Ex Parte Bucks et al

Patent Trial and Appeal Board

Dec 31, 2015

12261186 (P.T.A.B. Dec. 31, 2015)

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.
12/261,186 10/30/2008 Brent L. Bucks P-US-TN-12297 4001
28268 7590 12/31/2015
THE BLACK & DECKER CORPORATION
701 EAST JOPPA ROAD, TW199
TOWSON, MD 21286
EXAMINER
CHOI, STEPHEN
ART UNIT PAPER NUMBER
3724
MAIL DATE DELIVERY MODE
12/31/2015 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BRENT L. BUCKS and JEREMY A. LOWDER
____________

Appeal 2013-008286
Application 12/261,186
Technology Center 3700
____________

Before EDWARD A. BROWN, CHARLES N. GREENHUT, and
LYNNE H. BROWNE, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Brent L. Bucks and Jeremy A. Lowder (Appellants)1 appeal under 35
U.S.C. § 134 from the Examiner’s decision rejecting claims 1–6, 8–11, and
18–39, which are all the pending claims. Appeal Br. 3. An oral hearing was
held on December 17, 2015. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 The Appeal Brief identifies Black & Decker Inc. as the real party in
interest. Appeal Br. 3.
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Application 12/261,186

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CLAIMED SUBJECT MATTER
Claims 1, 6, 18, 26, and 33 are independent. Claim 1 is illustrative of
the claimed subject matter, and recites:
1. A reciprocating saw blade comprising:
a body having two ends and two edges, a first shanking
end for securing the blade with a reciprocating saw and a
second plunging end for entering a workpiece, a first edge
having a plurality of teeth and gullets comprising at least four
consecutive individual teeth defining four consecutive
individual gullets, wherein all of said plurality of teeth and
gullets are substantially the same size, a second back edge
opposing said first edge; and
a first tooth immediately adjacent said plunging end, said
first tooth being a raker or unset tooth, a first gullet adjacent
said first tooth and adjacent a leading tooth of the at least four
consecutive teeth that is closest to the second plunging end,
wherein a distance between the first tooth and the leading
tooth is equal to approximately twice a distance between each
pair of adjacent teeth in the at least four consecutive teeth.

REJECTIONS2
1. Claims 1–4, 6, 8, 9, 26, 27, 31–34, 38, and 39 are rejected under
35 U.S.C. § 103(a) as unpatentable over Hutchings (US 1,876,945, issued
Sept. 13, 1932).
2. Claims 5, 10, 30, and 37 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Hutchings and Grolimund (US D482,945 S, issued
Dec. 2, 2003) or Thomas (US 2005/0211046 A1, published Sept. 29, 2005).
3. Claims 1–6, 8–11, and 18–39 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Grolimund and Thomas.

