Ex Parte Ogawa et al

Patent Trial and Appeal Board

Sep 24, 2012

10564761 (P.T.A.B. Sep. 24, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TATSUSHI OGAWA, NORIMITSU SEKIGUCHI,
and HIROKI YAMAMOTO
____________

Appeal 2010-006895
Application 10/564,761
Technology Center 3700
____________

Before STEFAN STAICOVICI, JAMES P. CALVE, and
SCOTT A. DANIELS, Administrative Patent Judges.

CALVE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the rejection of claims
1 and 3-21. App. Br. 2. Claim 2 has been cancelled. App. Br. 2. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appeal 2010-006895
Application 10/564,761

2
CLAIMED SUBJECT MATTER
Claim 1 is illustrative of the claimed subject matter on appeal:
1. A power-driven nailing machine comprising:
a driving cylinder;
a driving piston slidably housed within the driving
cylinder;
a driver coupled with the driving piston;
a nose body having a lower end with a nail discharge
port; and
a contact nose arranged to be protrusively urged toward a
leading end of the nose body, the contact nose having an upper
end and a leading end, including a cylindrical portion formed at
its upper portion such that the cylindrical portion defines a
circular cylindrical bore having a longitudinal axis and a
substantially uniform cross section transverse to the
longitudinal axis, the circular cylindrical bore extending from
an interior of the contact nose to an upper end surface
substantially transverse to the longitudinal axis of the upper
end, the nose body being housed in the circular cylindrical bore
such that the contact nose is held slidably along the nail
discharge port of the nose body,
wherein the contact nose includes a leading end
discharge port for guiding a nail driven from the leading end
discharge port toward a work, and the leading end discharge
port includes a guide portion longer than the nail.

REJECTIONS
Claims 1 and 3-7 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite.
Claims 1 and 3-21 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Kubo (JP 2002337066; pub. Nov. 26, 2002).1

1 Corresponds to Kubo (US 6,578,750 B2; iss. Jun. 17, 2003). See Ans. 3.
Appeal 2010-006895
Application 10/564,761

3
ANALYSIS
Claims 1 and 3-7 as indefinite
The Examiner found that the term “circular cylindrical bore” in claim
1 is indefinite because it is unclear how the circular cylindrical bore extends
from an interior of the contact nose to an upper end surface substantially
transverse to the longitudinal axis of the upper end. Ans. 3. The Examiner
also found that it is difficult to discern what is meant by an interior of the
contact nose and also is unclear how the cylindrical area extends from an
interior of the contact nose because it appears that no element extends from
an interior of the contact nose. Ans. 7.
We agree with Appellants that a skilled artisan would understand what
is claimed when claim 1 is read in light of Appellants’ Specification, which
discloses a nailing machine with a contact nose 13 with a cylindrical portion
at its upper portion and the cylindrical portion defines a circular cylindrical
bore 13a that extends longitudinally from an interior of the contact nose to
an upper end surface that is transverse to the longitudinal axis of the contact
nose. See Spec. 8, l. 22 to 9, l. 3; figs. 1-4; Reply Br. 2. As such, we cannot
sustain the rejection of claims 1 and 3-7 as indefinite.
Claims 1 and 3-21 as anticipated by Kubo
Claims 1 and 3-7
The Examiner found that Kubo discloses a nailing machine as recited
in claim 1 with a nose body 26 having a lower end with a nail discharge port
25 and a contact nose 34 urged towards a leading end of the nose body 26.
Ans. 3. The Examiner also found that Kubo discloses a contact nose 34 with
an upper end having a cylindrical portion that defines a circular cylindrical
bore with a longitudinal axis and a substantially uniform cross section such
App
App

that
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2 The
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eal 2010-0
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the nose b
34. Id. T
d closed-lo
idered “cir
7. The Ex
re 6 of Ku
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tated illus
eproduced
Figure 6
We agre
ding a cyl
tantially un
ose body
act nose th

