BLACK & DECKER INC.

Patent Trials and Appeals Board

Mar 16, 2020

15045529 - (D) (P.T.A.B. Mar. 16, 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.
15/045,529 02/17/2016 Brent L. BUCKS P-US-TN-12297-C 2566
28268 7590 03/16/2020
Stanley Black & Decker, Inc.
6201 Greenleigh Avenue, MR045
Middle River, MD 21220
EXAMINER
CHOI, STEPHEN
ART UNIT PAPER NUMBER
3724
MAIL DATE DELIVERY MODE
03/16/2020 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 BRENT L. BUCKS and JEREMY A. LOWDER

Appeal 2018-007593
Application 15/045,529
Technology Center 3700
____________

Before JENNIFER D. BAHR, EDWARD A. BROWN, and
CHARLES N. GREENHUT, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20. Appellant’s representative
presented oral argument on March 4, 2020. 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 Black &
Decker Inc. Appeal Br.4.
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Application 15/045,529

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CLAIMED SUBJECT MATTER
Appellant’s disclosure “relates to reciprocating saw blades and, more
particularly, to reciprocating saw blades with a plunge nose, and to methods
of manufacturing such reciprocating saw blades.” Spec. ¶ 2.
Claims 1, 10, and 20 are independent claims. Claim 1, reproduced
below, illustrates the claimed subject matter.
1. A reciprocating saw blade comprising:
a body formed from a piece of coil stock and having a
shank end configured to secure the blade with a reciprocating
saw, a plunging end configured to enter a workpiece, a cutting
edge extending between the shank end and the plunging end,
and a back edge opposite the cutting edge and extending
between the shank end and the plunging end,
the cutting edge having a plurality of teeth arranged in a
pattern that includes left and right set teeth, and a plurality of
gullets disposed between adjacent teeth in the plurality of teeth,
each of the plurality of teeth and the plurality of gullets having
substantially the same size,
except that a first tooth immediately adjacent the
plunging end has been flattened to be unset, a third tooth of the
plurality of teeth counting consecutively from the first tooth has
been flattened to be unset, and at least a portion of a second
tooth of the plurality of teeth counting consecutively from the
first tooth has been removed to form an enlarged gullet between
the first tooth and the third tooth, the enlarged gullet being
larger than the remaining gullets in the plurality of gullets.

Appeal Br. 19 (Claims App.).

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REJECTION
Claims 1–20 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Grolimund (D482,945 S, issued Dec. 2, 2003) and Thomas (US
2005/0211046 A1, published Sept. 29, 2005).

ANALYSIS
Claims 1–9
Claim 1 recites a reciprocating saw blade comprising, inter alia, “a
first tooth immediately adjacent the plunging end has been flattened to be
unset,” “a third tooth . . . counting consecutively from the first tooth has
been flattened to be unset,” and “at least a portion of a second tooth . . .
counting consecutively from the first tooth has been removed to form an
enlarged gullet between the first tooth and the third tooth.” Appeal Br. 19
(Claims App.) (emphasis added). The Examiner finds that Grolimund
discloses a reciprocating saw blade comprising all limitations of claim 1
except “each of the plurality of teeth and the plurality of gullets having
substantially the same size” and “the third tooth being unset.” Final Act. 2–
3 (citing Grolimund, Figs. 6, 7). The Examiner relies on Thomas as teaching
a reciprocating saw blade including a plurality of teeth and gullets of
substantially the same size and “a repeating pattern of set and unset teeth.”
Id. at 3. The Examiner concludes that it would have been obvious to one of
ordinary skill in the art to modify Grolimund to have a plurality of teeth and
gullets of substantially the same size and an unset leading tooth, as taught by
Thomas, “to provide an alternative arrangement of the cutting teeth to
provide uniform cutting action.” Id.
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Firstly, Appellant contends that Grolimund and Thomas fail to
disclose or suggest a first or plunging tooth that has been flattened to be
unset, a third or leading tooth that has been flattened to be unset, and an
enlarged gullet between the first and third teeth. Appeal Br. 9. In support,
Appellant provides a Second Declaration Under 37 C.F.R. § 1.132 of Malek
George (hereinafter, “George Declaration” or “Decl.”). Appellant also
provides annotated Figures 6 and 7 of Grolimund. Id. at 10. Appellant
concedes that annotated Figure 7 shows that the right-most “first tooth 1,”
which the Examiner equates to the claimed first tooth, is “unset,” but
Appellant contends that the “second tooth 3,” which the Examiner equates to
the claimed third tooth, “is set to the left.” Id. (citing Decl. ¶ 7).
Appellant contends that Thomas does not disclose or suggest the
missing features of Grolimund. Appeal Br. 11. Appellant provides an
annotated Figure 3 of Thomas, which shows that the first tooth is unset, the
second tooth is set left, and the third tooth is set right, as described in
Thomas. Id. at 12 (citing Thomas ¶ 17; Decl. ¶ 11). Thus, Appellant
contends, Thomas does not disclose or suggest “both a first/plunging tooth
and a third/leading tooth being flattened to be unset.” Id. (citing Decl. ¶ 11).
Appellant further contends that it would not have been obvious in view of
Thomas to modify the saw blade depicted in Figures 6 and 7 of Grolimund
to flatten third/leading tooth 3 to be unset. Id. at 13. To the contrary,
“Thomas teaches that, in a given sequence of any three teeth, the first tooth
is unset, and the second and third teeth are set left and right,” and “Thomas
at most teaches or suggests that the third/leading tooth 3 of Grolimund
should be set left or right, since the first tooth 1 of Grolimund is already
unset.” Id. (citing Thomas ¶ 17; Decl. ¶ 12).
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As quoted by Appellant, the Examiner states:
Thomas teaches a plurality of teeth with repeating pattern
and a plurality of gullets having substantially the same size
where first tooth of the repeating pattern being unset. The
proposed modification proposes to provide the plurality of teeth
design of Thomas in place of the plurality of teeth on
Grolimund in order to provide a more uniform cut. Hence, the
third/leading tooth on the modified device of Grolimund which
is represented by a first tooth on the repeating pattern of
Thomas would be unset as claimed.
Appeal Br. 13; Final Act. 8 (emphasis added).
Appellant disagrees with the Examiner, contending that the
Examiner’s proposed modification of Grolimund would result in “two teeth
in a sequence of three teeth that are unset,” but this tooth arrangement is
contrary to Thomas’ teaching. Appeal Br. 13. Thus, Appellant contends, it
would not have been obvious, in view of Thomas, to modify Grolimund’s
saw blade “so that two out of the first three teeth are unset, with an enlarged
gullet between them.” Id. 2
Appellant’s contention is persuasive. The proposed modification of
Grolimund appears to apply Thomas’ “repeating pattern,” but beginning
from the “third/leading tooth” of Grolimund. The Examiner does not,
however, identify any disclosure in Thomas that supports beginning the
repeating pattern at that particular tooth of Grolimund. Nor does the

