Ex Parte Toulouse et alDownload PDFPatent Trial and Appeal BoardJun 19, 201311569567 (P.T.A.B. Jun. 19, 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. 11/569,567 11/22/2006 Bruno Toulouse 713-1276 1159 33712 7590 06/19/2013 LOWE, HAUPTMAN, HAM & BERNER, LLP (ITW) 2318 Mill Rd Suite 1400 ALEXANDRIA, VA 22314 EXAMINER CHUKWURAH, NATHANIEL C ART UNIT PAPER NUMBER 3721 MAIL DATE DELIVERY MODE 06/19/2013 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 BRUNO TOULOUSE, PATRICK HERELIER, and MICHAEL GLEIZOLLES ____________ Appeal 2011-003740 Application 11/569,567 Technology Center 3700 ____________ Before MICHAEL C. ASTORINO, MICELLE R. OSINSKI, and ADAM V. FLOYD, Administrative Patent Judges. FLOYD, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from the Examiner’s decision finally rejecting claims 11, 12, and 15-21. Claims 1-10, 13, and 14 have been cancelled. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM-IN-PART and denominate our affirmance of one of the grounds of rejection as a NEW GROUND OF REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b). Appeal 2011-003740 Application 11/569,567 2 CLAIMED SUBJECT MATTER Claims 11 and 17 are the independent claims on appeal. Claim 11 is illustrative of the subject matter on appeal, and, with emphasis added, recites: 11. A fixing appliance for driving fixing elements, said appliance comprising: a cylinder of an internal combustion engine; a piston moveably mounted in a front part of the cylinder; a cooling fan mounted in a combustion chamber at a rear part of the cylinder; an electric drive motor connected to rotate said fan; an electronic management module and a supply battery electrically coupled to the motor for controlling and powering operations of the motor, respectively; and a thermistor sensitive to temperature and electrically connected to the electronic management module for transmitting temperature information to the electronic management module which is arranged to manage the temperature information supplied by the thermistor in order to determine an operating period of the fan after ignition according to the temperature information; wherein the thermistor is positioned rearward of said fan. Independent claim 17 recites an additional limitation of mounting the temperature sensor (e.g., thermistor) to a circuit board. REJECTIONS Claims 11, 15, and 16 are rejected under 35 U.S.C. § 103(a) as unpatentable over Ohmori (US 2004/0182336 A1, published Sep. 23, 2004). Appeal 2011-003740 Application 11/569,567 3 Claim 12 is rejected under 35 U.S.C. § 103(a) as unpatentable over Ohmori and Walter (US 6,123,241, issued Sep. 26, 2000). Claims 17-21 are rejected under 35 U.S.C. § 103(a) as unpatentable over Walter, Moeller (US 6,619,527 B1, issued Sep. 16, 2003), and Official Notice. ANALYSIS The rejection of claims 11, 15, and 16 as unpatentable over Ohmori The Examiner finds all limitations of claim 11 are disclosed in Ohmori with the exception of the position of the thermistor being “rearward of said fan.” Ans. 3-4. However, the Examiner finds that Ohmori discloses several different placements for the thermistor 29, 129, 229, 329A, and 329B and concludes that it would have been obvious to position the thermistor rearward of the fan to monitor the cooling time of the combustion chamber. See Ans. 3-4. Appellants argue that in all embodiments, Ohmori places the thermistor forward of the fan 14 and that such placement is required “to ensure overheating protection of critical components” all of which are located forward of the fan. App. Br. 10-11 (citing Ohmori, para. [0008]). The Examiner disagrees, finding that placing the thermistor rearward of the fan “would not change the operating principle of the sensor” and that such placement was obvious to those of ordinary skill in the art. Ans. 7. Appellants argue that the Examiner has not articulated a reason for using such placement with Ohmori and that such placement would render Ohmori unsatisfactory for its intended purpose because the combustion chamber temperature can no longer be accurately detected. Reply Br. 4-5. Contrary to Appellants’ argument, the Examiner did articulate a rational basis for locating the sensor rearward of the fan, namely, “to Appeal 2011-003740 Application 11/569,567 4 monitor the cooling time of the combustion chamber.” Ans. 4. While Appellants argue that placing the sensor rearward of the fan would render it no longer able to accurately measure the combustion chamber temperature, they have offered no evidence to support their argument. Likewise, while Appellants argue against the Examiner’s finding that locating the sensor rearward would not change the operating