Ex Parte Simonelli et alDownload PDFPatent Trial and Appeal BoardAug 26, 201311806483 (P.T.A.B. Aug. 26, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte DAVID SIMONELLI, CHARLES W. HEWITT, and KEVEN MILLER ____________________ Appeal 2011-006273 Application 11/806,483 Technology Center 3700 ____________________ Before: STEFAN STAICOVICI, BENJAMIN D. M. WOOD, and JOHN W. MORRISON, Administrative Patent Judges. WOOD, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-006273 Application 11/806,483 2 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. Appeal 2011-006273 Application 11/806,483 3 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 Appeal 2011-006273 Application 11/806,483 4 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 Appeal 2011-006273 Application 11/806,483 5 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 Klh Copy with citationCopy as parenthetical citation