2021001990 (P.T.A.B. Aug. 24, 2021)

MILWAUKEE ELECTRIC TOOL CORPORATION

Patent Trials and Appeals BoardAug 24, 2021

2021001990 (P.T.A.B. Aug. 24, 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. 15/809,125 11/10/2017 Hans T. Banholzer 066042-5299-US01 6828 60840 7590 08/24/2021 MICHAEL, BEST & FRIEDRICH LLP (MT) 790 N WATER ST SUITE 2500 MILWAUKEE, WI 53202 EXAMINER MATTHEWS, JENNIFER S ART UNIT PAPER NUMBER 3724 NOTIFICATION DATE DELIVERY MODE 08/24/2021 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): MKEIPDOCKET@MICHAELBEST.COM milwaukeeip@milwaukeetool.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte HANS T. BANHOLZER Appeal 2021-001990 Application 15/809,125 Technology Center 3700 ____________ Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and MICHAEL C. ASTORINO, 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 1–20. 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. The Appellant identifies the real party in interest as Milwaukee Electric Tool Corporation. Appeal Br. 2. Appeal 2021-001990 Application 15/809,125 2 STATEMENT OF THE CASE Claimed Subject Matter The Appellant’s “invention relates to reciprocating power tools, and more particularly to blade clamps for quickly and easily replacing and securing a saw blade to a spindle of a reciprocating saw.” Spec. ¶ 2. Claims 1, 12, and 18 are independent. Claim 1, reproduced below, is illustrative. 1. A blade clamp for removably coupling a saw blade to a spindle of a reciprocating power tool, the blade clamp comprising: an actuator rotatable about the spindle; and a locking member movable relative to the spindle between a locking position and a release position in response to rotation of the actuator, the locking member including a first section defining a first diameter that is constant along a length of the first section, a second section adjacent the first section and defining a second diameter that decreases along a length of the second section, and a third section adjacent the second section and defining a third diameter that is constant along a length of the third section, wherein the third section of the locking member is engageable with the saw blade to couple the saw blade to the spindle when the locking member is in the locking position. References The prior art relied upon by the Examiner is: Name Reference Date Marinkovich et al. (“Marinkovich”) US 6,209,208 B1 Apr. 3, 2001 Kramer et al. (“Kramer”) US 6,725,548 B1 Apr. 27, 2004 Yoshimura et al. (“Yoshimura”) US 6,893,026 B2 May 17, 2005 Appeal 2021-001990 Application 15/809,125 3 Rejections Claims 1–6 and 8–20 are rejected under 35 U.S.C. § 103 as unpatentable over Kramer and Yoshimura. Claims 1 and 7 are rejected under 35 U.S.C. § 103 as unpatentable over Marinkovich, Kramer, and Yoshimura. ANALYSIS The Examiner’s rejection of claims 1–6 and 8–20 under 35 U.S.C. § 103 as unpatentable over Kramer and Yoshimura For the rejection of independent claims 1, 12, and 18, the Examiner finds Kramer teaches a blade clamp with a locking member (i.e., pin 50) as claimed, except that Kramer’s third section (i.e., tip 72) lacks “a third diameter than [sic] is constant along a length of the third section and . . . [is] generally cylindrical.” See Final Act. 2–3, 5. To cure this deficiency, the Examiner relies on Yoshimura; namely, cylindrical section 16a of Yoshimura’s engagement pin 16. See Final Act. 5, 8. The Examiner determines it would have been obvious to one of ordinary skill in the art to modify the shape of the third section of Kramer’s locking member to have a generally cylindrical shape with a constant diameter, as taught by Yoshimura. See Final Act. 5. The reason the Examiner provides for the modification is that cylindrical portion 16a of Yoshimura’s pin 16 is an “art recognized equivalent” of conical-shaped tip 72 of Kramer’s pin 50 in that each pin section shapes a locking member to maintain rapid blade replacement while accurately and firmly coupling the blade. See Final Act. 5. Appeal 2021-001990 Application 15/809,125 4 The Appellant argues “the Examiner has not provided any evidence outside of Applicant’s own disclosure––much less a reasoned explanation supported by a rational underpinning––to establish that one of skill in the art would have been motivated to replace the tapered tip 72 of Kramer with Yoshimura’s cylindrical tip 16A.” Appeal Br. 8 (emphasis omitted). The Appellant points out: The geometries of the “locking members” in Kramer and Yoshimura are likewise significant for the specific purposes set forth in each reference. Kramer discloses that the conical portions 