Ex Parte Roehm et al

Board of Patent Appeals and Interferences

Mar 8, 2012

11395482 (B.P.A.I. Mar. 8, 2012)

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.
11/395,482 03/31/2006 Heiko Roehm 3695 2700
7590 03/09/2012
STRIKER, STRIKER & STENBY
103 EAST NECK ROAD
HUNTINGTON, NY 11743
EXAMINER
DUDA, RINA I
ART UNIT PAPER NUMBER
2837
MAIL DATE DELIVERY MODE
03/09/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte HEIKO ROEHM and GYULA GONDOS
____________________

Appeal 2009-012515
Application 11/395,482
Technology Center 2800
____________________

Before ALLEN R. MacDONALD, KRISTEN L. DROESCH, and
ERIC B. CHEN, Administrative Patent Judges.

PER CURIAM.

DECISION ON APPEAL

Appeal 2009-012515
Application 11/395,482

2
STATEMENT OF CASE
Introduction
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-20, all the claims pending in the application. We have jurisdiction
under 35 U.S.C. § 6(b). We affirm.
Exemplary Claim
Exemplary claim 1 under appeal reads as follows (formatting and text
in brackets added for readability):
1. A hand power tool, including a housing (10)[:]
[a)] with an upper part (11) for receiving at least an electric
motor and a gear,
[b)] with a middle part (12) embodied as a hand grip (14) and
receiving at least one rechargeable battery, and
[c)] with a lower part (13) embodied as a base (16) to stand on,
wherein the rechargeable battery is integrated entirely with the
housing of the hand grip and is neither integrated into the base nor
embodied as the base.

Rejections at Issue in this Appeal 1
The Examiner rejected claim 1 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Nagahara (US 4,399,201) and Roger
(US 4,536,688).
Appellants’ Contentions
Appellants contend that the Examiner erred in rejecting
claim 1 because the tool “would not be in balance if it were set down upon
the bottom plate 24 of the handle [of the primary reference].” (App. Br. 5).

1 Separate patentability is not argued for claims 2-20.
Appeal 2009-012515
Application 11/395,482

3
Appellants’ remaining contentions may be found at pages 4-6 of the
Appeal Brief.
Issue on Appeal
Did the Examiner err in rejecting claim 1 as being obvious because
the references fail to teach or suggest the claim limitations at issue?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred.
We disagree with Appellants’ conclusion. We adopt as our own
(1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken and (2) the reasons set forth by the Examiner in
the Examiner’s Answer in response to Appellants’ Appeal Brief. (Ans. 6-7).
We concur with the conclusions reached by the Examiner.
As to the above specifically quoted contention, the Examiner correctly
points out that as to the argued “balance” (we read this as a property),
“applicant cannot look at a two-dimensional picture as the one shown in
figure 4 [of the Nagahara reference] and deduce that in a three-dimensional
scenario balance would not be present” and “[f]urthermore, the language of
claim 1 does not require the bottom part of the tool to be the sole support of
the tool when the tool is in a standing position.” (Ans. 7).
As to Appellants’ other contentions not reproduced herein, as stated
above, we agree with the Examiner and adopt the Examiner’s reasoning.

Appeal 2009-012515
Application 11/395,482

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CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1-20 as being
unpatentable under 35 U.S.C. § 103(a).
(2) Claims 1-20 are not patentable.

DECISION
The Examiner’s rejections of claims 1-20 are 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

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