Hilti Aktiengesellschaft

Patent Trials and Appeals Board

Nov 2, 2021

2021003007 (P.T.A.B. Nov. 2, 2021)

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.
15/503,264 02/10/2017 Hans-Dieter GAUL 105440.69563US 3210
23911 7590 11/02/2021
CROWELL & MORING LLP
INTELLECTUAL PROPERTY GROUP
P.O. BOX 14300
WASHINGTON, DC 20044-4300
EXAMINER
TRAVERS, MATTHEW P
ART UNIT PAPER NUMBER
3726
NOTIFICATION DATE DELIVERY MODE
11/02/2021 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
edocket@crowell.com
mloren@crowell.com
tche@crowell.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HANS-DIETER GAUL

Appeal 2021-003007
Application 15/503,264
Technology Center 3700
____________

Before MICHAEL C. ASTORINO, CYNTHIA L. MURPHY, and
TARA L. HUTCHINGS, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s decision to reject claims 5 and 6. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as Hilti
Aktiengesellschaft. Appeal Br. 1.
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STATEMENT OF THE CASE
Claimed Subject Matter
Claim 5 is representative of the subject matter on appeal, and is
reproduced below with added notations and paragraphing.
5. A power tool for setting an expansion anchor in a borehole,
comprising:
[(a)] an input device for capturing a type of the expansion
anchor or a tightening torque for the expansion anchor;
[(b)] an impact unit for producing rotational impacts that
are transferable to the expansion anchor;
[(c)] a sensor for sensing a rotational angle per time
interval of an output shaft of the power tool; and
[(d)] a control device, wherein the control device is
configured to:
[(d1)] set a first rotational speed produced in the
power tool
[(d2)] wherein rotational impacts dependent on the
first rotational speed are applied to the expansion anchor
and
[(d3)] wherein the rotational impacts dependent on
the first rotational speed expand an expansion sleeve of
the expansion anchor until a rotational angle per time
interval of the output shaft of the power tool falls below a
predetermined threshold value and such that the
expansion anchor is set in the borehole; and
[(d4)] set a second rotational speed produced in the
power tool that is reduced as compared to the first
rotational speed,
[(d5)] wherein rotational impacts dependent on the
second rotational speed are applied for a predetermined
duration to the already set expansion anchor in the
borehole and
[(d6)] wherein the rotational impacts dependent on
the second rotational speed expand the expansion sleeve
of the expansion anchor such that a retightening is
produced on the expansion anchor in the borehole.
Appeal Br., Claims App.
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References
The prior art relied upon by the Examiner is:
Name Reference Date
Schmidt et al.
(“Schmidt”)
US 2012/0222876 A1 Sept. 6, 2012
Sakakibara US 2013/0153252 A1 June 20, 2013
Rejection
Claims 5 and 6 are rejected under 35 U.S.C. § 103 as unpatentable
over Schmidt and Sakakibara.2 Ans. 3–4.

ANALYSIS
The Appellant argues “that Sakakibara does not disclose a power tool
for setting an expansion anchor in a borehole.” Reply Br. 2; Appeal Br. 7.
The Appellant’s argument is not persuasive of error.
The Examiner relies on Schmidt, and not Sakakibara, to teach “[a]
power tool for setting an expansion anchor in a borehole,” as recited in the
preamble of claim 5. Ans. 3 (citing Schmidt ¶ 13, Figs. 1–2). We agree
with the Examiner’s finding. Schmidt’s power tool (i.e., impact
screwdriver 20) is for setting expansion anchor 1 in a drilled hole of wall 12.
Schmidt ¶¶ 11, 13; see Appeal Br. 2 (citing Spec. ¶ 4), 7.
The Examiner relies on Schmidt to teach other aspects of the claimed
“power tool” as well, specifically recitations (a), (b), (c), (d), (d1), (d2), and
(d3). Ans. 3. Additionally, the Examiner finds:
While the controller of Schmidt is configured to set
different rotational speeds (associated with different fastener

