Ex Parte Powell

Patent Trial and Appeal Board

Dec 19, 2017

13691432 (P.T.A.B. Dec. 19, 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.
1576-0970 4159
EXAMINER
MACFARLANE, EVAN H
ART UNIT PAPER NUMBER
3724
MAIL DATE DELIVERY MODE
13/691,432 11/30/2012
10800 7590 12/19/2017
Maginot, Moore & Beck LLP
One Indiana Square, Suite 2200
Indianapolis, IN 46204
Dennis Powell
12/19/2017 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 DENNIS POWELL
Appeal 2017-001909
Application 13/691,432
Technology Center 3700
Before JOHN C. KERINS, EDWARD A. BROWN, and
LYNNE H. BROWNE, Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Dennis Powell (Appellant) appeals under 35 U.S.C. § 134 from the
rejection of claims 1, 3-5, 7-13, 20, 22, and 23. Claim 14 has been
withdrawn. Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appeal 2017-001909
Application 13/691,432
CLAIMED SUBJECT MATTER
Claims 1 and 20 are independent. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A power tool, comprising:
a motor configured to move a saw blade in a repeating
pattern of movement;
a foot plate defining a saw blade opening, said foot plate
including a plurality of walls that define a storage space, said
plurality of walls including a first lateral wall and an opposite
second lateral wall;
a detent system supported by said foot plate and having a
detent member and a biasing element configured to bias said
detent member toward said second lateral wall; and
an accessory defining (i) a first detent structure configured
to receive said detent member therein, and (ii) a second detent
structure configured to receive said detent member therein,
wherein said accessory is positionable in (i) a use position
in which said accessory is spaced apart from said foot plate, and
(ii) a storage position in which said accessory is located in said
storage space,
wherein, during movement of said accessory from said use
position to said storage position, said detent member is advanced
(i) into said first detent structure, (ii) out of said first detent
structure, and then (iii) into said second detent structure, and
wherein, during movement of said accessory from said
storage position to said use position, said detent member is
advanced (i) out of said second detent structure, (ii) into said first
detent structure, and then (iii) out of said first detent structure,
wherein said accessory includes a plate having a top plate
surface, a bottom plate surface, and a lateral side interposed
between said top plate surface and said bottom plate surface,
wherein said top plate surface, said bottom plate surface,
and said lateral side each define said first detent structure and
said second detent structure,
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Application 13/691,432
wherein said accessory is interposed between said first
lateral wall and said second lateral wall when said accessory is
located in said storage position,
wherein said lateral side is parallel to said first lateral wall
and said second lateral wall when said accessory is in said
storage position,
wherein said biasing element is configured to bias said
accessory toward said second lateral wall when said accessory is
in said storage position,
wherein said movement of said accessory from said use
position to said storage position automatically advances said
detent member out of said first detent structure, and
wherein said movement of said accessory from said
storage position to said use position automatically advances said
detent member out of said second detent structure and out of said
first detent structure.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Lentino
Tsuji
Chen
Wershe
Wasielewski
Oymaian
Pelton
US 5,070,562
US 5,617,766
US 5,778,747
US 6,739,224 B1
US 2009/0008282 A1
US 2011/0219596 A1
US 8,713,735 B1
Dec. 10, 1991
Apr. 8, 1997
July 14, 1998
May 25, 2004
Jan. 8, 2009
Sept. 15,2011
May 6, 2014
REJECTIONS
I. Claims 20, 22, and 23 stand rejected under 35 U.S.C.
§ 112, second paragraph, as being indefinite.
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Application 13/691,432
II. Claims 1, 3-5, 7, 13, 20, 22, and 23 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Lentino and
Tsuji, as evidenced by Wasielewski.1 * * 4
III. Claims 8 and 9 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Lentino, Tsuji, and Wershe.
IV. Claim 10 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Lentino, Tsuji, Wershe, and Oymaian.
V. Claim 11 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Lentino, Tsuji, Wershe, Oymaian, and
Pelton.
VI. Claim 12 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Lentino, Tsuji, and Chen.
VII. Claims 1, 3-5, 7, 13, 20, 22, and 23 stand provisionally
rejected on the ground of nonstatutory obviousness-type
double patenting as unpatentable over claim 1 of U.S.
1 The Examiner sets forth a separate statement of the ground of rejection for
claims 20, 22, and 23. Final Act. 9, stating that these claims are rejected
under 35 U.S.C. § 103(a) as unpatentable over Lentino, Tsuji, and
Wasielewski). However, this ground of rejection is the same as the ground
of rejection for claims 1, 3-5, 7, and 13. See Final Act. 3. Accordingly, we
group claims 20, 22, and 23 with claims 1, 3-5, 7, and 13.
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Application 13/691,432
Application No. 13/691,4432 in view of Lentino and
Tsuji, as evidenced by Wasielewski.3 * 5
VIII. Claims 8 and 9 stand provisionally rejected on the ground
of nonstatutory obviousness-type double patenting as
unpatentable over claim 1 ofU.S. Application No.
