Ex Parte Berry et al

Board of Patent Appeals and Interferences

Apr 8, 2010

11095725 (B.P.A.I. Apr. 8, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ALAN BERRY, CRAIG A. SCHELL, CHARLES L.
BRADENBAUGH IV, JAMES J. KENNEY, and PAUL GROSS
____________________

Appeal 2009-001789
Application 11/095,725
Technology Center 3700
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Decided: April 8, 2010
____________________

Before JENNIFER D. BAHR, MICHAEL W. O’NEILL, and
KEN B. BARRETT, Administrative Patent Judges.

BARRETT, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Alan Berry et al. (Appellants) seek our review under 35 U.S.C. § 134
of the Examiner’s decision rejecting claims 1-3, 7-12, and 25. Claims 26-43
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have been withdrawn from consideration.1 We have jurisdiction under 35
U.S.C. § 6(b).

SUMMARY OF THE DECISION
We REVERSE.

THE INVENTION
Appellants’ claimed invention pertains to a driving tool, such as a
power nailer or stapler. Spec. 1, paras. [0002] – [0003]. Claim 1,
reproduced below, is representative of the subject matter on appeal.
1. A tool comprising:
a driver having a driver blade and an upper driver
member that is coupled to the driver blade, the upper driver
member having a driver body that is formed of titanium; and
a motor having an output member, the output member
contacting a surface of the upper driver member to transmit
energy from the output member to the upper driver member to
translate the driver along an axis.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:

1 Appellants assert that claims 26-45 are being appealed, but also
acknowledge that those claims have been withdrawn. See App. Br. 2.
Neither the Appellants nor the Examiner identify these claims as subject to a
rejection (App. Br. 3-4; Ans. 3-4), thus we do not consider those claims to
be on appeal. We note a petition under 37 C.F.R. § 1.144 has been filed
concerning claims 26-45. See Paper filed Sept. 14, 2006. We leave it to
Appellants and the Technology Center to resolve the status of the petition.
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Kotval et al. US 3,929,427 Dec. 30, 1975
Wolfla et al. US 4,124,737 Nov. 7, 1978
Cunningham US 4,747,455 May 31, 1988
Fealey US 5,000,365 Mar. 19, 1991
Barber et al. WO 02/16085 A1 Feb. 28, 2002

The following Examiner’s rejections are before us for review:
1. Claims 1, 2, and 12 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Barber;
2. Claim 3 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Barber and Kotval;
3. Claims 1, 11, 12, and 25 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Cunningham and Wolfla; and
4. Claims 7-10 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Barber and Fealey.

ISSUES
The Examiner found that Barber’s coil 18 corresponds to the motor of
Appellants’ claim 1. Ans. 5. Appellants contend that this finding is
erroneous because Barber’s “motor” would also have to include a moveable
element, namely piston 23. Reply Br. 2; see App. Br. 5. Thus, the first issue
on appeal is whether Barber’s coil constitutes the motor of claim 1.
Appellants contend that the obviousness rejection based on
Cunningham and Wolfla is in error because the combination does not render
obvious a tool having a driver body formed of titanium. See App. Br. 12;
Reply Br. 6. The Examiner maintains that the combined teachings yield
Cunningham’s driver having a titanium oxide coating on the driver. Ans. 8.
Thus, the second issue on appeal is whether the Examiner’s proposed
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combination of Cunningham and Wolfla results in a driver body that is
formed of titanium.

FINDINGS OF FACT
We find that the following enumerated findings are supported by at
least a preponderance of the evidence.
1. The ordinary meaning of “motor” in the field of electricity is
“[a] machine that converts electric energy into mechanical energy by
utilizing forces produced by magnetic fields on current-carrying
conductors.” MCGRAW-HILL DICTIONARY OF SCIENTIFIC AND TECHNICAL
TERMS 1300 (5th ed. 1994).
2. Barber discloses a direct electric propulsion fastener driving
tool. See Barber 5:14-19; 22:13. The tool has a propulsion coil 18 with
electric current supplied via conductors 19 and 20, and a drive piston
assembly 23. Id. at 7:22-23, 8:3. Drive piston assembly 23 is composed of
metal member 25 and fastener driving member 27. Id. at 8:4-5. The
propulsion coil 18 generates a magnetic field. Id. at 9:24.
3. Barber explains the operation of the device as follows:
As current travels through propulsion coil 18, eddy currents are
induced in drive piston 23. The eddy currents repulse drive
piston 23 from coil 18 according to the Lorentz force principle
and propel drive piston 23 downwardly within bore 24.
Barber 8:13-16.
4. Barber indicates that a direct electric propulsion tool is a
replacement for traditional electric motor tools. Barber 5:15-17.
5. Appellants’ Specification states that “[t]he upper driver member
500 may be unitarily formed in an appropriate process, such as investment
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casting, from a suitable material.” Spec. 17, para. [0126]. Appellants
identify titanium as such a material. Id. According to Appellants’
Specification, titanium exhibits relatively poor wear resistant properties, but
is utilized by Appellants because of its light weight and high strength-to-
weight ratio. Id. The Specification further explains that a coating may be
applied to the body 510 (which is part of the upper driver member 500) to
further control wear. Id. at 17, para. [0126]; 18, para. [0128]. In the original
Specification, independent claim 1 and its dependent claim 2 recite,
respectively, “the driver body being formed of titanium” and “a wear-
resistant coating is applied to the driver body.” Spec. 51.
6. Wolfla discloses a wear-resistant coated article consisting of a
substrate with a coated layer. Wolfla, col. 1, ll. 64-67. The wear-resistant
coating is composed of several ingredients including 0 to 50 volume percent
of at least one metal oxide. Id., col. 1, l. 64 – col. 2, l. 5. One of the
disclosed oxides is titanium dioxide. Id., col. 3, ll. 39-53.

