11911178 (P.T.A.B. Jun. 27, 2013)

Ex Parte Meixner et al

Patent Trial and Appeal BoardJun 27, 2013

11911178 (P.T.A.B. Jun. 27, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte GERHARD MEIXNER, RALPH DAMMERTZ, and JUERGEN LENNARTZ ____________________ Appeal 2011-004958 Application 11/911,178 Technology Center 3700 ____________________ Before: JENNIFER D. BAHR, JOHN W. MORRISON, and HYUN J. JUNG, Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-004958 Application 11/911,178 2 STATEMENT OF THE CASE Gerhard Meixner et al. (Appellants) appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1, 2, and 9-20 under 35 U.S.C. § 103(a) as unpatentable over Cecchin (US 2004/0182589 A1, pub. Sep. 23, 2004), Naslund (US 3,114,423, iss. Dec. 17, 1963), and Byford (US 2,067,886, iss. Jan. 19, 1937). We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. The Claimed Subject Matter Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. A hand-held power tool, comprising: an impact mechanism (10a) for producing an impulse in the direction of an axis of impact (12a); an axial drive unit (14a) with a driven element (16a); a motor unit (18a); and a motor shaft (20a), which forms an angle (22a) not equal to zero with the axis of impact (12a); wherein the motor shaft (20a) cooperates with the axial drive unit (14a) via a torque transmission wheel (24a) of the axial drive unit (14a), wherein the axial drive unit (14a) is supported on the side of the torque transmission wheel (24a) facing away from the motor unit (18a), wherein the axial drive unit (14a) is formed by an eccentric unit, wherein the driven element (16a) of the axial drive unit (14a) is located directly on the torque transmission wheel (24a), wherein the driven element (16a) of the axial drive unit (14a) is located in a plane perpendicular to a rotation axis of the torque transmission wheel (24a), wherein the impact mechanism (10a) includes a transmission unit (30a) and a piston unit (32a), Appeal 2011-004958 Application 11/911,178 3 wherein the transmission unit (30a) is provided to a transmit force from the axial drive unit (14a) to the piston unit (32a), wherein the transmission unit (30a) includes vertically offset joints (34a; 36a), wherein the vertical offset joints (34a; 36a) are located in a plane perpendicular to the plane in which the driven element (16a) of the axial drive unit (14a), and wherein the transmission unit (30a) includes at least one transmission element (38a), which has, in at least one subregion, an orientation that extends diagonally to the axis of impact (12a) and results in a vertical offset between the vertical offset joints (34a; 36a). OPINION Appellants’ independent claims 1 and 13 both call for the driven element to be located directly on the torque transmission wheel. The Examiner acknowledges that Cecchin fails to disclose the driven element located directly on the torque transmission wheel. Ans. 4, 5. However, the Examiner finds that “Naslund teaches a driven element (82) located directly on the transmission wheel (77) for the purpose of increasing the force of the impact piston.” Id. The Examiner reasons that “[i]n view of Naslund, it would have been obvious to one skilled in the art to [modify] Cecchin by providing a driven element located directly on the transmission wheel.” Id. Appellants argue that “the Examiner has not articulated reasoning with a rational underpinning including some motivation to support a legal conclusion of obviousness for the proposed modification.” App. Br. 8. “The obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of published articles and the explicit content of issued patents.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 419 Appeal 2011-004958 Application 11/911,178 4 (2007). Instead, the relevant inquiry is whether the Examiner has set forth “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with approval in KSR, 550 U.S. at 418). A conclusion of obviousness must be supported by explicit findings and analysis establishing an apparent reason to combine the known elements in the manner required in the claim at issue. KSR, 550 U.S. at 418. The Examiner emphasizes that “[t]he teaching of Naslund was chosen to show Appellant that it is obvious to provide a driven element (82) located directly on the transmission wheel (77) for the purpose of increasing the force of the impact piston.” Ans. 7-8. The Examiner further asserts that “[m]odifying Cecchin requires either motivation or teachings of the prior art and the knowledge available to one having ordinary skill in the art to produce the claimed invention, and Naslund provided such teaching as acknowledged by Appellant.” Id. at 8. The Examiner’s assertion mischaracterizes Appellants’ position. Appellants “agree that Cecchin could be modified in view of the teachings of Naslund to locate Cecchin’s driven element 7 directly on torque transmission wheel 10.” App. Br. 8. However, we do not find in the Appeal Brief any acknowledgement of a teaching by Naslund that locating the driven element (i.e., upstanding post 82) directly on the torque transmission wheel would increase the force of the impact piston. The Examiner does not identify any passage in Naslund that teaches this, nor otherwise proffer any evidence or technical reasoning showing that a person of ordinary skill in the art would have understood that locating the driven element directly on the torque transmission wheel would have this effect. Appeal 2011-004958 Application 11/911,178 5 Thus, the Examiner fails to articulate the requisite factual findings and analysis establishing an apparent reason to modify Cecchin’s tool by locating the eccentric 7 directly on the pinion 10. We therefore agree with Appellants that the Examiner fails to articulate a reason with a rational underpinning to support the legal conclusion of obviousness. For the above reason, we do not sustain the Examiner’s rejection of claims 1 and 13 and of their dependent claims 2, 9-12, and 14-20 as unpatentable over Cecchin, Naslund, and Byford1. DECISION The Examiner’s decision rejecting claims 1, 2, and 9-20 is reversed. REVERSED hh 1 The Examiner does not rely on Byford for any teaching directed to locating the driven element directly on the torque transmission wheel. See Ans. 4, 8.