Robert S. Gehret

Patent Trials and Appeals Board

Sep 30, 2019

14252387 - (D) (P.T.A.B. Sep. 30, 2019)

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.
14/252,387 04/14/2014 Robert S. Gehret P-US-TN-11788-A 1740
28268 7590 09/30/2019
Stanley Black & Decker, Inc.
6201 Greenleigh Avenue, MR045
Middle River, MD 21220
EXAMINER
FLORES SANCHEZ, OMAR
ART UNIT PAPER NUMBER
3724
MAIL DATE DELIVERY MODE
09/30/2019 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 ROBERT S. GEHRET
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Appeal 2018-000001
Application 14/252,387
Technology Center 3700
____________

Before JOHN C. KERINS, BRANDON J. WARNER, and
ALYSSA A. FINAMORE, Administrative Patent Judges.

WARNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Black & Decker Inc. (“Appellant”)1 appeals under 35 U.S.C. § 134(a)
from the Examiner’s decision rejecting claims 1–9, which are all the pending
claims.2 Appeal Br. 5. We have jurisdiction over the appeal under
35 U.S.C. § 6(b). An oral hearing was held on July 8, 2019.
We REVERSE.

1 Black & Decker Inc. is the applicant, as provided in 37 C.F.R. § 1.46,
and is identified as the real party in interest. Appeal Br. 3.
2 We note that claim 5 stands objected to by the Examiner, but “is not
rejected over the prior art,” such that it appears to be indicated as allowable
but for its dependence from a rejected base claim. Final Act. 5.
Appeal 2018-000001
Application 14/252,387

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CLAIMED SUBJECT MATTER
Appellant’s disclosed invention “generally relates to circular saws and
more particularly to a circular saw having a relatively deeper depth of cut
capability.” Spec. ¶ 2. Claim 1, reproduced below with emphasis added, is
the sole independent claim and is representative of the subject matter on
appeal.
1. A circular saw comprising:
a circular saw blade having a diameter;
the saw capable of providing a depth of cut;
a ratio of the saw blade diameter to the depth of cut
being about 2.4 to 1.

EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Clowers US 4,856,394 Aug. 15, 1989
Techter US 5,010,651 Apr. 30, 1991
Hon US 6,026,909 Feb. 22, 2000
Kirn US 6,148,526 Nov. 21, 2000
Okada US 2010/0192389 A1 Aug. 5, 2010

REJECTIONS
The following rejections are before us for review:
I. Claim 1 stands rejected under 35 U.S.C. § 102(b) as anticipated
by Techter. Final Act. 2.
II. Claims 2, 3, and 8 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Techter and Okada. Id. at 2–3.
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Application 14/252,387

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III. Claims 4 and 6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Techter and Kirn. Id. at 3–4.
IV. Claim 7 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Techter, Kirn, and Hon. Id. at 4.
V. Claim 9 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Techter, Kirn, and Clowers. Id. at 4–5.

ANALYSIS
All the claims recite a circular saw that includes a circular saw blade
with a diameter, where the saw is capable of providing a depth of cut, and
where “a ratio of the saw blade diameter to the depth of cut [is] about
2.4 to 1.” Appeal Br., Claims App. In other words, the claimed circular saw
is asserted to be capable of providing a “deeper” cut than prior art circular
saws, which Appellant contends have not been capable of achieving such a
ratio of saw blade diameter to depth of cut as that recited in the claims.
In all the rejections on appeal, the Examiner relies on Techter as
disclosing a circular saw capable of providing a ratio of a saw blade
diameter to a depth of cut as claimed. See Final Act. 2–5; Ans. 2–4.
Actually, the Examiner states that Techter is capable of providing a ratio
of 2 (as opposed to the recited ratio of “about 2.4”), relying on Figures 6A
and 6B of Techter, and explaining that the blade diameter is 8.25 inches and
“half of the blade is below the shoe as shown in Fig. 6A.” Final Act. 2
(emphasis added). In the Answer, the Examiner clarifies that Figures 6A
and 6B of Techter depict “the blade being located such that the bolt 19 is
immediately adjacent the footplate 24,” such that “the blade must be located
almost half-way past the footplate (minus the [diameter] of the bolt).”
Appeal 2018-000001
Application 14/252,387

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Ans. 5 (emphasis added). Picking “a reasonable diameter size of the bolt,”
and offsetting the center of the blade by such amount, the Examiner
concludes that Techter is capable of making a depth of cut of 3.4375 inches
to result in the claimed ratio of 2.4. Id.
Appellant persuasively asserts, however, that Techter’s disclosure
does not support a conclusion that its saw is capable of making a depth of
cut of 3.4375 inches in order to achieve the recited ratio of 2.4. See Appeal
Br. 9–11; Reply Br. 2–4. In particular, we agree with Appellant that
Figure 6A of Techter is depicting a problematic condition that would occur
in the absence of Techter’s invention, rather than a workable condition
(namely, bolt 19 and washer 21 would protrude below footplate 24 and
would contact the workpiece to be cut), which is why the Examiner’s initial
asserted ratio of 2 is unsupported.3 See Appeal Br. 10–11; Reply Br. 2–3;
see also Techter, Fig. 6B (where rotation about hinge point 30 raises bolt 19
and washer 21 above footplate 24, but the resulting extent of the blade
(maximum possible depth of cut) is reduced).
Given the disclosure in Techter, we agree with Appellant that the
largest extent of the blade extension disclosed is 3 inches. See Appeal
Br. 9–11; Reply Br. 2–4 (citing Techter, Figs. 3A and 5, where the scale on
the adjustment bracket in Figure 3A only goes from 0 to 3 inches).
Admittedly, Techter characterizes 3 inches as the “minimum distance”
required to perform the cut disclosed, but the Examiner does not identify,

3 One of ordinary skill in the art would readily appreciate that less than
half of the blade diameter would be functionally available for cutting since
some mounting structure (such as a connecting bolt, an output spindle, etc.)
must be disposed above the footplate so as not to interfere with a workpiece
to be cut.
Appeal 2018-000001
Application 14/252,387

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nor do we discern, any disclosure of any appreciable blade depth beyond
3 inches, let alone about a 15% increase to 3.4375 inches. Thus, the
Examiner’s finding that Techter discloses the asserted ratio of 2.4 is also
unsupported. We note that any notion of whether it may have been obvious
to one of ordinary skill in the art to shift disposition of a blade to provide a
deeper cut (and thereby approach the claimed ratio) is outside the scope of
the rejection before us for review.
Accordingly, as to the rejections before us relying on Techter as
disclosing the claimed ratio of about 2.4, because the rejections are premised
on a finding that is not supported by a preponderance of the evidence, we do
not sustain them.

DECISION
We REVERSE the Examiner’s decision rejecting claim 1 under
35 U.S.C. § 102(b) as anticipated by Techter.
We REVERSE the Examiner’s decision rejecting claims 2, 3, and 8
under 35 U.S.C. § 103(a) as being unpatentable over Techter and Okada.
We REVERSE the Examiner’s decision rejecting claims 4 and 6
under 35 U.S.C. § 103(a) as being unpatentable over Techter and Kirn.
We REVERSE the Examiner’s decision rejecting claim 7 under
35 U.S.C. § 103(a) as being unpatentable over Techter, Kirn, and Hon.
We REVERSE the Examiner’s decision rejecting claim 9 under
35 U.S.C. § 103(a) as being unpatentable over Techter, Kirn, and Clowers.

REVERSED