Rudolf Fuchs

Patent Trials and Appeals Board

Sep 4, 2020

2020000294 (P.T.A.B. Sep. 4, 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.
13/818,411 06/11/2013 Rudolf Fuchs 2178-0235 1748
10800 7590 09/04/2020
Maginot, Moore & Beck LLP
One Indiana Square, Suite 2200
Indianapolis, IN 46204
EXAMINER
IMAM, TANZIM
ART UNIT PAPER NUMBER
3731
MAIL DATE DELIVERY MODE
09/04/2020 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 RUDOLF FUCHS

Appeal 2020-000294
Application 13/818,411
Technology Center 3700
____________

Before JAMES P. CALVE, MICHAEL J. FITZPATRICK, and
BRANDON J. WARNER, Administrative Patent Judges.

FITZPATRICK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final decision rejecting claims 3–9. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.

1 “Appellant” refers to the applicant as defined in 37 C.F.R. § 1.42.
Appellant identifies Robert Bosch, GmbH, as the sole real party in interest.
Appeal Br. 2.
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Application 13/818,411

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STATEMENT OF THE CASE
The Specification
The Specification discloses “a hand-held machine tool.” Spec. 1:8.
The Claims
Claims 3–9 are rejected. Final Act. 1. No other claims are pending.
Id.; see also Appeal Br. 13–15. Claim 6, the sole independent claim, is
representative and reproduced below.
6. Accessory mounting device of a hand-held machine
tool, comprising:
a fastening unit including a cylindrical clamping ring
having a circumference and defining a radial direction extending
to and intersecting said circumference; and
at least one accessory coupling unit integral with said
clamping ring at the intersection of said radial direction and said
circumference of said clamping ring and including a holding
element for receiving an accessory therethrough in a direction
perpendicular to the radial direction at the intersection of said
radial direction and said circumference and a fastening element
for fastening the accessory to said holding element,
wherein the hand-held machine tool includes (i) a housing
including a machining-side-facing end in a direction of principal
extent of the housing, (ii) a drive unit, (iii) a gearbox unit
disposed within said housing and configured to convert a rotary
motion of the drive unit into an oscillating motion, the gearbox
unit having an output shaft extending perpendicular to the
direction of principal extent of the housing, (iv) a tool holder
configured to fasten at least one insert tool, and further
configured to be driven in an oscillating manner via the output
shaft of the gearbox unit, and (v) a cylindrical clamping collar
extending from said housing and configured to extend away from
the machining-side-facing end and at least partially around the
output shaft in a peripheral direction, the clamping collar
defining a continuous circumferential groove,
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wherein the accessory mounting device is configured to be
fastened by the fastening unit to the clamping collar of the hand-
held machine tool,
wherein the clamping ring is sized to be received entirely
within said continuous circumferential groove, and
wherein the holding element and the fastening element are
configured to permit adjustment of the accessory in said direction
perpendicular to the radial direction at the intersection of said
radial direction and said circumference.
Appeal Br. 13–14.
The Examiner’s Rejections
The rejections before us are the following:
1. claims 3–9, under 35 U.S.C. § 112 ¶2, as indefinite (Final Act.
2);
2. claims 3, 5–7, and 9, under 35 U.S.C. § 103(a), as unpatentable
over Kimbel2 and Frauhammer3 (id. at 3);
3. claims 4 and 8, under 35 U.S.C. § 103(a), as unpatentable over
Kimbel, Frauhammer, and Esenwein4 (id. at 8);
4. claims 3, 5–7, and 9, under 35 U.S.C. § 103(a), as unpatentable
over Flachenecker5 and Frauhammer (id. at 10); and
5. claims 4 and 8, under 35 U.S.C. § 103(a), as unpatentable over
Flachenecker, Frauhammer, and Esenwein (id. at 14).

2 US 5,957,765, issued Sept. 28, 1999 (“Kimbel”).
3 US 6,863,479 B2, issued Mar. 8, 2005 (“Frauhammer”).
4 US 2008/0200103 A1, published Aug. 21, 2008 (“Esenwein”).
5 US 4,905,420, issued Mar. 6, 1990 (“Flachenecker”).
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DISCUSSION
Rejection 1 (Indefiniteness)
The Examiner rejected claims 3–9 as indefinite based on claim 6’s
recitation of “the intersection” as having “insufficient antecedent basis.”
Final Act. 2.
But the lack of an antecedent basis does not render a claim
indefinite as long as the claim apprises one of ordinary skill in
the art of its scope and, therefore, serves the notice function
required by [35 U.S.C. § 112 ¶2]. Thus, a claim term that lacks
an antecedent basis may, but does not necessarily, render a claim
indefinite.
In re Downing, 754 F. App’x 988, 996 (Fed. Cir. 2018) (internal quotation
marks and citation omitted); see also Energizer Holdings, Inc. v. Int’l Trade
Comm’n, 435 F.3d 1366, 1370 (Fed. Cir. 2006) (“The requirement of
antecedent basis is a rule of patent drafting, administered during patent
examination. The Manual of Patent Examining Procedure states that
‘[o]bviously, however, the failure to provide explicit antecedent basis for
terms does not always render a claim indefinite.’ MPEP § 2173.05(e)”).
Claim 6 recites, in relevant part:
a fastening unit including a cylindrical clamping ring
having a circumference and defining a radial direction extending
to and intersecting said circumference; and
at least one accessory coupling unit integral with said
clamping ring at the intersection of said radial direction and said
circumference of said clamping ring.
Appeal Br. 13. We think it is sufficiently clear that “a radial direction
extending to and intersecting said circumference” (emphasis added) is by
implication a sufficient antecedent basis for “the intersection.” See
Energizer Holdings, 435 F.3d at 1371 (“Here, it is apparent that the claim
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Application 13/818,411

