Ex parte Pilchowski

Board of Patent Appeals and Interferences

Jan 18, 2002

08238948 (B.P.A.I. Jan. 18, 2002)

Application for patent filed May 6, 1994.1
Claims 4 and 39 have been amended subsequent to final2
1
Paper No. 28
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte THOMAS S. PILCHOWSKI
______________
Appeal No. 98-0584
Application 08/238,9481
_______________
ON BRIEF
_______________
Before MEISTER, ABRAMS and CRAWFORD, Administrative Patent
Judges.
MEISTER, Administrative Patent Judge.

DECISION ON APPEAL
Thomas S. Pilochowski (the appellant) appeals from the
final rejection of claims 1-39, the only claims present in the
application. 2
Appeal No. 98-0584
Application 08/238,948
rejection.
Page 3 of the answer states that the final rejection of3
claim 39 under 35 U.S.C. § 112, first paragraph, is withdrawn.
2
We REVERSE and, pursuant to our authority under the
provisions of 37 CFR § 1.196(b), we will enter new rejections
of claims 4, 13, 17, 28 and 35 under 35 U.S.C. § 112, first
and second paragraphs, and claims 1, 2, 6, 7, 32, 33 and 37
under
35 U.S.C. § 103.
The appellant's invention pertains to a power tool safety
device for a power tool and to a power tool having such a
safety device. Independent claims 1 and 32 are further
illustrative of the appealed subject matter and copies thereof
may be found in APPENDIX A of the brief.
The prior art relied on by the examiner is:
Lieber 4,060,160 Nov. 29,
1977
Hewitt 5,181,447 Jan. 26,
1993
Delta Instruction Manual, “10" Tilting Arbor Unisaw”, Part No.
422-04-651-0024, ppg. 1-30 (Feb. 1990)
The claims on appeal stand rejected in the following
manner.3
Appeal No. 98-0584
Application 08/238,948
3
Claims 1-25, 27, 28 and 31-39 under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter
which the appellant regards as the invention.
Claims 1, 5-7, 14, 18 and 19 under 35 U.S.C. § 102(b) as
being anticipated by Hewitt.
Claims 1-39 as being unpatentable over the Delta
instruction manual in view of Hewitt and Lieber.
The rejections are explained on pages 2-9 of the Office
action mailed on August 28, 1996 (Paper No. 11). The
arguments of the appellant and examiner in support of their
respective positions may be found on pages 8-23 of the brief,
pages 3-12 of the reply brief and pages 4-26 of the answer.
OPINION
Considering first the rejection of claims 1-25, 27, 28
and 31-39 under 35 U.S.C. § 112, second paragraph, the
examiner on pages 2-5 of Paper No. 11 and pages 3-6 of the
answer sets forth a very lengthy list of recitations appearing
in the claims which purportedly renders them indefinite.
Having carefully reviewed each recitation identified in the
Appeal No. 98-0584
Application 08/238,948
4
lengthy list (including those not specifically mentioned
below), we will not support the examiner's position.
The legal standard for indefiniteness is whether a claim
reasonably apprises those of skill in the art of its scope.
In re Warmerdam, 33 F.3d 1354, 1361, 31 USPQ2d 1754, 1759
(Fed.
Cir. 1994). A degree of reasonableness is necessary. As the
court stated in In re Moore, 439 F.2d 1232, 1235, 169 USPQ
236, 238 (CCPA 1971), the determination of whether the claims
of an application satisfy the requirements of the second
paragraph of § 112 is
merely to determine whether the claims do,
in fact, set out and circumscribe a
particular area with a reasonable degree of
precision and particularity. It is here
where the definiteness of language employed
must be analyzed -- not in a vacuum, but
always in light of the teachings of the
prior art and of the particular application
disclosure as it would be interpreted by
one possessing the ordinary level of skill
in the pertinent art. [Emphasis added;
footnote omitted.]
In other words, there is only one basic ground for rejecting a
claim under the second paragraph of § 112 as being indefinite,
Appeal No. 98-0584
Application 08/238,948
5
namely, the language employed does not set out and
circumscribe a particular area sought to be covered with a
reasonable degree of precision and certainty when read in
light of the specification.
