Milwaukee Electric Tool Corporation

Patent Trials and Appeals Board

Jul 20, 2020

15146547 - (D) (P.T.A.B. Jul. 20, 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.
15/146,547 05/04/2016 Alex Huber 066042-8894-US03 5090
60840 7590 07/20/2020
MICHAEL, BEST & FRIEDRICH LLP (MT)
790 N WATER ST
SUITE 2500
MILWAUKEE, WI 53202
EXAMINER
LONG, ROBERT FRANKLIN
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
07/20/2020 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 ALEX HUBER, CARL BENJAMIN WESTERBY,
DANIEL ROBERT ERTL, MATTHEW WYCKLENDT,
MATTHEW MERGENER, MARK ALAN KUBALE, COLE CONRAD,
and WING FUNG YIP
____________

Appeal 2020-000119
Application 15/146,547
Technology Center 3700
____________

Before STEFAN STAICOVICI, JAMES P. CALVE, and
JEREMY M. PLENZLER, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE.
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision in the Final Office Action (dated Dec. 17, 2018, hereinafter “Final
Act.”) rejecting claims 1–27. We have jurisdiction over this appeal under
35 U.S.C. § 6(b).

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Milwaukee Electric Tool Corporation is identified as the
real party in interest in Appellant’s Appeal Brief (filed June 3, 2019,
hereinafter “Appeal Br.”). Appeal Br. 2.
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Application 15/146,547

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SUMMARY OF DECISION
We REVERSE.
INVENTION
Appellant’s invention is directed to a power tool and a method for
operating the power tool. Spec. paras. 3, 4.
Claims 1, 11, and 21 are independent. Claim 1 is illustrative of the
claimed invention and reads as follows:
1. A power tool comprising:
a housing;
a motor within the housing;
a clutch collar on the housing including a plurality
of settings;
a wireless transceiver operable to form a wireless
connection with a remote device; and
a processor coupled to the clutch collar and the
wireless transceiver, the processor configured to:
receive, via the wireless transceiver, a
mapping including a plurality of torque levels
corresponding to the plurality of settings,
detect that the clutch collar is set to a setting
of the plurality of settings,
determine the torque level for the setting
from the mapping,
detect, during operation of the power tool,
that a torque of the power tool exceeds the torque
level, and
generate an indication that the torque exceeds
the torque level.

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REJECTIONS

I. The Examiner rejects claims 1, 3, 11, and 20–23 under
35 U.S.C. § 102(a)(1) as anticipated by Phillips.2
II. The Examiner rejects claims 2, 4, 9, 12, 13, and 18 under
35 U.S.C. § 103 as being unpatentable over Phillips and
Gilmore.3
III. The Examiner rejects claims 5 and 14 under 35 U.S.C. § 103 as
being unpatentable over Phillips and Elligson.4
IV. The Examiner rejects claims 6, 7, 15, 16, and 24 under
35 U.S.C. § 103 as being unpatentable over Phillips and
Gotman.5
V. The Examiner rejects claims 8, 17, and 25 under 35 U.S.C.
§ 103 as being unpatentable over Phillips and Kusakawa.6
VI. The Examiner rejects claims 10 and 19 under 35 U.S.C. § 103
as being unpatentable over Phillips and Leukhardt.7
VII. The Examiner rejects claims 26 and 27 under 35 U.S.C. § 103
as being unpatentable over Phillips, Elligson, and Hanspers.8

