Ex Parte Berghauser et alDownload PDFPatent Trial and Appeal BoardJun 11, 201311823357 (P.T.A.B. Jun. 11, 2013) Copy Citation 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. 11/823,357 06/27/2007 Ulrich Berghauser P-US-PR-1216 1301 28268 7590 06/11/2013 THE BLACK & DECKER CORPORATION 701 EAST JOPPA ROAD, TW199 TOWSON, MD 21286 EXAMINER SMITH, SCOTT A ART UNIT PAPER NUMBER 3721 MAIL DATE DELIVERY MODE 06/11/2013 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 ULRICH BERGHAUSER and MARC HOLTWICK ____________________ Appeal 2011-001698 Application 11/823,357 Technology Center 3700 ____________________ Before: WILLIAM V. SAINDON, WILLIAM A. CAPP, and JEREMY M. PLENZLER, Administrative Patent Judges. SAINDON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-001698 Application 11/823,357 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1-3, 6, and 7 under 35 U.S.C. § 102(b) as anticipated by Shibata (US 5,871,059, iss. Feb. 16, 1999). Claims 8-17 have been withdrawn. We have jurisdiction under 35 U.S.C. § 6(b). The Claimed Subject Matter Claim 1, reproduced below with added emphasis, is illustrative of the claimed subject matter. 1. A powered hammer and tool comprising: a housing; a tool holder coupled to the housing, the tool holder having a front end and configured to hold a tool; a motor within the housing; a cylinder within the housing; a piston slideably received within the cylinder; a drive mechanism which converts rotary output of the motor into a reciprocating motion of the piston within the cylinder; a ram slideably mounted within the cylinder, forward of the piston, and which is reciprocatingly driven by the piston; a beat piece support structure that supports a beat piece, the beat piece being repetitively struck by the reciprocating ram and which in turn repetitively strikes an end of the tool when held in the tool holder to transfer the momentum of the ram to the tool, the beat piece support structure allowing the beat piece to slide between a first forward position and a second rearward position, wherein, when the powered hammer is not in operation, a first end of a tool having indicia located a predetermined distance from the first end can be inserted into the tool holder to slide the beat piece to the second rearward position so that a distance between the front end of the tool holder and the indicia indicates an amount of wear on the beat piece, Appeal 2011-001698 Application 11/823,357 3 wherein the indicia comprises a rib formed on the tool and the rib limits insertion of the tool into the tool holder. SUMMARY OF DECISION We REVERSE. OPINION Sole independent claim 1 requires, in relevant part, a tool having indicia in the form of a rib, wherein the rib limits insertion of the tool into a tool holder. See, e.g., Spec. fig. 9C (indicia 404 prevents tool 400 from further insertion into tool holder 502 at nose 550). While the Examiner relied on the embodiment of Figure 2 of Shibata to show various other features of claim 1 (see Ans. 3-4), the Examiner relies on the embodiment of Figure 3 to show the “rib limits insertion of the tool” limitation (see Ans. 5, “‘rib’ 33 against element 37 of the tool holder”). However, as Appellants point out, the Examiner is impermissibly combining features from separate embodiments in Shibata in an anticipation rejection. Br. 5. In the Figure 3 embodiment, no intermediate element (beat piece) is between the striking member (ram) and bit (tool). Shibata, col. 5, ll. 21-25 (“[in] this embodiment, the striking member is designed to strike the bit directly, unlike the first embodiment” [emphasis added]). The bit (tool) is captured within the tool holder 31 between washer 23 and stopper 37. Id., col. 5, ll. 40-42, 46-49, fig. 3. Accordingly, the tool-capturing features of the Figure 3 embodiment utilize a different arrangement from the Figure 2 embodiment because of the lack of the intermediate element in Figure 3. Appeal 2011-001698 Application 11/823,357 4 Thus, the Figure 3 embodiment does not show features of, or elaborate on, the embodiment in Figure 2, as the Examiner presumes. See Ans. 5. In an anticipation rejection, “it is not enough that the prior art reference … includes multiple, distinct teachings that [an ordinary] artisan might somehow combine to achieve the claimed invention.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). The combination of distinct embodiments lies in the purview of 35 U.S.C. § 103. Appellants have apprised us of error in the Examiner’s anticipation rejection. We do not sustain the Examiner’s rejection of claim 1, or of claims 2, 3, 6, and 7, which include the same error. DECISION We REVERSE the Examiner’s decision regarding claims 1-3, 6, and 7. REVERSED mls Copy with citationCopy as parenthetical citation