Most of the examiner's criticisms are based on the view
that the "structural relationships" or "structural
cooperation" of various elements is unclear. For example, on
page 3 of Paper No. 11 the examiner inquires "[w]here is the
proximity detector in relation to the rest of the apparatus?"
and questions whether "working surface" refers to the table or
insert. Such criticisms, however, all go to the breadth of
the structure set forth, and just because a claim is broad
does not mean that it
is indefinite. See In re Johnson, 558 F.2d 1008, 1016 n.17,
194 USPQ 187, 194 n.17 (CCPA 1977); In re Miller, 441 F.2d
689, 693, 169 USPQ 597, 600 (CCPA 1971); In re Gardner, 427
F.2d 786, 788, 166 USPQ 138, 140 (CCPA 1970) and Ex parte
Scherberich,
201 USPQ 397, 398 (Bd. App. 1977). Apparently, the examiner
has analyzed the various recitations that have been criticized
Appeal No. 98-0584
Application 08/238,948
6
in light of the appellants' disclosure and then decided what
specific elements should be recited. Such an approach is
improper. As explained by the court in In re Steppan, 394
F.2d 1013, 1019, 156 USPQ 143, 148 (CCPA 1967):
The problem, in essence, is thus one of
determining who shall decide how best to
state what the invention is. By statute,
35 U.S.C. 112, Congress has placed no
limitations on how an applicant claims his
invention, so long as the specification
concludes with claims which particularly
point out and distinctly claim that
invention.
On page 5 of Paper No. 11, the examiner states that "coupled
to respond" and "being connected to enable" are not positive
statements of structural cooperation of the relevant elements.
While such statements are functional in nature, we must point
out that there is nothing wrong in describing the recited
elements in
terms of the function that they perform. As the court in In
re
Swinehart, 439 F.2d 210, 213, 169 USPQ 226, 229 (CCPA 1971)
stated:
Appeal No. 98-0584
Application 08/238,948
Consistent with the specification, one of ordinary skill4
in the art would recognize that "magnetic field intensity
detector" is used in the sense that a mechanism (i.e., a
switch) is actuated in response to a predetermined magnetic
field intensity, as distinguished from a detector which
actually senses varying degrees of magnetic field intensity.
7
there is no support, either in the actual
holdings of prior cases or in the statute,
for the proposition, put forward here, that
“functional” language, in and of itself,
renders a claim improper [under
35 U.S.C. 112, second paragraph].
See also In re Hallman, 655 F.2d 212, 215, 210 USPQ 609, 611
(CCPA 1981): “It is well settled that there is nothing intrin-
sically wrong in defining something by what it does rather
than what it is.”
Pages 9 and 10 of the answer, the examiner questions how
the magnetic field intensity detector can be considered to4
detect "relative proximity." However, taking claim 3 as
exemplary, it is set forth therein that the "proximity
detector" includes at least one permanent magnet (e.g., magnet
126) and a magnetic field intensity detector (e.g., normally
open reed switch 136). It is apparent from the disclosure
that the permanent magnet and reed switch are movable relative
to one another and, as explained on page 14 of the
Appeal No. 98-0584
Application 08/238,948
8
specification, the nature of the reed switch and the strength
of the magnetic field from the permanent magnet are such that
the reed switch will be closed "when the permanent magnet is
approximately one inch away" (emphasis added). This being the
case, the magnetic field intensity detector (e.g., reed switch
136) can be fairly considered to "detect the predetermined
relative proximity" as claimed.
We also observe that the examiner on page 8 of the answer
states that
claim 1 does not set forth the limitation
of a "proximity detector" in a manner that
warrants coverage under 35 U.S.C. § 112,
sixth paragraph.
We are at a complete loss to understand such a contention
inasmuch as claim 1 has no limitation which is drafted in a
means-plus-function format.
In view of the foregoing, we will not sustain the
rejection of claims 1-25, 27, 28 and 31-39 under 35 U.S.C. §
112, second paragraph.
Turning to the rejection of claims 1, 5-7, 14, 18 and 19
under 35 U.S.C. § 102(b) as being anticipated by Hewitt, the
examiner has taken the position that Hewitt's detector is a
Appeal No. 98-0584
Application 08/238,948
9
"proximity detector." In our view the examiner is attempting
to expand the meaning of "proximity detector" beyond all
reason. It is well settled that terms in a claim should be
construed in a manner consistent with the specification and
construed as those skilled in the art would construe them (see
In re Bond, 910 F.2d 831, 833, 15 USPQ2d 1566, 1567 (Fed. Cir.
