Ex Parte Besch et al

Board of Patent Appeals and Interferences

Jun 10, 2009

10320307 (B.P.A.I. Jun. 10, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte HANSJOERG BESCH, JIANHUA LI, and DETLEF KLOTZ
____________

Appeal 2009-001445
Application 10/320,307
Technology Center 3700
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Decided: 1 June 10, 2009
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Before JENNIFER D. BAHR, JOHN C. KERINS, and
STEFAN STAICOVICI Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2009-001445
Application 10/320,307

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STATEMENT OF THE CASE
Hansjoerg Besch et al. (Appellants) appeal under 35 U.S.C. § 134
from the Examiner’s decision rejecting claims 16, 19-22, 24, and 26-34.
Claims 17, 18, and 23 have been withdrawn. Claims 1-15 and 25 have been
canceled. We have jurisdiction over this appeal under 35 U.S.C. § 6 (2002).

THE INVENTION
The Appellants’ invention is drawn toward a balancing weight 35
mounted on a balancing section 34 of an oscillating tool 30, for balancing
the oscillating tool 30 with respect to the pivot axis of a drive shaft 14 on
which the oscillating tool 30 is mounted. Specification 7, ¶ [00040] and fig.
1.
Claim 16 is representative of the claimed invention and reads as
follows:
16. A balancing weight being mated to an oscillating tool for
balancing said oscillating tool with respect to a pivot axis
about which said balancing weight and said oscillating
tool can be commonly driven in an oscillating movement,
wherein said oscillating tool comprises an attachment
opening for attaching a drive shaft to said oscillating tool,
said oscillating tool further comprising a working section
spaced from said attachment opening for processing a
work piece;
said balancing weight being mated with said oscillating
tool during oscillation of said oscillation tool so as to
avoid any unbalancing when being oscillatingly driven
commonly with and in the same rotational direction as
said oscillating tool about said attachment opening.

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Application 10/320,307

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THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Nitz US 5,697,835 Dec. 16, 1997
Rodaway US 5,717,139 Feb. 10, 1998

The Appellants seek review of the Examiner’s rejections of claims 16,
19-22, 24, and 26-34 under 35 U.S.C. § 102(b) as anticipated by Rodaway
with evidence provided by Nitz.2

THE ISSUE
Have the Appellants demonstrated that the Examiner erred in
determining that Rodaway teaches a balancing weight mated to an
oscillating tool, wherein the balancing weight is mated with the oscillating
tool when the oscillating tool oscillates, as required by independent claim
16?

SUMMARY OF DECISION
We AFFIRM.

PRINCIPLES OF LAW

2 The Examiner used the teachings of Nitz merely to provide evidence
of oscillating blades that come in circular shapes such as the blade of
Rodaway. Ans. 6. With respect to the Appellants’ position that “it would
not have been obvious to one skilled in the art to have modified Rodaway”
(Br. 10), we do not find that the Examiner has made a determination of
unpatentability based on obviousness, or proposed any modification to
Rodaway’s blade. As such, the Appellants’ arguments with respect to the
issue of obviousness are not relevant in the instant appeal.
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Anticipation
"A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference." Verdegaal Bros, Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987).

