Milwaukee Electric Tool Corporation

Patent Trials and Appeals Board

Apr 22, 2021

2020004510 (P.T.A.B. Apr. 22, 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.
14/835,767 08/26/2015 Kyle Harvey 066749-1488 1080
142078 7590 04/22/2021
Reinhart (Milwaukee Tool)
ATTN: TRAVIS MCDONNELL, PARALEGAL
1000 NORTH WATER STREET
SUITE 2100
MILWAUKEE, WI 53202
EXAMINER
MULLER, BRYAN R
ART UNIT PAPER NUMBER
3799
NOTIFICATION DATE DELIVERY MODE
04/22/2021 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):
IPAdmin@reinhartlaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KYLE HARVEY, JESSE MARCELLE, CHENG ZHANG LI,
JAMES A. CEMKE JR., ANDREW G. WAGNER, TIMOTHY JANDA,
ERIC MACKEY, and STEVEN W. HYMA

Appeal 2020-004510
Application 14/835,767
Technology Center 3700
____________

Before NINA L. MEDLOCK, JAMES, A. WORTH, and
KENNETH G. SCHOPFER, Administrative Patent Judges.

SCHOPFER, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–8, 10, and 24–26. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
Milwaukee Electric Tool Corporation. Appeal Br. 1.
Appeal 2020-004510
Application 14/835,767

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BACKGROUND
The Specification discloses that “[t]he present invention relates to
wrenches, and more particularly to pipe wrenches.” Spec. ¶ 3.
CLAIMS
Claims 1 and 6 are the independent claims on appeal. Claim 1 is
illustrative of the appealed claims and recites:
1. A pipe wrench comprising:
a head including an aperture;
a first jaw coupled to the head, the first jaw including a
plurality of teeth that define a first contact region;
a second jaw partially extending through the aperture of
the head, the second jaw including a threaded portion and a
plurality of teeth that define a second contact region, the second
contact region extending beyond the first contact region in a
direction parallel to side surfaces of the head, the second contact
region defining a width;
an actuator including threads engaged with the threaded
portion of the second jaw such that rotation of the actuator moves
the second contact region of the second jaw relative to the first
contact region of the first jaw;
a handle including a proximal end portion and a distal end
portion, the distal end portion adjacent the head and the proximal
end portion opposite the distal end portion, the proximal end
portion including a bore;
a first extension handle removably coupled within the
bore; and
a second extension handle defining a length extending
from an end of the second extension handle to an end of the
second jaw, wherein a ratio of the width of the second contact
region and the length is less than about 0.04, the second
extension handle removably coupled within the bore.
Appeal 2020-004510
Application 14/835,767

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REJECTIONS
1. The Examiner rejects claims 1–7 under 35 U.S.C. § 103 as unpatentable
over Seaver2 in view of Dein,3 Amazon,4 and Lowes.5
2. The Examiner rejects claims 8, 10, and 24 under 35 U.S.C. § 103 as
unpatentable over Seaver in view of Dein, Amazon, Lowes, and Scott.6
3. The Examiner rejects claim 26 under 35 U.S.C. § 103 as unpatentable
over Seaver in view of Dein, Amazon, Lowes, Calello,7 Howard,8
Gregory,9 Cox,10 Kundracik,11 Thewes,12 Waggle,13 and Burgess.14
4. The Examiner rejects claims 1–7 and 25 under 35 U.S.C. § 103 as
unpatentable over Burry15 in view of Seaver, Dein, Amazon, and Lowes.