PRINCIPLES OF LAW
During examination of a patent application, pending claims are given
their broadest reasonable construction consistent with the specification. In
re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969); In re Am. Acad. of Sci.
Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The claims are construed
by reading the claim language “in light of the specification as it would be
interpreted by one of ordinary skill in the art.” Am. Acad. of Sci. Tech. Ctr.,
367 F.3d at 1364 (citations omitted). The construction cannot be “beyond
that which was reasonable in light of the totality of the written description.”
In re Baker Hughes Inc., 215 F.3d 1297, 1303 (Fed. Cir. 2000).
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ANALYSIS
The rejections based on Barber
Claim 1 recites “a driver” and “a motor having an output member.”
The Examiner found that Barber discloses a driver comprising metal
member 25 and fastener driving member 27 (Ans. 5), both of which are
components of drive piston assembly 23 (Fact 2). The Examiner further
found that Barber’s coil 18 corresponds to the motor and the output member.
See Ans. 3 (referring twice to “output member 18”); Ans. 5 (finding that
Barber’s motor is comprised of coils 18 that receive current from
conductors). As mentioned above, Appellants contend that Barber’s coil 18
alone does not constitute a motor, but that Barber’s motor would also
include the piston 23. Reply Br. 2.
Appellants’ argument is persuasive. An electric motor is a device that
converts electrical energy into mechanical energy by the use of magnetic
fields. Fact 1. Barber’s coil generates a magnetic field (see Fact 2), but the
device requires an additional structure to utilize that field in the conversion
of electrical energy to mechanical energy. That additional structure is the
drive piston 23, in which eddy currents are induced by the coil to propel the
piston. Fact 3. The Examiner did not find that the piston is part of the
motor, but rather found that piston components (Barber’s elements 25 and
27) constitute the recited driver. See Ans. 3, 5. Additionally, Barber
suggests that there is a distinction, in the art of driver tools, between direct
electric propulsion tools such as Barber’s device and traditional electric
motor tools. See Fact 4. On the record before us, we cannot find by a
preponderance of the evidence that Barber’s coil constitutes a motor. As
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such, we are constrained to reverse the rejection of claim 1 and its dependent
claims 2 and 12 as anticipated by Barber.
Claims 3 and 7-10 depend directly or indirectly from claim 1. The
Examiner does not point to any teaching in Kotval or Fealey which would
make up for the deficiency in Barber discussed above, or articulate any
reason why it would have been obvious to modify Barber so as to overcome
this deficiency. See Ans. 3, 4, 6-7, 8. Thus, we also reverse the rejection of
claim 3 as being unpatentable over Barber and Kotval and the rejection of
claims 7-10 as being unpatentable over Barber and Fealey.

The rejection of claims 1, 11, 12, and 25 under 35 U.S.C. § 103(a) as being
unpatentable over Cunningham and Wolfla
Claim 1 recites “the upper driver member having a driver body that is
formed of titanium.” Claims 11, 12 and 25 depend directly or indirectly
from claim 1.
The Examiner found that Cunningham discloses an upper drive
member, but that “Cunningham does not disclose the upper drive member
being formed of titanium.” Ans. 4. Wolfla discloses a wear-resistant
coating to be applied to a substrate, and that the coating may contain
titanium dioxide. Fact 6. According to the Examiner, the combination of
references results in Cunningham’s driver having a titanium oxide coating
on the driver. Id. at 8. Thus, reasons the Examiner, the titanium-body
limitation is satisfied because the modified driver will include titanium
dioxide. Id.
The Examiner construes the phrase “a driver body that is formed of
titanium” as “simply requir[ing] that any portion of the body of the driver
must include titanium, and does not limit a specific proportion of the driver
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to include the claimed titanium formation.” Ans. 8. However, we conclude
that one of ordinary skill in the art reading claim 1 in light of the
Specification (see Fact 5) would understand that a coating on the driver body
is not a portion of the driver body. In other words, one would understand
claim 1 as requiring the driver body itself – not a coating on that body – to
be formed of titanium. The Examiner did not find that the combined
teachings would result in the driver body itself being formed of titanium or
adequately articulate why it would have been obvious to have a driver body
formed of titanium. As such we cannot sustain the rejection of claim 1 and
its dependent claims 11, 12, and 25 as obvious over Cunningham and
Wolfla.

CONCLUSIONS
Barber’s coil does not constitute the motor of Appellants’ claim 1.
The Examiner’s proposed combination of Cunningham and Wolfla
does not result in a driver body that is formed of titanium.

DECISION
The decision of the Examiner to reject claims 1-3, 7-12, and 25 is
reversed.

REVERSED

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