2 Appellant notes that the Examiner states, “providing two consecutive unset
teeth in repeating toot [sic] patterns is old and well known in order to
achieve different cutting performance as evidenced by Elliston (US
2008/03078936).” Appeal Br. 13n.1; see Final Act. 8. However, Appellant
notes correctly that Elliston is not applied in any rejection before us in this
Appeal. Appeal Br. 13n.1.
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Examiner identify any disclosure in Thomas that two consecutive teeth of
the saw blade can be “neutral,” that is, not offset, as in the Examiner’s
proposed modification. Because the Examiner’s conclusion that it would
have been obvious to modify Grolimund in view of Thomas to result in the
claimed saw blade is not supported by an adequate factual basis, the legal
conclusion is in error. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967)
(holding that “[t]he legal conclusion of obviousness must be supported by
facts. Where the legal conclusion is not supported by facts it cannot
stand.”).
Secondly, Appellant has provided evidence of secondary
considerations to rebut the Examiner’s conclusion of obviousness.
Appellant states that “making both the first/plunging tooth and the
third/leading tooth flattened to be unset resulted in a dramatic and
unexpected increase in plunge cutting speed of the saw blade.” Appeal Br.
14 (citing Decl. ¶ 13). Appellant explains that the claimed saw blade was
originally designed to have the first/plunging tooth unset, the second tooth
removed to create an enlarged gullet, and the third/leading tooth set right.
Id. The saw blade was redesigned by flattening the third/leading tooth,
making both the first/plunging tooth and the third/leading tooth unset. Id. at
15 (citing Decl. ¶ 14). Appellant states, “[a]s expected, this design change
resulted in cleaner cuts, while still plunging more easily into the workpiece,
as depicted below,” but “this modification also unexpectedly resulted in
significantly faster plunge cutting speed.” Id. at 15–16 (citing Decl. ¶ 15)
(emphasis added).
As pointed out by Appellant, the Examiner concedes that Appellant
has shown “an unexpectedly resulted [sic] faster plunge cutting speed.”
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Appeal Br. 16 (quoting Final Act. 8). But despite this concession, the
Examiner states, “[the George Declaration] cannot be persuasive because
the subject matter of the instant application is clearly obvious over the prior
[art] in the sense of 35 U.S.C. § 103.” Final Act. 8 (emphasis added). Id. at
8. The Examiner also states, “the Office action demonstrated a strong case
of obviousness such that the alleged unexpected results are insufficient to
overcome obviousness conclusion.” Id. at 9 (emphasis added).
To the extent the Examiner did not consider Appellant’s secondary
considerations as evidence against the rejection because the claimed subject
matter is “clearly obvious” or a “strong case” of obviousness has been
established, this is error. When an applicant submits evidence in response to
a rejection, patentability is then determined based “on the totality of the
record.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Indeed,
“when secondary considerations are present, though they are not always
dispositive, it is error not to consider them.” In re Huai-Hung Kao, 639 F.3d
1057, 1067 (Fed. Cir. 2011). Accordingly, Appellant’s evidence of
secondary considerations must be considered along with the Examiner’s
evidence of obviousness. The Examiner’s apparent position that Appellant’s
evidence of unexpected results simply cannot be persuasive because of the
strength of the case of obviousness strongly implies that this evidence
improperly was not given proper consideration.
For the foregoing reasons, we do not sustain the rejection of claim 1
or dependent claims 2–9 as unpatentable over Grolimund and Thomas.
Claims 10–20
Claim 10 recites a reciprocating saw blade comprising, inter alia, “the
cutting edge further includes a plunging tooth . . . and a leading tooth of the
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at least four consecutive teeth that is closest to the plunging end, both the
plunging tooth and the leading tooth being unset,” and “a distance between
the plunging tooth and the leading tooth is at least twice a distance between
each pair of adjacent teeth in the at least four consecutive teeth.” Appeal Br.
20 (Claims App.) (emphasis added). Claim 20 recites a reciprocating saw
blade comprising, inter alia, “a first tooth immediately adjacent the plunging
end is flattened to be unset” and “a third tooth counting consecutively from
the first tooth is flattened to be unset.” Id. at 22 (Claims App.) (emphasis
added).
For reasons similar to those discussed for claim 1, we likewise do not
sustain the rejection of claims 10 and 20, or claims 11–19 depending from
claim 10, as unpatentable over Grolimund and Thomas.

DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–20 103(a) Grolimund,
Thomas
1–20

REVERSED