14383584 (P.T.A.B. Jun. 25, 2018)

Ex Parte Luescher

Patent Trial and Appeal BoardJun 25, 2018

14383584 (P.T.A.B. Jun. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/383,584 09/08/2014 10800 7590 06/26/2018 Maginot, Moore & Beck LLP One Indiana Square, Suite 2200 Indianapolis, IN 46204 FIRST NAMED INVENTOR Bruno Luescher 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. 2178-1218 6994 EXAMINER SU, CHWEN-WEI ART UNIT PAPER NUMBER 3722 MAILDATE DELIVERY MODE 06/26/2018 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 BRUNO LUESCHER Appeal2017-009153 1 Application 14/3 83 ,5 84 2 Technology Center 3700 Before HUBERT C. LORIN, NINA L. MEDLOCK, and BRADLEY B. BAY AT, Administrative Patent Judges. BAY AT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. Â§ 134(a) from the Examiner's Final Rejection of claims 1-16. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We REVERSE. 1 Our Decision references Appellant's Appeal Brief ("App. Br.," filed January 16, 2017) and Reply Brief ("Reply Br.," filed June 14, 2017), the Examiner's Answer ("Ans.," mailed April 25, 2017), and Final Office Action ("Final Act.," mailed August 17, 2016). 2 Appellant identifies "Robert Bosch GmbH" as the real party in interest. App. Br. 2. Appeal2017-009153 Application 14/383,584 THE INVENTION Independent claim 1, reproduced below with added emphasis, is illustrative of the subject matter on appeal. 1. An insertion tool comprising: at least one machining region; and at least one fastening region configured to couple to at least one tool holding fixture of a handheld machine tool and including at least two fastening elements arranged substantially into a circle around a drive axis, wherein the at least one fastening region is further configured to be at least substantially free of recesses in a radial direction within the circle; and wherein the at least one fastening region is further configured to be completely free of fastening recesses within the circle. App. Br. 18 (Claims Appendix). THE REJECTION Claims 1-16 are rejected under 35 U.S.C. Â§ 102(b) as anticipated by Sergyeyenko et al. (US 2011/0266758 Al, pub. Nov. 3, 2011) ("Sergyeyenko"). ANALYSIS Independent claim 1 and dependent claims 2-9 and 12-15 Independent claim 1 requires, in part, (1) at least one fastening region including at least two fastening elements arranged substantially into a circle around a drive axis, and (2) wherein the at least one fastening region is further configured to be completely free of fastening recesses within the circle. See App. Br. 18 (Claims Appendix). As for "at least one fastening region" in limitation (1 ), the Examiner finds that Sergyeyenko discloses "at least one fastening region (the 2 Appeal2017-009153 Application 14/383,584 mounting surface 178 but not including the aperture 180." Final Act. 3; see also Ans. 2. As for "wherein the at least one fastening region is further configured to be completely free of fastening recesses within the circle" in limitation (2), the Examiner finds that "since the hole 180 is not included in the at least one fastening region, the hole 180 itself is not a recess within the circle on the at least one fastening region." Ans. 2 (citing Sergyeyenko, Figs. 21, 22, i-fi-1 40, 59). In the Answer, the Examiner introduces for the first time an annotated version of Sergyeyenko 's Figure 21, which is reproduced below. See id. at 4. T:l.-.,,,. "'"'.Â·.Â»'iâ€¢"Â»' '~'t'+k;n ..,~,,, // ::i:~Â·:i-,.Â· .......... ,5.(Â°:>.""'"' ... ~ ~.~qt-~ tl::-,... /" ckd~ ~foe:. nt~~ h;a\1~ :iit~y Â· According to the Examiner: claim 1 does not define the boundary of the fastening region, and under broadest reasonable interpretation, Examiner has interpreted the mounting surface 178 [as excluding] the mounting hole 180 [in] the at least one fastening region. That is, the fastening region is defined between the outer boundary of the upper surface 178 and the outer circumference of the 3 Appeal2017-009153 Application 14/383,584 Id. aperture 180 (An annotated drawing of Fig. 21 is also attached below). Therefore, the mounting aperture 180 is not a fastening recess or a recess on the at least one fastening region. Thus, the fastening region within the circle is completely void of any recesses between element 180 