Robert Bosch Tool Corporation et al.

Patent Trials and Appeals Board

Feb 28, 2020

15060699 - (D) (P.T.A.B. Feb. 28, 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.
15/060,699 03/04/2016 Robert S. Doumani 1576-1911 6323
10800 7590 02/28/2020
Maginot, Moore & Beck LLP
One Indiana Square, Suite 2200
Indianapolis, IN 46204
EXAMINER
LIU, HENRY Y
ART UNIT PAPER NUMBER
3654
MAIL DATE DELIVERY MODE
02/28/2020 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 ROBERT S. DOUMANI, TIMOTHY SZWEDA, and
BRIAN TAYLOR
Appeal 2019-004636
Application 15/060,699
Technology Center 3600
Before JENNIFER D. BAHR, JAMES P. CALVE, and
LEE L. STEPINA, Administrative Patent Judges.
BAHR, 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 1–7 and 15.2 We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies as real parties in interest Robert Bosch GmbH
and Robert Bosch Tool Corp. Appeal Br. 2.
2 Claims 8–14, which are the only other pending claims, have been
withdrawn from consideration. See Final Act. 1 (Office Action Summary).
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CLAIMED SUBJECT MATTER
Appellant’s invention is directed to power tools with exposed shaping
devices and, more particularly, to a table saw assembly with a belt
electrically isolated from an arbor shaft and an adjustment mechanism for
selectively positioning a pulley along its axis of rotation for alignment of the
system. Spec. ¶¶ 1, 8, 9. Claim 1, reproduced below, is the only
independent claim involved in this appeal and is illustrative of the claimed
subject matter.3
1. A table saw assembly comprising:
a motor assembly;
an electrically conductive belt operably connected to the
motor assembly;
an arbor shaft operably connected to the belt;
a drop arm assembly rotatably supporting the arbor shaft;
a first pulley rotatably supporting the belt, the first pulley
including an inner component defining an inner bore and an outer
component defining an outer surface, the first pulley configured
to electrically isolate the inner bore from the outer surface; and
an alignment adjustment mechanism operably connected
to the first pulley, the alignment adjustment mechanism selected
to compensate for tolerance build up associated with the first
pulley so as to selectably position the first pulley along an axis
of rotation of the first pulley.

3 Claim 7 as reproduced in the Claims Appendix in the Appeal Brief
contains an error. See Appeal Br. 18 (Claims App.). The Examiner did not
enter the Amendment filed December 14, 2018, which attempted to insert
the term “first” before “pulley” in claim 7. See Adv. Act. (Jan. 2, 2019).
Thus, unless otherwise noted, we refer herein to the claims in the
amendment filed May 29, 2018, which is the last claims amendment entered
in the present application.
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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Eck US 2005/0049096 A1 Mar. 3, 2005
Garcia US 2005/0188806 A1 Sept. 1, 2005
Choi US 2012/0285616 A1 Nov. 15, 2012

REJECTION
Claims 1–7 and 15 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Garcia, Choi, and Eck.
OPINION
Claims 1 and 2:
The Examiner found that Garcia discloses a table saw assembly
comprising most of the features of claim 1, but “does not teach an
electrically conductive belt; the first pulley configured to electrically isolate
the inner bore from the outer surface.” Final Act. 3–4. The Examiner relied
on Choi for an electrically conductive belt and on Eck for a pulley
configured to electrically isolate the inner bore from the outer surface. Id. at
4.
Appellant argues that Garcia’s spacers 220 and 222 do not satisfy the
“alignment adjustment mechanism” limitation of claim 1 because Garcia
does not discuss “uniquely” sizing the pulley spacers “for each particular
device to account for the tolerance build-up,” which Appellant asserts is
“unique to a particular device.” Appeal Br. 4–5. The Examiner responds
that the “compensate for tolerance build up” limitation of claim 1 “is a
property or purpose limitation and not a structural limitation.” Ans. 4.
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According to the Examiner, “since the assembled structure [of Garcia] is in
alignment and works properly, all adjustments, inconsistencies and tolerance
build-up have been compensated for . . . by the spacers.” Id. (citing Garcia
¶ 58).
Appellant asserts that “claim 1 is a product by process claim” in that,
“[w]hile ‘tolerance build up’ is in fact a structural property of an assembly,
the limitation in which the phrase ‘tolerance build up’ is found is a process
limitation.” Reply Br. 2–3. According to Appellant, “claim 1 establishes a
direct relationship between the selected alignment adjustment mechanism
and the actual tolerance build up.” Id. Appellant adds that, “since tolerance
build up is unique to each individual assembly, an alignment adjustment
mechanism in accordance with claim 1 is required to be specifically
identified for a particular device based upon the actual and unique tolerance
build up of that particular device” and that “simply because the device of
Garcia is sufficiently aligned to work properly, does not necessarily mean
that tolerance build up has been compensated for by the spacers.” Id. at 3–4.
Appellant explains that “[f]or example, if manufacturing processes are
tightly controlled so that the possible range of misalignment is beneath the
threshold needed for the particular configuration of Garcia to function
properly, then there is no need for tolerance build up compensation using an
alignment device.” Id. at 4.
The Examiner has the better position on this issue. Accepting
Appellant’s position that the “selected to compensate for tolerance build up”
limitation of claim 1 is a product-by-process limitation, for the reasons that
follow, this limitation does not patentably distinguish over the structure of
Garcia. The patentability of a product does not depend on its method of
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production. If the product in a product-by-process claim is the same as or
obvious from a product of the prior art, the claim is unpatentable even
though the prior art product was made by a different process. In re Thorpe,
777 F.2d 695, 697 (Fed. Cir. 1985) (“[E]ven though product-by-process
claims are limited by and defined by the process, determination of
patentability is based on the product itself.”).
Garcia’s pulley spacers 220 and 222 laterally align pulley 121 along
the axis of arbor shaft 200. Garcia ¶ 58; Fig. 11C. This lateral alignment
necessarily positions pulley 121 in relation to other components of the table
saw assembly with which the pulley cooperates, such as drive belt 116 and
motor pulley 158, in order to form a properly functioning device. To
conclude that an artisan would interpret Garcia otherwise, namely, such that
spacers 220 and 222 would align pulley 121 along arbor shaft 200 such that
pulley 121 would not cooperate with other components to form a properly
functioning device, would require a presumption of a lack of skill on the part
of the artisan, which is contrary to well-established principles of
obviousness. See In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985). What a
reference teaches or suggests must be examined in the context of the
knowledge, skill, and reasoning ability of a skilled artisan and is not “limited
to what a reference specifically ‘talks about’ or what is specifically
‘mentioned’ or ‘written’ in the reference.” Syntex (U.S.A.) LLC v. Apotex,
Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005).
Appellant’s table saw assembly, likewise, comprises an alignment
adjustment mechanism (shim 526) that aligns pulley 192 so as to be properly
positioned in relation to other components of the device, such as belt 162
and motor end pulley 166. See Spec. ¶¶ 168–169. Thus, like Appellant’s
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claimed assembly, Garcia’s table saw assembly comprises a pulley aligned
along its axis of rotation so as to be properly positioned in relation to other
components of the device to function as intended. Appellant’s product-by-
process claim 1 achieves this final product (a table saw assembly with a
pulley aligned along its axis of rotation to properly function with other
components of the assembly) by means of an alignment adjustment
mechanism selected to compensate for tolerance build up associated with the
first pulley. However, the final product (the table saw assembly, with a
properly aligned pulley) is the same whether (i) the assembler assembled the
table saw assembly using a universal spacer/shim that is the same
spacer/shim used in every other table saw assembly4 or (ii) the assembler
made adjustments to the spacer/shim, either by selecting from among a
plurality of differently sized spacers/shims or by machining a universal
spacer/shim, to compensate for tolerance build up associated with the first
pulley. Notably, claim 1 is not directed to a process of assembling a table
saw assembly, and thus does not require an affirmative step of altering an
alignment adjustment mechanism or selecting from a plurality of differently
sized alignment adjustment mechanisms. Nor does claim 1 recite a plurality
of differently sized alignment adjustment mechanisms or an adjustable
alignment mechanism.
Appellant also contests the Examiner’s finding that Eck teaches “a
pulley configured to electrically isolate the inner bore from the outer surface

4 This might be the case, for example, where manufacturing processes are so
tightly controlled that the possible range of misalignment using the universal
spacer/shim is beneath the threshold needed for the particular configuration
to function properly. See Reply Br. 4.
