Ex Parte Friegang

Patent Trial and Appeal Board

Feb 28, 2017

13216011 (P.T.A.B. Feb. 28, 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.
A-75329 3335
EXAMINER
VITALE, MICHAEL J
ART UNIT PAPER NUMBER
3722
MAIL DATE DELIVERY MODE
13/216,011 08/23/2011
40461 7590 03/01/2017
Law Offices of Edward S. Wright
1259 El Camino Real, No. 400
Menlo Park, CA 94025
William Robert Friegang
03/01/2017 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 WILLIAM ROBERT FRIEGANG
Appeal 2015-005840
Application 13/216,011
Technology Center 3700
Before STEFAN STAICOVICI, GEORGE R. HOSKINS, and ANTHONY
KNIGHT, Administrative Patent Judges.
KNIGHT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
William R. Friegang (Appellant) appeals under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claims 1—15. We have jurisdiction under
35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
Appeal 2015-005840
Application 13/216,011
CLAIMED SUBJECT MATTER
Appellant’s invention relates to “a scribing tool and dust collector.”
Spec. 1,11. 3^1.
Claims 1 and 9 are independent1. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A scribing tool and dust collector for use with a router,
comprising a horizontally extending body which attaches to the
router with a router bit extending along an axis of rotation
through the body and projecting from a lower surface of the body
near the front of the router for cutting engagement with an edge
of a workpiece, a guide wheel mounted on the upper portion of
the body for rotation about the axis, with an outer portion of the
wheel projecting from the front of the body and the front of the
router for engagement with a surface having a contour to
be transferred to the edge of the workpiece by the router bit, an
elongated vacuum chamber extending from the front of the body
to the rear of the body and on all sides of the router bit, an inlet
port which is centered about the axis of rotation, opens through
the lower surface of the body, and communicates freely with the
vacuum chamber on all sides of the router bit, and an exhaust
port communicating with the vacuum chamber at the rear of the
body for connection to a vacuum source to draw dust and chips
produced by the router bit through the inlet port into the chamber,
through the chamber, and out through the exhaust port to the rear
of the router.
App. Br. 8 (Claims App.).
1 As stated by Appellant in the Appeal Brief at page 6, “Claim 9 is similar to
Claim 1,” and as such claim 1 is thus designated as a representative claim.
See 37 C.F.R. § 41.37(c)(l)(iv).
2
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Application 13/216,011
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Friegang US 5,013,196 May 7, 1991
Kikuchi US 5,662,440 Sept. 2, 1997
REJECTION
Claims 1—15 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Friegang in view of Kikuchi.
OPINION
In rejecting claim 1 as being unpatentable over the combination of
Friegang in view of Kikuchi, the Examiner finds Friegang discloses a
scribing tool for use with a router that discloses all of Appellant’s claimed
limitations with the exception of a vacuum chamber. Final Act. 3 (mailed
Apr. 22, 2014). The Examiner finds that Kikuchi discloses a vacuum
chamber for use with a router {id. at 3), and determines that “it would have
been obvious to one of ordinary skill in the art to . . . modif[y] the base plate
(16) of Friegang by incorporating the vacuum system of Kikuchi... so as
to provide a means of reducing the time spent on cleanup by collecting the
chips/dust generated during cutting, and drawing them into a remote
vacuum” {id. at 4).
Appellant argues that the Examiner employed impermissible hindsight
to combine the disclosures of Friegang and Kikuchi because “there is no
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Application 13/216,011
motivation in the references themselves or elsewhere in the prior [art]” for
making such a combination. App. Br. 4.
Appellant’s argument is not persuasive because it appears to be
holding the Examiner to the old teaching, suggestion, or motivation
(“TSM”) standard where there must be some suggestion or motivation,
either in the references themselves or in the knowledge generally available
to one of ordinary skill in the art, to modify the reference or to combine
reference teachings; such a standard is not required. KSR Int 7 Co. v.
Teleflex Inc., 550 U.S. 398, 415 (2007) (“We begin by rejecting the rigid
[application and requirement of a TSM to combine known elements in order
to show obviousness]”). The proper inquiry is whether the Examiner has
articulated adequate reasoning based on a rational underpinning to explain
why a person of ordinary skill in the art would have been led to combine the
disclosures of Friegang and Kikuchi. See In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006) (“[R]ejections on obviousness grounds ... there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness”), cited with approval in KSR v. Teleflex,
550 U.S. 419 (2007). In this case, the Examiner has provided an adequate
reasoning for combining the teachings Friegang and Kikuchi, namely, “to
provide a means of reducing the time spent on cleanup by collecting the
chips generated during cutting, and drawing them into a remote vacuum.”
