Taylor HallDownload PDFPatent Trials and Appeals BoardJul 28, 20212021000732 (P.T.A.B. Jul. 28, 2021) Copy Citation 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. 15/977,736 05/11/2018 Taylor James Hall 511525 9267 53609 7590 07/28/2021 REINHART BOERNER VAN DEUREN P.C. 2215 PERRYGREEN WAY ROCKFORD, IL 61107 EXAMINER RUFO, RYAN C ART UNIT PAPER NUMBER 3722 NOTIFICATION DATE DELIVERY MODE 07/28/2021 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): RockMail@reinhartlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte TAYLOR JAMES HALL Appeal 2021-000732 Application 15/977,736 Technology Center 3700 ____________ Before BIBHU R. MOHANTY, KENNETH G. SCHOPFER, and ROBERT J. SILVERMAN, Administrative Patent Judges. SCHOPFER, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 13–25. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Nomis LLC. Appeal Br. 2. Appeal 2021-000732 Application 15/977,736 2 BACKGROUND The Specification discloses that “[t]he present invention provides improvements over the current state of the art as it relates to pocket hole jigs and pocket hole jig kits.” Spec. ¶ 7. CLAIMED SUBJECT MATTER Claim 13 is the only independent claim on appeal and recites: 13. A method of using a pocket hole jig for use with a drill bit and a stop collar adjustably mountable along a longitudinal axis of the drill bit, the method comprising: providing the pocket hole jig, the pocket hole jig comprising: a workpiece support surface; a drill guide extending between first and second ends through a body, the drill guide intersecting the workpiece support surface at a non-parallel and non- perpendicular orientation relative to the workpiece support surface; a stop collar alignment cavity sized to receive at least a portion of the drill bit therein, the stop collar alignment cavity is a formed in the workpiece support surface; a drill bit abutment; a stop collar abutment positioned relative to the drill bit abutment such that with the drill bit axially abutting the drill bit abutment and the stop collar axially abutting the stop collar abutment, the stop collar may be affixed to the drill bit in a predetermined axial position along the longitudinal axis of the drill bit; inserting the drill bit within the stop collar alignment cavity of the pocket hole jig with the drill bit axially abutting the drill bit abutment; Appeal 2021-000732 Application 15/977,736 3 abutting the stop collar against the stop collar abutment to axially align the stop collar along the longitudinal axis of the drill bit; attaching the stop collar to the drill bit; and drilling a pocket hole into a workpiece using the drill bit inserted into the drill guide until the stop collar abuts a drilling abutment of the pocket hole jig. Appeal Br., Claims App. 2. REJECTIONS 1. The Examiner rejects claims 13–25 under 35 U.S.C. § 112(b) as indefinite. 2. The Examiner rejects claim 17 under 35 U.S.C. § 112(d) as being of improper dependent form for failing to further limit the claim from which it depends. 3. The Examiner rejects claims 13–25 under 35 U.S.C. § 103 as unpatentable over Chang2 in view of Sommerfeld3 and McDaniel.4 DISCUSSION Rejection 1 The Examiner determines that claim 13 is indefinite because it recites “the stop collar alignment cavity is a formed in the workpiece support surface,” and “[i]t is unclear whether the claim is meant to include a further limitation or if the ‘is a’ recitation is merely a typographical error.” Final Act. 3. Appellant does not dispute the substance of this rejection and argues that “it was error for the Examiner to refuse to enter the amendment” 2 Chang, US 2017/0297119 A1, pub. Oct. 19, 2017. 3 Sommerfeld et al., US 2006/0228180 A1, pub. Oct. 12, 2006. 