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of the pulley.” Appeal Br. 7. In particular, Appellant notes that Eck does
not discuss the electrical characteristics of either the metal or the plastic of
the pulley. Id. Thus, Appellant urges that the Examiner must establish by
inherency that Eck’s pulley has the claimed characteristic. Id. Appellant
contends that “the Examiner has failed to establish that all plastics are non-
conductive.” Id. (citing evidence that conductive plastics are known).
Appellant’s argument is misplaced. The Examiner need not establish
that all plastics are non-conductive to support the finding that Eck discloses
a pulley configured to electrically isolate the inner bore from the outer
surface of the pulley. Eck discloses a pulley construction comprising outer
abrasion resistant liner 18, molded plastic body 12, and tubular bearing
insert 14. Eck, Figs. 1, 2; ¶¶ 16–18. Eck teaches that suitable polymeric
materials for the molded plastic body include polyamides, such as nylons,
polyesters and polyurethanes, which are known to have good electrical
insulating properties, but can be made conductive by adding conductive
materials to them.5 Id. ¶ 17. Eck teaches that the polymeric material “may
be compounded with additional fillers, modifiers or reinforcing agents as
determined for a particular application.” Id. (emphasis added). Eck teaches
that a preferred polymeric material contains a fibrous glass reinforcing
material, which also is well known to be an excellent electrical insulator. Id.
Thus, although Eck does not explicitly exclude polymeric materials
containing electrically conductive additives as suitable for molded plastic

5 The “conductive plastic” alluded to in US 9,072,162 (“Finley”), cited by
Appellant as evidence that “electrically conductive plastics are known”
(Appeal Br. 7), is made electrically conductive by adding conductive
particles or fibers to polymers which are otherwise electrically non-
conductive. See Finley 4:53–60.
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body 12, Eck’s teachings encompass polymeric materials that do not contain
electrically conductive additives. As such, Eck teaches embodiments that
are electrically insulating. Eck therefore supports the Examiner’s finding
that Eck teaches a pulley “configured to electrically isolate the inner bore
from the outer surface” (Final Act. 4).
Appellant next attacks the Examiner’s stated rationales for modifying
Garcia’s pulley 121 by using a pulley configured to electrically isolate the
inner bore from the outer bore. Appeal Br. 8. One reason the Examiner
articulated for the modification is “so the pulley is lightweight and durable.”
Final Act. 4. Appellant argues that the Examiner has not identified in any of
the references a teaching that Eck’s pulley would be more lightweight or
durable than Garcia’s pulley. Appeal Br. 8. This argument is unavailing
because the Examiner “did not state that the pulley was necessarily lighter or
more durable than the pulley in [Garcia], just that it was lightweight and
durable.” Ans. 6. The modification proposed by the Examiner is nothing
more than the simple substitution of one known element (pulley material or
construction) for another known in the art. “[W]hen a patent claims a
structure already known in the prior art that is altered by the mere
substitution of one element for another known in the field, the combination
must do more than yield a predictable result.” KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 416 (2007).
Appellant also contends that “the Examiner has failed to establish that
being ‘lightweight’ would be an advantage in the device of Garcia” and
asserts that “the device of Garcia is a cabinet saw and it is notoriously well
known that weight is desired in cabinet saws to provide increased accuracy.”
Appeal Br. 8. Appellant does not provide any evidence to support the
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assertion that weight is desired in cabinet saws. Accordingly, Appellant’s
assertion amounts to unsupported attorney argument and is entitled to little,
if any, weight. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997).
Moreover, even assuming that weight is desirable in cabinet saws to provide
increased accuracy, as Appellant asserts, Appellant does not assert, much
less show, that heavier pulleys, in particular, would be desirable to increase
accuracy. The Examiner finds that “a lighter pulley would allow higher saw
speeds, lower power consumption, and require a less powerful motor
depending on the application” (Ans. 6), and Appellant does not specifically
contest this finding.
Appellant additionally argues that “the Examiner has failed to explain
why one of skill in the art would first modify the device of Garcia so as to
reduce the potential for static discharge (by using a conductive belt), and
then electrically isolate the belt so as to create the potential for static
discharge.” Appeal Br. 8. As mentioned above, the Examiner’s stated
rationale to use a pulley construction including a polymeric material as
taught by Eck to provide a lightweight and durable pulley amounts to a
simple substitution of one known element (pulley material or construction)
for another known in the art and, thus, constitutes sufficient rationale for the
proposed modification. Accordingly, the additional rationale, namely, “to
isolate the assembly from static” (Final Act. 4), is superfluous.
