Ex Parte Chen

Board of Patent Appeals and Interferences

Sep 10, 2009

11163490 (B.P.A.I. Sep. 10, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TING-YUAN CHEN
____________

Appeal 2009-001525
Application 11/163,490
Technology Center 3700
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Decided: September 11, 2009
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Before: WILLIAM F. PATE, III, JENNIFER D. BAHR, and JOHN C.
KERINS, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-001525
Application 11/163,490

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STATEMENT OF THE CASE
Ting-Yuan Chen (Appellant) appeals under 35 U.S.C. § 134 (2002)
from the Examiner's decision rejecting claims 1-10. We have jurisdiction
over this appeal under 35 U.S.C. § 6 (2002).

The Invention
Appellant's claimed invention is directed to a selective one-way
pneumatic tool. The tool includes a handle 10 connected to a head 20.
Spec. para. 7, fig. 4. Head 20 includes two parallel top-and-bottom plates
205 and 206, and a wall 207 that connects the two plates at the axial end of
the head 20. Id. A pneumatic motor 30 inside handle 10 drives the selective
one-way drive 70 via the rocking of annular gear 22 inside head 20, gear 22
being supported by plates 205 and 206, and wall 207. Id.
Claim 1, reproduced below, is illustrative of the claimed invention.
1. A selective one-way pneumatic tool comprising:
a head comprising a tunnel, two plates and a
wall, with the tunnel including a first end and a
second end and including an inner periphery
having circular cross sections, with the two plates
extending from the second end of the tunnel away
from the first end in a spaced, parallel relation,
with the wall integrally formed between the plates
opposite to the tunnel for enhancing the strength
and cushioning effects;
an annular gear for rocking between the
plates;
a selective one-way driver for transforming
the rocking of the annular gear to rotation in
selective one of two directions;
a handle connected to the head;
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a pneumatic motor put in the handle in order
to transform the flow of pressurized air into
rotation; and
a transmission put in the head in order to
transform the rotation of the pneumatic motor to
the rocking of the annular gear, with the
transmission including an axle rotatably mounted
in the inner periphery of the tunnel, with the axle
having a first end rotatable by the rotation of the
pneumatic motor and having a second end
including a cam engaging with the annular gear.

The Rejections
The Examiner relies upon the following as evidence of
unpatentability:
Austin US 4,137,800 Feb. 6, 1979
Diedrich US 5,537,899 Jul. 23, 1996
Hsu US 6,915,721 B2 Jul. 12, 2005

Appellant seeks review of the Examiner's rejections under 35 U.S.C.
§ 103(a) of claims 1-10 as unpatentable over Diedrich, Austin, and Hsu;
claims 1 and 10 as unpatentable over Hsu and Austin; and claims 2-9 as
unpatentable over Hsu, Austin, and Diedrich.1

SUMMARY OF DECISION
We AFFIRM.

1 We treat Appellant’s reference to the rejection of claims 1-10 as being
unpatentable over Diedrich, Austin, and Hsu as the grounds to be reviewed
on appeal as including all three rejections set forth by the Examiner.

Appeal 2009-001525
Application 11/163,490

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ISSUE
Appellant argues that the Examiner has failed to identify a particular
teaching, suggestion, or motivation to combine the references. Appeal Br. 5.
In particular, the dispositive issue in this appeal is whether the Examiner has
provided a reason with rational underpinning for combining the tools in
Diedrich or Hsu with the support rib of Austin. Appellant argues claims 1-
10 as a group. Thus, for the rejection of claims 1-10 as being unpatentable
over Diedrich, Austin, and Hsu, claims 2-10 stand or fall with representative
claim 1; and for the rejection of claims 1 and 10 as being unpatentable over
Hsu and Austin, claim 10 stands or falls with representative claim 1. Our
disposition with respect to claim 1 will likewise be dispositive for the
rejection of claims 2-9 as being unpatentable over Hsu, Austin, and
Diedrich.

FACTS PERTINENT TO THE ISSUES
(FINDINGS-OF-FACT (FF))
FF1 The Examiner found that Diedrich describes a selective ratchet
pneumatic wrench including two pawls 80/90, a rocking annual gear
21, a switch 62, pins 100/101 pivotally securing the pawls, and a
square column 47 for engaging workpieces. Ans. 3. Appellant does
not challenge this finding.
FF2 The Examiner found that Diedrich does not describe a wall formed
between the plates. Ans. 3
FF3 The Examiner ostensibly found that Diedrich does not describe first
and second transmissions rocking the annular gear. Ans. 3, noting the
Examiner used Hsu to describe the two transmissions within the
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context of a § 103(a) rejection in which Diedrich was the primary
reference; see also FF45.
FF4 The Examiner found that Austin describes a pneumatic wrench having
a rib (wall) 14 connecting the plates 11 and 12 of a pneumatic tool.
Ans. 3 and 4.
FF5 The Examiner found that Hsu describes all of the limitations of claim
1, including first and second transmissions rocking the annular gear,
except Hsu does not describe a wall formed between the plates. Ans.
3-4. Appellant does not challenge this finding.
FF6 The Examiner found that the rib 14 in Austin provides support to
strengthen the structural integrity of the housing supporting the shaft
and ratchet mechanism. Ans. 5. Appellant does not challenge this
finding.

