Ex Parte Lang et al

Board of Patent Appeals and Interferences

Feb 28, 2012

10189798 (B.P.A.I. Feb. 28, 2012)

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.
10/189,798 07/08/2002 Marco Lang 31530-182150 3105
26694 7590 02/28/2012
VENABLE LLP
P.O. BOX 34385
WASHINGTON, DC 20043-9998
EXAMINER
DURAND, PAUL R
ART UNIT PAPER NUMBER
3721
MAIL DATE DELIVERY MODE
02/28/2012 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
____________________

BOARD OF PATENT APPEALS AND INTERFERENCES
____________________

Ex parte MARCO LANG, FRANC KOLJAKA, FRIEDMAR DRESIG,
and THOMAS BERNHARDT
____________________

Appeal 2010-000573
Application 10/189,798
Technology Center 3700
____________________

Before: FRED E. McKELVEY, ROBERT A. CLARKE and JONI Y. CHANG,
Administrative Patent Judges.

CLARKE, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-000573
Application 10/189,798

2

Statement of the case
Hawera Probst GmbH and ARESI S.p.A. (“Hawera”), the real party in 1
interest (App. Br1. page 3), seek review under 35 U.S.C. § 134(a) of a rejection 2
dated 06 August December 2008. 3
The application was filed on 08 July 2002. The application claims priority 4
to prior German application 101322292.5 filed on 06 July 2001 and prior German 5
application 10208628.1 filed on 28 February 2002. 6
The application has been published as U.S. Patent Application Publication 7
2003/026669 A1. 8
Claims 4, 7-9, 14, 16, 17, and 21-24 are on appeal. 9
The Examiner relies on the following evidence: 10
Fischer et al. (Fischer) U.S. Patent 4,993,894 19 Feb. 1991
Rabett U.S. Patent 3,856,107 24 Dec. 1974
Berglund et al. (Berglund) U.S. Patent 5,988,953 23 Nov. 1999
Montabert U.S. Patent 4,109,734 29 Aug. 1978
Hawera does not contest the prior art status of the evidence relied upon by 11
the Examiner. 12
We have jurisdiction under 35 U.S.C. § 134(a). 13

1 References to App. Br. refer to the Amended Appeal Brief filed 23 April 2009.

Appeal 2010-000573
Application 10/189,798

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Findings of fact 1
The following findings of fact are supported by a preponderance of the 2
evidence. 3
Additional findings as necessary may appear in the Analysis portion of the 4
opinion. 5
The invention 6
The Hawera invention relates to a chisel or hammer drill having a shank 7
formed with at least one increased cross-sectional area and at least one subsequent 8
portion having a decreased cross-sectional area in order to concentrate percussion 9
or impact energy while also dampening vibrations. (Amendment to the 10
Specification of 31 October 2002 of the paragraph bridging pages 2 and 3.) 11
12
Claims on appeal 13
Claim 21 is the sole independent claim. 14
Claim 21, which we reproduce from the Claims Appendix of the Appeal 15
Brief, reads [matter in brackets added; limitations in issue italicized]: 16
Claim 21 17
A chisel, comprising: 18
[1] a shank having opposite ends; 19
[A] one end of the shank comprising an insertion portion; and 20
[B] the end of the shank opposite the insertion portion comprising 21
[I] a head, 22
[a] wherein the head is a working end and 23
[C] wherein a cross sectional area of the shank increases in the 24
direction of the head at least once from a first small cross sectional 25
area to a large cross sectional area and then decreases to a second 26
small cross sectional area to form a bead, 27

Appeal 2010-000573
Application 10/189,798

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[I] wherein the bead dampens vibration, 1
[II] wherein the bead is part of the shank, 2
[III] the bead is at a position on the shank between the insertion 3
portion and the head, and 4
[IV] the bead is at a distance from the insertion portion, 5
[V] wherein the insertion portion, head, bead, and shank are 6
formed out of one piece, 7
[VI] wherein the bead is rotationally symmetric about a 8
longitudinal axis and has a circular cross section perpendicular 9
to the longitudinal axis, 10
[VII] wherein the bead is arranged in that half of the shank 11
which faces the insertion end, and 12
[D] wherein the shank is not helical. 13
14
Scope and content of the prior art 15
16
Fischer 17
The Fischer invention generally relates a drill (1) having a shank for 18
insertion into a hammer drill, a drill tip (5) and a resilience ring shaped vibration 19
dampening element (4) or (20) affixed intermediate the portion of the shank for 20
insertion into the hammer drill and the tip. See generally col. 2, l. 67 through 21
col. 3 l., 37. The shank of the drill has a series helical dust grooves (25). Col. 3, 22
ll. 46-49. The object of the Fischer invention is to provide for depth limited 23
drilling that avoids damage to the surface being drilled by providing a depth stop 24
that does not rotate when contacting the surface and which resiliently deforms 25
when the surface is engaged by the depth stop. Col. 1, ll. 36-41, 50-63 and col. 1, 26
l. 67 – col. 2 l. 1. 27

