Milwaukee Electric Tool Corporation

Patent Trials and Appeals Board

Jan 28, 2021

2020003294 (P.T.A.B. Jan. 28, 2021)

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.
15/089,025 04/01/2016 Christopher S. Hoppe 066749-1968 9772
142078 7590 01/28/2021
Reinhart (Milwaukee Tool)
ATTN: TRAVIS MCDONNELL, PARALEGAL
1000 NORTH WATER STREET
SUITE 2100
MILWAUKEE, WI 53202
EXAMINER
KELLER, BRIAN D
ART UNIT PAPER NUMBER
3723
NOTIFICATION DATE DELIVERY MODE
01/28/2021 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):
IPAdmin@reinhartlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CHRISTOPHER S. HOPPE, MARK W. CORS,
STEVEN W. HYMA, GRANT T. SQUIERS, and MICHAEL STEARNS
____________

Appeal 2020-003294
Application 15/089,025
Technology Center 3700
____________

Before JEREMY J. CURCURI, AMEE A. SHAH, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

SHAH, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s final decision to reject claims 1–3, 6, and 9–14, which are all of
the pending claims. 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. The Appellant identifies the real party in interest as
Milwaukee Electric Tool Corporation. Appeal Br. 1.
Appeal 2020-003294
Application 15/089,025

2
CLAIMED SUBJECT MATTER
The Appellant’s “invention relates to hand tools and, in particular, to a
wire stripper, combination pliers, etc.” Spec. ¶ 2.
Claims 1 and 6 are the independent claims on appeal. Claim 1 is
illustrative of the claims and is reproduced below (with added lettered
bracketing for reference):
1. A hand tool comprising:
[(a)] a first jaw assembly including a first handle portion,
a first jaw portion, and a first pivot portion, the first jaw portion
having a first jaw tip;
[(b)] a second jaw assembly including a second handle
portion, a second jaw portion, and a second pivot portion, the
second jaw portion having a second jaw tip; and
[(c)] a pivot pin coupling the first pivot portion and the
second pivot portion for pivoting movement of the first jaw
assembly and the second jaw assembly about a pivot axis
between an open position and a closed position, a longitudinal
plane extending perpendicular to the pivot axis;
[(d)] wherein each of the first jaw portion and the second
jaw portion has a spring constant more than about 2,225 lbs./in.,
measured when a force is applied in a direction parallel to the
pivot axis to an associated jaw tip with the pivot pin being held;
[(e)] wherein the first jaw portion has a first gripping
surface extending in a gripping plane parallel to the pivot axis,
first side walls perpendicular to the gripping plane, and a first
outer wall connecting the first side walls, the first jaw portion
having a first angled wall connected to one of the first side walls
and defining a first wire stripping portion, the first wire stripping
portion including a first cutting edge and a first recess defined in
the first angled wall, the first recess extending from the first
cutting edge to an end at the one of the first side walls, the first
angled wall being arranged non-parallel to the gripping surface
and non-perpendicular to the one of the first side walls, the first
cutting edge being proximate the longitudinal plane and spaced
Appeal 2020-003294
Application 15/089,025

3
from the other of the first side walls, the first jaw portion
including a first wall portion extending from the first cutting edge
to the other of the first side walls, the first wire stripping portion
being on one side of the longitudinal plane and the first wall
portion being on an opposite side of the longitudinal plane;
[(f)] wherein the second jaw portion has a second gripping
surface extending parallel to the gripping plane, second side
walls perpendicular to the gripping plane, and a second outer
wall connecting the second side walls, the second jaw portion
having a second angled wall connected to one of the second side
walls and defining a second wire stripping portion, the second
wire stripping portion including a second cutting edge and a
second recess defined in the second angled wall, the second
recess extending from the second cutting edge to an end at the
one of the second side walls, the second angled wall being
arranged non-parallel to the second gripping surface and non-
perpendicular to the one of the second side walls, the second
cutting edge being proximate the longitudinal plane and spaced
from the other of the second side walls, the second jaw portion
including a second wall portion extending from the second
cutting edge to the other of the second side walls, the second wire
stripping portion being on the opposite side of the longitudinal
plane and the second wall portion being on the one side of the
longitudinal plane.
Appeal Br. 15–16 (Claims App.) (emphasis added). Claim 6 recites
limitations similar to limitations (a)–(c), (e), and (f) of claim 1, does
not recite limitation (d) of claim 1, and recites a further limitation
“wherein the first jaw portion and the second jaw portion define a jaw
length, wherein the first wire stripping portion defines a first wire
stripping portion length, wherein a ratio of the first wire stripping
portion length to the jaw length is in a range of 0.4 to 0.55.” Id.
at 16–17 (Claims App.).

