Roland Foser

Patent Trials and Appeals Board

Feb 3, 2020

14442895 - (D) (P.T.A.B. Feb. 3, 2020)

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.
14/442,895 05/14/2015 Roland Foser 5068.1160 6773
23280 7590 02/03/2020
Davidson, Davidson & Kappel, LLC
589 8th Avenue
16th Floor
New York, NY 10018
EXAMINER
NEJAD, MAHDI H
ART UNIT PAPER NUMBER
3723
NOTIFICATION DATE DELIVERY MODE
02/03/2020 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):
ddk@ddkpatent.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ROLAND FOSER
____________

Appeal 2018-007718
Application 14/442,895
Technology Center 3700
____________

Before DANIEL S. SONG, GEORGE R. HOSKINS, and
ALYSSA A. FINAMORE, Administrative Patent Judges.

HOSKINS, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 9–19 in this application. Claims 1–8
are canceled. See Appeal Br. 2. The Board has jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Hilti Aktiengesellschaft as the real
party in interest. Appeal Br. 2. The Appeal Brief does not provide page
numbering beyond the cover page, which is numbered “1” at the bottom.
Our citations to the Appeal Brief start with the cover page as page 1, and
carry that forward through the thirteen pages of the Appeal Brief, including
Appendices A–C. All future submissions by the attorney of record should
include proper page numbering.
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CLAIMED SUBJECT MATTER
Claim 9 is the sole independent claim on appeal, and it recites, with
our emphasis added:
9. A setting tool comprising:
a first part for driving a drop-in anchor; and
a second part placeable on the first part along an axis for
drilling a borehole for the drop-in anchor,
the first part having a shank for a percussive portable power
tool, a plunger including an impact surface, and a rotary coupling
part, and
the second part having a slip-on sleeve, the slip-on sleeve
surrounding the plunger coaxially and contacting the impact
surface of the plunger, a counterpart to the rotary coupling part
and a drill bit permanently connected to the slip-on sleeve.
Appeal Br. 10 (Claims App.) (emphasis added).
REJECTIONS ON APPEAL
Claims 9, 12–15, and 19 are rejected under 35 U.S.C. § 102(b) as
anticipated by Chiang (US 2008/0023924 A1, pub. Jan. 31, 2008).
Claim 16 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Chiang.
Claims 9–11, 17, and 18 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Bland (US 2012/0017421 A1, pub. Jan. 26, 2012) and
Chiang.
OPINION
A. Anticipation by Chiang (Claims 9, 12–15, and 19)
The Examiner finds, in part, that Chiang discloses a drill bit (i.e., tool
element 83, as shown in Figure 6) permanently connected to a slip-on sleeve
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(i.e., outer housing 10), as required by claim 9. Final Act. 3–4. In support,
the Examiner finds drill bit 83 is “permanently connected to the slip-on
sleeve until it is forcibly pulled out.” Id. at 4 (emphasis added). In the
Examiner’s view, this is similar to drill bit 23 illustrated in Figure 1 of
Appellant’s Specification, which the Examiner finds “can also be forced out
of [slip-on sleeve 20] with some degree of force.” Id. at 4, 11. In particular,
the Examiner determines Chiang’s drill bit 83 is permanently form fitted
within sleeve 10, in the same fashion that Appellant’s Specification
describes spiral 25 of drill bit 23 being permanently form fitted within
sleeve 20. Id. at 11 (citing Spec. ¶ 27).
Appellant responds that Chiang’s drill bit 83 is not permanently
connected to sleeve 10. Appeal Br. 5–6. This is so, in Appellant’s view,
because Chiang’s drill bit 83 and sleeve 10 “are connected in a movable
manner and are intentionally designed not to have a permanent connection.”
Id. (citing Chiang ¶ 43). Appellant asserts the Examiner’s contrary
determination reads the term “permanently” out of claim 9, and “makes no
sense” because if a drill bit can be forcibly pulled out of a sleeve, then a
person of ordinary skill in the art would understand that the two components
are not permanently connected. Id. at 6 (emphasis omitted). Appellant
argues paragraph 27 of Appellant’s Specification is not to the contrary,
because “not all form fitting connections are the same: some are permanent
and some are not.” Id.; Reply Br. 2.2

