Andre Ullrich

Patent Trials and Appeals Board

May 22, 2020

2019002881 (P.T.A.B. May. 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.
14/749,802 06/25/2015 Andre Ullrich 2178-1407 4695
10800 7590 05/22/2020
Maginot, Moore & Beck LLP
One Indiana Square, Suite 2200
Indianapolis, IN 46204
EXAMINER
CHUKWURAH, NATHANIEL C
ART UNIT PAPER NUMBER
3731
MAIL DATE DELIVERY MODE
05/22/2020 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 ANDRE ULLRICH
Appeal 2019-002881
Application 14/749,802
Technology Center 3700

Before KEVIN F. TURNER, DANIEL S. SONG, and
BRETT C. MARTIN, Administrative Patent Judges.

SONG, 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 and 2. 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 2019-002881
Application 14/749,802
2
CLAIMED SUBJECT MATTER
The claims are directed to a housing device for a hand-held power
tool. Claim 1, reproduced below, is illustrative of the claimed subject matter
(emphasis added):
1. A housing device for a hand-held power tool, comprising:
at least one receiving interface configured to separably
couple to a battery unit and to receive a mains power connection
unit as an alternative to the battery unit, the at least one receiving
interface including at least one fastening member configured to
inseparably couple to the mains power connection unit.
OPINION
The Examiner rejects claims 1 and 2 under 35 U.S.C. § 102(b) as
anticipated, finding that Neumann (US 6,243,276 B1, iss. June 5, 2001)
discloses the invention as claimed, including:
at least one receiving interface (portion between the housing and
battery compartment) including at least one fastening member
(lock col. 5, line 28) configured to inseparably couple (the
circuitry of the power supply 10 is provided in a housing 76
which is constructed and adapted to directly engage and lock into
the battery compartment of a tool 78 col. 5, lines 26-29) to the
mains power connection unit (76).
Final Act. 2–3 (formatting omitted); see also Ans. 4.
In addition, to support the rejection, the Examiner points out that
Appellant’s Specification also discloses that “the mains power connection
unit 16 could be realized so as to be separable from the receiving interface
12,” thereby implying that the term “inseparably couple” should be
interpreted in view of this disclosure to encompass coupling that is
separable. Ans. 3, quoting Spec. pg. 9, para. 2, ll. 6–7.
The Appellant disagrees and argues that Neumann fails to disclose the
claimed “least one fastening member configured to inseparably couple to the
Appeal 2019-002881
Application 14/749,802
3
mains power connection unit.” Appeal Br. 5. We generally agree and find
the rejection deficient for the reasons discussed below.
Initially, we note that the Examiner’s reliance on the Appellant’s
Specification does not establish anticipation because the portion relied upon
describes an alternative embodiment, which is not encompassed by claim 1.
As the Appellant also points out, the Specification “discloses various
embodiments of the housing device.” Reply Br. 2; see Spec. pg. 9, para. 2,
ll. 6–7 (“it is also conceivable, in principle, for the mains power connection
unit 16 to have an actuating element for releasing the latching of the latching
unit. In this case, the mains power connection unit 16 could be realized so
as to be separable from the receiving interface 12.”). As the Appellant also
correctly argues, “claim 1 uses both of the terms ‘separable’ and
‘inseparable’” such that it is clear that “these terms have different
meanings.” Appeal Br. 7. As such, “[i]nterpreting the phrase ‘inseparably
couple’ of claim 1 to also include the ‘separable coupling’ embodiment
disclosed in the Appellant’s specification is an unreasonable interpretation of
claim 1,” and contrary to the plain and ordinary meaning of the term
“inseparably.” Reply Br. 3; see also Appeal Br. 6.
As to the Examiner’s finding with respect to the disclosure of
Neumann, the passages relied upon by the Examiner disclose that the
housing 76 with the power supply 10 “directly engage[s] and lock[s] into the
battery compartment of a tool 78,” and that the housing 76 and the tool 78
“interlock[] together.” Neumann, col. 5, ll. 26–29, 37–38. Neumann further
discloses that the power supply 10 may be “the original power supply for a
tool or a replacement or a substitute power supply for an existing battery-
operated tool.” Neumann, col., 1, ll. 60–64.
Appeal 2019-002881
Application 14/749,802
4
Nonetheless, Neumann does not provide sufficient disclosure that the
receiving interface includes a fastening member to inseparably couple the
power supply as required by the claim. There is insufficient evidence to
support a finding that such a fastening member is inherently or necessarily
disclosed. There is also insufficient evidence to support a finding that the
power supply of Neumann is inherently or necessarily “inseparably
coupled,” and its disclosure of “lock[ing]” and “interlocking” of the power
supply does not necessarily mean that the power supply is inseparably
coupled to the power tool. Indeed, although we do not necessarily agree
with the Appellant’s assertion that Neumann discloses a power supply 10
that is separably coupled (Appeal Br. 5), the general disclosure of Neumann
is not inconsistent with the power supply being removable, i.e. separably
coupled. See, e.g., Neumann, col. 1, ll. 4–7, 37–39; col. 2, ll. 21–23; col. 5,
ll. 42–46, 55–57.
The Examiner appears to concede this point in responding that
Neumann indicates “the presence of fastening member inseparably coupling
the two part[s] together so the mains power connection is held in place and
incapable of being separated during tool operation; or, at least inseparable
until some other external force is acted upon the interlocked pieces to
separate them.” Ans. 4. However, the claim term “inseparable” is not a
qualified term that only requires inseparability until the components are to
be separated. In that regard, as the Appellant argues, “[t]his temporary
interlocking connection cannot correspond to the ‘inseparable coupling’
because the power supply (10) is clearly capable of being separated from the
power tool (78). Indeed, the temporary interlocking of the two components
corresponds to the ‘separable coupling’ recited in claim 1.” Reply Br. 5
(formatting omitted).
Appeal 2019-002881
Application 14/749,802
5
The Examiner further finds that using a fastening member to
inseparably couple the battery or main power connection to a power tool is
well-known and common knowledge, and “is found in tools sold in Home
[D]epot.” Ans. 4. However, we agree with the Appellant that “the
Examiner has provided no evidentiary support” for such findings, and that
such summary assertion is without evidentiary support is insufficient
considering the claimed fastening member and inseparability is “not a
‘peripheral issue.’” Reply Br. 4.
Therefore, in view of the above, we reverse the anticipation rejection
of claim 1, as well as claim 2 that depends from claim 1.
CONCLUSION
The Examiner’s anticipation rejection of claims 1 and 2 is reversed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2 102(b) Neumann 1, 2
REVERSED