Ex Parte Mascall

Patent Trial and Appeal Board

Jan 31, 2013

12002247 (P.T.A.B. Jan. 31, 2013)

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.
12/002,247 12/14/2007 Eric Mascall 209,292 6050
38137 7590 02/01/2013
ABELMAN, FRAYNE & SCHWAB
666 THIRD AVENUE, 10TH FLOOR
NEW YORK, NY 10017
EXAMINER
CHUKWURAH, NATHANIEL C
ART UNIT PAPER NUMBER
3721
MAIL DATE DELIVERY MODE
02/01/2013 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 ERIC MASCALL
___________

Appeal 2010-011339
Application 12/002,247
Technology Center 3700
____________

Before BRETT C. MARTIN, LYNNE H. BROWNE and
ANNETTE R. REIMERS, Administrative Patent Judges.

REIMERS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-011339
Application 12/002,247

2
STATEMENT OF THE CASE
Eric Mascall (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision to reject under 35 U.S.C. § 103(a): (1) claims 1-6 as
unpatentable over Hetcher (US 7,032,683 B2, issued Apr. 25, 2006) and
Mosher (US 1,898,639, issued Feb. 21, 1933); and (2) claims 1-6 as
unpatentable over Hetcher and Tornqvist (US 4,592,431, issued Jun. 3,
1986). We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
We AFFIRM.

THE INVENTION
Appellant’s invention relates to a hand-held power tool 1 including a
guide tube 6, at least one anvil 8, a percussion mechanism 2 and an impact
sleeve 10. Spec. 4, ll. 5-14 and fig. 2.
Claim 1, the sole independent claim, is illustrative of the claimed
invention and reads as follows:
1. A hand-held power tool, comprising:
a guide tube (6) having two, spaced from each other,
axial stops (7a, 7b);
at least one anvil (8, 8'a, 8'b) axially displaceable
within limits between the two axial stops (7a, 7b) and
having two, axially spaced from each other, outer radial
bands (9a, 9b, 9');
a percussion mechanism (2) including a percussion
piston (5) for impacting the at least one anvil (8, 8'a, 8'b)
and an air spring (3) for driving the percussion piston;
and
an impact sleeve (10, 10') arranged coaxially with the
at least one anvil (8, 8'a, 8'b), axially displaceable within
limits between the two outer radial bands (9a, 9b, 9') of
the at least one anvil (8, 8'a, 8'b) for damping idle blows
of the percussion mechanism by absorbing a portion of
the motion energy of the at least one anvil, and having an
Appeal 2010-011339
Application 12/002,247
3
outer diameter (A) smaller than an inner diameter (I) of
the guide tube (6).

