Ex Parte Fielitz et al

Patent Trial and Appeal Board

Feb 22, 2017

13158852 (P.T.A.B. Feb. 22, 2017)

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.
13/158,852 06/13/2011 Harald Fielitz 708167 1293
23548 7590 02/24/2017
LEYDIG VOIT & MAYER, LTD
700 THIRTEENTH ST. NW
SUITE 300
WASHINGTON, DC 20005-3960
EXAMINER
CHUKWURAH, NATHANIEL C
ART UNIT PAPER NUMBER
3721
NOTIFICATION DATE DELIVERY MODE
02/24/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
DCpatent@leydig.com
Chgpatent @ ley dig. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HARALD FIELITZ, MATTHIAS BLESSING,
and KLAUS BERTSCH
Appeal 2015-003051
Application 13/158,852
Technology Center 3700
Before WILLIAM A. CAPP, MICHAEL L. WOODS, and
LEE L. STEPINA, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 10, 13, 15, 16, and 19 as unpatentable under 35 U.S.C.
§ 103(a) over Simonelli (US 2009/0236387 Al, pub. Sept. 24, 2009) and
Pedicini (US 6,705,503 Bl, iss. Mar. 16, 2004), and claims 1, 6—9, 12, 14,
and 17 over Simonelli, Pedicini, and Gardner (US 2008/0179371 Al, pub.
July 31, 2008). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2015-003051
Application 13/158,852
THE INVENTION
Appellants’ invention relates to nail guns. Spec. 1—3. Claim 10,
the only pending independent claim, is reproduced below with emphasis
added in italics and is illustrative of the subject matter on appeal.
10. A device for driving a fastening element into a substrate
comprising an energy transfer element that can move between a
starting position and a setting position for transferring energy to
the fastening element; a drive mechanism for transporting the
energy transfer element from the starting position into the
setting position and back, wherein the drive mechanism
comprises an electrically commutated motor; a motor control
mechanism for controlling the electrically commutated motor;
an electrical-energy storage device contact element for the
electrical connection of the electrical-energy storage device to
the device; a first electrical line for connecting the electric
motor to the motor control mechanism; and, a second electrical
line for connecting the electrical-energy storage device contact
element to the motor control mechanism, wherein the first
electrical line is longer than the second electrical line.
OPINION
Unpatentability of Claims 10, 13, 15, 16, and 19
over Simonelli and Pedicini
Claims 10, 13, 15, and 19
Appellants argue claims 1, 6—10, 12—15, 17, and 19 as a group. Br. 3.
This group necessarily encompasses claims 10, 13, 15, and 19 that are
subject to the Examiner’s first ground of rejection over Simonelli and
Pedicini. We select claim 10 as representative. See 37 C.F.R.
§ 41.37(c)(l)(iv) (2016).
The Examiner finds, and Appellants do not dispute, that Simonelli
discloses the invention substantially as claimed, except for the limitation
directed to the respective lengths of the first and second electrical lines.
Final Action 3. The Examiner relies on Pedicini as disclosing a fastening
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Application 13/158,852
device where the electrical line from the controller to the motor (first
electrical line) is longer than the line from the controller to the battery
(second electrical line). Id. (citing Pedicini, Fig. 6). The Examiner
concludes that it would have been obvious to a person of ordinary skill in the
art at the time of the invention to provide Simonelli with a first electrical line
that is longer than the second electrical line and so achieve the claimed
invention. Id. According to the Examiner, a person of ordinary skill in the
art would have done this to supply maximum energy to operate the load. Id.
Appellants traverse the Examiner’s rejection by arguing that Simonelli
discloses shorter electric lines between the controller 429 and motor 405
than between the controller and the battery contacts 421, a point already
conceded by the Examiner. Br. 3. Appellants argue, furthermore, that “one
of ordinary skill in the art would readily recognize [that] Simonelli’s
electrical lines are just sufficiently long to connect the controller to the
motor and battery, respectively.” Id. Appellants argue that the Examiner’s
rejection lacks sufficient reasoning as to why a skilled artisan would “so
completely remodel” Simonelli’s device. Id. at 4.