Final Act. 4. Appellant has not persuasively shown error in the Examiner’s
findings or reasoning.
Appellant further argues that combining Friegang with Kikuchi
“would require substantial restructuring of both the vacuum system and the
router shown in Friegang.” Appeal Br. 4. According to Appellant, the
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Application 13/216,011
routers disclosed by Friegang and Kikuchi are different types of routers in
that Friegang discloses “an offset router in which the router bit is near the
nose or front of the base” and Kikuchi discloses a “conventional router in
which the router bit is located centrally of the base.” Id. Appellant notes
that the scribing wheel of Friegang (guide wheel 24) is mounted on a spacer
block 18 and not on the base plate itself and that the base plate of Friegang is
a “conventional base plate of the type used in routers,” that is, a “solid,
relatively thin [plate that]. . . was never intended to house a vacuum
system.” Id. Furthermore, Appellant argues that claim 1 differs from the
devices of Friegang and Kikuchi,
in that it includes a guide wheel mounted on the upper portion
of a horizontally extending body which attaches to the router
and has a lower surface which engages a workpiece. The guide
wheel and cutting bit are located near the front of the router,
with an elongated vacuum chamber extending from the front of
the body to the rear of the body, an inlet port which opens
through the lower surface of the body and communicates freely
with the vacuum chamber on all sides of the router bit, and an
exhaust port communicating with the vacuum chamber at the
rear of the body.
Id. at 5.
The Examiner provides annotated Figure 3 of Friegang, reproduced
below, to illustrate the resultant combination. Ans. 10 (mailed Mar. 18,
2015).
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Ftang# of
The Examiner’s annotated Figure 3 of Friegang shows base plate 16
and Kikuchi’s vacuum chamber. We are not persuaded by Appellant’s
arguments because as shown in the annotated figure reproduced above, the
combination of Friegang and Kikuchi would produce a structure having a
guide wheel 24 mounted to the horizontally extending body for engaging a
contoured surface. Furthermore, both the guide wheel 24 and the axially
aligned cutting bit are located on the right hand side of the figure above
which would be the front of the router. The vacuum chamber, as correctly
indicated by the Examiner, has a vacuum inlet that is centered on the axially
aligned cutting bit. Kikuchi teaches, and as shown by the Examiner, the
vacuum chamber would extend along the entire lower surface of the router
with a vacuum exhaust located at the rear. Thus the lower surface of the
vacuum chamber would be engaged with a work piece.
Furthermore, Appellant’s arguments miss the mark because it is the
combination of Friegang with Kikuchi that forms the basis for the rejection.
Each reference cited by the Examiner “must be read, not in isolation, but for
what it fairly teaches in combination with the prior art as a whole.” See In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). As to Appellant’s
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argument that the routers are of different types, such argument is misplaced
because it is the combination of references and what they suggest that are the
basis for the Examiner’s decision. Appellant has not explained why any
differences in the routers of Friegang with Kikuchi are of such a nature as to
have dissuaded a person of ordinary skill in the art at the time of Appellant’s
invention from providing Kikuchi’s vacuum chamber to Friegang’s router to
collect the chips generated during cutting, as reasoned by the Examiner.
Appellant’s argument that the scribing wheel of Friegang (guide
wheel 24) is mounted on a spacer block and not the base plate itself is
likewise not persuasive because claim 1 does not require that the guide
wheel be mounted to the base plate but only that “a guide wheel [is]
mounted on the upper portion of the body.” As correctly stated by the
Examiner:
Since the claim limitations only require the guide wheel to be
mounted on “the upper portion of the body for rotation about
the axis/nose portion of the body for rotation about the axis,”
the respective limitations are met by Friegang’s scribing wheel
(24), which is journaled to the flange of the metal plate (22).
This is because the body includes the base plate (16), spacer
block (18), and metal plate (22). Stated otherwise, the
aforementioned limitations do not preclude the scribing wheel
(24) from being journaled to the metal plate (22).
Ans. 8.
Moreover, attorney argument regarding the thickness of
Friegang’s base plate and its suitability to house a vacuum system
cannot take the place of evidence in the record. Estee Lauder, Inc. v.
L ’Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997). We agree with the
Examiner that “the ‘restructuring’ of Friegang is limited to
modifying the base plate (16) such that the vacuum chamber extends
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from the front of the base plate (16) to the rear of the base plate (16)
and on all sides of the router bit (60).” Ans. 7.