1990), Specialty Composites v. Cabot Corp., 845 F.2d 981, 986,
6 USPQ2d 1601, 1604 (Fed. Cir. 1988) and In re Sneed, 710 F.2d
1544, 1548, 218 USPQ 385, 388 (Fed. Cir. 1983)). As we have
noted above with respect to the § 112 rejection, the appellant
on page 14 of the specification the appellant has described
the nature of the proximity detector wherein the relative
position of a permanent magnet and reed switch is such that
the intensity of the magnetic field of permanent magnet is
sufficient to move the reed switch from the open position to
the closed position. In Hewitt, however, a locking rod 82 is
secured to a pivotally mounted housing 28 which in turn
indirectly supports a guard 8. The locking rod is provided
with a dog 94 on one end thereof which actuates a contact
switch (i.e., a tang 108 on a stationary micro switch 98) when
Appeal No. 98-0584
Application 08/238,948
10
the guard is in the lower or active position. Consistent with
the appellant's specification, we can think of no
circumstances under which the artisan would construe such
structure to correspond to the claimed "proximity detector."
Indeed, the reference to Lieber (which the examiner has relied
on in the § 103 rejection) even teaches that the art
recognizes the difference between a "contact switch" and a
"proximity switch" (see column 4, line 23). Accordingly, we
will not sustain the rejection of claims 1, 5-7, 14, 18 and 19
under 35 U.S.C.
§ 102(b) as being anticipated by Hewitt.
Considering now the rejection of claims 1-39 under 35
U.S.C. § 103 as being unpatentable over the Delta instruction
manual in view of Hewitt and Lieber, the examiner considers
that it would have been obvious to provide the saw of the
Delta instruction manual with a safety device as taught by
Hewitt in order to prevent undue harm to an operator.
Additionally, the examiner is of the opinion that it would
have been obvious to provide the modified saw with a proximity
switch in lieu of the contact switch utilized Hewitt's safety
device in view of the teachings of Lieber. We do not support
Appeal No. 98-0584
Application 08/238,948
11
the examiner's position. The Delta instruction manual teaches
a table saw of the type having a splitter mounted directly
behind the saw blade and a guard that is supported on the
splitter by pivoted links in such a manner that the guard is
movable toward and away from the surface of the saw table.
Thus, Delta instruction manual teaches a table saw which (1)
has a movably mounted guard that is supported on a splitter
and which is of rather simple construction and (2) does not
have a safety device which a includes detector and interlock
system. Hewitt, while teaching a table saw which has a
movable guard and safety device that includes both a detector
and interlock system, does so in the context of a relatively
complicated mechanism for mounting the guard and the actuator
for the safety device. That is, in Hewitt, rather than being
supported on a splitter by pivoted links (Hewitt has no
splitter whatsoever), the guard is suspended from a
telescoping arm 16 that extends over the top of the table saw
by a bracket 46, and this bracket is in turn attached to a
pivotally mounted "superstructure" 28 in order that the guard
may be pivoted from an active position over the saw blade and
work supporting surface of the table saw to an inactive
Appeal No. 98-0584
Application 08/238,948
12
position away from the saw blade and work supporting surface.
As we have noted above in the § 102 rejection, locking rod
82 is mounted on the pivotally mounted superstructure or
housing 28 and is provided with a dog 94 on one end thereof
for the purpose of actuating a contact switch (i.e., a tang
108 on a stationary micro switch 98) when the guard is in the
lower or active position. Both the contact switch and
interlock system 64 are mounted on the telescoping arm in a
position adjacent the pivotally mounted housing 28 and, thus,
the detector and interlock system are both remotely positioned
from the guard and the work supporting surface of Hewitt's
table saw. From our perspective, the examiner has improperly
relied upon the appellant's own teachings for a suggestion to
combine the teachings of the Delta instruction manual and
Hewitt in the manner proposed. Lieber has only been relied on
by the examiner for a teaching of a proximity switch.
Accordingly, we will not sustain the rejection of claims 1-39
under 35 U.S.C. § 103 based on the combined teachings of the
Delta instruction manual, Hewitt and Lieber.
Under the provisions of 37 CFR § 1.196(b) we make the
following new rejections:
Appeal No. 98-0584
Application 08/238,948
13
Claims 4, 13, 17, 28 and 35 are rejected under 35 U.S.C.
§ 112, first paragraph, as being based upon a non-enabling
disclosure. Each of these claims set forth that "the magnetic
intensity detector generates an electrical proximity signal
indicating whether or not the guard is within the
predetermined relative proximity to the working surface"
(emphasis added). In the first place, the appellant has not
disclosed any structure whatsoever that generates a signal.
That is, in the appellant's device reed switches 136, 138 are
merely closed thus allowing current to simply flow, as
distinguished from "generating a signal." In the second
place, even if the simple flow of current through the reed
switches were considered to be "generating a signal," this
"signal" or current flow does not take place when the guard is
"not" within the predetermined relative proximity inasmuch as
these reed switch are once again open.
