Robert Bosch GmbH

Patent Trials and Appeals Board

Dec 22, 2020

2020003037 (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.
14/505,172 10/02/2014 Joerg Schneider 2179-0302 1082
10800 7590 12/22/2020
Maginot, Moore & Beck LLP
One Indiana Square, Suite 2200
Indianapolis, IN 46204
EXAMINER
LONG, ROBERT FRANKLIN
ART UNIT PAPER NUMBER
3731
MAIL DATE DELIVERY MODE
12/22/2020 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOERG SCHNEIDER and ACHIM KUGLER

Appeal 2020-003037
Application 14/505,172
Technology Center 3700
____________

Before PHILIP J. HOFFMANN, CYNTHIA L. MURPHY, and
KENNETH G. SCHOPFER, Administrative Patent Judges.

SCHOPFER, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–16. 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 the real party in interest as Robert Bosch
GmbH. Appeal Br. 2.
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BACKGROUND
The Specification states that “the present disclosure relates to an
insulation system for a tool, a tool, and a method for mounting the insulation
system on the tool. The tool is in particular a screwdriving/drilling tool that
is holdable in the hand of a user.” Spec. 1.

CLAIMS
Claims 1, 7, and 8 are the independent claims on appeal. Claim 1 is
illustrative of the appealed claims and recites:
1. An insulation system for a tool, comprising:
an extension configured to electrically insulate an output
unit of the tool from a detachably receivable tool element of the
tool, the output unit extending outwardly from a housing of the
tool and configured to drive the detachably receivable tool
element to perform a mechanical process on a workpiece,
wherein the extension is configured to extend between the output
unit and the detachably receivable tool element along a
longitudinal axis, with a first end portion of the extension
operably connected to the output unit and a second end portion
of the extension spaced apart from the first end portion along the
longitudinal axis and operably connected to the detachably
receivable tool element; and
a housing configured to electrically insulate the output unit
in a direction radially outwardly of the output unit relative to the
longitudinal axis.
Appeal Br. 54 (Claims App.).
REJECTIONS
1. The Examiner rejects claims 1, 7, and 8 under 35 U.S.C. § 102(a)(1) as
anticipated by Holland-Letz.2

2 Holland-Letz, US 2005/0178251 Al, pub. Aug. 18, 2005.
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2. The Examiner rejects claims 1–9 under 35 U.S.C. § 102(a)(1) as
anticipated by Welsch.3
3. The Examiner rejects claims 1–9 under 35 U.S.C. § 103 as unpatentable
over Welsch in view of Steiner4 and Webb.5
4. The Examiner rejects claims 10–16 under 35 U.S.C. § 103 as
unpatentable over Welsch in view of Steiner, Webb, and Gyorkos.6
DISCUSSION
Anticipation by Holland-Letz
With respect to claim 1, the Examiner finds that Holland-Letz
discloses an extension defined as the “inner plastic portion of 9” with a first
end connected to an output unit 9 and a second end connected to a
detachably receivable tool element 3/3a. Final Act. 12. In the Answer, the
“Examiner contends that Holland-Letz does disclose the inner insulation
plastic portion/member of sleeve 9 as being the extension and the outer
portion/member of sleeve 9,” as claimed. Ans. 6 (citing Holland-Letz ¶ 28).
However, we are persuaded of error with respect to the Examiner’s
finding that element 9 of Holland-Letz includes both an extension and an
output unit. See Appeal Br. 13. The Examiner relies on paragraph 28 of
Holland-Letz for this finding. Holland-Letz discloses that it is “possible that
the insulating sleeve . . . is built of a plurality of materials” such that “an
inner material is responsible for an insulation whereas another material
positioned at the outer surface is adapted for cooperation with the holding

