Ex Parte Gass et al

Patent Trial and Appeal Board

Jun 9, 2015

12928251 (P.T.A.B. Jun. 9, 2015)

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.
12/928,251 12/06/2010 Stephen F. Gass SDT 345B 2436
27630 7590 06/09/2015
SD3, LLC
9564 S.W. Tualatin Road
Tualatin, OR 97062
EXAMINER
ALIE, GHASSEM
ART UNIT PAPER NUMBER
3724
MAIL DATE DELIVERY MODE
06/09/2015 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,
J. DAVID FULMER, and
DAVID A. FANNING
________________

Appeal 2013-006157
Application 12/928,251
Technology Center 3700
________________

Before MICHAEL L. HOELTER, WILLIAM A. CAPP, and
JAMES J. MAYBERRY, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from a final
rejection of claims 1–7. App. Br. 1. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

THE CLAIMED SUBJECT MATTER
The disclosed subject matter “relates to safety systems for power
equipment, and more particularly, to replaceable brake cartridges for use in
safety systems for woodworking equipment and other power equipment.”
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Spec. 1:12–14. Independent claim 1 is reproduced below and is illustrative
of the claims on appeal:
1. A brake cartridge for use in safety systems for power
tools, where the brake cartridge includes a housing and a
braking component configured to engage a moving part of the
power tool upon occurrence of a predetermined event, and
where the brake cartridge further includes means for
determining whether the cartridge is properly installed in a
power tool.
REFERENCES RELIED ON BY THE EXAMINER
Bov US 5,510,884 Apr. 23, 1996
Campbell US 5,875,378 Feb. 23, 1999
Gass (“Gass ’261”) US 2002/0020261 A1 Feb. 21, 2002
Imai US 2002/0050714 A1 May 2, 2002
Gass (“Gass ’399”) US 2002/0170399 A1 Nov. 21, 2002
THE REJECTIONS ON APPEAL1
Claims 1–7 are rejected under 35 U.S.C. § 103(a) as unpatentable over
Gass ’261 and Imai.
Claims 1–7 are rejected under 35 U.S.C. § 103(a) as unpatentable over
Gass ’261 and Bov.
Claims 1–7 are rejected under 35 U.S.C. § 103(a) as unpatentable over
Gass ’399 and Bov.
Claims 1–7 are rejected under 35 U.S.C. § 103(a) as unpatentable over
Gass ’399 and Campbell.
Claims 1–7 are rejected under 35 U.S.C. § 103(a) as unpatentable over
Gass ’261 and Campbell.

1 The Examiner withdrew the rejection under 35 U.S.C. § 102(e) as
anticipated by Gass ’399 and the Examiner also withdrew the rejection under
35 U.S.C. § 102(b) as anticipated by Gass ’261. Ans. 3.
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ANALYSIS
The rejection of claims 1–7 as unpatentable over Gass ’261 and Imai
Appellants argue the rejection of claims 1–7 as a group. App. Br. 7–
9. We select claim 1 for review with claims 2–7 standing or falling with
claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
With respect to this obviousness rejection, Appellants initially
contend that “Gass ’261 fails to disclose the claim limitations discussed
above” which is a discussion of the anticipation rejection that has been
withdrawn. App. Br. 7. The arguments made by Appellants in this
withdrawn anticipation rejection and re-asserted in the present obviousness
rejection can be summarized as (1) Gass ’261 lacks the “means for
determining” and also (2) Gass ’261 does not disclose equivalent structure
for such “means.”2 App. Br. 6–7.
In the present rejection, the Examiner relies on Imai for disclosing a
switch 29 associated with cartridge 27 such that “[t]he switch 29 is activated
when the cartridge is installed.” Final 5. Indeed, Imai states that “[w]hen
the cartridge 27 is installed, the status of the limit switch 29 changes to
detect the cartridge 27.” Imai ¶ 90. Also, Imai discloses that “[i]f the
cartridge 27 is not present, the hot stamp operation is not performed and a
message signal of no cartridge 27 is sent to the host controller.” Imai ¶ 90.
The Examiner also references “logic controller 50” discussed in Gass ’261
which performs a “system integrity check.” Final Act. 5 (see Gass ’261 ¶¶
27, 30). Accordingly, the Examiner concludes that “the switch 29 and the

