Ex Parte Simonelli et al

Patent Trial and Appeal Board

Aug 26, 2013

11806483 (P.T.A.B. Aug. 26, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DAVID SIMONELLI, CHARLES W. HEWITT, and
KEVEN MILLER
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Appeal 2011-006273
Application 11/806,483
Technology Center 3700
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Before: STEFAN STAICOVICI, BENJAMIN D. M. WOOD, and
JOHN W. MORRISON, Administrative Patent Judges.

WOOD, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/806,483

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
33-43. Claims 1-32 and 44 have been canceled. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.
THE INVENTION
The claims are directed to a fastener driving device. Sole independent
Claim 33, reproduced below, is illustrative of the claimed subject matter:
33. A fastener driving device comprising:
a fastener driver having a distal end
configured to engage the top of a fastener and
drive the fastener into a workpiece during a drive
stroke;
a[n] energy storage source operatively
connected to the fastener driver, the energy storage
source being configured to store energy and to
transfer the energy to the fastener driver to drive
the fastener driver through the drive stroke; and
a motor operable to provide energy to the
energy storage source in at least two stages
comprising a first stage in which a first amount of
energy is stored in the energy storage source and a
second stage in which an additional amount of
energy is provided to the energy storage source,
wherein after the motor provides the first amount
of energy to the energy storage source, the distal
end of the fastener driver is positioned at a relative
height that is below the top of the next fastener to
be driven, and wherein in response to an actuation
input, the motor provides additional amount of
energy to the energy storage source to move the
distal end of the fastener driver to a relative height
that is above the top of the next fastener to be
driven.

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Application 11/806,483

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REFERENCES
Hayashi
Oguri
US 5,605,268
US 5,685,525
Feb. 25, 1997
Nov. 11, 1997

REJECTIONS
Claims 33, 34, 40, and 41 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Hayashi. Ans. 3.
Claims 35-39, 42, and 43 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Hayashi and Oguri. Ans. 4.

ANALYSIS
Claims 33, 34, 40, and 41 – Anticipation – Hayashi
The Examiner found that Hayashi discloses all of the limitations of
claim 33 except for the requirement that the motor provide energy to the
energy storage source (e.g., a spring) in at least a first stage and a second
stage, wherein, inter alia, after the first stage the distal end of the fastener
driver is positioned at a relative height that is below the top of the next
fastener to be driven. Ans. 3-4. But the Examiner also found that “the CPU
of Hayashi is capable of executing” this limitation. According to the
Examiner:
While Hayashi has not expressly mentioned that the CPU is
programmed to perform the functional recitation as set forth
above in the claim, Hayashi is capable of such function because
the CPU is programmable, and the motor responds to the
functions inputted by the user to execute fastening operation.
Ans. 7.
Appellants contend, in response, that the Examiner has not provided
any evidence that all of claim 33’s limitations are expressly or implicitly
taught by Hayashi. App. Br. 5. Appellants argue that just because
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Hayashi’s device employs a CPU does not mean that the device is capable of
performing the claimed function.
“To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently.” In re
Schreiber, 128 F.3d 1473, 1477 (Fed.Cir.1997). However, “[w]here the
Patent Office has reason to believe that a functional limitation asserted to be
critical for establishing novelty in the claimed subject matter may, in fact, be
an inherent characteristic of the prior art, it possesses the authority to require
the applicant to prove that the subject matter shown to be in the prior art
does not possess the characteristic relied on.” Schreiber, 128 F.3d at 1478
(quoting In re Swinehart, 58 C.C.P.A. 1027, 439 F.2d 210, 213
(C.C.P.A.1971)).
While we appreciate that, under Schreiber, an Examiner can show that
a prior-art reference inherently discloses a functional limitation by showing
that the device is capable of performing the claimed function, the Examiner
has not actually found that Hayashi’s fastener is capable of performing claim
33’s requirement that energy be delivered to an energy storage source in at
least two specific stages. Instead, the Examiner found only that Hayashi’s
fastener can be made capable of performing the function by reprogramming
its CPU. Ans. 7. This finding is both unsupported and insufficient to show
inherent disclosure of the function. It is unsupported because the Examiner
has not provided evidence that the CPU employed in Hayashi’s device is
programmable at all, much less that it can be reprogrammed to perform the
claimed function. It is insufficient to show inherent disclosure because the
Examiner has not actually found that Hayashi’s fastener, as disclosed, is
capable of performing the claimed function. See Schreiber, 128 F.3d at
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1477 (holding that a prior art reference must disclose every limitation, either
explicitly or inherently). In fact, by finding that Hayashi’s device needs to
be reprogrammed to perform the claimed function, the Examiner implies that
the disclosed device is not capable of doing so. Because the Examiner has
not found that Hayashi’s device, as disclosed, is capable of performing the
claimed function, the Examiner has not shown that Hayashi anticipates claim
33. We therefore do not sustain the Examiner’s rejection of claim 33, and its
dependent claims 34, 40, and 41, as anticipated by Hayashi.
Claims 35-39, 42 and 43 – Obviousness – Hayashi and Oguri
Claims 35-39, 42, and 43 depend from claim 33. App. Br. 12-13
(Claims Appx.). The Examiner’s rejection of these claims as obvious over
Hayashi and Oguri is based on the finding that Hayashi’s fastener can be
reprogrammed to perform the claimed function. As stated above, this
finding is unsupported and insufficient to establish that Hayashi inherently
discloses the claimed function. Oguri is not invoked to cure this deficiency.
Accordingly, for the reasons discussed above, we do not sustain the rejection
of claims 35-39, 42, and 43 as obvious over Hayashi and Oguri.
DECISION
For the above reasons, the Examiner’s rejection of claims 33-43 is
reversed.
REVERSED

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