Brett Parendo et al.

Patent Trials and Appeals Board

Oct 28, 2019

15366420 - (D) (P.T.A.B. Oct. 28, 2019)

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.
15/366,420 12/01/2016 Brett Parendo 066749-1037 4399
142078 7590 10/28/2019
Reinhart (Milwaukee Tool)
ATTN: TRAVIS MCDONNELL, PARALEGAL
1000 NORTH WATER STREET
SUITE 2100
MILWAUKEE, WI 53202
EXAMINER
JANESKI, PAUL MARTENS
ART UNIT PAPER NUMBER
3722
NOTIFICATION DATE DELIVERY MODE
10/28/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
IPAdmin@reinhartlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRETT PARENDO, MARCUS CARLI, BRYAN WARD, and
ANDREW SCHULZ
Appeal 2019-002904
Application 15/366,420
Technology Center 3700
Before JOHN C. KERINS, CHARLES N. GREENHUT, and
LEE L. STEPINA, Administrative Patent Judges.
STEPINA, 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 1–6. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

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 Milwaukee Electric
Tool Corporation. Appeal Br. 1.
Appeal 2019–002904
Application 15/366,420

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CLAIMED SUBJECT MATTER
The claims are directed to a hole saw with open end cap geometry.
Claim 1, reproduced below with emphasis added, is illustrative of the
claimed subject matter:
1. A hole saw comprising:
a cylindrical body having a first edge located at a first
end of the cylindrical body and a second edge located at a
second end opposite the first end;
cutting teeth extending from the first end of the
cylindrical body;
an end cap coupled to the second end of the cylindrical
body, the end cap including a hub, the end cap including a
plurality of end cap openings located radially between the hub
and an outer perimeter edge of the end cap, wherein the
plurality of end cap openings occupy a relatively large portion
of the area of the end cap, the relatively large portion being at
least 50% of the area bounded by the outer perimeter edge of
the end cap; and
an arbor configured to couple the hole saw to a driving
tool, the arbor coupled to the hub and extending outward from
the end cap in a direction opposite from the cutting teeth.
Appeal Br. 8 (Claims App.). In the Summary of the Claimed Subject matter,
Appellant identifies Figure 2 as providing support for claim 1. Appeal Br. 2.
We reproduce Appellant’s Figure 2 below.
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Appellant’s Figure 2 is a plan view of an end cap of a hole saw. Spec. ¶ 13.

REFERENCE
The prior art relied upon by the Examiner is:

Name Reference Date
Singh US 2009/0035082 A1 Feb. 5, 2009

REJECTION
Claim 1–6 are rejected under 35 U.S.C. § 103 as unpatentable over
Singh. Final Act. 2.

