Ex Parte Bertsch et al

Patent Trial and Appeal Board

Aug 14, 2018

14046411 (P.T.A.B. Aug. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/046,411 10/04/2013
60840 7590 08/16/2018
MICHAEL, BEST & FRIEDRICH LLP (MT)
100 EAST WISCONSIN A VENUE
SUITE 3300
MILWAUKEE, WI 53202
FIRST NAMED INVENTOR
Matthew T. Bertsch
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.
066042-8047-US02 2032
EXAMINER
CHOI, STEPHEN
ART UNIT PAPER NUMBER
3724
NOTIFICATION DATE DELIVERY MODE
08/16/2018 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):
MKEIPDOCKET@MICHAELBEST.COM
milwaukeeip@milwaukeetool.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHEW T. BERTSCH, STEVEN F. THIEL,
WILLIAM A. ELGER, and MELISSA M. MARINEAU
Appeal 2017-011322
Application 14/046,411 1
Technology Center 3700
Before LINDA E. HORNER, STEVEN D.A. McCARTHY, and
BRENT M. DOUGAL, Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's decision rejecting claims 1-4, 6-17, and 19-22. Final Office
Action (November 22, 2016) (hereinafter "Final Act."). We have
jurisdiction under 35 U.S.C. § 6(b ).
1 Milwaukee Electric Tool Corporation ("Appellant") is the applicant under
37 C.F.R. § 1.46 and is identified as the real party in interest. Appeal Brief
(April 24, 2017) (hereinafter "Appeal Br."), at 1.
Appeal2017-011322
Application 14/046,411
The claimed subject matter relates to a workpiece locator, such as a
shoe, for locating a workpiece with respect to a cutting portion of a band saw
blade. Specification (October 4, 2013) (hereinafter "Spec."), ,r,r 2-3. The
Examiner rejected claims 1-4 and 6-17 as obvious over the prior art and
rejected claims 19-22 as anticipated by the prior art. 2 The Examiner also
rejected claims 1-11 under the doctrine of obviousness-type double
patenting over the claims of related patents in combination with the prior art,
and provisionally rejected claims 1, 2, and 6-8 under the doctrine of
obviousness-type double patenting over the claims of a related patent
application in combination with the prior art. Appellant contests the
statutory rejections based on prior art, but does not contest the obviousness-
type double patenting rejections.
For the reasons explained below, we find no error in the Examiner's
anticipation rejection, but we find error in the Examiner's obviousness
rejection. We summarily sustain the uncontested non-provisional double
patenting rejections, and we do not reach the provisional double patenting
rejection. Accordingly, we AFFIRM-IN-PART.
CLAIMED SUBJECT MATTER
Claims 1, 13, and 19 are the independent claims. Claims 1 and 19 are
illustrative of the subject matter on appeal and are reproduced below.
1. A band saw comprising:
a first wheel and a second wheel for supporting a
continuous band saw blade;
2 The Examiner objected to claims 5 and 18 as being dependent upon a
rejected base claim, and indicated the claims would be allowable if rewritten
in independent form including all the limitations of the base claim and any
intervening claims. Final Act. 1, 10.
2
Appeal2017-011322
Application 14/046,411
a motor operable to drive at least one of the first and
second wheels;
a housing supporting the first wheel and the second wheel;
a shoe for engaging a workpiece, the shoe including a first
detent feature; and
a second detent feature cooperating with the first detent
feature to hold the shoe with respect to the housing;
wherein the shoe is moveable in a direction with respect to
the housing between an engaged position in which the first and
second detent features cooperate to hold the shoe with respect to
the housing, and a non-engaged position in which the shoe is
movable;
wherein the shoe is moveable out of the engaged position
by application of a force acting on the shoe and acting
substantially in the direction to move the shoe with respect to the
housing, and acting to overcome cooperation between the first
and second detent features in the engaged position.