3 Welsch, US 3,871,138, iss. Mar. 18, 1975.
4 Steiner et al., US 2,965,383, iss. Dec. 20, 1960.
5 Webb, US 6,295,904 B1, iss. Oct. 02, 2001.
6 Gyorkos, US 2009/0166394 Al, pub. July 2, 2009.
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device.” Holland-Letz ¶ 28. The Examiner relies on no further disclosure
regarding the use of multiple materials in Holland-Letz’s insulating sleeve.
We disagree with the Examiner that this paragraph alone supports the
finding that Holland-Letz discloses both an extension and an output unit
with the configuration claimed. This paragraph does not describe any
connection between the inner and outer portions of such a sleeve, and thus,
Holland-Letz does not necessarily disclose that a first end of the extension is
attached to the output unit. The Examiner also has not explained why the
outer portion of the insulating sleeve as described in paragraph 28 would be
considered an “output unit” as claimed.
Based on the foregoing, we do not sustain the rejection of claim 1 as
anticipated by Holland-Letz. The Examiner relies on substantially the same
findings in determining that claims 7 and 8 are anticipated by Holland-Letz.
See Final Act. 12–13. For the same reasons discussed above, we are also
persuaded of error in the rejection of these claims, and thus, we also do not
sustain the rejection of claims 7 and 8 as anticipated by Holland-Letz.
Anticipation by Welsch
With respect to each independent claim, the Examiner finds that
Welsch discloses an output unit defined by elements 50 and 16 and a
housing defined by elements “52/62 and/or 54.” Final Act. 14–18. Each of
the independent claims requires a housing that electrically insulates an
output unit in a radially outward direction. However, the Examiner has only
identified housing elements in Welsch that are radially inward of, or
longitudinally separated from, the output unit elements identified by the
Examiner. See Welsch Fig. 1. Thus, without any further explanation from
the Examiner, we agree with Appellant that it has not been established that
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such housing elements would be configured to electrically insulate the
output unit in a radially outward direction. Appeal Br. 28–29. At best, these
housing elements might provide insulation in a radially inward or
longitudinal direction. Accordingly, we are persuaded of error and we do
not sustain the rejection of claims 1–9 as anticipated by Welsch.
Obviousness
The Examiner determines, to the extent Welsch does not anticipate,
that claims 1–9 would have been obvious over the combination of Welsch,
Steiner, and Webb. Final Act. 14–19. In this rejection, the Examiner relies
on Steiner as teaching a housing that is configured to electrically insulate the
output unit of a drill; and the Examiner further relies on Webb as teaching
the use of a plurality of electrical insulators. Id. at 16–17. With respect to
Steiner, the Examiner finds:
Steiner et al. teaches a drill (14) having a drive shaft (19)
projecting from the drill with a second element/chuck (20) that
is configured to electrically insulate the output unit in a direction
radially outwardly of the output unit relative to the longitudinal
axis (chuck 20 is plastic) that drives tools 21-25 which includes
a plastic grinder (25) and a screw driving attachment (21, col. 2,
lines 1-67, col. 3, lines 11-15).
Final Act. 16. Thus, the Examiner proposes combining the housing/chuck
20 taught by Steiner with the housing taught by Welsch, identified as
elements 52/62 and/or 54 by the Examiner, to provide a plurality of
electrical insulators.
We are persuaded by Appellant’s argument that the Examiner erred in
finding that Steiner discloses a housing that is configured to electrically
insulate an output unit in a radially outward direction as required by each of
the independent claims. See Appeal Br. 30–32. Claim 1, for example,
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requires that the housing is “configured to electrically insulate the output
unit” rather than a housing that is merely capable of providing electrical
insulation. Appeal Br. 56. We construe the claims as requiring more than a
housing that is capable of electrical insulation, and rather, requiring that the
housing is designed to accomplish that function. See Aspex Eyewear, Inc. v.
Marchon Eyewear, Inc., 672 F.3d. 1335, 1349 (Fed. Cir. 2012) (noting that
claim language “configured to” is construed more narrowly than “capable
of” and holding that where claim language including the phrase “adapted to”
is to be construed consisted with “configured to” language it requires that
the structure must be “designed or configured to accomplish the specified
objective, not simply that [it] can be made to serve that purpose.”) This
construction is consistent with how one of ordinary skill in the art would
interpret the claims in light of the Specification. The purpose of the present
invention is to provide an insulation system for a tool and the Specification
discloses devices and methods for “an insulation system on a tool, in which
both tool and the operator thereof are protected from electrical voltages
which occur on a workpiece to be processed with the tool.” Spec. 2. Thus,
one of ordinary skill in the art would understand that the housing is
specifically designed to provide electrical insulation between the output unit
and the user of the tool, i.e., in a radially outward direction.
In contrast, Steiner discloses a chuck made of plastic and connector
used in a “toy electric hand drill.” Steiner col. 2, l. 5. Although Steiner
discloses the use of plastic, Steiner does not disclose that the tool is designed
to provide electrical insulation for any part of the device. Further, the
Examiner does not explain adequately why one of ordinary skill in the art
would understand Steiner’s chuck to be configured to provide electrical
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insulation. We agree with Appellant that the mere use of plastic does not
sufficiently disclose that the chuck is so configured.
Based on the foregoing, we are persuaded of error in the obviousness
rejection of each of the independent claims. We are also persuaded of error
in the rejections of the dependent claims, for which the Examiner’s findings
and determinations do not cure the deficiency in the rejection of the
independent claims. Accordingly, we do not sustain the obviousness
rejections of claims 1–16.
CONCLUSION
We REVERSE the rejections of claims 1–16.
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1, 7, 8 102(a)(1) Holland-Letz 1, 7, 8
1–9 102(a)(1) Welsch 1–9
1–9 103 Welsch, Webb 1–9
10–16 103 Welsch, Steiner,
Webb, Gyorkos
10–16
Overall
Outcome
1–16

REVERSED