Ex Parte Gass

Board of Patent Appeals and Interferences

Mar 25, 2010

10984643 (B.P.A.I. Mar. 25, 2010)

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
____________________

Decided: March 25, 2010
____________________

Before: WILLIAM F. PATE III, JOHN C. KERINS, and
MICHAEL W. O'NEILL, Administrative Patent Judges.

PATE III, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This is an appeal involving claims 1-4 in the above noted application.
These are the only claims remaining in the application. We have jurisdiction
over the appeal under 35 U.S.C. §§ 134 and 6.

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The claimed invention is directed to a method for minimizing
potential injuries from a woodworking machine having a moving blade. The
method comprises the steps of detecting accidental contact between a person
and the cutting tool and retracting the tool away from the person in the event
an accidental contact is detected.
Claim 1, reproduced below, is further illustrative of the claimed
subject matter.
1. A method for minimizing potential injuries from a
woodworking machine having a movable cutting tool, the
method comprising:

detecting accidental contact between a person and the
cutting tool; and

retracting the cutting tool away from the person in the
event accidental contact between the person and the cutting tool
is detected.

REFERENCES
The references of record relied upon by the examiner as evidence of
obviousness are:
Lokey
Friemann
Yoneda
Hauer
US 3,785,230
US 3,858,095
US 4,117,752
DE 19609771
Jan. 15, 1974
Dec. 31, 1974
Oct. 3, 1978
Jun. 4, 1998

REJECTIONS
Claims 1 and 2 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Hauer in view of Yoneda or Friemann.
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Claims 3 and 4 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Hauer in view of Yoneda or Friemann, and further in view
of Lokey.
ISSUES
Appellant contends that the prior art has focused on proximity sensing
rather than sensing contact of the user with the blade, and therefore the use
of the safety system based on contact would not have been obvious to one of
ordinary skill. Appellant further argues that persons of ordinary skill would
have doubted that that the contact system would work. Appellant also
furnishes objective evidence of nonobviousness in the form of evidence said
to represent commercial success, long felt need, skepticism of others, and
recognition of the invention. Finally, Appellant argues that there is no
reason to combine the references as the Examiner has done, and that Hauer
actually teaches away from the claimed subject matter. Therefore, the
questions presented for our review are whether the Examiner has established
the prima facie obviousness of the claimed subject matter, and whether,
when all of the evidence is considered anew, including evidence of
secondary considerations, the evidence for obviousness outweighs the
evidence against obviousness.
FINDINGS OF FACT
On page 5 of the translation, Hauer discloses an Emergency-Off
Lowering Device which does not brake the saw blade but rather moves it out
of the range of the hand if the proximity sensor senses the presence of a hand
near the blade area. The saw blade is configured to vanish completely below
the work table, inasmuch as the saw blade is supported by a pneumatic air

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cylinder which can be evacuated rapidly in the event of an emergency. See
page 5, last two full paragraphs.
Friemann discloses a protective circuit arrangement for a band saw.
In the Background of the Invention, Friemann recognizes two types or
methods for safety in the use of power cutting tools. The first method is
based on sensing the proximity of the user’s hands to the moving cutter.
Friemann notes that a proximity sensor such as a light-barrier-protective
circuit cannot be used in some instances because it would be continually
interrupting and stopping the machine as the operator manipulates the work.
Therefore, in some instances Friemann notes the desirability of a sensing
circuit that responds and instantaneously stops the cutter when the cutter is
touched. See col. 1, ll. 10-47. Thus, Friemann is a recognition in the art of
the two safety methods known in the art--proximity and contact--and the
drawbacks and advantages of each safety method.
Yoneda also teaches a band saw cutting apparatus and method
wherein the band saw is designed to be stopped instantaneously upon contact
of part of the human body with the band blade. See col. 1, ll. 15-20.
Yoneda further recognizes that physical barriers are insufficient blade
protection. See col. 1, ll. 26-35.
Lokey shows a rotary cutter either in a circular saw or table saw
configuration. Of interest is Fig. 7 of Lokey which shows a table saw that
stops when an unsafe situation is detected. The saw blade 113 is mounted
on arbor or shaft 114. See col. 2, ll. 32-63. When an unsafe situation is
detected, solenoid 126 is energized to force rubber wedge 125 into the teeth
of the saw blade. At the same time via rod 121, belt tightener pulley 117 is

