Ex Parte Bertsch et alDownload PDFPatent Trial and Appeal BoardAug 14, 201814046411 (P.T.A.B. Aug. 14, 2018) Copy Citation 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 Copy with citationCopy as parenthetical citation