2020004642 (P.T.A.B. Mar. 18, 2021)

MILWAUKEE ELECTRIC TOOL CORPORATION

Patent Trials and Appeals BoardMar 18, 2021

2020004642 (P.T.A.B. Mar. 18, 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. 16/218,695 12/13/2018 Terry L. Timmons 066042-8644-US03 9544 60840 7590 03/18/2021 MICHAEL, BEST & FRIEDRICH LLP (MT) 790 N WATER ST SUITE 2500 MILWAUKEE, WI 53202 EXAMINER DIAB, YASIR A ART UNIT PAPER NUMBER 3722 NOTIFICATION DATE DELIVERY MODE 03/18/2021 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): 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 TERRY L. TIMMONS, ANDREW M. PLOWMAN, and BRIAN ALVES Appeal 2020-004642 Application 16/218,695 Technology Center 3700 Before JOHN C. KERINS, CHARLES N. GREENHUT, and BRANDON J. WARNER, Administrative Patent Judges. GREENHUT, 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 1–9 and 14–20. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the term “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 2020-004642 Application 16/218,695 2 CLAIMED SUBJECT MATTER The claims are directed to a pilot pin for a drill press. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A pilot pin assembly slidably receivable within a tool bit of a drill press, the pilot pin assembly comprising: a first pin defining an interior cavity; a second pin at least partially received within the interior cavity of the first pin; and a spring positioned within the interior cavity for biasing the second pin toward an extended position relative to the first pin. REFERENCE The prior art relied upon by the Examiner is: Name Reference Date Hougen US 4,193,721 Mar. 18, 1980 REJECTIONS Claims 1–4, 6–9, 14–17, and 19–20 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Hougen. Final Act. 2. Claims 5 and 18 are rejected under 35 U.S.C. § 103 as being unpatentable over Hougen. Final Act. 4. OPINION Claims 1 and 14, the independent claims before us, each describe certain aspects of the two degrees of telescopic freedom of the hole locating pin assembly 62 illustrated in Figs. 4–6 of Appellant’s disclosure by reciting, first, that the “pilot pin assembly” is “slidably receivable within a tool bit of a drill press,” and second, that “a second pin [is] at least partially received Appeal 2020-004642 Application 16/218,695 3 within the interior cavity of the first pin” with “a spring positioned within the interior cavity for biasing the second pin toward an extended position relative to the first pin.” There is no dispute that Hougen discloses a “second pin,” regarded by the Examiner as pilot pin 28, satisfying the limitations quoted above associated therewith. Appellant contends that Hougen does not disclose the recited pin assembly, regarded by the Examiner as the combination of Hougen’s arbor 16/18, compression spring 40, and pin 28, because this identified assembly is not slidably received within a tool bit. Reply Br. 2–3. Although Appellant’s argument in this regard is somewhat more narrowly drawn than the claim language permits, i.e., because the claims are directed to the pin assembly being “slidably receivable within” (emphasis added) the bit, and not to a pin assembly in combination with a bit, Appellant’s argument is nonetheless well-taken. The language in question, though expressed in broad functional terminology and appearing in the preamble, breathes at least some meaning into claims 1 and 14 by indicating what the claimed pilot pin assembly must have the capacity to do. The Examiner, in attempting to identify structure in Hougen satisfying this limitation, does not assert otherwise. The Examiner apparently recognizes the structure identified as the claimed “pin assembly” is not “slidably receivable within” Hougen’s bit, i.e., cutter 10, due to the threaded nature of the engagement therebetween. Thus, the Examiner attempts to read Hougen, which describes and illustrates only one degree of telescopic freedom, as anticipatory by taking the untenable position that the “‘conventional rotary driven spindle’” mentioned in Hougen “is indeed a tool bit.” Ans. 6. First, the Examiner presents no Appeal 2020-004642 Application 16/218,695 4 evidence that one skilled in the art would consider a spindle to be a bit. Paragraph 14 of Appellant’s Specification and Figures 14–16 explain what appears to be the conventional relationship between bit and spindle in a drilling device wherein the spindle holds and rotates the bit. Second, the Examiner does not provide any evidence to illustrate some potential structure for what Hougen regards as a conventional spindle to illustrate that the elements of Hougen the Examiner regards as the claimed pin assembly, would be “slidably receivable within” such structure. As mentioned above, we are mindful that claims 1 and 14 are directed just to the pin assembly, as opposed to a combination of the pin assembly with the bit or drill press, making the recitations regarding the bit and the press merely indicative of certain capabilities of the claimed pin assembly, and any structure implicitly necessary to provide for those capabilities. However, on the record presently before us, the Examiner has not persuasively demonstrated with either evidence or technical reasoning how the structure in Hougen the Examiner regards as the claimed pin assembly is “slidably receivable within a tool bit of a drill press.” Thus, we do not sustain the Examiner’s rejections on the grounds set forth by the Examiner. CONCLUSION The Examiner’s rejections are REVERSED. Appeal 2020-004642 Application 16/218,695 5 DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–4, 6–9, 14–17, 19– 20 102(a)(1) Hougen 1–4, 6–9, 14–17, 19– 20 5, 18 103 Hougen 5, 18 Overall Outcome 1–9, 14–20 REVERSED