Ex Parte Frolov

Patent Trial and Appeal Board

Jun 16, 2017

12872337 (P.T.A.B. Jun. 16, 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.
12/872,337 08/31/2010 Andrew Frolov 1576-1116(0212.82473) 3379
10800 7590 06/16/2017
Maginot, Moore & Beck LLP
One Indiana Square, Suite 2200
Indianapolis, IN 46204
EXAMINER
AYALA, FERNANDO A
ART UNIT PAPER NUMBER
3724
MAIL DATE DELIVERY MODE
06/16/2017 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 ANDREW FROLOV
Appeal 2015-007137
Application 12/872,337
Technology Center 3700
Before MICHELLE R. OSINSKI, ANNETTE R. REIMERS, and
THOMAS F. SMEGAL, Administrative Patent Judges.
OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Andrew Frolov (Appellant)1 appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 1—8, 10, 14—16, and 21, which are all
of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 According to Appellant, the real party in interest is Robert Bosch Tool
Corporation and Robert Bosch GmbH. Br. 2.
Appeal 2015-007137
Application 12/872,337
THE CLAIMED SUBJECT MATTER
Claim 1, the sole independent claim, is reproduced below and is
representative of the claimed subject matter on appeal.
1. A power saw comprising:
a base structure including a generally flat top structure
having an upper work surface with said top structure having an
opening through which at least: a portion of a circular blade can
extend:
an undercarriage pivotably mounted to said base structure
around a pivot axis located at an upper end portion of said
undercarriage to provide an adjustable bevel angle of said blade
relati ve to said top structure; and
a motor saw assembly mounted to said undercarriage, the
motor saw assembly comprising:
a gear housing slidably connected to said
undercarriage and configured to slide vertically between
an upper position and a lower position with respect to said
undercarriage, the gear housing being closer to the top
structure in the upper position than in the lower position:
an arbor shaft rotatably supported by the gear
housing for movement therewith between the upper and
lower positions, the arbor shaft being configured to receive
a circular blade thereon,
a drive motor mounted to the gear housing for
movement therewith between the upper and lower
positions and having an output shaft that extends
therefrom, the drive motor being arranged with the output
shaft oriented generally parallel to a plane of said blade
and oriented 90 degrees relative to said arbor shaft, and
a speed reducing gear train supported by the gear
housing for movement therewith between the upper and
lower positions, said speed reducing gear train coupling
said output shaft and said arbor shaft,
wherein movement of said gear housing between said
upper and lower positions varies the portion of said blade that
extends above said upper work surface.
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Appeal 2015-007137
Application 12/872,337
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Kottke US 2002/0078812 A1 June 27, 2002
Gaw US 2008/0092709 A1 Apr. 24, 2008
Tanaka US 2009/0229437 A1 Sept. 17, 2009
Chung US 2011/0048195 A1 Mar. 3,2011
Kani US 8,272,454 B2 Sept. 25, 2012
THE REJECTIONS
I. Claims 1—5, 7, 8, and 21 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Gaw, Kani, and Tanaka. Id. Final Act. 2—6.
II. Claim 6 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Gaw, Kani, Tanaka, and Kottke. Id. at 6—7.
III. Claims 1, 10, and 14—16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Chung and Gaw. Id. at 7—9.
OPINION
Rejection I
The Examiner finds that Gaw teaches many of the limitations of
independent claim 1, including, inter alia, an undercarriage and “a motor
saw assembly comprising an arbor shaft . . ., a drive motor . . ., and a gear
housing . . . said motor saw assembly being adjustably mounted to said
undercarriage.” Final Act. 2—3 (emphasis omitted). The Examiner
acknowledges that Gaw “lacks a gearing housing which is slidably
connected to said undercarriage and configured to slide vertically between
an upper position and a lower position with respect to said undercarriage.”