2 The Reply Brief does not provide page numbering. Our citations to the
Reply Brief start with the cover page as page 1, and carry that forward
through the four pages of the Reply Brief.
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The Examiner’s Answer maintains the positions taken in the Final
Office Action, and additionally cites a dictionary definition of the term
“permanent” as meaning “continuing or enduring without fundamental or
marked change: stable.” Ans. 12.
Upon review of the foregoing, we conclude a preponderance of the
evidence does not support the Examiner’s finding that Chiang’s drill bit 83
is permanently connected to sleeve 10. As described in Chiang, detent
ball 17 is held within orifice 16 of sleeve 10 by spring member 18 “for
engaging with” an annular recess of drill bit 83, and thereby “anchoring or
retaining” drill bit 83 within hole 11 of sleeve 10. Chiang, Figs. 1 & 6,
¶¶ 30, 43. However, drill bit 83 may be removed from sleeve 10 by pulling
it out with a sufficient force to overcome the bias of spring member 18
tending to hold detent ball 17 within the annular recess of drill bit 83. Id.
¶¶ 33, 37 (Fig. 5 shows “the tool member 8 [or drill bit 83] may be moved
relative to the housing 10 against the spring-biased bit detent ball 17.”),
41 (Fig. 4 shows “the tool member 8 [or drill bit 83] may be selectively
moved out of the housing 10.”), 43. Such removal achieves the design goal
of Chiang, which is to provide “a tool retaining device changeably coupling
or retaining different tool members or tool bits.” Id. ¶¶ 2 (emphasis added),
43–44; see also id. ¶ 3 (disclosing tool members such as drill bit 83 “may be
selectively moved” into and out of housing 10 (emphasis added)).
In short, Chiang’s drill bit 83 is insertable into and removable from
Chiang’s sleeve 10, to allow various tool members to be used at the user’s
selection. This is the antithesis of the two members being permanently
connected, as is required by claim 9. The Examiner’s contrary claim
construction is unreasonably broad. See In re Am. Acad. of Sci. Tech Ctr.,
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367 F.3d 1359, 1364 (Fed. Cir. 2004) (holding that, during examination of a
patent application, pending claims are given their broadest reasonable
construction consistent with the Specification); see also Microsoft Corp. v.
Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015) (holding the broadest
reasonable construction “must be consistent with the one that those skilled in
the art would reach”) (quoting In re Cortright, 165 F.3d 1353, 1358 (Fed.
Cir. 1999)).
The Examiner correctly points out that Appellant’s Specification
indicates, in some circumstances, a “form-fitting” connection may be a
“permanent connect[ion].” Spec. ¶ 27. However, we agree with Appellant’s
argument that some form-fitting connections are permanent, and others are
not. At the very least, it is clear that some “tighter” form-fitting connections
will require more force to separate the connected components than other
“looser” form-fitting connections. Viewed in that light, the issue presented
here is whether the force required to separate Chiang’s drill bit 83 from
sleeve 10 is so large that a person of ordinary skill in the art would consider
the two components to have a “permanent” connection.
The Examiner suggests a “permanent” connection occurs when the
connection is “continuing or enduring without fundamental or marked
change; stable,” applying a definition of “permanent” from the “Merriam-
Webster dictionary.” Ans. 12. That is the first of two entries in the
Merriam-Webster dictionary. The second entry defines “permanent” as “not
easily removed.” See https://www.merriam-webster.com/dictionary/
permanent (last accessed Jan. 22, 2020). Viewing this evidence together as a
whole, we conclude the force required to separate Chiang’s drill bit 83 from
sleeve 10 is not so large so that the connection would be deemed
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“permanent,” because Chiang intends for the two components to be easily
separated to allow various tool members to be used at the user’s selection,
and such separation and selection is an important feature of the device.
Thus, we do not sustain the rejection of claim 9, and of claims 12–15
and 19 which depend from claim 9, as anticipated by Chiang.
B. Obviousness over Chiang (Claim 16)
The Examiner’s consideration of claim 16, and of Chiang in relation
to claim 16, does not address the deficiency of Chiang in relation to the
parent claim 9 discussed above. See Final Act. 7. Therefore, we do not
sustain the rejection of claim 16 as having been obvious over Chiang.
C. Obviousness over Bland and Chiang (Claims 9–11, 17, and 18)
Claims 9, 17, and 18
Appellant argues for the patentability of claims 9, 17, and 18 as a
group over Bland and Chiang, without arguing for any of the claims in this
group separately from the other claims. See Appeal Br. 6–8 (arguing only
claims 10 and 11 separately from claim 9). We therefore select claim 9 to
decide the appeal of the rejection of claims 9, 17, and 18 based on
obviousness over Bland and Chiang. See 37 C.F.R. § 41.37(c)(1)(iv) (2017).
The Examiner finds Bland’s Figures 6 and 8 illustrate the invention of
claim 9, except Bland’s first part (drill bit 56) is for drilling a borehole, and
Bland’s second part (sleeve 70 and setting tool tip 80)3 is for driving a

