Ex Parte Neitzell

Board of Patent Appeals and Interferences

Jun 29, 2004

09606955 (B.P.A.I. Jun. 29, 2004)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ROGER D. NEITZELL
____________
Appeal No. 2003-1472
Application No. 09/606,955
____________
ON BRIEF
____________
Before STAAB, NASE, and BAHR, Administrative Patent Judges.
STAAB, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s final
rejection of claims 6-11, 16-19, 21-25, 27, 34-36 and 76-97, as
amended subsequent to the final rejection in a paper filed June 3,
2002 (Paper No. 13). No other claims are currently pending.
By way of background, the appealed subject matter of the
instant application is related to appealed subject matter in Appeal
No. 2002-1018 taken by appellant in Application No. 09/474,033, now
Appeal No. 2003-1472
Application No. 09/606,955
2
Patent 6,508,151, which application is the parent of the present
application. In rendering our decision here, we presume
familiarity on the reader’s part with the issues involved in the
prior appeal.
The claims on appeal are drawn to a reciprocating saw having a
spindle for supporting a saw blade, wherein the path of travel of
the spindle is adjustable. A further understanding of the
invention can be derived from a reading of exemplary claims 16 and
17, which appear in the appendix to appellant’s supplemental main
brief.
The references applied in the final rejection are:
W. S. Brucker 3,204,470 Sept. 7, 1965
S. G. Enders 3,269,197 Aug. 30, 1966
Ketchpel, Jr. et al. 3,802,079 Apr. 9, 1974
(Ketchpel)
Palm 5,079,844 Jan. 14, 1992
Claims 6-11, 16-19, 21-25, 27, 34-36 and 76-97 stand rejected
under 35 U.S.C. § 112, second paragraph, as being indefinite.
Claims 6-8, 10, 11, 16-19, 21-25, 27, 35, 36, 76-83, 85-88 and
91-96 stand rejected under 35 U.S.C. § 103(a) as being unpatentable
over Enders in view of Ketchpel.
Appeal No. 2003-1472
Application No. 09/606,955
3
Claims 9, 34, 84 and 97 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Enders in view of Ketchpel, and
further in view of Palm.
Claims 89 and 90 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Enders in view of Ketchpel, and further in
view of Brucker.
Reference is made to appellant’s supplemental main brief and
reply brief (Paper Nos. 16 and 18) and to the examiner’s answer
(Paper No. 17) for the respective positions of appellant and the
examiner regarding the merits of these rejections.
The 35 U.S.C. § 112, second paragraph rejection
The second paragraph of 35 U.S.C. § 112 requires that the
claims set out and circumscribe a particular area with a reasonable
degree of precision and particularity. In re Johnson, 558 F.2d
1008, 1015, 194 USPQ 187, 193 (CCPA 1977). In making this
determination, the definiteness of the language employed in the
claims must be analyzed, not in a vacuum, but always in light of
the teachings of the prior art and of the particular application
disclosure as it would be interpreted by one possessing the
ordinary level of skill in the pertinent art. Id.
The examiner’s focus during examination of claims for
compliance with the requirements for definiteness under 35 U.S.C.
Appeal No. 2003-1472
Application No. 09/606,955
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§ 112, second paragraph, is whether the claims meet the threshold
requirements of clarity and precision, not whether more suitable
language or modes of expression are available. Some latitude in
the manner of expression and the aptness of terms is permitted even
though the claim language is not as precise as the examiner might
desire. MPEP, § 2173.02.
In the present case, the examiner contends that the claims are
replete with vague and indefinite language, and lists several
examples. As a first example, the examiner asserts on page 3 of
the answer that it is not clear what claim 17 encompasses because,
in the examiner’s view, “the structural line of distinction”
between the claimed “motor” and the claimed “means for selectively
changing” is not clear. As further explained on page 8 of the
answer:
[T]he function of the “means” and the function of the
“motor” overlap, since they both facilitate movement in
the first path, first cutting stroke, and the first
return stroke. Thus, the reason for raising the issue of
indefiniteness. At most it is understood in light of the
disclosure that the motor facilitates reciprocation of
the spindle end. Moreover, it is understood from the
disclosure that the track and follower allows the user to
change the paths. . . . [T]he changing means do not
perform both functions of changing the path and moving
the spindle. The changing means simply allows or defines
the paths of movement. The motor simply facilitates
reciprocation.
