ROBERT BOSCH GMBH

Patent Trials and Appeals Board

Dec 22, 2020

2020000529 (P.T.A.B. Dec. 22, 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.
14/359,552 05/20/2014 Friederike Dietzel BOSC.P8887US/1000176599 2614
24972 7590 12/22/2020
NORTON ROSE FULBRIGHT US LLP
1301 Avenue of the Americas
NEW YORK, NY 10019-6022
EXAMINER
GRANT, ROBERT J
ART UNIT PAPER NUMBER
2859
NOTIFICATION DATE DELIVERY MODE
12/22/2020 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):
nyipdocket@nortonrosefulbright.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRIEDERIKE DIETZEL, JUERGEN MACK,
GUENTER LOHR, VOLKER AMANN,
MARCIN REJMAN, and BRETT HUBER
Appeal 2020-000529
Application 14/359,552
Technology Center 2800
Before JEFFREY T. SMITH, JAMES C. HOUSEL, and
MICHAEL G. McMANUS, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s decision to reject claims 16–22, 24, and 26–38.1 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. Appellant identifies Robert Bosch GmbH as the real party in
interest. Appeal Brief (“Appeal Br.”) filed July 3, 2019, 1.
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Application 14/359,552

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CLAIMED SUBJECT MATTER
The invention relates to a handheld tool carrying case having an
interior structuring unit, which includes at least one interior structuring
element provided to delimit at least one inductive charge receiving region
for at least one handheld tool battery. Substitute Specification (“Spec.”) filed
May 20, 2014, 1:12–16.2
Claim 16, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the claimed subject matter:

16. A handheld tool carrying case, comprising:
at least one interior structuring unit having at least one
interior structuring element which is provided to delimit at least
one inductive charge receiving region for at least one handheld
tool battery, wherein the at least one interior structuring unit is
configured to be combinable in a modular manner,
wherein the interior structuring element is configured as
a bowl and provided for at least one of a clamping or snap-in
connection with at least one base element of the at least one
interior structuring unit,
wherein the base element includes at least one depression
situated at at least one corner of the base element wherein the
interior structuring element is configured to clamp or snap-in to
the at least one base element in the at least one depression,
wherein the at least one base element includes nubs
disposed in a right-angled raster pattern and which provide
fixation positions for a lateral fixation of the at least one interior
structuring element.

2 This Decision also cites to the Final Office Action (“Final Act.”) dated
February 8, 2019, the Examiner’s Answer (“Ans.”) dated September 6,
2019, and the Reply Brief (“Reply Br.”) filed October 30, 2019.
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Application 14/359,552

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Independent claim 27 recites a system comprising a handheld
tool carrying case similar to that of claim 16, including at least one
base element with nubs disposed in a right-angled raster pattern
providing fixation positions for lateral fixation of the structuring
element(s).
Independent claim 28 recites a system comprising a handheld
tool and battery, and a handheld tool carrying case similar to that of
claim 16, including at least one base element with nubs disposed in a
right-angled raster pattern providing fixation positions for lateral
fixation of the structuring element(s).
Independent claim 34 recites a handheld tool carrying case
similar to that of claim 16, and also including at least one base
element with nubs disposed in a right-angled raster pattern providing
at least two fixation positions for lateral fixation of the structuring
element(s).
REFERENCES
The Examiner relies on the following prior art:
Name Reference Date
Stribiak US 5,505,328 Apr. 9, 1996
Amatrudo US 8,646,600 B2 Feb. 11, 2014
McIntyre US 2005/0098403 A1 May 12, 2005
Rothschild et al.
(“Rothschild”)
US 2006/0169690 A1 Aug. 3, 2006
Johnson et al.
(“Johnson”)
US 2009/0212737 A1 Aug. 27, 2009
Yoshida et al.
(“Yoshida”)
US 2012/0305417 A1 Dec. 6, 2012

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REJECTIONS
The Examiner maintains, and Appellant requests our review of, the
following rejections under 35 U.S.C. § 103(a):
1. Claims 16–22, 24, and 26–33 as unpatentable over Johnson
in view of Amatrudo, Yoshida, and Rothschild;
2. Claims 34–36 as unpatentable over Johnson in view of
McIntyre, Stribiak, and Rothschild;
3. Claim 37 as unpatentable over Johnson in view of McIntyre,
Stribiak, and Rothschild, and further in view of Amatrudo;
and
4. Claim 38 as unpatentable over Johnson in view of McIntyre,
Stribiak, and Rothschild, and further in view of Yoshida.

OPINION
The Examiner has the initial burden of establishing a prima facie case
of obviousness based on an inherent or explicit disclosure of the claimed
subject matter under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992) (“[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie case of
unpatentability.”). To establish a prima facie case of obviousness, the
Examiner must show that each and every limitation of the rejected claims is
described or suggested by the prior art or would have been obvious based on
the knowledge of those of ordinary skill in the art. In re Fine, 837 F.2d 1071,
1074 (Fed. Cir. 1988). After review of the Examiner’s and Appellant’s
opposing positions, we are persuaded that Appellant has identified reversible
error in the Examiner’s obviousness rejections. In re Jung, 637 F.3d 1356,
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1365 (Fed. Cir. 2011). Therefore, we reverse the stated rejections for the
reasons set forth in the Appeal and Reply Briefs.