Claims 4, 13, 17, 28 and 35 are rejected under 35 U.S.C.
§ 112, second paragraph. In order to satisfy the second
paragraph of § 112, a claim must accurately define the
invention in the technical sense. See In re Knowlton, 481
Appeal No. 98-0584
Application 08/238,948
14
F.2d 1357, 1366, 178 USPQ 486, 492-93 (CCPA 1973). Moreover,
while the claim language of claims 4, 17, 28 and 35 may
appear, for the most part, to be understandable when read in
abstract, no claim may be read apart from and independent of
the supporting disclosure on which it is based. See In re
Cohn, 438 F.2d 989, 993, 169 USPQ 95, 98 (CCPA 1971).
Applying these principles to the present case, we fail to
understand how magnetic field intensity detector (i.e., reed
switches 136, 138) can be considered to "generate" an
electrical proximity signal indicating "whether or not" the
guard is within the predetermined relative proximity to the
working surface for the reasons we have stated above in the
rejection under the first paragraph of § 112. Thus, the lan-
guage in these claim, when read in light of the specification,
results in an inexplicable inconsistency that renders them
indefinite.
Claims 1, 6, 7, 32, 37 and 38 are rejected under 35
U.S.C.
§ 103 as being unpatentable over Hewitt in view of Lieber.
Hewitt discloses a power tool safety device for a power tool
Appeal No. 98-0584
Application 08/238,948
15
having a table 6 defining a working surface, a cutting tool 12
and a guard 8 wherein the safety device comprises a contact-
type detector in the form of a tang 108 on a stationary micro
switch 98 which detects the presence or absence of dog 24, an
interlock system 80 which inherently includes a starting
circuit and a bypass circuit 74, 78 having a bypass switch 74
(see Figs. 10 and 11). Although the detector of Hewitt is of
the contact type, Lieber discloses a safety guard 12 and
interlock system (Fig. 1) for a power tool 11 wherein, with
respect to the detector 10, it is stated that this detector
can be
a limit switch, contact switch, magnetic
proximity switch, or any other arrangement
of switches and sensors . . . . [Column 4,
lines 22-24]
Accordingly, Lieber teaches that in the art of providing a
safety guards and interlocks for power tools, contact switches
and magnetic proximity switches are art-recognized
alternatives and the artisan would have been well aware of the
advantages and disadvantages of each. See, e.g., In re
Heinrich, 268 F.2d 753, 756, 122 USPQ 388, 390 (CCPA 1959).
In our view, the above-noted statement by Lieber would have
Appeal No. 98-0584
Application 08/238,948
16
provided an ample suggestion to one of ordinary skill in this
art to substitute in Hewitt for his contact-type detector a
magnetic proximity-type detector as taught by Lieber.
Claims 2 and 33 are rejected under 35 U.S.C. § 103 are
rejected as being unpatentable over Hewitt in view of Lieber
as applied in claims 1, 6, 7, 32, 37 and 38 above and in
further view of the Delta instruction manual. Hewitt does not
teach an insert for the blade aperture; however, the Delta
instruction manual clearly teaches that the provision of an
enlarged blade aperture and insert are well known expedients
in the art of table saws (see, e.g., Fig. 46). In our view,
one of ordinary skill in this art would have found it obvious
to provide the table saw of Hewitt, as modified by Lieber,
with an enlarged aperture and insert as taught by the Delta
instruction manual in order to achieve the self-evident
advantage of easy access to the saw blade.
In summary:
The examiner's rejections are all reversed.
Appeal No. 98-0584
Application 08/238,948
17
New rejections of claims 4, 13, 17, 28 and 35 under
35 U.S.C. § 112, first and second paragraphs, and claims 1, 2,
6, 7, 32, 33, 37 and 38 under 35 U.S.C. § 103 have been made.
This decision contains new grounds of rejection pursuant
to 37 CFR § 1.196(b)(amended effective Dec. 1, 1997, by final
rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997), 1203
Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)).
37 CFR
§ 1.196(b) provides that, “A new ground of rejection shall not
be considered final for purposes of judicial review.”
37 CFR § 1.196(b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new
grounds of rejection to avoid termination of proceedings
(§ 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
Appeal No. 98-0584
Application 08/238,948
18
Appeal No. 98-0584
Application 08/238,948
-19-
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED
37 CFR § 1.196(b)
JAMES M. MEISTER )
Administrative Patent Judge )
)
)
)
NEAL E. ABRAMS ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )

Appeal No. 98-0584
Application 08/238,948
-20-
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