Ex Parte 8,347,515 B2 et alDownload PDFPatent Trial and Appeal BoardMay 13, 201690013351 (P.T.A.B. May. 13, 2016) Copy Citation 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 Appeal2016-005063 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.) 2 Appeal2016-005063 Reexamination Control 90/013 ,3 51 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; 3 Appeal2016-005063 Reexamination Control 90/013 ,3 51 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. 4 Appeal2016-005063 Reexamination Control 90/013 ,3 51 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.) 5 Appeal2016-005063 Reexamination Control 90/013 ,3 51 Patent 8,347,515 B2 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 6 Appeal2016-005063 Reexamination Control 90/013 ,3 51 Patent 8,347 ,515 B2 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). 7 Appeal2016-005063 Reexamination Control 90/013 ,3 51 Patent 8,347,515 B2 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.) 8 Appeal2016-005063 Reexamination Control 90/013 ,3 51 Patent 8,347 ,515 B2 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.) 9 Appeal2016-005063 Reexamination Control 90/013 ,3 51 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. 10 Appeal2016-005063 Reexamination Control 90/013 ,3 51 Patent 8,347,515 B2 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 11 Copy with citationCopy as parenthetical citation