Ex Parte Weir et al

Patent Trial and Appeal Board

Jun 13, 2017

13307048 (P.T.A.B. Jun. 13, 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.
13/307,048 11/30/2011 J. Alan Weir 1576-0790 5908
10800 7590 06/14/2017
Maginot, Moore & Beck LLP
One Indiana Square, Suite 2200
Indianapolis, IN 46204
EXAMINER
MICHALSKI, SEAN M
ART UNIT PAPER NUMBER
3724
MAIL DATE DELIVERY MODE
06/14/2017 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 J. ALAN WEIR, DAN WILLIAMS, RON LLANES,
STEVE OSHGAN, and PETER WIERZCHON
_____________

Appeal 2016-001356
Application 13/307,048
Technology Center 3700
____________

Before STEVEN D.A. MCCARTHY, THOMAS F. SMEGAL, and
GORDON D. KINDER, Administrative Patent Judges.

SMEGAL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
J. Alan Weir et al. (Appellants)1 seek our review under 35 U.S.C.
§ 134(a) of the Examiner’s rejection2 under 35 U.S.C. § 103(a) of claims
14–16, 19, and 21 as unpatentable over Schmitz (US 5,832,611, iss. Nov. 10,
1998) and Granado (US 6,264,211 B1, iss. July 24, 2001).3 We have
jurisdiction 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.
2 Appeal is taken from the adverse decision of the Examiner as set forth in
the Final Office Action, dated December 11, 2014 (“Final Act.”).
3 Claims 1–13 and 20 have been canceled and claims 17, 18, and 22–27 have
been withdrawn from consideration. See Amendments filed February 6,
2012; December 18, 2013; and November 24, 2014,
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Application 13/307,048

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We AFFIRM.
CLAIMED SUBJECT MATTER
Claim 14, the sole independent claim, is reproduced below and
illustrates the claimed subject matter, with disputed limitations emphasized.
14. A power tool comprising:
a motor housing including a motor having an output shaft,
the motor being configured to rotate the output shaft about a
drive axis,
a gear housing defining a gear compartment;
a pinion gear supported by the gear housing, the pinion
gear being coupled to the output shaft for rotation about the drive
axis;
a bevel gear supported by the gear housing in the gear
compartment for rotation about a bevel axis perpendicular to the
drive axis, the bevel gear being meshingly engaged with the
pinion gear;
a crank pin extending from the bevel gear at a position
offset from the bevel axis, the crank pin defining a circular path
centered on the bevel axis;
an articulating housing pivotably supported by the gear
housing for pivotal movement about the bevel axis; and
a plunger member supported by the articulating housing
for reciprocating movement along a reciprocating axis, the
plunger member including i) a yoke end portion located in the
gear compartment and coupled to the crank pin in the gear
compartment and ii) a blade holder end portion located exterior
to the articulating housing,
wherein the reciprocating axis and the drive axis reside in
the same plane throughout the pivotal movement of the
articulating housing with respect to the gear housing,
wherein the articulating housing supports the plunger
member so that the plunger pivots with respect to the gear
housing along with the articulating housing and such that the
reciprocating axis intersects the bevel axis throughout the pivotal
movement of the articulating housing with respect to the gear
housing, and
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Application 13/307,048

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wherein the yoke end portion is configured to allow the
crank pin to translate with respect to the yoke end portion in
directions perpendicular to the reciprocating axis when the crank
pin is moved along the circular path so that the plunger member
is supported with the reciprocating axis intersecting the bevel
axis throughout the reciprocating movement of the plunger
member.

ANALYSIS
Obviousness of Claims 14–16, 19, and 21 over Schmitz and Granado
Appellants argue claims 14–16, 19, and 21 together in contesting the
rejection of these claims as obvious over Schmitz and Granado. See Appeal
Br. 4–10; Reply Br. 2–4. We select claim 14 as the representative claim for
this group, and the remaining claims stand or fall with claim 14. See 37
C.F.R. § 41.37(c)(1)(iv).
Regarding claim 14, the Examiner finds that Schmitz discloses a
power tool with an articulating housing and every other element recited by
the claim 14, but observes “the crank pin is on the ‘wrong’ side of the bevel
gear to have the reciprocating plunger . . . always residing in the same plane
as the drive shaft axis.” Final Act. 3. However, the Examiner finds that
Granado “discloses having the input shaft (260) and pinion (280) in a
reciprocating saw which drives a bevel gear (300) to be aligned with the
output crank pin which is used to drive a reciprocating plunger (315) which
is also aligned with the drive shaft (260),” and reasons that
it would have been obvious to modify Schmitz to reverse the
positioning of the bevel bearing and the position of the crank pin,
since it is known according to Granado in the same art of
reciprocating saws to have the bevel gear arranged in that
manner, so as to have the plunger for a reciprocating saw be
aligned with the drive axis.
Id. at 4–5; see also Ans. 9.
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Application 13/307,048