2 The rejection of claims 11, 31, and 38 under 35 U.S.C. § 112, second
paragraph, was overcome by Appellants’ reply, filed on September 21, 2012.
Final Act. 2; Adv. Act. 1 (mailed September 27, 2012).
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ANALYSIS
Rejection 1
The Examiner provides an annotated version of Figure 2 of
Hutchings, indicating the locations of a “shanking end,” “plunging end,”
“first tooth,” and “a plurality of teeth” including a leading tooth. Final Act.
3. Figure 2 depicts a saw blade including an enlarged head 5 at each
opposed end, and a larger tooth 8 spaced from a series of smaller teeth 7. In
annotated Figure 2, the Examiner indicates tooth 8 corresponds to the
claimed “first tooth.” Id. The Examiner finds Hutchings discloses the saw
blade recited in claim 1 except for “a distance between the first tooth and the
leading tooth is equal to approximately twice a distance between each pair of
adjacent teeth in the at least four consecutive teeth.” Id. at 4.
Appellants contend Hutchings does not disclose or suggest that either
one of the enlarged heads 5 or the ends of the saw blade is capable of
plunging into a workpiece. Appeal Br. 7. Rather, Hutchings “teaches that
both heads 5 have openings 6 to secure both ends of the blade to the saw-
carrying frame of the sash gang saw with which this blade is used.” Id. at 8
(citing Hutchings p. 1, ll. 23–28, p. 2, ll. 25–27). Consequently, Appellants
contend it is impossible for one of the ends of Hutchings’ saw blade to
plunge into a workpiece. Id. Appellants also contend tooth 8 is part of the
cutting edge, not part of the enlarged head 5, and if tooth 8 is interpreted as
part of the “plunging” head 5, then tooth 8 cannot also be the claimed front
tooth on the cutting edge adjacent to the head 5. Id.
In response to these contentions, the Examiner explains that annotated
Figure 2 of Hutchings shows “the plunging end is designated as an end of 4
including portion of 8 which is capable of plunging into the workpiece. The
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first tooth is designated as the tooth portion of 8. Hence, the [first] tooth is
immediately adjacent the plunging end as claimed.” Ans. 16.
Claim 1 requires “a plunging end for entering a workpiece” and “a
first tooth immediately adjacent said plunging end.” Accordingly, the
plunging end and first tooth are different elements of the saw blade.
However, Hutchings’ element 8 is only a tooth. See Hutchings, Fig. 2.
Hutchings does not disclose that tooth 8 includes a “tooth portion” and an
additional portion corresponding to the claimed “plunging end.” As to the
purpose of tooth 8, Hutchings describes:
On the up stroke, the reversed tooth 8 cuts a groove which
serves as a track or guide for the down stroke of the saw. In
other words, the reversed tooth 8 cuts the groove a little in
advance of the regular down stroke of the, saw and prevents
what is known as strings or splinters on the sawed lumber.
Hutchings, p. 1, ll. 64–71.
In addition, Hutchings does not disclose that the enlarged head 5
adjacent tooth 8 enters a workpiece, as required for the claimed “plunging
end.” As noted correctly by Appellants, enlarged heads 5 have openings 6 to
be secured in the saw-carrying frame. See Hutchings, p. 1, ll. 23–28.
For the above reasons, we do not sustain the rejection of claim 1, and
claims 2–4 depending therefrom, as unpatentable over Hutchings. Similar to
claim 1, claim 6 recites “a plunging end for entering a workpiece” and “a
first tooth immediately said plunging end, said first tooth being a raker or
unset tooth,” and claims 26 and 33 recite similar limitions. Accordingly, for
reasons similar to those discussed for claim 1, we do not sustain the rejection
of claims 6, 26, and 33, and claims 8, 9, 27, 31, 32, 34, 38, and 39 depending
from claim 6, 26, or 33, as unpatentable over Hutchings.
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Rejection 2
The Examiner finds Hutchings does not disclose the plurality of teeth
are set teeth, as recited in claims 5, 10, 30, and 37. Final Act. 5. The
Examiner finds Grolimund and Thomas disclose set teeth. Id. We agree
with Appellants that the Examiner’s application of Grolimund or Thomas
fails to cure the deficiencies of Hutchings in regard to claims 1, 6, 26, and
37, from which claims 5, 10, 30, and 37 respectively depend. Appeal Br. 8–
9. Accordingly, we do not sustain the rejection of claims 5, 10, 30, and 37
as unpatentable over Hutchings and Grolimund or Thomas.
Rejection 3
Appellants argue claims 1–6, 8–11, and 18–39 together. Appeal Br.
9–13. We select claim 1 to decide the appeal with respect to the group as to
the ground of rejection, with claims 2–6, 8–11, and 18–39 standing or falling
with claim 1.
The Examiner finds Grolimund discloses the claimed saw blade
