Ex Parte Patrick et al

Patent Trial and Appeal Board

Nov 13, 2017

12126191 (P.T.A.B. Nov. 13, 2017)

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.
12/126,191 05/23/2008 Robert A. Patrick 020872-9091-US00 5982
78961 7590 11/15/2017
Michael Best & Friedrich LLP (TTi)
100 East Wisconsin Avenue
Suite 3300
Milwaukee, WI 53202
EXAMINER
YANG, JAMES J
ART UNIT PAPER NUMBER
2683
NOTIFICATION DATE DELIVERY MODE
11/15/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
mkeipdocket @MichaelBest.com
IPdeptSC@ttigroupna.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT A. PATRICK, KEITH VAN ARSDALE,
WILLIAM JAMES SAUNDERS, and KUO-LIANG LEON YOONG
Appeal 2015-000464
Application 12/126,191
Technology Center 2600
Before MAHSHID D. SAADAT, JOHN A. EVANS, and
ALEX S. YAP, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1—4, 6, 7 and 11—21, which constitute all the claims pending in this
application.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is Techtronic Power
Tools Technology, Limited (App. Br. 2).
2 Claims 5 and 8—10 have been canceled.
Appeal 2015-000464
Application 12/126,191
STATEMENT OF THE CASE
Appellants ’ Invention
Claim 1 is illustrative of the invention and reads as follows:
1. A system comprising;
a. a power tool including a power tool housing having a
motor to energize the power tool and having a window defined
therein;
b. a battery pack separate from the power tool, selectively
engageable with the power tool, and including a battery pack
housing within which at least one battery cell is disposed; and,
c. a fuel gauge disposed on a portion of the battery pack
housing such that when the battery pack is engaged with the
power tool, the fuel gauge is registered with and visible through
the window;
wherein the fuel gauge is located on one of
a stem of the battery pack, the stem extending
away from the at least one battery cell, having electrical
terminals, and being mateable through insertion into a
receiving portion of a handle of the power tool, and
a rail of the battery pack, the rail extending along
the battery pack housing, having electrical terminals, and
being mateable through sliding engagement with a
receiving portion of a handle of the power tool.
The Examiner’s Rejections
The Examiner’s Answer relies on the following prior art references:
Lui
Kovarik
Horigome
Ito
US 2004/0029426 A1
US 2004/0046673 A1
US 2004/0150368 A1
US 2006/0214627 A1
Feb. 12, 2004
Mar. 11,2004
Aug. 5, 2004
Sept. 28, 2006
Claims 15 and 16 stand rejected under 35 U.S.C. § 112 (Pre-AIA),
second paragraph, as being indefinite for failing to particularly point out and
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Application 12/126,191
distinctly claim the subject matter which the Appellants regard as the
invention (see Final Act. 3).
Claims 11—17 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Ito (see Final Act. 4—6).
Claims 1,3,4, 6, and 7 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Horigome and Lui (see Final Act. 7—10).
Claim 2 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Horigome, Lui, and Kovarik (see Final Act. 10-11).
Claims 18—21 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ito (see Final Act. 11—13).
ANALYSIS
Rejection under 35 U.S.C. §112, Second Paragraph
The Examiner rejects claims 15 and 16 under 35 U.S.C. § 112 (Pre-
AIA), second paragraph, as “being indefinite” (Final Act. 3). In particular,
as to claim 15, the Examiner finds that the claim “recites that the trigger is
positioned between the window and the body,” wherein the position of the
body portion and whether the handle portion is a part of the body portion are
not explicitly defined (id.). Similarly, the Examiner finds claim 16 recites
“the body and handle are ‘generally tubular,’” which is not defined and fails
to adequately describe the metes and bounds of the invention that applicant
is attempting to claim (id.).
We disagree with the Examiner’s conclusion that the claims are
unclear. The test for definiteness under 35 U.S.C. § 112 is whether “those
skilled in the art would understand what is claimed.” Orthokinetics, Inc., v.
Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations
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omitted). In particular, breadth is not indefiniteness provided the skilled
artisan is reasonably apprised of the meaning of the claim. Metabolite Labs.,
Inc. v. Lab. Corp. of Am. Holdings, 370 F.3d 1354, 1366 (Fed. Cir. 2004).
We agree with Appellants that claim 11, the base claim from which
claims 15 and 16 depend, requires a body, a handle, and a trigger on the
handle, whereas claim 15 defines the relative positions of the trigger and the
window on the handle (see App. Br. 6—7). As further stated by Appellants,
“because the body and handle are two distinctly claimed portions of the
housing, with the handle coupled to the bottom of the body, the Examiner's
interpretation is contrary to the plain, unambiguous language of claim 15”
(App. Br. 7). Therefore, we are persuaded the Examiner erred in rejecting
claims 15 and 16 under 35 U.S.C. § 112, second paragraph.