To the extent that Appellant may be suggesting that using an arbor
pulley that electrically isolates the inner bore from the outer surface would
be inconsistent with, or counter to, providing an electrically conductive belt
“to reduce the danger of ignition from static electricity” (Final Act. 4) as
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taught by Choi, we disagree.6 Appellant’s argument seems to presume that
the only electrical path for dissipation of static charge would be through the
arbor pulley and arbor shaft. However, Appellant does not explain why
other paths, such as through the motor pulley and motor shaft, or other
ground paths in contact with the belt, would not be feasible for dissipating
static charge from the belt. Further, Eck’s pulley comprises outer peripheral
liner 18 made of metal. Eck ¶ 18. The Examiner states that “static may be
isolated from the assembly and could be dissipated by the metal on the
pulley surface and the conductive components of the belt.” Ans. 5.
Appellant does not specifically contest this statement.
For the above reasons, Appellant fails to apprise us of error in the
rejection of claim 1. Accordingly, we sustain the rejection of claim 1, as
well as claim 2, for which Appellant relies solely on the arguments presented
for claim 1 (see Appeal Br. 9) and which thus falls with claim 1 (see
37 C.F.R. § 41.37(c)(1)(iv)), as unpatentable over Garcia, Choi, and Eck.7

6 Further, any such suggestion would appear to be at odds with Appellant’s
disclosed and claimed invention, which provides an electrically conductive
belt to dissipate static electricity, as well as a first pulley that electrically
isolates the inner bore from the outer surface to electrically isolate the belt
from the arbor shaft. See Spec. ¶¶ 7–9.
7 The present application is related to Application 15/060,693, which also
claims benefit of provisional applications 62/131,977 and 62/132,004 and
which is also on appeal to the Board (Appeal No. 2019-004706). We note
that claim 1 before us in the present appeal includes substantially all of the
limitations recited in claim 1 before us in Appeal No. 2019-004706,
including “a drop arm assembly rotatably supporting the arbor shaft,” and
that both claim 1 herein and claim 1 in Appeal No. 2019-004706 are rejected
under 35 U.S.C. § 103 as unpatentable over Garcia, Choi, and Eck, with the
Examiner reading the “drop arm assembly” in both cases on elements 104,
125, and 127 of Garcia. We reverse the rejection in Appeal No. 2019-
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Claims 3–5:
The Examiner withdrew the rejection of claim 3 set forth in the Final
Action and issued a new ground of rejection of claim 3 in the Answer. See
Ans. 3, 4. The Examiner reads the claimed “shim lip” on the step of
Garcia’s arbor shaft 200 abutting second bearing 230. Ans. 3.
Appellant argues that this step of Garcia’s arbor shaft 200 is not a
“shim lip” because it “is not structurally related to any ‘shim’ or alignment
adjustment mechanism since the spacer 222 (alleged to be the alignment
adjustment mechanism) is positioned above the lip on the larger diameter

004706 because Appellant persuasively argued in that appeal that the
rejection was predicated on an improper construction of “drop arm
assembly.” We recognize the result in the present appeal (affirmance of the
rejection of claim 1) might appear to be inconsistent with the result (reversal
of the rejection of claim 1) in Appeal No. 2019-004706. However,
Appellant does not present any arguments in the Appeal Brief or Reply Brief
in the present appeal that the Examiner erred in reading the “drop arm
assembly” in claim 1 on elements 104, 125, and 127 of Garcia. We review
each case based on the written record before us in that case, and, as a general
matter, we address only the issues raised by appellants in their briefs. Any
arguments or authorities not included in the Appeal Brief or Reply Brief are
not considered. See 37 C.F.R. § 41.37(c)(1)(vii); Ex parte Frye, 94 USPQ2d
1072, 1075–76 (BPAI 2010) (precedential) (“If an appellant fails to present
arguments on a particular issue — or, more broadly, on a particular rejection
— the Board will not, as a general matter, unilaterally review those
uncontested aspects of the rejection.”). Our reviewing court has upheld this
practice of requiring an appellant to identify error in an Examiner’s
rejection. See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (approving
of Board’s practice as set forth in Ex parte Frye of requiring appellants to
identify examiner error in a rejection). In the event of further prosecution of
the present application, such as by filing a request for continued
examination, Appellant might wish to consider whether arguments presented
in Appeal 2019-004706, but not presented in the present appeal, might be
pertinent to the claims in the present application.
