Ex Parte Zahner et al

Patent Trial and Appeal Board

Mar 31, 2014

12381634 (P.T.A.B. Mar. 31, 2014)

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.
12/381,634 03/12/2009 Mario Zahner 210,135 8649
38137 7590 03/31/2014
ABELMAN, FRAYNE & SCHWAB
666 THIRD AVENUE, 10TH FLOOR
NEW YORK, NY 10017
EXAMINER
NASH, BRIAN D
ART UNIT PAPER NUMBER
3782
MAIL DATE DELIVERY MODE
03/31/2014 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 MARIO ZAHNER and ROLF ERHARDT
____________________

Appeal 2012-000708
Application 12/381,634
Technology Center 3700
____________________

Before: STEFAN STAICOVICI, NEIL T. POWELL, and
BEVERLY M. BUNTING, Administrative Patent Judges.

BUNTING, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-000708
Application 12/381,634
2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1
and 3-6. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

CLAIMED SUBJECT MATTER
The claims are directed to a switching adapter for individual settings
with a hand-held setting tool. Claim 1, reproduced below, is illustrative of
the claimed subject matter (formatting added):
1. A switching adapter for enabling individual settings with
a hand-held setting tool (10) having a magazine (40) for
fastening elements (51) and a detection element (31) for
detecting presence of a fastening element (51) in a receiving
chamber (23) of the setting tool (10), the switching adapter (60)
comprising
a retaining section (61) for releasably mounting the
switching adapter (60) on the magazine (40); and
an actuation section (62) for displacing the detection
element (31) from a locking position thereof to a release
position thereof and formed integrally with the retaining section
(61).

REFERENCES
The Examiner relies on the following prior art references in rejecting
the claims on appeal:
Almeras US 7,059,507 B2 Jun. 13, 2006
Appeal 2012-000708
Application 12/381,634
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REJECTIONS
Claims 1 and 3-6 are rejected under 35 U.S.C. § 102(b) as anticipated
by Almeras.

ANALYSIS
Claim 1
The Examiner finds that Almeras discloses the claimed invention of a
setting tool with a switching adapter 8 having a retaining section (pads 81
and fingers 82), and an actuation section (bottom portion of guide 4) for
displacing the detection element (guide 4) from a locking position to a
release position and formed integrally with the retaining section. Ans. 4.
Appellants proffer arguments challenging the Examiner’s findings
with regards to Almeras, which we have carefully considered. App. Br. 9-
12. Appellants contend that the intended use of an “anchor (sic) gun with
fastening elements not stored in the magazine” is not discussed or suggested
by Almeras. App. Br. 10; Reply Br. 4. Appellants’ argument is not
convincing, because the limitation Appellants rely on, “fastening elements
not stored in the magazine,” is not recited in the claim. We decline to read
limitations from the Specification into the claims. The Examiner reasonably
explains that Almeras shows all the recited structural limitations, and that
the claims “are not restrictive to such device.” Ans. 5.
Appellants contend that the safety shoe 8 of Almeras is not the
equivalent of the recited switching adapter, rather the safety shoe
corresponds to the detection element of the power tool. App. Br. 10; Reply
Br. 4-5. This argument is not convincing, because as noted by the Examiner,
the claims do not limit the structure or operation of the power tool using
Appeal 2012-000708
Application 12/381,634
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language that would preclude the switching adaptor from corresponding to
the detection element. Ans. 6. Appellants do not apprise us of specific error
in the Examiner’s finding that the switching adapter (shoe 8) includes a
retaining section (pad 81 and finger 82) and an actuation section (bottom
portion of guide 4) for displacing the detection element 4 from a locking
position to a release position and formed integrally with the retaining
section. Ans. 4; Reply Br. 2.
Appellants contend that Almeras does not disclose a switching adapter
having a retaining section for releasably mounting the switching adapter on
the magazine. App. Br. 10. In particular, Appellants urge that the safety
shoe 8 of Almeras is not designed to be releasably mounted on the
magazine, the power tool can’t operate without the safety shoe, and the
safety shoe is part of the power tool itself and not the magazine. App. Br.
10; Reply Br. 3. Suggesting that the bottom portion of the tack guide “does
not detect anything,” Appellants contend that the shoe forms the detection
element, and is displaced from its locking position by the push rod of the
magazine. Id. The Examiner reasonably explains how the switching adapter
(shoe 8) is structurally capable of being releasably attached to the magazine,
because “the shoe is designed to fit into a portion of the magazine of the tool
and can disengage therefrom.” Ans. 5. Appellants do not inform us how the
claimed switching adapter is structurally distinguishable from Almeras, nor
do Appellants provide adequate evidence or reasoning demonstrating that
Almeras’ structure is not capable of performing the aforementioned
functional limitations of claim 1.1

