Robert Bosch GmbH

Patent Trials and Appeals Board

Mar 31, 2022

2022000103 (P.T.A.B. Mar. 31, 2022)

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. 16/583,323 09/26/2019 Plamen V. Marinov 1576-2464 1065 10800 7590 03/31/2022 Maginot, Moore & Beck LLP One Indiana Square, Suite 2200 Indianapolis, IN 46204 EXAMINER DONG, LIANG ART UNIT PAPER NUMBER 3724 MAIL DATE DELIVERY MODE 03/31/2022 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 PLAMEN V. MARINOV Appeal 2022-000103 Application 16/583,323 Technology Center 3700 Before BRETT C. MARTIN, MICHELLE R. OSINSKI, and MICHAEL L. WOODS, Administrative Patent Judges. MARTIN, 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, 3, 4, 8-14, and 18-20, which are the only claims currently pending in this application. 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(a). Appellant identifies the real party in interest as Robert Bosch GmbH. Appeal Br. 2. Appeal 2022-000103 Application 16/583,323 2 CLAIMED SUBJECT MATTER The claims are directed “to drivetrains for powered saws.” Spec. ¶ 1. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A saw device comprising: a motor having a motor output shaft; a drivetrain comprising: a gear train having a first gear fixedly connected to the motor output shaft and a second gear fixedly connected to an intermediate shaft, the first gear meshing with the second gear so as to transmit rotation from the motor output shaft to the second gear; and a chain drive having a driving sprocket fixedly connected to the intermediate shaft, a driven sprocket, and a chain configured to transmit rotation of the driving sprocket to rotation of the driven sprocket; an arbor shaft fixedly connected to the driven sprocket, the arbor shaft configured to mount a saw blade such that the saw blade rotates with the arbor shaft; an upper guard configured to enclose at least a portion of the saw blade; and a motor housing in which the motor is housed, wherein the saw device possesses a saw blade diameter, and the saw blade diameter defines a saw blade extent centered at a central axis of the arbor shaft, wherein the drivetrain is located entirely below a horizontal plane defined by an uppermost point of the upper guard in a vertical plane that bisects the arbor shaft, the uppermost point being spaced apart from the saw blade extent by a distance of between 1.8% and 11% of the saw blade diameter, and wherein the motor housing is located entirely below the horizontal plane. REFERENCES The prior art relied upon by the Examiner is: Appeal 2022-000103 Application 16/583,323 3 Name Reference Date Meredith US 7,252,027 B2 Aug. 7, 2007 Cox US 2013/0055873 A1 Mar. 7, 2013 REJECTION Claims 1, 3, 4, 8-14, and 18-20 stand rejected under 35 U.S.C. § 103 as being unpatentable over Meredith and Cox. Non-final Act. 3. OPINION Obviousness The Examiner finds that Meredith teaches most of the recitations of claim 1, but adds Cox “to modify the device of Meredith to alter the transmission system of Meredith to add the driving sprocket on the intermediate shaft, change the driven gear into driven sprocket and connected via chains, as taught by Cox and Meredith himself.” Non-final Action 6. The Examiner relies on Cox and Meredith each teaching the obviousness of aspects of the combination as well as asserting that such would be a simple substitution. Id. The Examiner offers no additional explanation other than that this would be a simple substitution, i.e., no advantage or other basis is given for making this change. Appellant first argues, and we agree, that the Examiner’s proposed modification is not merely a simple substitution. Reply Br. 2. As Appellant points out, the proposed modification does not substitute “a gear system with a gear and [chain] system,” but rather amounts to “replac[ing] a single gear with an entire chain and sprocket system.” Id. at 3. Appellant is also correct that “the combined gear, chain, and sprockets performs a different function than the single gear of Meredith” in that a single gear receives “torque and Appeal 2022-000103 Application 16/583,323 4 transmit[s] it along the same axis from which the torque is received,” whereas a chain and sprocket system “receives torque, transmits that torque to a different axis, and then transmits that torque to the shifted axis.” Id. We do not agree that this amounts to a simple substitution for the reasons stated above and also note that the Examiner’s combination amounts to a much more complicated system without stating any supposed advantage for this change. Appellant further argues that both Cox and Meredith teach away from the proposed modification. Reply Br. 5. We agree with Appellant that “Meredith discourages from the Examiner’s proposed modification because it teaches minimizing overall width of the lower transmission, which would necessarily be increased by the proposed modification.” Id. We also agree with Appellant that “Cox [likewise] discourages from arranging the motor and gears beneath the upper extent of the blade guard,” which would occur in the Examiner’s combination. Id. The Examiner does not address Appellant’s argument that the modification would increase the width, contrary to Meredith’s stated purpose, and only asserts that each of Meredith and Cox “teach[] a specific way of achieving the desired dimension of the saw device” and that “Meredith does not suggest that the system would not work with a chain system.” Ans. 15. As to Cox, the Examiner asserts that any discouragement in Cox “is irrelevant [because] Meredith is the one being modified.” Id. Even if Meredith is the reference being modified, the teachings of Cox must be taken into account and the entire point of Cox is to move most of the mechanics of the device above and outside of the main saw blade housing, which results in the specific drive arrangement found in Cox. The Examiner Appeal 2022-000103 Application 16/583,323 5 has proffered no reason why one of skill in the art would make such a modification to the Meredith system. In summation, the Examiner here has done more than a simple substitution, and has actually substituted a single, simple gear for a much more complicated gear and chain system. Not only does this substitution add complexity, but it necessarily adds bulk to the system whereas a specific goal of Meredith is to reduce the width of the system. Although there are necessarily trade-offs between advantages and disadvantages in any modification, we do not see, nor has the Examiner provided any actual advantage or benefit of making the proposed substitution. We fail to see why one of ordinary skill in the art would modify a device to make it bulkier and more complicated without sufficient justification for doing so. The Examiner has not explained sufficiently how the teachings of Cox could be seen as an improvement that would have applicability to Meredith’s system. Accordingly, we conclude that the Examiner has failed to provide a reasonable basis for the substitution with rational underpinnings and thus reverse the rejection. CONCLUSION The Examiner’s rejection is reversed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3, 4, 8- 14, 18-20 103 Meredith, Cox 1, 3, 4, 8- 14, 18-20 Appeal 2022-000103 Application 16/583,323 6 REVERSED