Rejection under 35 U.S.C. § 103 over Horigome andLui
We have reviewed the Examiner’s rejections in light of Appellants’
arguments (App. Br. 7—20; Reply Br. 4—9) that the Examiner erred. We
disagree with Appellants contentions. We adopt as our own (1) the findings
and reasons set forth by the Examiner in the action from which this appeal is
taken (Final Act. 7—13) and (2) the reasons set forth by the Examiner in the
Examiner’s Answer (Ans. 4—7) in response to Appellants’ Appeal Brief. We
concur with the conclusions reached by the Examiner. We highlight and
address specific findings and arguments for emphasis as follows.
Claim 1
Appellants contend that the combination of the references does not
disclose or suggest “a system comprising ... a power tool including a power
tool housing having a motor and ... a window . . .” recited in claim 1 (App.
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Br. 7). Appellants argue Horigome does not disclose a power tool including
a housing having a motor and a window whereas Lui merely discloses a
battery pack for a power tool, but not a power tool housing having both a
motor and a window, as required by claim 1 (App. Br. 8—10). Appellants
further contend the applied prior art does not teach or suggest “a system
comprising a fuel gauge located on a stem of a battery pack or a rail of a
battery pack” (App. Br. 12). Appellants assert the battery cover 903 of
Horigome is not a stem of the battery pack nor inserted into a receiving
portion of the printer, whereas the fuel gauge of Lui is not located on a stem
of the battery pack (see App. Br. 12—14). Appellants further argue that any
modification to arrive at the placement of the fuel gauge on the battery pack
would have required hindsight (App. Br. 14).
In response, the Examiner explains Horigome was relied on as
disclosing a separate battery pack for energizing a device including a joint
housing and a window that shows the level of charging (Final Act. 7—8; Ans.
4—5 (citing Horigome Fig. 5, 5, 43, 50—51, 61)). The Examiner further
finds the functionalities described in Horigome would be applicable to the
power tool disclosed in Fui which includes a battery pack attached to a
receiving portion on the handle of the power tool (Final Act. 8—9; Ans. 5—6).
According to the Examiner, battery charger 900 of Horigome includes a
cover or housing that extends away from the battery and meets the “stem”
limitation of the claim (Ans. 5—6).
Contrary to Appellants’ contention that the Examiner erred in
characterizing charger 900 of Horigome as the claimed stem (Reply Br. 5),
we understand the Examiner’s rejection to be based on how one of ordinary
skill in the art would have modified Horigome and applied the described
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functionalities with respect to the battery pack, housing, and window for
showing the fuel gauge to the power tool of Lui, consistent with the
guidelines stated in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007)
(see also Ans. 6). Indeed, the Supreme Court has indicated that:
[It is error to] assum[e] that a person of ordinary skill attempting
to solve a problem will be led only to those elements of prior art
designed to solve the same problem. . . . Common sense teaches
. . . that familiar items may have obvious uses beyond their
primary purposes, and in many cases a person of ordinary skill
will be able to fit the teachings of multiple patents together like
pieces of a puzzle.
KSR, 550 U.S. at 420 (citation omitted). Additionally, the Examiner
properly relies on In re Keller and states the “one cannot show
nonobviousness by attacking references individually where the rejections are
based on combinations of references” (Ans. 4; In re Keller, 642 F.2d 413,
426 (CCPA 1981)). Further, when combining references, “a court can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ.” See KSR, 550 U.S. at 418. As such, the Examiner’s
articulated rationale is sufficient to justify this combination because the
proposed modification would merely require the ordinarily skilled artisan to
use common sense to appreciate that the functionalities disclosed by
Horigome would have improved other devices, such as a power tool
disclosed in Fui. See KSR, 550 U.S. at 417—18.
Additionally, we agree with the Examiner (Ans. 6) that Appellants’
contention that the combination of Horigome with Lui is based on improper
hindsight reasoning does not present persuasive evidence that the
Examiner’s rejection is based on knowledge gleaned only from Appellants’
disclosure, or based on knowledge which was beyond the level of ordinary
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skill in the art at the time. (See In re McLaughlin, 443 F.2d 1392, 1395
(CCPA 1971)). We are satisfied that the Examiner has provided “some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness,” which is based on knowledge available to one
of ordinary skill in the art. (See KSR, 550 U.S. at 417—18 (quoting In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).)
