MILWAUKEE ELECTRIC TOOL CORPORATION

Patent Trials and Appeals Board

Jul 1, 2020

2019004902 (P.T.A.B. Jul. 1, 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.
15/592,410 05/11/2017 Evans H. Nguyen 066042-8088-US03 3501
60840 7590 07/01/2020
MICHAEL, BEST & FRIEDRICH LLP (MT)
790 N WATER ST
SUITE 2500
MILWAUKEE, WI 53202
EXAMINER
MILLER, DANIEL R
ART UNIT PAPER NUMBER
2863
NOTIFICATION DATE DELIVERY MODE
07/01/2020 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):
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 EVANS H. NGUYEN, JASON R. CROWE, SCOTT D.
BUBLITZ, MIKE N. JONES, WAI NANG TSE,
PAK FAI SIU, and MAN KIT HO

Appeal 2019-004902
Application 15/592,410
Technology Center 2800
Before MONTÉ T. SQUIRE, BRIAN D. RANGE, and JANE E. INGLESE,
Administrative Patent Judges.
RANGE, 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 1–5, 7–11, and 13–20. We have
jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Milwaukee
Electric Tool Corporation. Appeal Br. 2.
Appeal 2019-004902
Application 15/592,410

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CLAIMED SUBJECT MATTER2
Appellant describes the invention as relating to a wall sensor that can,
for example, detect wooden or metal studs hidden behind a surface. Spec.
¶ 2. In particular, appellant seeks to provide a plurality of wall scanning
technologies and a high-resolution display in a single hand-held device. Id.
¶ 3. Claim 1 is illustrative:
1. A wall scanner for sensing objects behind a surface, the wall
scanner comprising:
a housing including a handle portion defining a first axis and
defining a first recess having an open axial end and a body portion
defining a second axis approximately parallel to and offset from the
first axis;
a power terminal within the first recess;
wherein a second recess is formed between the body portion
and the handle portion; and
wherein the first recess is operable to receive a removable
battery into the open axial end,
the battery being electrically connectable to the power terminal;
wherein the handle portion has an outer surface generally
defining a cylinder along the first axis, the battery being within the
cylinder;
an outer housing covering the open axial end of the first recess,
the outer housing extending from and substantially continuing the
outer surface of the handle portion;
a sensor supported in the body portion and for sensing an object
behind the surface;
a non-contact voltage sensor operable to detect a medium
carrying an alternating current behind the surface; and
a display configured to display a plurality of indications to a
user.

2 In this Decision, we refer to the Final Office Action dated May 29, 2018
(“Final Act.”), the Appeal Brief filed Dec. 18, 2018 (“Appeal Br.”), the
Examiner’s Answer dated April 3, 2019 (“Ans.”), and the Reply Brief filed
June 3, 2019 (“Reply Br.”).
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Application 15/592,410

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REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Name Reference Date
DuBois et al.
(“DuBois”)
US 5,762,029 June 9, 1998
Brazell et al.
(“Brazell”)
US 2003/0218469 A1 Nov. 27, 2003
Uehlein-Proctor et al.
(“Uehlein-Proctor”)
US 2006/0267556 A1 Nov. 30, 2006

The Examiner also relies on The Wallscanner D-tect 100, available on
Nov. 17, 2004, at http://bosch.com.ph/content/language1/html/1769.htm
(“Bosch”) and relies on Wallscanner D-tect 100, available on Nov. 17, 2004,
at http://www.surveyors-equipment.com/content/equipment/D-
Tect100MANUALRICS.pdf (“Wallscanner”) “to establish the inherent
characteristics of Bosch.” Final Act. 4.

REJECTION
The Examiner maintains the following rejection on appeal: claims
1–5, 7–11, and 13–20 under 35 U.S.C. § 103 as obvious over Bosch,
Wallscanner, DuBois, Brazell, and Uehlein-Proctor. Ans. 4.

OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential),
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Application 15/592,410

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(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”)). After considering the
evidence presented in this Appeal and each of Appellant’s arguments, we are
not persuaded that Appellant identifies reversible error. Thus, we affirm the
Examiner’s rejections for the reasons expressed in the Final Office Action
and the Answer. We add the following primarily for emphasis.
Appellant does not present substantively distinct arguments for any
claim other than claim 1. See Appeal Br. 8–9. Therefore, consistent with the
provisions of 37 C.F.R. § 41.37(c)(1)(iv) (2013), we limit our discussion to
claim 1, and all other claims on appeal stand or fall together with claim 1.
The Examiner rejects claim 1 as obvious over Bosch with
Wallscanner describing characteristics of Bosch in view of DuBois, Brazell,
and Uehlein-Proctor. The Examiner finds that Bosch and Wallscanner teach
a wall scanner having a housing, handle, and removable battery. Ans. 4–5
(citing Bosch and Wallscanner). The Examiner also finds that Brazell
teaches a non-contact voltage sensor and determines that it would have been
obvious to combine this sensor with Bosch “to detect a medium carrying an
alternating current behind the surface” and to alert users to “potentially
hazardous voltages.” Id. at 7.
The Examiner determines that Bosch does not teach a handle having a
battery component. Id. at 5–6. The Examiner finds that, “[t]ool handles
containing recesses and associated power terminals operable to receive a
removable battery . . . were well-known in the art at the time the invention
was made.” Id. at 6. The Examiner finds that DuBois teaches a
leash/flashlight combination having a recess for a removable battery in its
Appeal 2019-004902
Application 15/592,410

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handle and similarly finds that Uehlein-Proctor teaches a battery-powered
tool having a recess for a removable battery in its handle. Id. at 6–8. The
Examiner determines that it would have been obvious to place the battery
compartment of Bosch in Bosch’s handle as taught by DuBois and
Uhlein-Proctor so that “the battery pack is easily accessible to a user.” Id. at
7 (referencing reason to combine DuBois’s teaching); see also id. at 8
(providing a similar rationale to combine Uelein-Proctor’s teaching).
Appellant argues that DuBois is not a single tool and is instead a
combination of a dog leash and a flashlight where the battery housing of the
flashlight is in the same housing as the flashlight. Appeal Br. 7. Appellant
further argues that neither Bosch nor DuBois teach placement of the battery
and placement of a powered portion in separate portions of the device. Id. at
7–8; see also Reply Br. 2–4. Appellant thus argues that a person of skill in
the art would not have combined the disclosures of Bosch and DuBois to
place the sensor in the body portion and a battery recess in the handle
portion. Appeal Br. 8.
Appellant’s argument does not persuasively identify Examiner error.
Bosch and Wallscanner teach a wallscanner with a handle. See, e.g.,
Wallscanner 8. DuBois and Uehlein-Proctor each teach electrical devices
having a recess for a battery in the handle. See, e.g., DuBois, Fig 4a;
Uehlein-Proctor, Fig. 5. The preponderance of the evidence, therefore,
supports the Examiner’s finding that tool handles with recesses for receiving
a battery were well-known in the art. Ans. 6. Appellant does not
persuasively dispute this finding.
The Examiner determines that it would have been obvious to apply
the well-known technique of putting a battery recess in a tool handle to
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Bosch to make the battery pack easily accessible to a user. Ans. 7–8.
Alternatively, the Examiner determines that it would have been obvious to
put a battery recess in a tool handle as a known combination that would
perform the same function. Id. at 8–9. Appellant does not persuasively rebut
or otherwise demonstrate error in the Examiner’s stated rationales for
combining the references’ teachings.
Appellant’s argument that neither Bosch nor DuBois teach a battery in
the same portion as the electric device is unpersuasive because DuBois
teaches that its lights could be located separately from the battery.
Ans. 32–34. DuBois teaches that its lights “could be located at the bottom of
the housing or any other suitable location on the housing.” DuBois 3:22–43.
As another example of how DuBois’s lights could be separated from the
DuBois battery, one embodiment of DuBois teaches battery 160 in housing
152 while lights are strung all along a dog leash. DuBois Fig. 8, 9; 5:7–17.
In view of these teachings, a person of skill in the art desiring to place
batteries in Bosch’s handle would understand that such a modification could
be performed without undue experimentation. Ans. 32 (“one of ordinary
skill . . . would appreciate that in battery-powered apparatuses generally the
battery and its associated circuitry may be independently positioned”).
Appellant argues routing conductors through a pivot could damage the
conductors (Reply Br. 4), but Appellant offers no evidence to support this
point. Moreover, Appellant does not address the Examiner’s findings and
conclusion regarding Uehlein-Proctor.
Because Appellant’s arguments do not identify harmful error, we
sustain the Examiner’s rejection.

Appeal 2019-004902
Application 15/592,410

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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–5, 7–11,
13–20
103 Bosch,
Wallscanner,
DuBois, Brazell,
Uehlein-Proctor
1–5, 7–11,
13–20

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED