Ex Parte Bergquist

Patent Trial and Appeal Board

Jan 26, 2018

14239429 (P.T.A.B. Jan. 26, 2018)

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.
14/239,429 02/18/2014 Oskar Bergquist 38004/09653/P2743US00 2606
148434 7590 01/30/2018
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EXAMINER
McNair Law Firm, P.A. - Husqvarna
Bank of America Plaza
DAVIES, SAMUEL ALLEN
101 South Tryon Street, Suite 2610
Charlotte, NC 28280
ART UNIT PAPER NUMBER
3724
NOTIFICATION DATE DELIVERY MODE
01/30/2018 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):
mcnairip @ mcnair.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte OSKAR BERGQUIST
Appeal 2018-000892
Application 14/239,429
Technology Center 3700
Before MICHAEL L. HOELTER, LYNNE H. BROWNE, and
NATHAN A. ENGELS, Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Oskar Bergquist (Appellant) appeals under 35 U.S.C. § 134 from the
rejection of claims 1—10, 12, and 13.1 We have jurisdiction under 35 U.S.C.
§ 6(b).
We reverse.
1 Claim 1 was canceled in the Amendment filed November 28, 2016.
Appeal 2018-000892
Application 14/239,429
CLAIMED SUBJECT MATTER
Independent claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A battery-powered chain saw, comprising:
a housing extending in a longitudinal direction between a
front end and a rear end,
a rear handle fixedly connected to or integral with the
housing and extending in the longitudinal direction,
a front handle comprising a first leg portion and a second
leg portion, wherein the first and second leg portions are each
non-movably fixedly connected to the housing, wherein the first
leg portion is attached on a first side of a tool plane defined by
the guide bar and the second leg portion is attached on a second
side of the tool plane, and
an electric motor disposed within the housing and
arranged to drive a cutting element of the chain saw, the electric
motor having a motor rotation axis, the chain saw having a
longitudinal rotation axis, the longitudinal rotation axis being
parallel to a bottom surface of the chain saw,
wherein a first point in which a center axis of an upper
portion of the front handle intersects a vertical plane comprising
the longitudinal rotation axis of the chain saw, is positioned
rearwardly of a second point in which the motor rotation axis
intersects said vertical plane relative to the longitudinal rotation
axis of the chain saw,
wherein a battery is removably received within the
housing perpendicular to the vertical plane comprising the
longitudinal rotation axis and rearward of the upper portion of
the front handle, and
wherein the first point is positioned rearwardly of the
second point and the battery is positioned rearward of the upper
portion of the front handle to balance a distribution of mass of
the battery-powered chain saw.
2
Appeal 2018-000892
Application 14/239,429
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Ando US 4,555,849
Wolf US 6,016,604
Ashfield US 2004/0098869 A1
Ropkamp US 2010/0218386 A1
Fisher JP 64-69769
REJECTIONS
I. Claims 12 and 13 stand rejected under 35 U.S.C. § 112(b) as
indefinite.2
II. Claims 1—5, 7, 8, and 10—13 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Ropkamp, Ashfield, and Ando.
III. Claim 6 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Ropkamp, Ashfield, Ando, and Fischer.
IV. Claim 9 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Ropkamp, Ashfield, Ando, and Wolf.
V. Claims 1—5, 7, 8, 10 and 13 stand rejected under pre-AIA 35
U.S.C. § 103(a) as unpatentable over Ropkamp and Ashfield.
VI. Claim 6 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Ropkamp, Ashfield, and Fischer.
VII. Claim 9 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Ropkamp, Ashfield, and Wolf.
2 The statement of this rejection includes claim 11 and does not include
claim 12. Final Act. 3. However, as noted supra claim 11 is canceled, and
as such, is no longer pending and rejected. See Advisory Act. (December
15, 2016). Further the explanation of this rejection states that “Claim 12 has
a similar problem [to claim 13] with ‘substantially parallel’.” Thus, we
understand claim 12 to stand rejected for the same reasons as claim 13.
Dec. 3, 1985
Jan. 25, 2000
May 27, 2004
Sept. 2,2010
Mar. 15, 1989
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Appeal 2018-000892
Application 14/239,429
DISCUSSION
Rejection I
The Examiner determines that claims 12 and 13 are indefinite because
of the use of the claim terminology “substantially.” See Final Act. 4.
Specifically, the Examiner states that “[i]t is unclear how parallel the
surfaces need to be. Would 5 degrees off be ‘substantially parallel’? How