70 of the pin 50 engage a rear edge of the hole 96 in the blade 42 to cause the blade 42 to be pulled rearwardly, resulting in a three-point mount. Kramer at 5:47-52. On Yoshimura’s pin, “[t]he bordering surface between the first cylindrical section 16A and the second cylindrical section 16B forms a step surface 16E for against the side surface of the attachment end 70A of the blade 70.” Yoshimura at 6:29-32, Fig. 7. Thus, the pin geometries described by Kramer and Yoshimura each have specific purposes that differ from those described by Applicant. Appeal Br. 9 (alteration in original) (emphasis added). The Appellant’s argument is persuasive. Kramer’s pin 50 includes conical portion 70 having tip 72 both of which are angled. Kramer col. 3, ll. 30–37. The angle of conical portion 70 appears to be 45 degrees and the angle of the tip 72 appears to be 40 degrees relative to cylindrical portion 68.2 See Ans. 3–4; Appeal Br. 7. Due to these angled sections engaging with saw blade 42’s hole 96 there is a rearward pull of the saw blade. Kramer col. 5, ll. 45–53, Figs. 2, 4–7. The rearward 2 The Examiner does not rely on the depiction of pin 50 as shown in Kramer’s Figure 8 because the figure does not match Kramer’s disclosure of pin 50. See Ans. 3–4. Appeal 2021-001990 Application 15/809,125 5 pull of saw blade 42 due to angled sections 70, 72 results in a three-point mount between saw blade 42’s two shoulder portions 95 and hole 96. Kramer col. 5, ll. 45–53, Figs. 4–7. Put simply, the angled portion of tip 72 has a specific purpose, to create a rearward pull of saw blade 42 that results in a three-point mount. As discussed above, the Examiner’s rejection relies on a finding that cylindrical section 16a of Yoshimura’s engagement pin 16 is an “art recognized equivalent” of tip 72 of Kramer’s pin 50. However, as a result of the Examiner’s modification of the angled portion of tip 72 is removed. Therefore, as a result of the modification, tip 72 is unable to create the same rearward pull of saw blade 42 as prior to its modification. Additionally, we note that the Examiner’s responses to the Appellant’s argument do not offer adequate evidence and/or technical reasoning why one of ordinary skill in the art would have performed the proffered modification after weighing its advantages and disadvantages. Rather, the Examiner’s responses seem to rely on the notion that after modifying angled portion of tip 72 the functionality of pin 50 is not altered in any manner. Ans. 5 (“Providing Kramer with the tip of Yoshimura does not in any way alter the functionality of the device of Kramer.”); see Ans. 6 (“Both Kramer and Yoshimura teach pins permitting a blade attachment which permits locking and releasing of the blade.”). Because the Examiner’s responses do not account for the loss in functionality (i.e., Kramer’s tip 72 is unable to create the same rearward pull of saw blade 42 as prior to the modification), we determine that the Examiner’s position that cylindrical portion 16a of Yoshimura’s pin 16 is an “art recognized equivalent” of conical-shaped tip 72 of Kramer’s pin 50 lacks adequate support. Appeal 2021-001990 Application 15/809,125 6 Further, the Examiner offers further support for the “art recognized equivalent” reasoning by suggesting that the change in shape of Kramer’s locking pin’s tip is obvious. See Final Act. 5 (citing In re Dailey, 357 F.2d 669 (CCPA 1966)), 8–9; see also MPEP § § 2144, 2144.04(IV)(B). However, this does not cure the deficiency in the Examiner’s rejection as discussed above because it fails to provide an adequate explanation of its applicability to the most relevant fact of the case at hand; i.e., Kramer’s tip 72 is unable to create the same rearward pull of saw blade 42 by removing its conical shape. Thus, we do not sustain the Examiner’s rejection of independent claims 1, 12, and 18, and the claims that depend therefrom. The Examiner’s rejection of claims 1 and 7 under 35 U.S.C. § 103 as unpatentable over Marinkovich, Kramer, and Yoshimura The Examiner’s rejection of independent claim 1 as unpatentable over Marinkovich, Kramer, and Yoshimura includes a similar deficiency as discussed above. See Final Act. 6–7. The Examiner fails to rely on Marinkovich in a manner that would remedy the deficiency. Thus, we likewise do not sustain the Examiner’s rejection of independent claim 1 and dependent claim 7. Appeal 2021-001990 Application 15/809,125 7 CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–6, 8–20 103 Kramer, Yoshimura 1–6, 8–20 1, 7 103 Marinkovich, Kramer, Yoshimura 1, 7 Overall Outcome 1–20 REVERSED