13/691,443 in view of Lentino, Tsuji, and Wershe.
IX. Claim 10 stands provisionally rejected on the ground of
nonstatutory obviousness-type double patenting as
unpatentable over claim 1 ofU.S. Application No.
13/691,443 in view of Lentino, Tsuji, Wershe, and
Oymaian.
X. Claim 11 stands provisionally rejected on the ground of
nonstatutory obviousness-type double patenting as
unpatentable over claim 1 ofU.S. Application No.
13/691,443 in view of Lentino, Tsuji, Wershe, Oymaian,
and Pelton.
XI. Claim 12 stands provisionally rejected on the ground of
nonstatutory obviousness-type double patenting as
2 Now Powell, US 9,333,638 B2, issued May 10, 2016, (hereafter, “Powell
’638”).
3 With respect to claims 20, 22, and 23, the Examiner sets forth a separate
statement of the ground of rejection for these claims under non-statutory
obviousness-type double patenting as unpatentable over claim 1 ofU.S.
Application No. 13/691,443 in view of Lentino and Tsuji, as evidenced by
Wasielewski. Final Act. 22. However, these claims are subject to the same
ground of rejection as claims 1, 3-5, 7, and 13. See Final Act. 14.
Accordingly, we group claims 20, 22, and 23 with claims 1, 3-5, 7, and 13.
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Application 13/691,432
unpatentable over claim 1 ofU.S. Application No.
13/691,443 in view of Lentino, Tsuji, and Chen.
DISCUSSION
Rejection I
Appellant does not contest this rejection. See generally Appeal Br.
Accordingly, we summarily sustain the rejection of claims 20, 22, and 23 as
indefinite.
Rejection II
Regarding claims 1 and 20, the Examiner finds that Lentino discloses
claimed limitations, including: (1) a foot plate (shoe 12) comprising a
plurality of walls that define a storage space, the plurality of walls including
a first lateral wall and an opposite second lateral wall; (2) a detent system
supported by the foot plate and having a detent member (boss 86) and a
biasing element (arm 84) capable of biasing the detent member; and (3) an
accessory (square 10) defining (i) a first detent structure (groove 26) capable
of receiving the detent member therein, and (ii) a second detent structure
(dimple 30) capable of receiving the detent member therein. Final Act. 3
(citing Lentino, Figs. 2, 3; col. 3,11. 62-65; col. 3,1. 67-col. 4,1. 2); see also
id. at 10. The Examiner finds that Lentino fails to disclose: (1) the
accessory’s top plate surface, bottom plate surface, and lateral side, together
define the first detent structure and the second detent structure; (2) the
biasing element being configured to bias the detent member toward the
second lateral wall; and (3) the biasing element being configured to bias the
accessory toward the second lateral wall when the accessory is in the storage
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Application 13/691,432
position. Id. at 5; see also id. at 11. The Examiner finds that Tsuji
discloses: (1) an accessory (adapter 121) having a top plate surface, a
bottom plate surface, and a lateral side, each defining multiple detent
structures (recesses 122); and (2) a biasing element (spring 124) configured
to bias a detent member (retaining pin 123) and the accessory in a direction
transverse to a handle of the accessory from a side of the accessory that
includes the detent structures toward a side that does not include the detent
structures. Id. at 5-6 (citing Tsuji, Fig. 9); see also id. at 11-12.
The Examiner reasons that it would have been obvious to substitute
the positions of the detent structures on the lateral side of the accessory and
the corresponding position of the detent system at the side of the accessory
as taught by Tsuji for, respectively, the position of the detent structures on
the top surface of the accessory and the detent system being positioned
above the accessory as disclosed by Lentino. Id. at 6; see also id. at 12-13.
The Examiner finds that the substitution would achieve the predictable result
of providing detent structures and a detent system that engages the detent
structures as the accessory is slid into a storage space, thereby maintaining
the position of the accessory in the storage space. Id. at 6; see also id. at 12-
13.
Appellant contends that there is no motivation to move the arm 84 and
the boss 86 of Lentino’s detent system to the side of the bridge member 78
in order to engage the accessory in the manner proposed by the Examiner.
Appeal Br. 8; see also Lentino, Fig. 2. In support, Appellant argues that:
(1) Lentino discloses that the boss 86 is seated on dimple 30 in order to
retain the accessory in the storage space; (2) as shown in Figure 4, Lentino’s
bridge member is spaced apart from the top of the accessory by a gap; and
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(3) therefore, removing the boss from its top side position with respect to the
accessory, as proposed by the Examiner, would result in the accessory
pivoting and becoming jammed within the storage space when the accessory
is moved within the storage space. Id. (citing Lentino, col. 4,1. 1).
