Ex Parte Roefer et al

Patent Trial and Appeal Board

Dec 18, 2013

11986901 (P.T.A.B. Dec. 18, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/986,901 11/27/2007 James A. Roefer Bently-Debris Receptacle 4915
7590 12/19/2013
Michael J. Bendel, Esq.
402 East Carrington Lane
Appleton, WI 54913
EXAMINER
FLORES SANCHEZ, OMAR
ART UNIT PAPER NUMBER
3724
MAIL DATE DELIVERY MODE
12/19/2013 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 JAMES A. ROEFER and JOHN F. BENTLY
____________________

Appeal 2012-001025
Application 11/986,901
Technology Center 3700
____________________

Before BIBHU R. MOHANTY, MICHAEL C. ASTORINO, and
HYUN J. JUNG, Administrative Patent Judges.

JUNG, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-001025
Application 11/986,901

2
STATEMENT OF THE CASE
James A. Roefer and John F. Bently (Appellants) appeal under 35
U.S.C. § 134 the Examiner’s Final Rejection of claims 1-25. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

CLAIMED SUBJECT MATTER
Claims 1 and 16 are independent. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A debris receptacle for a tool having a
cutter, the debris receptacle and tool in
combination comprising:
a debris plate attached to the tool, the debris
plate comprising an outside surface, an inside
surface, a plate outer perimeter located between
the outside and the inside surfaces, and a plate hole
located inside the plate outer perimeter and
extending through the debris plate from the outside
surface to the inside surface, and with the cutter
extending through the plate hole when the debris
plate is attached to the tool such that the debris
plate is fixed in position with the tool and is
independent of the cutter; and,
a debris cover attachable to the debris plate,
the debris cover comprising a top surface, a bottom
surface, a cover outer perimeter located between
the top and the bottom surfaces, and a cover hole
located inside the cover outer perimeter and
extending through the debris cover from the top
surface to the bottom surface, with the cutter
extending through the cover hole when the debris
cover is attached to the debris plate and the debris
plate is attached to the tool such that the debris
cover is fixed in position with the tool and is
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independent of the cutter, and where the bottom
surface of the debris cover faces the inside surface
of the debris plate and the bottom surface of the
debris cover is spaced from the inside surface of
the debris plate and forms a debris reception zone
between the debris cover and the debris plate.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Kinney
Derbyshire
Kappel
Cuevas
US 2,548,314
US 3,881,838
US 3,936,213
US 4,955,984
Apr. 10, 1951
May 6, 1975
Feb. 3, 1976
Sep. 11, 1990

REJECTIONS
The Appellants seek our review of the rejections of:
claims 1-6, 9-12, 161-19, 22, and 23 under 35 U.S.C. § 103(a) as
unpatentable over Derbyshire and Cuevas;
claims 7, 8, 20, and 21 under 35 U.S.C. § 103(a) as unpatentable over
Derbyshire, Cuevas, and Kappel; and
claims 13-15, 24, and 25 under 35 U.S.C. § 103(a) as unpatentable
over Derbyshire, Cuevas2, and Kinney.

1 An Office communication mailed July 29, 2011 adds claim 16 to this
rejection. See also Ans. 4 (“Derbyshire discloses . . . Claims 1 and 16. . . . ”)
and Reply Br. 2.
2 The rejection states that “[c]laims 13-15, 24, and 25 are rejected . . . as
being unpatentable over Derbyshire . . . applied to claims 2 and 16 . . . and
further in view of Kinney.” Ans. 6; see also App. Br. 3, 8 and Reply Br. 2.
The body of the rejection states the “modified device of Derbyshire discloses
the invention substantially as claimed . . . .” Ans. 7. Because claims 2 and
16 are rejected as unpatentable over Derbyshire and Cuevas and the rejection
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ANALYSIS
Claims 1-6, 9-12, 16-19, 22, and 23
Unpatentability over Derbyshire and Cuevas
The Examiner finds that Derbyshire substantially discloses the subject
matter of claim 1 but does not show “the debris plate fixed in position with
the tool and independent of the cutter.” Ans. 4. The Examiner further finds
that “Cuevas teaches the use of the debris plate fixed in position (see
connector 16) with the tool and independent of the cutter for the purpose of
non-rotatably seating against the wall.” Id. The Examiner concludes that it
would have been obvious “to have modified the device of Derbyshire by
providing the debris plate fixed in position with the tool and independent of
the cutter as taught by Cuevas in order to obtain a device that non-rotatably
seat[s] against the wall.” Id.
The Appellants argue that “there is no suggestion or motivation to so
modify the references to arrive at [A]pp[ell]ants’ recited invention.” App.
Br. 4. The Examiner responds that “Cuevas teaches the motivation [for]
non-rotatably seating the debris collector against the wall by the use of, e.g.
a connector 16 fixed to a non-rotatable member of the tool.” Ans. 7 (citing
Cuevas, col. 3, ll. 1-2, 62-67 and figs. 1-2). We agree with the Examiner.
The Appellants argue that “there is no reasonable expectation of
success based on at least, the teachings of the cited references.” App. Br. 4.
This argument is not persuasive because the Appellants do not explain what
teachings of Derbyshire and Cuevas indicate there would be no reasonable
expectation of success for the Examiner’s proposed combination.

