Ex Parte Talesky et alDownload PDFBoard of Patent Appeals and InterferencesSep 15, 201010875119 - (D) (B.P.A.I. Sep. 15, 2010) 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. 10/875,119 06/23/2004 Mark S. Talesky 0212.68729 7250 24978 7590 09/15/2010 GREER, BURNS & CRAIN 300 S WACKER DR 25TH FLOOR CHICAGO, IL 60606 EXAMINER ALIE, GHASSEM ART UNIT PAPER NUMBER 3724 MAIL DATE DELIVERY MODE 09/15/2010 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 MARK S. TALESKY and WOLFGANG HIRSCHBURGER ____________________ Appeal 2009-007772 Application 10/875,119 Technology Center 3700 ____________________ Before: LINDA E. HORNER, WILLIAM F. PATE III, and FRED A. SILVERBERG, Administrative Patent Judges. PATE III, 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 on the PTOL-90A cover letter attached to this decision. Appeal 2009-007772 Application 10/875,119 2 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1, 10, 12, 13 and 21-23.2 We have jurisdiction under 35 U.S.C. § 6(b). We reverse. The claims are directed to a miter saw and an angular adjustment apparatus therefor. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An angular adjustment apparatus for a miter saw of the type which has a base for supporting the saw and a turntable mounted to the base by a pivot connection defining a generally centrally located axis, the turntable having an outwardly extending handle portion configured to enable a user to manually rotate the turntable relative to the base, said adjustment apparatus comprising: an arcuate rack gear positioned on the base and having a generally constant radius relative to the centrally located axis; and an elongated adjustment mechanism associated with the handle portion, said mechanism comprising: a pinion gear on an inner end portion configured to engage said rack gear when brought into contact therewith; and a manually rotatable control wheel on an outer end portion operatively connected to said pinion gear, said control wheel being rotatable around an axis concentric with said pinion gear and moveable along said concentric axis to cause said pinion gear to selectively engage and disengage said rack gear, rotation of said control wheel while said pinion gear is engaged with said rack gear causing the turntable to rotate relative to the base. 2 On page 2 of the Answer the Examiner states that claim 11 is objected to as being dependent upon a rejected base claim but would be allowable if rewritten in independent form. Appeal 2009-007772 Application 10/875,119 3 REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Dawson Wright Rogers Thorsell Santos US 2,413,436 US 3,213,740 US 3,722,602 US 4,467,684 US Re. 33,898 Dec. 31, 1946 Oct. 26, 1965 Mar. 27, 1973 Aug. 28, 1984 Apr. 28, 1992 REJECTIONS Claims 1, 10, and 12 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Thorsell, Wright or Rogers, and Santos. Ans. 3. Claims 1, 10, and 12 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Thorsell, Wright or Rogers, and Dawson. Ans. 6. Claim 13 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Thorsell and Santos. Ans. 8. Claims 21-23 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Thorsell and Wright or Rogers. Ans. 10. OPINION Appellants contend that the Examiner erred in making each of the above rejections by relying on Thorsell for a disclosure of “a turntable mounted to the base by a pivot connection defining a generally centrally located axis.” App. Br. 16, 19-20. This limitation, or a similar limitation appears in independent claims 1 and 21-23. Claim 13 calls for “a turntable mounted to [a] base and being rotatable around a generally centrally located axis” but does not require mounting of the turntable to the base at that location. Although the limitation argued is recited in the preamble in claims Appeal 2009-007772 Application 10/875,119 4 1 and 21, we understand the Examiner’s rejection to interpret these terms as limiting the scope of those claims. See, e.g., Catalina Mktg Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (“dependence on a particular disputed preamble phrase for antecedent basis may limit claim scope because it indicates a reliance on both the preamble and claim body to define the claimed invention.” (citations omitted)). The Examiner reads Thorsell’s pantograph arm 55 and sub-base 80 as the claimed “turntable.” Ans. 3; see also Thorsell col. 3, ll. 38-51, col. 4, ll. 32-39. The Examiner reads Thorsell’s drum member 43 and half circle gear sector 44 as the claimed “base.” Ans. 3; see also Thorsell col. 3, ll. 19-31. The Examiner contends that “[t]he axis of the pivot connection or the pin is centrally located relative to the periphery of the base 44….any pivot axis that is located on the base is considered to be a centrally located pivot axis.” Ans. 13. The Examiner’s interpretation of “centrally located” is unreasonably broad. One of ordinary skill in the art would not understand the pivot points (unlabeled) where pantograph arm 51 connects pantograph arm 55 and sub- base 80 to the drum member 43 and half circle gear sector 44 as “centrally located” simply because they are within the periphery of the half circle gear sector. See Thorsell fig. 3. Since the Examiner relied upon an unreasonably broad claim interpretation to conclude that the subject matter of independent claims 1 and 21-23 would have been obvious to one having ordinary skill in the art, we are constrained to reverse the Examiner’s rejection of these claims along with dependent claims 10 and 12. Regarding independent claim 13, we note that Thorsell’s pantograph arm 55 and sub-base 80, read as the claimed “turntable,” does in fact rotate about a centrally located axis, pivot axis 10. See Thorsell col. 2, ll. 45-47. Appeal 2009-007772 Application 10/875,119 5 Unlike the claims discussed above, claim 13, arguably, does not require that the turntable be mounted to the base at this location. However, the Examiner did not mention this potential difference in claim scope nor did the Examiner rely upon Thorsell’s pivot axis 10 as the claimed “centrally located axis.” Ans. 8-9. Thus, Appellants have not had an opportunity to respond to such a rationale and we presume the Examiner relied upon the same erroneous claim construction discussed above in rejecting claim 13. In any case, we cannot agree with the Examiner that, when read in light of the Specification, one of ordinary skill in the art would interpret the claim term “turntable” to include Thorsell’s pantograph arm 55 and sub-base 80. Thus, the rejection of claim 13 must also be reversed. DECISION For the above reasons, the Examiner’s rejection of claims 1, 10, 12, 13 and 21-23 are reversed. REVERSED nlk GREER, BURNS & CRAIN 300 S WACKER DR 25TH FLOOR CHICAGO IL 60606 Copy with citationCopy as parenthetical citation