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portion of the shaft 200.” Reply Br. 8. Appellant asserts that “the plain
meaning of ‘shim lip’ is an edge or rim associated in some manner with a
thin piece of material,” but that Appellant’s Specification narrows the
meaning of “shim lip.” Id. at 9 (citing Spec. ¶ 168; Fig. 53). According to
Appellant, “the [S]pecification consistently uses the term ‘shim lip’ to
identify an edge or rim against which a shim is positioned, be it on the arbor
shaft or the inner component of the pulley.” Id. Appellant asserts that,
“[t]herefore, a reasonable construction of the limitation ‘shim lip’ in light of
the Appellant’s [S]pecification is ‘an edge or rim configured to contact a
component which adjusts alignment along the axis of alignment.” Id. at 10.
Appellant’s arguments are not persuasive because they are predicated
on an unduly narrow interpretation of the language of claim 3 and, in
particular, the term “shim lip.” Appellant does not assert, much less direct
our attention to any evidence in the record suggesting, that “shim lip” has a
recognized meaning within the art. As Appellant acknowledges, Appellant’s
Specification and drawings describe “shim lip 528” as a step or rim on arbor
shaft 240 where the shaft transitions from a smaller diameter to a larger
diameter. See Reply Br. 9; Spec. ¶ 168; Fig. 53. The Specification does not
describe “shim lip 528” as including a shim or describe shim 526 as
including a lip. See Appeal Br. 9–10 (stating that “[t]he shim 526 is never
identified as including a lip”). Although Appellant’s Figure 53 depicts shim
526 as abutting against and contacting substantially the entire shim lip, claim
3 does not recite such a relationship between the shim lip and a shim (or
between the shim lip and the recited alignment adjustment mechanism). It
would be improper for us to read such unclaimed limitations from the
drawings and Specification into claim 3, and we decline to do so. See
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SuperGuide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir.
2004) (“Though understanding the claim language may be aided by the
explanations contained in the written description, it is important not to
import into a claim limitations that are not a part of the claim. For example,
a particular embodiment appearing in the written description may not be
read into a claim when the claim language is broader than the
embodiment.”).
The step of Garcia’s arbor shaft 200 on which the Examiner reads the
claimed “shim lip” is the same structure Appellant’s Specification identifies
as “shim lip 528,” namely, a step or rim on the shaft where the shaft
transitions from a smaller diameter to a larger diameter. Further, the inner
race of Garcia’s bearing 230 abuts up against this lip to serve as a stop for
the right end of pulley spacer 222, as shown in Figure 11C, to properly align
pulley 121 along arbor shaft 200. Thus, Garcia’s spacer 222 is functionally
associated with this lip, which thus defines the right-most end of spacer 222,
as shown in Figure 11C, and is located between the lip and the inner
component of pulley 121. Appellant’s argument, which, as discussed above,
is predicated on an unduly narrow construction of “shim lip,” fails to
persuade us that the Examiner erred in reading the claimed “shim lip” on this
step or rim on Garcia’s arbor shaft.
For the above reasons, Appellant does not apprise us of error in the
rejection of claim 3. Accordingly, we sustain the rejection of claim 3, as
well as claims 4 and 5, for which Appellant relies solely on the arguments
presented for claim 3 (Appeal Br. 11), as unpatentable over Garcia, Choi,
and Eck, which we thus sustain.
Claim 6:
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In contesting the rejection of claim 6, Appellant relies on the
arguments presented against the rejection of claims 1 and 3. See Appeal
Br. 11–12. These arguments fail to apprise us of error in the rejection of
claims 1 and 3, for the reasons discussed above, and, likewise, fail to apprise
us of error in the rejection of claim 6 as unpatentable over Garcia, Choi, and
Eck, which we thus sustain.
Claim 7:
Claim 7 depends from claim 1 and further recites that “the pulley is
fixedly attached to a drive shaft of the motor assembly.” Notably, claim 7
refers to “the pulley,” rather than “the first pulley.” Nevertheless, because
claim 1, from which claim 7 depends, recites only one pulley, namely, the
“first pulley,” we construe “the pulley” in claim 7 as referring to the “first
pulley” in claim 1.
