Ex Parte Fuenfer

Patent Trial and Appeal Board

Dec 19, 2017

13440643 (P.T.A.B. Dec. 19, 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.
13/440,643 04/05/2012 Josef Fuenfer 5068.1093 4077
23280 7590 12/21/2017
Davidson, Davidson & Kappel, LLC
589 8th Avenue
16th Floor
New York, NY 10018
EXAMINER
LONG, ROBERT FRANKLIN
ART UNIT PAPER NUMBER
3721
NOTIFICATION DATE DELIVERY MODE
12/21/2017 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):
ddk @ ddkpatent .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEF FUENFER
Appeal 2016-008536
Application 13/440,643
Technology Center 3700
Before DANIEL S. SONG, KEN B. BARRETT, and
ARTHUR M. PESLAK, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Josef Fuenfer (“Appellant”) appeals under 35 U.S.C. § 134(a) from
the Examiner’s decision rejecting claims 1-5 and 10-13.1 We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellant submits the real party in interest is Hilti Aktiengesellschaft.
Appeal Br. 2.
Appeal 2016-008536
Application 13/440,643
THE CLAIMED SUBJECT MATTER
Claim 1, the only independent claim is reproduced below with italics
added.
1. A hand-held power tool with a pneumatic striking mechanism
comprising:
a motor-driven exciter;
a guide tube having an inside; and
a piston-shaped striker, the piston-shaped striker passing
through the inside of the guide tube and, with the exciter,
delimiting an air spring in the guide tube, the guide tube being
made of a metal strip bent to form the guide tube with opposite
lengthwise edges joined by at least one of a seam and a positive
fit created by teeth, the striker guided by the inside of the guide
tube so as to be in contact with the guide tube in a radial
direction.
REJECTIONS
1) Claims 1-2 and 10-13 are provisionally rejected on the ground of
nonstatutory double patenting as being unpatentable over claims 1
and 11-12 of copending U.S. Patent Application No. 13/900,405.
2) Claims 11-13 are rejected under 35 U.S.C. § 112, second
paragraph, for indefiniteness.
3) Claims 1-5 and 10 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Aoki (US 2006/0076154 Al, published Apr. 13,
2006), Hartmann (US 2010/0300718 Al, published Dec. 2, 2010),
Meshke (US 6,641,219 B2, issued Nov. 4, 2003), Ewell (US
3,731,437, issued May 8, 1973), and Du (US 6,522,042 Bl, issued
Feb. 18, 2003).
4) Claims 10-13 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Aoki, Hartmann, Meshke, Ewell, Du,
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Appeal 2016-008536
Application 13/440,643
Kammeraad (US 3,828,415, issued Aug. 13, 1974), and McClellan
(US 4,167,992, issued Sept. 18, 1979).
DISCUSSION
Rejection 1
The nonstatutory double patenting rejection of claims 1-2 and 10-13
over independent claim 1 and its dependent claims 11-12 of copending U.S.
Patent Application No. 13/900,405 is provisional because the claims in the
copending application had not issued at the time of the Final Office Action.
Final Act. 3—4. On December 27, 2016, subsequent to the docketing of this
appeal, the claims in U.S. Patent Application No. 13/900,405 issued. Prior
to issuance and subsequent to the Final Rejection in the application before
us, independent claim 1 of the ’405 application was amended. Given this
recent development, we do not reach the merits of this rejection. We leave it
for the Examiner to determine whether the obviousness-type double
patenting rejection still is proper in light of the amended claims of the ’405
application if prosecution continues in the instant application.
Rejection 2
The Examiner rejects claims 11-13, which depend directly or
indirectly from claim 1, finding that the limitation “the teeth” lacks
sufficient antecedent basis. Final Act. 4. Appellant contends that “[t]he
word ‘teeth’ is used in claim 1 and the assertion that there is no antecedent
basis for claim 11 is just wrong.” Appeal Br. 4. The Examiner has not
adequately explained why the use of “teeth” in claim 1 does not provide
sufficient antecedent basis for claims 11-13. We, thus, do not sustain the
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Application 13/440,643
rejection of claims 11-13 as indefinite under 35 U.S.C. § 112, second
paragraph.
Rejection 3
The Examiner finds that Aoki discloses many of the limitations of
claim 1 including a guide tube having an inside, but does not disclose, “the
guide tube being made of a metal strip bent to form the guide tube with
opposite lengthwise edges joined by at least one of a seam and a positive fit
created by teeth.” Final Act. 5-6. The Examiner finds that Meshke
discloses “a guide tube (25/45) being made of a metal strip (30) bent to form
the guide tube . . . with opposite lengthwise edges (40) joined by at least one
of a seam (55). . . [with] a positive fit created by teeth (60/65),” Ewell
discloses “forming a guide tube (12/50) being made of a metal strip (11)
bent to from the guide tube (12/50) with opposite lengthwise edges . . .
joined by at least one of a seam,” and Du discloses “forming a flux guide
tube (34”) being made of a metal strip . . . bent to form the guide tube . . .
with opposite lengthwise edges . . . joined by at least one of a seam (99)