2 Appellants state that the structure described in the Specification that
corresponds to this recited “means” “may include” a switch (among other
components) and that “Gass ’261 does not disclose a switch” (or these other
components) or anything equivalent thereto. App. Br. 7.
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controller indicate that the cartridge is aligned with the key 703” and that it
would have been obvious “to provide the apparatus of Gass ’261 with [a]
cartridge detection mechanism associated with the key and cartridge
housing, as taught by Imai, in order to detect the [presence] of [the] cartridge
in the apparatus.” Final Act. 5.
Appellants do not dispute these findings and conclusions by the
Examiner (or explain how the obviousness rejection by the Examiner is
improper) but instead contend that “Imai is non-analogous art and cannot be
considered in an obviousness analysis.” App. Br. 7. Appellants discuss the
two-prong analogous art test (App. Br. 7‒8; Reply Br. 3‒5) concluding that
“[a]pplying that same test to the case at hand leads to the conclusion that
Imai is non-analogous.” App. Br. 8; see also Reply Br. 6.
When addressing this argument, the Examiner does not rely on the
first (same field of endeavor) prong of the analogous art test but instead on
the second (reasonably pertinent to the particular problem) prong. Ans. 10;
see, e.g., K-TEC, Inc. v. Vita-Mix Corp., 696 F.3d 1364, 1375 (Fed. Cir.
2012) (“To qualify as prior art for an obviousness analysis, a reference must
. . . satisfy one of the following conditions: (1) the reference must be from
the same field of endeavor; or (2) the reference must be reasonably pertinent
to the particular problem with which the inventor is involved.”) (citation
omitted). The Examiner identifies the problem with which Appellants were
concerned as “determining the proper installation of a cartridge” and that
Imai addresses this same concern. Ans. 10. This same problem is echoed in
the last limitation of each independent claim which is directed to proper
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installation of the cartridge.3 We are in agreement that Imai is equally
concerned with proper cartridge placement. See, e.g., Imai ¶¶ 13, 90, 94,
and 107. Accordingly, Appellants’ contention that Imai is not “reasonably
pertinent to the problem addressed by applicant’s invention” (App. Br. 9; see
also Reply Br. 3) is not persuasive.
Appellants also contend that Imai “does not disclose a power tool or
even a safety system.” App. Br. 8; see also Reply Br. 6. However, the
Examiner does not rely on Imai for such teachings (Final Act. 5) and as
such, Appellants’ contention is not persuasive of Examiner error.
In view of the record presented, Appellants’ contentions are not
persuasive that one skilled in the art, when addressing the issue of proper
cartridge placement, would not be motivation to consider Imai’s solution to
this problem. App. Br. 9; see also Reply Br. 3. Accordingly, the
Examiner’s use of Imai as analogous art is not in error and as such, we
sustain the Examiner’s rejection of claims 1–7 as being obvious over Gass
’261 and Imai.
The rejection of claims 1–7 as unpatentable over Gass ’261 and Bov
Appellants argue the rejection of claims 1–7 as a group. App. Br. 10.
We select claim 1 for review. Appellants initially contend, same as above,
that “Gass ’261 fails to disclose the claim limitations discussed above”
which is a discussion of the anticipation rejection that has been withdrawn.
App. Br. 10. Here, as above, the Examiner relies on additional prior art
(Bov) for disclosing a switch that indicates that “the cartridge is properly

