Ex Parte Pedicini et al

Patent Trial and Appeal Board

May 12, 2014

11774943 (P.T.A.B. May. 12, 2014)

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.
11/774,943 07/09/2007 Christopher Pedicini IPX07PEDI001 4163
62973 7590 05/13/2014
JAY M. SCHLOFF
6960 Orchard Lake Road
Suite 250
West Bloomfield, MI 48322
EXAMINER
LOPEZ, MICHELLE
ART UNIT PAPER NUMBER
3721
MAIL DATE DELIVERY MODE
05/13/2014 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte CHRISTOPHER PEDICINI and JOHN WITZIGREUTER
____________

Appeal 2012-003980
Application 11/774,943
Technology Center 3700
____________

Before: WILLIAM A. CAPP, BART A. GERSTENBLITH and
FRANCES L. IPPOLITO, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2012-003980
Application 11/774,943
- 2 -

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1-16 and 21-31. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
THE INVENTION
Appellants’ invention relates to portable nail guns. Spec. 1. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. A fastener driving apparatus, comprising:
a power source;
a motor electrically connected to the power source;
a first cylinder comprising
a first piston reciprocally movable within the first cylinder, the
first piston defining a gas chamber within the first cylinder, the gas
chamber capable of accommodating gas therein;
a first cylinder end cap configured at a first end of the first
cylinder, the first cylinder end cap configuring the gas chamber
between the cylinder guide, the first piston and the first cylinder end
cap, the first cylinder end cap having a hollow portion,
a slider crank arrangement driven by the motor, the slider crank
arrangement operationally coupled to the first piston and configured to
cause the first piston to reciprocally move within the first cylinder;
a second cylinder comprising
a cylinder guide,
a second piston disposed within the cylinder guide, the second
piston having a front face and a rear face, and
an anvil coupled to the rear face of the second piston, wherein
the second piston is capable of linearly moving within the cylinder
guide, thereby enabling the anvil to move in a driving direction; and
a valve arrangement operationally disposed between the first
cylinder and the second cylinder, the valve arrangement defining a gas
passageway for communicating the gas from the first cylinder to the
Appeal 2012-003980
Application 11/774,943
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second cylinder and the valve arrangement capable of assuming one of
an open position and a closed position;
wherein the gas received within the gas chamber is compressed by
the first piston in a single stroke of the slider crank arrangement in a
manner such that the compressed gas is communicated into the second
cylinder through the gas passageway of the valve arrangement, causing
the compressed gas to expand in the second cylinder thereby causing
the second piston to move linearly and enabling the anvil to drive a
fastener into a substrate in the driving direction in the single stroke of
the slider crank arrangement.

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:

The following rejections are before us for review:
1. Claims 1, 3, 4, 9, 10, 14, 15, 21, 27 and 28 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Perkins, Matsuo ‘902, and
Matsuo ‘992.
2. Claims 2 and 16 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Perkins, Matsuo ‘902, Matsuo ‘992, and Ikuta.
3. Claims 5-8, 11, 22-26 and 29 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Perkins, Matsuo ‘902, Matsuo ‘992, and Kim.
4. Claims 12 and 30 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Perkins, Matsuo ‘902, Matsuo ‘992, and Pedicini.
Perkins
Matsuo ‘992
Matsuo ‘902
Kim
Pedicini
Ikuta
Beer
US 3,771,710
US 3,821,992
US 3,878,902
US 6,755,630 B2
US 6,769,593 B2
US 6,907,943 B2
US 7,182,062 B2

Nov. 13, 1973
Jul. 2 , 1974
Apr. 22, 1975
Jun. 29, 2004
Aug. 3, 2004
Jun. 21, 2005
Feb. 27, 2007
Appeal 2012-003980
Application 11/774,943
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5. Claims 13 and 31 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Perkins, Matsuo ‘902, Matsuo ‘992, and Beer.