OPINION
The Examiner finds that Singh discloses many of the elements recited
in claim 1, but does not explicitly disclose that the plurality of end cap
openings occupy at least 50% of the area bounded by the outer perimeter
edge of the end cap. Final Act. 2–3. However, referring to paragraph 45 of
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Singh, the Examiner finds that Singh recognizes the size of weight reduction
slots 72 as a result-effective variable. Id. at 3. Based on this finding, the
Examiner reasons that it would have been an obvious matter of routine
optimization to provide an open portion of at least 50% of the area bounded
by the outer perimeter edge of the end cap. Id.
Appellant contends that the Examiner erred in finding Singh
recognizes the relevant parameter as a result-effective variable because “the
relevant ‘parameter’ recited in claim 1 is the relation between total area of
all end cap holes to the total end cap area.” Appeal Br. 5. In contrast,
Appellant contends, “Singh teaches the importance of hole size and hole
location in relation to end cap design, but Singh does not teach the relation
between total area of all end cap holes to the total end cap area or how these
variables relate to acceptable hole saw strength.” Id. (citing Singh ¶ 45).
Appellant argues,
[w]hile the Examiner is correct that Singh does provide a general
teaching related to the desirability of adequate strength, weight
reduction and overall weight balance when selecting the size and
location of end cap holes (see Final Office Action, pages 3-4,
Singh, para. [0045]), Singh does not provide teaching that would
direct one of ordinary skill in the art to arrive at the specific large
open end cap area, recited in amended claim 1.
Id.
In response, the Examiner reiterates the finding that the “at least 50%”
limitation in claim 1 would have been a matter of routine optimization, and,
further, finds that Appellant does not disclose that the “at least 50%” range
is critical. Ans. 4–6 (citing Spec. ¶¶ 21–22).
In reply, Appellant argues that (i) Singh does not teach or suggest
specific dimensions or calculations of the open end cap area, (ii) the
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disclosure in Singh is too broad to support an obviousness determination for
the “at least 50%” limitation, and (iii), in Singh, the amount of open area in
the end cap is not disclosed as critical, and, therefore, is not recognized as a
result-effective variable. Reply Br. 2–4.
Appellant’s arguments regarding the “at least 50%” limitation do not
apprise us of Examiner error.
In In re Aller, 220 F.2d 454, 456 (CCPA 1955), the court set forth the
rule that the discovery of an optimum value of a variable in a known process
is normally obvious. See also In re Boesch, 617 F.2d 272, 276 (CCPA
1980). Exceptions to this general rule include where the parameter
optimized was not recognized to be a result effective variable, In re Antonie,
559 F.2d 618, 621 (CCPA 1977), and where the results of optimizing a
variable, which was known to be result effective, were unexpectedly good.
In re Waymouth, 499 F.2d 1273, 1276 (CCPA 1974). “In cases in which the
disclosure in the prior art was insufficient to find a variable result-effective,
there was essentially no disclosure of the relationship between the variable
and the result in the prior art.” In re Applied Materials, Inc., 692 F.3d 1289
(Fed. Cir. 2012). Furthermore,
[w]hile the absence of any disclosure regarding the relationship
between the variable and the affected property may preclude a
finding that the variable is result-effective, the prior art need not
provide the exact method of optimization for the variable to be
result-effective. A recognition in the prior art that a property is
affected by the variable is sufficient to find the variable result-
effective.
Id.
Appellant’s Specification explains that an open end cap geometry
“provides a number of improved functional advantages” including lowering
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weight of the end cap without decreasing hole saw cutting performance.
Spec. ¶ 22.
Singh discloses a similar benefit from providing weight reduction
slots 72 in the bottom (end cap) 70. “[T]he bottom 70 of the hole saw 52
includes a plurality of weight reduction slots 72 which allow the hole saw 52
in the hole saw system to be lighter than various prior art hole saws.” Singh
¶ 44. Singh explains that the locations and size of the weight reduction slots
72 is determined by the manufacturer and is not held to a specific design. Id.
¶ 45. Further, the configurations of weight reduction slots 72 can be
determined based on the size of the hole saw (while maintaining adequate
strength in the hole saw). Id. Thus, Singh teaches that slots 72 serve the
function of reducing the weight of the saw and that the size of the hole saw
is a factor in determining the configuration of these slots. Accordingly, a
person of ordinary skill in the art would understand Singh to recognize the
size of weight reductions slots 72 to be a result-effective variable (with the
effect being a reduction in the weight of the hole saw).
Reciting this variable in terms of its size relative to the size of the end
cap, as Appellant has done in claim 1, does not change the fact that the end
cap openings recited in claim 1 reduce the weight of the hole saw the same
way weight reduction slots 72 perform this function in hole saw 52 of Singh.
In light of Appellant’s Specification, it is clear that the relationship between
the size of the openings and the size of the end cap provides no unexpected
result. Rather, Appellant’s Specification discloses a wide range of
percentages and ratios of the open area of the end cap vis á vis the total end
cap area (or the solid end cap area) without indicating that any of these
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percentages and ratios provides any particular benefit over any of the others.
Specifically, the Specification states:
In various embodiments, the openings are sized such that
at least 10% of the total end cap area is occupied by the
openings. In various embodiments, the openings are sized such
that at least 30% of the total end cap area is occupied by the
openings. In various embodiments, the openings are sized such
that at least 60% of the total end cap area is occupied by the
openings.

In various embodiments, the ratio of the area of the
openings to the area of the solid portions of end cap is between
0.15 and 2. In various embodiments, the ratio of the area of the
openings to the area of the solid portions of end cap is between
.15 and .45. In various embodiments, the ratio of the area of the
openings to the area of the solid portions of end cap is between
.3 and .7. In various embodiments, the ratio of the area of the
openings to the area of the solid portions of end cap is between 1
and 2.
Spec. ¶¶ 5–6 (emphasis added). “The open area has a first area and the
upper surf ace of the end cap has a second area, and the first area is between
20% and 70% of the second area.” Id. ¶ 9; see also id. ¶¶ 31–34.
Accordingly, we agree with the Examiner that, in light of the disclosure of
weight reduction slots 72 in Singh, it would have been a matter of routine
optimization to provide weight reduction slots 72 occupying a portion of at
least 50% of the area bounded by the outer perimeter edge of the end cap as
required by claim 1. Consequently, we sustain the rejection of claim 1 as
unpatentable over Singh.
Appellant provides no arguments in support of the patentability of
claims 2–6 aside from those discussed above regarding claim 1. See Appeal
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Br. 3–7. Accordingly, these claims fall with claim 1, from which they
depend.
CONCLUSION
The Examiner’s rejection is affirmed.
More specifically, we affirm the rejection of claims 1–6 as
unpatentable over Singh.

DECISION
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–6 103 Singh 1–6
Overall
Outcome
1–6

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