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Furthermore, the Examiner explains that “a person having ordinary
skill in the art would have been motivated to try that arrangement of
pin/bearing in the pivoting reciprocating saw of Schmitz, since it is seen in
Granado to result in a slender form factor,” and also points out that
[s]ince the only options for how to arrange a crank pin and bevel
support bearing relative to the bevel and pinion gear are 1) to
have the crank pin be on the same side of the bevel gear as the
pinion (Granado) or 2) to have the pin be on the opposite side of
the bevel gear from the pinion the selection of either is prima
facie obvious.

Ans. 5–6. In also reasoning that it would have been obvious to try, the
Examiner explains “a person having ordinary skill would recognize that
putting the crank on the other side of the bevel gear would also move the
plunger to that side, and since the plunger rides in an articulated housing, the
articulated housing would be fastened to the gear housing on the opposite
side from where disclosed by Schmitz.” Id. at 6. See Hybritech Inc. v.
Monoclonal Antibodies, Inc., 802 F.2d 1367, 1383 n.6 (Fed. Cir. 1986).
Appellants don’t dispute that Schmitz discloses all the elements of the
power tool recited by claim 14, but first contend that it would not have been
obvious to rearrange the plunger of Schmitz to be aligned with the drive
axis, “arguing that the Examiner has not taken into consideration all of the
changes to Schmitz that would be required to arrive at claim 14.” Appeal
Br. 8. More specifically, Appellants contend that “modifying Schmitz by
rearranging the parts in the manner proposed by the Examiner would
interfere with the movement of the articulating housing (moveable nosepiece
portion 54) of Schmitz with respect to the gear housing (nosepiece base
portion 52).” Id. at 8–9.
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Furthermore, Appellants assert that “Granado does not provide any
teaching regarding how to arrange the crank pin, drive shaft, bevel gear, and
plunger in a manner that would not interfere with the movement of an
articulating housing.” Id. at 9. Appellants also allege because “[t]here is no
disclosure or suggestion in Granado of the attachment including an
articulating housing that supports the plunger 320 and that enables the
reciprocating axis of the plunger to be altered,” that “a person of ordinary
skill in the art is not taught how to modify Schmitz so the plunger is in the
same plane as the drive shaft of the motor while still enabling the plunger to
articulate with respect to the housing.” Id.
We first note that Appellants are simply attacking Granado in
isolation for lacking support for findings not relied upon by the Examiner,
rather than addressing the Examiner’s combination of Schmitz and Granado.
Nonobviousness cannot be established by attacking references individually
when the rejection is predicated upon a combination of prior art disclosures.
See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). As the
Examiner points out, “Granado is clearly not relied on for this teaching,
since Granado is not an articulated housing type saw tool,” Ans. 12.
Instead, the Examiner relies “upon the structure of Schmitz to show
how one of ordinary skill would know to relate an articulated and stationary
housing,” concluding that “[t]he level of ordinary skill is determined not by
looking only at the secondary reference, but rather all the references taken
together.” Id. (emphasis removed). We agree, and conclude that Appellants
have not argued their allegations with sufficient specificity and, thereby,
waived those allegations. See SmithKline Beecham Corp. v. Apotex Corp.,
439 F.3d 1312, 1320 (Fed. Cir. 2006) (“[w]e find that these mere statements
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of disagreement with the district court as to the existence of factual disputes
do not amount to a developed argument.”)
Summarizing the foregoing, we find that the Examiner’s findings and
conclusions are supported by the record and based on rational
underpinnings. See Ans. 4–12. Moreover, Appellants do not provide any
evidence or argument sufficient to show that the proposed modification of
Schmitz would have been beyond the level of ordinary skill in the art.
Neither do Appellants provide any persuasive evidence or argument
sufficient to show that the proposed modification would have been more
than a predictable use of the prior art elements according to their established
functions. Thus, we are not informed of error in the Examiner’s rejection by
the further contentions asserted in the Reply Brief at 2–4. “The combination
of familiar elements according to known methods is likely to be obvious
when it does no more than yield predictable results.” KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 416 (2007). “If a person of ordinary skill can
implement a predictable variation, § 103 likely bars its patentability.” Id. at
417.
Accordingly, we sustain the Examiner’s rejection of claims 14–16, 19,
and 21 over Schmitz and Granado.

DECISION
We AFFIRM the Examiner’s rejection.
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