Ex Parte Schulz

Board of Patent Appeals and Interferences

Feb 18, 2011

11559680 (B.P.A.I. Feb. 18, 2011)

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.
11/559,680 11/14/2006 UDO SCHULZ 3929 4498
7590 02/22/2011
STRIKER, STRIKER & STENBY
103 EAST NECK ROAD
HUNTINGTON, NY 11743
EXAMINER
LOW, LINDSAY M
ART UNIT PAPER NUMBER
3721
MAIL DATE DELIVERY MODE
02/22/2011 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 UDO SCHULZ
____________

Appeal 2009-009223
Application 11/559,680
Technology Center 3700
____________

Before LINDA E. HORNER, MICHAEL W. O’NEILL, and
FRED A. SILVERBERG, Administrative Patent Judges.

O’NEILL, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown in the PTOL-90A cover letter attached to this decision.

Appeal 2009-009223
Application 11/559,680

2
STATEMENT OF THE CASE
Udo Schulz (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting:
(1) claims 1, 4, 5, 7, 10, and 11 under 35
U.S.C. § 103(a) as unpatentable over Shaw (U.S.
Patent No. 5,563,482, issued Oct. 8, 1996) and
Van Naarden (U.S. Patent No. 4,858,312, issued
Aug. 22, 1989); and
(2) claims 8 and 9 under 35 U.S.C. § 103(a)
as unpatentable over Shaw, Van Naarden, and
Georg Fischer Aktiengesellschaft (Great Britain
Patent Application Publication No. GB 1 211 900,
published Nov. 11, 1970) (hereinafter “Fischer”).

Appellant cancelled claims 2, 3, and 6. We have jurisdiction under 35
U.S.C. § 6(b). We REVERSE.
The Invention
The claims on appeal relate to a reversing unit for a hand-held power
tool and to a hand-held power tool including a reversing unit.
Claim 1, reproduced below, with emphasis added, is illustrative of the
subject matter on appeal.
1. A reversing unit for a hand-held power
tool, comprising a reversing device for reversing
an output direction; a drive unit; a tool unit
drivable in rotary manner through at least one
semi-revolution by said drive unit; a protection
unit provided for at least partial compensating for
driving of said tool unit in one output direction in
at least partially automated manner by a
compensating drive in a reverse direction; and a
second unit which is configured for setting a
protection mode, with at least two protection
modes provided such that in a first protection
mode said protection unit is configured for
Appeal 2009-009223
Application 11/559,680

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automatically switching on said compensating
drive as a function of a retention signal which
signals that the driving is being maintained in the
one output direction, and in a second protection
mode said protection unit is configured for
automatically switching on said compensating
drive in a reverse direction after a preset
rotational travel of said tool unit in the one output
direction is completed.

DISCUSSION
Issue
The determinative issue in this appeal is:
Whether Van Naarden teaches a second unit configured for setting a
protection mode, with at least two protection modes provided such that in
first and second protection modes, the protection unit is configured for
automatically switching on the compensating drive in the output direction
and a reverse direction, respectively.
Analysis
Appellant contends that Van Naarden fails to remedy the deficiencies
of Shaw because Van Naarden does not disclose a second unit configured
for setting a protection mode, with at least two protection modes provided
such that in first and second protection modes, the protection unit is capable
of functioning as recited in claims 1 and 11. App. Br. 7.
The Examiner’s position is that Shaw discloses the invention
substantially as claimed in claims 1 and 11, but that Shaw fails to disclose
whether the switch to reverse the drive is automatic. Ans. 3. The Examiner
posits that Van Naarden remedies the deficiencies of Shaw because Van
Naarden teaches “a tool with a reversing device with a protection unit that
Appeal 2009-009223
Application 11/559,680

4
automatically switches on as a function of a signal and after a preset
rotational travel (predetermined torque value) to reverse the motor.” Id.
The Examiner concludes that it would have been obvious to one of ordinary
skill in the art “to make the reversing device of Shaw automatic for the
purpose of overcoming uneven and unreliable torque.” Id.
We agree with Appellant that Van Naarden fails to cure the
deficiencies of Shaw. Van Naarden fails to teach “a second unit which is
configured for setting a protection mode” and there is no evidence that Van
Naarden is capable of performing the functions in first and second protection
modes as recited in claims 1 and 11. Indeed, the portions of Van Naarden
pointed to by the Examiner (i.e., column 3, line 12, and column 3, line 36
through col. 4, line 2) do not provide support for the Examiner’s finding that
Van Naarden is capable of setting a protection mode. In addition, there is no
evidence that Van Naarden is capable of performing the functions in a first
protection mode of “having the protection unit configured for automatically
switching on the compensating drive as a function of a retention signal
which signals that the driving is being maintained in the one output
direction” and in a second protection mode of “having the protection unit
configured for automatically switching on the compensating drive in a
reverse direction after a preset rotational travel of the tool unit in the one
output direction is completed” as is recited in claims 1 and 11.
Moreover, the Examiner has failed to support the legal conclusion of
obviousness by articulating a reason with some rational underpinning as to
why a person of ordinary skill in the art would have modified Shaw by the
teachings of Van Naarden. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006), cited with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
Appeal 2009-009223
Application 11/559,680

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417-18 (2007) (“Rejections on obviousness grounds cannot be sustained by
mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.”). The Examiner’s statement of “for the purpose of
overcoming uneven and unreliable torque” does not set forth a sufficient
reason with some rational underpinning as to why a person of ordinary skill
in the art would consider modifying the drill of Shaw with Van Naarden’s
method of controlling torque in an electric motor driven connector applicator
tool which applies a desired torque to a twist-on wire connector and a
plurality of wire ends positioned within the connector.
In view of the foregoing, we do not sustain the Examiner’s rejection
of claims 1, 4, 5, 7, 10, and 11 under 35 U.S.C. § 103(a) as unpatentable
over Shaw and Van Naarden. In addition, since Fischer fails to cure the
deficiencies of Shaw and Van Naarden and since the rejection of claims 8
and 9 is based upon the same erroneous finding that Van Naarden discloses a
second unit configured for setting a protection mode and in first and second
protection modes being capable of performing the functions recited in claim
1, we also do not sustain the rejection of claims 8 and 9 under 35 U.S.C.
§ 103(a) as unpatentable over Shaw, Van Naarden, and Fischer.

CONCLUSION
Van Naarden fails to teach a second unit configured for setting a
protection mode, with at least two protection modes provided such that in
first and second protection modes, the protection unit is configured for
automatically switching on the compensating drive in the output direction
and a reverse direction, respectively.
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Application 11/559,680

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DECISION
We reverse the Examiner’s rejection of claims 1, 4, 5, 7, 10, and 11
under 35 U.S.C. § 103(a) as unpatentable over Shaw and Van Naarden and
the Examiner’s rejection of claims 8 and 9 under 35 U.S.C. § 103(a) as
unpatentable over Shaw, Van Naarden, and Fischer.

REVERSED

Klh

STRIKER, STRIKER & STENBY
103 EAST NECK ROAD
HUNTINGTON, NY 11743