Ex Parte Gass et al

Patent Trial and Appeal Board

Sep 23, 2013

11906430 (P.T.A.B. Sep. 23, 2013)

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.
11/906,430 10/01/2007 Stephen F. Gass SDT 355 7955
27630 7590 09/24/2013
SD3, LLC
9564 S.W. Tualatin Road
Tualatin, OR 97062
EXAMINER
ALIE, GHASSEM
ART UNIT PAPER NUMBER
3724
MAIL DATE DELIVERY MODE
09/24/2013 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 STEPHEN F. GASS and DAVID S. D’ASCENZO
____________

Appeal 2011-012008
Application 11/906,430
Technology Center 3700
____________

Before JOHN C. KERINS, WILLIAM A. CAPP and NEIL T. POWELL,
Administrative Patent Judges.

KERINS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-012008
Application 11/906,430

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STATEMENT OF THE CASE
Stephen F. Gass and David S. D’Ascenzo (Appellants) seek our
review under 35 U.S.C. § 134(a) of the Examiner’s final rejection of claims
1-3 and 5-10. Claims 4, 11 and 12 are withdrawn from consideration and
claims 13-24 are canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
THE INVENTION
Appellants’ invention is directed to a table saw having a blade guard
for which a top guard portion is configured to positively retain a workpiece
against a work surface. Independent claim 1, reproduced below with
emphasis added, is representative of the claimed subject matter:
1. A table saw, comprising:

a table having a work surface with an infeed region
and an outfeed region;

a nominally planar, circular blade configured to
extend at least partially above the work surface to
cut a workpiece on the work surface as the
workpiece is moved into contact with the blade,
wherein the blade has an orientation relative to the
work surface;

a motor to drive rotation of the blade relative to the
work surface;

a splitter having an orientation relative to the work
surface;

a mounting mechanism configured to position the
splitter adjacent the blade;

a blade adjustment mechanism configured to
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Application 11/906,430

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change the orientation of the blade and the splitter
relative to the work surface; and

a blade guard extending from the splitter generally
toward the infeed region of the work surface,
wherein the blade guard includes a top guard
having an upper surface that extends generally
above the blade and a lower surface, wherein the
top guard includes an outfeed guard portion that
extends from the splitter, and an infeed guard
portion that extends generally toward the work
surface relative to the outfeed guard portion,
wherein the top guard is configured to positively
retain the workpiece against the work surface,
wherein at least the infeed guard portion is
configured for movement in a range of positions
between a nominal position, in which the infeed
guard portion extends generally toward the work
surface relative to the outfeed guard portion, and a
deflected position, in which the infeed guard
portion is deflected away from the work surface
relative to the nominal position.

THE REJECTIONS
Appellants appeal from the following rejections:
(i) claims 1-3, 5-8 and 10 under 35 U.S.C. § 102(b) as being
anticipated by Tautz (US 2,352,235, issued Jun. 27, 1944);
(ii) claims 1-3, 6-8 and 10 under 35 U.S.C. § 102(b) as being
anticipated by Ocenasek (US 2,466,325, issued Apr. 5, 1949);
(iii) claims 1-3, 6 and 10 under 35 U.S.C. § 102(b) as being
anticipated by Peot (US 2004/0255745 A1, published Dec. 23, 2004); and
(iv) claim 9 under 35 U.S.C. § 103(a) as being unpatentable over
Tautz or Ocenasek.
Appeal 2011-012008
Application 11/906,430

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ANALYSIS
Claim Construction
The issues in this appeal turn on how claim 1 is to be properly
construed. In particular, how the phrase “wherein the top guard [of a blade
guard] is configured to positively retain the workpiece against the work
surface” is to be interpreted is at issue.
The Examiner characterizes the term “positively retain” as “a very
broad term” which lacks clarity as to what structure is defined. Ans. 11. In
the same vein, the Examiner critiques claim 1 as not reciting this limitation
in a “means for” format; asserts that the feature argued to distinguish over
the cited references “is not being claimed”; and that this “critical feature . . .
is missing from the claim.” Ans. 10. Further, the Examiner maintains that
“[i]t is not clear how the positive retaining of the workpiece as set forth in
the claims is different than the one taught by the prior art of the record.”
Ans. 10-11.
The expression “configured to positively retain” is nothing more than
Appellants’ approach to attempting to distinguish over the prior art by
function rather than specific structure. There is nothing intrinsically wrong
with defining something by what it does rather than what it is. In re
Swinehart, 439 F.2d 210, 212 (CCPA 1971). Whether or not the alleged
expression is “very broad”, it is incumbent upon the Examiner to present a
reasonable basis for asserting that the recited function is present in any cited
prior art structure.
Appellants urge that we construe the term “positively retain” in
accordance with a definition provided in the Specification, to wit:
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Application 11/906,430