19. A shoe for a band saw, the shoe comprising:
a body having a substantially planar surface for engaging
a workpiece and having a plurality of apertures aligned linearly
along the substantially planar surface;
a biased detent feature having a holding force with a
magnitude sufficient to hold the body with respect to the band
saw when the detent feature is seated in one of the plurality of
apertures; and
at least one rail projecting from the substantially planar
surface and extending substantially parallel to a direction of
alignment of the plurality of apertures for constraining the
movability of the body to a linear path;
wherein the body is moveable linearly in the direction of
alignment of the plurality of apertures between an engaged
position in which the body is held with the holding force of the
detent feature, and a non-engaged position in which the body is
movable with respect to the detent feature; and
3
Appeal2017-011322
Application 14/046,411
wherein the body is moveable out of the engaged position
in the direction by application of a disengaging force in the
direction acting to move the body with respect to the detent
feature and acting to overcome the holding force in the engaged
position.
Appeal Br. 19, 24 (Claims Appendix).
Clauson
Pelcin
Sugiura et al. ("Sugiura")
Miller et al. ("Miller")
Bertsch et al. ("Bertsch '759")
Bertsch et al. ("Bertsch '7 60")
Bertsch et al. ("Bertsch '916")
EVIDENCE
us 2,916,062
us 4,126,340
US 2005/0183271 Al
US 2009/0265943 Al
US 8,549,759 B2
US 8,549,760 B2
us 14/045,916
REJECTIONS
Dec. 8, 1959
Nov. 21, 1978
Aug. 25, 2005
Oct. 29, 2009
Oct. 8, 2013
Oct. 8, 2013
filed Oct. 4,
2013
The Final Office Action includes the following rejections:
1. Claims 1-11 stand rejected under the judicially-created doctrine of
obviousness-type double patenting as unpatentable over claims 13-
17, 19, 21, 22, 25, and 26 of Bertsch '759 in view of Miller and as
unpatentable over claim 9 of Bertsch '760 in view of Miller.
2. Claims 1, 2, and 6-8 stand provisionally rejected under the
judicially-created doctrine of obviousness-type double patenting as
unpatentable over once-pending claims 13, 17, and 25 of
Bertsch '916 in view of Miller.
3. Claims 19-22 stand rejected under pre-AIA 35 U.S.C. § I02(b) as
anticipated by Sugiura.
4. Claims 1-4 and 6-17 stand rejected under pre-AIA 35 U.S.C.
§ I03(a) as unpatentable over Miller and either Clauson or Pelcin.
4
Appeal2017-011322
Application 14/046,411
ANALYSIS
First Ground of Rejection: Obviousness-type Double Patenting
Appellant does not contest the first ground of rejection of claim 1-11
based on obviousness-type double patenting. Thus, we summarily sustain
this first ground of rejection.
Second Ground of Rejection: Provisional Obviousness-type Double
Patenting
Since the date of the Final Action, the applicant in Bertsch '916
amended pending claims 13 and 25 and canceled claim 17 that formed the
basis for the provisional obviousness-type double patenting rejection.
Bertsch '916 subsequently issued as U.S. Patent No. 9,701,035 B2
("the '035 patent") on July 11, 2017. We decline to reach this provisional
rejection because the claims that formed the basis of the provisional
rejection have changed. We leave it to the Examiner in any further
prosecution of this application to determine whether an obviousness-type
double patenting rejection is appropriate in light of the now-issued claims of
the '035 patent.
Third Ground of Rejection: Anticipation of Claims 19-22 by Sugiura
Appellant argues that the Examiner erred in finding that Sugiura's
engaging member 9 is "a biased detent feature having a holding force with a
magnitude sufficient to hold the body with respect to the band saw when the
detent feature is seated in one of the plurality of apertures" as recited in
independent claim 19. Appeal Br. 16-17; Reply Brief (September 6, 201 7)
(hereinafter "Reply Br."), at 7. The Examiner explains, "Sugiura clearly
teaches that the spring force of the member 9 press-fits the engaging
protrusion 9a in the base part 7a such that the member 7 is maintained in a
5
Appeal2017-011322
Application 14/046,411
position by the member 9." Examiner's Answer (July 6, 2017), at 8 (citing
Sugiura ,r,r 40, 45).
The language of claim 19 is broad in that it recites a holding force of a
magnitude sufficient to hold the body with respect to the band saw when the
detent feature is seated in one of the plurality of apertures, but the claim does
not describe under what conditions this holding function must occur. For
example, the claim broadly encompasses a holding force of a magnitude
sufficient to hold the body with respect to the band saw when no external
force, such as a workpiece, is acting on the body.