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tes the co
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he circular
und that K
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hat the por
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within “U
at Kubo do
defines a c
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ntact nose
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an absolu
tion of the
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to the lon
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s to have e
top. Col.
al bore of
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of the bor
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age 5 of th
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The porti
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rased the
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Appeal 2010-006895
Application 10/564,761

5
portion of the nose body 26. Instead, nose body 26 is housed within the
“Upper end” of the contact nose that includes a ramped escape portion 45,
the cross section of which increases along the contact nose 37 until the
ramped portion ends in an open portion. The Examiner’s interpretation of
the term “circular” as encompassing such a configuration is unreasonably
broad and inconsistent with Appellants’ Specification, which discloses that
the upper portion of the contact nose 13 has a cylindrical area 13a with a
large diameter formed therein to accommodate the lower end of the nose
body 6 in the cylindrical area 13a. Spec. 8, l. 22 to 9, l. 3; figs. 2-5. As
such, we cannot sustain the rejection of claims 1 and 3-7.
Claims 8-21
The Examiner found that Kubo discloses a nailer with a nose body 26
and a contact nose having a hollow member with proximal and distal ends
where the end of the nose body 26 is “circumferentially received within the
proximal end of the hollow member” of the contact nose and the contact
nose circumferentially surrounds the nose body 26. Ans. 4, 8.
Appellants argue claims 8-16 and 18-21 as a group and separately
argue claim 17. App. Br. 8-10. We select claim 8 as representative and
address Appellants’ arguments as to claim 17. Appellants argue that Kubo
fails to disclose a nose body that is circumferentially received within the
proximal end of a hollow member of the contact nose because the proximal
end of hollow member 45 does not surround the nose body 26. App. Br. 9.
We agree with the Examiner that Kubo discloses a nose body 26 with
a fourth end (distal end of nose body 26 as shown in Figure 6 of Kubo) that
is circumferentially received within the proximal end of the hollow member
App
App

of th
by le
recei
in Fi
the h
bore
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agre
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perim
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(11th
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e contact n
ad line 45
ves the fou
gure 6. W
Claim 17
ollow mem
defined by
mferentia
iner foun
e with App
aped cross
ot be cons
ich is rep
Figure 5
contact no
portion 26
scape port
, we canno

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ed. 2005)
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rth end o
e sustain t
depends
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the inner
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d that Kub
ellants tha
-section w
idered “cir
roduced be
is a sectio
se top 37 i
to have a
ion 45 of t
t sustain t

customary
circle” or “
ery”. See
.
led for in c
6 forms a
f the nose
he rejectio
from claim
e contact n
surface an
d within th
o disclose
t the prox
ith guide
cular”. K
low:
nal view o
s configur
nail-picku
he upper c
he rejectio

meaning
the extern
MERRIAM
6
laim 8.3 T
hollow me
portion 26
n of claim
8 and rec
ose compr
d the four
e first circ
s this featu
imal end o
grooves 43
ubo illustr
f the cont
ed this wa
p inclined
ontact nos
n of claim
of “circum
al bounda
-WEBSTER
he rampe
mber that
(i.e., the d
s 8-16 and
ites that th
ises “a fir
th end of t
ular cylin
re. Ans.
f the conta
and an es
ates this ar

act mechan
y to allow
surface 4
e 37. Col
17.
ference” i
ry or surfa
’S COLLEG
d portion d
circumfer
istal end)
18-21.
e proxima
st circular
he nose bo
drical bore
5 (citing F
ct nose 37
cape porti
rangemen
ism of Ku
the lower
4 and pass
. 5, ll. 39-5
ncludes “t
ce of a fig
IATE® DIC
esignated
entially
as shown
l end of
cylindrica
dy is
.” The
ig. 1). We
forms a
on 45 and
t at Figure
bo.
side of the
through
0. As
he
ure or
TIONARY

l

Appeal 2010-006895
Application 10/564,761

7
DECISION
We REVERSE the rejection of claims 1 and 3-7 as indefinite.
We AFFIRM the prior art rejection of claims 8-16 and 18-21 and
REVERSE the prior art rejection of claims 1, 3-7, and 17.

AFFIRMED-IN-PART

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