13294304 - (D) (P.T.A.B. Sep. 18, 2018)

Ex Parte HAUPTMANN et al

Patent Trials and Appeals BoardSep 18, 2018

13294304 - (D) (P.T.A.B. Sep. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/294,304 11/11/2011 23280 7590 09/20/2018 Davidson, Davidson & Kappel, LLC 589 8th A venue 16th Floor New York, NY 10018 FIRST NAMED INVENTOR Udo HAUPTMANN 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 5068.1071 4495 EXAMINER LONG, ROBERT FRANKLIN ART UNIT PAPER NUMBER 3721 NOTIFICATION DATE DELIVERY MODE 09/20/2018 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): ddk@ddkpatent.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte UDO HAUPTMANN and HORST STROISSNIGG Appeal2018-001165 Application 13/294,304 Technology Center 3700 Before STEFAN STAICOVICI, LEE L. STEPINA, and ARTHUR M. PESLAK, Administrative Patent Judges. STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Udo Hauptmann and Horst Stroissnigg ("Appellants") 1 appeal under 35 U.S.C. Â§ 134(a) from the Examiner's decision in the Final Office Action (dated Feb. 10, 2017, hereinafter "Final Act.") rejecting claims 1, 2, and 5- 25.2 We have jurisdiction under 35 U.S.C. Â§ 6(b). SUMMARY OF DECISION We REVERSE. 1 According to Appellants' Appeal Brief (filed June 2, 2017, hereinafter "Appeal Br."), the real party in interest is Hilti Aktiengesellschaft. Appeal Br. 2. 2 Claims 3 and 4 are cancelled. Appeal Br. 2. Appeal 2018-001165 Application 13/294,304 INVENTION Appellants' invention relates to a method of manufacturing a striking- mechanism body of a handheld power tool. Spec. para. 2. Independent claim 1, reproduced below, is representative of the claimed subject matter: 1. A method for manufacturing a striking-mechanism body of a striking mechanism of a handheld power tool having a lateral surface and an impact surface, a pulse transmittable to a pulse- receiving part via the striking mechanism, the striking mechanism body comprising: at least a first part having the impact surface and/ or the lateral surface, the first part being made of a first material; and a second part being made of a second material; the striking-mechanism body being configured as a one-piece steel body, the first material and the second material being the same; the method comprising: heat treating the first material of the first part of the striking-mechanism body with a heat treatment differing from that of the second material of the second part of the striking- mechanism body. REJECTIONS I. Claims 1, 7, and 16 are rejected under 35 U.S.C. Â§ I03(a) as being unpatentable over Anderson (US 3,295,613, iss. Jan. 3, 1967) and Karaev et al. (US 5,088,638, iss. Feb. 18, 1992, hereinafter "Karaev"). II. Claims 2, 5, 6, 8-15, and 17-25 are rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Anderson, Karaev, Yao (US 7,900,719 B2, iss. Mar. 8, 2011), and Bodine et al. (US 2006/0151188 Al, pub. July 13, 2006, hereinafter "Bodine"). 2 Appeal 2018-001165 Application 13/294,304 ANALYSIS Rejection I The Examiner first finds that Anderson discloses each of the limitations of independent claim 1, including, inter alia, a one-piece striking mechanism body 12/14/16 having a first part 12 and a second part 14/16 that are made from the same material and are subjected to different heat treatments. Final Act. 3--4 (citing Anderson, col. 3, 11. 1-9, 72-75, col. 6, 11. 50-57, and col. 7, 11. 26-57). In an alternative, based on Anderson's disclosure of heat treating different portions of the same material, the Examiner determines in the Examiner's Answer that it would have been obvious for a skilled artisan to use the same material and subject the material to different heat treatments in Anderson because selecting a known material based on its suitability is an obvious design choice. See Examiner's Answer 3 (dated Sept. 14, 2017, hereinafter "Ans.") ( citing Anderson, col. 3, 11. 7-9, col. 6, 11. 52-54, and col. 7, 11. 33-36; In re Leshin, 277 F.2d 197 (CCPA 1960)). Finally, in a second alternative, the Examiner finds that to the extent that Anderson does not disclose a one-piece body having first and second materials that are the same, but subjected to different heat treatments, Karaev discloses these limitations. Final Act. 4--5 (citing Karaev, col. 3, 11. 