Claim 3
Appellants argue the combination of Horigome and Lui does not
disclose the recited limitation “wherein upon actuation of the motor the fuel
gauge displays a condition of the battery pack” (App. Br. 14). The
Examiner correctly finds Horigome discloses the fuel gauge displays the
battery condition when the printer is engaged in the cradle, which is the
position when the printer is activated (Final Act. 9 (citing Horigome 43,
47, 65)). We, therefore, are unpersuaded by Appellants’ argument that the
Examiner’s erred.
Claim 2
Appellants argue the combination of Kovarik with Horigome and Lui
does not disclose the recited limitation related to a latching mechanism for
securing the battery pack “wherein the latching mechanism includes at least
one button such that upon actuation of the button the fuel gauge displays a
condition of the battery pack,” as recited in claim 2 (App. Br. 15). We are
also unpersuaded of Examiner error because the latching mechanism of
Kovarik, in combination with Horigome and Lui, provides for the “button”
that is activated upon latching the pack, and indicates a property of the
battery condition (see Final Act. 10—11; Ans. 6—7).
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Rejections under 35 U.S.C. §§ 102 and 103 over Ito
With respect to the 35 U.S.C. § 102(b) rejection of independent claim
11 and dependent claims 12—17 and the 35 U.S.C. § 103(a) rejection of
claims 18—21, we are unpersuaded by Appellants’ contentions. We adopt as
our own (1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken (see Final Act. 4—6, 11—13) and (2) the
rebuttals to arguments expressed by the Examiner in the Examiner’s Answer
in response to Appellants’ Appeal Brief (see Ans. 7—8). We concur with the
conclusions reached by the Examiner. We highlight and address specific
findings and arguments for emphasis as follows.
Claim 11
Appellants contend Ito does not disclose the recited power tool having
“a window defined within the handle lof the power tool!, wherein upon the
power tool receiving the battery pack [having a fuel gauge] the fuel gauge is
registered with and visible through the window” (App. Br. 16). The
Examiner has identified the relevant portions of Ito and has properly mapped
the claimed fuel gauge that is visible through the window to voltage
indicator 32 in Figure 2 (Final Act. 4—5). As further explained by the
Examiner, the entire device in Figure 3, including the battery pack, which is
effectively a part of the handle when the battery is connected to the power
tool, may be reasonably interpreted as the power tool wherein the voltage
indicator 32 of Ito shows through a window defined within the handle of the
power tool (see Ans. 7 (citing Ito Figs 2— 3)).
Claim 14
Appellants contend Ito does not disclose the recited “wherein the
window is positioned between a bottom end of the handle and the trigger,”
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as recited in claim 14 (App. Br. 18). As found by the Examiner, Figure 3 of
Ito shows Window 25 is positioned between the bottom end of the handle
and trigger switch 112 (Final Act. 5). Additionally, as discussed above with
respect to claim 11, the battery pack is effectively a part of the handle when
the battery is connected to the power tool.
Claim 17
Appellants contend Ito does not disclose the recited “wherein the
handle has a first end and a second end, the first end coupled to the bottom
body portion, the second end including the window” (App. Br. 18). Similar
to the analysis made with respect to claim 14, the Examiner properly finds
“the handle is interpreted as the portion of the tool starting from below the
motor M to the bottom battery pack 200, but also including the trigger 112
connected thereto” (Final Act. 6 (citing Fig. 3)).
Claim 18
Appellants contend “Ito does not disclose, teach, or suggest ‘a hand­
held power tool comprising ... a window defined within one or both the
first side handle surface [of a handle] and a second side handle surface [of
the handle], the window positioned to provide a visible light path into a
battery receptacle [of the handle]’” (App. Br. 19). The Examiner finds it
would have been obvious to one of ordinary skill in the art “to move the
indication unit to one of the side surfaces of the battery pack as a matter of
design/engineering choice” (Final Act. 12—13). As further explained by the
Examiner (Ans. 8), consistent with Appellants’ Figure 2 that shows passage
of visible light through the window, the indicator window of Ito is capable
of providing a visible light path into the battery receptacle (Ans. 8).
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Claim 21
Similar to the argument presented for claim 17, Appellants contend
that Ito does not disclose the limitation of claim 21 (App. Br. 20). For the
same reason discussed above, we are unpersuaded of error in rejecting claim
21.
CONCLUSION
On the record before us, we conclude that the Examiner has erred in
rejecting claims 15 and 16 under 35 U.S.C. § 112 (Pre-AIA), second
paragraph, but not erred in rejecting claims 11—17 as being anticipated under
35 U.S.C. § 102 and claims 1—4, 6, 7, and 18—21 as being unpatentable
under 35 U.S.C. § 103(a).
DECISION
We affirm the Examiner’s decision to reject claims 1—4, 6, 7 and 11—
21.
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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