Ex Parte Wasielewski et al

Patent Trial and Appeal Board

Feb 21, 2017

12700354 (P.T.A.B. Feb. 21, 2017)

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.
1576-1130 7702
EXAMINER
KATCOFF, MATTHEW GORDON
ART UNIT PAPER NUMBER
3725
MAIL DATE DELIVERY MODE
12/700,354 02/04/2010
10800 7590 02/22/2017
Maginot, Moore & Beck LLP
One Indiana Square, Suite 2200
Indianapolis, IN 46204
Kevin Wasielewski
02/22/2017 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 KEVIN WASIELEWSKI, JOSH BARHITTE, and
TIMOTHY BAKER
Appeal 2015-004259
Application 12/700,3541
Technology Center 3700
Before JOHN C. KERINS, STEFAN STAICOVICI, and LEE L. STEPINA,
Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Kevin Wasielewski et al. (Appellants) appeal under 35 U.S.C.
§ 134(a) from the Examiner’s final decision rejecting claims 2—18.2 We
have jurisdiction over this appeal under 35 U.S.C. § 6(b).
1 According to Appellants, the real parties in interest are Robert Bosch Tool
Corporation and Robert Bosch GmbH. Appeal Br. 2 (filed Oct. 16, 2014).
2 Claim 1 is canceled. See Amendment 4 (filed Mar. 10, 2014).
Appeal 2015-004259
Application 12/700,354
SUMMARY OF DECISION
We REVERSE.
INVENTION
Appellants’ invention relates to a dust collection attachment system
for handheld power tools. See Spec. 1,11. 6—7.
Claims 6 and 12 are independent. Claim 6 is illustrative of the
claimed invention and reads as follows:
6. A dust collection attachment system for use with a power
tool having an elongated housing with a nose portion with a
rotary output shaft, the nose portion being configured to have
an accessory device mounted thereon, said system comprising:
a flexible dust hose attachable to the accessory device for
removing dust and particles from the immediate area of the
accessory device, the accessory device having a dust exhaust
port for connection with said hose; and
a hose support removably attached to a rear end portion
of the power tool opposite the nose portion thereof for
supporting said dust hose, said support having a releasable
retaining clasp and a flexible tab on one end, said releasable
retaining clasp being inserted in and connected to an aperture
defined by said rear end of the power tool and released from
said aperture, said support also including an open-ended hose
retaining clip attached to said releasable retaining clasp and
configured to receive at least a portion of said dust hose,
wherein said hose retaining clip has a recess for receiving
said dust hose, said opening being formed by side walls that
extend slightly beyond half of the circumference of said dust
hose, which side walls then flare outwardly from one another,
and said recess is generally in the shape of a cylindrical opening
between said flared side walls, a diameter of said cylindrical
opening is generally the same as the outside diameter of said
dust hose, and
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Application 12/700,354
wherein said dust hose has an outer surface configuration
with a plurality of spaced apart annular ribs and said hose
retaining clip has at least one circumferential rib extending
radially inwardly into said recess, the circumferential rib being
configured to extend between two adjacent ribs of said dust
hose ribs to prevent lengthwise movement of said dust hose
relative to said hose support.
REJECTIONS
The following rejections are before us for review:
I. The Examiner rejected claims 2—17 under 35 U.S.C. § 103(a) as
being unpatentable over Lechner (US 4,064,952, iss. Dec. 27, 1977) or
Gondar (US 5,667,565, iss. Sept. 16, 1997) in view of Yoo (US 6,510,582
Bl, iss. Jan. 28, 2003) and Buck (US 2002/0063190 Al, pub. May 30,
2002).
II. The Examiner rejected claim 18 under 35 U.S.C. § 103(a) as
being unpatentable over either Lechner or Gondar in view of Yoo, Buck, and
Bongers-Ambrosius (US 6,615,930 B2, iss. Sept. 9, 2003).
ANALYSIS
Rejection I
Obviousness Rejection Based Upon Lechner, Yoo, and Buck
Each of independent claims 6 and 12 recites, in relevant part, “a hose
support removably attached to a rear end portion of the power tool. . . said
support having a releasable retaining clasp and a flexible tab on one end . . .
said support also including an open-ended hose retaining clip attached to
said releasable retaining clasp.” Appeal Br. 26, 28 (Claims App.).