2 Seaver, US 2,483,713, iss. Oct. 4, 1949.
3 Dein, US 2008/0276762 A1, pub. Nov. 13, 2008.
4 Amazon.com: Titan Tools 21304 4-Piece Steel Pipe Wrench Set:
Automotive, pp. 1–6 (July 2, 2019), retrieved from https://www.amazon.
com/Titan-Tools-21304-4-Piece-Wrench/dp/B00TU3UNPK (last viewed
April 16, 2021).
5 “pipe wrench,” Shop pipe wrench at Lowes.com: Search Results, pp. 1–7
(December 12, 2018), retrieved from https://www.lowes.com/search?
searchTerm=pipe+wrench; (last viewed April 16, 2021).
6 Scott, US 5,392,673, iss. Feb. 28, 1995.
7 Calello, US 2,748,641, iss. June 5, 1956.
8 Howard, US 4,903,555, iss. Feb. 27, 1990.
9 Gregory, US 7,040,199 B2, iss. May 9, 2006.
10 Cox, US 4,580,468, iss. Apr. 8, 1986.
11 Kundracik et al., US 9,610,676 B2, iss. Apr. 4, 2017.
12 Thewes, US 1,727,623, iss. Sept. 10, 1929.
13 Waggle, Jr., US 5,535,649, iss. July 16, 1996.
14 Burgess, US 2,696,133, iss. Dec. 7, 1954.
15 Burry, US D494,030 S, iss. Aug. 10, 2004.
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Application 14/835,767

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5. The Examiner rejects claims 8, 10, and 24 under 35 U.S.C. § 103 as
unpatentable over Burry in view of Seaver, Dein, Amazon, Lowes, and
Scott.
6. The Examiner rejects claim 26 under 35 U.S.C. § 103 as unpatentable
over Burry in view of Seaver, Dein, Amazon, Lowes, Calello, Howard,
Gregory, Cox, Kundracik, Thewes, Waggle, and Burgess.
DISCUSSION
Claim 1 recites a pipe wrench including first and second contact
regions and first and second extension handles and requires that “a ratio of
the width of the second contact region and the length [of the second
extension handle] is less than about 0.04.” Appeal Br. 22. Claim 6 also
recites a pipe wrench with contact regions and extension handles and
requires that the length of the second contact region is “between 1 inch to
about 1.8 inches” and the length of the second extension handle is “between
18.9 inches and 24.2 inches.” Id. at 23. We are persuaded of reversible
error at least to the extent the Examiner determines that these limitations are
obvious in view of the prior art.
With respect to the ratio required by claim 1, the Examiner finds16 that
Seaver discloses a second contact region and length of the second extension
creating a ratio between the width of the second contact region
and the second length is shown to be approximately 0.05 of the
total length of the wrench as seen in Fig. 4 (even though the

16 We note that the Examiner’s findings with respect to the rejection over
Seaver in view of Dein, Amazon, and Lowes are substantially similar to the
Examiner’s findings with respect to the rejection over Burry, Seaver,
Amazon, Lowes, at least with respect to the ratio of claim 1 and the lengths
recited in claim 6. Thus, our analysis with respect to these claims addresses
both rejections.
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Application 14/835,767

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drawings are not disclosed to be drawn to scale, the general
dimensions reflect commonly known dimensions in the art) and
the ratio further being variable due to different length handles.
Final Act. 3–4. Further, regarding the ratio of claim 1 and the lengths
recited in claim 6, the Examiner finds that the art of record shows that it is
old and well known to provide pipe wrenches in a wide range of sizes for
different applications. Id. at 5. The Examiner also finds:
Additionally, the precedent in MPEP [Manual of Patent
Examining Procedure] 2144.04, IV-A regarding obviousness of
change of size provides additional motivation to modify the
overall size of the wrenches, as is known in the art to
accommodate different applications, wherein the applicant has
not provided any evidence of criticality or unexpected results for
the claimed length or width of the contact region, overall length
of the tool or ratio between the contact region width and the
overall length.
Id. The Examiner then determines:
Therefore, it further would have been obvious to one of
ordinary skill in the art at the time the invention was made that
the size of the contact region and overall (second) length of the
wrench will vary depending on the size of the wrench as a whole
such that the second contact region could obviously be in the
range of about 0.9 inches wide, 1-1.8 inches long and the overall
length of the wrench may further vary depending on the length
of the selected extension handle from the plurality of handles
taught by Dein as well as the selected location of the second jaw
relative to the first jaw, such that the second length may be
anywhere in the range including lengths of about 19 or 24 inches
(and overlapping the 18.9-24.2 inch range of claim 6), which are
both known options disclosed by the NPL documents, with the
18 inch wrench capable of being set to 19 inches with second jaw
open 1 inch. Thus, the known variation of jaw sizes (effecting
contact region width and length), along with the adjustable length
configuration taught by Seaver and plural different length
handles taught by Dein, will also further provide a range of ratios
between the second contact region width and the overall length
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Application 14/835,767

