Markus Holubarsch et al.

Patent Trials and Appeals Board

Feb 12, 2020

14270908 - (D) (P.T.A.B. Feb. 12, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
14/270,908 05/06/2014 Markus HOLUBARSCH 5068.1141 5913
23280 7590 02/12/2020
Davidson, Davidson & Kappel, LLC
589 8th Avenue
16th Floor
New York, NY 10018
EXAMINER
DESAI, HEMANT
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
02/12/2020 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):
ddk@ddkpatent.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARKUS HOLUBARSCH and STEFAN SCHMID

____________

Appeal 2018-003382
Application 14/270,908
Technology Center 3700
____________

Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
SEAN P. O’HANLON, Administrative Patent Judges.

O’HANLON, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–14. We have jurisdiction under
35 U.S.C. § 6(b). We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Hilti Aktiengesellschaft as the real
party-in-interest. Appeal Br. 2.
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Application 14/270,908

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In explaining our Decision, we refer to the Specification filed May 6,
2014 (“Spec.”), the Final Office Action mailed February 21, 2017 (“Final
Act.”), the Appeal Brief filed November 13, 2017 (“Appeal Br.”), the
Examiner’s Answer mailed December 28, 2017 (“Ans.”), and the Reply
Brief filed February 12, 2018 (“Reply Br.”).
SUMMARY OF THE INVENTION
Appellant’s invention is directed to a power tool. Spec. ¶ 2. Claims 1
and 8 are independent. Claim 1, reproduced below from page 8 (Claims
Appendix) of the Appeal Brief, is illustrative of the claimed subject matter:
1. A hand-held power tool comprising:
a tool socket;
a drive for driving the tool socket and having a first
stationary part connected to or supporting a movable part of the
drive;
a housing, the drive being arranged in the housing, the
first stationary part being stationary with respect to the housing;
and
at least one detachable clamped connection connecting
the first stationary part to at least one element, the at least one
element including at least one of the housing and another
stationary part stationary with respect to the housing, the
clamped connection having a cylindrical pocket in the first
stationary part, a bushing made of plastic and inserted into the
cylindrical pocket, and a screw screwed into the bushing.
REFERENCES
The Examiner relies on the following prior art references in rejecting
the claims on appeal:
Szczukowski US 2011/0286813 A1 Nov. 24, 2011
Henriksson WO 96/15881 May 30, 1996
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REJECTION
Claims 1–14 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Henriksson and Szczukowski.
ANALYSIS
Claims 1–7
The Examiner finds that Henriksson discloses a hand-held power tool
substantially as recited in independent claim 1, including a tool socket (tool
part 16),2 a drive having a first stationary part (head 17) and a movable part
(impact piston 15), a housing (housing 11), and a clamped connection
(retainers 26, 27) having a pocket (bores 20) and a bushing (sleeve 29).
Final Act. 2–3. The Examiner finds that Henriksson does not disclose a
screw screwed into the bushing, but finds that Szczukowski teaches a
clamped connection having a screw (bolt 36) screwed into a bushing
(sleeve 10). Id. at 3. The Examiner reasons that it would have been obvious
to a person having ordinary skill in the art to substitute Szczukowski’s screw
in place of Henriksson’s grooved retainer (retainer 27) because “[t]he
substitution would have resulted in the predictable result of locking at least
two materials together using a plastic insert and screw which is incorporated
into the insert to provide the necessary expanding force.” Id. at 3–4.
Appellant challenges the Examiner’s rejection by arguing, inter alia,
that “[Henriksson] clearly and specifically teaches one of ordinary skill in
the art that ‘any other vibration-sensitive screw-threaded devices’ should not
be used” and “[t]here is no factual basis for the Examiner’s assertion that the

2 Parentheticals refer to the terminology of the cited references.
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Application 14/270,908

