Ex Parte Stein et alDownload PDFPatent Trial and Appeal BoardJan 23, 201311497106 (P.T.A.B. Jan. 23, 2013) Copy Citation 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. 11/497,106 08/01/2006 Gunter Stein A 92 666/Ir 5795 7590 01/24/2013 ROBERT W. BECKER & ASSOCIATES Suite B 707 Highway 66 East Tijeras, NM 87059 EXAMINER NGUYEN, PHONG H ART UNIT PAPER NUMBER 3724 MAIL DATE DELIVERY MODE 01/24/2013 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 PATENT TRIAL AND APPEAL BOARD Ex Parte GUNTER STEIN, EBERHARD BOHNAKER, WOLFGANG WEISSERT, and JOHANNES MENZEL Appeal 2010-008350 Application 11/497,106 Technology Center 3700 Before STEVEN D.A. MCCARTHY, MICHAEL L. HOELTER, and REMY J. VANOPHEM, Administrative Patent Judges. VANOPHEM, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-008350 Application 11/497,106   2  STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1, 5, 6, 8-11, and 13-15. We have jurisdiction under 35 U.S.C. § 6(b). CLAIMED SUBJECT MATTER Claim 1 is illustrative of the subject matter on appeal. 1. A manually guided implement, comprising: an engine housing; a handle housing, wherein said engine housing and said handle housing are interconnected by means of anti-vibration means, wherein said handle housing is provided with a longitudinal support having, relative to a conventional operating position of said implement, a front end face that is disposed transverse to a longitudinal axis of said longitudinal support, and wherein said front end face is disposed at an angle of from 0 to 20° relative to a perpendicular to said longitudinal axis; a front tubular handle having a securement end that rests against and is secured to said front end face of said longitudinal support; and a clamping element, wherein said securement end of said tubular handle is positively held between said front end face of said longitudinal support and said clamping element, wherein said clamping element is in the form of a clamping shell that surrounds said securement end of said tubular handle, wherein at least one securement screw is provided for effecting a screw connection of said securement end of said tubular handle to said front end face of said longitudinal Appeal 2010-008350 Application 11/497,106  3  support, wherein said at least one securement screw is disposed perpendicular to a plane of said front end face and hence is disposed at least approximately in the direction of said longitudinal axis of said longitudinal support, and wherein said clamping element is provided with a point of attachment for said anti-vibration means. REJECTION Claims 1, 5, 6, 8-11, and 13-15 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the teachings of Frederickson (US 3,542,095; Iss. Nov. 24, 1970) in view of the teachings of Inaga (US 3,934,344; Iss. Jan. 27, 1976). ANALYSIS Regarding claim 1, the Examiner finds that Frederickson teaches the invention with the exception of the anti-vibration element. Ans. 3-4. The Examiner further finds that Inaga teaches providing an anti-vibration element 14 between an engine housing and a longitudinal support. See Fig. 1. Ans. 4. Therefore, the Examiner concludes it would have been obvious to one skilled in the art at the time the invention was made to provide an anti- vibration element between the engine housing and the longitudinal support in the guided implement of Frederickson for damping the vibration generated by the engine housing as taught by Inaga. Id. Appellants contend that as set forth in claim 1, a clamping element 11 is provided, wherein the securement end 8 of the tubular handle 4 is positively held, i.e., is clamped between the front end face 7 of the Appeal 2010-008350 Application 11/497,106  4  longitudinal support of the handle housing 2 and the clamping element, which is in the form of a clamping shell 11 that supports the securement end 8 of the tubular handle. Thus, Appellants’ clamping shell 11 is a separate component and is not part of the longitudinal support 5. In addition, the clamping shell 11, as further defined in claim 1, is provided with a point of attachment 14 to carry the anti-vibration means. Thus, according to claim 1, the anti-vibration means 3 is attached to the clamping shell 11 and not to the longitudinal support 5. App. Br. 7. The Appellants further contend Frederickson teaches a rigid handle frame with no anti-vibration elements so as to achieve a rigid handle frame that ensures good guidance properties. Inaga teaches the use of anti- vibration elements provided within the handle frame. Therefore, the handle frame of Inaga is not rigid. Reply Br. 2-3. Appellants point out that if a person skilled in the art were to combine the teachings of Frederickson and Inaga, the anti-vibration element 14 of Inaga would be disposed within the clamping connection, as also recognized by the Examiner on page 9 of the Examiner’s Answer. However, if one disposes the anti-vibration element 14 of Inaga in this manner in the rigid handle frame of Frederickson, then, contrary to the teaching of Frederickson, an anti-vibration element would be disposed within the rigid handle frame. This would contradict the teachings of Frederickson, so that there can be no teaching or suggestion to combine the two references in the manner proposed. Reply Br. 3-4. We agree with the Appellants’ reasoning. The Examiner has failed to explain why a person of ordinary skill in the art would have sought to combine the teachings of Inaga’s anti-vibration features with Frederickson’s Appeal 2010-008350 Application 11/497,106  5  handle means and therefore, the Examiner failed to provide any articulated reasoning with some rational underpinning to support the rejection of claims 1, 5, 6, 8-11, and 13-15 with the proposed combination of Inaga and Frederickson. Accordingly, we cannot sustain the rejection of independent claims 1 and 13 under 35 U.S.C. § 103(a). DECISION The rejection of claims 1, 5, 6, 8-11, and 13-15 under 35 U.S.C. § 103(a) is reversed. REVERSED hh Copy with citationCopy as parenthetical citation