence
that the application of a force to either of the leg portions 22 of the power
miter tool 10 of Clark will move the leg portion 22 and cause the detent lug
124 to become unseated from recess 128. As Clark fails to teach that the
detent lug 124 is disengaged from one of the position recesses 128 when one
of the pair of feet 22 is moved responsive to a user applying a releasing force
to one of the pair of feet 124 without initiating any other action as called for
by claim 32, we do not sustain the Examiner’s rejection of independent
claim 32, and claims 33-35 dependent thereon, under 35 U.S.C. § 102(b) as
anticipated by Clark.
Anticipation based on Ando
The Examiner determines that Ando anticipates independent claims
32 and 42. Ans. 3-4. The Examiner finds that “a releasing force is applied
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to the foot [1] via various connecting elements.” Id. The Examiner further
explains that
For example, a user can apply a force to move the
foot from a position shown on Figure 4 to left
direction while the detent (e.g., 11) being
stationary. Such an action will release the detent
from a position shown on Figure 5 to a position
shown on Figure 6. Moreover, a user can apply a
releasing force to the foot without any other action
when other user disengages the detent from one of
the recesses as a direct result of the releasing force.
In addition, it is the examiner’s position the term
“a direct result” is not limited to only
physical/structural interaction between parts. The
user can apply a force to move the foot without
any other action which directly causes the user to
initiate detent disengagement. . . . [T]he examiner
believes the recitation argued by the appellant is
not limited to an interpretation made by the
appellant.
Ans. 5-6.
Claim 32
Appellant argues that Ando fails to teach claim 32’s claim language
of “said detent being disengaged from one of said position recesses when
said foot is moved responsive to a user applying a releasing force to said
foot without applying any other action.” App. Br. 12. More particularly,
Appellant argues that according to the Examiner’s above-quoted example,
there is other action being initiated in direct contradiction to claim 32’s
claim language, because “[f]or the foot to move to disengage the detent
from one of the position recesses, it is necessary to depress the detent 11
inwardly and that cannot be done without a separate force being applied
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relative to the saw itself so that the detent will move inwardly to release
the detent mechanism.” App. Br. 16.
Ando discloses a circular saw including a base 1 and a main body case
2 housing a motor 5 for rotating a sawtooth 4 covered by a stationary cover
7. Ando, p. 6, ll. 10-11 and 17-20.1 “The cutting depth [of the sawtooth 4] .
. . is adjusted by freely rotatably joining the main body case [2] that holds
[the] sawtooth [4] and [the] motor [5] to drive the sawtooth [4] . . . relative
to a base [1] to be placed on an upper surface of a material to be cut and
changing the joining angle.” Ando. p. 3, ll. 8-9. An adjustment plate 10, a
pin 11, and a spring 15 are used as a means of securing the main body case 2
to the base 1. Ando, p. 7, ll. 8-11. The adjustment plate 10 has a vertically
long groove 12 and a number of engagement recesses 13. Ando, p. 7, ll. 11-
16. The pin 11 is provided in the rear part of the stationary cover 7 of the
main body case 2 and has protrusions protruding from both sides thereof.
Ando, p. 7, ll. 16-18. The pin 11 is spring-biased by spring 15. Ando, p. 7,
l. 19. By engagement of the protrusions 14 of the pin 11 with the
engagement recesses 13 of the groove 12, the main body case 2 can be
secured to the base 1 at any angle. Ando, p. 7, l. 20 to p. 8, l. 2. In order to
adjust the cutting depth of the sawtooth 4, the pin 11 is pushed against the
spring 5 and protrusions 14 are removed from the engagement recesses 13.
Ando, p. 8, ll. 4-7. Then, the main body case 2 is rotated around the shaft 6
relative to the base 1 and when in the desired position, the pin 11 is allowed
to go back to it unbiased portion so that the protrusions 14 engage the

1 All citations to pages and line numbers in Ando in this opinion are to the
official English translation prepared by Schreiber Translation, Inc. in or
about May 2009, which is of record in the file of the underlying application.

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engagement recesses to secure the main body case in the desired position.
Ando, p. 7, ll. 7-12.
In view of the discussion of Ando supra and in accordance with our
previous construction of claim 32, we note that the Examiner has failed to
show by a preponderance of the evidence that the application of a force to
the base 1 of the circular saw of Ando will move the base 1 and causes the
detent 11 to become unseated or disengaged from recesses 13. As Ando
fails to teach that the detent 11 is disengaged from one of the position
recesses 13 when the base 1 is moved responsive to a user applying a
releasing force to base 1 without initiating any other action as called for by
claim 32, we do not sustain the Examiner’s rejection of independent claim
32, and claims 37 and 38 dependent thereon, under 35 U.S.C. § 102(b) as
anticipated by Ando.
Claim 42
Appellant argues that “the disengagement [of the detent as called for
in claim 42] is produced as a result of the releasing force moving the foot
without any other action” and thus, Appellant relies on the same arguments
as discussed supra with respect to claim 32. App. Br. 14-15; Reply Br. 4-5.
In construing the claim language of claim 42, we note that the
recitation of “said detent being disengaged from one of said position
recesses as a direct result of a user applying a releasing force to said foot
which moves said foot without any other action,” similar to the language of
claim 32, requires that upon the user applying a releasing force to the foot
and without initiating any other action, the foot moves and movement of the
foot results in the detent disengaging from one of the plurality of position
recesses.
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In view of the discussion of Ando supra and in accordance with our
construction of claim 42, we note that the Examiner has failed to show by a
preponderance of the evidence that the application of a force to the base 1 of
the circular saw of Ando moves the base 1 and results in the detent 11
becoming unseated or disengaged from recesses 13. As Ando fails to teach
that the detent 11 is disengaged from one of the position recesses 13 as a
direct result of the base 1 moving responsive to a user applying a releasing
force to the base 1 and without initiating any other action as called for by
claim 42, we do not sustain the Examiner’s rejection of independent claim
42 under 35 U.S.C. § 102(b) as anticipated by Ando.
Obviousness based on Ando and Lewin
Dependent claims 39-41 are indirectly dependent upon independent
claim 32. Lewin fails to cure the deficiency of Ando discussed supra.
Accordingly, for the same reasons as discussed supra with respect why
Ando failed to anticipate claim 32, we do not sustain the Examiner’s
rejection of claims 39-41 under 35 U.S.C. § 103(a) as unpatentable over
Ando and Lewin.

DECISION
We reverse the Examiner’s decision to reject claims 32-35 and 37-42.

REVERSED

MP