OPINION
The Appellants argue the rejection of claims 16, 19-22, 24, and 26-34
under 35 U.S.C. § 102(b) as anticipated by Rodaway together as a group.
Br. 7. Therefore, in accordance with 37 C.F.R. 41.37(c)(1)(vii)(2007), we
have selected claim 16 as the representative claim to decide the appeal, with
claims 19-22, 24, and 26-34 standing or falling with claim 16.
The Appellants argue that although Rodaway teaches using balancing
weights to balance a circular saw, the weights of Rodaway
are used only during the blade balancing process in
order to determine where holes should be drilled in
the blade, and how large those holes should be.
The weights 3 are clearly not mated with the
oscillating tool during oscillation of the oscillation
tool so as to avoid any unbalancing with respect to
the pivot axis during oscillation. In fact, as no
suitable balancing weight attachment means is
taught by Rodaway, if the blade was used while
the weight was disposed thereon, the weight would
immediately fly off of the blade. Moreover, due to
the configuration of circular saws in general, an
attached balancing weight would almost certainly
interfere with rotation of the blade. This is
precisely why Rodaway teaches the removal of
material (via hole drilling) rather than the
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attachment of balancing weights during use of the
blade.
Br. 8. See also Br. 11-12.
In response, the Examiner takes the position that
[t]he Rodaway reference clearly teaches two
balancing techniques 1) adding a weight to the
blade (as shown in Figure 2) and 2) removing a
portion of the blade (as shown in Figure 3). Figure
2 clearly shows the claimed balancing technique of
adding a weight to the blade to achieve balance.
The brief description of Figure 2 (Column 1 lines
65-67) discloses "FIG. 2 is a diagrammatic side
elevation view of the FIG. 1 saw blade balanced by
the addition of a weight to one side
of the blade". Column 3 lines 35-40 state "Rather
than adding weight 3, however, the same result
may be achieved by removing a portion of the disk
equal to the amount of weight". This means that
the addition of weight and the subtraction of a
portion of the blade are two different methods of
achieving the same balanced outcome. Meaning if
the user did not want to drill a hole into the blade,
the user could just add a weight 3.
Ans. 6.
We are not persuaded by the Appellants’ arguments that error exists in
the Examiner’s position. Specifically, we find that Rodaway teaches adding
a weight 3 to a circular saw blade 1 in order to balance the blade in the
horizontal level position. Rodaway, col. 3, ll. 24-28 and fig. 2. Further,
Rodaway specifically teaches that
[r]ather than adding a weight 3, however, the
same result may be achieved by removing a
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portion of the disk [ aperture 4] equal to the
amount of the weight 3.
Rodaway, col. 3, ll. 36-38 and figs. 3 and 4. Emphasis added.
We find that a person of ordinary skill in the art would have readily
interpreted this language to mean that the same result of balancing the blade
of Rodaway is obtainable by way of the two disclosed methods. That is, in a
first method, the balancing weight 3 is added to the blade 1, and in a second
method, a hole 4 is drilled in the blade 1. Although we appreciate that the
majority of the disclosure of Rodaway is drawn towards the second method,
a reference is not limited to its preferred embodiment, and must be evaluated
for all of its teachings, including its teachings of non-preferred
embodiments. In re Burckel, 592 F.2d 1175, 1179 (CCPA 1979). As noted
above, Rodaway specifically teaches that it is known to balance a circular
blade by adding a weight.
The Appellants further argue that, “if the blade [of Rodaway] was
used while the weight was disposed thereon, the weight would immediately
fly off of the blade.” Br. 8. Although Rodaway does not explicitly teach
attaching the weight to the blade, we note that an artisan must be presumed
to know something about the art apart from what the reference discloses.
See In re Jacoby, 309 F.2d 513, 516 (CCPA 1962). As such, a person of
ordinary skill in the art of balancing circular blades would have understood
that, in order to balance a blade by adding a weight thereto, as taught by
Rodaway, the weight would have to be attached to the blade in order to
maintain a balanced blade during the blade’s function.
As for the Appellants’ argument that the weights 3 of Rodaway are
not mated with the oscillating tool during oscillation, claim 16 is directed
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solely to a balancing weight mated to an oscillating tool, not to a method of
operating an oscillating tool. Claim 16 does not require an oscillating drive
attached to the oscillating tool or a method step of oscillating the oscillating
tool. Within this context, we construe the language “said balancing weight
being mated with said oscillating tool during oscillation of said oscillation
tool” as requiring that the balancing weight be mated with the oscillation
tool such that it will be mated with the oscillating tool when the oscillating
tool is oscillated.
Lastly, the Appellants argue that
the blade disclosed in Rodaway, because of its
tooth configuration (which is designed for circular
sawing operation), could not even be effectively
used in connection with an oscillating tool.
Br. 12.
Although we appreciate the Appellants’ position, we note that the
Appellants have not provided any evidence to show that the blade of
Rodaway is not capable of being used as an oscillating tool. An attorney's
arguments in a brief cannot take the place of evidence. In re Pearson, 494
F.2d 1399, 1405 (CCPA 1974). After all, the Appellants describe an
“oscillating tool” as merely a tool that “can be driven in an oscillating
fashion.” Specification 1, ¶ [0001]. We find nothing in the Rodaway
disclosure itself that evidences that the circular blade therein could not be
driven in an oscillating fashion, nor have Appellants identified any portion
of the Rodaway disclosure that supports their position.
For the foregoing reasons, the Appellants’ arguments do not persuade
us that the Examiner erred in rejecting claim 16 and claims 19-22, 24, and
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26-34, standing or falling with claim 16. Hence, the rejection of claims 16,
19-22, 24, and 26-34 is sustained.

CONCLUSION
The Appellants have not demonstrated that the Examiner erred in
determining that Rodaway teaches a balancing weight mated to an
oscillating tool, wherein the balancing weight is mated with the oscillating
tool when the oscillating tool oscillates.

DECISION
The decision of the Examiner to reject claims 16, 19-22, 24, and 26-
34 is affirmed.
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)(1)(iv) (2008).

AFFIRMED

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