Ex Parte Pellenc

Patent Trial and Appeal Board

Sep 28, 2016

12527676 (P.T.A.B. Sep. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/527,676 11104/2009
24106 7590 09/29/2016
Egbert Law Offices, PLLC
1001 Texas Ave., Suite 1250
HOUSTON, TX 77002
FIRST NAMED INVENTOR
Roger Pellenc
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
1811-276 7103
EXAMINER
PRONE, JASON D
ART UNIT PAPER NUMBER
3724
MAILDATE DELIVERY MODE
09/29/2016 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)
U-NITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROGER PELLENC
Appeal2015-000190
Application 12/527,676
Technology Center 3700
Before MICHAEL L. HOELTER, JEFFREY A. STEPHENS, and
MARK A. GEIER, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) from the
Examiner's Final Office Action ("Final Act.") rejecting claims 23-25, which
are all the claims pending in the application. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.
1 The real party in interest is identified as PELLENC (Societe Anonyme ).
App. Br. 5.
Appeal2015-000190
Application 12/527,676
Claimed Subject Matter
Claim 23, reproduced below, is illustrative of the claimed subject
matter.
23. A chain saw apparatus comprising:
a guide bar;
a drive sprocket;
an endless cutting chain mounted over said guide bar and
said drive sprocket;
a drive motor drivingly connected to said drive sprocket
so as to cause said drive sprocket to move said endless chain over
said guide bar, said drive motor being electric;
a storage tank suitable for receiving a lubricating fluid
therein;
a pump cooperative with said storage tank so as to deliver
the lubricating fluid toward said guide bar and to said endless
cutting chain; and
an electric motor drivingly connected to said pump, said
electric motor being operable independently of said drive motor.
Rejections
Claim 23 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Newman2 and Svensson.3 Final Act. 2-3.
Claims 24 and 25 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Newman, Svensson, and Pellenc.4 Final Act. 3--4.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
arguments (App. Br. 14--21). We are not persuaded by Appellant's
2 US 4,884,340, issued Dec. 5, 1989.
3 US 6, 178,960 B 1, issued Jan. 30, 2001.
4 US 5,002,135, issued Mar. 26, 1991.
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Application 12/527,676
arguments. We adopt as our own the findings and reasons set forth by the
Examiner in the action from which this appeal is taken and set forth in the
Answer (see Ans. 4--5). We highlight and address specific arguments and
findings for emphasis as follows.
Appellant argues it would not have been obvious to one skilled in the
art to replace the manual pump of Newman with a pump driven by an
independently operable electric motor. App. Br. 14. Appellant contends
that the claimed chain saw, specifically one with a motor for pumping the
lubricating fluid that is independently operable from the drive motor, allows
for improved efficiency and is a significant advantage over the prior art. Id.
at 14--17. Appellant argues Newman does not teach independently operable
motors, but rather teaches only one drive motor. Id. at 17-18. Appellant
acknowledges, however, that Newman teaches a thumb-operated pump that
provides for lubrication of the chain. Id. at 18 (citing Newman col. 4, 11. 50-
59). Appellant contends that one of ordinary skill in the art would only
envision a single motor as in Newman and Svensson, and that the most
obvious modification of Newman would be to power the lubrication pump
with the same motor used to power the chain saw. Id. at 19-20.
Appellant's arguments do not apprise us of error in the rejection. As
the Examiner finds, Newman's manual pump is operated independently of
the drive motor, and thus confers the benefits of the operator being able to
control lubrication of the chain independently from the drive motor. Final
Act. 3; Ans. 4--5. We agree with the Examiner that modifying the manual
pump to instead be driven by an electric motor involves only routine skill
and effectively automates a manual activity. Final Act. 3; Ans. 5. Using
automation for manually-operated methods is commonplace and uses the
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Application 12/527,676
common sense of an ordinarily skilled artisan. Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007) ("Applying modem
electronics to older mechanical devices has been commonplace in recent
years."); see also In re Venner, 262 F.2d 91, 95 (CCPA 1958)
("Furthermore, it is well settled that it is not 'invention' to broadly provide a
mechanical or automatic means to replace manual activity which has
accomplished the same result."). The Examiner further reasons:
Basically it is old and well known for motor driven systems to be
condensed with a single motor to control all of the motor driven
parts and it is just as obvious to provide a motor driven system
with an independent motor for each motor driven part.
Ans. 5. We agree with the Examiner that the advantages and disadvantages
of driving the chain and lubricating pump with one motor or separate motors
would have been recognized by one of ordinary skill in the art. Thus,
replacing the manual, independent pump of Newman with a motorized,
independent pump would have been an obvious design choice. Appellant's
argument that the most obvious modification of Newman would be to drive
the chain and lubrication pump with the same motor, even if true, does not
negate the Examiner's conclusion that it also would have been obvious to
add a separate motor to preserve the independent operability of the
lubrication pump as taught by Newman.
Accordingly, for the reasons discussed above and by the Examiner,
we are not apprised of error in the Examiner's rejection of claim 23 under
35 U.S.C. § 103(a) as unpatentable over Newman and Svensson. Thus, we
sustain the rejection of claim 23, and, for the same reasons, the rejection of
claims 24 and 25, which Appellant argues are patentable for the same
reasons as claim 23 (App. Br. 21 ).
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Appeal2015-000190
Application 12/527,676
DECISION
We affirm the Examiner's decision to reject claims 23-25.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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