4 McDaniel et al., US 2007/0280795 A1, pub. Dec. 6, 2007. Appeal 2021-000732 Application 15/977,736 4 proposed by Appellant to fix this issue. Appeal Br. 7. We agree with the Examiner that the claim is ambiguous as it is presently worded for the reasons provided by the Examiner. Accordingly, we sustain this rejection.5 Rejection 2 The Examiner determines that “[c]laim 13 includes all the limitations of claim 17 such that claim 17 does not further limit the claim from which it depends.” Final Act. 4. We agree. Claim 17 depends from claim 13 and recites “wherein the drill guide intersects the workpiece support surface at a non-parallel and non-perpendicular orientation relative to the workpiece support surface.” Spec. 15. Claim 13 recites “the drill guide intersecting the workpiece support surface at a non-parallel and non-perpendicular orientation relative to the workpiece support surface.” Appeal Br. Claims App. 2. Appellant does not raise a substantive argument regarding this rejection.6 See Appeal Br. 8. We agree with the Examiner, accordingly, we sustain this rejection. Rejection 3 With respect to claim 13, the Examiner finds that Chang discloses a method of using a pocket hole jig as claimed except that Chang does not disclose a jig that includes a cavity, drill bit abutment, and stop collar abutment as claimed. Final Act. 5–6. The Examiner relies on Sommerfeld as teaching a method of using a pocket hole jig with a jig that includes at 5 Whether the Examiner erred in refusing to enter Appellant’s proposed amendment is reviewable only by petition. See Ex parte Searles, 422 F.2d 431, 435 (CCPA 1970). 6 Appellant again raises the propriety of the Examiner’s refusal to enter Appellant’s proposed amendment, which is only reviewable by petition. Appeal 2021-000732 Application 15/977,736 5 stop collar abutment and stop collar alignment cavity. Id. at 6. The Examiner determines that it would have been obvious to modify Chang to include a stop collar alignment cavity and abutment as taught by Sommerfeld “in order to provide an alignment guide for the drill such that the drill bit is axially aligned with markings.” Id. The Examiner further relies on McDaniel as teaching a method of using a pocket hole jig with a jig that includes a stop collar alignment cavity with a drill bit abutment and stop collar abutment to allow the stop collar to be affixed to the drill bit at a predetermined position on the longitudinal axis of the bit. Id. at 6–7. The Examiner further determines that it would have been obvious to modify Chang and Sommerfeld to use a jig with a cavity and drill bit and collar abutments as taught by McDaniel in order to provide quick repeatability of the length of the drilling section of the bit and without the step of aligning the drill bit end with scale markings. Id. at 7. We agree with and adopt the Examiner’s findings and determinations with respect to the obviousness rejection of claim 13. See Final Act. 5–7; see also Ans. 14–17. As discussed below, we are not persuaded of error by Appellant’s arguments. Appellant first argues that the Examiner’s reasoning for combining Chang and Sommerfeld lacks rational underpinning. Appeal Br. 9–12. Appellant acknowledges the Examiner’s reasoning that the combination of Chang and Sommerfeld would have been obvious “in order to provide an alignment guide for the drill such that the drill bit is axially aligned with markings.” Id. at 11 (quoting Final Act. 6) (emphasis omitted). Appellant asserts that this reasoning lacks rational underpinning because Chang already teaches markings and aligning the drill bit with such markings and Appeal 2021-000732 Application 15/977,736 6 thus, “the Examiner has erroneously asserted a non-existent problem in Chang, namely that Chang lacks axial alignment of its drill bit for its markings.” Id. at 12. We are not persuaded of error for the reasons provided by the Examiner. See Ans. 14. Specifically, the Examiner explains that the proposed modification allows for more reliable axial alignment by modifying Chang to include a cavity for placement of the drill bit as taught by Sommerfeld. Id. As the Examiner explains, although Chang includes scale markings for aligning the drill bit and appropriately placing the stop collar, Chang lacks a cavity for placement of the drill bit. Id. Without a cavity, lateral movement of the drill bit is possible while trying to align it with the scale markings. Id. We agree with the Examiner that “[t]he inclusion of the cavity simplifies the method of using the device and adds reliability to the axial alignment with the scale markings by preventing lateral movement.” Id. Indeed, Sommerfeld discloses that the use of scale markings and guides or cavities, i.e., Sommerfeld’s half profiles 127, “provides a simple and fast method for