Ex parte Garuglieri

Board of Patent Appeals and Interferences

Dec 10, 1999

08722452 (B.P.A.I. Dec. 10, 1999)

Application for patent filed October 10, 1996. 1
According to appellant this application is a continuation of
Application No. 08/289,597, filed August 12, 1994, now
abandoned.
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the
Board.
Paper No. 27
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ANDREA GARUGLIERI
____________
Appeal No. 1998-2700
Application No. 08/722,4521
____________
HEARD: November 17, 1999
____________
Before STONER, Chief Administrative Patent Judge, FRANKFORT,
and BAHR, Administrative Patent Judges.
FRANKFORT, Administrative Patent Judge.
Appeal No. 1998-2700
Application No. 08/722,452
2
Appeal No. 1998-2700
Application No. 08/722,452
Claim 24 was amended subsequent to the final rejection2
in a paper filed September 29, 1997 (Paper No. 17). As noted
in the advisory action mailed October 10, 1997 (Paper No. 18),
the rejection of claim 24 under 35 U.S.C. § 112, second
paragraph, made in the final rejection, was overcome by this
amendment.
3
DECISION ON APPEAL
This is a decision on appeal from the examiner's
final rejection of claims 15, 16, 19, 21, 22, 24, 26 and 27,
which are all of the claims remaining in the application. 2
Claims 1 through 14, 17, 18, 20, 23 and 25 have been canceled.
Appellant’s invention relates to a combination chop and
table saw, otherwise known as a flip-over saw. More
particularly, the invention relates to such a saw which is
capable of making bevel cuts in both its table saw mode and
its miter saw mode, and to a pointer and gearing arrangement
for accurately and easily identifying the angle which the saw
blade makes to the vertical. Claims 15 and 21 are
representative of the subject matter on appeal, and a copy of
those independent claims may be found in the Appendix to
appellant’s brief.
Appeal No. 1998-2700
Application No. 08/722,452
4
The prior art references relied upon by the examiner in
rejecting the appealed claims are:
Cox 2,000,926 May 14,
1935
Briskin 2,543,486 Feb. 27,
1951
Appeal No. 1998-2700
Application No. 08/722,452
A review of PTO records reveals that the provisional3
double patenting rejection of claims 15, 16, 19, 21, 22, 24,
26 and 27 set forth on page 3 of the final rejection (Paper
No. 16) is now moot in view of the abandonment of Application
Serial No. 08/722,453 on which that rejection was based.
5
Garuglieri DE4106636 Jun. 4,
1992 (German)(translation attached)
Claims 26 stands rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter
which appellant regards as the invention.
Claims 15, 16, 19, 21, 22, 24, 26 and 27 stand rejected
under 35 U.S.C. § 103 as being unpatentable over Briskin in
view of Garuglieri and Cox.3
Rather than attempt to reiterate the examiner's full
commentary with regard to the above-noted rejections and the
conflicting viewpoints advanced by the examiner and appellant
regarding the rejections, we make reference to the examiner's
answer (Paper No. 23, mailed April 28, 1998) for the reasoning
in support of the rejections, and to appellant’s brief (Paper
Appeal No. 1998-2700
Application No. 08/722,452
6
No. 22, filed February 23, 1998) for the arguments
thereagainst.
Appeal No. 1998-2700
Application No. 08/722,452
7
OPINION
In reaching our decision in this appeal, we have given
careful consideration to appellant’s specification and claims,
to the applied prior art references, and to the respective
positions articulated by appellant and the examiner. As a
consequence of our review, we have made the determinations
which follow.
Looking first at the examiner's rejection of claim 26
under 35 U.S.C. § 112, second paragraph, we note that we see
nothing indefinite about appellant’s use of the language in
claim 26 specifying that the "pointer is disposed on said
pinion." In this regard, we agree with appellant’s comments
and arguments found on pages 21 and 22 of the brief. While it
is true, as the examiner notes on pages 14 and 15 of the
answer, that the specification (page 6) indicates that the
pointer (56) seen in Figure 2 is provided on the sleeve (52),
we observe that the specification, at page 6, lines 1 and 2,