Appellants fault the Examiner for relying on the appearance of length
as depicted in Figure 6 of Pedicini. Id. Appellants characterize Pedicini’s
figure as a “schematic” and argue that it is not drawn to scale. Id.
[R]eal electrical lines (whether in a handheld tool or other
machine) are not arranged as shown in the Figure.
Accordingly, one of skill in the art would not interpret Pedicini
as disclosing a first electrical line longer than the second
electrical line.
Id.
In response, the Examiner finds that shortening one of Simonelli’s
wires and extending the other would have no effect on the principle
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Application 13/158,852
operation of the tool. Ans. 3. This finding of the Examiner is unrebutted by
Appellants. In the absence of evidence or persuasive technical reasoning
from Appellants on this point, we are inclined to give the Examiner’s finding
considerable weight. Id.
The Examiner does not challenge Appellants’ characterization of
Pedicini’s Figure 6 as a schematic. Id. at 4. Nevertheless, the Examiner
takes the position that the schematic drawing is sufficient to “suggest” to a
skilled artisan that Pedicini’s wiring may conform to the claimed, relative
lengths. Id. The Examiner cites In re Bozek, 416 F.2d 1385 (CCPA 1969),
for the proposition that references are evaluated by what they suggest to one
versed in the art, rather than by their specific disclosure. Ans. 4.
Simonelli discloses a fastener driving device. Simonelli, Abstract.
Figure 16 of Simonelli depicts an embodiment that has a battery 421, a
controller 429, and a motor 405. Id. Fig. 16, 252—254. Simonelli is silent
with respect to the relative lengths of the wiring between (1) the controller
and the battery; and between (2) the controller and the motor. Id.
Pedicini discloses an electrical motor driven nail gun. Pedicini,
Abstract. Embodiments of the invention include a battery (power source 3),
a motor 4, and control circuitry device 9. Id. Fig. 6., col. 6,11. 1—24. The
control circuitry device 9 is based on a “small” microprocessor. Id. col. 6,
11. 42-44.
Appellants do not challenge the Examiner’s finding that Simonelli
discloses the invention of claim 10 substantially as claimed except for the
relative lengths of first and second electrical lines. The issue before us,
therefore, is whether packaging and arranging electrical components within
the housing of a power tool so that the electrical line from the controller to
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Appeal 2015-003051
Application 13/158,852
the motor is longer than the electrical line from the controller to the battery
is sufficiently new and useful to impart patentability to the invention. We
conclude that it is not. We are not persuaded that the relative lengths of the
respective electrical lines imparts a significant difference to the performance
of a battery powered nail gun. Ans. 3. To the extent that there is any
difference as alleged in paragraph 236 of the Specification, such would
entail application of fundamental principles of electronics that are
appreciated by persons of ordinary skill.
Here, there is neither allegation nor evidence that the relative lengths
of the electric lines achieve unexpected results. When a patent “simply
arranges old elements with each performing the same function it had been
known to perform” and yields no more than one would expect from such an
arrangement, the combination is obvious. KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 417 (2007) (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282
(1976)). In the instant case, a nail gun needs to transfer stored electrical
power from the battery to the motor. Depending on where the controller is
interposed between the battery and the motor, the respective lengths of the
line from the battery to the controller could be shorter or longer than the
controller to the motor. Given the similarities between Simonelli and the
claimed invention and, in the absence of evidence of unexpected results, this
case presents a classic example of simply rearranging old elements in
accordance with their established function to achieve an expected and
predictable result. See KSR, 550 U.S. at 417.
Furthermore, in an age of increasing miniaturization of control
circuitry, relocating a controller relatively closer to the battery and
correspondingly relatively farther away from the motor strikes us an easy
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Application 13/158,852
and simple modification for a person of ordinary skill in the art.
Consequently, we are not persuaded by Appellants’ argument that the
Examiner’s proposed modification entails a “complete[] remodel” of
Simonelli’s device. Br. 4. Moreover, when it comes to the respective
lengths of electric lines between the controller and the battery and the
controller and the motor, there are only three possibilities: (1) the lengths
are the same; (2) the line between the controller and the battery is shorter;
and (3) the line between the controller and the battery is longer.
When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this
leads to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense.
KSR, 550 U.S. at 421.