Sugiura discloses that locking member 10 holds support member 7
with respect to the saw. Sugiura ,r,r 42, 45. An operator must push locking
member 10 in the direction of arrow A, shown in Fig. 4(b ), to unlock support
member 7. Id. ,r 45. Once unlocked, the operator can then slide support
member 7 relative to the saw. Id. As support member 7 slides, engaging
protrusion 9a is pressed by the spring force of engaging member 9 so as to
enter one of engaging holes 7b, and resistance provides a tactile indicator to
the operator that entry of protrusion 9a into hole 7b has occurred. Id.
Sugiura describes that "the location of the support member 7 at which both
oblique faces 9b and 9c [of engaging protrusion 9a] make contact with the
engaging hole 7b is set to correspond to a location at which the support
member 7 can be locked by a locking device." Id. ,r 40. Thus, the function
of engaging member 9 is to provide feedback to the operator, by means of
resistance felt by the user, that support member 7 is in a position at which
the operator can push locking member 10 into a locked position to lock
support member 7 relative to the saw. Id. ,r 16. This resistance described in
Sugiura is due to a holding force that occurs when the engaging protrusion
6
Appeal2017-011322
Application 14/046,411
9a is press-fit into engaging hole 7b. This holding force must be overcome
by the operator pulling or pushing on the end of support member 7 in order
to move support member 7 relative to the saw. Thus, the holding force is of
a magnitude sufficient to hold support member 7 with respect to the saw
when engaging protrusion 9a is seated in engaging hole 7b. Although
Sugiura does not describe that engaging member 9 creates a sufficient
holding force, absent the use of locking member 10, to hold support member
7 with respect to the band saw when Sugiura's guide shoe 8 engages a
workpiece during use of the saw, the language of claim 19 is not so limited.
For this reason, we sustain the rejection of independent claim 19 as
anticipated by Sugiura. Appellant does not present any additional arguments
in support of the patentability of dependent claims 20 and 21 over Sugiura.
Accordingly, we treat these claims as grouped with claim 19, and likewise
sustain the rejection of these dependent claims. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
As to dependent claim 22, Appellant further argues that the Examiner
erred in finding that Sugiura's support member 7 has an open-ended slot
(e.g., between side wall parts 7c and 7d) that is elongated substantially
parallel to the direction of alignment of the plurality of apertures. Appeal
Br. 17. Appellant argues that an opening disposed in support member 7,
through which a base end of engaging member 9 passes, 3 is elongated in a
direction perpendicular to the direction of alignment of the plurality of
3 Sugiura discloses that engaging member 9 extends in a cantilevered shape
above support member 7, and a base end of engaging member 9 extends
through an opening in support member 7 and is screwed to main body 2.
Sugiura ,r,r 40-41, Fig. 2.
7
Appeal2017-011322
Application 14/046,411
apertures. Appeal Br. 18 ( showing Figure 3 of Sugiura annotated by
Appellant). The Examiner's finding, however, did not point to this opening
as the claimed open-ended slot. Rather, the Examiner pointed to the open-
ended slot formed by the side wall parts 7 c and 7 d. Final Act. 6; Ans. 9.
Sugiura describes that support member 7 has a cross-sectional
U-shape with an approximately flat base part 7a containing slot-shaped
engaging holes 7b, and left and right side wall parts 7 c and 7 d. Sugiura
,r,r 40-41, Figs. 3, 4. As is clearly visible from Figures 3, 4(a), and 4(b) of
Sugiura, the slot formed by left and right side wall parts 7 c and 7 d of support
member 7 extends lengthwise in a direction parallel to the direction of
alignment of the plurality of apertures. These side wall parts 7 c and 7 d
extend along support member 7 well beyond the hole identified by Appellant
in the annotated Figure in the Appeal Brief. Thus, we agree with the
Examiner that Sugiura contains an open-ended slot elongated in the claimed
direction. As such, Appellant has not identified error in the Examiner's
rejection of dependent claim 22 as anticipated by Sugiura.