except for the limitation that all of the plurality of teeth and gullets are
substantially the same size (“first limitation”), and the “wherein” clause
(“second limitation”). Final Act. 6 (citing Grolimund, Fig. 6). For the first
limitation, the Examiner finds Thomas discloses a reciprocating saw blade
having a plurality of teeth and gullets of substantially the same size. Id. The
Examiner determines it would have been obvious to modify Grolimund’s
saw blade in view of Thomas “to provide an alternative arrangement of the
cutting teeth to provide uniform cutting action.” Id. The Examiner also
determines it would have been an obvious matter of design choice to modify
Grolimund to meet the second limitation because “such a modification
would have involved a mere change in the size of a component.” Id. at 6–7.
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Appellants contend Grolimund teaches “all of the teeth and gullets
are unevenly spaced and sized,” and “Thomas teaches that all of the teeth
and gullets are evenly spaced and size[d].” Appeal Br. 10. Appellants
assert, “the Examiner has impermissibly picked and chosen only the first
tooth and gullet of Grolimund (which are unevenly spaced) and the
remaining cutting teeth of Thomas (which are evenly spaced) to arrive at the
claimed invention.” Id.
We do not necessarily agree with Appellants’ contention that all of the
teeth and gullets of Grolimund’s illustrated saw blade are unevenly spaced
and sized. However, we agree with the Examiner that Figure 6 of
Grolimund shows a larger distance between the “first tooth” (i.e., the first
tooth adjacent the right end of the saw blade) and the “leading tooth” (i.e.,
the tooth adjacent the first tooth). The other saw blade shown in Figure 1 of
Grolimund also has a relatively larger distance between the “first tooth” and
“leading tooth.” Thus, we agree with the Examiner that “both of the
embodiments disclosed in Grolimund show a first gullet larger than the
remaining gullets with different teeth and gullet configuration for each
embodiment.” Ans. 17.
Although Grolimund is a design patent, it is still relevant for all it
contains. In re Heck, 699 F.2d 1331, 1332–33 (Fed. Cir. 1983) (citation
omitted). A reference “may be used as evidence of obviousness under [35
U.S.C.] § 103 for all it fairly suggests to one of ordinary skill in the art.” In
re Wiggins, 488 F.2d 538, 543 (CCPA 1973). Grolimund does not disclose
that its drawings are to scale, or dimensions in the drawings. “[I]t is well
established that patent drawings do not define the precise proportions of the
elements and may not be relied on to show particular sizes if the
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specification is completely silent on the issue.” See Hockerson-Halberstadt,
Inc. v. Avia Group Int’l, 222 F.3d 951, 956 (Fed. Cir. 2000). We agree with
Appellants that Grolimund does not describe the “equal to approximately
twice a distance” limitation in claim 1. Appeal Br. 9. However, this does
not mean “things [Grolimund’s] patent drawings show clearly are to be
disregarded.” See In re Mraz, 455 F.2d 1069, 1072 (CCPA 1972).
In addition to having a larger distance between the “first tooth” and
the “leading tooth,” the configuration of the right end of the saw blade
shown in Figure 6 of Grolimund is similar to the configuration of the
plunging nose 16 of the saw blade in Figure 3 of Appellants’ application.
The Examiner relies on Thomas to show that a saw blade having a plurality
of teeth and gullets of substantially the same size was known in the art. Ans.
17–18. Appellants acknowledge “Thomas teaches that all of the teeth and
gullets are evenly spaced and size[d].” Appeal Br. 10. The Examiner also
determines Thomas’ tooth arrangement would have provided uniform
cutting action for Grolimund’s saw blade. Ans. 18. As such, the Examiner
provides a reason for modifying Grolimund in view of Thomas.
Appellants appear to contend that the modification of Grolimund in
view of Thomas would “substantially alter the performance, function, and
appearance of Grolimund.” Appeal Br. 11. However, Appellants do not
provide persuasive evidence to support this contention. Appellants do not
persuade us that the Examiner’s position that Thomas’ tooth arrangement
would have provided uniform cutting action when substituted in
Grolimund’s saw blade is erroneous, or that the Examiner’s articulated
reason for modifying Grolimund in view of Thomas lacks rational
underpinning.
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According to Appellants, selecting the spacing of the front tooth from
the remaining teeth of the saw blade is not a matter of routine design choice.
Appeal Br. 12. In support, Appellants cite to the Declaration Under 37