3 Claims 1 and 7 recite “means for determining whether the cartridge is
properly installed in a power tool” while claim 2 recites “a switch
configured so that proper installation of the cartridge in a power tool triggers
the switch.”
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installed.” Final Act. 6. Indeed, certain of Bov’s structure referenced by the
Examiner (i.e., Bov’s members 30a and 30b associated with switch 36 (Final
Act. 6)) are discussed as serving to secure the cartridge 10 “within the
printing apparatus by urging the whole supply accessory 10 into a proper
position relative to the paper path.” Bov 4:62–65. Bov also states that the
use of cavities (16) in a cartridge (10) to secure the proper position thereof in
a printing apparatus is “known in the prior art.” Bov 4:35–37. Accordingly,
the Examiner concludes that it would have been obvious “to provide the
apparatus of Gass ’261 with cartridge detection mechanism, as taught by
Bov, in order to electronically detect that a cartridge is properly installed in
the tool.” Final Act. 6.
As above, Appellants do not dispute these findings and conclusions by
the Examiner (or explain how the examiner’s obviousness rejection is
improper) but instead contend that “Bov is also non-analogous art and
should not be considered.” App. Br. 10; see also Reply Br. 6. The
Examiner finds that Bov is analogous art via the second (pertinent problem)
prong of this test. Ans. 10. On the other hand, Appellants contend that
“Bov’s device and [Appellants’] cartridges operate differently and have
different structures and functions” and that for this reason “Bov’s device
would not have been reasonably pertinent to a person considering how to
design cartridges for power tools.” App. Br. 10; see also Reply Br. 3.
Appellants do not explain how Bov is not reasonably pertinent to the
problem of proper cartridge installation as stated by the Examiner (Ans. 10)
and as indicated in the claims. Further, Appellants do not explain how one
skilled in the art would not look to Bov, which discloses a switch to indicate
proper cartridge placement, when addressing this problem. Accordingly,
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Appellants’ contention that Bov is not analogous art is not persuasive. The
fact that Bov’s device might have different structures or functions as
Appellants contend (App. Br. 10; Reply Br. 6) is not persuasive that Bov
fails to address a similar problem. Accordingly, the Examiner’s use of Bov
as analogous art is not in error and as such, we sustain the Examiner’s
rejection of claims 1–7 as being obvious over Gass ’261 and Bov.
The rejection of claims 1–7 as unpatentable over Gass ’399 and Bov
Appellants argue the rejection of claims 1–7 as a group. App. Br. 10–
11. We select claim 1 for review. Appellants contend that “Gass ’399 fails
to disclose the claim limitations discussed above” which is a discussion of
the anticipation rejection that has been withdrawn. App. Br. 10. As with
Gass ’261, the arguments made by Appellants in this withdrawn anticipation
rejection can be summarized as (1) Gass ’399 lacks the “means for
determining” and also (2) Gass ’399 does not disclose equivalent structure
for such “means.”4 App. Br. 4–5. Like Gass ’261, the Examiner finds that
Gass ’399 also discloses a “logic controller 50 performing a system integrity
check.” Final Act. 6; see also Gass ’399 ¶¶ 187, 624, 627, 634, and 635.
Gass ’399 also states that “the cartridge may include a sensing assembly to
determine if the cartridge is properly installed within machine 10, with
operation of the machine being prevented until the safety system receives a
signal that the cartridge is properly installed.” Gass ’399 ¶ 576. The
Examiner combines Gass ’399 with Bov (discussed supra) and concludes