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(with at least one second longer extension handle) within the
range of less than about 0.04, particularly with longer handles
providing greater leverage, when a second jaw width of 0.9
inches would only require a common overall length of 22.5
inches or more to fall within the claimed ratio range.
Final Act. 5–6 (emphasis omitted).
Although it might be true that one would select the appropriately sized
tool for a particular application, the Examiner has not effectively provided
evidence of the range of sizes of the tools that would be available to a person
of ordinary skill in the art. Rather, the Examiner appears to rely on a per se
rule that a change in size would have been obvious to a person of ordinary
skill in the art. Yet, to the extent the Examiner relies on the MPEP as
establishing a per se rule that a change in size is obvious, we note that
Federal Circuit has stated that
[t]he use of per se rules, while undoubtedly less laborious than a
searching comparison of the claimed invention—including all its
limitations—with the teachings of the prior art, flouts section 103
and the fundamental case law applying it. Per se rules that
eliminate the need for fact-specific analysis of claims and prior
art may be administratively convenient for PTO examiners and
the Board. Indeed, they have been sanctioned by the Board as
well. But reliance on per se rules of obviousness is legally
incorrect and must cease.
In re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995) (emphasis omitted). Thus,
rather than relying on per se rules, to establish a prima facie case of
obviousness, the Examiner must explain why a person of ordinary skill in
the art would have had an apparent reason to modify the references, as the
Examiner proposes, to arrive at the claimed invention. See 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
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Application 14/835,767

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support the legal conclusion of obviousness.”) (cited with approval in KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)).
Here, although the Examiner provides evidence that pipe wrenches are
currently available in a range of sizes and reasons that one of ordinary skill
would have modified the size of the pipe wrench with a longer length to
provide greater mechanical advantage, we determine that the Examiner’s
evidence is lacking with respect to the specific requirements of the claims.
Notably, with respect to claim 1, the Examiner has not identified any express
disclosure regarding the ratio of the width of a second contact region and the
length of a second extension handle in art. Further, with respect to claim 6,
the Examiner has also not identified any express disclosure of the length of
the second contact region in the art. Rather, the Examiner speculates that
“the second contact region could obviously be in the range of about 0.9
inches wide, 1-1.8 inches long,” but the Examiner does not explain
adequately where these measurements are disclosed or why they would be
obvious in view of the art. Thus, even if we were to agree with the
Examiner that one of ordinary skill in the art would be motivated to provide
handles with longer lengths to “provide greater [mechanical] advantage,” the
Examiner has not adequately explained how this motivation would have led
one of skill in the art to provide a wrench with a second contact area sized to
provide the ratio of claim 1 or with the specific range of lengths required by
claim 6. Alternatively, the Examiner has not otherwise provided evidence of
how the size of the second contact area depends upon or changes with the
length of the extension handles in the prior art.
Based on the foregoing, we are persuaded of reversible error in both
rejections of claims 1 and 6. Further, because the Examiner does not
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Application 14/835,767

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provide further evidence or reasoning to cure the deficiency in the rejections
of independent claims 1 and 6, we are persuaded of error in the rejections of
the dependent claims for the same reasons. Accordingly, we do not sustain
the rejections of claims 1–8, 10, and 24–26.
CONCLUSION
We REVERSE the rejections of claims 1–8, 10, and 24–26.
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–7 103 Seaver, Dein,
Amazon, Lowes
1–7
8, 10, 24 103 Seaver, Dein,
Amazon, Lowes,
Scott
8, 10, 24
26 103 Seaver, Dein,
Amazon, Lowes,
Calello, Howard,
Gregory, Cox,
Kundracik, Thewes,
Waggle, Burgess
26
1–7, 25 103 Burry, Seaver, Dein,
Amazon, Lowes
1–7, 25
8, 10, 24 103 Burry, Seaver, Dein,
Amazon, Lowes,
Scott
8, 10, 24
26 103 Burry, Seaver, Dein,
Amazon, Lowes,
Calello, Howard,
Gregory, Cox,
Kundracik, Thewes,
Waggle, Burgess
26
Overall
Outcome
1–8, 10,
24–26

Appeal 2020-004510
Application 14/835,767

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REVERSED