Stephen Gass

Patent Trials and Appeals Board

May 24, 2021

2020006257 (P.T.A.B. May. 24, 2021)

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.
13/854,270 04/01/2013 Stephen F. Gass SDT 306H 8396
27630 7590 05/24/2021
SawStop Holding LLC
11555 SW Myslony Street
Tualatin, OR 97062
EXAMINER
ALIE, GHASSEM
ART UNIT PAPER NUMBER
3724
MAIL DATE DELIVERY MODE
05/24/2021 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 STEPHEN F. GASS
Appeal 2020-006257
Application 13/854,270
Technology Center 3700
Before DANIEL S. SONG, EDWARD A. BROWN, and
MICHAEL J. FITZPATRICK, Administrative Patent Judges.
SONG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s decision to reject claims 4 and 7. 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). The Appellant identifies the real party in interest as
SawStop Holding, LLC, which was formerly known as SD3, LLC. Appeal
Br. 1.
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Application 13/854,270

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CLAIMED SUBJECT MATTER
The claims are directed to a table saw having a detection system and a
means for retracting the blade. Claims 4 and 7 are reproduced below:
4. A table saw comprising:
a work surface defining a cutting region;
a circular blade positioned to extend at least partially into the
cutting region;
a detection system adapted to detect contact between a person
and the blade; and
means for retracting the blade below the work surface within
approximately 14 milliseconds after the contact is detected by the
detection system.

7. A table saw comprising:
a work surface defining a cutting region;
a circular blade positioned to extend at least partially into the
cutting region;
an elevation mechanism configured to raise and lower the blade
between a fully elevated position where at least a part of the blade is
in the cutting region and a fully lowered position where the blade is
below the work surface;
a detection system adapted to detect contact between a person
and the blade; and
means for retracting the blade from the fully elevated position
to the fully lowered position within 14 milliseconds after the contact
is detected by the detection system.
Appeal Br. 29 (Claims App.).
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Application 13/854,270

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REJECTIONS2
1. Claim 4 is rejected on the ground of non-statutory double
patenting as being unpatentable over claims 2 and 8 of Gass (“the ’927
Patent”) in view of Hauer. Final Act. 4; Ans. 3.
2. Claim 7 is rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement. Final Act. 7.
OPINION
Rejection 1: Claim 4 – Double Patenting
The Examiner rejects claim 4 on the ground of non-statutory double
patenting as being unpatentable over claims 2 and 8 of Gass (US Patent No.
7,895,927 B2, iss. March 1, 2011 (“the ’927 Patent”)) in view of Hauer (DE
1960977, publ. June 4, 1998 (citations to the English translation of record).
Final Act. 4; Ans. 3. In performing a one-way determination of patentable
distinctness, the Examiner finds that claims 2 and 8 of the ’927 Patent claim
the invention as substantially recited in the appealed claim 4, and further
relies on Hauer as establishing that “the use of a table saw having a detection
mechanism and means for retracting the blade blew [sic, below] a work
surface is old and well known in the art.” Final Act. 5. Thus, the Examiner
concludes that “[i]t would have been obvious to a person of ordinary skill in
the art to select the woodworking machine of claim 2 of the [’927 Patent] as
a table saw, as taught by Hauer, in order provide a safety mechanism for a
table saw.” Final Act. 5. In that regard, the Examiner observes that claim 4

2 The Examiner has withdrawn the indefiniteness rejection of claim 7, and
the prior art obviousness rejections of claim 4 based on 35 U.S.C. § 103(a).
Ans. 4.