positive fit created by teeth (101).” Id. at 7. The Examiner concludes that it
would have been obvious to modify Aoki’s guide tube
[to be] made of a metal strip bent to form the guide tube with
opposite lengthwise edges joined by at least one of a seam and
a positive fit created by teeth ... for reducing manufacturing
costs, increasing strength, and interconnecting tubular members
as taught by Hartman[n], Meshke et al., Ewell[,] and Du et al.
Id. at 8-9.
Appellant argues that Aoki’s guide tubes “typically are made from a
full block and milled and polished to provide a good fit and low friction”
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Appeal 2016-008536
Application 13/440,643
and that none of the prior art cited by the Examiner discloses a guide tube as
recited in claim 1. Appeal Br. 5. Appellant also argues that there is no
factual basis for using Meshke, which discloses a guide tube for a head rest
restraint, and Ewell, which discloses a rotary abrasive tool, to modify Aoki,
and Du’s guide tube is “a ring with inwardly projecting anchors 140 . . .
[which] would prevent. . . contact with a striker” as recited in claim 1. Id. at
5-6. Appellant next argues that the Examiner’s reference to
“interconnecting tubular members” is not understood, does not have any real
advantage, and in any event Aoki does not need to interconnect its tubular
member because it is milled from a solid block. Id. at 6.
The Examiner responds that claim 1 is a product by process claim and
if the “product in the product-by-process claim is the same as or obvious
from a product of the prior art, the claim is unpatentable even though the . . .
product was made by a different process.” Ans. 2 (citing In re Thorpe, 111
F.2d 695, 698 (Fed. Cir. 1985)). The Examiner does not dispute Appellant’s
assertion that Aoki discloses a guide tube machined from a solid block of
material and maintains that modifying Aoki’s guide tube as taught by
Hartmann, Meshke, Ewell, and Du would have been obvious. Id. at 3—4.
In reply, Appellant asserts that claim 1 is not a product by process
claim but rather recites
a structural limitation and in any event a bent metal strip is
structurally different from the prior art milled body. The
opposite lengthwise ends for example are a structurally
distinguishing feature of a metal strip bent into a guide tube. A
tube milled out of a solid block does not have such lengthwise
ends, which actually results in a higher mechanical strength of
the milled tube.
Reply Br. 2.
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Appeal 2016-008536
Application 13/440,643
Appellant then argues that the Examiner’s reasoning that modifying
Aoki’s guide tube to increase its strength is erroneous. Id. For the following
reasons, we do not sustain the rejection of claim 1.
First, we do not agree with the Examiner that the guide tube limitation
recited in claim 1 is a product by process claim limitation. We note that
limitations such “as ‘intermixed,’ ‘ground in place,’ ‘press fitted,’ ‘etched,’
and ‘welded’” have been “held capable of construction as structural, rather
than process, limitations.” In re Garnero, 412 F.2d 276, 279 (CCPA 1969).
Here, although bending a metal strip may be construed as a process, the
entire limitation of “guide tube with opposite lengthwise edges” of a bent
metal strip that are joined by a seam or teeth is a structural limitation.
Further, the Examiner has not shown that opposite lengthwise edges and a
seam are present in Aoki’s guide tube. Second, the Examiner has not
provided an adequate explanation to support the reasoning that modifying
Aoki’s guide tube to include lengthwise edges and a seam would result in
reduced manufacturing costs. In the absence of such an explanation or
evidence, the reasoning is based on speculation. Third, the Examiner has not
adequately explained why forming Aoki’s guide tube as proposed will result
in an increase in strength over a guide tube machined from a single piece as
disclosed in Aoki. Finally, the Examiner’s reference to “interconnecting
tubular members” does not state a reason to modify Aoki’s guide tube, but
rather states the result of the proposed modification. The Examiner’s
reasons for modifying Aoki’s guide tube are, thus, not supported by a
rational underpinning. Therefore, we do not sustain the rejection of claim 1
and claim 2-5 and 10 which depend from claim 1.
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Application 13/440,643
Rejection 4
Claims 10-13 depend directly or indirectly from claim 1. (Appeal Br.
(Claims App.).) The Examiner’s relies on additional disclosure from
Kammeraad and McClellan in the rejection of claims 10-13. Final Act.
9- 13. The additional disclosure and reasoning provided by the Examiner in
the rejection of these claims fail to cure the lack of a rational underpinning
for the rejection of claim 1. We, thus, do not sustain the rejection of claims
10- 13 for the same reasons stated for claim 1.
DECISION
The Examiner’s decision rejecting claims 1-5 and 10-13 is reversed.
REVERSED
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