Ex Parte Bodine et al

Board of Patent Appeals and Interferences

Apr 18, 2011

10943795 (B.P.A.I. Apr. 18, 2011)

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.
10/943,795 09/17/2004 Thomas J. Bodine 0275L-000937 1993
27572 7590 04/18/2011
HARNESS, DICKEY & PIERCE, P.L.C.
P.O. BOX 828
BLOOMFIELD HILLS, MI 48303
EXAMINER
DURAND, PAUL R
ART UNIT PAPER NUMBER
3721
MAIL DATE DELIVERY MODE
04/18/2011 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte THOMAS J. BODINE and MICHAEL S. JUSTIS
____________

Appeal 2009-011979
Application 10/943,795
Technology Center 3700
____________

Before STEVEN D.A. McCARTHY, MICHAEL W. O’NEILL, and
STEFAN STAICOVICI, Administrative Patent Judges.

O’NEILL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Thomas J. Bodine and Michael S. Justis (Appellants) appeal under 35
U.S.C. § 134 from the Examiner’s decision rejecting claims 1-5 and 12-16.
Appellants cancelled claims 6-11 and 17-28. We have jurisdiction under 35
U.S.C. § 6(b).
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The Invention
The claims on appeal relate to a variable speed drill.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A variable speed drill comprising:
a housing;
a motor within the housing having a
lamination length of at least 30 millimeters and a
lamination diameter of at least 65 millimeters; and
a variable speed switch mounted to the
housing and operable to vary a power output of the
motor, said variable speed switch configured to
provide a first rotational speed in a first rotational
direction and a second rotational speed in said first
direction, said second rotational speed being
greater than said first rotational speed.

The Rejections
The following Examiner’s rejections are before us for review:
Claims 1-4 are rejected under 35 U.S.C. § 103(a) as unpatentable over
Gouge, Jr. (U.S. Patent No. 6,218,746 B1, issued Apr. 17, 2001), Olson
(U.S. Patent No. 6,007,277, issued Dec. 28, 1999), and Takezawa (U.S.
Patent No. 6,147,428, issue Nov. 14, 2000).
Claim 5 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Gouge, Jr., Olson, Takezawa, and Silverman (U.S. Patent No. 2,799,485,
issued Jul. 16, 1957).
Claims 12-15 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Gouge, Jr., Olson, and DeWalt (drill product information retrieved
from www.dewalt.com/us/products/tool_detail.asp? . . . , published Jun. 22,
2004).
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Claim 16 is rejected under 35 U.S.C. § 103(a) as unpatentable Gouge,
Jr., Olson, DeWalt, and Silverman.

SUMMARY OF DECISION
We AFFIRM.