3 The Examiner refers to “second part (54)” (Final Act. 8), but Bland’s
numeral 54 identifies the entire “installation tool” assembly shown in
Figures 6 and 8 (Bland ¶¶ 28–29). In context, it is clear the Examiner relies
only on sleeve 70 and tip 80 as corresponding to the recited “second part” of
claim 9.
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drop-in anchor. Final Act. 8–9. Claim 9, by comparison, requires that the
first part is for driving a drop-in anchor, and the second part is for drilling
a borehole. Appeal Br. 10 (Claims App.). The Examiner determines it
would have been obvious “to reverse the first and second parts of Bland as
taught by Chiang and easily remove the drilling part after drilling action and
then driving the drop-in anchor, since it has been held that a mere reversal of
the essential working parts of a device involves only routine skill in the art.”
Final Act. 9 (citing In re Einstein, 46 F.2d 373 (CCPA 1931)).
Appellant’s first argument is the rejection fails to “cite the claim
language which is not found in Bland and ascertain the differences, or
explain in any detail how to modify Bland with Chiang.” Appeal Br. 7;
Reply Br. 3. We disagree, and determine that the rejection is sufficiently
clear in explaining the factual and legal bases for the rejection that Appellant
is able to respond. See Final Act. 8–9; In re Jung, 637 F.3d 1356, 1361–62
(Fed. Cir. 2011) (discussing the Examiner’s prima facie burden). Our
conclusion is bolstered by Appellant’s demonstrated ability to respond. See
Appeal Br. 7–8; Reply Br. 3.
Appellant’s second argument is “there is no reason to modify . . .
Bland to provide the asserted first part 56 to be for driving a drop in anchor.”
Appeal Br. 7; Reply Br. 3. We disagree. In this regard the Examiner cites
In re Einstein, 46 F.2d 373 (CCPA 1931), which sustained the Office’s
determination of obviousness on the basis that “a mere reversal of the
essential working parts of a previously patented device did not constitute
invention.” Id. at 374. Appellant does not identify any reason why this
obviousness rationale may be deficient, or cite to any evidence in rebuttal of
the Examiner’s reason for modifying Bland. Appeal Br. 7; Reply Br. 3. For
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example, Appellant does not cite any subject matter in claim 9 or any
disclosure in Appellant’s Specification that demonstrates a criticality to the
first part being configured for driving a drop-in anchor and the second part
being configured for drilling a borehole as claimed, versus the opposite
configuration.
Appellant’s third argument is that, even if Bland were modified as
proposed by the Examiner, Bland’s first part would not have “a shank,”
“a plunger,” or “an impact surface” as required by claim 9. Appeal Br. 7;
Reply Br. 3. We disagree. The Examiner proposes to modify Bland’s drill
bit 56 to be configured to drive a drop-in anchor, by removing Bland’s drill
end 62, leaving Bland’s collar 68 to act as a setting tool. Final Act. 8–9;
Bland ¶¶ 28–29. As so modified, the first part of Bland would have a shank
(i.e., shaft 58) for a percussive portable power tool, a plunger (i.e., collar 68)
including an impact surface (i.e., the distal end of collar 68) for driving a
drop-in anchor, and a rotary coupling part (i.e., slots 72 of collar 68). Final
Act. 8–9; Bland ¶¶ 28–29.
Appellant’s fourth argument is that the combination of Bland and
Chiang fails to disclose a second part having “a counterpart to the rotary
coupling part and a drill bit permanently connected to the slip on sleeve,” as
required by claim 9. Appeal Br. 7. We disagree. The Examiner proposes to
modify Bland’s sleeve 70 to carry a drill structure such as drill end 62,
instead of setting tool tip 80. Final Act. 8–9; Bland ¶¶ 28–29. As so
modified, the second part of Bland would have a slip-on sleeve (i.e.,
sleeve 70) placeable over the first part (i.e., collar 68) for drilling a borehole,
with a counterpart to the rotary coupling part (i.e., protrusions 74 within
sleeve 70 are received in slots 72 of collar 68). Final Act. 8–9; Bland
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¶¶ 28–29. The second part of Bland, further, would contact the impact
surface of the plunger (i.e., collar 68) when sleeve 70 is installed on
collar 68. Final Act. 8–9; Bland, Fig. 8 (showing sleeve flange 100 in
contact with the distal end of collar 68 when sleeve 70 is placed on