also indicates that "[t]he forward end of the sleeve 52 is
formed as a toothed pinion 54," thus making the pinion and the
sleeve part of the same component in appellant’s system. In
Appeal No. 1998-2700
Application No. 08/722,452
8
essence, we view the sleeve (52) as forming the body of the
pinion (54) which carries teeth that cooperate with the teeth
on rack (50), whereby movement of the pivot support (26)
relative to the pivot block (27) about the bevel axis (92), as
seen in Figures 2 and 3, causes the pinion (54) to advance
along the rack (50) and rotate the pinion (54) and sleeve (52)
relative to the fixing pin (44), the pivot support (26) and
the pivot block (27), thereby causing the pointer (56) on the
sleeve/pinion to rotate relative to the scale (58) and provide
an indication of the selected bevel angle of the saw blade.
In light of the foregoing, it is our opinion that claim
26 on appeal reasonably apprises those of skill in the art of
its scope and defines appellant’s invention with a reasonable
degree of precision and particularity adequate to satisfy the
requirements of 35 U.S.C. § 112, second paragraph. Thus, we
will not sustain the examiner’s rejection of claim 26 under 35
U.S.C. § 112, second paragraph.
Regarding the examiner’s rejection of claims 15, 16, 19,
21, 22, 24, 26 and 27 under 35 U.S.C. § 103 as being
Appeal No. 1998-2700
Application No. 08/722,452
9
unpatentable over Briskin in view of Garuglieri and Cox, we
share appellant’s view that the protractor of Cox for
measuring and reading the angular setting of aircraft
propeller blades with relation to their hub is far removed
from appellant’s field of endeavor involving a combination
chop and table saw and a system for indicating the angle of
the saw blade relative to the vertical. Moreover, even if one
skilled in the art would have viewed Cox as being reasonably
pertinent to the problem confronted by appellant (a point of
view which we find to be highly questionable), we must agree
with appellant that there is no teaching, suggestion or
incentive in the applied references which would have led one
of ordinary skill in the art to combine the teachings of Cox
with those of Briskin and Garuglieri in the manner urged by
the examiner. Unlike the examiner (answer, page 7), we do not
view the protractor of Cox and the angular adjustment
mechanism of Briskin (Figures 14, 15, 17 and 18) as being
"equivalent structures" which "perform equivalent functions in
substantially the same way to achieve substantially the same
result." Indeed, given the disparate nature of the devices
and functions performed thereby in Cox and Briskin, it is our
Appeal No. 1998-2700
Application No. 08/722,452
10
view that in searching for an incentive for modifying the
power saw of Briskin, the examiner has impermissibly drawn
from appellant’s own teachings and fallen victim to what our
reviewing Court has called "the insidious effect of a
hindsight syndrome wherein that which only the inventor has
taught is used against its teacher." W. L. Gore & Associates,
Inc. v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 313
(Fed. Cir. 1983). Since we have determined that the
examiner's conclusion of obviousness is based on a hindsight
reconstruction using appellant’s own disclosure as a blueprint
to
arrive at the claimed subject matter, it follows that we will
not
Appeal No. 1998-2700
Application No. 08/722,452
11
sustain the examiner's rejection of appealed claims 15, 16,
19, 21, 22, 24, 26 and 27 under 35 U.S.C. § 103 as being
unpatentable over Briskin in view of Garuglieri and Cox.
In view of the foregoing, the examiner's decision
rejecting claim 26 under 35 U.S.C. § 112, second paragraph,
and claims 15, 16, 19, 21, 22, 24, 26 and 27 under 35 U.S.C. §
103 based on Briskin in view of Garuglieri and Cox is
reversed.
REVERSED
BRUCE H. STONER, JR. )
Chief Administrative
Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
Appeal No. 1998-2700
Application No. 08/722,452
12
CEF/sld
Appeal No. 1998-2700
Application No. 08/722,452
13
Charles E. Yocum TW199
The Black & Decker Corp.
701 East Joppa Rd
Towson, MD 21286
Shereece
Appeal No. 1998-2000
Application No. 08/722,452
APJ FRANKFORT
APJ BAHR
APJ STONER
REVESED
Prepared: December 15, 2000