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Application 13/854,270

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“does not disclose any specific[s] of the table saw.” Final Act. 4. As to the
recitation “means for retracting the blade,” the Examiner determines that this
limitation is a means plus function limitation under 35 U.S.C. § 112, sixth
paragraph. Final Act. 6.
The Appellant initially argues that “[t]his rejection should be reversed
as improper because it is not based on a statute; rather, it is based on a
judicially created doctrine.” Appeal Br. 5; see also Reply Br. 3. The
Appellant argues that “Congress has not given courts power to create
substantive patent law, and therefore, the judicially created doctrine of non-
statutory double patenting is ultra vires,” and that “Congress also has not
delegated authority to the Patent Office to generate regulatory law
concerning non-statutory double patenting.” Appeal Br. 5; see also Reply
Br. 3. The Appellant also asserts that:
the primary basis for the judicial doctrine of non-statutory
double patenting, i.e., to prevent an improper extension of
patent term, is inapplicable for an application that would, if
granted, result in a patent with a term measured from the
earliest filing date instead of the issue date, as is the case here.
Appeal Br. 5–6.
The Appellant further argues that the other justification for non-
statutory double patenting of “preventing possible harassment by multiple
patent owners, could be addressed by a commitment to maintain common
ownership of the patents at issue rather than a disclaimer of patent term.”
Appeal Br. 6. Thus, the Appellant argues that “the doctrine is now dated and
unwarranted, and should be retired.” Reply Br. 4.
The Appellant’s arguments are unpersuasive before the Board. As the
Appellant points out, non-statutory double patenting is a judicially created
doctrine, and importantly, as noted by the Examiner, “the Federal Circuit[,]
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has explicitly upheld the doctrine of non-statutory double patenting.” Ans. 5
(citing Eli Lilly & Co. v. Barr Labs, Inc., 251 F.3d 955, 968 (Fed. Cir.
2001)). Accordingly, we decline the Appellant’s request to retire a doctrine
upheld by our reviewing court. 35 U.S.C. § 141(a) (“An applicant who is
dissatisfied with the final decision in an appeal to the Patent Trial and
Appeal Board under section 134(a) may appeal the Board’s decision to the
United States Court of Appeals for the Federal Circuit.”).
The Appellant also argues that appealed claim 4 is nonetheless
patentably distinct over the claim 2 of the ’927 Patent. Appeal Br. 6. In that
regard, the Appellant points out that claim 4 recites “[a] table saw” but
claims 2 and 8 of the ’927 Patent merely recite “a woodworking machine.”
Appeal Br. 7; Reply Br. 4 (claim 8 recites “[a] woodworking machine.”).
This argument is unpersuasive because it argues double patenting based on
anticipation, i.e., based on statutory double patenting, whereas the applied
double patenting rejection is based on the combination of the claims of the
’927 Patent and Hauer. Final Act. 4–5.
The Appellant also argues that appealed claim 4 recites “a detection
system adapted to detect contact between a person and the blade” but claim
2 of the ’927 Patent merely recites the action of “detecting [contact] between
a person and the cutting tool,” and “does so without specifying how that
action is to be performed or what is to perform that action.” Appeal Br. 7.
However, we observe that claim 7 of the ’927 Patent on which claim 8
depends specifically recites “a detection system adapted to detect a
dangerous condition between a person and the cutting tool.” ’927 Patent,
claim 7. We discern no patentable distinction between a “blade” and a
“cutting tool,” and observe that contact between a person and the blade
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would be a dangerous condition between a person and the blade. See Ans. 5
(“the dangerous condition is contact between a person and the cutting
tool.”).
The Appellant further argues that claim 4 recites “[a] means for
retracting the blade below the work surface within approximately 14
milliseconds after the contact is detected by the detection system,” which is
a means-plus-function limitation, and thus, “must be construed to cover the
corresponding structure in the specification and equivalents.” Appeal Br. 7–
8. The Appellant argues that the structure disclosed in the specification
corresponding to the recited “means for retracting the blade” includes
reaction subsystem 24 in which “the blade retracts by pivoting about a point
which is offset from the axis of rotation of the blade.” Appeal Br. 8 (citing
Spec. pg. 34, l. 4–pg. 57, l. 20; pg. 70, l. 1pg. 72, l. 14; Figs. 3–21, 23–32,
47–55); see also Reply Br. 5. According to the Appellant, although the
claims of the ’927 Patent recite retracting “the cutting tool below the work
surface within approximately 14 milliseconds,” the claims do not recite
“structure wherein the blade retracts by pivoting about a point which is
offset from the axis of rotation of the blade.” Appeal Br. 8.
We agree with the Appellant. As noted above, the Examiner
understands the limitation “means for retracting the blade” to be a means
plus function limitation under 35 U.S.C. § 112, sixth paragraph. Final Act.
6. However, the Examiner does not properly establish what structure is
disclosed in the Appellant’s specification, and what the equivalent structures
would be, that are encompassed by the recited “means for retracting the
blade” of the appealed claim 4. Indeed, we agree with the Appellant that in
view of the specification that the recited “means for retracting the blade” at
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least includes reaction subsystem 24 in which “the blade retracts by pivoting
about a point which is offset from the axis of rotation of the blade.” Appeal
Br. 8
Moreover, the Examiner’s reliance on Hauer is not helpful in that it is
merely cited for establishing that “the use of a table saw having a detection
mechanism and means for retracting the blade blew [sic, below] a work
surface is old and well known in the art,” and not for any particular structure
of Hauer associated with blade retraction. Final Act. 5. In that regard, the
Examiner does not address the Appellant’s argument that the structure of
Hauer uses a pneumatic cylinder to raise and lower the blade, in contrast to
the recited “means for retracting.” Appeal Br. 10.3
The Examiner nonetheless responds that “[i]n this case, the reaction
system that includes explosive (as recited in claim 12 of the [’972 Patent]) is
the same reaction system set forth in the current application.” Ans. 5.
However, even if that is true, the Appellant is correct that the Examiner’s
arguments “do not address the fact that the structure disclosed in applicant’s
specification corresponding to the recited ‘means’ retracts the blade by
pivoting about a point offset from the axis of rotation of the blade.” Reply
Br. 5–6.
Therefore, in view of the above, we reverse the Examiner’s rejection
of claim 4 on the ground of non-statutory double patenting as being
unpatentable over claims 2 and 8 of the ’972 Patent in view of Hauer.