Appeal No. 2003-1472
Application No. 09/606,955
1Claim 17 states that the “motor” functions “for moving said
end during a first cutting stroke and during a first return
stroke, said end being movable along a first path of travel
relative to said housing during said first cutting stroke and
during said first return stroke . . . .”
2Claim 17 expressly states that the changing means “includes
a track and a track follower.”
5
With reference to claim 17, we appreciate that the claimed
functions for the “motor” and the “means for selectively changing”
overlap. In reviewing the indefiniteness issue raised by the
examiner, we consider that the word “motor” as used here is a broad
term that includes not only the electric motor itself (not shown),
but also sufficient ancillary structure (e.g., guiding structure
such as the track 62 and track follower 60) for effecting the
functions attributed to the “motor.”1 Since the “means for
selectively changing” of claim 17 also includes the track 62 and
the track follower 60,2 the terminology of claim 17 questioned by
the examiner is, in effect, a double recitation of structural
elements that are involved in each function. However, there is no
per se rule prohibiting a double recitation of structural elements
that are common to overlapping functions. See Palmer v. United
States, 423 F.2d, 316, 320, 163 USPQ 250, 253, adopted 165 USPQ 88
(Ct. Cl.), cert. denied, 400 U.S. 951 (1970) (“[D]ouble recitation
of elements of combination inventions does not necessarily render a
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Application No. 09/606,955
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claim vague and indefinite, particularly if the claim is drafted in
terms of means clauses under 35 U.S.C. § 112, or if an element
performs more than one function or overlapping functions.”). See
also, In re Knowlton, 481 F.2d 1357, 1368, 178 USPQ 486, 494 (CCPA
1973); In re Kelley, 305 F.2d 909, 914, 134 USPQ 397, 401 (CCPA
1962). In the present case, we consider that the meaning of the
“motor for moving . . .” and “means for selectively changing . . .”
terminology of claim 17 is reasonably clear, especially when the
terminology in question is read in light of appellant’s
specification. Accordingly, we do not agree with the examiner’s
first reason for rejecting the claims under 35 U.S.C. § 112, second
paragraph.
The examiner’s next example of claim indefiniteness involves
the last paragraph of claim 17 that begins with the word “wherein.”
According to the examiner (answer, pages 3-4), it is not clear what
this limitation encompasses. More particularly, the examiner
posits (answer, page 9):
The indefiniteness issue lies in having clear antecedent
basis for the “means for selectively changing” to change
into the “third path of travel” and not in the
understanding of the “third path of travel” per se. . . .
[T]he “means for selectively changing” clause as set
forth in claim 17 only sets forth two different paths,
i.e., first and second. It is not until the last
“wherein” clause where the claim sets forth that the
changing means adjusts to the third path. Since the
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Application No. 09/606,955
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first instance of the “means for selectively changing”
did not include the functionality of changing to the
third path of travel, it is the Examiner’s opinion that
this part of the claim is indefinite for lacking clear
antecedent basis for the functionality. It is noted that
if the “means for selectively changing” clause included
details for adjustment of the third path, then this issue
would be resolved. [Footnotes omitted.]
At the outset, we note that the examiner’s rejection in this
respect is not founded on any misunderstanding of what constitutes
the “third path of travel.” Our difficulty with the examiner’s
stated position is that it is based upon a piecemeal reading of
claim 17 rather than a reading of the claim as a whole. While the
examiner may be correct in noting that the clarity and readability
of claim 17 might be improved by initially reciting the “third path
of travel” function in the portion of the claim that first sets
forth the “means for selectively changing,” we again point out that
the examiner’s focus during examination with respect to
definiteness should be on whether the claim meets the threshold
requirements of clarity and precision, not on whether more suitable
language or mode of expression is available. In the present
instance, when claim 17 is read as a whole, it is clear that the
“means for selectively changing” functions not only to change the
first path of travel to a second path of travel, but also to adjust
one of the first and second paths of travel to a third path of
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Application No. 09/606,955
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travel. Indeed, claim 17 expressly sets forth both of these
functions, albeit in different portions of the claim. In light of
the foregoing, we cannot support the examiner’s second reason for
rejecting the claims under 35 U.S.C. § 112, second paragraph.