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[b]y “positively retain,” it is meant that the top
guard not only engages the workpiece at least as
the workpiece is being cut by the saw, but also that
the top guard urges, or retrains [sic, retains], the
workpiece against the work surface with more than
merely the weight of the top guard and any
components attached thereto.
Appeal Br. 4, quoting Spec., p. 21, ll. 3-7.
Notwithstanding the Examiner’s apparent concerns over the lack of
specific structure present in the claims, a person of ordinary skill in the art
would understand the claim term “positively retain” as requiring precisely
the characteristics set forth by Appellants in the above-quoted passage in the
Specification. Accordingly, the cited prior art must be shown to teach or
suggest a construction in which a top guard is configured to urge a
workpiece against a work surface with more than merely the weight of the
top guard and the components attached to the top guard.
Claims 1-3, 5-8 and 10--Anticipation--Tautz
The Examiner maintains that Tautz has a top guard configured to
positively retain a workpiece against a work surface in that “arcuate slots 29
and pin 30 only allow limited movement of the infeed portion 16 upwardly,”
and that “the weight of the bars 23, 24 urges the infeed 16 to positively
retain the workpiece against the work surface.” Ans. 4. Appellants correctly
point out that “slots 29 and pin 30 only limit the movement of basket 16
relative to bars 23 and 24; they do not limit the upward movement of the
basket relative to a workpiece because bars 23 and 24 are mounted to pivot
around pin 39.” Appeal Br. 5. As to the Examiner’s reliance on the weight
of bars 23, 24, Appellants correctly point out that the bars are either part of
the top guard in Tautz or are components attached thereto, whereas the
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Application 11/906,430

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definition of “positively retain” requires something more or something
different than an urging by merely the weight of such components.
The rejection of claim 1, and of claims 2, 3, 5-8 and 10 depending
therefrom, as anticipated by Tautz, is not sustained.
Claims 1-3, 6-8 and 10--Anticipation--Ocenasek
The Examiner takes the position that the weight of links 21 and 22 in
Ocenasek positively retain a workpiece against a work surface, and that
ledges 38 of the infeed guard contact the handles 37 of the kickback
members 33 to retain the workpiece against the work surface. Ans. 6. Once
more, Appellants correctly point out that links 21 and 22 are either part of
the top guard itself or are components attached to the top guard. The
Examiner has not cited to anything other than the weight of the links as
urging the top guard against the workpiece, and, as such, has not identified a
construction configured to fall with the scope of “positively retain” as
defined. Appellants are also correct that Ocenasek discloses that ledge 38
merely supports the handles 37 of the kickback members when those
members are pivoted to an inactive position. The Examiner has not
established how this interaction can be interpreted as positively retaining a
workpiece against a work surface.
The rejection of claim 1, and of claims 2, 3, 6-8 and 10 depending
therefrom, as anticipated by Ocenasek, is not sustained.
Claims 1-3, 6 and 10--Anticipation--Peot
The Examiner maintains that the weight of the infeed guard and its
position at an angle with respect to the work table allows the infeed guard
portion 32 to retain the workpiece, and that, when a thick workpiece is being
cut, the bottom of the infeed guard portion 16 contacts the workpiece and
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positively retains the workpiece against the work surface. Ans. 8-9.
Appellants reply that Peot discloses that “‘the workpiece does not come into
contact with the guard top plate,’ and even though ‘the blade may be
recessed in the guard (24) . . . the guard top plate (26) is placed just above
the height of the workpiece to be cut . . . .” Appeal Br. 9, quoting Peot, p. 2,
paras. [0024], [0025]. The preponderance of the evidence thus does not
support the Examiner’s position that Peot discloses a positive retention of a
workpiece against a work surface by a top guard of a blade guard.
The rejection of claim 1, and of claims 2, 3, 6 and 10 depending
therefrom, as anticipated by Peot, is not sustained.
Claim 9--Obviousness--Tautz or Ocenasek
The rationale in this obviousness rejection does not overcome the
error in the Examiner’s position with respect to the alleged anticipation of
claim 1, from which claim 9 depends, by either Tautz or Ocenasek. The
rejection of claim 9 as being unpatentable over Tautz or Ocenasek is not
sustained.
DECISION
The decision of the Examiner to reject claims 1-3 and 5-10 is
reversed.

REVERSED

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