Ex Parte Fuchs et al

Patent Trial and Appeal Board

Sep 28, 2012

11188545 (P.T.A.B. Sep. 28, 2012)

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.
11/188,545 07/25/2005 Wolfgang Fuchs 3387 9697
7590 09/28/2012
STRIKER, STRIKER & STENBY
103 EAST NECK ROAD
HUNTINGTON, NY 11743
EXAMINER
LOW, LINDSAY M
ART UNIT PAPER NUMBER
3721
MAIL DATE DELIVERY MODE
09/28/2012 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 WOLFGANG FUCHS, HEIKO ROEHM,
JUERGEN GAIRING, and JENS BLUM
____________

Appeal 2010-003952
Application 11/188,545
Technology Center 3700
____________

Before GAY ANN SPAHN, MICHAEL C. ASTORINO, and
WILLIAM A. CAPP, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision finally rejecting claims 1, 3-6, 8-12, and 14-17. Claims 2, 7, and 13
have been canceled. We have jurisdiction over the appeal under 35 U.S.C.
§ 6(b).
We REVERSE.
Appeal 2010-003952
Application 11/188,545

2
CLAIMED SUBJECT MATTER
Claims 1 and 17 are the independent claims on appeal. Claim 1,
reproduced below, with emphasis added, is illustrative of the subject matter
on appeal.
1. A hand power tool, comprising a housing
having at least two housing parts, sealing means
providing mounting of said housing parts on one
another fluid-tightly, said housing parts having
short sides with which said housing parts abut
against one another with interposition of said
sealing means, said sealing means being fixed non-
detachably and as an integrated part on one of said
housing parts,
wherein said parts at a point where they abut
one another are configured as a tongue-and-groove
connection, positioned longitudinally along the
short sides, said sealing means being located in an
area of partner faces of said tongue-and-groove
connection, said sealing means being configured to
remain in position before the housing is assembled
and when the housing is disassembled, wherein
said sealing means are configured to remain in a
permanent position and further are configured so
that the sealing means cannot be disassembled
from said short sides without causing damage
either to the housing parts or to the sealing means,
wherein said housing parts are formed as injection
molded parts, so that said sealing means formed as
injection molded parts are injection molded on said
housing parts during manufacture of said housing
parts, such that said housing parts and said sealing
means are produced simultaneously as a single,
unitary, one-piece part.

Appeal 2010-003952
Application 11/188,545

3
REJECTIONS
The following Examiner’s rejections are before us for review.
Claims 1, 3-6, 8-12, and 14-17 are rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement.
Claims 1, 3-5, 8-12, and 14-17 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Terada (US 5,692,574, iss. Dec. 2, 1997) and deBlois
(US 5,718, 014, iss. Feb. 17, 1998).
Claim 6 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Terada, deBlois, and Burgsmüller (US 4,268,197, iss. May 19, 1981).

OPINION
Written Description
Independent claim 1 and dependent claims 3-6, 8-12, and 14-16
Claim 1 recites, inter alia, “wherein said housing parts are formed as
injection molded parts, so that said sealing means formed as injection
molded parts are injection molded on said housing parts during manufacture
of said housing parts, such that said housing parts and said sealing means are
produced simultaneously as a single, unitary, one-piece part.” Br., Claims
Appendix. The Examiner has found that the phrase “produced
simultaneously as a single, unitary, one-piece part,” as recited in claim 1,
“appears to suggest that the sealing means are made with the housing at the
same time” and as such, the phrase has not been described in the
Specification in such a way to reasonably convey to one of ordinary skill in
the art that the inventors, at the time the application was filed, had
possession of the claimed invention. Ans. 3.
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To satisfy the written description requirement, “the [original]
specification must describe an invention understandable to that skilled
artisan and show that the inventor actually invented the invention claimed.”
Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
(en banc). This test “requires an objective inquiry into the four corners of
the specification from the perspective of a person of ordinary skill in the
art.” Id. “Based on that inquiry, the specification must describe an
invention understandable to that skilled artisan and show that the inventor
actually invented the invention claimed.” Id. This inquiry is a question of
fact. Id. (citing Ralston Purina Co. v. Far-Mar-Co, Inc., 772 F.2d 1570,
1575 (Fed. Cir. 1985)).
The Examiner refers to the Specification on page 8, lines 18-20,
which states “[t]he production of the half-shell with a soft component can be
done by 2-K technology, in which first the hard component and then the soft
component are injected in the same mold, such as an injection mold.”
Emphasis added. See also Spec. 4-5 (stating “[t]he connection between the
hard and soft components . . . can be additionally reinforced by form
locking, such as back-injection molding”). The Examiner found that the
statement at page 8 of the Specification “seems to suggest that the housing is
produced first and the sealing means is produced second.” Ans. 3. The
Examiner further found:
This is not simultaneous, but rather two separate
steps in the production process. It is not clear as to
when the single, unitary, one-piece part is
considered to be “produced.” For example, it
could be considered to be “produced” immediately
after injection of the material. If that were the
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Application 11/188,545

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case, the housing parts and sealing means would
not be “produced simultaneously.”
Ans. 6-7.
The Appellants contend the Specification at page 8, lines 18-20
“clearly disclose[] that the hard and soft components are injected in the
same mold. The mold is then processed such that both the hard and soft
components are produced simultaneously to form the single, one-piece part
within the mold.” Br. 7. Indeed, a person of ordinary skill in the art would
understand that the product formed by the process of injection molding is
produced when the all the materials have been cured in the mold as a single,
unitary, one-piece part. The effect of the foregoing is that the product is
“produced simultaneously as a single, unitary, one-piece part.” As such, the
Specification describes the claimed invention and therefore, the Appellants
had possession of the claimed invention.
Thus, the rejection of claims 1, 3-6, 8-12, and 14-16, as failing to
comply with the written description requirement, is not sustained.
Independent claim 17
As claim 17 does not contain the language of “produced
simultaneously as a single, unitary, one-piece part” upon which the
Examiner bases the lack of written description rejection, we also do not
sustain the Examiner’s rejection of claim 17 as failing to comply with the
written description requirement.
Thus, the rejection of claim 17, as failing to comply with the written
description requirement, is not sustained.