60-67, col. 4, 11. 1---67, col. 5, 11. 1-54, and col. 6, 11. 1-12). Thus, the Examiner concludes that it would have been obvious to a person having ordinary skill in the art to modify Anderson's striking rod to be a one-piece steel body having first and second materials that are the same, but subjected to different heat treatments, as taught by Karaev, to obtain "the desire[ d] strength and toughness of the striking rod." Id. at 5. 3 Appeal 2018-001165 Application 13/294,304 With respect to the Examiner's first position, we agree with Appellants that although Anderson contemplates "components of the same material" (see Anderson, col. 6, 11. 53-54), nonetheless, Anderson "subjects all of its parts to a 'uniform heat treating step subsequent to joining the part[s]"' (see Anderson, col. 7, 11. 29-33). Appeal Br. 4 (emphasis added); see also Reply Brief 2 (filed Nov. 14, 2017, hereinafter "Reply Br."). Accordingly, Anderson does not anticipate claim 1 as apparently asserted by the Examiner in the Final Action. As to the Examiner's second position, using the same material and subjecting the material to different heat treatments in Anderson is not a mere obvious design choice, as the Examiner asserts (see Ans. 3), because a proposed change that results in a different structure and function may not be an obvious design choice. See In re Gal, 980 F.2d 717, 719 (Fed. Cir. 1992) (finding of obvious design choice precluded when claimed structure and the function it performs are different from the prior art). Here, we agree with Appellants that because Anderson specifically discloses that subjecting the same material to different local heat treatments has "proved to be unsatisfactory because of erratic [technical] results and high costs," the Examiner's modification of Anderson is not a mere obvious design choice. Appeal Br. 4 (citing Anderson, col. 3, 11. 7-9). In regards to the Examiner's third position, we agree with Appellants' argument that the phrase "the materials applied and the heat-treatment carried out may be similar or dissimilar" means that "if the materials are the same [then] the heat treatment is the same." Appeal Br. 5; see also Karaev, col. 4, 11. 6-9. The use of the conjunction "and" between the phrases "[t]he materials applied" and "the heat-treatment carried out" joins the phrases 4 Appeal 2018-001165 Application 13/294,304 "[t]he materials applied" and "the heat-treatment carried out" such that they can be either similar or dissimilar. In other words, if the materials are the same then the heat treatment is the same, and if the materials are different then the heat treatments are different. As such, we do not agree with the Examiner that Karaev discloses a situation where "the materials can be the same [and] ... the heat treatments can be ... different." Ans. 3. We appreciate that Karaev discloses making a sucker rod, including rod body 1 and head 2, using pre-hardened rolled stock, and heat treating portion 8 of rod body 1 at a temperature of 600-620 Â°C or 750-800 Â°C. Karaev, col. 3, 11. 60-62, col. 4, 11. 23-32, Fig. 1. However, because Karaev also discloses that "head 2 is subjected to heat-treatment ... depending on the material used," the skilled artisan would readily understand that if the same material is used to make head 2 as the material used to make rod 1, then the same heat treatment will be required for head 2 as for rod 1, and if different materials are used, then different heat treatments will be required. Id., col. 4, 11. 3-5 (emphasis omitted). In conclusion, for the foregoing reasons, we do not sustain the rejection under 35 U.S.C. Â§ 103(a) of claims 1, 7, and 16 as unpatentable over Anderson and Karaev. Re} ection II The Examiner's use of the Yao and Bodine disclosures does not remedy the deficiency of the Examiner's combination of Anderson and Karaev as discussed supra. See Final Act. 6-9. 5 Appeal 2018-001165 Application 13/294,304 Therefore, for the same reasons discussed above, we also do not sustain the rejection of claims 2, 5, 6, 8-15, and 17-25 over the combined teachings of Anderson, Karaev, Yao, and Bodine. DECISION The Examiner's decision to reject claims 1, 2, and 5-25 is reversed. REVERSED 6