ANALYSIS
The obviousness rejection over Hetcher and Mosher
Claims 1-6
Appellant does not present additional arguments regarding the
patentability of dependent claims 2-6 separate from those directed against
the rejection of independent claim 1. See App. Br. 11. Therefore, Appellant
has argued claims 1-6 as a group for purposes of the rejection of those
claims under § 103(a). Claim 1 is representative of the group. See 37
C.F.R. § 41.37(c)(1)(vii)(2011).
The Examiner found that Hetcher discloses the limitations of
independent claim 1, except “an impact sleeve arranged coaxially with the at
least one anvil between the two outer radial bands.” Ans. 3-4. The
Examiner further found that Mosher discloses an impact sleeve F arranged
coaxially with the at least one anvil w axially displaceable within limits
between the two outer radial bands (stopper) of the at least one anvil w.
Ans. 4; Mosher, fig. 2. The Examiner concluded that it would have been
obvious to one skilled in the art at the time of the invention to modify
Hetcher in view of Mosher “in order to provide [a] plurality of pistons
reciprocating independent of each other working to actuate the working
implement with more impact force.” Id.
Appellant argues, “Hetcher and Mosher operate very differently and if
Hetcher was modified in the manner suggested by the Examiner, it would
change the principle of operation of Hetcher and would include an
unnecessary duplication of parts.” App. Br. 9; Reply Br. 3. According to
Appellant, (1) “[t]he principle of operation of Hetcher is a closed pneumatic
Appeal 2010-011339
Application 12/002,247
4
chamber between a hammer piston and a motor driven excitation piston;”
and (2) “Mosher teaches a percussion mechanism driven by an external
compressor which provides a constant flow of pressurized air.” App. Br. 8-
9; Reply Br. 2-3.
We are not persuaded by Appellant’s arguments because
nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Further, obviousness does not require that all of the features of the secondary
reference be bodily incorporated into the primary reference. In re Keller,
642 F.2d 413, 425 (CCPA 1981). Appellant provides merely conclusory
statements without identifying why the Examiner’s proposed modification of
Hetcher in view of Mosher would change the principle of operation of
Hetcher. For these reasons, we are not apprised of Examiner error.
Appellant further argues that “there is no motivation to modify
Hetcher to include the hammer piston F of Mosher because it has a different
function.” App. Br. 10; Reply Br. 4. According to Appellant, “[u]nlike the
hammer piston F of Mosher, the impact sleeve of claim 1 is not actively
driven and, therefore, does not hit on the anvil in alternation to the hammer
piston.” Id.
We are not persuaded by Appellant’s arguments because Appellant
appears to be attempting to bodily incorporate features of Mosher into
Hetcher. Further, Appellant’s argument that the hammer piston F of Mosher
has a different function is not persuasive in itself because “[i]t is well settled
that the recitation of a new intended use for an old product does not make a
claim to that old product patentable.” In re Schreiber, 128 F.3d 1473, 1477
Appeal 2010-011339
Application 12/002,247
5
(Fed. Cir. 1997). Appellant’s conclusory statements do not apprise us of
error in the Examiner’s stated findings and conclusions of obviousness.
Appellant argues that the combination of Hetcher and Mosher fails to
disclose (1) “an impact sleeve (10, 10’) ... having an outer diameter (A)
smaller than an inner diameter (I) of the guide tube (6);” and (2) “an impact
sleeve (10, 10’) . . . axially displaceable within limits between the two outer
radial bands,” as required by claim 1. App. Br. 10-11; Reply Br. 4-6; App.
Br., Claims Appendix.
Regarding the first limitation, Appellant argues, “[t]he piston F of
Mosher has an outer diameter that is equal to the inner diameter of
chamber D.” App. Br. 10; Reply Br. 5. The Examiner considered cylinder
B of Mosher, not chamber D of Mosher, to be the guide tube. Ans. 4. As
such, the Examiner correctly found that impact sleeve F of Mosher has “[an]
outer diameter smaller than an inner diameter of the guide tube (B).” Id.;
Mosher, fig. 1-2.
Regarding the second limitation, Appellant argues that (1) “[t]he
impact sleeve recited by claim 1 is arranged between the two outer radial
bands. By way of comparison, Mosher arranges the hammer piston F such
that it hits on the anvil in a forward direction;” (2) the Examiner takes the
position that impact sleeve F of Mosher “be arranged between the bands of
the anvil 106 of Hetcher;” and (3) one skilled in the art “would arrange the
hammer piston F of Mosher in the space between the piston 82 and the anvil
106 of Hetcher. This is because with this arrangement the hammer piston F
of Mosher could still act in the forward direction and be simply integrated.”
App. Br. 11; Reply Br. 5-6.
We are not persuaded by Appellant’s arguments for the following
reasons. First, Appellant appears to be attempting to bodily incorporate
Appeal 2010-011339
Application 12/002,247
6
features of Mosher into Hetcher. Second, the Examiner finds that Hetcher
discloses “axially spaced from each other, outer radial bands (see outer
bands of ram [anvil] 78 and striker [anvil 106]).” Ans. 3, 6. As such, it
appears from the Examiner’s findings that the Examiner is proposing to
modify Hetcher by arranging the impact sleeve F of Mosher between the
outer radial bands of ram (anvil) 78 and striker (anvil) 106, not between the
outer radial bands of anvil 106, as Appellant contends. Moreover,
Appellant’s proposed arrangement of the impact sleeve F of Mosher in the
device of Hetcher (i.e., in the space between the piston 82 and the anvil 106
of Hetcher) appears to concur with the Examiner’s proposed arrangement of
the impact sleeve F of Mosher in the device of Hetcher (i.e., in the space
between the ram (anvil) 78 and the striker (anvil) 106 of Hetcher).
Consequently, Appellant has failed to provide any persuasive arguments as
to why the Examiner’s proposed modification of Hetcher in view of Mosher
is erroneous.
Accordingly, for the foregoing reasons, we sustain the rejection of
independent claim 1 and of claims 2-6, which fall with claim 1, as
unpatentable over Hetcher and Mosher.
Because our affirmance of the first ground of rejection is dispositive
as to each claim on appeal, we do not reach the Examiner’s cumulative
rejection of claims 1-6 based on unpatentability over Hetcher and Tornqvist
under 35 U.S.C. § 103(a). See 37 C.F.R. § 41.50(a)(1) (2012) (“The
affirmance of the rejection of a claim on any of the grounds specified
constitutes a general affirmance of the decision of the examiner on that
claim, except as to any ground specifically reversed”).

Appeal 2010-011339
Application 12/002,247
7
DECISION
We AFFIRM the Examiner’s decision to reject claims 1-6 under
35 U.S.C. § 103(a) based on Hetcher and Mosher. We do not reach the
additional issues raised by Appellant regarding the cumulative rejection of
claims 1-6 under 35 U.S.C. § 103(a) based on Hetcher and Tornqvist.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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