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pivoted away from belt 116 thereby disengaging the motor 115 from the saw
blade pulley. Id.
PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007) (quoting 35 U.S.C. § 103). Rejections based on 35 U.S.C. § 103 must
rest on a factual basis. In making such a rejection, the examiner has the
initial duty of supplying the requisite factual basis and may not, because of
doubts that the invention is patentable, resort to speculation, unfounded
assumptions, or hindsight reconstruction to supply deficiencies in the factual
basis. In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). Rejections on
obviousness grounds must be supported by “some articulated reasoning with
some rational underpinning” to combine the known elements in the manner
required in the claim at issue. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007).
Whenever obviousness is found with respect to the subject matter on
appeal, and Appellant furnishes evidence of secondary considerations, it is
our duty to reconsider the issue of obviousness anew, carefully weighing the
evidence for obviousness with respect to the evidence against obviousness.
See, for example, In re Eli Lily & Co., 902 F.2d, 943, 945 (Fed. Cir. 1990).
We are also mindful that the objective evidence of nonobviousness in any
given case may be entitled to more or less weight depending on its nature
and its relationship with the merits of the invention. See Stratoflex Inc. v.
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Aeroquip, 713 F.2d 1530, 1538 (Fed. Cir. 1983). To be given substantial
weight in the determination of obviousness or nonobviousness, evidence of
secondary considerations must be relevant to the subject matter as claimed,
and therefore we must determine whether there is a nexus between the
merits of the claimed invention and the evidence of secondary
considerations. Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776
F.2d 281, 305 n.42 (Fed. Cir. 1985), cert. denied, 475 U.S. 1017 (1986).

