Ex Parte Buck et al

Board of Patent Appeals and Interferences

Jul 26, 2011

11095727 (B.P.A.I. Jul. 26, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/095,727 03/31/2005 John E. Buck 0275MA-001073 2790
27572 7590 07/26/2011
HARNESS, DICKEY & PIERCE, P.L.C.
P.O. BOX 828
BLOOMFIELD HILLS, MI 48303
EXAMINER
CHUKWURAH, NATHANIEL C
ART UNIT PAPER NUMBER
3721
MAIL DATE DELIVERY MODE
07/26/2011 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 JOHN E. BUCK, ALAN BERRY, CHARLES L.
BRADENBAUGH IV, CRAIG A. SCHELL, PAUL GROSS,
ASHOK S. BASKAR, STEVEN R. COLELLO, and JAMES J.
KENNEY
____________________

Appeal 2010-001620
Application 11/095,727
Technology Center 3700
____________________

Before: EDWARD A. BROWN, CHARLES N. GREENHUT, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-001620
Application 11/095,727

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 8,
9, 26, 27, 29 and 38-40. App. Br. 3. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm-in-part and enter a new ground of rejection for claims 26-
33 and 38-40.

The claims are directed to a hand-held tool. Claim 8, reproduced
below, is illustrative of the claimed subject matter:

8. (Previously Presented) A hand-held tool comprising:
a backbone;
a motor assembly with a driver, the motor assembly being
selectively actuatable to translate the driver along an axis, the
motor assembly being mounted to the backbone; and
an outer housing coupled to the backbone, the outer housing
shrouding at least a portion of the backbone;
wherein the backbone includes a motor mount and the motor
assembly includes an electric motor, the motor mount being
disposed about a portion of an outer surface of the electric
motor; and
wherein a resilient member is disposed between the motor
mount and the portion of the outer surface of the electric motor.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Spitler
Crutcher
US 4,384,224
US 4,964,558
May 17, 1983
Oct. 23, 1990
Wickham US 2003/0107284 A1 Jun. 12, 2003
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Application 11/095,727

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REJECTIONS
Claims 26, 27, 29 and 38-40 are rejected under 35 U.S.C. 102(b) as
being anticipated by Crutcher. Ans. 3.
Claim 22 is rejected under 35 U.S.C. 103(a) as being unpatentable
over Crutcher. Ans. 4. However, Appellants do not appeal this rejection.
App. Br. 3.
Claims 8, 20 and 21 are rejected under 35 U.S.C. 103(a) as being
unpatentable over Crutcher and Spitler. Ans. 5. However, Appellants do
not appeal the rejection of claims 20 and 21. App. Br. 3.
Claim 9 is rejected under 35 U.S.C. 103(a) as being unpatentable over
Crutcher and Wickham. Ans. 6.
Accordingly, the rejections of claims 8, 9, 26, 27, 29 and 38-40 are the
only rejections before us for review. The Examiner is directed to cancel
rejected and non-appealed claims 20-22. See MPEP § 1215.03; see also Ex
Parte Ghuman, No. 2008-1175, 2008 WL 2109842 (BPAI 2008).

OPINION
The Examiner’s rejections of claims 8 and 9 are affirmed.
Regarding the rejection of claim 8, Appellants do not dispute any of
the Examiner’s findings regarding Crutcher and we adopt those findings as
our own. See Ans. 5. Appellants and the Examiner agree that Crutcher does
not disclose the claimed “resilient member.” Ans. 5; App. Br. 14. The
Examiner found that Spitler demonstrates it was known in the art to employ
a resilient member 52, 74 in order to mount a motor 20 for insulating
purposes. Final rej. 4; Ans 5; See Spitler Abst., col. 4, ll. 26-30, col. 7, ll.
16-23, fig. 2. Appellants contend that one of ordinary skill in the art would
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not understand element 52 of Spitler as being formed of a resilient material.
App. Br. 14; Reply Br. 3-4. We need not reach this issue to decide this case.
Appellants do not dispute that Spitler’s rubber mounts 70 having arms
74 are “resilient.” “Concerning the mounts (70), Appellant notes that Spitler
et al. describes it as being slip fit over the end of shell (52) and having four
arms (74) and a combination of tubes (92), bolts (96) and threaded nuts (75)
are employed to retain the mounts (70) to the motor.” App. Br. 15. At best,
this is an individual attack on Spitler or an argument premised upon
combining the specific structures, as opposed to the teachings, of the cited
references. Such arguments do not establish error in the Examiner’s position.
See In re Merck & Co. Inc., 800 F.2d 1091, 1097, (Fed. Cir. 1986)(
Nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures.); See also In re Nievelt, 482 F.2d 965, 968 (CCPA 1973)(
“Combining the teachings of references does not involve an ability to
combine their specific structures.”).
We note that Spitler uses the term “mount” to describe the structure
the Examiner reads as the claimed resilient member. The claimed “mount,”
a component of the tool backbone, is already present in Crutcher. Ans. 5;
Crutcher Col. 5, ll. 45-47. The claim requires a resilient member “disposed
between the motor mount and the portion of the outer surface of the electric
motor.” Spitler’s entire drive unit is intended to be mounted on a hand-held
device such as Crutcher’s. Spitler, col. 1, ll. 10-11. This modification to
Crutcher’s hand-held device, meets the limitation in question. We agree
with the Examiner that this modification would have been obvious to one
having ordinary skill in the art.
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Appellants’ contention that the Examiner has failed to articulate
reasoning with rational underpinning to support the conclusion of
obviousness is not persuasive. Appellants point out that the Examiner and
Spitler cite electrical insulation as reason for the employing of a resilient
member as opposed to Appellants’ stated reason of dampening mechanical
shock. App. Br. 16-17. However, it is not necessary for the prior art to
serve the same purpose as that disclosed in Appellants’ Specification in
order to support the conclusion that the claimed subject matter would have
been obvious. See In re Linter, 458 F.2d 1013, 1016 (CCPA 1972).
Furthermore, it is apparent from Spitler that the reduction of mechanical
shock is a known, and thus predictable, result of using a resilient material
when mounting a hand-held motor.
Turning to claim 9, again Appellants do not dispute any of the
Examiner’s findings regarding Crutcher and we adopt those findings as our
own. See Ans. 6. Appellants and the Examiner agree that Crutcher does not
disclose the claimed “clip.” Ans. 6; App. Br. 17-18. The Examiner found,
and we agree, that Wickham demonstrates it was known in the art to use
resilient lever arms 3, read as the claimed “clip,” for mounting a motor. Ans.
6; Wickham p. 2, para. [0016], figs. 1-3.
Appellants contend “that the Examiner’s proposed modification of the
tool of Crutcher et al. to include the motor attachment means of Wickham
concerns what may be feasible rather than what is necessarily desirable” and
thus the Examiner has not provided the requisite articulated reasoning with
rational underpinning to support the conclusion of obviousness. App. Br. 18-
19. This argument is not persuasive.
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Wickham specifically suggests substituting the disclosed lever arms
for screws or other hardware to facilitate attachment and removal of the
motor. P. 1, paras. [0002]-[0006]. Although Crutcher does not specifically
discuss the mechanism by which the motor is mounted, bolts or screws for
mounting the motor are depicted in Crutcher’s figures. See Fig. 5. Thus, the
subject matter of claim 9 is the result of substituting known structures
according to the express suggestion of Wickham in order to yield the
predictable result of facilitating attachment and detachment of the motor,
and therefore would have been obvious to one having ordinary skill in the
art.
For the above reasons, the Examiner’s rejections of claims 8 and 9 are
affirmed.

Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter new grounds
of rejection of claims 26-33 and 38-40 under 35 U.S.C. § 112 2nd paragraph
as being indefinite and we reverse, pro forma, the Examiner’s rejection of
claims 26, 27, 29 and 38-40 as being anticipated by Crutcher.
Claim 26 is rejected under 35 U.S.C. § 112 2nd paragraph as being
indefinite. The phrase “the translational axis” lacks antecedent basis in the
claim. It is unclear to us if Appellants intended this limitation to refer to the
previously recited “driver axis,” the translational axis of the driver, or some
other axis. Since the claim is amenable to multiple claim constructions the
metes and bounds of the subject matter defined by claim 26 is rendered
unclear. See Ex Parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008)(“[I]f a
claim is amenable to two or more plausible claim constructions, the USPTO
is justified in requiring the applicant to more precisely define the metes and
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bounds of the claimed invention by holding the claim unpatentable under 35
U.S.C. § 112 2nd paragraph, as indefinite.”)
Claim 26 recites “the frame defining a driver axis, a rotational axis
and an actuator mount, the rotational axis being perpendicular to the
translation axis.” (Italics added). The Appellants contend that “the ‘axial
bore 153’ in the ‘driver actuator cylindrical body portion 152’ of Crutcher et
al. is not disposed perpendicular to the axis along which the driver (23)
translates.” App. Br. 10-11 (italics added). The Appellants’ use of “driver
translates” in the previous contention implies that Appellants are assuming
the “driver axis” must be the axis along which the driver translates—a
limitation not explicit in the claim. It is not clear whether the Examiner, in
finding that “Crutcher does show the bore (153) disposed generally
perpendicular to the rotational axis of the actuator lever 163 and the driver
axis (choosing horizontal orientation of bore as reference point Fig. 9)”
subscribes to that same assumption. Ans. 8.
The propriety of the Examiner’s rejection of claim 26 hinges on our
interpretation of the terms “translational axis” and “driver axis.” See App.
Br. 10-11. We decline to speculate about what Appellants intended to claim.
Before a proper review of the rejection under 35 U.S.C. § 102 can be
performed, the subject matter encompassed by the claims on appeal must be
reasonably understood without resort to speculation. Since claim 26 fails to
satisfy the requirements of the second paragraph of 35 U.S.C. § 112 we are
constrained to reverse, pro forma, the rejection under 35 U.S.C. § 102
without comment on the merits thereof. See Ex Parte Miyazaki, 89 USPQ2d
at 1217 (citing In re Steele, 305 F.2d 859, 862-63 (CCPA 1962) (A prior art
rejection cannot be sustained if the hypothetical person of ordinary skill in
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the art would have to make speculative assumptions concerning the meaning
of claim language.))

DECISION
The Examiner’s rejections of claims 8 and 9 are affirmed.
We enter new grounds of rejection of claims 26-33 and 38-40 under
35 U.S.C. § 112 2nd paragraph as being indefinite and we reverse, pro forma,
the Examiner’s rejection of claims 26, 27, 29 and 38-40 as being anticipated
by Crutcher.
Regarding the affirmed rejection(s), 37 C.F.R. § 41.52(a)(1) provides
“Appellant may file a single request for rehearing within two months from
the date of the original decision of the Board.”
In addition to affirming the Examiner’s rejections of one or more
claims, this decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b) (2008). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
Examiner, in which event the proceeding will be remanded to
the Examiner. . . .
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(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .
Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellants elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Board of Patent Appeals and Interferences for
final action on the affirmed rejection, including any timely request for
rehearing thereof.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2009).

AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b),

MP