OPINION
Analysis
Obviousness based upon Gouge, Jr., Olson, and either Takezawa or DeWalt
Appellants contend that there is no motivation for the combination of
references because Olson discloses a low power variable speed drill and it
would not have been obvious to a person of ordinary skill in the art to
combine the teachings of Olson with a high power drill. App. Br. 10.
Appellants also contend that the conventional variable speed low power drill
features disclosed in Olson provide the benefit of a slower start-up speed for
precision drilling and for driving fasteners into materials, such as
hardwoods, but high power variable speed drills are typically used to mix
thick or viscous substances such as cement or mortar. App. Br. 11.
Appellants also contend that since lower power drills are not appropriate for
mixing applications, one of ordinary skill in the art would not be motivated
to combine the variable speed features of Olson with a high power drill. Id.
The Examiner posits that Gouge, Jr. discloses the invention
substantially as claimed, except that Gouge, Jr. fails to explicitly disclose the
use of a variable speed switch. Ans. 3-4 and 6. With respect to claim 1, the
Examiner concludes that it would have been obvious to a person of ordinary
skill in the art to modify the tool of Gouge, Jr. with the variable speed switch
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of Olson and the lamination length and lamination diameter of Takezawa in
order to vary the power setting of the tool. Ans. 4. With respect to claim 12,
the Examiner concludes that it would have been obvious to a person of
ordinary skill in the art to modify the tool of Gouge, Jr. with the variable
speed switch of Olson and the motor power level of greater than 600 watts
of DeWalt in order to make a variable high power, high torque tool. Ans. 6.
We are not persuaded by Appellants’ arguments that there is no
motivation for the Examiner’s combination of references. We disagree with
Appellants’ allegation that a person of ordinary skill in the art would not
combine the teachings of Olson with a high power drill. All of Gouge, Jr.,
Olson, Takezawa, and DeWalt teach power tools for drilling and a person of
ordinary skill in the art would certainly look to one power tool for drilling in
order to modify or make improvements to another power tool for drilling.
This is true regardless of whether the first power tool is a low power drill
and the second power tool is a high power tool. Therefore, we are not
convinced that a person of ordinary skill in the art would not consider
combining the teachings of Gouge, Jr. with the teachings of Olson and the
teachings of either Takezawa or DeWalt.
In view of the foregoing, we sustain the Examiner’s rejections of
claims 1-5 and 12-16 under 35 U.S.C. § 103(a).
Inasmuch as we have concluded that the subject matter of Appellants’
claims 1-5 and 12-16 is prima facie obvious, and because Appellants have
furnished evidence in rebuttal of obviousness, we now turn to consider this
evidence. When such evidence is presented, it is our duty to consider all
evidence anew. See, e.g., In re Eli Lilly and Co., 902 F.2d 943 (Fed. Cir.
1990). We are mindful that objective evidence of non-obviousness in any
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given case may be entitled to more or less weight depending on its nature
and its relationship with the merits of the invention. See Stratoflex Inc. v.
Aeroquip Corp., 713 F.2d 1530 (Fed. Cir. 1983).
Secondary Considerations
To be given substantial weight in the determination of obviousness or
non-obviousness, evidence of secondary considerations must be relevant to
the subject matter as claimed, and therefore the examiner must determine
whether there is a nexus between the merits of the claimed invention and the
evidence of secondary considerations. Ashland Oil, Inc. v. Delta Resins &
Refractories, Inc., 776 F.2d 281, 305 n.42 (Fed. Cir. 1985), cert. denied,
475 U.S. 1017 (1986). In particular, an applicant asserting secondary
considerations to support its contention of non-obviousness bears the burden
of proof of establishing a nexus between the claimed invention and evidence
of secondary considerations. For example, in the case of evidence of
commercial success, the Federal Circuit has acknowledged that the applicant
bears the burden of establishing a nexus, stating:
In the ex parte process of examining a patent
application, however, the PTO lacks the means or
resources to gather evidence which supports or
refutes the applicant's assertion that the sales
constitute commercial success. C.f. Ex parte
Remark, 15 USPQ2d 1498, 1503 (Bd. Pat. App. &
Int. 1990)(evidentiary routine of shifting burdens
in civil proceedings inappropriate in ex parte
prosecution proceedings because examiner has no
available means for adducing evidence).
Consequently, the PTO must rely upon the
applicant to provide hard evidence of commercial
success.