Appeal 2020-003294
Application 15/089,025

4
REFERENCES
The prior art relied upon by the Examiner are:
Name Reference Date
Haeberli US 871,585 Nov. 19, 1907
Neff US 3,947,905 Apr. 6, 1976
Konen US 6,473,925 B1 Nov. 5, 2002
Steele et al. (“Steele”) US 8,667,874 B2 Mar.11, 2014
Wang US 2017/0001319 A1 Jan. 5, 2017

REJECTIONS
Claim 1–3 stand rejected under 35 U.S.C. § 103 as being unpatentable
over Haeberli in view of Konen, as evidenced by Wang.
Claims 6, 9, and 11–14 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Haeberli in view of Konen and Neff.
Claim 10 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Haeberli in view of Konen, Neff, and Steele.

OPINION
Claims 1–3
We agree with the Appellant’s contention that the Examiner’s
rejection under 35 U.S.C. § 103 of independent claim 1 is in error because
the Examiner has not adequately shown how the combination of Haeberli
and Konen, as evidenced by Wang, teaches or renders obvious each of the
first jaw portion and the second jaw portion having a spring constant more
than about 2,225 lbs./in., as recited by the claim in limitation (d). See
Appeal Br. 8–11; Reply Br. 2–4.
The Examiner finds that Haeberli teaches limitations (a)–(c), (e), and
(f) but for the recesses, for which the Examiner relies on Konen. See Final
Appeal 2020-003294
Application 15/089,025

5
Act. 3–5. The Examiner acknowledges that Haeberli and/or Konen does not
teach “the particular spring constant of the two jaws recited” in claim 1’s
limitation (d). Id. at 5; see also Ans. 11. The Examiner notes that the
Appellant “has not assigned any criticality to the claimed spring constants of
the two jaw portions” (Final Act. 6; Ans. 11) and determines
It would have been obvious to one with ordinary skill in the art
at the time of the invention to configure the two jaw portions to
have whatever spring constant necessary to achieve the desired
results of a particular operation, based on basic engineering
principles, including comprising spring constants of the claimed
value.
Id. Specifically, the Examiner finds that “one of ordinary skill in the art
would understand the importance of designing and configuring the hand tool
to suit a particular application or environment, particularly the jaw portions
that engage the workpiece (including stiffness thereof),” and cites to Wang
as evidencing the relationship between “certain light applications (such as
arts and crafts or other hobby work)” that can be “accomplished with lighter-
weight construction” and “heavier or more robust applications (such as
industrial or commercial work)” that “would require a more robust
construction to accommodate the increased loads and demands.” Final
Act. 6; see also Ans. 12. The Examiner also relies on Wang as evidence that
“rigidity or stiffness of the jaws of the scissor head is a range-effective
variable that increasing rigidity ‘improves the shearing strength of the
scissors, facilitating snipping thicker objects to meet the requirements of
being suited for various operation subjects’.” Final Act. 6 (quoting Wang
Abstract, ¶¶ 30, 45); Ans. 12. Thus, the Examiner determines “[a] skilled
artisan would understand that a hand tool (such as taught by Haeberli) of
greater stiffness would be more capable of heavier-duty work than a tool of
Appeal 2020-003294
Application 15/089,025

