SAUR, Dietmar

Patent Trials and Appeals Board

Oct 31, 2019

13787236 - (D) (P.T.A.B. Oct. 31, 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.
13/787,236 03/06/2013 Dietmar SAUR BOSC.P7807US/1000366426 4989
24972 7590 10/31/2019
NORTON ROSE FULBRIGHT US LLP
1301 Avenue of the Americas
NEW YORK, NY 10019-6022
EXAMINER
FRY, PATRICK B
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
10/31/2019 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):
nyipdocket@nortonrosefulbright.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DIETMAR SAUR

Appeal 2019-003551
Application 13/787,236
Technology Center 3700
____________

Before MICHAEL C. ASTORINO, BRADLEY B. BAYAT, and
TARA L. HUTCHINGS, Administrative Patent Judges.

ASTORINO, 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 and 5–16. 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
Robert Bosch GmbH of Stuttgart in the Federal Republic of Germany.
Appeal Br. 1.
Appeal 2019-003551
Application 13/787,236

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STATEMENT OF THE CASE
Claimed Subject Matter
Claim 1, the sole independent claim, is representative of the subject
matter on appeal and is reproduced below.
1. A hand-held power tool, comprising:
a tool housing;
a drive shaft provided with a tool holder for holding an
assigned insertion tool;
a gear unit provided in the tool housing, wherein the gear
unit is drivable by a drive motor for driving the drive shaft;
a torque clutch assigned to the drive shaft;
a manually operable setting device configured to set a
predefined maximum torque transferable from the gear unit to
the tool holder, wherein the power tool is designed so that,
when the predefined maximum torque is reached, the torque
clutch is activated thereby generating at least one of oscillations
or vibrations;
an acceleration sensor configured to detect the at least
one of oscillations or vibrations and output an acceleration
signal that represents vibrations transmitted to the tool housing
and that has an assigned average amplitude from which the
acceleration signal varies in response to the activation of the
torque clutch; and
a control unit that is communicatively coupled to the
acceleration sensor to obtain the acceleration signal from the
acceleration sensor and that is configured to detect the
activation of the torque clutch by identifying the varying of the
acceleration signal that the control unit obtains from the
acceleration sensor.

Rejections
Claims 1, 7, 8, 10, and 14–16 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Nadig et al. (US 7,055,620 B2, iss. June 6, 2006)
Appeal 2019-003551
Application 13/787,236

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(“Nadig”), Stirm et al. (US 7,506,694 B2, iss. Mar. 24, 2009) (“Stirm”), and
Totsu (US 6,910,540 B2, iss. June 28, 2005).
Claim 5 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Nadig, Stirm, Totsu, and Douglas Brooks, UltraCAD Design, Inc.,
Microstrip Propagation Times Slower Than We Think (accessed Oct. 23,
2019) http://www.ultracad.com/mentor/microstrip%20propagation.pdf
(“UltraCAD Design”).
Claim 6 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Nadig, Stirm, Totsu, and Vibro-meter Piezoelectric Accelerometer Type CE
252, Wayback Machine (Nov. 14, 2008) http://www.vibro-meter.com/pdf
(“Vibro-meter”).
Claim 9 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Nadig, Stirm, Totsu, and Thompson et al. (US 6,479,958 B1, iss. Nov. 12,
2002) (“Thompson”).
Claims 11 and 12 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Nadig, Stirm, Totsu, and Suzuki et al. (US 6,607,041 B2,
iss. Aug. 19, 2003) (“Suzuki”).
Claim 13 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Nadig, Stirm, Totsu, and Di Troia (US 5,657,417, iss. Aug. 12, 1997).

