Ex Parte Stirm

Board of Patent Appeals and Interferences

Feb 15, 2011

12283260 (B.P.A.I. Feb. 15, 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.
12/283,260 09/10/2008 Michael Stirm P-US-PR-1044-B 6559
28268 7590 02/16/2011
THE BLACK & DECKER CORPORATION
701 EAST JOPPA ROAD, TW199
TOWSON, MD 21286
EXAMINER
CHUKWURAH, NATHANIEL C
ART UNIT PAPER NUMBER
3721
MAIL DATE DELIVERY MODE
02/16/2011 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 BLACK & DECKER INC.
____________________

Appeal 2010-009727
Application 12/283,2601
Technology Center 3700
____________________

Before JAMESON LEE, RICHARD TORCZON, and
SALLY C. MEDLEY, Administrative Patent Judges.

LEE, Administrative Patent Judge.

DECISION ON APPEAL2

1 Application 12/283,260 is a reissue application of U.S. Patent No.
6,666,284 B2 (“’284 Patent”).

2 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 on the PTOL-90A cover letter attached to this decision.

Appeal 2010-009727
Application 12/283,260

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A. STATEMENT OF THE CASE
This is a decision on appeal by an Appellant, whose real party in
interest is Black & Decker Inc. (“B & D”), under 35 U.S.C. § 134(a) from a
final rejection of claims 21-27. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

References Relied on by the Examiner
Fünfer 5,787,996 Aug. 4, 1998
Demuth et al. (“Demuth”) 6,109,364 Aug. 29, 2000

The Rejections on Appeal
The Examiner rejected claims 21-27 under 35 U.S.C. § 103(a) as
unpatentable over Demuth and Fünfer.

The Invention
The invention relates to a rotary hammer which operates to rotate and
reciprocate a tool that is held by the hammer. (‘284 Patent Abstract.)

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B & D’s Figure 33 is reproduced below and illustrates an embodiment
of its hammer:

Figure 3 depicts an electrically powered hammer according to
B & D’s invention.

As shown in the figure above, B & D’s hammer includes a wobble
sleeve 34 mounted on an intermediate shaft 24, a wobble bearing 39
mounted on the wobble sleeve, and a wobble pin 40. The surface of wobble
sleeve 34 forms a wobble plate track 36 over which wobble pin 40 rotates by
way of wobble bearing 39 to reciprocally drive a piston 20, which, in turn,
drives a tool mounted in tool holder 16. (‘284 Patent 6:48-7:8.) The
hammer also includes a support bearing 129 mounted on wobble sleeve 34
forward of the wobble bearing. (See the amendments to the Specification of
the ‘284 Patent filed September 10, 2008.)
B & D’s claim 21 is illustrative and reproduced below (App. Br. 9
Claims App’x.):

3 Figure 3 is reproduced is from the replacement drawing sheet
submitted September 10, 2008.
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21. An electrically powered hammer comprising:

a tool holder located at a forward end of the hammer;

a hammering mechanism for generating repeated impacts on a
tool or bit mounted in the tool holder;

a rotatingly driven intermediate shaft; and

a wobble drive arrangement for reciprocatingly driving the
hammering mechanism, which wobble drive arrangement comprises:

a wobble sleeve mounted on the intermediate shaft;

a wobble bearing on the wobble sleeve; and

a support bearing mounted on the wobble sleeve forward
of the wobble bearing.
B. ISSUES
1. Did the Examiner correctly determine that a person of ordinary
skill in the art would have had adequate motivation to combine the teachings
of Demuth and Fünfer?
2. Did the Examiner correctly determine that a person of ordinary
skill in the art would have known how to combine the teachings of Demuth
and Fünfer to arrive at the invention set forth in B & D’s claims?
C. PRINCIPLES OF LAW
The test for obviousness is what the combined teachings of the
references would have suggested to those of ordinary skill in the art. In re
Young, 927 F.2d 588, 591 (Fed. Cir. 1991).
In an obviousness analysis, it is not necessary to find precise teachings
in the prior art directed to the specific subject matter claimed because the
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creativity that a person of ordinary skill in the art would employ can be
taken into account. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
It is not necessary that the inventions of the references must be
physically combinable, without change, to render obvious the invention
under review. In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983).
D. FACTS AND ANALYSIS
The Examiner rejected claims 21-27 as unpatentable over Demuth and
Fünfer. Claim 21 is an independent claim. Claims 22-27 are ultimately
dependent on and argued collectively with claim 21. Claim 21 is drawn to
an electrically powered hammer with a hammering mechanism and a
rotating intermediate shaft. The hammer also includes a wobble drive
arrangement for driving the hammering mechanism in a reciprocal manner.
The wobble drive arrangement includes the following features (App. Br. 9
Claims App’x.):
a wobble sleeve mounted on the intermediate shaft;

a wobble bearing on the wobble sleeve; and

a support bearing mounted on the wobble sleeve forward of the
wobble bearing.