3 The Appellant further relies on a previous Board decision which
considered the Hauer reference, and found that “[o]n balance, we believe the
movement of the blade, arbor, and motor in Hauer is by a simple translation
downwardly, as Appellant argued.” Ex parte Stephen F. Gass, Decision on
Request for Rehearing, Appeal 2009-004424 (BPAI 2011) at 2.
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Rejection 2: Claim 7 – Written Description
The Examiner rejects claim 7 as failing to comply with the written
description requirement, finding that the original disclosure “does not
describe” the recited: “elevation mechanism”; “a fully elevated position”; “a
fully lowered position”; and “means for retracting the blade” and how this
means “is distinguished from the elevation mechanism.” Final Act. 7–8.
The Examiner also finds that the specification lacks written descriptive
support as to the recited 14 milliseconds limit; “how the means for retracting
can retract the blade when the blade is engaged by the elevation
mechanism”; or how the retraction can be calculated or measured to be
within 14 milliseconds. Final Act. 8.
However, the Appellant has provided specific citations in rebuttal in
its Appeal Brief. See Appeal Br. 11–17. The Examiner does not
substantively address these rebuttals, except for the limitation “a fully
elevated position,” thus, leaving unclear as to the status of the various
limitations as to the written description rejection. Presuming that the written
description rejection as to these unaddressed limitations are maintained, we
briefly discuss them below prior to addressing the limitation “a fully
elevated position”. See Ans. 5–6.
As to the “elevation mechanism,” the Appellant correctly points out
that the specification “describes exemplary embodiments of elevation
mechanisms.” Appeal Br. 11–12 (citing Spec. pg. 35, l. 3–16 et seq.; pg. 58,
l. 19–23; pg. 63, l. 3–pg. 64, l. 22; Figs. 4, 40–50). The Appellant also
argues that the specification discloses “a fully lowered position” when it
teaches that “[t]he blade will move down to the extent permitted by the
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contact between rack 310 and worm gear 307.” Appeal Br. 12 (citing Spec.
pg. 36, ll. 13–14). Although the Examiner disagrees with the Appellant,
stating that “[i]n this case, ‘the fully retracted position’ of the blade is the
position of the blade where the blade is ‘completely below table 303,’” it is
apparent from the Answer that the Examiner has conceded that the
specification provides adequate written descriptive support for the limitation
“the fully retracted position.” Ans. 6 (citing Spec. pg. 32, ll. 20–24; pg. 33,
ll. 1–7).
As to “means for retracting the blade,” this is a means plus function
limitation as discussed above, and we agree with the Appellant that it is
supported by the structure disclosed in the specification for performing the
recited function. Appeal Br. 15 (citing Spec. pg. 34, l. 4–pg. 57, l. 20; pg.
70, l. 1––pg. 72, l. 14; Figs. 3–21, 23–32, 47–55). The Examiner also
questioned how the means for retracting the blade is distinguished from the
elevation mechanism. Final Act. 8. However, as the Appellant explains,
claim 7 itself discloses that the “means for retracting” is
different than the “elevation mechanism” because the “means
for retracting” is configured to retract the blade “within 14
milliseconds after the contact is detected by the detection
system” while the “elevation mechanism” is what a person uses
to raise and lower the blade during normal use of the saw.
Appeal Br. 15.
We do not view the fact that the means for retracting may share, or
interact with, certain components of the elevation mechanism to be
problematic.
The Examiner also finds that the claimed 14 milliseconds lacks
written descriptive support, but as the Appellant points out, the specification