2 The Appellant acknowledges the change in the Examiner as well as aspects
of the rejection of claim 5. See Reply Br. 1–2.
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torques - paragraph 16), the controller of Schmidt is not
necessarily configured to set a second rotational speed produced
in the power tool that is reduced as compared to the first
rotational speed (at least not automatically in response to
reaching the threshold value), wherein rotational impacts
dependent on the second rotational speed are applied for a
predetermined duration to the already set expansion anchor in
the borehole and wherein the rotational impacts dependent on
the second rotational speed expand the expansion sleeve of the
expansion anchor such that a retightening is produced on the
expansion anchor in the borehole. Instead, Schmidt simply
stops the operation of the tool upon reaching the threshold
value.
Ans. 3–4. Thereafter, the Examiner modifies Schmidt’s power tool with the
teachings of Sakakibara to result in the remainder of the claimed subject
matter. See Ans. 4.
The Appellant argues that Sakakibara does not disclose recitations
(d4), (d5), and (d6). See Reply Br. 2–3; see also Appeal Br. 7–9. The
Appellant’s argument is not persuasive of error.
The Examiner determines:
Sakakibara teaches a similar impact tightening tool (10) having
a controller (50) and a sensor (30). The controller is similarly
configured to set a rotational speed (e.g. V2) for the fastening
operation (paragraphs 21-22), and similarly monitors a
parameter (torque in this case as opposed to rotational speed),
via the sensor (a torque sensor in this case), and compares the
measured parameter to a threshold parameter (paragraph 23).
Upon reaching the threshold value (indicating that the fastening
process is essentially or nearly complete - paragraph 30),
instead of stopping the tool as with Schmidt, the Sakakibara
controller changes the rotational speed to a speed V1 reduced as
compared to the first rotational speed (see paragraphs 24 and 28
and Fig. 4B) wherein rotational impacts dependent on the
second rotational speed (this correlation is also understood by
Sakakibara - paragraph 29) are applied for a predetermined
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duration (e.g. a few additional impacts) to the already set
fastener. The advantage to continuing operation at a lower
speed (as opposed to merely stopping the tool) following
reaching the threshold is to provide a more accurate tightening
of the fastener as the tightening may not actually be consistent
(i.e. it may actually be more or less completed) upon the sensor
detecting the threshold value (paragraph 30). It would have
been obvious to one of ordinary skill in the art before the
effective filing date of the claimed invention to have modified
the controller of Schmidt in an analogous manner, such that
upon reaching the threshold value of rotational speed (similarly
intended to indicate a completed tightening operation), the
controller tightens the anchor at a second reduced speed rather
than merely stopping, for the purpose of improving the
tightening accuracy of the anchor (noting that Schmidt is
similarly concerned with tightening consistency - paragraph 3).
It is also noted that since this taught method is substantially the
same as that claimed, it would presumably also serve the
purpose of producing a “retightening” on a set expansion
anchor in the borehole as claimed.
Ans. 4; see Ans. 7–8.
The Examiner’s determination relies on Sakakibara to teach a control
device configured to “set a second rotational speed produced in the power
tool that is reduced as compared to the first rotational speed,” i.e.,
recitation (d4). See Ans. 4. The Examiner also finds that Sakakibara’s
power tool, when operating at a second rotational speed, includes rotational
impacts that are applied for a predetermined duration to an already set
fastener (e.g., a screw) and these rotational impacts retighten the fastener.
See Ans. 4. In other words, the Examiner finds Sakakibara teachings are
similar to that of recitations (d5) and (d6), except that the fastener is not
described as an expansion anchor in a borehole. The Examiner relies on
these teachings to modify the control device of Schmidt’s power tool, i.e., a
power tool that is for setting an expansion anchor in a borehole. Ans. 4.
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The Examiner’s rejection relies on a modification of the control device of
Schmidt’s power tool to set a second speed produced in the power tool that
is reduced as compared to a first rotational speed, in view of Sakakibara’s
teachings, to retighten Schmidt’s fastener, i.e., an expansion anchor in a
borehole. See Ans. 4, 6–8. Therefore, although Sakakibara does not teach
setting a second rotational speed for the identical fastener as Schmidt, this is
not dispositive of Examiner error.
The Appellant contends “that the tools of Sakakibara and Schmidt are
different types of tools, that Sakakibara and Schmidt monitor different