6
less stiffness” and “would understand the importance of scale” that “would
likely require separate engineering and design to account for the scale of the
device and the physics associated therewith in use.” Final Act. 6. The
Examiner concludes “[a]mong these considerations, one of ordinary skill
would find it obvious to select jaw stiffness to suit a particular need,
including a stiffness in the claimed range.” Id.
In the Answer, the Examiner emphasizes that the Specification “does
not specifically describe the criticality of the claimed jaw portion spring
constant of more than 2,225 lbs.” and does not show “that a spring constant
of the claimed at least 2,225 lbs/ft [sic] is necessary and critical for the
successful operation of the tool.” Ans. 12. The Examiner thus finds that “no
showing of criticality of the recited range has been provided, as described in
MPEP 2144.05 III A., which further describes ‘the applicant must show that
the particular range is critical, generally by showing that the claimed range
achieves unexpected results relative to the prior art range.’” Id. at 12–13.
The Examiner’s rejection is based on the lack of criticality in the
specific claimed spring constant range. See Final Act. 6; Ans. 11–13. We
are persuaded by the Appellant’s position that this finding is flawed. See
Appeal Br. 9.
The Appellant contends that from a reading of the Specification, one
of ordinary skill in the art would understand that having a certain value of a
spring constant would lead to a desired stiffness that is critical to the
invention and provides benefits over the prior art. See id. The Specification
provides for embodiments of a hand tool with jaws having a spring constant
ranging from 2225 to 3200 lbs./in., including the claimed embodiment of
more than 2225 lbs./in. Spec. ¶¶ 9, 82. The Specification discusses that
Appeal 2020-003294
Application 15/089,025

7
“[i]ncreasing the stiffness of the jaw portions . . . limits the potential damage
to the pivot portions . . . and/or the jaw portions . . . from twisting/torqueing
[sic] operations, improving stripping capabilities of the wire stripper.” Id.
¶ 80. “[T]his improved capability may be important when the elongated
apertures 72 are used for wire-stripping . . . because the elongated apertures
72 become misaligned to a greater degree due to their increased length,” and
the increased stiffness would allow for an advantageous increased stripping
length relative to the overall length of the jaw portions and for the apertures
to be positioned further from the pivot axis “without being impacted by
misalignment even after using the wire stripper 10 as a reamer, to punch out
electrical knock outs, etc.” Id. For example, the ratio of the wire stripping
length to the jaw length can be in the range of 0.40 to 0.55, in contrast to
existing wire stripper tools with a ratio of less than 0.30. Id. ¶ 83.
Thus, we agree with the Appellant that the Specification shows
support that the range of the stiffness is critical to the invention in having a
“functional importance/benefit.” Appeal Br. 8; see also id. at 9. As such,
we disagree with the Examiner’s finding (and the evidence of Wang) that the
spring constant value is not critical to the successful operation of the tool or
the invention.
Accordingly, based on the record before us, we do not sustain the
rejection under 35 U.S.C. § 103(a) of independent claim 1 and dependent
claims 2 and 3.
Claims 6 and 9–14
We agree with the Appellant’s contention that the Examiner’s
rejection under 35 U.S.C. § 103 of independent claim 6 is in error because
the Examiner has not adequately shown how the combination of Haeberli,
Appeal 2020-003294
Application 15/089,025

8
Konen, and Neff teaches or renders obvious “wherein the first jaw portion
and the second jaw portion define a jaw length, wherein the first wire
stripping portion defines a first wire stripping portion length, wherein a ratio
of the first wire stripping portion length to the jaw length is in a range of 0.4
to 0.55,” as recited in independent claim 6. See Appeal Br. 11–13; Reply
Br. 4–5.
The Examiner finds that “Haeberli, as modified by Konen (as
described in the above rejection of claim 1) teaches a hand tool comprising:
a first jaw assembly, a second jaw assembly, a pivot pin, and the particular
gripping surfaces, side walls, wall portions, recesses, and cutting edges
required by the claim,” and that are similar to limitations (a)–(c), (e), and (f)
of claim 1. Final Act. 7. The Examiner acknowledges that “Haeberli, as
modified, does not explicitly teach a ratio of a first wire stripping portion
length to a jaw length in the range of 0.4 to 0.55.” Id.; see also Ans. 14.
The Examiner cites to Neff “to teach an example of providing six wire
apertures in a tool jaw” (Ans. 14) to “vary the proportion of the three
elements [of Konen incorporated into Haeberli] within the jaw based on
particular application” (Final Act. 8; see also Ans. 15). The Examiner finds
that a “skilled artisan would understand the number of wire apertures (and
corresponding stripping portion length) to be a range-effective variable, in
that more apertures provide compatibility and utility with more wire sizes”
(Final Act. 8), that “[s]tripping portion length and, accordingly, the claimed
ratio, are range-effective variables” (Ans. 15), and that the “Appellant has
not assigned criticality to the claimed length ratio” (id.; see also Final
Act. 8). Thus, the Examiner determines that
Appeal 2020-003294
Application 15/089,025

