14402740 - (D) (P.T.A.B. Aug. 2, 2019)

Orlaw Massler et al.

Patent Trials and Appeals BoardAug 2, 2019

14402740 - (D) (P.T.A.B. Aug. 2, 2019)

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. 14/402,740 11/21/2014 Orlaw Massler 718803 6580 23548 7590 08/02/2019 LEYDIG VOIT & MAYER, LTD 700 THIRTEENTH ST. NW SUITE 300 WASHINGTON, DC 20005-3960 EXAMINER AHMED, MOBEEN ART UNIT PAPER NUMBER 3731 NOTIFICATION DATE DELIVERY MODE 08/02/2019 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): Chgpatent@leydig.com DCpatent@leydig.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte ORLAW MASSLER and JOSEF FÜNFER ____________________ Appeal 2019-000537 Application 14/402,740 Technology Center 3700 ____________________ Before PHILLIP J. KAUFFMAN, JEREMY M. PLENZLER, and ALYSSA A. FINAMORE, Administrative Patent Judges. PLENZLER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner’s Decision rejecting claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2019-000537 Application 14/402,740 2 CLAIMED SUBJECT MATTER Claim 1 is independent, with claims 2–20 depending from claim 1. Claim 1 is reproduced below: 1. A combustion driven fastener setting device for driving fastening elements into a workpiece, comprising a combustion chamber for burning a fuel to produce combustion gases; a driving piston; a tubular piston guide having an inner surface on which the driving piston is guided, wherein the driving piston is driven by the combustion gases in the combustion chamber and in the piston guide, and wherein the piston guide comprises a metal strip curved to form a tube, the metal strip having two facing longitudinal edges connected by a seam and/or by positively interlocking portions. REJECTIONS 1. Claims 1 and 2 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Hahn (US 2009/0250499 A1, published Oct. 8, 2009) and Ortt (US 2004/0104636 A1, published June 3, 2004). 2. Claims 3–7 and 12–20 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Hahn, Ortt, and Cumming (US 2005/0161019 A1, published July 28, 2005). 3. Claims 3 and 8–121 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Hahn, Ortt, and Lenthall (US 6,309,806 B1, issued Oct. 30, 2001). OPINION Appellants do not contest the rejection of claim 2 separately from that of claim 1. Therefore, claim 1 is representative as to the first ground of 1 Although the heading of the rejection does not reference claim 12, the Examiner addresses claim 12 in the body of the rejection. Final Act. 5. Accordingly, we understand the rejection includes claim 12. Appeal 2019-000537 Application 14/402,740 3 rejection. See 37 C.F.R. § 41.37(c)(1)(iv). Furthermore, Appellants argue that the “teachings of Cummings and Lenthall are of no importance, as they simply do not cure the deficiencies of Hahn and Ortt, and therefore, the combinations also fail to render the presently claimed embodiments . . . obvious.” Appeal Br. 6. Because Appellants’ arguments addressing the rejection of claim 1 are not persuasive, we affirm as to all of the rejected claims. Hahn describes a combustion driven fastener setting device including a combustion chamber, a driving piston, and a tubular piston guide. Hahn ¶¶ 19–21, Fig.2 Hahn does not teach that “the metal strip ha[s] two facing longitudinal edges connected by a seam and/or by positively interlocking portions,” as recited in claim 1. Ortt describes stator housing 32 for an electric-powered drill. Ortt ¶¶ 19–20, Fig. 1. Stator housing 32 is made from a soft magnetic material such as cold rolled steel. Ortt ¶ 31. As depicted in Figures 3 and 5, stator housing 32 is fabricated from a metallic sheet or strip that is bent and then joined along two longitudinal edges to form a tubular shape. The two longitudinal edges define positively interlocking fingers 33 that connect the edges. Ortt ¶ 33. The Examiner determines that it would have been obvious to fabricate a tubular piston guide for a combustion driven fastener setting device from a metallic sheet, similar to tubular stator housing 32 described by Ortt, because: forming a circular body from a flat sheet reduces cost of manufacturing the circular body by allowing the circular body to be stored as a flat sheet (since a flat sheet takes up less space 2 Hahn has only one figure. Appeal 2019-000537 Application 14/402,740 4 than a circular body) which in turn reduces the overall cost of manufacture of the tool. Final Act. 3; Ans. 3. In addition, the Examiner finds that positively interlocking fingers, such as those described by Ortt, further increase seam strength. Ans. 3. Appellants counter that storage is a relatively minor manufacturing cost. Reply Br. 1–2. By arguing that it is a relatively minor cost, Appellants have acknowledged that the proposed modification reduces manufacturing costs. Therefore, we agree with the Examiner that the opportunity to store the metal sheets rather than tubes prior to fabrication of the piston guides and assembly of the setting devices would have provided one of ordinary skill in the art some reason to adopt the teachings of Ortt in designing a piston guide for Hahn’s device. Final Act. 3. Appellants also argue that one of ordinary skill in the art would have been less likely to combine the teachings of Hahn and Ortt because Ortt’s stator housing 32 is not used to guide a moving part (Appeal Br. 3–4); and because Hahn does not disclose that stator housing 32 is air tight (Appeal Br. 4–5). We note that Appellants do not argue that either reference is non- analogous art, nor do Appellants argue that either reference teaches away. Rather, Appellants argue that the characteristics mentioned would have made combining the references less likely. What is missing from Appellants’ argument is a persuasive explanation of how the characteristics mentioned would have had that effect. In light of this, Appellants have not shown error in the Examiner’s reasoning that reducing storage space required for the parts needed to fabricate the piston guides would have provided one of ordinary skill in the art sufficient reason to adopt the Appeal 2019-000537 Application 14/402,740 5 teachings of Ortt in designing a piston guide for a setting device despite the differences between Hahn and Ortt noted by Appellants. Accordingly, we sustain the Examiner’s decision to reject the pending claims. DECISION We AFFIRM the Examiner’s decision to reject claims 1 and 2 under 35 U.S.C. § 103(a) as being unpatentable over Hahn and Ortt. We AFFIRM the Examiner’s decision to reject claims 3–7 and 12–20 under 35 U.S.C. § 103(a) as being unpatentable over Hahn, Ortt, and Cumming. We AFFIRM the Examiner’s decision to reject claims 3 and 8–12 under 35 U.S.C. § 103(a) as being unpatentable over Hahn, Ortt, and Lenthall. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED