Ex Parte 8,347,515 B2 et al

Patent Trial and Appeal Board

May 13, 2016

90013351 (P.T.A.B. May. 13, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
90/013,351 10/23/2014
60601 7590 05/13/2016
Muncy, Geissler, Olds & Lowe, P,C,
4000 Legato Road
Suite 310
FAIRFAX, VA 22033
FIRST NAMED INVENTOR
8,347,515 B2
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2450/2139PUS2 3489
EXAMINER
DEB,ANJANK
ART UNIT PAPER NUMBER
3992
MAILDATE DELIVERY MODE
05/13/2016 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
Exparte ECLATORQ TECHNOLOGY COMPANY, LTD.
Appellant
Appeal2016-005063
Reexamination Control 90/013 ,3 51
Patent 8,347,515 B2
Technology Center 3900
Before MARC S. HOFF, STEPHEN C. SIU, and ERIC B. CHEN,
Administrative Patent Judges.
CHEN, Administrative Patent Judge.
DECISION ON APPEAL
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Reexamination Control 90/013 ,3 51
Patent 8,347,515 B2
This is an appeal under 35 U.S.C. §§ 134(b) and 306 from the final
rejection of claims 1, 3, 4, 16, and 21-28. Claims 2 and 6-15 have been
cancelled. Claim 5 have been indicated to be allowable if rewritten in
independent form. Claims 1, 3, and 5 have been amended and new claims
21-28 have been added during the reexamination proceeding. 1 We have
jurisdiction under§§ 134(b) and 306. We affirm.
STATEMENT OF THE CASE
Reexamination Proceedings
A request for ex parte reexamination of U.S. Patent No. 8,347,515 B2
(the '515 patent) was filed on October 23, 2014, and assigned
Reexamination Control No. 90/013,351.
The '515 patent, entitled "External-Coupled Electronic Angle
Measurement Apparatus," issued January 8, 2013, to Ming-Hwa Lee and
Xiu Jiang, based on Application No. 12/791,269, filed June 1, 2010.
The '515 patent is said to be assigned to Eclatorq Technology
Company, Ltd., said to be the assignee and real party in interest.
1 Appellant's After-Final Amendment, filed September 15, 2015, amending
claims 1, 3-5, 16-20, 22, 23, and 28 and cancelling claims 21, 24, 25, and
27, was not entered by the Examiner. (Advisory Act. 3.) Accordingly,
Appellant's arguments with respect to such claim amendments in the Appeal
Brief have not been considered. (Br. 15-21.)
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Patent 8,347,515 B2
The Claims
Independent claims 22, 24, 26, and 28 are exemplary, with disputed
limitations in italics:
22. An external-coupled electronic angle measurement
apparatus, comprising:
a housing;
a gripper mounted onto the housing to fasten the external-
coupled electronic angle measurement apparatus to a hand tool;
an angle detection system held in the housing to detect turning
angles; and
a display element electrically connected to the angle detection
system to display the turning angles.
24. The external-coupled electronic angle measurement
apparatus of claim 22, wherein the housing includes a second
coupling portion which couples to a driver.
28. The external-coupled electronic angle measurement
apparatus of claim 24, wherein the housing is coaxial with the driving
head of the hand tool.
26. An external-coupled electronic angle measurement
apparatus, comprising:
a housing;
a coupling portion mounted onto the housing to fasten the
external-coupled electronic angle measurement apparatus to a hand
tool,
a driving head disposed at an end of the hand tool, wherein the
driving head has a lower driving surface and an upper surface and
wherein the coupling portion is coupled to the hand tool on the upper
surface of the driving head opposite the lower driving surface;
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Patent 8,347,515 B2
an angle detection system held in the housing to detect turning
angles; and a display element electrically connected to the angle
detection system to display the turning angles.
The Rejections
Claims 21, 25, and 27 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Claims 23-25 stand rejected under 35 U.S.C. § 112, second
paragraph, as indefinite for failing to particularly point out and distinctly
claim the subject matter which applicant regards as the invention.
Claims 1, 3, 4, 16, 21, 23, and 25 stand rejected under 35 U.S.C.
§ 102(e) as anticipated by Baumann2 (DE 10 2007 055 028 Al; May 20,
2009) or in the alternative, under 35 U.S.C. 103(a) as unpatentable over
Baumann and Chen (US 6,315,340 Bl; Nov. 13, 2001).
Claims 22 and 26 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Baumann.
Claims 24, 27, and 28 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Baumann and McGee (US 6,629,055 B2; Sept. 30, 2003). 3
2 We refer to the English language translation provided by Requester Kabo
Tool Company.
3 Appellant does not present any arguments with respect to the rejections of:
(i) claims 21, 25 and 27 under 35 U.S.C. 112, first paragraph; (ii) claims 23
and 25 under 35 U.S.C. 112, second paragraph; (iii) claims 1, 3, 4, 16, 21, 23
and 25 under 35 U.S.C. § 102(e), or alternatively under 35 U.S.C. 103(a);
(iv) claim 22 under 35 U.S.C. 103(a) over Baumann; and (v) claims 24 and
27 under 35 U.S.C. §103(a) over Baumann and McGee. Thus, any such
arguments are deemed to be waived.
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Patent 8,347,515 B2
ANALYSIS
§ 112, Second Paragraph Rejection
We are persuaded by Appellant's arguments (Br. 11) that the
limitation "a second coupling portion," as recited in dependent claim 24,
complies with 35 U.S.C. § 112, second paragraph, by particularly pointing
out and distinctly claiming the subject matter which applicant regards as the
invention.
The Examiner found that claim 24 "lack[ s] . . . antecedent basis for
the limitation 'a second coupling portion' because applicant failed to recite a
first coupling portion" (Ans. 3) and "although claim 22 recites a gripper it
did not specifically recite a first coupling portion" (id. at 4). We do not
agree.
Independent claim 22 recites "a gripper ... to fasten the external-
coupled electronic angle measurement apparatus to a hand tool" (emphasis
added). In other words, the functional language "to fasten the extemal-
coupled electronic angle measurement apparatus to a hand tool" indicates
that the claimed "gripper" functions to couple the external-coupled
electronic angle measurement apparatus to the hand tool. Dependent
claim 24 further recites "a second coupling portion." When dependent
claim 24 is construed in the context of the "gripper" of independent claim 22
having a coupling function, such "gripper" provides an antecedent basis for
the "second coupling portion."
Accordingly, we are persuaded by Appellant's arguments that "the
previously recited gripper of claim 22 provides antecedent basis for a second
coupling portion of claim 24." (Br. 11.)
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Thus, we do not sustain the rejection of dependent claim 24 under
35 U.S.C. § 112, second paragraph.
§ 103 Rejection-Baumann
We are unpersuaded by Appellant's arguments (Br. 11-14) that
Baumann would not have rendered obvious independent claim 26, which
includes the limitation "'wherein the driving head has a lower driving surface
and an upper surface and wherein the coupling portion is coupled to the hand
tool on the upper surface of the driving head."
The Examiner found that the angle measuring unit of Baumann, which
can be disposed on any position of the tool, corresponds to the limitation "a
driving head disposed at an end of the hand tool, wherein the driving head
has a lower driving surface and an upper surface and wherein the coupling
portion is coupled to the hand tool on the upper surface of the driving head
opposite the lower driving surface." (Ans. 4--5; see also Final Act. 13-14.)
We agree with the Examiner.
Baumann relates to an "angle measuring unit ... connected to the tool
via a connecting member." (i-f 6.) Figure 2 of Baumann illustrates a side
view of the angle measuring unit 10 (i-f 36), which includes cover case 32
(i-f 48) and "connecting member 40 for connecting the angle measuring
unit 10 to any tool which is for measuring rotating angle" (i-f 49). Baumann
explains that "[t]he connecting member can be a clip, a clamp, a magnet, a
belt" (i-f 6) or "[ t ]he connecting member can be, for example, clips, clamps,
elastic tapes, Velcro fasteners or the like" (i-f 18). Baumann further explains
that "the angle measuring unit [10] can be disposed on any position of the
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tool [14]." (i-f 5.) Figure 11 of Baumann, a top view of torque wrench 14,
which includes driving device 68, shaft 66, and handle 70 (i-f 45), is
reproduced below:
F. 11 IQ, L _,.
68
.,
10
Because Baumann explains that "the angle measuring unit [ 1 OJ can be
disposed on any position of the tool [14J" (i-f 5), Baumann discloses an
embodiment in which angle measuring unit 10 is connected to an upper
surface of driving device 68 (see Fig. 11) using a suitable connecting
member 40 (e.g., magnets (i-f 6) or Velcro fasteners (i-f 18)). Thus, Baumann
teaches the limitation "wherein the driving head has a lower driving surface
and an upper surface and wherein the coupling portion is coupled to the hand
tool on the upper surface of the driving head."
Appellant argues that "in [Baumann J, the angle measuring device 10
is mounted on the shaft 66 by clamp 34, bracket 36, or tape 38 to clip the
shaft 66" and "[ n Jo clamping mechanism is taught in [Baumann J which
could be positioned on the driving head as asserted by the Examiner."
(Br. 12 (emphasis omitted).) Contrary to Appellant's arguments, Baumann
explains that "the angle measuring unit [lOJ can be disposed on any position
of the tool [14J" (i-f 5) and provides examples of an appropriate connecting
member 40, such as magnets (i-f 6) or Velcro fasteners (i-f 18).
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Therefore, we agree with the Examiner that Baumann would have
rendered obvious independent claim 26, which includes the limitation "a
driving head disposed at an end of the hand tool, wherein the driving head
has a lower driving surface and an upper surface and wherein the coupling
portion is coupled to the hand tool on the upper surface of the driving head
opposite the lower driving surface."
Accordingly, we sustain the rejection of independent claim 26 under
35 U.S.C. § 103(a).
§ 103 Rejection-Baumann and McGee
We are also unpersuaded by Appellant's arguments (Br. 14--15) that
the combination of Baumann and McGee would not have rendered obvious
dependent claim 28, which includes limitation "wherein the housing is
coaxial with the driving head of the hand tool."
The Examiner found that the connecting member of Baumann, which
connects the angle measuring unit to the tool, corresponds to the limitation
"a gripper mounted onto the housing to fasten the external-coupled
electronic angle measurement apparatus to a hand tool," as recited in
independent claim 22. (Ans. 6-7; see also Final Act. 11.) The Examiner
further found that the torque angle sensor of McGee, as illustrated in
Figure 3, corresponds to the limitation "wherein the housing is coaxial with
the driving head of the hand tool." (Ans. 6; see also Final Act. 18.) We
agree with the Examiner.
McGee relates to a "torque angle sensor that measures the degree of
torque angle applied beyond a specific point of reference." (Col. 1, 11. 8-9.)
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Figure 3 of McGee, which illustrates torque angle sensor 46 placed between
ratchet 48 and socket 50 (col. 5, 11. 41--43), is reproduced below:
FIGl 3
L._-________ ------'= u- RATCHET _j
TORQUE
ANGLE
SENSOR
46
' _.,,
r:S- 50
~j
McGee explains that "[t]he ratchet 48 is used to generate the torque to tum a
fastener" and "[t]he torque is transferred to the sensor 46 and then onto the
socket 50." (Col. 5, 11. 43--46.) Because McGee explains that ratchet 48
generates torque, which is transferred to socket 50 via sensor 46, McGee
teaches the limitation "wherein the housing is coaxial with the driving head
of the hand tool."
Appellant argues that "in Figure 3 of McGee, the torque angle sensor
is placed between the socket and the ratchet; thus, McGee also fails to
disclose the feature of 'a gripper mounted onto the housing to fasten the
external-coupled electronic angle measurement apparatus to a hand tool.'"
(Br. 14.) Similarly, Appellant argues "nowhere does McGee explicitly
describe that the cited first coupling portion is a gripper." (Br. 15.)
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Patent 8,347,515 B2
However, the Examiner cited Baumann, rather than McGee, for teaching the
limitation "a gripper mounted onto the housing to fasten the extemal-
coupled electronic angle measurement apparatus to a hand tool." (Ans. 6---7;
see also Final Act. 11.)
Appellant also argues that "[i]n the configuration of McGee, where
the housing 46 also forms a driving head, a simple gripper (as in [Baumann])
would not sustain the forces normally placed on a driving head." (Br. 14--
15.) However, Appellant has not presented any evidence to support the
arguments that the gripper of Baumann would not sustain forces placed on
the driving head. Arguments of counsel cannot take the place of factually
supported objective evidence. See, e.g., In re Huang, 100 F.3d 135, 139--40
(Fed. Cir. 1996).
Therefore, we agree with the Examiner that the combination of
Raumann and McGee would have rendered obvious dependent claim 28,
which includes the limitation "wherein the housing is coaxial with the
driving head of the hand tool."
Accordingly, we sustain the rejection of dependent claim 28 under 35
U.S.C. § 103(a).
DECISION
The Examiner's decision rejecting claims 21, 25, and 27 under
35 U.S.C. § 112, first paragraph, is affirmed.
The Examiner's decision rejecting claims 23 and 25 under 35 U.S.C.
§ 112, second paragraph, is affirmed.
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The Examiner's decision rejecting claim 24 under 35 U.S.C. § 112,
second paragraph, is reversed.
The Examiner's decision rejecting claims 1, 3, 4, 16, 21, 23 and 25
under 35 U.S.C. § 102(e), or in the alternative, under 35 U.S.C. § 103(a) is
affirmed.
The Examiner's decision rejecting claims 22, 24, and 26-28 under 35
U.S.C. § 103(a) is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
PATENT OWNER:
Muncy, Geissler, Olds f& Lowe, P.C.
4000 Legato Road
Suite 310
FAIRFAX VA 22033
THIRD PARTY REQUESTER:
James O'Sullivan
12th Floor, Ruttonjee House
11 Duddell St
Hong Kong, HK
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