2 Phillips et al., US 2014/0367134 A1, published Dec. 18, 2014.
3 Gilmore, US 6,424,799 B1, issued July 23, 2002.
4 Elligson, US 5,025,903, issued June 25, 1991.
5 Gotman, US 4,991,473, issued Feb. 12, 1991.
6 Kusakawa, US 2013/0082632 A1, published Apr. 4, 2013.
7 Leukhardt et al., US 4,249,117, issued Feb. 3, 1981.
8 Hanspers et al., US 2010/0032179 A1, published Feb. 11, 2010.
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ANALYSIS
Rejection I
Claims 1, 3, 11, and 20
Each of independent claims 1 and 11 requires, inter alia, a processor
that receives via a wireless transceiver “a mapping including a plurality of
torque levels corresponding to the plurality of [clutch collar] settings” that
are used to determine a torque level for a specific clutch collar setting.
Appeal Br. 15, 17 (Claims App.).
The Examiner finds that Phillips discloses power tool 10 including,
inter alia, clutch collar 36 having a plurality of settings, wireless transceiver
59 that is “operable to form a wireless connection with a remote device,”
and processor 42 “coupled to the clutch collar and the wireless transceiver,”
wherein processor 42 receives via wireless transceiver 59 “a mapping
including a plurality of torque levels corresponding to the plurality of
settings.” Final Act. 2–3 (citing Phillips, paras. 7, 8, 26–29, 31–33, 41).
Appellant argues that “Phillips does not disclose that the correlation
between the clutch setting selected by the rotary member (36) and the torque
levels corresponding to that clutch level are received via a wireless
transceiver [59],” but rather that it is “pre-stored within the drill driver
(10),” i.e., power tool 10. Appeal Br. 6. According to Appellant, because
Phillips’ wireless transceiver 59 receives a “descriptor,” which is “translated
to a threshold value irrespective of the clutch setting,” “the descriptor does
not disclose or equate to a ‘mapping including a plurality of torque levels
corresponding to the plurality of settings [of the clutch collar].’” Id. at 7.
Pointing to paragraphs 7, 8, 31, 32, 41 and claim 1 of Phillips, the
Examiner takes the position that Phillips “does disclose receiving a plurality
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of torque levels corresponding [to] the [clutch] settings . . . by the wireless
transceiver (59).” Examiner’s Answer (dated Aug. 19, 2019, hereinafter
“Ans.”) 3. According to the Examiner, “‘a mapping’ is not limited to
customization and [similar to Appellant,] Phillips does disclose . . . a
mapping of torque setting[s]/levels correlated with motor current.” Id. at 4–
5 (citing claims 2 and 12 of Appellant’s Specification; Phillips, para. 41).
In particular, Phillips discloses a method for remotely controlling a
power tool 10 having a controller 42 and a wireless transceiver 59 that
receives from a computing device “one or more descriptors for a fastening
application being received by a controller residing in the power tool, where
the descriptors are indicative of fastening application to be performed by the
power tool.” Phillips, para. 7 (emphasis added). The “descriptors” include
information such as “the type of fastener, the length of the fastener, the
material of the workpiece and/or the size of the workpiece.” Id., para. 62.
As such, because Phillips’ “descriptors,” which are received
wirelessly via transceiver 59, are not torque levels that correspond to clutch
settings, Phillips does not disclose wirelessly receiving a correlation between
torque levels and clutch settings, as called for by claims 1 and 11. In
particular, torque levels in Phillips are determined by a fastener setting
algorithm of power tool 10 using wirelessly received “descriptors” and
memory stored look-up tables. Id., paras. 8 (“The controller is configured to
[wirelessly] receive one or more descriptors for a fastening application and
modifies a fastener setting algorithm based on the descriptors.”), 31 (“at
least one memory device function for storing both temporarily and
permanently saved data such as data lookup tables, torque values and the
like”), 64 (“[D]escriptors are then used to tailor the parameters of the
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fastener setting algorithm.”). Although we appreciate the Examiner’s
finding that Phillips discloses a correlation between clutch settings and
torque levels, nonetheless, such a correlation, i.e., “mapping,” is not received
wirelessly by transceiver 59, but rather is stored in the memory of controller
42 of power tool 10. See Phillips para. 41 (“[c]urrent levels 154 . . .
correlate to the plurality of pre-defined torque levels” and “controller [42 of
power tool 10] sets a value of a maximum current threshold.”) (emphasis
added).
Hence, we agree with Appellant that Phillips’ “descriptor does not
disclose or equate to a ‘mapping including a plurality of torque levels
corresponding to the plurality of settings [of the clutch collar],’” as called for
by each of independent claims 1 and 11. Appeal Br. 7.
Accordingly, for the foregoing reasons, we do not sustain the rejection
under 35 U.S.C. § 102(a)(1) of independent claims 1 and 11, and respective
dependent claims 3 and 20, as anticipated by Phillips.

Claims 21–23
Independent claim 21 requires, inter alia, “receiving, with a processor
via a wireless transceiver, a first torque value” and “calculating . . . a torque
level for the [clutch collar] setting based on the position of the setting among
the plurality of settings and the first torque value.” Appeal Br. 19 (Claims
App.).
The Examiner finds that that Phillips discloses a method of operating
power tool 10 having a processor (controller) 42 to wirelessly receive via
transceiver 59 a first torque value, detect a setting of clutch collar 36, and
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calculate a torque level based on the setting of clutch collar 36 and the first
torque value. Final Act. 4 (citing Phillips, paras. 7, 31–33, 39–41).
Appellant argues that Phillips’ “descriptors” “are unrelated to and
used independently of the settings of the rotary member (36).” Appeal Br. 9.
Thus, according to Appellant, “[i]n Phillips, no torque level is calculated
based on both a setting of the rotary member (36) and a wirelessly received
descriptor.” Id.
As discussed supra, because Phillips’ “descriptors,” which are
received wirelessly via transceiver 59, are not related to torque, but rather
describe the fastening application, Phillips does not disclose “receiving, with
a processor via a wireless transceiver, a first torque value,” as called for by
claim 21. We are further persuaded by Appellant’s arguments because, in
reviewing the record, we note that the Examiner’s Answer offers no rebuttal
to Appellant’s argument, and, thus, we essentially are left with an unrebutted
statement that Phillips does not disclose calculating a torque level based on
both a clutch setting and a wirelessly received first torque value. See Ans.
3–6.
In conclusion, for the foregoing reasons, we also do not sustain the
rejection under 35 U.S.C. § 102(a)(1) of claims 21–23 as anticipated by
Phillips.

Rejections II–VII
The Examiner’s use of the disclosures of Gilmore, Elligson, Gotman,
Kusakawa, Leukhardt, and Hanspers does not remedy the deficiency of
Phillips discussed supra. See Final Act. 6–16. Therefore, for the same
reasons discussed above we also do not sustain Rejections II–VII.
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CONCLUSION

Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed
1, 3, 11, 20–
23
102(a)(1) Phillips 1, 3, 11,
20–23
2, 4, 9, 12,
13, 18
103 Phillips, Gilmore 2, 4, 9, 12,
13, 18
5, 14 103 Phillips, Elligson 5, 14
6, 7, 15, 16,
24
103 Phillips, Gotman 6, 7, 15,
16, 24
8, 17, 25 103 Phillips,
Kusakawa
8, 17, 25
10, 19 103 Phillips,
Leukhardt
10, 19
26, 27 103 Phillips, Elligson,
Hanspers
26, 27
Overall
Outcome
1–27

REVERSED