9
A skilled artisan would find it obvious to configure the tool jaw
of Haeberli, as modified, whatever number of stripping
apertures, gripping portion size, and beveled edge size based on
particular application of the tool, including configurations in
which the ratio of the first wire stripping portion length to the
jaw length was within the claimed range. . . . Further, it would
have been obvious to one having ordinary skill in the art to
configure the device having the claimed ratio since it has been
held that where the general conditions of a claim are disclosed in
the prior art, discovering the optimum or workable ranges
involves only routine skill in the art. MPEP 2144.05 (II-A).
Final Act. 8; see also Ans. 15 (“The claimed range comprises a range that
would be optimized by a skilled artisan.”). Id. Specifically, the Examiner
finds that “starting with a tool comprising two apertures and modifying the
tool by adding four apertures would necessarily increase the stripping length
of the tool” (Ans. 15) and “would necessarily change the stripping length
and the claimed length ratio” (id. at 16).
The Examiner’s rejection requires an understanding of two items —
(1) the wire stripping portion length and (2) the jaw length. The Examiner
explains how the combination of the prior art ostensibly teaches increasing
the wire stripping portion length. However, the Examiner makes no findings
regarding how the prior art teaches the relationship between the wire
stripping portion length and the jaw length. In other words, the Examiner
makes no finding as to how Haeberli’s blade portion length relates to a jaw
length, how Konen’s wire stripping portion relates to a jaw length, or how
Neff’s stripping means with apertures length relates to a jaw length. The
Examiner has not stated what the ratio of blade/stripping length to jaw
length would be prior to any modification. One of ordinary skill in the art
would not know how much or what to modify.
Appeal 2020-003294
Application 15/089,025

10
Even were we to assume that increasing the number of stripping
apertures affects the wire stripping portion length (see Ans. 15; cf. Appeal
Br. 12), at best the Examiner shows that it would have been obvious to have
a longer stripping length in general, but does not adequately show that this
longer stripping length would comprise a certain portion of the jaw length,
i.e., have a certain ratio. See Appeal Br. 12. For example, one of ordinary
skill in the art would not know whether if one were to make the stripping
length portion longer, the jaw length would remain the same, be longer, or
be shorter, and whether the resulting ratio would encompass, be within, or
close to the range claimed. Thus, the Examiner does not provide adequate
reasoning as to how or why one of ordinary skill in the art would get to the
range of ratios claimed from the prior art teaching of increasing the wire
stripping portion length.
Accordingly, based on the record before us, we do not sustain the
rejection of independent claim 6 and dependent claims 9 and 11–14 under
35 U.S.C. § 103(a). For the same reasons, we also do not sustain the
rejection of dependent claim 10. Cf. In re Fritch, 972 F.2d 1260, 1266 (Fed.
Cir. 1992) (“dependent claims are nonobvious if the independent claims
from which they depend are nonobvious”).

CONCLUSION
The Examiner’s decision to reject claims 1–3, 6, and 9–14 under
35 U.S.C. § 103 is reversed.
Appeal 2020-003294
Application 15/089,025

11
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3 103 Haeberli, Konen,
Wang
1–3
6, 9, 11–14 103 Haeberli, Konen,
Neff
6, 9, 11–14
10 103 Haeberli, Konen,
Neff, Steele
10
Overall
Outcome
1–3, 6,
9–14

REVERSED