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can be construed. In that regard, we conclude that ‘anode gel’ is by
implication the antecedent basis for ‘said zinc anode.’”).
Rejections 2–5 (Obviousness)
In all of the obviousness rejections, the Examiner relies on
Frauhammer for teaching “a holding element for receiving an accessory
therethrough in a direction perpendicular to the radial direction at the
intersection of said radial direction and said circumference and a fastening
element for fastening the accessory to said holding element,” as recited in
claim 6. See, e.g., Final Act. 5 (with respect to Rejection 2).
Frauhammer discloses “a supplemental handle for a hand-held
machining tool with at least one grip element, or handle, which is
connectable to a housing of the hand-held machining tool by means of an
insulating device for vibration or oscillation insulation.” Frauhammer 1:19–
23. Figure 1 of Frauhammer is reproduced below.

Figure 1 of Frauhammer, reproduced above, “shows a drilling and chipping
hammer with a pivotably supported supplemental handle.” Id. at 3:26–28.
Figure 3 of Frauhammer is reproduced below.
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Figure 3 of Frauhammer, reproduced above, shows “bearing unit 28 with a
torsion spring, formed as bearing bolt 36, around which the grip element 10
[or supplemental handle] is pivotably supported.” Id. at 4:1–3.
Relying on Figure 3, the Examiner found that Frauhammer teaches:
at least one accessory coupling unit (64 and 62 collectively
in Figure 3) integral with said clamping ring (60) at an
intersection of said radial direction (shown in Figure 1x below)
and said circumference of said clamping ring (60) (apparent from
Figure 1x below) and including a holding element (72 in
Figure 3) for receiving an accessory (36 in Figure 3)
therethrough in a direction perpendicular to the radial direction
at the intersection of said radial direction and said circumference
(apparent when Figure 1x below is viewed in relation to
Figure 3) and a fastening element (68 in Figure 3) for fastening
the accessory (36) to said holding element (72) (Col. 4 lines 1–
11).
Final Act. 5.6

6 “Figure 1x” refers to the Examiner’s annotated version of Frauhammer
Figure 1. See Final Act. 6.
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Appellant argues that the asserted fastening and holding elements of
Frauhammer are merely two legs of a yoke structure and, in any event, the
asserted fastening element (first leg 68) does not fasten the asserted
accessory (bearing bolt 36) to the asserted holding element (second leg 72).
Appeal Br. 10–11. Rather, according to Appellant, “a first end (66) of the
bearing bolt (36) is non-rotatably supported in the first leg (68), and the
second end (70) of the bolt (36) is rotatably supported in the second leg
(72).” Id. at 10. Appellant is correct. Frauhammer states:
The bearing bolt 36 is mounted such that its first end 66 is non-
rotatably supported in a first leg 68 of a U-shaped receiving area
62 of a stepped extension of the collar 60 that extends radial to
the housing 26. The second end 70 of the bearing bolt 36 is
rotatably supported in a second leg 72 of the receiving area 62
(FIG. 3).
Frauhammer 4:5–11. Thus, the bearing bolt is “rotatably supported” in the
asserted holding element. Even if being “rotatably supported” constituted
“fastening” within the meaning of the claims, the asserted fastening element,
i.e., first leg 68, does not provide or cause the alleged fastening.
For this reason, we reverse the obviousness rejections of claims 3–9.

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Application 13/818,411

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SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
3–9 112 ¶2 Indefiniteness 3–9
3, 5–7, 9 103(a) Kimbel,
Frauhammer
3, 5–7, 9
4, 8 103(a) Kimbel,
Frauhammer,
Esenwein
4, 8
3, 5–7, 9 103(a) Flachenecker,
Frauhammer
3, 5–7, 9
4, 8 103(a) Flachenecker,
Frauhammer,
Esenwein
4, 8
Overall
Outcome
3–9

REVERSED