The examiner’s third example of claim indefiniteness is
similar to the first example discussed above. Here, the examiner
cites to claim 18 and contends (answer, page 4) that the claim is
vague and indefinite in that it is not clear what constitutes the
structural line of distinction between the “means for moving” and
the “means for selectively adjusting.”
We agree with the examiner that the “means for moving” and the
“means for selectively adjusting” of claim 18 overlap in the sense
that they share certain common elements. However, as was the case
with the examiner’s first example, we do not share the examiner’s
view that this circumstance renders the claim vague and indefinite.
As we stated above, there is no per se rule prohibiting the double
recitation of such common elements. In the present case, we
consider that the meaning of the “means for moving” and “means for
selectively adjusting” terminology of claim 18 is reasonably clear,
especially when read in light of appellant’s specification. It
follows that we do not agree with the examiner’s third reason for
rejecting the claims under 35 U.S.C. § 112, second paragraph.
Appeal No. 2003-1472
Application No. 09/606,955
9
The examiner’s final example of claim indefiniteness is refers
to claim 35, which is directed to a reciprocating saw comprising,
inter alia, a track defining a first path of travel during first
cutting and return strokes and a second path of travel during
second cutting and return strokes. The examiner considers that the
claim is indefinite “in that it is not clear what the claim
encompasses . . . . What of the ‘track’ defines these different
paths of travel? In other words, what is the structural nexus that
connects the ‘track’ to the different paths?” (answer, page 4). As
further explained on page 10 of the answer:
[T]he Examiner concedes that the track allows changing of
the paths of travel due to the fact that the track is
adjustable. However, claim 35 does not set forth that
the track is adjustable to define those paths. This is
the requisite nexus that provides the basis for path
definition. At present, the claim only states that the
track defines first and second paths of travel, without
any mention as to what feature of the track allows this
to occur.
The examiner’s position is not well taken. When the claim
language questioned by the examiner is read in light of the
supporting specification, its meaning is clear. More particularly,
the track defines a first path of travel as called for in claim 35
when located in a first position corresponding to the upwardly
inclined position for track member 56 shown in appellant’s Figure
1, and a second path of travel as called for in claim 35 when
Appeal No. 2003-1472
Application No. 09/606,955
10
located in a second position corresponding to the downwardly
inclined position for track member 56 shown in appellant’s Figure
11. Judging from the examiner’s remarks on page 10 of the answer
as quoted above, it appears that his concern is with the breadth of
claim 35 rather than with any indefinite language therein. This is
not a proper basis for rejecting claims under § 112, second
paragraph, because the breadth of a claim is not to be equated with
indefiniteness. In re Miller, 441 F.2d 689, 693, 169 USPQ 597, 600
(CCPA 1971).
In light of the foregoing, we shall not sustain the examiner’s
rejection of claims 6-11, 16-19, 21-25, 27, 34-36 and 76-97 under
35 U.S.C. § 112, second paragraph.
The 35 U.S.C. § 103(a) rejections
Each of the independent claims on appeal calls for, in one
form or another, the following:
a spindle mounted for reciprocation and having an end for
supporting a saw blade,
a saw blade selectively supported by said end in a first
direction relative to the spindle to have a first cutting
direction and in a second orientation relative to the
spindle to have a second cutting direction opposite the
first cutting direction,
a motor (or, means) for moving the end along a first path
of travel, the first path of travel having a first
cutting stroke and a first return stroke, and
Appeal No. 2003-1472
Application No. 09/606,955
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a track (or, means) for selectively changing the first
path of travel of the end to another path of travel, said
another path of travel having a second cutting stroke and
a second return stroke,
wherein the first path of travel is characterized by
movement at least partially in the first cutting
direction during the first cutting stroke, and wherein
said another path of travel is characterized by movement
at least partially in the second (opposite) cutting
direction during the second cutting stroke.
Thus, each of the independent claims on appeal in one way or
another calls for a spindle that is capable of moving along a first
path of travel and another path of travel, wherein the first path
of travel is characterized by movement of the spindle end at least
partially in a first cutting direction during a first cutting
stroke, and wherein the said another path of travel is
characterized by movement of the spindle end at least partially in
a second opposite cutting direction during a second cutting stroke.