Appeal 2010-000573
Application 10/189,798

5

Rabett 1
Rabett teaches to provide a percussion tool with a vibration dampening 2
collar located on the stem of the tool. The collar has sufficient mass to inhibit the 3
primary mode of transverse vibration when the percussion tool is used. Col. 1, 4
ll. 40-54. The tool has a circular or polygonal shape in the cross section and a 5
shank that in use is inserted into and secured by a percussive machine in a manner 6
that the free end may be impacted by a reciprocating hammer to advance the 7
working head. Col. 3, ll. 16-27. Rabett also describes that the working head may 8
be a spade, chisel, moil, drill bit or the like (emphasis added). Col. 1, ll. 8-10. 9
Berglund 10
Berglund teaches that the drill tip 11 including the upper clearance faces 15, 11
lower support surface 16, first and second curved surfaces 41 and 18 including all 12
surfaces and edges should be integrated as one piece of the same material, 13
preferably by injection molding. Col. 2, l. 66 – col. 3, l. 7. The Examiner found 14
that the Berglund teaches that it is old and well known in the art of tool bits to 15
provide a tool bit where the insertion end, upper drill shank portion, bead, lower 16
drill shank portion and helix are formed from one piece for the purpose of 17
efficiently manufacturing a tool bit. Ans. 4. 18
Montabert 19
Montabert teaches the use of a beater or impact piston (3) that when actuated 20
imparts a compressive force and displacement of the tool (4). Col. 3, ll. 11-16. 21
The tool being displaced may be a chisel. Col. 1, ll. 20-21. 22
23

Appeal 2010-000573
Application 10/189,798

6

The Rejections 1
1. The Examiner rejected Claims 4, 7-9, 14, and 21-24 under 35 U.S.C. 2
§ 103(a) as unpatentable over Fischer, Rabett and Berglund. 3
2. The Examiner also rejected Claims 16 and 17 under 35 U.S.C. § 103(a) 4
as unpatentable over Fischer, Rabett, Berglund and Montabert. 5
We REVERSE. 6
7
Rejection 1 8
Regarding representative claim 21, Hawera argues that Fischer cannot be 9
modified with Rabett, because doing so would render Fischer unsuitable for its 10
intended purpose. App. Br. 8-10; Rep. Br. 4-5. Additionally, Hawera argues that 11
Berglund is non-analogous art and, therefore, cannot be invoked to modify Fischer. 12
App. Br. 10-12; Rep. Br. 6. Hawera further argues that Rabett teaches away from 13
modifying Fischer with Berglund to obtain a bead portion formed of the same 14
piece as the shank. App. Br. 12-14; Rep. Br. 6. Lastly, Hawera argues that Fischer 15
cannot be modified with Berglund, because doing so would render Fischer 16
unsuitable for its intended purpose; and Fischer teaches away from modification 17
with Berglund to obtain a bead portion formed of the same piece of the shank. 18
App. Br. 14-16; Rep. Br. 7. 19
Rejection 2 20
Hawera does not present any additional argument that rejection 2 was an 21
error. 22
23

Appeal 2010-000573
Application 10/189,798

7

PRINCIPLES OF LAW 1
In KSR, the Supreme Court explained that: 2
a patent composed of several elements is not proved obvious 3
merely by demonstrating that each of its elements was, 4
independently, known in the prior art. Although common sense 5
directs one to look with care at a patent application that claims 6
as innovation the combination of two known devices according 7
to their established functions, it can be important to identify a 8
reason that would have prompted a person of ordinary skill in 9
the relevant field to combine the elements in the way the 10
claimed new invention does. 11
12
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418-19 (2007). In this regard, the 13
Court also noted that "[t]o facilitate review, this [obviousness] analysis should be 14
made explicit." Id. at 418, (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) 15
("[R]ejections on obviousness grounds cannot be sustained by mere conclusory 16
statements; instead, there must be some articulated reasoning with some rational 17
underpinning to support the legal conclusion of obviousness")). 18
A reference may be said to teach away when a person of ordinary skill, upon 19
reading the reference, would be discouraged from following the path set out in the 20
reference, or would be led in a direction divergent from the path that was taken by 21
the applicant. See In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). 22

Appeal 2010-000573
Application 10/189,798

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In Klein, the court of appeals for the Federal Circuit explained that: 1
A reference qualifies as prior art for an obviousness 2
determination under § 103 only when it is analogous to the 3
claimed invention. Two separate tests define the scope of 4
analogous prior art: (1) whether the art is from the same field of 5
endeavor, regardless of the problem addressed and, (2) if the 6
reference is not within the field of the inventor's endeavor, 7
whether the reference still is reasonably pertinent to the 8
particular problem with which the inventor is involved. Here, 9
the Board focused exclusively on the “reasonably pertinent to 10
the particular problem” test. A reference is reasonably pertinent 11
if, even though it may be in a different field from that of the 12
inventor's endeavor, it is one which, because of the matter with 13
which it deals, logically would have commended itself to an 14
inventor's attention in considering his problem. If a reference 15
disclosure has the same purpose as the claimed invention, the 16
reference relates to the same problem, and that fact supports use 17
of that reference in an obviousness rejection. 18
In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (internal citations omitted). 19
20