discusses the modified device of Derbyshire, we consider the rejection to
rely also upon Cuevas.
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The Appellants argue that “it is not appropriate to engage in hindsight
reconstruction” and “[i]t is inappropriate to pick and choose isolated
elements from various prior art references and combine them so as to yield
the invention in question when such combining would not have been an
obvious thing to do at the time in question.” Id. The Appellants’ argument
is not persuasive. The Appellants provide no basis to conclude that the
Examiner improperly relied upon hindsight to reach a conclusion of
obviousness. Moreover, the Examiner makes findings from Derbyshire and
Cuevas. See Ans. 4. The Examiner also finds that Cuevas articulates a
motivation for the proposed modification of Derbyshire with Cuevas. See
id. at 7.
The Appellants argue that Derbyshire does not disclose “the debris
plate attached to the tool such that the debris plate and the debris cover, are
each fixed in position with the tool and independent of the cutter.” App. Br.
5 and Reply Br. 3. This argument is not persuasive because the Examiner
finds that Cuevas teaches such a debris plate that is fixed in position with a
tool and independent of a cutter. See Ans. 4. Also, the Appellants do not
explain why the Examiner’s proposed combination of Derbyshire and
Cuevas fails to disclose a debris plate attached to a tool such that both the
plate and cover are fixed in position with the tool and independent of the
cutter. See id.
The Appellants argue that “based on the teachings of Derbyshire (e.g.,
col. 1, [ll.] 20-25 and [ll.] 50-62), one of ordinary skill in the art would be
motivated to not modify Derbyshire to obtain App[ell]ant[s’] recited
invention, because such modification is contrary to the teaching and
operation of Derbyshire” and “Derbyshire requires the attachment 10 to be
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fitted to the drill bit and rotating therewith to create the desired centrifugal
force to catch dust or swarf within the lip 12.” App. Br. 5; see also id. at 6
and Reply Br. 3. The Appellants also argue that the “improperly combined
reference Cuevas . . . would modify Derbyshire to require it to be devoid of
this functionality.” App. Br. 6-7 and Reply Br. 3. The Appellants further
argue that “Derbyshire similarly warns against making the modification
proposed” because “making the attachment 10 to be fitted to the drill and
fixed thereto (based on Cuevas but taught against by Derbyshire), rather
than to the drill bit and rotating therewith [would not] create the desired
centrifugal force to catch dust or swarf within the lip 12 (as taught by
Derbyshire).” Reply Br. 4-5.
Derbyshire discloses that “[i]n use (as shown), when drilling in an
overhead location, dust or swarf which falls onto the attachment is swept by
centrifugal force beneath the undercut circumferential lip 12.” Derbyshire,
col. 1, ll. 59-62. Derbyshire does not disclose what exactly gives rise to the
centrifugal force that sweeps dust or swarf to the lip 12. Also, the
Appellants’ argument does not explain why the drill’s rotation alone,
without the rotation of attachment 10, could not give rise to a centrifugal
force that would sweep the dust or swarf to the lip 12. Moreover, Cuevas
discloses disadvantages of an attachment, such as attachment 10 of
Derbyshire, rotating with a drill. Cuevas discloses that a “debris catcher . . .
mounted on a drill which sits on a chuck . . . rotates with the drill in
operation” and “creat[es] dust and debris not caught by the catcher.”
Cuevas, col. 2, ll. 12-17. Cuevas further discloses that such debris catchers
“have a small percentage of debris catching success.” Id. at ll. 17-18. Thus,
Cuevas teaches devices that rotate with the drill, such as Derbyshire, cannot
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“be seated against surfaces at any angle and effectively catch the debris from
drills.” See id. at ll. 40-45. The Appellants’ arguments also do not address
why Cuevas’ express motivation for the Examiner’s proposed combination
fails to overcome the asserted contrary teachings and operations of
Derbyshire. Therefore, the Appellants’ arguments are not persuasive.
The Appellants argue that “insofar as Derbyshire does include a tool,
plate or cover, they are united in a different way and they achieve a different
structure and function.” App. Br. 5 and Reply Br. 3. This argument is not
persuasive because it does not address the Examiner’s proposed combination
of Derbyshire and Cuevas.
The Appellants argue that Cuevas does not disclose a “cutter
extending through the cover hole when the debris cover is attached to the
debris plate.” App. Br. 5. The Appellants’ argument is not persuasive
because the Examiner finds that Derbyshire, not Cuevas, teaches this feature.
See Ans. 5 (Examiner’s annotated figure 2 from Derbyshire).
