Ex Parte Jung et al

Patent Trial and Appeal Board

Oct 1, 2014

12357152 (P.T.A.B. Oct. 1, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/357,152 01/21/2009 Achim Jung P-US-PR-1129B 1136
28268 7590 10/02/2014
THE BLACK & DECKER CORPORATION
701 EAST JOPPA ROAD, TW199
TOWSON, MD 21286
EXAMINER
CHUKWURAH, NATHANIEL C
ART UNIT PAPER NUMBER
3721
MAIL DATE DELIVERY MODE
10/02/2014 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 ACHIM JUNG, RENE JAGER,
and IAN S. BELL
____________

Appeal 2012-007557
Application 12/357,1521
Technology Center 3700
____________

Before MICHAEL W. KIM, NINA L. MEDLOCK, and
SCOTT C. MOORE, Administrative Patent Judges.

MOORE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1–13. App. Br. 3. We have jurisdiction over this
appeal under 35 U.S.C. § 6(b).
We REVERSE.

1 Appellants state that the real party in interest is Black & Decker Inc. App.
Br. 3.
Appeal 2012-007557
Application 12/357,152

2
Claimed Subject Matter
Claims 1, 3, 11, and 13 are the independent claims on appeal.
Claim 1, reproduced below, is illustrative of the subject matter at issue in
this appeal.
1. An actuation apparatus for a multi-mode power tool having
a housing, a motor with a rotary output shaft disposed in the
housing, drive means for driving a working member of the tool
in response to rotation of said rotary output shaft, and a trigger
disposed on the housing to enable activation of said motor, the
actuation apparatus comprising:
a mode control switch adapted for enabling a user to
select between a first mode of operation in which the working
member has a first action and a second mode of operation in
which the working member has a second action;
a mode selection sensor for providing a signal indicating
which of the first mode or second mode of operation of the tool
has been selected; and
a control circuit for controlling operation of the motor in
response to the signal, such that when in the first mode of
operation where the working member has a first action, the
motor is operated by a first depression of the trigger and
remains activated until deactivated by a second depression and
release of the trigger, and in the second mode of operation
where the working member has a second action, the motor is
only activated while the trigger is depressed.
App. Br. 12.
Rejections
Claims 1–13 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Barker (US 5,105,130, issued Apr. 14, 1992) in view of Fisher
(US 6,150,632, issued Nov. 21, 2000).
Appeal 2012-007557
Application 12/357,152

3
ANALYSIS
Rejections of Claims 1–13 under 35 U.S.C. § 103(a)
The Examiner finds that Barker discloses all elements of independent
claim 1, except for the following element of claim 1 directed to a control
circuit that operates to control the motor:
such that when in the first mode of operation where the working
member has a first action, the motor is operated by a first
depression of the trigger and remains activated until deactivated
by a second depression and release of the trigger, and in the
second mode of operation where the working member has a
second action, the motor is only activated while the trigger is
depressed.
Ans. 5. The Examiner further finds that Fisher discloses a power tool with a
control circuit that controls a motor “such that when in the first mode of
operation[,] the motor (not shown) is operated by a first depression of the
trigger and remains activated until deactivated by a second depression of the
trigger, and in the second mode of operation, the motor is only activated
while the trigger is depressed (col. 3, lines 9–28).” Id. The Examiner
concludes that it would have been obvious to modify Barker’s control
circuit:
such that when in the first mode of operation the motor is
operated by a first depression of the trigger and remains
activated until deactivated by a second depression of the trigger,
and in the second mode of operation, the motor is only
activated while the trigger is depressed for the purpose of
providing an easy transition between short and long welds.
Id. at 5–6.
Appellants argue that Barker “does not teach a tool which chooses a
particular lock-on mode . . . ‘in response to’ a choice of working member
operating mode (e.g., drill mode, hammer mode, etc.).” App. Br. 5–6
Appeal 2012-007557
Application 12/357,152

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(emphasis in original). Appellants concede that Fisher teaches a switch that
can be used to manually select either a normal mode (i.e., a mode where the
motor is only activated when the trigger is depressed) or a lock-on mode
(i.e., a mode where a trigger pull activates the motor, and the motor remains
energized until deactivated by a second pull of the trigger). Id. at 8.
However, Appellants argue that Fisher does not teach the lock-on/non-lock-
on modes being determined in response to a choice of working member
mode as required by claim 1. Id.
In response to Appellants’ arguments, the Examiner indicates that
Barker discloses all the structural elements of the actuation apparatus, and
clarifies that Fisher was chosen to show Appellants that it was known in the
art to control a motor “such that when in the first mode of operation the
motor is operated by a first depression of the trigger and remains activated
until deactivated by a second depression of the trigger, and in the second
mode of operation, the motor is only activated while the trigger is
depressed.” Ans. 11, 12. The Examiner further indicates that the prior art
teaches an advantage of locking-on the trigger to ease the hand of the user
from holding continuously, and determines that this teaching provides a
sufficient rationale for incorporating Fisher’s lock-on facilities into Barker’s
controller. Id. at 12.
The Examiner’s response, however, does not directly address
Appellants’ argument that the prior art does not disclose a tool in which the
working member has multiple modes of operation, and a control circuit
places the trigger in lock-on or non-lock-on mode in response to a signal
indicating the working member’s mode of operation. Lock-on mode
switch 22 of Fisher is a manual switch. Although the Examiner has
Appeal 2012-007557
Application 12/357,152

5
provided a rationale for incorporating the manual lock-on mode switch of
Fisher into Barker’s controller, the Examiner has not shown that it would
have been obvious to also include a control circuit that places the trigger in
lock-on mode or non-lock-on mode in response to a signal indicating the
working member’s mode of operation. In other words, Fisher discloses two
trigger lock modes and Barker discloses two operation modes, but claim 1
requires that one trigger lock mode correspond to one operation mode, and
that the other trigger lock mode correspond to a second operation mode.
The Examiner’s articulated rationale does not address the trigger lock mode
to operation mode correlation required by independent claim 1. We,
therefore, find Appellants’ argument to be persuasive, and do not sustain the
Examiner’s rejection of claim 1.
The other independent claims — claims 3, 11, and 13 — all require a
control circuit or control means that places the trigger in lock-on mode
and/or non-lock-on mode in response to a signal that indicates the mode of
operation of the tool or working member. App. Br. 13–16. Thus, we also do
not sustain the Examiner’s rejections of claims 3, 11, and 13.
The remaining claims at issue in this appeal — claims 2, 4–10, and
12 — all depend from, and incorporate the limitations of, independent
claims 1, 3, 11, or 13. Thus, we also do not sustain the Examiner’s
rejections of claims 2, 4–10, and 12.
DECISION
For the foregoing reasons, we REVERSE the Examiner’s rejections of
claims 1–13.
REVERSED
rvb