Fourth Ground of Rejection: Unpatentability of claims 1-4 and 6-17 over
Miller and either Clauson or Pelcin
The Examiner found that Miller discloses a band saw substantially as
claimed in independent claims 1 and 13, including a shoe 204 with a first
detent feature 234 and a second detent feature 214, 216 cooperating with the
first detent feature to hold the shoe with respect to the housing. Final
Act. 7-9. The Examiner found that "[a]lthough Miller teaches that the
mating features 234 can be any feature such as detents, Miller fails to
explicitly teach the force is also acting to overcome cooperation between the
first and second detent features in the engaged position." Id. at 7, 9 (citing
Miller ,r 77). The Examiner found that "Clauson teaches a work engaging
8
Appeal2017-011322
Application 14/046,411
device ( e.g., 45) capable of changing a position by a force to overcome
detent features ( e.g., 46, 51 )" and "Pelcin teaches a detent system
comprising first and second detent features (e.g., 120, 124)." Id. at 7, 9. The
Examiner determined that it would have been obvious to use the detent
system of either Clauson or Pelcin to lock the shoe to the saw in Miller "to
provide an alternative height adjustment mechanism that is easier to change
a position of the shoe without tools." Id. The Examiner found that
modifying Miller to use the detent system of either Clauson or Pelcin
"would have provided the shoe capable of repositioning by a force acting in
the direction to overcome cooperation between the detent features." Id.
Appellant argues that the proposed modification of Miller's locking
device to use detents would not result in the claimed subject matter. Appeal
Br. 13. In particular, Appellant contends that Miller suggests using detents
capable of engaging the stud 214, such that a force applied to the stud 214
via the lever 216 can be applied to the block to clamp the shoe to the
housing. Id. Thus, Appellant asserts that the resulting combination would
retain a lever for selectively engaging and disengaging the stud from the
detents. Id. at 14. As such, Appellant argues that the modified locking
feature would not provide a shoe moveable out of the engaged position by
application of a force (1) acting on the shoe, (2) acting substantially in the
direction to move the shoe with respect to the housing, and (3) acting to
overcome cooperation between the first and second detent features in the
engaged position, as required by claims 1 and 13. Id.
Miller teaches an adjustable guide shoe that includes "a toolless
adjustment mechanism to allow the position of the guide shoe to be easily
adjusted." Miller ,r 9; id. ,r 73. In particular, Miller's adjustment mechanism
9
Appeal2017-011322
Application 14/046,411
includes block 212, stud 214, and lever 216. Id. ,r 73; Fig. 20. Block 212
includes mating features 234 that engage a corresponding mating feature
240a on stud 214 to transmit a torque from lever 216 to block 212 to clamp
shoe 204 to housing 12. Id. ,r 78. Miller discloses:
The mating features 234 can include any feature capable of
engaging the stud 214 in a variety of positions, such as ridges,
angled projections, detents, etc. The mating features 234 can
engage the stud 214 such that a force applied to the stud 214,
via the lever 216, can be applied to the block 212 to clamp the
shoe 204 to the housing 12.
Id. ,r 77. Thus, Miller teaches that even when employing a detent in its
adjustment mechanism, a torque is applied via lever 216 to block 212 in
order to clamp shoe 204 to housing 12. The Examiner has not provided an
adequate explanation of how one having ordinary skill in the art seeking to
employ a detent in the adjustment mechanism of Miller, would have
modified Miller in the manner disclosed in either Clauson or Pelcin in lieu of
retaining the lever of Miller, as explicitly suggested in Miller itself. As
such, the Examiner has not demonstrated adequately that the combined
teachings of Miller and either Clauson or Pelcin would have resulted in a
shoe moveable out of the engaged position by application of a force in the
direction as recited in independent claims 1 and 13.
For this reason, we do not sustain the rejection of claims 1 and 13, and
their dependent claims 2-4, 6-12, and 14-17, as unpatentable over Miller
and either Clauson or Pelcin.
10
Appeal2017-011322
Application 14/046,411
DECISION
We summarily sustain the decision of the Examiner rejecting claims
1-11 under the doctrine of obviousness-type double patenting over various
claims of either Bertsch '759 or Bertsch '760 in view of Miller.
We do not reach the decision of the Examiner provisionally rejecting
claims 1, 2, and 6-8 under the doctrine of obviousness-type double patenting
over claims of Bertsch '916 in view of Miller.
We sustain the decision of the Examiner rejecting claims 19-22 under
35 U.S.C. § 102(b) as anticipated by Sugiura.
We do not sustain the decision of the Examiner rejecting claims 1-4
and 6-17 under 35 U.S.C. § 103(a) as unpatentable over Miller and either
Clauson or Pelcin.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART
11