4 Similar to Gass ’261, Appellants state that the structure described in the
Specification that corresponds to this recited “means” “may include” a
switch (among other components) and that “Gass ’399 does not disclose a
switch” (or these other components) or anything equivalent thereto. App.
Br. 5.
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that it would have been obvious ‘to provide the apparatus of [Gass ’399]
with cartridge detection mechanism, as taught by Bov, in order to
electronically detect that a cartridge is properly installed in the tool.” Final
Act. 7.
As above, Appellants do not dispute these findings and conclusions by
the Examiner (or otherwise explain how the Examiner’s obviousness
rejection is improper), but instead simply contend that “Bov is non-
analogous art, as explained.” App. Br. 11; see also Reply Br. 6. Appellants’
contention is not persuasive for reasons previously discussed. We sustain
the Examiner’s rejection of claims 1–7 as being obvious over Gass ’399 and
Bov.
The rejection of claims 1–7 as unpatentable over Gass ’399 and Campbell
Appellants argue the rejection of claims 1–7 as a group. App. Br. 11.
We select claim 1 for review. Appellants again contend that “Gass fails to
disclose the claim limitations discussed above” regarding the anticipation
rejection that has been withdrawn. App. Br. 11. As above, Appellants do
not dispute the findings and conclusions by the Examiner (or otherwise
explain how the Examiner’s obviousness rejection is improper) (see Final
Act. 7–8), but instead simply contend that “Campbell is non-analogous art.”
App. Br. 11; see also Reply Br. 6.
The Examiner references Campbell’s disclosure of a cartridge (1)
having “tabs or contact bottom 23 that interacts with a physical sensing
switch to detect that the cartridge is properly installed.” Final Act. 8
(referencing Campbell 3:31–44 and fig. 1). The Examiner also finds that
Campbell addresses the same problem as discussed with respect to Imai and
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Bov supra. 5 Ans. 10. Appellants’ contention that “[t]he purpose of
Campbell’s device is different” and that “Campbell’s device and applicant’s
cartridges operate differently and have different structures and functions”
(App. Br. 11; Reply Br. 6) are not persuasive that Campbell fails to address
the same problem as addressed by Appellants. We sustain the Examiner’s
rejection of claims 1–7 as obvious over Gass ’399 and Campbell.
The rejection of claims 1–7 as unpatentable over Gass ’261 and Campbell
Appellants argue the rejection of claims 1–7 as a group. App. Br. 11–
12. We select claim 1 for review. Appellants repeat the same arguments
previously discussed, i.e., (1) Gass ’2616 “fails to disclose the claim
limitations discussed above,” and (2) “Campbell is non-analogous art, as
explained.” App. Br. 12. Neither contention is persuasive that the Examiner
erred in combining Gass ’261 and Campbell for the reasons previously
recited. We sustain the Examiner’s rejection of claims 1–7 as being obvious
over Gass ’261 and Campbell.
New arguments presented in Appellants’ Reply Brief
In the Reply Brief, we note that Appellants present a new argument
directed to the location of the switches.7 Reply Br. 6. We are instructed by
37 C.F.R. § 41.41(b)(2) which states that “[a]ny argument raised in the reply

5 Campbell states that “[i]n a preferred combination of the embodiment of
the invention described herein and an exemplary printer the top of tab 23
interacts with a physical sensing switch in the printer to detect that cartridge
1 has been installed.” Campbell 3:93‒43.
6Appellants reference “Gass ’399” (App. Br. 12), but from the heading, we
understand Appellants to mean “Gass ’261.”
7 Regarding Imai, Bov, and Campbell, Appellants contend that “those
printers have switches outside of the cartridge in the printer itself.” Reply
Br. 6.
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brief which was not raised in the appeal brief . . . will not be considered by
the Board for purposes of the present appeal, unless good cause is shown.”
Appellants do not provide any explanation or showing of good cause that
might warrant our review of this new argument. Accordingly, we do not
consider it.
Furthermore, in the Reply Brief when Appellants address the
Examiner’s rejection of Gass ’261 with Imai (Reply Br. 7–9) and with Bov
(Reply Br. 9–10), and when Appellants address the Examiner’s rejection of
Gass ’399 with Bov (Reply Br. 10–11), Appellants no longer group the
claims together, but instead argue claims 1 and 7 together (Reply Br. 7, 9,
and 10), claims 2–5 together (Reply Br. 8, 10, and 11), and claim 6 by itself
(Reply Br. 9, 10, and 11). Appellants provide no reason as to why such
separate arguments are now being made, nor do Appellants indicate why
such separate arguments could not have been presented earlier. It is clear
that 37 C.F.R. § 41.37(c)(1)(iv) states that “[f]or each ground of rejection
applying to two or more claims, the claims may be argued separately . . . as a
group . . . or as a subgroup.” This section further states that “[w]hen
multiple claims subject to the same ground of rejection are argued as a group
or subgroup by [Appellants], the Board may select a single claim from the
group or subgroup and may decide the appeal as to the ground of rejection
with respect to the group or subgroup on the basis of the selected claim
alone.” There is no indication that Appellants, in their Appeal Brief, argued
claims 1–7 other than as a group. Accordingly, the Board selected “a single
claim from the group” and decided the appeal of that rejection based on that
selected claim. See supra. As such, we do not consider Appellants’ newly
presented arguments directed to different claim groupings.
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DECISION
The Examiner’s rejections of claims 1–7 are 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)(l)(iv).

AFFIRMED
JRG