The Examiner responds that Appellant’s arguments supra are
speculative. Ans. 26. The Examiner further asserts that Appellant’s
argument relies on bodily incorporation of the structure of Tsuji’s detent
system into the structure of Lentino’s device. Id. However, as the rejection
relies upon a simple substitution rationale which is essentially a bodily
incorporation of one known equivalent for another, the Examiner’s assertion
is unavailing.
In this instance, Appellant has the better position. The Examiner’s
reasoning for making the proposed modification is based on the proposition
that “when a patent claims a structure already known in the prior art that is
altered by the mere substitution of one element for another known in the
field, the combination must do more than yield a predictable result.” KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (citing United States v.
Adams,_383 U.S. 39, 50-51 (1966). However, as the Court cautions us,
“[fjollowing these principles may be difficult if the claimed subject matter
involves more than the simple substitution of one known element for
another.” Id. at 401. In this case, the Examiner has not established that the
proposed modification is a mere substitution of one element for another
known in the field. Rather, the Examiner admits that further modification
would be needed. See Ans. 26 (stating that “one of skill in the art is capable
of recognizing a solution; the bridge “78” may be sized to limit pivoting
movement of the accessory”). Thus, the Examiner’s proposed modification
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Application 13/691,432
is more than the simple substitution of one element for another known in the
field in that it contemplates further modifications to prevent jamming.
Accordingly, the reasoning in support of these additional proposed
modifications must have rationale underpinning.
Lentino discloses that: (1) the boss 86 is seated on the on dimple 30
in order to retain the accessory in the storage space; (2) the boss 86 engages
groove 26 as the accessory is moved within the storage space; and (3) Figure
4 shows that bridge member 78 is spaced apart from the accessory by a gap.
Lentino, Figs. 1-2, 4-5; col. 3,1. 67-col. 4,1. 2. In this construction, the
groove 26 interacts with the boss 86 to guide the accessory’s position and
movement within the storage space. Lentino, Figs. 1, 2, 4; col. 3,11. 46 47,
11. 62-67.
As Appellant argues, removing Lentino’s boss from its top side
position with respect to the accessory would result in the accessory pivoting
and becoming jammed within the storage space as the accessory is moved
within the storage space. Appeal Br. 8. The Examiner’s modification would
remove this guiding capability, resulting in pivoting and jamming of the
accessory in the storage space — a disadvantage over Lentino’s unmodified
configuration. As the Examiner’s reasoning identifies no advantages gained
by the proposed combination, to counterbalance the resulting disadvantages,
the Examiner’s reasoning lacks rational underpinning. An ordinary artisan
would not be motivated to make such a modification which adds
disadvantages without countervailing advantages. See Winner Int 7 Royalty
Corp. v. Wang, 202 F.3d 1340, 1349 n. 8 (Fed. Cir. 2000).
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For this reason, we do not sustain the Examiner’s decision rejecting
claims 1 and 20, and claims 3-5, 7, 13, 22, and 23 which depend therefrom,
as obvious over Lentino and Tsuji.
Rejections III—VI
Rejections III-VI rely upon the same erroneous reasoning as
employed in the rejection of claim 1 discussed supra. See Final Act. 7-9.
Accordingly, we do not sustain the Examiner’s decision rejecting claims 8-
12 for the same reason.
Rejections VII XI
Appellant does not contest rejections VII-XI based on provisional
obviousness-type double patenting. However, as indicated in footnote 2
above, co-pending application No. 13/691,443, on which these rejections are
founded, has matured into Powell ’638. We observe that claim 1 of the then
co-pending application, cited by the Examiner as the basis of the rejections,
did not issue in identical form in Powell ’638. See Powell ’638 11: 2-36.
Accordingly, we do not reach these rejections, in order to allow the
Examiner to reconsider the rejections in light of the claims as issued in
Powell ’638.
DECISION
The Examiner’s rejection of claims 20, 22, and 23 under 35 U.S.C.
§112, second paragraph, as being indefinite, is AFFIRMED.
The Examiner’s rejection of claims 1, 3-5, 7, 13, 20, 22, and 23 under
35 U.S.C. § 103(a) as unpatentable over Lentino and Tsuji, as evidenced by
Wasielewski, is REVERSED.
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The Examiner’s rejection of claims 8 and 9 under 35 U.S.C. § 103(a)
as unpatentable over Lentino, Tsuji, and Wershe, is REVERSED.
The Examiner’s rejection of claim 10 under 35 U.S.C. § 103(a) as
unpatentable over Lentino, Tsuji, Wershe, and Oymaian, is REVERSED.
The Examiner’s rejection of claim 11 under 35 U.S.C. § 103(a) as
unpatentable over Lentino, Tsuji, Wershe, Oymaian, and Pelton, is
REVERSED.
The Examiner’s rejection of claim 12 under 35 U.S.C. § 103(a) as
unpatentable over Lentino, Tsuji, and Chen, is REVERSED.
We do not reach the rejections of claims 1, 3-5, 7-13, 20, 22, and 23
as provisionally being unpatentable under the doctrine of obviousness-type
double patenting.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
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