Ex Parte Parks et al

Board of Patent Appeals and Interferences

Sep 26, 2007

11044945 (B.P.A.I. Sep. 26, 2007)

The opinion in support of the decision being entered today was 1
not written for publication and is not binding precedent of the Board. 2
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UNITED STATES PATENT AND TRADEMARK OFFICE 5
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BEFORE THE BOARD OF PATENT APPEALS 8
AND INTERFERENCES 9
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Ex parte JAMES R. PARKS, BRIAN P. WATTENBACH, 12
and 13
STEVEN A. SHULL 14
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Appeal No. 2007-0703 17
Application No. 11/044,945 18
Technology Center 3700 19
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Decided: September 26, 2007 22
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Before WILLIAM F. PATE, III, TERRY J. OWENS, and JENNIFER D. BAHR, 25
Administrative Patent Judges. 26
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PATE, III, Administrative Patent Judge. 28
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DECISION ON APPEAL 31
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STATEMENT OF THE CASE 34
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This is an appeal from the final rejection of claims 1-13. These are the only 36
claims in the application. We have jurisdiction under 35 U.S.C. §§ 134 and 6(a). 37
Appeal 2007-0703
Application 11/044,945

2

Appellants claim a miter saw with a bevel stop mechanism for determining 1
the lateral position of the saw assembly at a plurality of pivoted positions. The 2
bevel stop mechanism comprises a movable rod and first, second, and third fixed 3
stop members. The first, second, and third fixed stop members provide a first and 4
second range of pivoted positions which positions partially coincide. 5
Claim 1, reproduced below, is further illustrative of the claimed subject 6
matter. 7
1. A miter saw comprising: 8
a table on which a workpiece is placed; 9
a saw assembly supporting a saw blade and having a motor for 10
rotatably driving the saw blade; 11
a housing pivotally supporting the saw assembly related to the table in 12
such a manner that the saw assembly is at least laterally pivotable; and 13
a bevel stop mechanism for selectively determining the lateral 14
position of the saw assembly at any of a plurality of pivoted positions, the 15
bevel stop mechanism comprising a movable rod and first, second and third 16
fixed stop members, 17
wherein the rod is movable between a first position where the rod can 18
contact the first and second fixed stop members, but not the third fixed stop 19
member, defining a first range of pivoted positions, and a second position 20
where the rod can contact the first and third fixed stop member, but not the 21
second fixed stop member, defining a second range of pivoted positions, 22
wherein the first and second range of pivoted positions partially coincide. 23
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The reference of record relied upon by the Examiner as evidence of 25
anticipation is: 26
Stumpf US 5,907,987 Jun. 1, 1999 27
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Claims 1-13 stand rejected under 35 U.S.C. § 102 as anticipated by 29
Stumpf. 30
Appeal 2007-0703
Application 11/044,945

3

ISSUE 1
The sole issue for consideration on appeal is whether the subject matter of 2
claims 1-13 is anticipated by the disclosure of Stumpf. 3
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PRINCIPLES OF LAW 5
The prior art may anticipate a claimed invention, and thereby render it 6
non-novel, either expressly or inherently. In re Cruciferous Sprout Litig., 301 F.3d 7
1343, 1349, 64 USPQ2d 1202, 1206 (Fed. Cir. 2002), cert. denied, 538 U.S. 907 8
(2003). Express anticipation occurs when the prior art expressly discloses each 9
limitation (i.e., each element) of a claim. Id. In addition, “[i]t is well settled that a 10
prior art reference may anticipate when the claim limitations not expressly found in 11
that reference are nonetheless inherent in it.” Id. 12
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FINDINGS OF FACT 14
Stumpf discloses a bevel stop mechanism for a miter saw. Also, it is noted 15
that counsel for Appellants is one of the named inventors in the Stumpf 16
application, therefore Appellants’ counsel has some familiarity with the subject 17
matter disclosed in Stumpf. The Examiner and Appellants have each provided this 18
Panel with annotated drawings of Stumpf’s Fig. 19. The Appellants’ drawing 19
purports to show that there is no overlap between the first range of positions and 20
the second range of positions, whereas the Examiner’s annotated drawing purport 21
to show that there is some slight overlap. The embodiment of Stumpf illustrated in 22
Fig. 19 utilizes a step 122 on the distal end of a stop rod 84. (Stumpf, col. 8, l. 61). 23
As shown in Fig. 19, the step 122 is provided so that upon rotation of rod 84 the 24
step 122 will either bypass or contact the stop 88a. Stop 88a in this context is the 25
claimed first fixed member. 26
Appeal 2007-0703
Application 11/044,945

4

On page 4 of the Examiner’s Answer, the Examiner states that the ranges 1
illustrated in the Appellants’ diagram of Fig. 19 appear to be based on arbitrarily 2
picked locations of the stop rod 84. The Examiner states “[f]or example, the first 3
range is defined from a contact location of the rod surface and the second fixed 4
member to a midsection of the rod at the first fixed member.” The Examiner 5
reckons this to be an error. However, it can be seen that since the first fixed 6
member 88a in Fig. 19 contacts step 122 on stop rod 84, the correct delimited 7
position of the range of motion is with the first fixed member 88a contacting 8
someplace near the center of stop rod 84. Accordingly, we are convinced that the 9
two ranges of positions illustrated in the Appellants’ diagram are correct and that 10
there is no overlap of these ranges of positions illustrated in Fig. 19 of Stumpf. 11
We are unable to determine, and the Examiner has not discussed, the range 12
of motion with respect to the first embodiment of Stumpf. However, since the only 13
issue raised by the Examiner is with respect to Fig. 19, our decision is bottomed on 14
the finding that Fig. 19 does not show a partial overlap of the first and second 15
range. Accordingly, the Examiner has not established that the claimed subject 16
matter lacks novelty over the disclosure of Stumpf. 17
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Appeal 2007-0703
Application 11/044,945

5

CONCLUSION 1
Inasmuch as the Examiner has not established that claims 1-13 lack novelty 2
over the Fig. 19 embodiment of Stumpf, the rejection of claims 1-13 is reversed. 3
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REVERSED 5
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THE BLACK & DECKER CORPORATION 24
701 EAST JOPPA ROAD, TW199 25
TOWSON, MD 21286 26