The Examiner determined that Demuth discloses an electrically
powered rotary hammer having all the features of B & D’s claim 21,
including those quoted above, with the exception of a support bearing that is
mounted on the wobble sleeve forward of the wobble bearing.

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Demuth’s Figure 2 is reproduced below:

Figure 2 depicts a rotary hammer according to Demuth’s
invention.

As illustrated in the figure above, Demuth’s hammer includes an
intermediate shaft 13 which carries a support bush 16. (Demuth 3:28-59.)
The Examiner determined, and B & D does not dispute, that support bush 16
constitutes the claimed wobble sleeve. That wobble sleeve includes a
wobble ring 17 housing a bearing, i.e., a wobble bearing. (Id.) Demuth’s
Figure 2, however, does not show a support bearing mounted on the wobble
sleeve. To account for the support bearing, the Examiner relied on Fünfer.
Fünfer discloses a combined drilling and chiseling tool, i.e., a rotary
hammering tool. (Fünfer Abstract.)

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Fünfer’s Figure 2 is reproduced below:

Figure 2 illustrates a rotary hammering tool according to
Fünfer’s invention.

Fünfer’s hammering tool includes a striking mechanism 28 used for
driving a piston 30 and a “swash” or wobble mechanism 25. (Fünfer 2:64.)
As a part of that wobble mechanism, a bearing ball 14 is carried on a rolling
track 15, i.e., a wobble track, on an intermediate shaft 11. (Id. at 3:2-11.) In
lieu of a separate wobble sleeve, the rolling track 15 is formed directly on
the surface of shaft 11. Fünfer further discloses two support bearing
assemblies 19 and 20, the second of which, 20, includes a ball bearing
component 27 that is located in-between the rolling track 15 and the leading
end 21 of the intermediate shaft. (Id. at 3:27-31.) In reference to the second
bearing assembly, Fünfer states “[a] good bearing arrangement or support
for the intermediate shaft is obtained, if a second bearing is located between
a leading free end of the intermediate shaft and the rolling track.” (Id. at
2:12-15.) Thus, Fünfer teaches that the placement of a bearing between the
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leading end of the intermediate shaft and the rolling track, i.e., a position that
is forward of its wobble bearing 14, provides good support for the shaft.
In light of the teachings of Demuth and Fünfer, the Examiner
reasoned that a person with ordinary skill in the art would have recognized
that a bearing support may be provided on a wobble sleeve, such as that of
Demuth, in a position forward of a wobble bearing. (Ans. 3:18-20.) The
Examiner concluded that the subject matter of B & D’s claims would have
been obvious.
B & D contests the Examiner’s reasoning and conclusion on the
theory that none of the references discloses a bearing support located on a
wobble sleeve. (App. Br. 6:4-13.) B & D argues that based on the teachings
of those references, one with ordinary skill in the art would not have known
to place a bearing support on a wobble sleeve.
B & D’s argument is unpersuasive. Whether each reference
individually discloses a support bearing on a wobble sleeve does not end the
inquiry into the obviousness of such a feature. Rather, in determining
obviousness, the inquiry must reflect what the combined teachings of the
references would have suggested to those of ordinary skill in the art. In re
Young, 927 F.2d at 591. Indeed, it is not necessary in the obviousness
analysis that the specific claimed subject matter must be found in the explicit
teachings of the prior art because the creativity that a person of ordinary skill
in the art would employ can be taken into account. KSR Int’l Co., 550 U.S.
at 418.
In this case, Fünfer discloses that a hammering tool desirably includes
a support bearing positioned between the end of an intermediate shaft and a
rolling or wobble track because that bearing position has the benefit of
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providing “good” support for the shaft. (Fünfer 2:12-13.) In the context of
Fünfer, the surface the bearing contacts is the intermediate shaft itself
because that is the outer surface on which the wobble track resides.
However, one with ordinary skill in the art would have knowledge and
intelligence going beyond just what is expressly disclosed. A person of
ordinary skill in the art is also a person of ordinary creativity, and not an
automaton. KSR Int’l Co., 550 U.S. at 421.
One with ordinary skill and creativity in the art applying Fünfer’s
teachings to a hammer in which the wobble track is formed on a sleeve
surrounding the intermediate shaft, such as in Demuth, would have readily
appreciated that in that circumstance it is the surface of the sleeve which