ANALYSIS
We are in agreement with the Examiner that Hauer teaches a method
wherein the table saw blade is retracted when a dangerous condition is
detected. We further note that Hauer differs from the claimed subject matter
in that the dangerous condition is detected due to proximity of the user to the
cutting blade. Both Yoneda and Friemann discuss disadvantages and
constraints of the proximity systems vis-à-vis systems wherein the user
directly contacts the cutting blade. In our view, one of ordinary skill would
be able to select which detection system is appropriate for the precise
method or conditions that are relevant. Therefore, in our view, it would
have been obvious to modify the retractable table saw of Hauer with the
direct detection system as taught by Yoneda or Friemann to arrive at the
claimed subject matter. This is merely the use of a known technique to
improve similar devices in the same way. See KSR, 550 U.S. at 417.
Furthermore, Lokey teaches a table saw that is stopped with a pawl or
wedge 125 which is slid into the tooth of the saw blade when a dangerous
situation is detected. Additionally, we note that Lokey shows both the
stopping of the saw blade with pawl 125 and removing the drive of the saw
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blade by loosening the drive belt 116. Thus, Lokey discloses both a positive
braking of the saw blade and removing of the drive, that is, dual safety
features.
We further note that Yoneda discloses a band brake 20 and a brake B
on pulley 11 to stop the saw. Col. 2, ll. 39-41. Friemann discloses that
when an unsafe condition is detected, the drive motor is switched off, and
alternatively or additionally, the direct current braking of the motor and an
additional electromechanical brake are brought into effect. See col. 2, ll. 11-
14. Thus, we note that it is common in the art to supply two safety systems,
one directed to a drive and one directed to a positive braking of the saw
blade. Therefore, one of ordinary skill would have found it obvious not only
to retract the blade into the table as taught by Hauer, but also to ensure
stoppage of the blade by use of the sliding pawl as taught by Lokey. In other
words, since Lokey teaches stopping the drive by swinging the outer pulley
117 out of contact with the drive belt 116, which is equivalent to retracting
the saw blade into the table, and pawl 125 provides a sure stoppage of the
blade, it would have been obvious to use a pawl 125 on the blade in Hauer to
ensure stoppage of the blade even while the blade is undergoing retraction.
Appellant argues that a person of ordinary skill would have little or no
experience with proximity or contact detection systems, and therefore the
subject matter of the claims would not have been prima facie obviousness to
one of ordinary skill. Appellant appears to base this opinion on the fact that
no such system has ever been marketed. In the first instance, we do not
credit Appellant’s argument that one of ordinary skill would not have been
familiar with proximity or contact detection systems. The prior art cited by
the Examiner shows such systems. One of ordinary skill in the art would
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have been familiar with both the proximity and contact detection methods
and would have been cognizant of the advantages and disadvantages of each.
Furthermore, Appellant’s observation that no such system has been
marketed is not dispositive of whether one of ordinary skill would be
familiar with this system. In fact, there could be many reasons why any
system has failed to appear on the market. For example, the fact that several
of these systems are patented might have prevented others from entering the
field.
Appellant’s second argument on pages 5 and 6 of the Brief undercuts
Appellant’s first argument. Appellant argues that a person of ordinary skill
when considering the Hauer disclosure would have been concerned with
providing ways to prevent contact with the blade rather than detecting
contact. First of all, Appellant has just argued that one of ordinary skill
would not be familiar with proximity sensing or contact detecting systems.
Then in the next paragraph, Appellant argues that such a person would be
familiar with proximity systems as proposed by Hauer, but would not be
interested in contact systems. However, Yoneda and Friemann clearly
discuss the benefits and disadvantages of contact detecting systems.
Therefore, Appellant’s argument with respect to the level of skill and the
content of the prior art is simply not credited.
On the bottom of page 6, Appellant argues that one of ordinary skill
would not have thought to change Hauer to detect contact, and cites to the
Gass declaration as support for the argument. This supposition of
Appellant’s declarant is expressly contradicted by the prior art which teaches
the advantage of a contact detection system in some situations. We find the
contention that power tool manufacturing engineers expressed disbelief and
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were amazed when Dr. Gass demonstrated his prototype saw to be hearsay
and entitled to little weight.
We note the comments submitted by the Power Tool Institute to the
Consumer Product Safety Commission. However, these comments appear to
be based on commercial and economic factors, rather than the technological
feasibility disclosed in the applied prior art. It seems clear that the power
tool manufacturers have a vested interest in the status quo construction and
marketing of power tools, and the testimony before the Consumer Product
Safety Commission is to protect these commercial interests.
Appellant argues on page 13 that there was no reasoning with rational
underpinnings that supports the Examiner’s proposed combination of
references. We disagree. For example, Friemann discusses the advantages
and disadvantages of a contact system. Friemann makes clear that a
proximity system makes it impossible to manipulate the work close to the
saw because of numerous unintended work stoppages. This is indicative of a
knowledge in the art that a contact detection system is desirable under
certain conditions and is clearly a reason that would have prompted the
proposed combination of references.
For the foregoing reasons, it is our determination that the Examiner
has established the prima facie obviousness of the claimed subject matter.
Since Appellant has furnished evidence of secondary considerations, it is our
duty to consider the issue of obviousness anew, carefully weighing the
evidence for obviousness with respect to the evidence against obviousness.
Turning to Appellant’s evidence of secondary considerations, on page
8 in paragraph 16 of the Gass declaration, Dr. Gass states that the saws are
commercially successful. In paragraph 17, he states that over 7000 cabinet
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saws have been shipped since December of 2004 resulting in 15 million
dollars in sales. He further states that this represents a significant part of the
market for cabinet saws in the United States. However, evidence of number
of units sold, volumes of dollar sales, or proof of existing market share quite
simply does not indicate anything with regard to the reasons for commercial
success. Such evidence must be placed in perspective by demonstrating the
subject invention displaces prior art devices or surpasses the volume sales of
prior art devices. See, e.g., Cable Electric Products, Inc. v. Genmark, Inc.,
770 F.2d 1015, 1025 (Fed. Cir. 1985)( number of units sold and profit per
unit not enough); or Kansas Jack, Inc. v. Kuhn, 719 F.2d 1144, 1151(Fed.
Cir. 1983)( number of units sold not enough).
Furthermore, Appellant testifies that the commercial success was
achieved without relying on any pre-existing distribution network, name
recognition, favorable reputation, heavy promotion, shift in advertising, etc.
We are at a loss as to how a market can be created without any of these
factors and Appellant does not so explain. How did consumers learn about
the saw stopping device in the first instance? Appellant further states that it
is the retraction of the blade that establishes the direct connection or nexus
between the increased safety and the commercial success in Appellant’s saw.
However, the prior art Hauer device possesses the same advantage. All in
all, Appellant’s evidence of commercial success is entitled to some marginal
weight for nonobviousness.
Turning to long felt need, Appellant refers to the U.S. Consumer
Product Safety Commission Report of June 2003 stating that there are
65,000 medically treated injuries each year in the United States involving
table saws. Other documents submitted by Appellant show that existing
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power tool manufacturers are jointly researching injury avoidance
techniques in power saws. Evidence of long felt need must show that the
problem solved by Applicant’s invention was known but not solved prior to
the invention. See Al-Site Corp. v. VSI, Inc., 174 F.3d 1308, 1325 (Fed.
Circ. 1999). To show failure of others, the evidence must establish that
others skilled in the art tried and failed to find a solution for the problem
solved by the Applicant. Stratoflex Inc. v. Aeroquip, 713 F.2d 1530, 1540
(Fed. Cir. 1983)
One must also show that the others who failed had knowledge of the
critical prior art. In re Caveney, 386 F.2d 917, 923 (CCPA 1967). While
Appellant’s attachments do show evidence that workers in the art were
searching for a solution to the injury problem, Appellant has failed to
establish that those skilled in the art tried and failed to find a solution or that
those in the prior art had knowledge of the critical prior art, such as that
applied by the Examiner. Accordingly, Appellant’s evidence of long felt
need is entitled to but little weight.
Finally, we do recognize that Appellant has received awards.
However, it appears that the awards are directed to saw stopping technology
in general, and Appellant has failed to establish a nexus between these
awards and a table saw with a retracting blade. Therefore, the Appellant’s
evidence of recognition by awards is entitled to little weight as evidence of
nonobviousness.
As noted above, the Examiner has established a case of prima facie
obviousness which involves the mere substitution of a contact detecting
system into the saw of Hauer. In our view, this case of prima facie
obviousness is strong. When we balance the evidence for obviousness with
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respect to Appellant’s evidence against obviousness, it is our conclusion that
the evidence for obviousness outweighs the evidence against obviousness.

CONCLUSION
For the foregoing reasons, it is our determination that the Examiner
has established that claims 1-4 are properly rejected under § 103. The
rejection on appeal 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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2009).

AFFIRMED

Vsh

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