and elements 176. Appellant argues that Sergyeyenko does not satisfy the requirements for anticipation under 35 U.S.C. Â§ 102(b) because a "claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference." App. Br. 7 (quoting Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987)). In particular, Appellant argues that Sergyeyenko does not disclose limitations (1) and (2) of claim 1 (App. Br. 7-11; Reply Br. 2-8). According to Appellant, "one of ordinary skill in the art would recognize the aperture 180 in the mounting surface 178 to be a fastening recess, since the aperture 180 is used to receive a fastener for fastening the insertion tool 114c" (id. at 8). We are persuaded by Appellant's arguments. The Examiner does not appear to assert that mounting aperture 180 is not a fastening recess. Rather, the Examiner asserts that "[ o ]ne may define the aperture 180 to be [within] a separate region (e.g., a spindle connecting region) than the fastening region that includes the fastening elements 176." (Ans. 5). In other words, the Examiner acknowledges that mounting aperture 180 is "a fastening recess," but the Examiner interprets its location as being within a spindle connecting region rather than a fastening region. During examination, claims are to be given their broadest reasonable interpretation consistent with the specification, and the language should be read in light of the specification as it would be interpreted by one of ordinary 4 Appeal2017-009153 Application 14/383,584 skill in the art. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations omitted). In interpreting claim language, we apply the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the Specification. Here, Appellant's Specification defines the term "fastening region" as follows: A "fastening region" in this context is intended to be understood as meaning, in particular, a region of the insertion tool that is at least substantially provided to correspond to the tool holding fixture and to couple the insertion tool to the tool holding fixture. (Spec. 2, 11. 15-20). Sergyeyenko discloses "[a] mounting aperture 180 can be formed through the body 1 72 of the third accessory 14c for accepting a fastener 182 (FIG. 22)" and "[t]he fastener 182 can threadably mate with a threaded bore 186 defined at a distal end of the spindle 26." Sergyeyenko i-f 59; see also id. at Fig. 1. Whether aperture 180 is characterized as being within a "spindle connecting region" as asserted by the Examiner is beside the point. As described above, Sergyeyenko 's spindle 26 connects accessory 14c to the power tool 12 via mounting aperture 180 and fastener 182 (see Sergyeyenko, Fig. 1 ). Applying the definition of "fastening region" from the Specification (supra), mounting aperture 180 is provided "to couple the insertion tool [accessory 14c] to the tool holding fixture," namely spindle 26. We, therefore, conclude that the Examiner's interpretation of "fastening region" as excluding mounting aperture 180 is inconsistent with the Specification. 5 Appeal2017-009153 Application 14/383,584 In view of our determination that Sergyeyenko 's mounting aperture 180 is properly construed as being within a fastening region, we find that the Examiner's finding for limitation (2) is deficient. The Examiner's finding for "at least one fastening region ... including ... a circle" (see Examiner's annotated version of Sergyeyenko 's Figure 1, supra) is not "configured to be completely free of fastening recesses within the circle" as required by claim 1 because it includes mounting aperture 180. "[A ]bsence from the reference of any claimed element negates anticipation." Kloster Speedsteel AB v. Crucible, Inc., 793 F.2d 1565, 1571 (Fed. Cir. 1986). Accordingly, we do not sustain the Examiner's rejection of independent claim 1 as anticipated by Sergyeyenko, including dependent claims 2-9 and 12-15. Independent claims 10, 11, and 16 Independent claims 10, 11, and 16 recite a similar limitation as independent claim 1, and are rejected based on the same erroneous finding discussed above. See Final Act. 2--4; see also Ans. 3-6. Thus, we do not sustain the rejection of independent claims 10, 11, and 16. DECISION The Examiner's rejection under 35 U.S.C. Â§ 102(b) is reversed. REVERSED 6