Taylor Hall

Patent Trials and Appeals Board

Jul 28, 2021

2021000732 (P.T.A.B. Jul. 28, 2021)

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.
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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;
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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.
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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.
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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
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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.
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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
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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
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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