10984643 (B.P.A.I. Apr. 27, 2011)

Ex Parte Gass

Board of Patent Appeals and InterferencesApr 27, 2011

10984643 (B.P.A.I. Apr. 27, 2011)

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. 10/984,643 11/08/2004 Stephen F. Gass SDT 306A 3811 27630 7590 04/28/2011 SD3, LLC 9564 S.W. Tualatin Road Tualatin, OR 97062 EXAMINER ALIE, GHASSEM ART UNIT PAPER NUMBER 3724 MAIL DATE DELIVERY MODE 04/28/2011 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte STEPHEN F. GASS ____________________ Appeal 2009-004424 Application 10/984,643 Technology Center 3700 ____________________ Before: WILLIAM F. PATE III, JOHN C. KERINS, and MICHAEL W. O’NEILL, Administrative Patent Judges. PATE III, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeal 2009-004424 Application 10/984,643 2 STATEMENT OF CASE This is a response to a Request for Rehearing in Appeal 2009-004424. Requests for Rehearing are limited to matters overlooked or misapprehended by the Panel in rendering the original decision. 37 C.F.R. § 41.52. Appellant argues that the Panel overlooked Appellant’s originally presented argument respecting claim 2 which was separately argued on page 16 of the Appeal Brief. Request for Reh’g 1. Claim 2 is directed to the feature that the woodworking machine uses a portion of the angular momentum of the saw blade to retract the cutting tool away from a person accidentally contacting the blade. We agree with Appellant that our prior decision did not specifically mention the subject matter of claim 2. The Examiner stated that the subject matter of claim 2 is inherent in the operation of Hauer 1 . Ans. 4. Hauer discloses a table saw in which the saw blade is rapidly lowered under the work table in the event that the operator touches the saw blade. Hauer 3. Hauer states that a pneumatic cylinder abruptly pulls the motor with the saw blade downward. Id. From Figure 5 of Hauer, it appears that the blade, arbor, and motor of Hauer are translated downwardly away from the table. Figure 5 does not show a pivoting component to the movement of the motor, arbor, and blade. However, page one of the translation describes the movement of the saw blade as by a “swing-out device.” On balance, we believe the movement of the blade, arbor, and motor in Hauer is by a simple translation downwardly, as Appellant argued. We further agree with Appellant that if the movement of the blade, motor, and arbor of Hauer is a simple translation downwardly, the Examiner has failed to make out a case that a portion of the angular 1 All references to Hauer are directed to the translation made of record on April 27, 2005. Appeal 2009-004424 Application 10/984,643 3 momentum of the saw blade is used to move the saw away from the person accidently contacting the blade. In order for the Examiner to show that a claim limitation is inherent in the prior art, the Examiner must establish that the prior art necessarily functions in accordance with or includes the claim limitation. See In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002) (emphasis added). “Under the principles of inherency, if the prior art necessarily functions in accordance with, or includes, the claimed limitations, it anticipates.” Id. (quoting MEHL/Biophile Int’l Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir. 1999)). Since it is clear that a simple translatory movement of the blade downwardly in Hauer does not necessarily capture angular momentum of the blade, the Examiner’s 35 U.S.C. § 103 rejection of claim 2 cannot be sustained. Appellant’s Request for Rehearing has been Granted to the extent that the rejection of claim 2 under 35 U.S.C. § 103 as obvious over Hauer in view of Yoneda and Friemann has been reversed. The affirmance of the rejections of claims 1, 3 and 4 has not been reconsidered or changed. DECISION The rejections of claims 1, 3 and 4 under 35 U.S.C. § 103 remain affirmed. The rejection of claim 2 under 35 U.S.C. § 103 is reversed upon reconsideration. RECONSIDERATION GRANTED-IN-PART nlk