PRINCIPLES OF LAW
While there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness, “the analysis
need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Further, the Supreme Court notes “[a] factfinder should be aware, of
course, of the distortion caused by hindsight bias and must be cautious of
arguments reliant upon ex post reasoning. Rigid preventative rules that deny
factfinders recourse to common sense, however, are neither necessary under
our case law nor consistent with it.” Id. at 421 (internal citations omitted).
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Finally, “if a technique has been used to improve one device, and a
person of ordinary skill in the art would recognize that it would improve
similar devices in the same way, using the technique is obvious unless its
actual application is beyond his or her skill.” Id. at 417.

ANALYSIS
The Examiner found that Diedrich describes "all of the limitations" of
claim 1 (FF1), except for a wall formed between the plates of the tool's head
(FF2) and a first and second transmissions (FF3). Ans. 3. Appellant does
not challenge this finding. FF1. However, the Examiner found that Austin
describes a rib (wall) connecting the plates of a tool's head (FF4), and that
Hsu describes a first and second transmission (see FF45). Ans. 3. Further,
the Examiner found that the rib described in Austin is used as a structural
support of the tool. FF6; Ans. 5. Therefore, the Examiner concluded that it
would have been obvious to combine the pneumatic tool of Diedrich with
the support rib of Austin and the transmission of Hsu. Ans. 3.
The Examiner also found that Hsu describes "all of the limitations" of
claim 1, with the exception of the wall formed between the plates of the
head. Ans. 3-4; FF4. However, the Examiner found that Austin describes a
pneumatic wrench having a rib connecting the plates (FF4), useful for
strengthening the tool (FF6). Ans. 4. Therefore, the Examiner concluded
that it would have been obvious to combine the tool in Hsu with the support
rib of Austin, in order to strengthen the tool. Ans. 4.
Appellant argues that the Examiner has not provided a "specific
source of the motivation" for combining the tools of Diedrich or Hsu with
the support rib of Austin as indicated by the Examiner. Appeal Br. 5.
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However, the Supreme Court has explicitly rejected application of a rigid
formula insisting on a teaching, suggestion, or motivation (TSM) to
demonstrate obviousness. See KSR, 550 U.S. at 415 ("[w]e begin by
rejecting the rigid [TSM] approach of the Court of Appeals."). Instead, "a
court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ." Id. at 418. As the Examiner found,
the rib 14 in Austin would be inferred by a person of ordinary skill in the art
as a structural support. See FF6. Appellant has not challenged the
Examiner's finding.
Given this undisputed finding, the Examiner's reason for combining
the tool of Diedrich or Hsu with the support rib of Austin has rational
underpinning. The rib 14 of Austin would structurally support the plates in
the tool head of Diedrich or Hsu, in the same manner that it structurally
supports the plates in Austin. Therefore, applying the support rib in Austin
to the tool in Diedrich or Hsu is nothing more than applying a technique
used to improve the usability of one device and improving a similar device
in the same way, which involves nothing more than ordinary creativity well
within the technical grasp of a person of ordinary skill in the art. See KSR,
550 U.S. at 417.
Finally, Appellant has pointed to nothing in either of the references
that would discourage a person of ordinary skill in the art from providing
such a support structure in Austin in the tool heads of Diedrich or Hsu.

CONCLUSIONS
Appellant has not shown that the Examiner failed to articulate
reasoning with rational underpinning for combining the tool in Diedrich or
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Hsu with a supporting rib as described in Austin. Therefore, Appellant has
not persuaded us that either the rejection of claim 1, and claims 2-10, which
fall with claim 1, as being unpatentable over Diedrich, Austin, and Hsu, or
the rejection of claim 1, and 10, which falls with claim 1, as being
unpatentable over Hsu and Austin, should be reversed. Likewise, Appellant
has not shown that the rejection of dependent claims 2-9 as being
unpatentable over Hsu, Austin, and Diedrich should be reversed.

DECISION
The Examiner's decision is affirmed as to claims 1-10.
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) (2007).

AFFIRMED

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