The Examiner rejects the pending claims over Johnson in view of
various secondary prior art references. In all of the maintained rejections, the
Examiner relies on Rothschild for the same prior art teaching to address the
same or similar claim limitation in each of the independent claims. This
claim limitation requires that the at least one base element of the at least one
interior structuring unit includes nubs disposed in a right-angled raster
pattern and which provide fixation positions for lateral fixation of the at least
one interior structuring element. Compare independent claims 16, 27, 28,
and 34. The Examiner finds that although Johnson and the remaining applied
prior art fails to teach or suggest this feature, Rothschild teaches nubs 302
arranged in a right-angled raster pattern “which are meant to attach objects
or bin for component storage in precise positions.” Final Act. 7–8. The
Examiner, therefore, concludes that it would have been obvious to have
incorporated raster patterned nubs in Johnson because “the plastic nub
structure helps to rapidly, and as wherein no tools are needed for installation,
place or replace bins in precise locations and the bins will stay aligned in
that position without the use of screws, hooks, etc.” Id. at 8.
Appellant argues that the Examiner’s rejections are improper as
Rothschild is directed to non-analogous prior art. Appeal Br. 5; Reply Br. 2.3
In particular, Appellant contends that Rothschild relates to children’s
building block toys, and not to an inductive charging hand-held tool case for

3 Although the Reply Brief lacks page numbering, we refer to the pages
numerically beginning with the first page thereof as page 1.
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placement of a handheld tool battery in an inductive charge receiving region.
Appeal Br. 5. Appellant further contends that Rothschild does not disclose a
base element including right-angled raster patterned nubs providing fixation
positions for lateral fixation of an interior structuring element of the case. Id.
Appellant asserts that Rothschild teaches an activity mat that may contain
nubs compatible with popular plastic building blocks. Reply Br. 2. In
addition, Appellant asserts that the toys themselves mate with the nubs in
Rothschild, rather than placing them into some other structure which other
structure is then mated with the nubs, as is done in the claimed invention. Id.
Appellant’s argument that Rothschild is non-analogous prior art is
persuasive of reversible error. It is well-settled that a reference is analogous
art if it is either in the field of applicant’s endeavor, or is reasonably
pertinent to the particular problem with which the inventor was concerned.
In re Kahn, 441 F.3d 977, 987 (Fed. Cir. 2006). The same field of endeavor
test “for analogous art requires the PTO to determine the appropriate field of
endeavor by reference to explanations of the invention’s subject matter in
the patent application, including the embodiments, function, and structure of
the claimed invention.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)
(reference describing a toothbrush found to be in the same field of endeavor
as a claim to a hairbrush based on findings regarding function and structural
similarity). “A reference is reasonably pertinent if, even though it may be in
a different field from that of the inventor’s endeavor, it is one which,
because of the matter with which it deals, logically would have commended
itself to an inventor’s attention in considering his problem.” In re Clay, 966
F.2d 656, 659 (Fed. Cir. 1992). References that are “too remote to be treated
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as ‘prior art’” are excluded from the obviousness analysis. In re Sovish, 769
F.2d 738, 741 (Fed. Cir. 1985).
Neither the Examiner nor Appellant explicitly address whether
Rothschild is within Appellant’s field of endeavor or, if not, whether
Rothschild is reasonably pertinent to the particular problem with which the
Inventors here were concerned. However, it appears that both address
aspects of each part of the test for analogous art. Appellant contends that
Rothschild relates to children’s building block toys, and not to an inductive
charging hand-held tool case. Appeal Br. 5. The Examiner does not appear
to dispute this contention, instead finding that Rothschild’s nubs allow a user
to attach objects in precise positions without the need for tools. Ans. 4. The
Examiner also finds that although Rothschild discloses that the nubs are for
use with building block toys, this intended use does not limit the nubs’
utility. Id. As such, the Examiner determines that combining Rothschild with
Johnson would have been obvious because the nubs “allow for different wall
patterns to be easily formed providing a variety of shaped and size
containment areas.” Id. at 4–5. The Examiner also finds that Rothschild
teaches the nubs for use with toy blocks that can be arranged into trays to
hold objects such as batteries. Id. at 5. The Examiner finds that although
Rothschild’s nub/building block connections were conceived as a toy, these
connections are useful to easily and securely connect objects. Id. at 7.
We note that Rothschild does not support the Examiner’s finding
regarding the use of nubs for removably attaching either bins or trays to a
base element. Rothschild merely teaches that structures 302 are compatible
with plastic building blocks, or other building sets. Rothschild ¶ 99. It
appears that the Examiner’s finding regarding bins and trays being
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compatible with Rothschild’s nubs is an attempt to demonstrate that
Rothschild logically would have commended itself to the Inventors’
attention in considering the problem of affixing the interior structuring
element to the base element. However, because the Examiner’s finding in
this regard is unsupported, we must conclude that the Examiner has not
shown that Rothschild is reasonably pertinent to the particular problem with
which the Inventors were concerned.
As such, we hold that, on the record before us, Rothschild is non-
analogous prior art and must be excluded from the obviousness analysis. As
the Examiner does not rely on any other prior art to teach or suggest the
right-angled raster patterned nubs, we do not sustain the Examiner’s
obviousness rejections.
CONCLUSION
Upon consideration of the record and for the reasons set forth above
and in the Appeal and Reply Briefs, the Examiner’s decision to reject claims
16–22, 24, and 26–38 under 35 U.S.C. § 103 is reversed.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
16–22, 24,
26–33
103(a) Johnson, Amatrudo,
Yoshida, Rothschild
16–22, 24,
26–33
34–36 103(a) Johnson, McIntyre,
Stribiak, Rothschild
34–36
37 103(a) Johnson, McIntyre,
Stribiak, Rothschild,
Amatrudo
37
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38 103(a) Johnson, McIntyre,
Stribiak, Rothschild,
Yoshida
38
Overall
Outcome
16–22, 24,
26–38

REVERSED