Ex Parte Wattenbach et al

Patent Trial and Appeal Board

Aug 17, 2016

12842209 (P.T.A.B. Aug. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/842,209 07/23/2010
60840 7590 08/19/2016
MICHAEL, BEST & FRIEDRICH LLP (MT)
100 EAST WISCONSIN A VENUE
SUITE 3300
MILWAUKEE, WI 53202
FIRST NAMED INVENTOR
Brian Wattenbach
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.
066042-8143-01 3609
EXAMINER
SWINNEY, JENNIFER B
ART UNIT PAPER NUMBER
3724
NOTIFICATION DATE DELIVERY MODE
08/19/2016 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 BRIAN WATTENBACH, JEFFREY HOLLY,
BENJAMIN LUDY, ROGER D. NEITZELL, and THOMAS R. BEDNAR
Appeal2014-005042
Application 12/842,209 1
Technology Center 3700
Before STEFAN STAICOVICI, BRANDON J. WARNER, and
ARTHUR M. PESLAK, Administrative Patent Judges.
ST AI CO VICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Brian Wattenbach et al. (Appellants) appeal under 35 U.S.C. § 134(a)
from the Examiner's final decision rejecting under 35 U.S.C. § 103(a)
claims 1---6, 23, and 24 as unpatentable over Tachibana (US 2005/0044729
Al, publ. Mar. 3, 2005) and Luc (GB 2 147 667 A, publ. May 15, 1985).
We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
1 According to Appellants, the real party in interest is Milwaukee Electric
Tool Corporation. Appeal Br. 2 (filed Oct. 17, 2013).
Appeal2014-005042
Application 12/842,209
We REVERSE.
SUMMARY OF DECISION
INVENTION
Appellants' invention relates to reciprocating saws. Spec. i-f 2.
Claim 1, the sole independent claim, is representative of the claimed
invention and reads as follows:
1. A reciprocating saw comprising:
a housing assembly;
a motor positioned substantially within the housing
assembly, the motor including a pinion;
a drive mechanism positioned substantially within the
housing assembly, the drive mechanism including a gear
coupled to and driven by the pinion, a spindle reciprocatable
relative to the housing assembly, and a connecting rod
extending between the gear and the spindle to transmit rotation
of the gear into reciprocation of the spindle;
a bushing positioned substantially within the housing
assembly about at least a portion of the spindle, the bushing
pivotable relative to the housing assembly to accommodate
non-linear rocking motion of the spindle; and
a seal surrounding a portion of the bushing, the seal
including a first lip extending radially from the bushing and a
second lip spaced apart from the first lip and extending radially
from the bushing, the second lip movable relative to the first
lip, both the first lip and the second lip continuously engaging
the housing assembly when the bushing pivots relative to the
housing assembly.
ANALYSIS
The Examiner finds that Tachibana discloses, inter alia, a
reciprocating saw 401 including a housing assembly 402, a bushing 421, and
a cylindrically-shaped seal 421A "surrounding a portion of the bushing,
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Appeal2014-005042
Application 12/842,209
engaging the housing assembly when the bushing pivots relative to the
housing assembly." Final Act. 2 (transmitted June 12, 2013); see also
Tachibana, Fig. 16. The Examiner further finds that Tachibana fails to
disclose a "seal having a first and [a] second radial lip, in which the second
lip is spaced from the first lip and the second lip is move[able] relative to the
first lip." Final Act. 4. Nonetheless, the Examiner "takes official notice that
it would have been obvious to use a two lip seal rather than a single seal in
Tachibana, which is merely an art recognized equivalent seal" and "[a]n
example of a two lip seal is taught by Luc which aids to maintain tightness
between two parallel surfaces (Page 1, lines 70-75)." Id. at 5. According to
the Examiner, because Luc's "two branch shaped seal maintains tightness in
any event of variation between the distance of two surfaces," when used in
Tachibana's reciprocating saw to seal a gap between guide sleeve/bushing
421 and body/housing 402, "the two branch seal of Luc will maintain the
tightness between the seal and the housing [ 402]" while bushing 421 is
rotating. Id.
Appellants argue that "the Examiner has not provided any evidence
that [Luc's] two lip seal ... when positioned around the guide sleeve 421 of
Tachibana in place of the seal member 421A would remain in constant
engagement with the saber saw body 402 when the plunger 420 pivots."
Appeal Br. 6. Appellants explain that because Luc's seal "is configured to
maintain tightness regardless of the axial distance between two surfaces," if
"the sealing element of Luc was used in the saber saw 401 of Tachibana, the
sealing element would need to create and maintain a seal along its radial
edges." Id. at 7. Thus, according to Appellants, "[t]he saber saw body 402
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Appeal2014-005042
Application 12/842,209
of Tachibana is not designed to ensure that both lips of the sealing element
of Luc will remain in constant engagement with a surface of the saber saw
body 402 when the guide sleeve 421 pivots," as required by claim 1. Id.
Luc discloses an annular sealing element 1, having two branches 2
disposed in the shape of a V, and "clamped axially between two parallel
surfaces [ 4] with the free outer ends of the two branches 2 ... being in
contact with the two surfaces [4]." Luc, page 1, 11. 90-93 (emphasis added),
Fig. 1; see also Reply Br. 3, Appellants' amended Figure 1 of Luc. Luc
further discloses that each branch 2 of the V has a rounded face 3 that rolls
on contact with surface 4 and thus, maintains a seal in the event of variations
in the distances between surfaces 4. Luc, page 1, 11. 94--97, 102-111, Fig. 2;
see also Reply Br. 3(including Appellants' amended Figure 2 of Luc). As
such, because Luc's rounded faces 3 roll on axially arranged surfaces 4, Luc
discloses a seal that maintains sealing surfaces in an axial direction, but fails
to discuss sealing in a radial direction.
We thus agree with Appellants that Luc "does not disclose or suggest
accounting for variable distances (e.g., movement) along the radial edge of
the sealing element 1, as it would need to if placed in the saw body 402 of
Tachibana." Reply Br. 3. Hence, the Examiner's finding that "[t]he seal of
Tachibana as modified in light of Luc will maintain tightness in both the
radial and axial directions" is based on speculation. See Ans. 5---6 (emphasis
added). Therefore, the Examiner's legal conclusion of obviousness is not
supported by sufficient facts, and thus, cannot stand. See In re Warner, 379
F.2d 1011, 1017 (CCPA 1967).
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Appeal2014-005042
Application 12/842,209
In conclusion, for the foregoing reasons, we do not sustain the
rejection under 35 U.S.C. § 103(a) of claims 1---6, 23, and 24 as unpatentable
over Tachibana and Luc.
SUMMARY
The Examiner's decision to reject claims 1-6, 23, and 24 is reversed.
REVERSED
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