setting up or changing depth collar settings.” Sommerfeld ¶¶ 83, 84. Thus, we are not persuaded that the Examiner’s reasoning lacks the requisite rational underpinnings to support the conclusion of obviousness. Next, Appellant argues that McDaniel does not rectify any deficiency in the combination of Chang and Sommerfeld. Appeal Br. 13. More specifically, Appellant argues that the Examiner errs in combining McDaniel with Chang and Sommerfeld “because the modification to Chang to include any such abutment renders the device of Chang unsatisfactory for its intended purpose.” Id. In support, Appellant raises two issues. Appeal 2021-000732 Application 15/977,736 7 First, Appellant asserts that Chang discloses the use of a scale to allow for different depth settings and providing an abutment as taught by McDaniel would prevent the use of multiple different settings “and leave Chang unsatisfactory for its intended purpose of providing multiple different settings.” Appeal Br. 14. We disagree. Appellant does not explain adequately why the use of a drill bit abutment as taught by McDaniel would prevent the use of Chang’s scale for providing multiple different settings. As the Examiner explains, the drill bit abutment may be provided at longer length that allows for quick repeatability in positioning the depth collar at that length while still allowing for the use of a shorter depth relative to shorter scale markings. See Ans. 15. Second, Appellant asserts that McDaniel “requires insertion of the drill bit into a fully enclosed cavity,” and using such a cavity would make it “impossible to align the tip of the drill bit [with] the multiple tick marks disclosed in Chang and Sommerfeld.” Appeal Br. 14. We disagree. The rejection does not appear to rely on the bodily incorporation of any fully enclosed cavity from McDaniel into the proposed combination of Chang and Sommerfeld. See Final Act. 6–7. Further, as the Examiner explains, McDaniel discloses an embodiment including a drill bit abutment and stop collar abutment in which the drill bit is not fully enclosed within a cavity. Ans. 16 (citing McDaniel Fig. 56, ¶ 104). Finally, Appellant argues that the Examiner’s articulated reason for combining McDaniel with Chang and Sommerfeld lacks rational underpinnings. Appeal Br. 14–15. Specifically, Appellant notes that the Examiner relies on the quick repeatability of length as the reason, but Appellant asserts that Chang and Sommerfeld already teach quick Appeal 2021-000732 Application 15/977,736 8 repeatability of length “once their respective stop collars are set.” Id. at 15. We are not persuaded of error for the reasons provided by the Examiner. See Ans. 15. As discussed above, the drill bit abutment may be provided at longer length that allows for quick repeatability in positioning the depth collar at a specific length. Id. Further, the rejection makes clear that the proposed reason relates to the quick repeatability of placing the stop collar on the drill bit when the drill bit is against the drill bit abutment versus having to align the drill bit end at scale markings in order to place the stop collar. Final Act. 7. In contrast, Appellant’s argument is inapposite to the reasoning provided by the Examiner because Appellant refers to Chang and Sommerfeld having quick repeatability once the stop collar is set, which says nothing about the repeatability of placing the stop collar on the drill bit in the first instance. See Appeal Br. 15. Based on the foregoing, we are not persuaded of error in the rejection of claim 13. Appellant relies on the same arguments with respect to the rejection of dependent claims 14–25, and we are not persuaded of error in the rejection of those claims for the same reasons. Accordingly, we sustain the obviousness rejection of claims 13–25. CONCLUSION We AFFIRM the rejections of claims 13–25. In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 13–25 112(b) Indefiniteness 13–25 17 112(d) Improper Dependency 17 Appeal 2021-000732 Application 15/977,736 9 Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 13–25 103 Chang, Sommerfeld, McDaniel 13–25 Overall Outcome 13–25 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)(l)(iv). AFFIRMED Copy with citationCopy as parenthetical citation