Enders, the examiner’s primary reference in each of the
rejections under 35 U.S.C. § 103(a), is directed to a jig saw
wherein the spindle has an adjustable path of travel. More
particularly, Enders discloses a spindle 28 mounted in a pivoting
bearing 30 for allowing both sliding and pivoting motion of the
spindle relative to the tool housing. Crank pin 25, 26 engages a
transverse slot in yoke member 27 carried by the spindle so that
when the crank in rotated, a reciprocating motion is imparted to
Appeal No. 2003-1472
Application No. 09/606,955
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the spindle. The Enders jig saw further includes an adjustable
guide channel 35, 35a which receives the yoke member for guiding
the movement thereof. As can be seen from Figures 5A-5D, by
changing the angle of inclination of the guide channel, the path of
travel of the spindle can be adjusted. More particularly, Fig 5A
illustrates a first position of the guide channel that causes the
saw blade 31 to move along a first path of travel wherein the saw
blade reciprocates with no movement in the cutting direction during
the cutting and return strokes, whereas Figs 5B-5D illustrate
gradually increasing angles of inclination of the guide channel
wherein the saw blade reciprocates in second, third and fourth
paths of travel, each characterized by movement of the saw blade
toward the workpiece W during the cutting (ascending) stroke and
away from the workpiece during the return (descending) stroke.
Ketchpel, the examiner’s secondary reference in each of the
rejections under 35 U.S.C. § 103(a), is directed to a reciprocating
saw. An aim of Ketchpel is to provide a new and improved saw blade
holder (generally, element 120) “for selectively holding a saw
blade in a vertical position with the saw blade teeth at either the
upper or lower edge of the saw blade or in a horizontal position
with the saw blade teeth at either the right side or left side of
the saw blade” (column 1, lines 17-21). Figure 4 shows the saw
Appeal No. 2003-1472
Application No. 09/606,955
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blade in solid lines in a first vertical position with the saw
blade teeth facing downwardly, and in phantom lines in a second
opposite vertical position with the saw blade teeth facing
upwardly. Ketchpel does not provide for adjustment of the path of
travel of the spindle.
The linchpin of the examiner’s rejections under 35 U.S.C.
§ 103(a) is that (1) it would have been obvious to one of ordinary
skill in the art in view of the teachings of Ketchpel to support
the saw blade of Enders in a second orientation, wherein the saw
blade has a second cutting direction opposite the cutting
orientation shown in Figs. 5A-5D, and that (2) the resulting
modified Enders saw would include all the claimed cutting
directions, cutting strokes, return strokes, and paths of travel.
First, we do not agree with the examiner that it would have
been obvious in view of Ketchpel to support the saw blade of Enders
in a second orientation wherein the saw blade has a cutting
direction opposite the cutting direction shown in Figs. 5A-5D.
Notwithstanding the teachings of Ketchpel, which arguably teach
that it is generally known in the art of hand held reciprocating
saws to reorient the saw blade to achieve a different cutting
direction, the issue is whether it would have been obvious to one
of ordinary skill in the art in view of the applied reference
Appeal No. 2003-1472
Application No. 09/606,955
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teachings to implement the saw blade reorientation proposed by the
examiner in Enders. Based on the teachings of the applied
references in their entirety, it is our opinion that it would not
have been obvious to so modify Enders. In this regard, there are
several structural features of Enders related to its operation that
would act as disincentives to modifying Enders in the manner
proposed. For example, in Enders,
[t]he yoke member 27 is urged into engagement with the
guide channel 35 by means of a spring 36 which is
disposed around the crank pin 25, and also, by means of
the leverage exerted about the axis of the pivoted
bearing 30 when the jig saw 10 is brought into engagement
with a workpiece. [Column 3, lines 17-22.]