about 10 degrees?” Id.
Appellant contends that “[t]he use of relative terminology in claim
language, including terms of degree, does not automatically render the claim
indefinite under 35 U.S.C. 112(b).” Appeal Br. 10 (citing Seattle Box Co.,
Inc. v. Industrial Crating & Packing, Inc., 731 F.2d 818 (Fed. Cir. 1984).
Appellant further explains that “[acceptability of the claim language
depends on whether one of ordinary skill in the art would understand what is
claimed, in light of the specification.” Id. at 10—11. Appellant is correct.
Applying these principles to the claims at issue, Appellant argues that
“[o]ne of ordinary skill in the art would immediately understand and
appreciate that the term ‘substantially’ as recited in Claim 13 means close to
or very near parallel, such as to account for engineering and manufacturing
tolerances.” Id. at 11. The Examiner does not respond to this argument.
See generally Ans. Further, the Examiner’s explanation does not adequately
explain why the claim terminology “substantially” renders claims 12 and 13
indefinite.
For these reasons, we do not sustain the Examiner’s decision rejecting
claims 12 and 13 as indefinite.
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Appeal 2018-000892
Application 14/239,429
Rejection II
The Examiner determines that Ropkamp, Ashfield, and Ando disclose
or suggest all of the limitations of claim 1. Final Act. 4—8. In particular, the
Examiner reasons, based on an annotated copy of Figure 3 of U.S. Patent
No. D481,601, which is incorporated by reference in Ashfield, that Ashfield
suggests a chainsaw having a “center of gravity [that] is moved forward
relative to the front handle so the center of gravity is closer to the front
handle.” Id. at 6. The annotated Figure indicates what the Examiner
considers to be the “potential rotational axis of the motor.” See Appeal Br. 4
(including a copy of annotated Fig. 3).
Noting that “the rejection provides no evidence to support the
allegation that the annotated rotational axis of the motor, other than noting
that Ashfield discloses that the motor is within the area annotated as the
housing for the motor,” Appellant contends that “the rotation axis of the
motor could just as likely be even with or behind the front handle, or may be
in a different orientation, such as perpendicular to the front handle.” Id. at 5.
Appellant further contends that
well known features of the chains saw, such as the chain
sprocket, guide support/tension screw to retain and stabilize the
guide bar, and a gap or play between the sprocket and guide bar
to install and tighten the chain, would place the rotational axis
of the motor rearward of the front handle. Additionally,
contours of the sprocket guard also suggest that the rotational
axis of the motor is rearward of the front handle.
Id. Based on these contentions, Appellant argues that “[sjince at least the
position of the motor of Ashfield is unknown and likely behind or rearward
of the front handle, it cannot teach or suggest that the first point... is
positioned rearwardly of the second point” as claimed. Id. at 7.
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Appeal 2018-000892
Application 14/239,429
Responding to this argument, the Examiner explains that “Ashfield
discusses the importance of maintaining proper balance of the battery
powered chain saw, particularly when increasing the size of the battery (i.e.
providing a battery of greater mass) the center of gravity of the tool would
shift away from the desired location” and that Ashfield specifically refers to
the Underwriters Laboratories Inc. standard pertaining to balance of chain
saws. Ans. 17. However, these discussions in Ashfield do not sufficiently
explain why one skilled in the art would be motivated to modify Ropkamp’s
chain saw to include first and second points, as defined in claim 1,
positioned as claimed. Moreover, the Examiner’s reasoning is based on
speculation as to the location of the rotational axis of the motor, not on a
teaching or suggestion of the location of the rotational axis of the motor.
For these reasons, we do not sustain the Examiner’s decision rejecting
claim 1, and claims 2—5, 7, 8, 10, 12, and 13, which depend therefrom as
unpatentable over Ropkamp, Ashfield, and Ando.
Rejections III—VII
Rejections III—VII rely upon the same incomplete reasoning as
Rejection II discussed supra. Accordingly, we do not sustain the
Examiner’s decision in these rejections.
DECISION
The Examiner’s rejections of claims 1—10, 12, and 13 are
REVERSED.
REVERSED
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