principle of Ohmori (i.e., to protect against overheating), Appellants offer no evidence to the contrary. Appellants also contend paragraph 8 of Ohmori requires positioning the thermistor forward of the fan (App. Br. 11), but we found no such teaching or suggestion. On the contrary, paragraph 8 states that as the combustion chamber heats up so does the combustion chamber frame, cylinder, and components. See Ohmori, para. [0008]. Ohmori simply discloses the fact that as the combustion chamber heats up so will all of the surrounding parts of the nail gun (i.e., fixing appliance). As the Examiner found, Ohmori discloses monitoring temperatures at various locations on the nail gun in an effort to avoid overheating. Ans. 4. See e.g., Ohmori: Fig. 1 (thermistor 29 on combustion chamber frame 11); Fig. 4 (thermistor 129 on cylinder 20); Fig. 5 (thermistor 229 on exhaust cover 38); Fig. 6 (thermistor 329A on main housing 2A); and Fig. 7 (thermistor 329B on canister housing 302B). We agree with the Examiner that one of ordinary skill in the art reading the disclosure of Ohmori would have found it obvious to position the thermistor rearward of the fan as the Examiner has provided a reason for such placement and such placement would still serve the purpose of protecting against overheating. Thus, the rejection of claim 11 as unpatentable over Ohmori is sustained. Appeal 2011-003740 Application 11/569,567 5 With respect to the rejection of claim 16, Appellants do not make any other arguments separate from those made with respect to the rejection of claim 11. Accordingly, we likewise sustain the rejection of claim 16. As to claim 15, Appellants argue that Ohmori does not disclose “a connecting circuit located at a rear end of the motor and the thermistor is directly mounted on the connecting circuit.” App. Br. 11. Appellants recognize that Figure 2 depicts a connecting circuit connecting the thermistor, but contend that the block diagram does not disclose physical positions of the components. App. Br. 12. The Examiner determines that “the sensor [thermistor] is directly mounted on the connecting circuit” by virtue of being electrically linked with it. See Ans. 8. We disagree; “directly mounted on” requires some direct physical attachment, not merely electrically connected via intervening wires. See e.g., (www.merriam- webster.com/dictionary/directly) (“an immediate physical contact”) and (www.merriam-webster.com/dictionary/mount) (“to attach”). Since Ohmori does not disclose by a preponderance of the evidence that its thermistor (29) is directly mounted on the connecting circuit, the rejection of claim 15 as unpatentable over Ohmori is not sustained. The rejection of claim 12 as unpatentable over Ohmori and Walter The Examiner finds that Ohmori discloses a thermistor which transmits temperature information to an electronic management module which determines the operating period of the fan. Ans. 3-4. Appellants do not contest this finding. App. Br. 12-13; Reply Br. 7-8. However, the Examiner finds that Ohmori fails to explicitly disclose using “a processor” to determine the operating period of the fan as recited in claim 12. Ans. 4. The Appeal 2011-003740 Application 11/569,567 6 Examiner finds that Walter discloses a processor 300 which receives an input signal from a thermistor and concludes that it would have been obvious to use a processor with Ohmori to control parameters associated with tool operation. Ans. 4-5. Appellants argue that the processor in Walter is used to control and monitor fuel, not to determine the operation period of the fan. App. Br. 13. The Examiner finds that Walter discloses the fans 80a and 80b run for a few seconds after the tool is lifted from the workpiece which implies that the operation period of the fan is based upon detected temperature. Ans. 8 (citing Walter, col. 10, ll. 25-29). Appellants argue that implication is not enough and that Walter does not disclose determining the operation period of the fan based upon temperature. Reply Br. 7. We agree that the passage cited by the Examiner does not disclose by a preponderance of the evidence that the period of time the fans run is based upon temperature. See Walter, col. 10, ll. 25-29. While Walter does disclose that the integrated circuit controls the fan (see e.g., Walter, Figs. 19- 22 and col. 10, ll. 46-49) and that that the processor receives input from a temperature sensor (see e.g., Walter, Fig. 23), it does not appear that the temperature sensor is used to determine how long the fan runs for the purpose of cooling. Rather the fans, after being activated by the processor, appear to turn off after a fixed period of time (i.e., automatic time-out). See e.g., Walter, col. 11, ll. 14-25; col. 12, ll. 40-42; and col. 13, l. 58 to col. 14, l. 26. The temperature input, on the other hand, is used to adjust the fuel mixture. Walter, col. 18, ll. 18-47. Nevertheless, Ohmori discloses an electronic management module which determines the operating period of the fan. Ans. 3-4. We conclude that it would have been obvious to replace the electrical circuit of Ohmori Appeal 2011-003740 Application 11/569,567 7 with a processor as it is obvious “to update [a known electro-mechanical device] using modern electronic components in order to gain the commonly understood benefits of such adaptation, such as decreased size, increased reliability, simplified operation, and reduced cost.” Leapfrog Enterprises Inc. v. Fisher-Price Inc., 485 F.3d 1157, 1161-62 (Fed. Cir. 2007). Therefore, we sustain the rejection of claim 12 under 35 U.S.C. § 103(a) as unpatentable over Ohmori and Walter. However, because our affirmance relies on reasoning not specifically used by the Examiner, we denominate our affirmance a new ground of rejection under 37 C.F.R. § 41.50(b). The rejection of claims 17-21 as unpatentable over Walter, Moeller, and Official Notice1 The Examiner finds that all limitations recited in claim 17 are found in Walter with the exception that the temperature sensor is “mounted directly on” a circuit board “at a rear end of the motor.” Ans. 5, 9. The Examiner relies upon the circuit board 116, 122 of Moeller which is positioned at the rear end of the motor 40 and further concludes that it would have been obvious to position the temperature sensor at the rear end of the motor. Id. Specifically, the Examiner finds that one skilled in the art understands that positioning tool elements such as a sensor or a circuit board in any section of the tool is routine in the art and an obvious modification. Id. Appellants argue that the temperature sensor circuit 412 of Walter is intended to monitor the fuel temperature and thus is located at the fuel canister 34 and moving the sensor to the rear end of the motor would render Walter unsatisfactory for its intended purpose because the sensor would no 1 The Official Notice pertains to dependent claim 18. Ans. 6. Appeal 2011-003740 Application 11/569,567 8 longer monitor the fuel temperature. App. Br. 14; Reply Br. 9. Appellants also argue that the Examiner’s statement regarding the routine positioning of elements is insufficient to establish a prima facie case of obviousness without some objective reason to combine the teachings of the references. Reply Br. 9. We agree that the Examiner has not found that moving the sensor in Walter would still enable it to monitor the fuel temperature nor has the Examiner concluded that it would have been obvious to mount the temperature sensor on a circuit board. Thus, the rejection of claims 17-21 under 35 U.S.C. § 103(a) as unpatentable over Walter, Moeller, and Official Notice is not sustained. DECISION We AFFIRM the rejection of claims 11 and 16 under 35 U.S.C. § 103(a) as unpatentable over Ohmori. We REVERSE the rejection of claim 15 under 35 U.S.C. § 103(a) as unpatentable over Ohmori. We AFFIRM the rejection of claim 12 under 35 U.S.C. § 103(a) as unpatentable over Ohmori and Walter, and we denominate our affirmance a NEW GROUND OF REJECTION. We REVERSE the rejection of claims 17-21 under 35 U.S.C. § 103(a) as unpatentable over Walter, Moeller, and Official Notice. Regarding the affirmed rejections of claims 11 and 16, “Appellant[s] may file a single request for rehearing within two months from the date of the original decision of the Board.” 37 C.F.R. § 41.52(a)(1). Appeal 2011-003740 Application 11/569,567 9 The new grounds of rejection of claim 12 “shall not be considered final for judicial review” under 37 C.F.R. § 41.50(b) which also provides that Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . Should Appellants elect to prosecute further before the Examiner pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection, the effective date of the affirmance is deferred until conclusion of the prosecution before the Examiner unless, as a mere incident to the limited prosecution, the affirmed rejection is overcome. If Appellants elects prosecution before the Examiner and this does not result in allowance of the application, abandonment or a second appeal, this case should be returned to the Patent Trial and Appeal Board for final action on the affirmed rejection, including any timely request for rehearing thereof. Appeal 2011-003740 Application 11/569,567 10 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b) Klh Copy with citationCopy as parenthetical citation