ANALYSIS
Independent claim 1 recites, “an acceleration sensor configured to
detect the at least one of oscillations or vibrations.” Appeal Br., Claim
App. 1.
The Examiner relies on Nadig to teach an acceleration sensor. Final
Act. 3. More specifically, the Examiner finds Nadig discloses that its
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Application 13/787,236

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acceleration sensor 42 is configured to detect at least one movement of
housing 10. Id. Indeed, Nadig discloses sensing angular acceleration,
particularly, when housing 10 is accelerated uncontrollably against the
original rotational motion of insertable tool 16 around the axis of rotation of
insertable tool 16. Nadig, col. 3, ll. 12–26; see Ans. 4. Notably, the
Examiner does not find that Nadig describes an acceleration sensor that
detects oscillations or vibrations.
The Examiner relies on Stirm to teach a torque clutch that when
activated generates at least one of oscillations or vibrations. See Final
Act. 3–4. The Examiner determines, that after the modification of Nadig’s
hand-held power tool in view of Stirm’s teaching, Nadig’s acceleration
sensor 42 “will detect all movements transmitted” to Nadig’s housing 10,
which may include, by example, vibrations created due to clutch balls
moving in and out of pockets. See id. at 4–5.
The Appellant argues that the Examiner’s finding that Nadig teaches
the claimed acceleration sensor is inadequately supported because it is
unknown whether Nadig’s acceleration sensor is configured to detect
vibrations. Appeal Br. 3.
In response, the Examiner clarifies the rejection, explaining that upon
modifying Nadig’s hand-held power tool “the person of ordinary skill in the
art would have the acceleration sensor set to detect when the overload clutch
disengages the rotational movement between the motor and the tool holder.”
Ans. 5 (emphasis added); see id. (“In order for the acceleration sensor to
detect when the overload clutch disengages the rotational movement
between the motor and the tool holder, the acceleration sensor would have to
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Application 13/787,236

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be set to sense the vibrations generated by the clutch balls moving out and
into the pockets.”).
The Appellant disagrees with the Examiner’s clarification, and argues
that it is based on impermissible hindsight. Reply Br. 3.2 The Appellant’s
argument is persuasive.
The Examiner’s explanation that Nadig’s acceleration sensor would
have to be set to sense vibrations suggests that: without setting Nadig’s
acceleration sensor to sense vibrations, the acceleration sensor is unable to
sense vibrations; and there is insufficient evidence for the Examiner to
support a finding that Nadig’s acceleration sensor is set to sense vibrations.
Moreover, on this record, we fail to understand from the Examiner’s
rejection that Nadig’s acceleration sensor has been modified to sense
vibrations. Additionally, it is notable that the Examiner’s explanation
presumes that the only manner to detect vibrations is by using an
acceleration sensor, which, on this record, has not been adequately
established.
Thus, we do not sustain the Examiner’s rejection of independent
claim 1, and dependent claims 7, 8, 10, and 14–16, as unpatentable over
Nadig, Stirm, and Totsu. The Examiner does not rely on the teachings of
UltraCAD Design, Vibro-meter, Thompson, Suzuki, or Di Troia, in any
manner that remedy the deficiency in the rejection, as discussed above.
Therefore, we likewise do not sustain the Examiner’s rejections of
dependent claims 5, 6, 9, and 11–13.

2 The Reply Brief lacks page numbers. We designate page 1 as the page that
includes the heading “REPLY BRIEF UNDER 37 C.F.R. § 41.41” and
number the remaining pages in the Reply Brief consecutively therefrom.
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Application 13/787,236

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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1, 7, 8, 10,
14–16
§ 103(a) Nadig, Stirm, Totsu,

1, 7, 8, 10,
14–16
5 § 103(a) Nadig, Stirm, Totsu,
UltraCAD Design
5
6 § 103(a) Nadig, Stirm, Totsu,
Vibro-meter
6
9 § 103(a) Nadig, Stirm, Totsu,
Thompson
9
11, 12 § 103(a) Nadig, Stirm, Totsu,
Suzuki
11, 12
13 § 103(a) Nadig, Stirm, Totsu,
Di Troia
13
Overall
Outcome
1, 5–16

REVERSED