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Application 12/700,354
The Examiner finds that Lechner discloses most of the limitations of
claims 6 and 12 including “a hose support (13) removably attached to a rear
end portion of the power tool. . . said support having a releasable mounting
clasp (13) on one end for attachment to said rear end of the power tool and a
hose retaining clip attached to said mounting clasp.” Final Act. 3 (mailed
May 20, 2014) (citing Lechner, Fig. 1). The Examiner relies on Yoo as
teaching “a hose support (210) having a clasp (211) and a release tab (211a)
. . . and an open-ended (C-shaped) hose retaining clip (222) attached to said
mounting clasp (211) and configured to receive at least a portion of said dust
hose [40].” Id. at 4 (citing Yoo, Fig. 7). The Examiner concludes that it
would have been obvious to a person of ordinary skill in the art “to construct
or replace” Lechner’s hose support with a support as taught by Yoo “so as to
secure the hose to the tool [in Lechner] as taught by Yoo.” Id. The
Examiner further takes the position that in case Appellants argue that
Lechner and Yoo “are not related and therefore hindsight reconstruction has
been made,” it should be noted that “both references clearly teach removal
of debris and dust via [a] hose attached to a tool” and moreover, the
combination is a “simple substitution of Yoo’s means for attaching the
flexible hoses to the power tool” in Lechner with predictable results. Id. at
4-5.
Appellants argue that the Examiner’s rejection “lacks a rational
underpinning and fails to provide a clear articulation of the reasons for
combining the teachings of Lechner and Yoo.” Appeal Br. 9. According to
Appellants, “Lechner requires that the collecting tube (23) is slidably
mounted [relative] to the power drill so that the tip of the collecting tube
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Application 12/700,354
always encloses the drilled hole and the drill bit. . . and the material released
during drilling is collected in a controlled manner.” Id. at 10 (citing
Lechner, col. 1,11. 30-35, 53—56). In contrast, Appellants note that Yoo’s
“tool caddy (200) is detachable from the rear of the vacuum body and has a
locking hook (211) inserted into an aperture (101) of the vacuum body.” Id.
at 9 (citing Yoo, Figs. 9a, 9b). Thus, Appellants conclude that
the substitution of Yoo’s support for Lechner’s support would not have been
obvious because the results of such a substitution “would not have been
predictable.” Id. at 11.
The Examiner responds that “[bjecause the references are concerned
with a similar problem, i.e. dust, debris extraction via a flexible hose
attached to a tool,” the modification would have been obvious “so as to
secure the hose to the tool as taught by Yoo.” Ans. 8—9 (mailed Dec. 31,
2014). The Examiner reiterates that the proposed substitution “will obtain
predictable results and is therefore [an] obvious and proper combination.”
Id. at 9.
The Examiner’s substitution of Yoo’s mounting plate 210 having
locking hook (clasp) 211 and hose clamp (clip) 222 for Lechner’s clamp 13
would not have yielded a predictable result, as the Examiner asserts.
Lechner’s clamp 13 allows tube 23, 7 to move with respect to housing 2,
whereas Yoo’s clasp 211 is locked into locking hole 101 on housing 100 to
provide a stable attachment. Compare Lechner, Fig. 1, col. 3,11. 63—66, with
Yoo, Fig. 9a, col. 6,11. 24—29. As the Examiner has not adequately
explained how Lechner’s collecting tube 7, 23 would move relative to drill 1
using Yoo’s clasp 211 that requires locking into a locking hole, we agree
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with Appellants that “the results of such a combination would not have been
predictable.” Appeal Br. 10—11. The Examiner’s conclusion that the
substitution of Yoo’s support for Lechner’s support has predictable results is
essentially based on the notion that the substitution would have been obvious
merely because Yoo’s support was known to secure a hose to a tool.
Accordingly, the reason proposed by the Examiner to explain why a
person of ordinary skill in the art would have combined the teachings of
Lechner and Yoo is inadequate to support the conclusion of obviousness.
Therefore, we agree with Appellants that the Examiner’s reasoning to
replace the support of Lechner with the support of Yoo lacks rational
underpinnings. See Appeal Br. 9.
Obviousness Rejection Based Upon Gondar, Yoo, and Buck
The Examiner finds that Gondar discloses most of the limitations of
claims 6 and 12 including “a hose support (fig. 2) attached to a rear portion
of the power tool opposite the nose portion for supporting the dust hose.”