would contact the support bearing. We reject B & D’s assertion to the
contrary as it presumes no skill, ordinary creativity, or common sense on the
part of a skilled artisan in implementing Fünfer’s teachings onto the known
intermediate shaft configurations of other hammering devices. One with
ordinary skill would have known to make basic adaptations based on a
changed circumstance such as a different surrounding configuration.
B & D also contends that there is inadequate motivation to combine
the teachings of Demuth and Fünfer. (App. Br. 6:15-22.) That contention,
however, is unpersuasive as it ignores Fünfer’s disclosure that positioning a
support bearing along the intermediate shaft forward of the wobble track
provides “good” support. The pursuit of “good” support for the intermediate
shaft in a hammer provides adequate motivation for a skilled artisan to apply
Fünfer’s teachings to other hammers which incorporate an intermediate
shaft.
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Lastly, B & D contends that Demuth “teaches away” from
incorporating a bearing support on its support bushing 16, i.e., its wobble
sleeve. (Id. at 6:24-7:10.) In support of the contention, B & D urges that that
incorporation would allegedly destroy the functionality of Demuth’s
elements 15, 20, and 21, which reside on its intermediate shaft, because the
support bearing would necessarily have to “occupy the same space” as those
elements. (Id.)
We are not persuaded by B & D’s argument. At the outset, B & D
does not offer any objective evidence, such as expert testimony, supporting
its contention. The contention is simply speculative attorney argument.
Such argument cannot take the place of evidence lacking in the record.
Estee Lauder Inc. v. L'Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997).
Furthermore, Fünfer does not limit the placement of its support
bearing assembly to any one particular location along the intermediate shaft.
Rather, Fünfer’s disclosure encompasses the placement of the support
bearing anywhere between the leading end of the intermediate track and the
rolling track. B & D does not meaningfully explain why it would be
necessary to place the support bearing only at the same location taken up by
Demuth’s elements 15, 20, and 21.
In any event, it is not necessary that the inventions of the references
must be physically combinable, without change, to render obvious the
invention under review. In re Sneed, 710 F.2d at 1550. Even if some
reconfiguration of the components of Demuth’s hammer would have been
necessary to accommodate a support bearing along its wobble sleeve, it
would not have been outside the skill of a person of ordinary skill in the art
to do so. A skilled artisan would not have taken the approach that
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combining the teachings of Demuth and Fünfer mandates that the positions
of the components of Demuth are unchangeable and must be strictly
preserved. Demuth’s elements 15, 20, and 21 are, respectively, a splined
section, a bush element, and a compression spring. (Demuth 3:42-59.)
Those elements desirably operate in-part to allow Demuth’s rotary hammer
to switch between a hammering operation and a drilling operation. (Id. at
Abstract.) Demuth does not restrict the position of the elements solely to
one location. The positioning of Fünfer’s support bearing between the
rolling track and the forward end of the intermediate shaft provides for good
support of the shaft. (Fünfer 2:12-13.) A person of ordinary skill and
creativity in the art would have known how to combine the teachings of each
reference in a manner that maintains the functionality and benefits of the
pertinent components. We reject B & D’s argument that combining the
teachings Demuth and Fünfer is prohibited because the combination
somehow would require that certain components must occupy the same
space. That argument is premised on an unreasonably limited view of how
one with ordinary skill in the art would have approached combining the
teachings.
For all the foregoing reasons, we sustain the rejection of claims 21-27
over Demuth and Fünfer.
E. CONCLUSION
1. The Examiner correctly determined that a person of ordinary
skill in the art would have had adequate motivation to combine the teachings
of Demuth and Fünfer.
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2. The Examiner correctly determined that a person of ordinary
skill in the art would have known how to combine the teachings of Demuth
and Fünfer to arrive at the invention set forth in B & D’s claims.
F. ORDER
The rejection of claims 21-27 under 35 U.S.C. § 103(a) as
unpatentable over Demuth and Fünfer is affirmed.

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

THE BLACK & DECKER CORPORATION
701 EAST JOPPA ROAD, TW199
TOWSON MD 21286