Ex Parte Roehm

Patent Trial and Appeal Board

Jul 13, 2017

12865647 (P.T.A.B. Jul. 13, 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.
12/865,647 07/30/2010 Heiko Roehm BOSC.P7669US/11603165 4498
24972 7590 07/17/2017
NORTON ROSE FULBRIGHT US LLP
1301 Avenue of the Americas
NEW YORK, NY 10019-6022
EXAMINER
CHUKWURAH, NATHANIEL C
ART UNIT PAPER NUMBER
3721
NOTIFICATION DATE DELIVERY MODE
07/17/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
nyipdocket@nortonrosefulbright.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HEIKO ROEHM
Appeal 2015-007231
Application 12/865,6471
Technology Center 3700
Before PHILIP J. HOFFMANN, BRUCE T. WIEDER, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the final rejection of
claims 10-47. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
According to Appellant, the invention relates to a hand-held power
tool. Spec. 12. Claims 10, 28, and 47 are the only independent claims on
appeal. Appeal Br., Claims App. We reproduce claim 10, below, as
illustrative of the appealed claims.
1 According to Appellant, “[t]he real party in interest... is Robert Bosch
GmbH.” Appeal Br. 2.
Appeal 2015-007231
Application 12/865,647
10. A power tool, comprising:
a housing;
an electric drive motor;
a user-actuatable motor switch element moveable in a first
direction for activating said electric drive motor and in an
opposite direction for deactivating said electric drive motor; and
a shift transmission that is driven by the drive motor and
has a first gear and at least one second gear,
wherein said motor switch element is mechanically
coupled to said shift transmission in such a way that movement
of said motor switch element in said first direction along a
predefined distance activates said electric drive motor, and
movement of said motor switch element along a further
predefined distance in said first direction shifts said shift
transmission from the second gear into the first gear or from the
first gear into the second gear.
Id.
REJECTION AND PRIOR ART
The Examiner rejects claims 10-47 under 35 U.S.C. § 102(e) as
anticipated by Ho (US 2008/0032848 Al, pub. Feb. 7, 2008).
ANALYSIS
Appellant argues that the Examiner’s anticipation rejection of claims
10-47 is erroneous because Ho does not teach the claimed motor switch
element, as recited in independent claims 10, 28, and 47, from which each of
the remaining claims depend. Appeal Br. 5—11. Based on our review of the
record, we agree with Appellant, and, thus, we do not sustain the rejection.
With respect to independent claim 10, the claim recites, in relevant
part,
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Appeal 2015-007231
Application 12/865,647
a user-actuatable motor switch element moveable in a first
direction for activating said electric drive motor and in an
opposite direction for deactivating said electric drive motor;
wherein said motor switch element is mechanically
coupled to said shift transmission in such a way that movement
of said motor switch element in said first direction along a
predefined distance activates said electric drive motor, and
movement of said motor switch element along a further
predefined distance in said first direction shifts said shift
transmission from the second gear into the first gear or from the
first gear into the second gear.
Appeal Br., Claims App. (emphases added). Restated, the claim recites that
a motor switch element is moved in a first direction to activate a drive
motor, and is further moved in the first direction to shift a transmission.
The Examiner finds that
Ho discloses . . . said motor switch element (18, 20) and is
mechanically (para. 0031) coupled to said shift transmission (16)
in such a way that movement of said motor switch element (18,
20) in said first direction along a predefined distance (para.
0055), activates said electric drive motor (10), and movement of
said motor switch element (18, 20) along a further predefined
distance in said first direction shifts said shift transmission (16,
paras. 0057, 0061, 0062) from the second gear (high speed with
low torque para. 0062) into the first gear (low speed with high
torque para. 0068) or from the first gear into the second gear.
Answer 3; see also Final Action 2—3. Based on our review of the cited
portions of Ho, we determine that none clearly describes that a motor switch
element is moved in a first direction to activate a drive motor, and is further
moved in the first direction to shift a transmission. Ho’s paragraph 31 states
that “[t]he drive train 14 may include a variable speed transmission 16 to
mechanically change the speed of the output 12. The power tool 2 may also
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Appeal 2015-007231
Application 12/865,647
include a trigger switch 18 and a motor switch 20 for selectively activating
the motor 10 to supply power to the drive train 14,” but does not describe
movement of a motor switch element, such as trigger switch 18 or other
hardware, to shift transmission 16, for example. See Ho 131. Further, none
of the other cited portions of Ho appears to describe movement of a motor
switch element to shift a transmission. See id. ^fl[ 55, 57, 61, 62, 68.
Conversely, it appears that “the Ho transmission switches automatically in
response to an increase in the amount of torque experienced during operation
by the power tool—not in response to movement of the trigger switch along
a further predefined distance in the same direction that it moved to actuate
the motor.” Appeal Br. 6 (emphases omitted); see also Ho Abstract (“A
variable speed transmission that changes the output speed of a power tool in
response to an increase in torque.”).
In response to Appellant’s argument, the Examiner determines that
“Ho stated in paragraph 0057 [sic—5#], lines 43 [—]47 that the trigger is
continued to be actuated, suggesting the trigger is being move along a
distance to start the motor and [to] shift [an] input pinion.” Answer 4. To
the extent that the Examiner finds that Ho’s statement that “[a]s the trigger
switch 18 continues to be actuated, the trigger switch 18 engages the trigger
bar 184 and actuates the motor switch 20” teaches that a further movement
of a motor switch element occurs to shift a transmission, we disagree, and
note, for example, that “continue[d] . . . actuation]” may refer to continued
holding of switch 18 in a certain position without further movement, while
we also note that the cited portion does not discuss any shifting of a
transmission.
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Appeal 2015-007231
Application 12/865,647
Thus, based on the foregoing, we do not sustain the rejection of
independent claim 10 or its dependent claims 11—27. Inasmuch as
independent claims 28 and 47 recite similar recitations, we also do not
sustain the rejection of these independent claims or claim 28’s dependent
claims 29-46.
DECISION
We REVERSE the Examiner’s anticipation rejection of claims 10-47.
REVERSED
5