Appeal 2010-003952
Application 11/188,545

6
Obviousness
The Examiner has found with respect to claims 1 and 17 that Terada
“discloses a hand power tool (1) having a housing with at least two housing
parts ([body housing] 3, [handle] 5) and a sealing means ([rubber ring] 30)
that fluid-tightly seals the housing parts (airtight, column 5, lines 60-65) and
is interposed between short sides of the housing parts (Fig. 4A-4G).” Ans.
3, 5, and Terada, col. 5, ll. 16-17. With respect to claim 17, the Examiner
adds that Terada’s “sealing means ([rubber ring] 30) is deemed to be fixed
on the housing parts because it is firmly positioned between them.” Ans. 5.
The Examiner has also found that Terada “does not disclose the use of
injection molding to form the plastic seal on one of the housing parts,” but
that deBlois discloses “the use of injection molding to form a plastic seal
(the cover piece) on the housing of a tool.” Id. The Examiner concludes “it
would have been obvious to one having ordinary skill in the art at the time of
the invention to injection mold the seal [of Terada] to the housing in order to
manufacture a secure seal in a low-cost manner.” Ans. 5-6, see also Ans. 8.
As such, we understand that for the rejection of claims 1 and 17, the
Examiner has modified Terada’s apparatus in view of deBlois teaching to
reach the conclusion that the recitations of each claim are unpatentable, i.e.,
obvious.
The Appellants assert that “[a]s provided in column 3, lines 59-61 of
deBlois, the cover 24 which is produced by injection molding forms an outer
skin over a majority of the subassembly shell 22.” Br. 11 (emphasis
omitted). The Appellants persuasively contend that “deBlois does not
disclose injection molding of the sealing means.” Id. (emphasis omitted).
DeBlois discloses a tool housing having a “subassembly shell 22
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compris[ing] two half members 26 . . . . The two members 26 are basically
mirror images of each other and are held together by a single screw 29 at the
holes 28 and metal rings 31 at the front and rear of the members 26.” Col. 3,
ll. 36-41, fig. 2. The cover 24 is overmolded (injection molded) onto shell
22 to form an outer skin over a majority of the shell 22. See col. 3, ll. 55-61,
col. 8, ll. 58-60, figs. 1, 9A. Cover 24 has various functions including
providing waterproofing, a non-slip surface, and a uniform and stylish
appearance, and resiliently absorbs physical shocks if the tool is dropped on
a hard surface. Col. 10, ll. 27-52. So although cover 24 is injected molded,
cover 24 does not act as a sealing means integrated on one of the housing
parts and interposed between abutting housing parts.
In response to the Appellants’ contention, the Examiner explains that
“[i]t is acknowledged that deBlois operates differently than Terada.” Ans. 8.
Indeed, Terada’s rubber ring can absorb vibration and can act as an air
cushion by deforming (col. 5, ll. 55-57, col. 6, ll. 1-3), which is different
functionality as compared to the functionality of deBlois’s cover 24. The
Examiner adds that both Terada’s rubber ring and deBlois’s cover 24 “utilize
materials in order to form seals for keeping out debris and other particles.”
Ans. 8. However, we determine that the differences in the functionality
between Terada’s rubber ring and deBlois’s cover are considerable. See also
Br. 9-12. The Examiner’s conclusion of obviousness appears to rely on the
ability to manufacture Terada’s rubber ring by injection molding as taught
by deBlois’s injection molding process.1 However, deBlois’s teaching does

1 The Examiner has also found that “[a]s is well known in the art, the use of
injection molding provides a low-cost method for manufacturing a secure
sealing means.” Ans. 3.
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not adequately support the Examiner’s reasoning. Hence, the Examiner’s
reasoning is not supported by rational underpinning. In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds [require]
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness”) (cited with approval in KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. 398, 418 (2007)).
Thus, for the foregoing reasons, the rejection of independent claim 1
and its dependent claims 3-5, 8-12, and 14-16, and independent claim 17, as
unpatentable over Terada and deBlois cannot be sustained.
Turning to the rejection of claim 6 as unpatentable over Terada,
deBlois, and Burgsmüller, the Examiner has further found that Burgsmüller
discloses “the use of a grease/oil resistant plastic for sealing elements in a
drill” and “[a]s is well known in the art, grease/oil resistant sealing elements
allow for the effective sealing in environments, such as inside many tool
constructions, where grease/oil is used (such as in transmissions, etc[.]).”
Ans. 6. Since claim 6 ultimately depends from claim 1 and these findings do
not remedy the deficiency of the Examiner’s rejection with respect to claim
1, the rejection of claim 6 as unpatentable over Terada, deBlois, and
Burgsmüller cannot be sustained.

DECISION
We REVERSE the rejections of claims 1, 3-6, 8-12, and 14-17.

REVERSED

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