OPINION
Unpatentability of
Claims 1, 3, 4, 9, 10, 14, 15, 21, 27 and 28
Over Perkins, Matsuo ‘902, and Matsuo ‘992
The Examiner finds that Perkins discloses a fastener driving apparatus
with two cylinders, a valve arrangement, and a piston that enables an anvil to
drive a fastener into a substrate. Ans. 5. The Examiner acknowledges that
Perkins’ first cylinder lacks a reciprocating piston. Id. The Examiner relies
on Matsuo ‘902 as disclosing a pneumatically driven power tool with a
motor that drives a slider crank coupled to a first reciprocating piston that
defines a gas chamber in a cylinder. Id. The Examiner concludes that it
would have been obvious to a person of ordinary skill in the art at the time
of the invention to substitute Matsuo ‘902’s reciprocating piston air
compressor for the external compressed air source of Perkins. Ans. 6.
According to the Examiner, such would be merely a matter of substituting
one known element for another with predictable results. Id.
The Examiner acknowledges that Perkins fails to disclose
compressing gas in a single piston stroke and then communicating such
compressed gas to a second cylinder through a valve passageway. Ans. 6.
The Examiner relies on Matsuo ‘992 as disclosing a pneumatic device that
communicates compressed air from a first cylinder to a second cylinder
through a valve arrangement in relation to a single stroke of a first piston.
Ans. 6-7. The Examiner concludes that it would have been obvious to a
person of ordinary skill in the art at the time of the invention to have
Appeal 2012-003980
Application 11/774,943
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provided the modified invention of Perkins with a piston and valve
arrangement as taught by Matsuo ‘992 to generate a drive stroke in a second
piston with a single stroke of the first piston. Ans. 7.
Appellants traverse the Examiner’s rejection by arguing that Matsuo
‘902 is a device for continuous impacting (e.g., a jack hammer), which is
distinguishable from devices that drive nails. App. Br. 7-8. Appellants
argue that the differences between the features and operation of Perkins and
Matsuo ‘902 are so substantial, particularly with respect to their operational
cycles, that a person of ordinary skill in the art would not combine the two
references in the manner asserted by the Examiner with a reasonable
expectation of success. App. Br. 9-10; Reply Br. 4. We agree with
Appellants.
The Examiner errs in concluding that replacing Perkins’ external
compressed air source with a reciprocating piston air compressor is merely a
matter of substituting one known element for another with predictable
results. Driving a nail with Appellants’ nail gun is a discrete event. The
operator pulls the trigger, the slider crank cycles the first piston, the first
piston compresses air that passes through the valve arrangement, and then
the second piston and anvil drive a nail into a substrate. Spec. para. [0017]-
[0018]. Thus, in Appellants’ invention, the operational cycle is controlled
by the operator to drive individual nails into the substrate one at a time, each
nail being driven through a chain of events initiated by a single stroke of the
first piston. Id. It is one thing to drive a nail using a continuous source of
compressed air as in Perkins, however, it is a different matter to coordinate
the delivery of compressed air to drive a nail with a single stroke of a crank
driven piston arrangement.
Appeal 2012-003980
Application 11/774,943
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Perkins receives a continuous supply of compressed air though an
external supply line. See Perkins, fig. 1, element C. Perkins’ trigger valve
44 is not configured to effectuate a stroke by a second piston to drive a nail
into a substrate in response to a single stroke by a reciprocating air
compressor piston driven by a slider crank and motor. Furthermore, the
drive pistons of Matsuo ‘902 and Matsuo ‘992 cycle continuously and
repeatedly without coordinating with attendant features to load individual
nails and drive them into a substrate. Thus, the drive pistons of Matsuo ‘902
and Matsuo ‘992 also are not configured to compress air and deliver
compressed air through a valve arrangement to effectuate the driving of
individual nails into a substrate with a single stroke of a slider crank and
piston arrangement.
The Examiner erred in concluding that a person of ordinary skill in the
art would have been able to combine Perkins with Matsuo ‘902 and Matsuo
‘992 to create a pneumatic nail gun with a reciprocating air compressor
piston as claimed in claims 1 and 14. Accordingly, we do not sustain the
Examiner’s unpatentability rejection of claims 1 and 14; neither do we
sustain the rejection of claims 3, 4, 9, 10, 15, 21, 27 and 28 that depend
therefrom.
Unpatentability of Claims 2, 5-8, 11-13, 16, 22-26 and 29-31
Claims 2, 5-8, 11-13, 16, 22-26 and 29-31 depend directly or
indirectly from either claim 1 or claim 14. Clms. App’x. The Examiner’s
rejections of these claims rely on Perkins, Matsuo ‘902, and Matsuo ‘992 in
combination with various other references. Ans. 8-12.
The Examiner’s findings with respect to the other references do not
overcome the deficiencies that we have noted above with respect to
Appeal 2012-003980
Application 11/774,943
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independent claims 1 and 14. Accordingly, we do not sustain the rejection
of claims 2, 5-8, 11-13, 16, 22-26 and 29-31.
DECISION
The decision of the Examiner to reject claims 1-16 and 21-31 is
REVERSED.
REVERSED

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