Final Act. 3. The Examiner notes that Gondar does not explicitly disclose
the particulars of the hose support, namely, that it is removably attached to
the power tool, has a mounting clasp, and has an open-ended hose retaining
clip attached to the mounting clasp. See id. at 4. Nonetheless, the Examiner
finds that Yoo teaches “a hose support (210) having a clasp (211) and a
release tab (21 la). . . and an open-ended (C-shaped) hose retaining clip
(222) attached to said mounting clasp (211) and configured to receive at
least a portion of said dust hose.” Id. The Examiner concludes that it would
have been obvious “to construct or replace” Gondar’s hose support with a
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Application 12/700,354
support as taught by Yoo “so as to secure the hose to the tool as taught by
Yoo.” Id. The Examiner further takes the position that in case Appellants
argue that Gondar and Yoo “are not related and therefore hindsight
reconstruction has been made,” that it should be noted that “both references
clearly teach removal of debris and dust via [a] hose attached to a tool” and
moreover, the combination is a “simple substitution of Yoo’s means for
attaching the flexible hoses to the power tool (vacuum)... for Gondar’s
means for attaching the flexible hose (24[H]) to the power tool (router) [that]
will obtain predictable results and is therefore [an] obvious and proper
combination of the references.” Id. at 5.
Appellants argue that the substitution of Yoo’s support for Gondar’s
support would not have been obvious because the results of such a
substitution “would not have been predictable.” Appeal Br. 13. According
to Appellants, because Gondar’s “handle (24H) is used by a user to control
the positioning of the tool,” “[t]he handle must, therefore, be firmly attached
to the tool in order for the user to be able to control the tool using the
handle.” Id. at 12 (citing Gondar, col. 7,11. 2—5). Appellants thus assert that
the handle of Gondar, as modified by Yoo, “would be unsupported, and
therefore unable to be controlled by the user to manipulate the tool,” and
hence, “the handle of Gondar would no longer perform its designed
function.” Id.
The Examiner responds once more that “[b]ecause the references are
concerned with a similar problem, i.e. dust, debris extraction via a flexible
hose attached to a tool,” the modification would have been obvious “so as to
secure the hose to the tool as taught by Yoo.” Ans. 8—9. The Examiner
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Application 12/700,354
restates that the proposed substitution “will obtain predictable results and is
therefore [an] obvious and proper combination.” Id. at 9.
We do not agree with the Examiner’s assertion that a substitution of
Yoo’s support 210 having clip 211 and clamp 222 for Gondar’s hose support
would have yielded a predictable result. Gondar’s hose support rigidly
attaches hose 24H to hand-held machine tool MT so that a part of hose 24H
can be used as a handle. In contrast, clamp 222 on Yoo’s support 210
enables hose 40 to be readily detached. Compare Gondar, Fig. 2, col. 7,11.
4—5, with Yoo, Figs. 7, 10, col. 7,11. 12—15. Hence, we agree with
Appellants that “the results of modifying Gondar’s tool with the removable
hose clamp of Yoo would not have been predictable,” because the Examiner
has not adequately explained how the readily detachable hose clamp 222 of
Yoo would provide rigidity or stability to the hose 24H, as required by
Gondar, so that the hose 24H operates as a handle. Appeal Br. 12—13. As
discussed supra with respect to the Fechner modification, the Examiner’s
conclusion says essentially that the substitution would have been obvious
merely because Yoo’s support was known to secure a hose to a tool.
Accordingly, we agree with Appellants that the Examiner’s reasoning to
replace the support of Gondar with the support of Yoo lacks rational
underpinnings. See Appeal Br. 12.
The Examiner does not rely on the disclosure of Buck in any manner
that would remedy the deficiencies in the rejections based on the
combination of either Lechner or Gondar with Yoo, as discussed supra.
In conclusion, for the foregoing reasons, we do not sustain the
rejections under 35 U.S.C. § 103(a) of claims 2—17 as unpatentable over
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Lechner, Yoo, and Buck, and in the alternative, as unpatentable over
Gondar, Yoo, and Buck.
Rejection II
The Examiner does not rely on Bongers-Ambrosius in any manner
that would remedy the deficiencies in the rejections based on the
combination of either Lechner or Gondar in view of Yoo and Buck, as
discussed supra. See Final Act. 7—8.
Thus, for the same reasons as discussed above, we do not sustain the
rejection of claim 18 as unpatentable over either Lechner or Gondar in view
of Yoo, Buck, and Bongers-Ambrosius.
SUMMARY
The Examiner’s decision to reject claims 2—18 is reversed.
REVERSED
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