Appellant has not shown that the Examiner’s rejection is in error. See
In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“As recently
acknowledged by the Board, it has long been the Board’s practice to require
an applicant to identify the alleged error in the examiner’s rejections, and the
Board’s actions in this case were entirely consistent with that long-standing
practice. See Ex Parte Frye, Appeal no.2009-006013, at 9-10, 2010 WF
889747 (B.P.A.I. Feb. 26, 2010) (precedential).”). Accordingly, for all of
the reasons set forth above, we sustain the Examiner’s rejection of claim 1.
Appellant argues, with respect to claim 2, that Friegang differs from
the claimed invention because Friegang does not disclose “the body includes
a rounded nose portion from which the outer portion of the guide wheel
extends, with the guide wheel being rotatively mounted on a shaft that
extends along the axis of rotation and is affixed to the nose portion.” App.
Br. 5—6. Appellant’s argument is not well taken. The Examiner has
specifically addressed claim 2 in the Examiner’s Answer at page 9, stating
that “Figure 2 [of Friegang] also illustrates the metal plate (22) and base
plate (16) as each having rounded nose portions with arcuately extending
outer edges.” Ans. 9. The Examiner goes on to state that “[s]ince each
respective nose has a smaller diameter than the guide wheel (24), the
wheel’s (24) outer tire (66) projects beyond both the front of the elongated
metal plate (22) and the front of the base plate (16).” Id. We thus agree
with the Examiner that “[disclosure is therefore provided on a ‘body
[including] a rounded nose portion from which the outer portion of the guide
wheel extends, with the guide wheel being rotatively mounted on a shaft that
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extends along the axis of rotation and is affixed to the nose portion.’” Id.
No error is found in the Examiner’s rejection.
Regarding claims 3 and 4, Appellant argues that “the metal plate (22)
on which the scribing wheel is mounted in Friegang is not an upper flange
on the nose portion of base plate (16), and there is no shaft affixed to the
nose portion of the base in the references.” App. Br. 6. We are not
persuaded because as the Examiner states, “the guide wheel (24). . . located
between an upper flange of the elongated metal plate’s (22) nose portion and
. . . the base plate (16). . . will result in the guide wheel (24) being
positioned above an upper wall of the . . . vacuum chamber.” Ans. 10. Thus
it is apparent from the rejection that the Examiner considers plate 22 to be a
part of the flange, and that finding is supported by a preponderance of the
evidence. Appellant has not shown that this combination of references is in
error and therefore, we sustain the rejection of claims 3 and 4.
With respect to claim 5, Appellant argues that
there is no disclosure in Friegang of a guide wheel being
disposed in a recessed area on the upper side of the nose
portion. There is likewise no bottom wall separating a recessed
area from a vacuum chamber, and as the Examiner has
acknowledged, there is no discussion in Friegang of a guide
wheel mounted on a shaft affixed to the bottom wall of such a
recessed area. Modifying Friegang to conform to the claimed
structure would require a substantial restructuring of the device
shown in Friegang, not just a rearrangement of parts, as
suggested by the Examiner.
App. Br. 6.
We are not persuaded by Appellant’s argument because as the
Examiner correctly responds, “the operation of the guide wheel (24) would
not be modified. Moreover, ‘substantial restructuring[]’ . . . would not be
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required . . . because only the mounting location of axle 70 would require
rearrangement.” Ans. 12. Minor changes in placement of elements may be
an obvious matter of design choice. See, e.g., In re Kuhle, 526 F.2d 553, 555
(CCPA 1975). Simply selecting one of a plurality of a finite number of
identified predictable solutions might not be the product of innovation but
something that occurs in the ordinary course of using a known device. See,
e.g., In reKubin, 561 F.3d 1351, 1358—61 (Fed. Cir. 2009). As Appellant
has not shown error in the Examiner’s modification of mounting location of
axle 70, the rejection of claim 5 is sustained.
Appellant has not set forth any substantive argument for the separate
patentability of claims 6—8 and as such, for the foregoing reasons, we
likewise sustain the rejection of these claims.
In regards to the rejection of claim 9, Appellant relies on the same
arguments presented supra in the rejection of claim 1. See App. Br. 6.
Therefore, for the same reasons discussed above, we sustain the rejection of
claim 9 over the combined teachings of Friegang and Kikuchi.
Lastly, with respect to the rejection of claims 10—15, Appellant’s
statements merely reiterate the claim limitations and do not present separate
arguments for patentability of these claims. See id. at 7; see also In re
Lovin, 99 USPQ2d 1373, 1379 (Fed. Cir. 2011). Accordingly, Appellant has
waived any argument for separate patentability of these dependent claims.
We thus sustain the rejection of claims 10—15 under 35 U.S.C. 103(a) as
being unpatentable over Friegang and Kikuchi.
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DECISION
The Examiner’s decision to reject claims 1—15 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). See 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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