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screw and sleeve of [Szczukowski] is the ‘functional equivalent’ of the
[Henriksson] device.” Appeal Br. 5; see also Reply Br. 2–3.
A reference teaches away from a claimed invention or a proposed
modification if “a person of ordinary skill, upon reading the reference,
would be discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was taken by the
applicant.” In re Kubin, 561 F.3d 1351, 1357 (Fed. Cir. 2009) (citing In re
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)). Prior art does not teach away
from claimed subject matter merely by disclosing a different solution to a
similar problem unless the prior art also criticizes, discredits, or otherwise
discourages the solution claimed. See In re Fulton, 391 F.3d 1195, 1201
(Fed. Cir. 2004).
Henriksson identifies the use of threaded fasteners to connect housing
components of breaking hammers as a problem to be avoided because
“screw threads are shaken loose” and “[s]ide bolts can . . . fracture.”
Henriksson 1:26–2:9. Accordingly, Henriksson explains that an object of its
invention is to connect the tool part to the housing in a way that “eliminates
the need for side bolts.” Id. at 2:29–35. Henriksson explicitly discloses that
“the tool part 16 is carried by the machine housing 11 without the aid of side
bolts or any other vibration-sensitive screw-threaded devices.” Id. at 4:18–
20 (emphasis added). Henriksson’s housing and tool part include
cooperating bores 19, 20 that align when the tool part is positioned within
the housing. Id. at 4:29–33. Retainers 26, 27 are inserted through these
bores to create “a robust attachment of the tool part 16 to the machine
housing 11.” Id. at 4:34–37. Henriksson discloses that the retainers can be
in the form of a slit cylinder or a grooved cylinder. Id. at 5:24–6:3.
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Thus, rather than merely described the use of threaded fasteners as a
“non-preferred embodiment” as suggested by the Examiner (see Ans. 3),
Henriksson consistently criticizes and discourages the use of threaded
fasteners in its breaking hammer. Furthermore, the Examiner does not
identify, nor does our review reveal, any suggestion in Szczukowski that its
fastening means helps to alleviate the detrimental effects of vibration in
power tools such that a person having ordinary skill would view it as being a
suitable replacement for Henriksson’s fasteners. Rather, the Examiner’s
rationale for modifying the Henriksson device appears to be based on
improper hindsight reasoning. See Appeal Br. 5. The Examiner has failed
to articulate reasoning with rational underpinnings supporting the proffered
modification to use a threaded fastener in Henriksson’s breaking hammer.
Additionally, we agree with Appellant that “the asserted tool socket,
tool part 16, is not driven, and thus [Henriksson] does not show or teach ‘a
drive for driving a tool socket’ as claimed.” Appeal Br. 4. The Examiner
relies on Henriksson’s tool part 16 to correspond to the recited tool socket
and piston 15 and head 17 to correspond to the recited “drive for driving the
tool socket.” Final Act. 2. However, as explained above, Henriksson’s tool
part 16, including its head portion 17, is affixed to housing 11 via
retainers 26, 27 positioned within bores 19, 20. Henriksson 4:34–37. The
piston reciprocates within housing bore 12 and tool part bore 21. Id. at
3:37–4:4, 6:5–10. Thus, Henriksson’s tool part 16 is stationary and is not
driven. Nor do we agree with the Examiner’s finding that Henriksson’s
breaking tool 18 corresponds to the recited tool socket (see Ans. 3), as the
breaking tool is a tool, not a tool socket.
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Accordingly, for the foregoing reasons, we do not sustain the
Examiner’s rejection of independent claim 1 or its dependent claims 2–7 as
being unpatentable over Henriksson and Szczukowski.
Claims 8–14
Independent claim 8 contains recitations that are substantially the
same as those of claim 1, but requires a drive having an exciter and a guide
tube rather than a first stationary part and a movable part. See Appeal Br. 9
(Claims App.). The Examiner rejects claim 8 in substantially the same
manner as claim 1. Final Act. 7–8.
For the same reasons set forth above with respect to claim 1, we do
not sustain the Examiner’s rejection of independent claim 8 or its dependent
claims 9–14 as being unpatentable over Henriksson and Szczukowski.
CONCLUSION
In summary,
Claims
Rejected 35 U.S.C. § References Affirmed Reversed
1–14 103 Henriksson,
Szczukowski
1–14
REVERSED