Ex Parte Turner et al

Board of Patent Appeals and Interferences

Jun 22, 2011

10827465 (B.P.A.I. Jun. 22, 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.
10/827,465 04/19/2004 Terry L. Turner 0275MU-000510/COB 2992
27572 7590 06/23/2011
HARNESS, DICKEY & PIERCE, P.L.C.
P.O. BOX 828
BLOOMFIELD HILLS, MI 48303
EXAMINER
CHUKWURAH, NATHANIEL C
ART UNIT PAPER NUMBER
3721
MAIL DATE DELIVERY MODE
06/23/2011 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 TERRY L. TURNER and DAVID C. CAMPBELL
____________________

Appeal 2009-011565
Application 10/827,465
Technology Center 3700
____________________

Before: JENNIFER D. BAHR, LINDA E. HORNER, and STEVEN D.A.
MCCARTHY, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 23-38 under 35 U.S.C. § 103(a) as being unpatentable
over Mooty (US 6,656,626 B1, iss. Dec. 2, 2003) and Maeda (US 5,189,570,
iss. Feb. 23, 1993). We have jurisdiction under 35 U.S.C. § 6(b).
Appellants’ representative presented oral argument on June 16, 2011.
We AFFIRM.

The Invention
The claims are directed to a battery powered power tool provided with
a mechanism for ejecting the battery from the tool. Spec., para. 1. Claim
23, reproduced below, is illustrative of the claimed subject matter:
23. A power tool housing having a mechanism for ejecting a
battery pack, comprising:
said housing including motor portion and a handle
portion extending away from said motor portion, and a base
portion at a distal end of said handle portion away from said
motor portion to form a terminus of said power tool housing;
a frame in said base portion;
a cavity in said frame for receiving a battery pack at the
distal end of the handle portion;
a member for receiving a member on the battery pack to
couple the battery pack with the power tool;
a biasing member in said cavity, said biasing member for
ejecting said battery pack from said receiving member; and
said battery pack received in said receiving member so
that said battery pack is in contact with said biasing member
such that when the battery pack is secured on said frame, said
biasing member is in a compressed condition and when the
battery pack is released from said frame, said biasing member
ejects the battery pack from the frame.
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ISSUE
The issue presented in this appeal is whether Mooty and Maeda render
obvious a power tool as called for in claims 23 and 29 having a “biasing
member for ejecting said battery pack from said receiving member” wherein
“said battery pack is in contact with said biasing member such that when the
battery pack is secured on said frame [or housing], said biasing member is in
a compressed condition and when the battery pack is released from said
frame [or the housing], said biasing member ejects the battery pack from the
frame.”
Appellants do not present any separate arguments for the patentability
of dependent claims 24-28 and 30-38. Thus, in accordance with 37 C.F.R.
§ 41.37(c)(1)(vii), dependent claims 24-28 stand or fall with claim 23 and
dependent claims 30-38 stand or fall with claim 29.

FACTS PERTINENT TO THE ISSUE
We adopt the Examiner’s findings in the Answer at page 3, lines 9-16,
and page 5, lines 3-13. Appellants have not disputed these findings.
We find that Mooty describes a power tool having, in relevant part, a
battery release mechanism including a closure member 130 disposed within
the battery receiving portion 112. Col. 6, ll. 25-27. Mooty’s closure
member is biased by a spring 125 into the lock position shown in figure 7A,
in which the locking finger 136 obstructs guide channel 116 to in effect act
as a latch to secure, or lock, the battery pack 108 onto the power tool 100.
Col. 6, ll. 43-45; col. 6, l. 67 to col. 7, l. 1. An operator can release the
battery 108 from the power tool 100 by depressing the push button 110 on
closure member 130 against the bias of spring 125, such that the locking
finger 136 no longer obstructs the guide channel 116, and urging the battery
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108 toward the rear of the power tool 100. Col. 8, ll. 44-61; fig. 7B
(illustrating the release position of closure member 130). In other words,
ejecting the battery pack from Mooty’s power tool is a two-step process
comprising the steps of depressing the push button to unlatch the battery
pack and manually urging the battery toward the rear of the power tool.
We find that Mooty lacks a biasing member which is in a compressed
condition when the battery pack is secured on the frame and which ejects, in
the sense of expelling, discharging, or throwing out,1 the battery pack from
the frame of the power tool.
Maeda describes a different arrangement for ejecting a battery from its
loading position within an apparatus. Maeda’s arrangement comprises a
lock lever 73 which, like Mooty’s closure member 130, is movable between
a lock position in which the battery 70 is secured or locked in its loading
position (figs. 10 and 11a) in the apparatus and a release position (fig. 11c)
in which the battery is released or unlocked from its loading position. Col.
10, l. 44 to col. 11, l. 5. Maeda’s arrangement additionally includes counter
springs 81 secured to the base plate 82 of the battery-receiving structure of
the apparatus which are contacted by and compressed by the battery when
the battery is secured within the apparatus and which apply a biasing force to
thrust the battery out when the lock lever is moved in the direction of arrow
F (figs. 10, 11a, 11b). Col. 10, l. 64 to col. 11, l. 5.