Final Act. 3 (emphasis added). The Examiner turns to Tanaka as teaching a
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Application 12/872,337
movable base that slides “along support shafts 6 vertically upward and
downward in order to slide the motor and motor housing 7.” Id. (citing
Tanaka 122, Figs. 1, 5). The Examiner concludes that it would have been
obvious to replace Gaw’s pivoting cam means 16 for raising the blade and
its housing with Tanaka’s vertically slidable base/shaft assembly for raising
a blade “in order to provide a raising and lowering device which allows for a
better connection and disconnection from other parts of a saw device as
taught by Tanaka.” Id. at 4 (citing Tanaka 5—6).
Appellant argues that the identified paragraphs of Tanaka “merely
refer to the lack of an ability to adjust the vertical position of the holding
frame of prior art saw blade protectors relative to the upper surface of the
saw table,” and that Tanaka seeks to “solve this problem by providing saw
blade protectors with an adjusting device that enables the position of the
holding frame of the blade protector to be adjusted relative to the upper
surface of the table.” Br. 9. Appellant maintains that nothing “would lead a
person of ordinary skill in the art to think that the raising and lowering
device of Tanaka ‘allows for a better connection and disconnection from
other parts of a saw device,’” as alleged by the Examiner. Id.
The Examiner responds that paragraphs 5 and 6 describe the
“limitations of the prior art” and the “need for such a sliding adjustable
frame and support system.” Ans. 10. In addition, the Examiner points to
paragraph 8 as “more clearly providing] the necessary motivation to support
the assertions from above of the necessary rationale] for modifying Gaw
with Tanaka.” Id.
We determine that the Examiner has not sufficiently articulated a
rational evidentiary underpinning to explain why a person of ordinary skill
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Application 12/872,337
in the art would have had reason, in light of Tanaka, to replace Gaw’s
pivoting cam means 16 with Tanaka’s vertically slidable base/shaft
assembly. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring
“some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness”) (cited with approval in KSR Int 7 Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007)). The Examiner does not explain
sufficiently why the described limitations of the prior art set forth in Tanaka,
which relate specifically to saw blade protectors, are applicable to Gaw.
Further, the Examiner does not explain what deficiencies exist with
respect to Gaw’s pivoting cam means and/or how Tanaka’s vertically
slidable base/shaft assembly would provide advantages relative to a pivoting
cam means. More specifically, the Examiner’s assertion regarding Tanaka’s
sliding assembly “allowing] for a better connection and disconnection from
other parts of a saw device” (Final Act. 4) merely explains why a skilled
artisan may desire relative movement between parts of a saw device in
general, as opposed to explaining why a skilled artisan may desire relative
movement using a sliding assembly instead of a pivoting assembly. Tanaka
does not expressly set forth any improvement or advantage by allowing
relative movement via a sliding assembly instead of a pivoting assembly, nor
does the Examiner explain how such an improvement or advantage might be
reasoned from knowledge generally available to one of ordinary skill in the
art. In short, the Examiner does not explain sufficiently what would have
led one of ordinary skill in the art, based on the teachings of Tanaka, to
replace Gaw’s pivoting cam means with a sliding assembly.
For the foregoing reasons, we find that the Examiner erred in
concluding that the subject matter of claim 1 is unpatentable over Gaw,
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Application 12/872,337
Kani, and Tanaka, and we do not sustain the rejection of claim 1, or claims
2—5, 7, 8, and 21 which depend therefrom, under 35 U.S.C. § 103(a) as
unpatentable over Gaw, Kani, and Tanaka.
Rejection II
The Examiner rejects claim 6 under 35 U.S.C. § 103(a) as
unpatentable over Gaw, Kani, Tanaka, and Kottke. Final Act. 6—7. The
rejection of this claim relies on the Examiner’s erroneous conclusion that the
combination of Gaw, Kani, and Tanaka renders obvious replacing a pivoting
cam means with a sliding assembly. See id. at 6. The Examiner does not
explain how Kottke cures this underlying deficiency. Accordingly, we do
not sustain the rejection of claim 6 under 35 U.S.C. § 103(a) as unpatentable
over Gaw, Kani, Tanaka, and Kottke.