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In re Huang, 100 F.3d 135, 139-40 (Fed. Cir. 1996). See also In re GPAC,
Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995); In re Paulsen, 30 F.3d 1475, 1482
(Fed. Cir. 1994) (Evidence of commercial success of articles not covered by
the claims subject to the obviousness rejection was not probative of
nonobviousness).
Objective evidence of non-obviousness, including commercial
success, must be commensurate in scope with the claims. In re Tiffin, 448
F.2d 791 (CCPA 197 1) (evidence showing commercial success of
thermoplastic foam “cups” used in vending machines was not commensurate
in scope with claims directed to thermoplastic foam “containers” broadly).
In order to be commensurate in scope with the claims, the commercial
success must be due to claimed features, and not due to unclaimed features.
Joy Technologies Inc. v. Manbeck, 751 F. Supp. 225, 229 (D.D.C. 1990),
aff’d, 959 F.2d 226, 228 (Fed. Cir. 1992) (Features responsible for
commercial success were recited only in allowed dependent claims, and
therefore the evidence of commercial success was not commensurate in
scope with the broad claims at issue.). An inventor’s opinion as to the
purchaser’s reason for buying the product is insufficient to demonstrate a
nexus between the sales and the claimed invention. In re Huang, 100 F.3d
135, 140 (Fed. Cir. 1996). Further, gross sales figures do not show
commercial success absent evidence as to market share, Cable Electric
Products, Inc. v. Genmark, Inc., 770 F.2d 1015, 1026-27 (Fed. Cir. 1985), or
as to the time period during which the product was sold, or as to what sales
would normally be expected in the market, Ex parte Standish, 10 USPQ2d
1454, 1458 (BPAI 1988).
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We recognize that evidence of secondary considerations, such as that
presented by Appellants, must be considered in route to a determination of
obviousness/non-obviousness under 35 U.S.C. § 103. Accordingly, we
consider anew the issue of obviousness under 35 U.S.C. § 103, carefully
evaluating and weighing both the evidence relied upon by the Examiner and
the objective evidence of non-obviousness provided by Appellants. In the
present case, Appellants submitted a declaration of Mr. Kyle Wheaton, a
National Account Executive for Black & Decker, Inc. (i.e., the assignee),
which alleges that “the improved variable speed feature in combination with
the large motor of the drill (drill model number DW130V) disclosed in the
present application resulted in commercial success evidenced by an increase
in sales.” Wheaton Dec., para.6. We must first examine whether Appellants
met their burden of establishing a nexus between the claimed invention and
the evidence of secondary considerations. In re Huang, 100 F.3d at 130-40.
Turning to the Declaration Under 37 C.F.R. § 1.132 of Mr. Wheaton
filed with the Appeal Brief on May 16, 2007, we credit the Declaration with
showing an increase in sales of 29,859 units (from 74,141 units of
DW130/DW130V sold in 2004 to 104,000 units of DW130/DW130V sold
in 2005) and increase in market share (from 48% in 2004 to 67% in 2005).
Further, we also credit the Declaration with showing a maintenance of that
higher level of sales for one year (104,213 units of DW130/DW130V sold in
2006) and an increase in market share from 67% to 71%. However, the
Declaration fails to differentiate between how many of the 104,000
DW130/DW130V units sold in 2005 were attributable to the DeWalt model
DW130 and how many of the 104,000 DW130/DW130V units sold in 2005
were attributable to the DeWalt model DW130V. The Declaration also fails
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to differentiate between how many of the 104,213 DW130/DW130V units
sold in 2006 were attributable to the DeWalt model DW130 and how many
of the 104,213 DW130/DW130V units sold in 2006 were attributable to the
DeWalt model DW130V. We note that in the Declaration’s paragraphs 6
and 9, Appellants state that the DeWalt model DW130V was introduced in
November 2004 and that the DeWalt model DW130 was not pulled from the
store shelves in favor of the DeWalt model DW 130V, but rather the DeWalt
Model DW130V was only stocked on store shelves to replace purchased
DeWalt model DW130 drills. Thus, without any indication as to how many
of the sales in 2005 and 2006 were attributable to the DeWalt model
DW130V, Appellants’ evidence of the secondary consideration of
commercial success cannot be considered to have established a nexus to the
claimed invention.
Moreover, other factors could have contributed to the increase of sales
of the DW130/DW130V drills, such as brand recognition and advertising.
The Declaration’s Exhibit 3 clearly indicates that the DeWalt model DW130
had 47-49% of the market share from 2000 through 2004 prior to the
November 2004 introduction of the DeWalt model DW130V drill. This
clearly suggests that the DeWalt model DW130 drill had established some
brand recognition. In addition, although the Declaration’s paragraph no. 9
suggests that there was “no special expenditure on marketing or
advertising,” this does not mean that there was not any advertising of the
DeWalt model DW130V drill. Indeed, the Declaration’s paragraph no. 9
discloses that a sell sheet describing the added benefits of the variable speed,
high power drill was provided for use by salespeople. This sell sheet may
have functioned as its own advertising or marketing for the DeWalt model
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DW130V drill. Accordingly, we find that Appellants have not met the
burden of establishing a nexus between the claimed invention and the
evidence of secondary considerations.
We have carefully reviewed the declaration evidence furnished by
Appellants. When we consider all of the evidence anew, it is our legal
conclusion that the evidence for obviousness overcomes the evidence against
obviousness. Therefore, the Examiner’s rejections of claims 1-5 and 12-16
are affirmed.

DECISION
We affirm the Examiner’s rejections of: claims 1-4 under 35 U.S.C.
§ 103(a) as unpatentable over Gouge, Jr., Olson, and Takezawa; claim 5
under 35 U.S.C. § 103(a) as unpatentable over Gouge, Jr., Olson, Takezawa,
and Silverman; claims 12-15 under 35 U.S.C. § 103(a) as unpatentable over
Gouge, Jr., Olson, and DeWalt; and claim 16 under 35 U.S.C. § 103(a) as
unpatentable Gouge, Jr., Olson, DeWalt, and Silverman.
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).

AFFIRMED

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