Although Appellant’s Specification describes primarily the shim
(alignment adjustment mechanism) being used in connection with driven
pulley 192, and Appellant’s Figure 53 depicts the shim on arbor shaft 240,
Appellant points, inter alia, to paragraph 169 of the Specification for support
for an alignment mechanism associated with the motor pulley. Reply Br. 11.
Paragraph 169 of the Specification discloses:
The shim 526 provides the correct alignment between the
pulley 192 and the pulley 166. The motor end pulley 166
attaches to the motor assembly 160. The driven pulley 192 is
attached to the drop arm assembly 194. Because of the
tolerance build up, it is possible for the two pulleys 192/166 to
be offset. Accordingly, in this embodiment one of the pulleys
is fixed and the other is adjustable.
The Examiner’s finding that Garcia’s pulley 121 is fixedly attached to
the drive shaft of motor assembly 114 is predicated on an unreasonable
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interpretation of “fixedly attached to a drive shaft of the motor assembly” as
encompassing “the situation where the first pulley (121) is fixedly attached
to a drive shaft of the motor assembly (114) through the drive belt (116) and
the drive pulley (shaft protruding from 114)” as disclosed in Garcia. Final
Act. 5; Ans. 6. Accordingly, we do not sustain the rejection of claim 7 as
unpatentable over Garcia, Choi, and Eck.
Claim 15:
Claim 15 depends from claim 1 and further recites a second pulley
whose position along its axis of rotation “is not selected to compensate for
tolerance build up associated with the second pulley, and the alignment
adjustment mechanism is further selected to compensate for tolerance build
up associated with the second pulley.” Appellant argues that because Garcia
does not discuss or illustrate how motor pulley 158 is attached to the motor
shaft, the Examiner must establish that Garcia’s pulley 158 “is inherently
positioned at a location which does not compensate for tolerance [build up]”
and has not done so. Appeal Br. 15–16. According to Appellant, “the
Examiner must establish that it is not possible to position a pulley at a
location which compensates for tolerance build-up” and “[t]here has been no
such showing.” Id. at 16.
Notably, claim 15 does not recite that the position of the second
pulley does not compensate for tolerance build up. Rather, claim 15 recites
that the second pulley position “is not selected to compensate for tolerance
build up associated with the second pulley.” In keeping with Appellant’s
position, discussed above, that the “selected to compensate for tolerance
build up” limitations are product-by-process limitations, we emphasize that
the patentability of a product does not depend on its method of production
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and that, if the product in a product-by-process claim is the same as or
obvious from a product of the prior art, the claim is unpatentable even
though the prior art product was made by a different process. See In re
Thorpe, 777 F.2d at 697.
As discussed above, the final product in Appellant’s invention (as
disclosed and as claimed) is a table saw assembly with a first pulley aligned
along its axis of rotation to properly function with other components of the
assembly, including a second pulley and a belt rotatably supported by the
first and second pulleys, to form a properly functioning assembly. As also
discussed above, like Appellant’s claimed assembly, Garcia’s table saw
assembly comprises a pulley aligned along its axis of rotation so as to be
properly positioned in relation to other components of the device to function
as intended. Appellant’s product-by-process claim 15 achieves this final
product by means of an alignment adjustment mechanism selected to
compensate for tolerance build up associated with the first pulley and a
second pulley whose position is not selected to compensate for tolerance
build up. However, the final product is the same whether (i) the assembler
assembled the table saw assembly using a universal spacer/shim that is the
same spacer/shim used in every other table saw assembly (for example,
where manufacturing processes are tightly controlled) or (ii) the assembler
made adjustments to the spacer/shim to compensate for tolerance build up
associated with the first pulley and/or the second pulley. Further, the final
product is the same whether or not the assembler took special steps, such as
using an appropriate shim or spacer, to ensure the second pulley would be
positioned along its axis of rotation so as to be properly aligned with the first
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pulley. The product-by-process language of claim 15, therefore, does not
patentably distinguish over Garcia’s table saw assembly.
Thus, Appellant fails to apprise us of error in the rejection of claim 15
as unpatentable over Garcia, Choi, and Eck, which we thus sustain.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–7, 15 103 Garcia, Choi, Eck 1–6, 15 7

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED IN PART