collar 68); id. ¶ 31 (“In some embodiments, when the protrusions 74 are
engaged in the slots 72, the bit collar 68 seats on a tool sleeve flange 100.”).
Concerning the requisite permanent connection between the drill bit and the
sleeve, the Examiner finds “Bland teaches . . . a tool tip 80 permanently
connected to the slip-on sleeve [70].” Ans. 13 (citing Bland, Figs. 6 & 8).
Appellant does not cite any evidence tending to suggest this finding to be in
error. Further, permanently connecting a drill bit to Bland’s slip-on
sleeve 70 would have advantageously provided a drill bit that is less prone to
failure than a non-permanent connection when performing drilling
operations.
For the foregoing reasons, we sustain the rejection of claims 9, 17,
and 18 as having been obvious over Bland and Chiang.
Claim 10
Claim 10 depends from claim 9, and adds “wherein the first part and
the second part come into contact along the axis [for drilling a borehole]
only at the impact surface of the plunger.” Appeal Br. 10 (Claims App.); id.
(parent claim 9 recites “an axis for drilling a borehole”). The Examiner
finds Bland teaches this limitation, where the impact surface is the distal end
of collar 68, which contacts flange 100 of sleeve 70 along the drilling axis.
Final Act. 10; id. at 8–9.
Appellant responds that “Bland does not show this feature” of
claim 10. Appeal Br. 8. We agree. As discussed above, the Examiner’s
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modification of Bland would retain slot 72 of collar 68 receiving
protrusions 74 of sleeve 70, in a rotary coupling. See Bland, Figs. 6 & 8.
This interaction involves protrusions 74 contacting the walls defining
slot 72. See, e.g., Bland ¶ 29 (“To secure the tool sleeve 70 to the drill
bit 56 . . . one or more slots 72 . . . are engageable with one or more
protrusions 74 . . . .” (emphases added)). This contact is along the drilling
axis, as recited in claim 10, so the contact between the distal end of collar 68
and flange 100 of sleeve 70 is not the “only” such contact, as is required by
claim 10. Thus, we do not sustain the rejection of claim 10 as having been
obvious over Bland and Chiang.
Claim 11
Claim 11 depends from claim 9, and adds “wherein . . . surfaces of the
first part situated radially outside of the impact surface are separated from
the second part by a gap along the axis.” Appeal Br. 10 (Claims App.). The
Examiner finds Brand discloses “surfaces of the first part situated radially
outside of the impact surface are separated from the second part by a gap
along the axis.” Final Act. 10. In support, the Examiner annotates Bland’s
Figure 8, identifying the space around the pointed tip of drill end 62 as the
“gap.” Id. at 9; Ans. 13 (“[T]here is a gap between the first part and the
second part outside of the plunger.”).
Appellant responds that the gap identified by the Examiner “addresses
surfaces radially inside the asserted impact surface,” so the requirement of
claim 11 that “surfaces of the first part situated radially outside of the impact
surface are separated from the second part by a gap” is not met. Appeal
Br. 8 (emphases modified). We agree. As discussed above, the Examiner’s
modification of the first part of Bland would remove drill end 62, leaving
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Bland’s collar 68 to act as a setting tool with the distal end of collar 68
forming the impact surface. The only surface of the as-modified first part
that would be “radially outside of the impact surface” as recited in claim 11
is the round side surface of collar 68, forming slots 72 to receive
protrusions 74 of sleeve 70. See Bland, Fig. 8. Figure 8 tends to suggest
that the round side surface of collar 68 contacts the interior wall of
sleeve 70, rather than there being a “gap” there as required by claim 11. See
id. Moreover, the “gap” identified by the Examiner is radially inside of the
impact surface. See, e.g., Final Act. 9 (Examiner’s annotations to Bland’s
Fig. 8 identifying the “impact surface” and the “gap”). Thus, we do not
sustain the rejection of claim 11 as having been obvious over Bland and
Chiang.
CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C.
§
References Affirmed Reversed
9, 12–15, 19 102(b) Chiang 9, 12–15, 19
16 103(a) Chiang 16
9–11, 17, 18 103(a) Bland and Chiang 9, 17, 18 10, 11
Overall
Outcome
9, 17, 18 10–16, 19
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED IN PART