Appellants’ point that Pedicini’s Figure 6 discloses a schematic design
that is not drawn to scale is well taken.1 Br. 4. However, the Examiner’s
point that Pedicini’s Figure 6 need not be drawn to scale to “suggest” the
claimed relative lengths is also well taken.2 Ans. 4. In this case, we find the
Examiner’s position to be more persuasive because the proposed
1 Patent drawings may not be relied on to show particular sizes if the
specification is completely silent on the issue. Hockerson-Halberstadt, Inc.
v. Avia Grp. Int’l, Inc., 222 F.3d 951, 956 (Fed. Cir. 2000) (citingIn re
Wright, 569 F.2d 1124, 1127 (CCPA 1977)).
2 While patent drawings not designated as being drawn to scale cannot be
relied upon to define precise proportions of elements if the specification is
completely silent on the issue, Hockerson-Halberstadt, 222 F.3d at 956, that
does not mean, “that things patent drawings show clearly are to be
disregarded,'1'’ In reMraz, 455 F.2d 1069, 1072 (CCPA 1972). A drawing
teaches all that it reasonably discloses and suggests to a person of ordinary
skill in the art. In re Aslanian, 590 F.2d 911, 914 (CCPA 1979).
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modification of Simonelli in view of Pedicini is so slight that little, if any,
suggestion to make the modification is required. Pedicini’s Figure 6 may be
merely a schematic, but we are not prepared to find that the Examiner erred
in finding that the depiction of the relative lengths of the lines in Figure 6
suggests the claimed relationship.
In view of the foregoing, we sustain the Examiner’s unpatentability
rejection of claims 10, 13, 15, and 19.
Claim 16
Claim 16 depends from claim 10 and adds the limitation: “comprising
three or more first electrical lines.” Claims App. The Examiner finds that
Simonelli’s device has three or more first electrical lines. Final Action 4.
Appellants argue that the Examiner’s findings of fact are deficient as
the Examiner mentions a grounding line as among the plurality of
Simonelli’s first electrical lines. Br. 4; see Final Action 4. Appellants take
the position that neither Simonelli nor Pedicini discloses grounding lines.
Br. 5. Appellants take the position that Simonelli would not have a
grounding line as it is battery powered. Id. at 4.
In response, the Examiner states that Appellants’ position regarding a
grounding wire is not pertinent because grounding is not found in the claims.
Ans. 4. The Examiner further states that: “[ijnsulated wire comprises . . .
multiple wires to allow multiple connections and any argument that Pedicini
does not disclose three or more wires is not persuasive.” Id.
In the Final Action, the Examiner relied on Simonelli as disclosing
three or more first electrical lines. Final Action 4. While the Examiner also
made a parenthetical reference to a grounding line, we view this, at most, as
harmless error. The Examiner observes, correctly, that the claim does not
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Application 13/158,852
require a grounding line. Ans. 4 (“grounding is not found in the claims”).
Simonelli’s device contains a plurality of components related to the
distribution and use of electrical power including, without limitation, a
contact trip 225, trigger 226, position sensors 222, 223, and 224, mode
switch 228, and motor 205. Simonelli 198, 240. This is sufficient
evidence to support the Examiner’s prima facie showing that Simonelli has
three or more “first electrical lines. ”3 Appellants’ contention regarding a
grounding wire does not apprise us of reversible error.
We sustain the rejection of claim 16.
Unpatentability of Claims 1, 6—9, 12, 14, and 17 over
Simonelli, Pedicini, and Gardner
As discussed previously, Appellants grouped claims 1, 6—9, 12, 14,
and 17, together with claims 10, 13, 15, and 19, of which we treated
claim 10 as representative. Consequently, claims 1, 6—9, 12, 14, and 17, fall
with claim 10. Therefore, we sustain the unpatentability rejection of
claims 1, 6—9, 12, 14, and 17.
DECISION
The decision of the Examiner to reject claims 1, 6—10, 12—17, and 19
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)(l)(iv).
AFFIRMED
3 The disclosure in Simonelli appears to be consistent with Appellants’
disclosure that phase lines 504 (Appellants’ “first lines”) connect control
mechanism 500 to a contact-pressing 550, hand switch 35, and fan
drive 560. Spec. 1233.
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