1 An ordinary and customary meaning of the term “eject” is “to throw out;
cast out; expel; emit; discharge” or “to drive out.” Webster's New World
Dictionary 447 (David B. Guralnik ed., 2nd Coll. Ed., Simon & Schuster,
Inc. 1984).
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DISCUSSION
Based on our findings above, we conclude that it would have been
obvious to modify Mooty’s support portion 106 by providing counter
springs within the battery receiving portion which are compressed when the
battery is received and secured within the battery receiving portion and
which exert a biasing force to eject the battery pack, as taught by Maeda, in
order to facilitate the detachment of the battery pack from the power tool.
Such a modification of Mooty simply provides an automatic or mechanical
means (counter springs) to replace a manual activity (urging the battery pack
out of the power tool) to accomplish the same result2 and is nothing more
than the predictable use of prior art elements according to their established
functions.3 Therefore, the Examiner’s conclusion that it would have been
obvious to modify the battery pack receiving member of Mooty to provide
an arrangement wherein the secured battery pack compresses a biasing
member “in order to more effectively detach of [sic] the battery pack from
the frame” has rational underpinning. See Ans. 4, 6.
Appellants argue that Mooty teaches away from Appellants’ claimed
invention because Mooty’s battery must be physically removed from the
channels 116, 119 after locking finger 136 of closure member 130 has been
moved out of channel 116 by depression of push button 110. See App. Br. 6.
We do not agree with Appellants. Simply that there are differences between
two references is insufficient to establish that such references teach away

2 It is well established that providing an automatic or mechanical means to
replace a manual activity which accomplishes the same result is not
sufficient to distinguish over the prior art. In re Venner, 262 F.2d 91, 95
(CCPA 1958).
3 An improvement that is nothing more than the predictable use of prior art
elements according to their established functions is likely to be obvious.
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007).
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from any combination thereof. See In re Beattie, 974 F.2d 1309, 1312-13
(Fed. Cir. 1992). Further, prior art does not teach away from claimed
subject matter merely by disclosing a different solution to a similar problem
unless the prior art also criticizes, discredits or otherwise discourages the
solution claimed. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
Appellants also argue that Maeda “teaches away from enabling the
operator to remove the battery, when desired, from the power tool.” App.
Br. 8. We do not agree with Appellants. First, Appellants’ argument is not
commensurate with the scope of claims 23 and 29, which do not require that
the power tool enable the operator to remove the battery, when desired, from
the power tool. Further, we do not find, and Appellants have not pointed to,
any teaching by Maeda suggesting that the operator is precluded from
removing the battery at a time of the operator’s choosing. Maeda’s Abstract
discloses that the magnetic head of Maeda’s apparatus is separated from the
magnetic recording medium in response to a solenoid “when the power
supply switch is opened, when the power supply voltage drops below a
predetermined level, or when the power supply (a battery) is ejected from
the apparatus.” This suggests that, contrary to Appellants’ assertions on
page 2 of the Reply Brief, Maeda contemplates that the battery might be
ejected at times other than when the power supply voltage drops below a
predetermined level. As noted in our findings above, Maeda discloses that
the battery 70 is thrust out of the apparatus by the biasing force of the
counter springs 81 when the lock lever 73 is moved in the direction of arrow
F. However, Maeda does not specify that the operator is precluded from
effecting the movement of lock lever 73 in the direction of arrow F to eject
the battery. Moreover, in any event, Maeda in no way discourages the use of
counter springs to assist in ejecting a battery, at a time of an operator’s
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choosing, in response to the operator pressing a push button to release a
latch securing the battery in the apparatus.
For the above reasons, Appellants have not persuaded us that the
Examiner’s rejection of claims 23 and 29 and of dependent claims 24-28 and
30-38, which stand or fall with claims 23 and 29, should be reversed.

DECISION
For the above reasons, the Examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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