Appeal 2010-000573
Application 10/189,798

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Analysis 1
Claims 4, 7-9, 14 and 21-24 2
Hawera argues that if the Fischer device is modified by replacing the helical 3
chip grooves with a shank having a circular cross section, Fischer would be 4
rendered unsuitable for its purpose because chips and dust created by the cutting 5
action of the drill tip would accumulate in the vicinity of the drill tip and hinder the 6
drilling action. Hawera argues that replacing the helical chip grooves of Fischer 7
with a shank having a polygonal section would increase vibration and cause 8
damage the region of the drill hole both of which would render Fischer unsuitable 9
for its purposes. App. Br. 8-10. The Examiner found that lack of helical portions 10
does not necessarily result in the accumulation drilled particles as those could be 11
removed by the user during operation or by gravity depending on the orientation of 12
the drill. Ans. 10. While the Examiner has found that modification is feasible, the 13
findings do not provide a rationale for the desirability of the modification. 14
Hawera argues that Fischer teaches away from modification with Berglund 15
to obtain a bead portion formed of the same piece as the shank because Fischer 16
teaches that when the anti-vibration element of the bead contacts the surface of a 17
work piece, the anti-vibration element does not rotate with the head, shank, and 18
insertion portion of the drill. Hawera argues that Fischer teaches to provide an 19
anti-vibration element that is necessarily disconnected from and separate from the 20
shank. App. Br. 14-15; Rep. Br. 7. The Examiner found that Fischer’s depth stop 21
feature would not be destroyed by the combination (Ans. 7), but does not explain 22
how the one piece shank and depth stop of the combination would avoid damage to 23
the surface being drilled. 24

Appeal 2010-000573
Application 10/189,798

10

Hawera argues that Berglund is non-analogous art to its claimed invention. 1
Hawera correctly argues that Berglund describes a rotary cutting tool that is rotated 2
with respect to the surface to be cut. App. Br. 10. Hawera also correctly argues 3
that the present claimed invention is directed to a chisel that is intended to 4
penetrate a work piece by being moved along the chisel’s longitudinal axis. The 5
Examiner found that Berglund and Fischer were analogous to each other, but did 6
not address how Berglund was analogous to the claimed invention. Ans. 11-12. 7
The Examiner has not explained: (1) whether the rotary drilling art is from the 8
same field of endeavor as the chisel are, regardless of the problem addressed or, 9
(2) if the Berglund reference is not within the field of the inventor's endeavor, 10
whether Berglund still is reasonably pertinent to the particular problem with which 11
the inventor is involved. 12
In view of the above, the Examiner's articulated rejection is inadequate to 13
establish that it would have been obvious to one of ordinary skill in the art to 14
provide a chisel having an insertion portion, head bead and shank formed of a 15
single piece and a shank that does not have a helical portion on it as recited in 16
claim 21. As discussed, the desirability of removing the helical groove of a rotary 17
drill bit or to make the depth stop of Fischer and its shank in one piece were not 18
persuasively articulated nor was the Berglund reference availability as a reference 19
under 35 U.S.C. 103 persuasively articulated. The Examiner's articulated rejection 20
appears to be based on impermissible hindsight. Correspondingly, because the 21
Examiner's rejection of claim 21 is not supported by sufficient rational 22
underpinnings to support the conclusion of obviousness, the rejection of claims 4, 23

Appeal 2010-000573
Application 10/189,798

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7-9, 14 and 21-24 is not sustained. The remaining arguments of the Hawera are 1
moot. 2
Claims 16 and 17 3
In rejecting claims 16 and 17, the Examiner does not point to any teaching in 4
Montabert which would make up for the deficiency in the rejection of claim 21 5
discussed above. Therefore, we also do not sustain the rejection of claims 16 and 6
17 as being unpatentable over Fischer, Rabett, Berglund and Montabert. 7
Decision 8
Upon consideration of the appeal, and for the reasons given herein, it is 9
ORDERED that the decision of the Examiner rejecting Claims 4, 7-9, 10
14 and 21-24 as being unpatentable under 35 U.S.C. § 103(a) over Fischer, Rabett 11
and Berglund is reversed. 12
FURTHER ORDERED that the decision of the Examiner rejecting 13
Claims 16 and17 as being unpatentable under 35 U.S.C. § 103(a) over Fischer, 14
Rabett, Berglund and Montabert is reversed. 15
FURTHER ORDERED that no time period for taking any subsequent 16
action in connection with this appeal may be extended under 37 C.F.R. 17
§ 1.136(a)(1)(iv). 18
REVERSED 19
ack 20
21
22