Ex Parte Kobayashi

Patent Trial and Appeal Board

Oct 16, 2012

11622380 (P.T.A.B. Oct. 16, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte SHIGEKI KOBAYASHI
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Appeal 2010-005567
Application 11/622,380
Technology Center 3700
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Before: JOHN C. KERINS, WILLIAM V. SAINDON, and
NEIL T. POWELL, Administrative Patent Judges.

SAINDON, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-005567
Application 11/622,380
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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).

The Claimed Subject Matter
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A tool comprising:
a body having a longitudinal axis;
a head including a rotary mechanism with an output
member capable of powered rotation;
a motor disposed in the body and operatively connected
to the rotary mechanism for rotating the output member; and
a locking interconnect for attaching the head to the body,
the locking interconnect being adapted to selectively permit
rotation of the head relative to the body about the longitudinal
axis of the body without changing a longitudinal position of the
output member with respect to the body while maintaining
connection between the head and the body, and to selectively
prevent rotation of the head relative to the body when in each
angular position of a plurality of angular positions relative to
the longitudinal axis of the body.

References
The Examiner relies upon the following prior art references:
Holmin
Yang
US 5,577,425
US 5,775,981
Nov. 26, 1996
Jul. 7, 1998

Rejections
I. Claims 1-3, 12-15, 19, and 20 stand rejected under 35 U.S.C. § 102(b)
as anticipated by Holmin.
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II. Claims 1-9, 11-17, 19, and 20 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Holmin and Yang.
III. Claims 1-9, 11-17, 19, and 20 stand rejected on the ground of
nonstatutory obviousness-type double patenting over claims 1-21 of
U.S. Application No. 11/279,180 in view of prior art cited above.1

SUMMARY OF DECISION
We REVERSE and enter a NEW GROUND of REJECTION.

OPINION
Rejection I – Holmin
Each independent claim requires, in relevant part, a tool having a
body and an output member with relative rotation between the two without
changing a longitudinal position of the output member relative to the body.
In other words, as the output member is rotated, it does not move toward or
away from the body.
The Examiner found that Holmin anticipates the subject matter of
claims 1-3, 12-15, 19, and 20. In relevant part, the body and output member
of Holmin are connected via threads such that when the output member is
rotated it changes its longitudinal position with respect to the body. App.
Br. 5; Ans. 5-6. The Examiner found that if the head is moved from A to B
and then back to A, then (in that scenario) there was rotation without a
change in longitudinal position. Ans. 6. Appellant argues that the claim
requires no longitudinal position change when rotated (as opposed to no

1 The abandonment of application 11/279,180 on December 15, 2008 moots
the provisional obviousness-type double patenting rejection; we do not reach
it.
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Application 11/622,380
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longitudinal position change after a series of rotations). App. Br. 5.
Appellant is correct.
The claims require the ability to “selectively permit rotation …
without changing a longitudinal position of the output member with respect
to the body.” The “without chang[e]” modifies “rotation,” which is the act
of turning. Accordingly, because the Holmin device’s threads cause the
output member to change longitudinal position when rotated, it is not
configured to selectively permit rotation without changing a longitudinal
position of the output member. We do not sustain Rejection I.

Rejection II – Holmin and Yang
The Examiner found that Holmin describes the limitations of claims
1-9, 11-17, 19, and 20 except for a locking detent mechanism. Ans. 3. The
Examiner found that Yang describes these features and that it would have
been obvious to modify “the invention of Hamilton [sic: Holmin] with the
locking mechanism as taught by Yang to adapt the tool for a quick and
simple means of rotating the head and/or changing the head.” Ans. 3-4. The
Examiner adds that including dimples and balls would have been obvious to
provide a more secure hold. Ans. 4.
Appellant argues that the Examiner’s rejection fails to address the
limitation discussed above with respect to the longitudinal position of the
output during rotation. App. Br. 6-7.
Indeed, the Examiner’s rejection does not appear to address the
deficiency identified above in Rejection I. It is not clear how the Examiner
proposes to modify Holmin except for the ball/detent locking mechanism.
The Examiner states that the modification would provide “for a quick and
simple means of rotating the head” but it is not clear how the Yang reference
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renders obvious such a rotation feature. The Yang reference does not
discuss rotation and instead is focused on making a tool-less detachable
grinding wheel and stem. See, e.g., col. 1, ll. 5-7. In light of this,
Appellant’s argument apprises us of error in Rejection II, which we do not
sustain.

New Ground of Rejection
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new
ground of rejection for claims 1, 13, 19, and 20 under 35 U.S.C. § 103(a) as
unpatentable over Holmin and Fraser (US 6,962,523 B2, iss. Nov. 8, 2005,
pub. Nov. 11, 2004, filed Mar. 9, 2001).
Holmin clearly describes a tool having a body, a head including a
rotary mechanism with an output member, a motor, and a locking
interconnect for providing a plurality of angular positions. See, e.g.,
Holmin, figs. 1-4. As we discussed above, Holmin’s threaded locking
interconnect is not configured to selectively permit rotation of the head
without changing a longitudinal position of the output member while
maintaining connection with the body. However, such a feature is well-
known in the field of endeavor, as evidenced by Fraser. Fraser describes a
tool having a locking interconnect being adapted to selectively permit
rotation of the head relative to the body about the longitudinal axis of the
body without changing a longitudinal position of the output member with
respect to the body while maintaining connection between the head and the
body. See Fraser, fig. 7 (noting bearings 33 retained by bearing collar 32),
col. 5, l. 61 to col. 6, l. 18. It would have been obvious to a person of
ordinary skill in the art at the time of invention to substitute Holmin’s
threaded locking interconnect with a bearing/collar locking interconnect like
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Fraser’s because they are art-recognized alternative structures for providing
the same feature (rotating the head of a tool). See KSR Int'l Co. v. Teleflex,
Inc., 550 U.S. 398, 416 (2007) (“when a patent claims a structure already
known in the prior art that is altered by the mere substitution of one element
for another known in the field, the combination must do more than yield a
predictable result” (citing U.S. v. Adams, 383 U.S. 39, 50-51 (1966)). We do
not find any evidence of unpredictability of the combination, nor would we
expect any given the simplistic mechanical nature of the locking
interconnects. Accordingly, we conclude that the subject matter of claims 1,
13, 19, and 20 is obvious.
Because the Patent Trial and Appeal Board is an appellate body, we
will not conduct a full examination of the remaining claims. Our decision
not to reach these claims shall not be taken as an indication that they are
patentable. See In re Voss, 557 F.2d 812, 816 n.11 (CCPA 1977) (“reversal
is not a mandate to the PTO to issue a patent and does not preclude the PTO
from reopening prosecution”) (citing In re Borkowski, 505 F.2d 713, 718
(CCPA 1974) (the Board may not force the granting of patents on inventions
that do not comply with the statutes)); see also In re Arkley, 455 F.2d 586,
589 (CCPA 1972) (rejecting the notion that the reversal of a rejection
indicates that a patent should be granted); In re Fisher, 448 F.2d 1406, 1407
(CCPA 1971) (“we pass only on rejections actually made and do not decree
the issuance of patents … the Patent Office can always reopen
prosecution”).

DECISION
We reverse the Examiner’s decision regarding claims 1-20.
We enter a new ground of rejection for claims 1, 13, 19, and 20.
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FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner.…
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record.…
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).

REVERSED; 37 C.F.R. § 41.50(b)

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