parameters (torque vs. rotational speed), and that the tools of Sakakibara and
Schmidt are configured to operate on different fasteners (bolt and nut vs. an
expansion sleeve of an expansion anchor in a borehole).” Reply Br. 5
(emphasis omitted); see Reply Br. 3–4; Appeal Br. 7–9. The Appellant’s
contention is not indicative of Examiner error.
The Examiner’s rejection is not based on the notion that Schmidt’s
and Sakakibara’s devices are identical tools, that the tools’ sensors monitor
identical parameters, or that the tools tighten identical fasteners. Nor is the
Examiner’s rejection required to do so to be adequately supported. In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness
grounds . . . [require] some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.”) (cited with
approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)). As
discussed above, the Examiner’s rejection relies on a modification of the
control device of Schmidt’s power tool to set a second speed produced in the
power tool that is reduced as compared to a first rotational speed, in view of
Sakakibara’s teachings, to retighten Schmidt’s fastener, i.e., an expansion
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anchor in a borehole. See Ans. 4. Also, we agree with the Examiner that
“[o]ne of ordinary skill would have clearly recognized that the impact
tightening tools of Schmidt and Sakakibara are substantially similar impact-
style rotational fastening tools.” Ans. 6. The similarities between the power
tools of Schmidt and Sakakibara supports the Examiner’s rejection. In this
case, we understand the Examiner’s proposed combination as being based on
“the inferences and creative steps that a person of ordinary skill in the art
would employ.” KSR, 550 U.S. at 418; see id. at 421 (“[a] person of
ordinary skill is also a person of ordinary creativity, not an automaton.”); see
also In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985); In re Preda, 401 F.2d
825, 826 (CCPA 1968); In re Jacoby, 309 F.2d 513, 516 (CCPA 1962).
Further, we note that the recitations of (d5) and (d6) are not specified
as a function of the “control device.” The recitation of (d5) recites “wherein
rotational impacts dependent on the second rotational speed are applied for a
predetermined duration to the already set expansion anchor in the borehole.”
This recitation concerns the application of the second rotational speed for a
predetermined duration. The recitation does not recite or require the control
device to be configured to apply the rotational impacts dependent on the
second rotational speed to the already set expansion anchor in the borehole
for a predetermined duration or the like. Similarly, the recitation of (d6)
recites “wherein the rotational impacts dependent on the second rotational
speed expand the expansion sleeve of the expansion anchor such that a
retightening is produced on the expansion anchor in the borehole.” This
recitation is particular to an effect of setting the speed at a reduced speed.
The recitation does not recite or require the control device to be configured
to expand the expansion sleeve of the expansion anchor or retighten the
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expansion anchor in the borehole. Therefore, if an operator can operate
Schmidt’s power tool, as modified, to perform the recited language of (d5)
and (d6), then the Examiner’s rejection would be and, in this case, is
adequately supported. The Appellant fails to adequately address this
understanding of claim recitations. To the extent that the recitations of (d5)
and (d6) may be understood more narrowly, we determine that the
Examiner’s modification of Schmidt’s power tool in view of the teachings of
Sakakibara meets recitations (d5) and (d6) as well. See Ans. 4, 6–8; see also
PAR Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1195–96 (Fed. Cir.
2014).
Thus, we sustain the Examiner’s rejection of independent claim 5
under 35 U.S.C. § 103 as unpatentable over Schmidt and Sakakibara.
Dependent claim 6 recites, “[t]he power tool according to claim 5,
wherein the power tool is an impact screwdriver.” Appeal Br., Claims App.
The Appellant argues “that the tools are different tools for operating on
different fasteners in different ways, and thus, it would not have not been
obvious to modify the impact screwdriver of Schmidt by the screw
tightening tool of Sakakibara to disclose Appellant’s most-particularly
claimed impact screwdriver of dependent claim 6.” Reply Br. 5 (emphasis
omitted); see Appeal Br. 9. The Appellant’s argument is not persuasive of
Examiner error for similar reasons as discussed above. Thus, we sustain the
Examiner’s rejection of independent claim 6 under 35 U.S.C. § 103 as
unpatentable over Schmidt and Sakakibara.

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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § References/Basis Affirmed Reversed
5, 6 103 Schmidt, Sakakibara 5, 6

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