C.F.R. § 1.132 of Malek George (“Declaration”). Id. We have considered
each of the statements presented in the Declaration. Appellants assert the
Declaration demonstrates the claimed spacing between the first tooth and the
leading tooth “is critical to the invention.” Id. Appellants contend “the
claimed spacing between the front tooth and the remaining teeth was
selected in order to strike a careful balance between the generally opposed
goals of enabling the saw blade to perform plunge cuts at a shallow angle to
the workpiece, while also allowing for cost efficient manufacturing.” Id.
(citing Decl. para. 6).
Paragraph 7 of the Declaration states,
The claimed blade optimizes both goals by selecting the
distance between the first two teeth to be approximately twice
that (or another whole number multiple greater than) the space
between the other consecutive teeth. Thus, the blades still can
be inexpensively manufactured from a continuous piece of
stock, with all or some of the second tooth being removed by a
die, while the larger gullet behind the first tooth enables better
and faster plunge cutting. Accordingly, the claimed dimensions
are critical to the invention, and not a matter of routine design
choice.
(Emphasis added.)
Regarding “design choice,” a claimed modification to the prior art
may be obvious if the claimed structure performs the same function as in the
prior art and it presents no novel or unexpected result over the prior art. See
In re Kuhle, 526 F.2d 553, 555 (CCPA 1975) (use of claimed feature solves
no stated problem and presents no unexpected result and “would be an
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obvious matter of design choice within the skill of the art”). Appellants do
not show persuasively that the claimed saw blade performs a different
function than the prior art. To the extent Appellants may be contending the
claimed saw blade provides unexpectedly improved properties, or properties
not possessed by the prior art, it is incumbent upon Appellants to present
objective evidence (i.e., comparative test results) to show that the results are
unexpected as compared to the closest prior art. See In re Baxter Travenol
Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) (“[W]hen unexpected results are
used as evidence of nonobviousness, the results must be shown to be
unexpected compared with the closest prior art.”) (citation omitted). See
also In re Wood, 582 F.2d 638, 642 (CCPA 1978) (objective evidence is
needed to establish unexpected results). The showing of unexpected results
must also be commensurate in scope with the claims. See In re Grasselli,
713 F.2d 731, 743 (Fed. Cir. 1983).
Appellants do not provide objective evidence to show the claimed
distance between the first tooth and the leading tooth “achieves a significant
performance improvement” as compared with the closest prior art. See
Appeal Br. 13. Namely, Appellants do not provide comparative test results
showing that “the larger gullet behind the first tooth enables better and faster
plunge cutting” as compared to any distances falling outside the claimed
value of “approximately twice.” See Decl. para. 8. We also note the
Declaration states, “[t]he claimed blade optimizes both goals by selecting the
distance between the first two teeth to be approximately twice that (or
another whole number multiple greater than) the space between the other
consecutive teeth.” Id. at para. 7 (emphasis added).
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As to Appellants’ assertion that the claimed value of “approximately
twice” “allow[s] for cost efficient manufacturing,” Appellants do not
provide objective evidence to demonstrate the purported “cost efficient
manufacturing” of the claimed saw blade as compared to the closest prior
art. In addition, Appellants do not provide objective evidence to show that
this purported manufacturing advantage relates to the structure or some
property of the claimed subject matter (i.e., saw blade), or to the saw blade’s
cutting performance. Thus, Appellants have not shown that the claimed
distance between the first tooth and the leading tooth provides unexpected
results as compared with the closest prior art.
For these reasons, we sustain the rejection of claim 1, and claims 2–6,
8–11, and 18–39 falling with claim 1, as unpatentable over Grolimund and
Thomas.
DECISION
We REVERSE the rejection of claims 1–4, 6, 8, 9, 26, 27, 31–34, 38,
and 39 under 35 U.S.C. § 103(a) as unpatentable over Hutchings.
We REVERSE the rejection of claims 5, 10, 30, and 37 under 35
U.S.C. § 103(a) as unpatentable over Hutchings and Grolimund or Thomas.
We AFFIRM the rejection of claims 1–6, 8–11, and 18–39 under 35
U.S.C. § 103(a) as unpatentable over Grolimund and Thomas.
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