Rejection III
The Examiner finds that Chung teaches an arbor shaft 156 configured
to receive a circular blade 108 thereon and a drive motor 116 having an
output shaft. Final Act. 7—8. The Examiner also finds that Chung teaches a
speed reducing gear train coupling the output shaft and the arbor shaft 156 in
that ‘“the power shaft 152 may be directly driven by the motor or by a
reduction gear.’” Id. at 8 (quoting Chung 149). The Examiner further finds
that Chung teaches a gear housing 144 slidably connected to undercarriage
124 and configured to slide vertically between an upper position and lower
position with respect to the undercarriage 124. Id. at 7.2
2 The Examiner acknowledges that Chung lacks an output shaft extending
generally parallel to a plane of a saw blade, with said output shaft oriented at
90 degrees relative to the arbor shaft. Final Act. 8. The Examiner finds that
Gaw teaches this missing limitation, and the Examiner concludes that it
would have been obvious “to modify Chung by orienting the Chung motor
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Application 12/872,337
Appellant argues that Chung teaches only that “a speed reducing gear
train may be used to couple the motor 116 to an intermediate drive shaft, i.e.,
power shaft 152,” but “does not disclose or suggest using a speed reducing
gear train to couple the motor to the arbor shaft.” Br. 12. The Examiner
responds that the blade (received on shaft 156) is attached at least
operatively to power shaft 152, and thus meets the claim language. Ans. 10
(citing Chung, Fig. 3D). We agree with the Examiner that the configuration
of Chung, where a reduction gear is disposed between motor 116 and power
shaft 152, in which power shaft 152 in turn drives power wheel 150 and in
which belt 154 transfers rotational movement from power wheel 150 to
blade wheel 156 on which blade 108 is affixed, meets the limitation of a
speed reducing gear train coupling the output shaft of the drive motor and
the arbor shaft because of the operative connection between the power shaft
152 and the arbor shaft. In other words, Chung’s speed reducing gear train
indirectly couples the output shaft of motor 116 to the arbor shaft 156
(through the operative connection of power shaft 152 to arbor shaft 156).
Appellant also argues that gear housing 144 identified by the
Examiner is not slidably connected to undercarriage 124, but rather is
pivotably connected thereto. Br. 12. Appellant argues that at most Chung
teaches slidably connecting carriage 124 and frame 114 “to enable the height
of the blade to be adjusted relative to the upper surface of the table.” Id. at
12—13. The Examiner responds that Chung’s element 504 “supports] a
to be 90 degrees relative to the Chun[g] blade and orienting the output shaft
to be generally parallel to the blade plane in order to maintain a minimal
profile for the motor assembly necessary for beveling type assemblies as
taught by Gaw.” Id. (citing Gaw 127). Appellant does not contest the
Examiner’s findings or conclusions with respect to the teachings of Gaw.
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Application 12/872,337
housing and a motor and a blade thereon to be slid up and down while also
being able to be pivoted.” Ans. 10-11 (citing Chung | 50, Fig. 3B). The
Examiner maintains that “[t]he pivoting movement of such elements does
not preclude a vertical up and down movement as Appellant seems to
imply.” Id. at 11. Appellant does not respond to the Examiner’s finding
regarding element 504, and we are not persuaded that the Examiner erred in
finding that gear housing 144 is slidably connected to carriage 124 via guide
posts 504.
For the foregoing reasons, we do not find that the Examiner erred in
concluding that the subject matter of claim 1 is unpatentable over Chung and
Gaw, and we sustain the rejection of claim 1 under 35 U.S.C. § 103(a) as
unpatentable over Chung and Gaw. We also sustain the rejection of claims
10, and 14—16, for which Appellant relies on the same arguments and
reasoning we found unpersuasive in connection with independent claim 1.
See Br. 13.
DECISION
The Examiner’s rejection of claims 1—5, 7, 8, and 21 under 35 U.S.C.
§ 103(a) as unpatentable over Gaw, Kani, and Tanaka is reversed.
The Examiner’s rejection of claim 6 under 35 U.S.C. § 103(a) as
unpatentable over Gaw, Kani, Tanaka, and Kottke is reversed.
The Examiner’s rejection of claims 1, 10, and 14—16 under 35 U.S.C.
§ 103(a) as unpatentable over Chung and Gaw 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-IN-PART
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