1 See In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) (where the PTO
has reason to believe that a functional limitation is an inherent characteristic
Appeal 2012-000708
Application 12/381,634
5
Further, Appellants contend that the bottom portion of guide 4 of
Almeras does not constitute an actuation section. App. Br. 11; Reply Br. 2-
3. According to Appellants, the bottom portion of Almeras’ guide “cannot
simultaneously serve as a detection element and an actuation element for
displacing it from the locking position,” and that the guide is an integral part
of the power tool and cannot be releasably mounted on the tool “to provide
for operation of the power tool with fastening elements not stored in the
magazine.” App. Br. 11; Reply Br. 3. Noting that the claims functionally
define the detection element and the actuation section for displacing the
detection element, the Examiner reasonably explains how the tack guide 4
corresponds to the claimed detection element for detecting the presence of a
fastening element for the tool operator, and how the bottom portion of the
tack guide corresponds to an actuation section, because the bottom portion,
“when engaged by the work surface, displaces the upper portion of the
detection element (4).” Ans. 6.
Additional arguments by Appellants that the guide of Almeras is an
integral part of the power tool and is not releasably mounted on the tool “to
provide for operation of the power tool with fastening elements not stored in
the magazine” likewise are not commensurate with the scope of claim 1, as
discussed supra. App. Br. 11. Appellants’ similar argument that the guide
is part of the barrel and not releasably mounted, is also not convincing, as
the Examiner has reasonably explained how the guide or actuation section
would be releasably mounted. Reply Br. 3; see also Ans. 5. Appellants’
arguments that Almeras does not disclose an adapter that would enable use
of a power tool with fastening elements not stored in the magazine is

of the prior art, appellant has the burden to show that the prior art structure
does not inherently possess the functional feature).
Appeal 2012-000708
Application 12/381,634
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likewise not commensurate with the scope of claim 1. App. Br. 11. In the
Reply Brief, Appellants counter that the shoe 8, even if considered an
adapter, does not have an actuation section for displacing the detection
element. Reply Br. 2. However, this contention does not address the
Examiner’s explicit finding that the bottom portion of guide 4 is the
actuation section. Ans. 4.
Based on the record before us, Appellants do not apprise us of error in
the Examiner’s finding that Almeras discloses the claimed invention of a
setting tool with a switching adapter having a retaining section, and an
actuation section for displacing the detection element from a locking
position to a release position and formed integrally with the retaining
section. As such, we sustain the rejection of claim 1.

Claims 3 and 4
Claim 3 depends from claim 1 and additionally recites that the
retaining section is formed as a fork-shaped element having at least two
opposing prongs. Claim 4, while not separately argued, depends from claim
3, and stands or falls therewith. The Examiner finds that Almeras discloses
that the retaining section is formed as a fork-shape having two opposite
prongs, i.e., pad 81 and finger 82. Ans. 5, citing Almeras fig. 4.
Appellants assert that the finger 82 does not form a fork shape with
pad 81, and that pad 81 and finger 82 are not prongs located opposite each
other. App. Br. 13. This argument does not apprise us of Examiner error.
Giving the claims the broadest reasonable construction, as we must, Figure 4
of Almeras illustrates how pad 81 and fingers 82 form opposing prongs.
As such, we sustain the rejection of claim 3 and claim 4 falls
therewith.
Appeal 2012-000708
Application 12/381,634
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Claims 5 and 6
Independent claim 5 is directed to a setting tool having a switching
adapter. Claim 6 depends from claim 5 and stands or falls therewith. The
Examiner’s findings for claim 5 are the same as for claim 1. Ans. 4.
Appellants rely on the same arguments for claim 5 as proffered for
claim 1, and further assert that finger 82 is a detector element, and cannot
simultaneously be part of the releasable adapter. App. Br. 14. This
argument is not convincing, as the Examiner reasonably explained how the
switching adapter (shoe 8) of Almeras, which includes finger 82, is
structurally capable of being releasably attached to the magazine. Ans. 5.
For the above reasons and those discussed supra with respect to claim
1, we sustain the rejection of claim 5, and claim 6 falls therewith.

DECISION
The decision of the Examiner to reject claims 1 and 3-6 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) (2011).

AFFIRMED

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