However, if the orientation of the blade is reversed as proposed by
the examiner, the leverage exerted about the axis of the pivoted
bearing when the jig saw is fed into engagement with the workpiece
would tend to urge the yoke member out of engagement with the guide
channel, the very antithesis of the method of operation described
in the Enders specification. Moreover, reorienting the saw blade
in the manner proposed by the examiner would result in the teeth of
the blade being brought into engagement with the unnumbered blade
support illustrated by Enders in Figures 1 and 2, with the
likelihood of damaging the blade and/or the blade support. In
addition, if the orientation of the saw blade in Enders is
Appeal No. 2003-1472
Application No. 09/606,955
3Consistent with appellant’s specification (page 3, lines
28-34) we understand the “cutting direction” to be the direction
in which the saw teeth face, and the “cutting stroke” to be the
direction of travel of the spindle (usually toward the saw
housing) during which the saw blade cuts the workpiece.
15
reversed, the position of the shoe structure 14 and motor housing
11 would make it hard for the operator to see the workpiece being
cut until after the cut was made, thereby making it, at best, very
difficult to achieve an accurate cut. In light of the above, we
consider that the modifications proposed by the examiner would make
Enders unsuitable for its intended purpose, such that it would not
have been obvious to one of ordinary skill in the art to modify
Enders in the manner proposed by the examiner. Ex parte Rosenfeld,
130 USPQ 113, 115 (Bd. App. 1961).
Second, even if the saw blade of Enders was supported to cut
in a direction opposite to that shown in the drawings, the claimed
subject matter would not result. As noted above, each of the
appealed claims, in one form or another, calls for adjusting the
path of travel of the end of the spindle such that the end has a
component of movement in the “cutting direction” of the saw blade
during the “cutting stroke” of the spindle.3 While we appreciate
that Enders provides for adjusting the path of travel of the
spindle, it is not apparent to us that the range of adjustments
Appeal No. 2003-1472
Application No. 09/606,955
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contemplated by Enders would result in the spindle having a
component of movement in the “cutting direction” of the blade
during the “cutting stroke” in the event the saw blade is
reoriented. Stated differently, it appears to us that in order for
the spindle of Enders to have a component of movement in the
“cutting direction” during the “cutting stroke” upon reorientation
of the saw blade in the reverse direction, the guide channel 35 of
Enders would have to be repositioned such that its upper end is to
the right (as viewed in Figure 3) of its lower end, so that when
the spindle moves in the “cutting direction” (toward the housing),
the front end of the spindle would have a rearward component of
movement. As we see it, the path of travel for the spindle that
would ensue from simply reversing the orientation of the saw blade
in Enders would not result in a saw having the claimed paths of
travel unless the saw of Enders is also modified to provide for a
range of adjustment of the guide channel that is not taught or
suggested by the applied reference, either singly or in
combination. The examiner’s position to the effect that a second
path of travel characterized by movement at least partially in the
second (opposite) cutting direction during the second cutting
stroke would follow as a consequence of applying the saw blade
reorienting teachings of Ketchpel to Enders appears to us to be a
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Application No. 09/606,955
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hindsight reconstruction of the claimed subject matter using
appellant’s own disclosure as an instruction manual or template to
piece together the isolated disclosures and teachings of the
applied prior art so that the claimed invention is rendered
obvious. This, of course, is improper. In re Fritch, 972 F.2d
1260, 1266, 23 USPQ2d 1780, 1783 (Fed. Cir. 1992).
In light of the foregoing, we shall not sustain the examiner’s
rejection of claims 6-8, 10, 11, 16-19, 21-25, 27, 35, 36, 76-83,
85-88 and 91-96 as being unpatentable over Enders in view of
Ketchpel.
We have also carefully reviewed the teachings of Palm further
applied in the § 103(a) rejection of claims 9, 34, 84 and 97, and
the teachings of Brucker further applied in the § 103(a) rejection
of claims 89 and 90, but find nothing therein that makes up for the
deficiencies of Enders and Ketchpel discussed above. Accordingly,
we also shall not sustain the examiner’s rejections of these claims
under 35 U.S.C. § 103(a).
Summary
Each of the examiner’s rejections is reversed.
The decision of the examiner finally rejecting the appealed
claims is reversed.
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Application No. 09/606,955
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REVERSED
LAWRENCE J. STAAB )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
LJS/lp
Appeal No. 2003-1472
Application No. 09/606,955
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DAVID B. SMITH
MICHAEL BEST & FRIEDLICH LLP
100 EAST WISCONSIN AVENUE
MILWAUKEE, WI 53202-4108