specifically states that “the safety system depicted in Figs. 3 and 4 and
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described above has been shown to retract the blade completely below table
303 within approximately 14 milliseconds after contact is detected.” Final
Act. 8; Appeal Br. 16 (quoting Spec. pg. 38, ll. 1–3).
The Examiner further finds that the specification does not disclose
“how the means for retracting can retract the blade when the blade is
engaged by the elevation mechanism to be positioned in a fully elevated
position.” Final Act. 8. However, we agree with the Appellant that the
specification “describes at least two embodiments that disclose that very
point”: one embodiment “includ[ing] an elevation mechanism with a worm
gear 307 that is released . . . [which] allows the blade to retract” (Appeal Br.
16 (citing Spec. 36, ll. 13–22; Figs. 3, 4)); and another embodiment wherein
“[t]he angular momentum of the blade as it is stopped [] create[s] a
significant downward force and that [] will cause pin 2540 to disengage
from the arbor block support mechanism” and allow the arbor block and the
supported blade to pivot around shaft 2420 and retract below the tabletop of
the saw (Appeal Br. 17 (citing Spec. 70, l. 7–12; Figs. 47–55)).
The Examiner also based this rejection on the finding that the
specification does not disclose how the retraction of the blade within 14
milliseconds has been calculated or measured because the time it takes to
retract a blade “depends of number of factors including the diameter of the
blade, the fully elevated position and a fully retracted position, the distance
between the fully retracted position and a fully elevated position, and
generally the size of the table saw.” Final Act. 8. The pertinence of this
inquiry as to written description is unclear. As noted above, 14 milliseconds
has been disclosed in the specification.
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As to the limitation “a fully elevated position,” the Examiner
maintains that the specification “does not explicitly disclose what is
considered to be ‘a fully elevated position’ of the blade” and thus, it is not
clear what retraction from the undisclosed fully elevated position means.
Ans. 6. The Examiner points out that the specification “does not explicitly
define how far the blade has to be extended above the cutting region to be
considered ‘a fully elevated position’ of the blade.” Ans. 6.
However, the specification does disclose that “the blade extends
above the table” (Appeal Br. 12 (citing Spec. pg. 34, 18–pg. 35, l. 4)), and
Figure 3 illustrates a table saw with a blade 300 that is moved to an elevated
position above the table 303. Spec. Fig. 3. In that regard, we generally
agree with the Appellant that a person of ordinary skill in the art “would
know that ‘an elevation mechanism configured to raise and lower the blade’
would inherently move the blade ‘between a fully elevated position where at
least a part of the blade is in the cutting region and a fully lowered position
where the blade is below the work surface.’” Appeal Br. 13. A table saw is
a mechanical device and it would be readily appreciated by a person of
ordinary skill that there are mechanical limits to the movement of the blade
within such saws, including how far the blade can be elevated. To the extent
that the Examiner may be considering that this limitation is vague due to the
lack of a numeric limitation, the Appellant is correct in pointing out that the
rejection is that of written description, not of indefiniteness. Reply Br. 7.
Therefore, in view of the above, we reverse the rejection of claim 7
for lack of written description.
CONCLUSION
The Examiner’s rejections are reversed.
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
4 Non-Statutory
Double Patenting
4
7 112 Written
Description
7
Overall
Outcome
4, 7

REVERSED