The Appellants argue that “based on the teachings of Cuevas (e.g.,
col. 1, [l.] 59- col. 2, [l.] 5 distinguishing the prior inferior devices, and col.
2, [ll.] 56-60 and throughout the drawings and description of preferred
embodiment explaining how Cuevas is innovative), one of ordinary skill in
the art would be motivated to not modify Cuevas to obtain App[ell]ant[s’]
recited invention, because such modification is contrary to the teaching and
operation of Cuevas.” App. Br. 6. The Appellants also argue that “Cuevas
requires (e.g. col. 4, [ll.] 46-48) that the debris catcher 10 have a seating
surface 30 that extends beyond the working part – barrel B, drill bit 13, etc.”
Id. The Examiner responds that the rejection does not modify Cuevas but
“only modif[ies] Derbyshire in view of Cuevas regarding the teaching of
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fixing in position the debris collector with the tool and independent of the
cutter.” Ans. 8. The Appellants’ argument is not persuasive for the reason
stated by the Examiner.
The Appellants argue that “insofar as Cuevas does include a tool,
plate or cover, they are united in a different way and they achieve a different
structure and function.” App. Br. 6. This argument is not persuasive
because it addresses Cuevas alone and does not address the Examiner’s
proposed combination of Derbyshire and Cuevas.
The Appellants also argue that the “asserted combination and
modification would render the primary reference, Derbyshire, unsatisfactory
for its intended purpose.” Id. at 7. The Examiner responds that “the
combination of Derbyshire in view of Cuevas would not render Derbyshire
unsatisfactory for its intended purpose of collecting dust, because Cuevas’s
device is for the same purpose.” Ans. 8. The Appellants’ argument is not
persuasive because it fails to explain why the Examiner’s proposed
combination would render Derbyshire unsatisfactory for its intended
purpose.
The Appellants do not provide separate arguments for claims 2-6, 9-
12, 17-19, 22, and 23. See App. Br. 7 and Reply Br. 2-5. Accordingly, we
sustain the Examiner’s rejection of independent claims 1 and 16 and their
dependent claims 2-6, 9-12, 17-19, 22, and 23 under 35 U.S.C. § 103(a) as
unpatentable over Derbyshire and Cuevas.
Claims 7, 8, 20, and 21
Unpatentability over Derbyshire, Cuevas, and Kappel
The Appellants argue that “[b]ecause the underlying independent
claims are patentable for the various reasons discussed above, these
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respective dependent claims are similarly patentable” and “features set forth
in dependent claims 7[,] 8, 20[,] and 21 include additional reasons why this
combination of features is not taught or suggested by the art of record”
because “[t]hese features exemplify how the configuration of App[ell]ants’
invention may further differ from Derbyshire, Cuevas[,] and Kappel and yet
still function well as a debris receptacle where the references alone, and in
combination, teach that a device with such features should fail miserably,
i.e., and nowhere near have the required reasonable expectation of success
needed to establish obviousness.” App. Br. 7. These arguments are not
persuasive because the Appellants do not explain how claims 7, 8, 20, and
21 include additional reasons why the cited references fail to teach or
suggest the recited combination of features.
Accordingly, we sustain the Examiner’s rejection of claims 7, 8, 20,
and 21 under 35 U.S.C. § 103(a) as unpatentable over Derbyshire, Cuevas,
and Kappel.
Claims 13-15, 24, and 25
Unpatentability over Derbyshire, Cuevas, and Kinney
The Appellants argue that “[b]ecause the underlying independent
claims are patentable for the various reasons discussed above, these
respective dependent claims are similarly patentable” and “features set forth
in dependent claims 13-15, 24[,] and 25 include additional reasons why this
combination of features is not taught or suggested by the art of record”
because “[t]hese features exemplify how the configuration of App[ell]ants’
invention may further differ from Derbyshire and Kinney and yet still
function well as a debris receptacle where the references alone, and in
combination, teach that a device with such features should fail miserably,
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i.e., and nowhere near have the required reasonable expectation of success
needed to establish obviousness.” App. Br. 8. The Appellants’ arguments
are not persuasive because the Appellants do not explain how claims 13-15,
24, and 25 include additional reasons why the cited references fail to teach
or suggest the recited combination of features.
Accordingly, we sustain the Examiner’s rejection of claims 13-15, 24,
and 25 under 35 U.S.C. § 103(a) as unpatentable over Derbyshire, Cuevas,
and Kinney.

DECISION
The Examiner’s decision to reject claims 1-25 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

rvb