Wolf Matthias et al.

Patent Trials and Appeals Board

Dec 9, 2020

2020000539 (P.T.A.B. Dec. 9, 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.
13/395,719 05/24/2012 Wolf Matthias BOSC.P7331US/1000211842 4518
24972 7590 12/09/2020
NORTON ROSE FULBRIGHT US LLP
1301 Avenue of the Americas
NEW YORK, NY 10019-6022
EXAMINER
BOWERS, BRANDON
ART UNIT PAPER NUMBER
2851
NOTIFICATION DATE DELIVERY MODE
12/09/2020 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):
nyipdocket@nortonrosefulbright.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WOLF MATTHIAS, GUNTER FLINSPACH,
ALEXANDER OSSWALD, RAINER GLAUNING,
and TOBIAS HANS
Appeal 2020-000539
Application 13/395,719
Technology Center 2800
Before CHRISTOPHER C. KENNEDY, LILAN REN, and
SHELDON M. MCGEE, Administrative Patent Judges.
MCGEE, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 14, 16, and 18–29. We have
jurisdiction. 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(a). Appellant identifies the real party in interest as
ROBERT BOSCH GmbH. Appeal Br. 1.
Appeal 2020-000539
Application 13/395,719
2
CLAIMED SUBJECT MATTER
The claims are directed to handheld-tool battery charging apparatus
(e.g., independent claims 14 and 29) and systems containing such apparatus
(e.g., independent claims 23 and 25). Claim 14, reproduced below, is
illustrative of the claimed subject matter:
14. A handheld-tool battery charging apparatus, comprising:
at least one battery accommodation region configured to
detachably accommodate at least one battery pack;
at least one detachable battery contact unit configured to
be mechanically and electrically detachably connected to a
detachable machine contact unit of the at least one battery pack;
at least one charging connection unit configured to receive
wirelessly transmitted energy, the charging connection unit
having an energy receiving coil configured to receive wirelessly
transmitted energy; and
at least one further detachable machine contact unit
configured to be mechanically and electrically detachably
connected to a battery contact unit of a handheld machine tool
and to transmit energy to the handheld machine tool,
wherein the mechanical and electrical connection of the
battery contact unit with the detachable machine contact of the at
least one battery pack, and the mechanical and electrical
connection of the further detachable machine contact unit with
the battery contact unit of the handheld machine tool are
detachable without using a tool.
REJECTIONS
I. Claims 14, 16, 18–21, and 23–292 under 35 U.S.C. § 103(a) as
unpatentable over Mastaler3 in view of Roehm.4 Final Act. 3–11.

2 Although claim 29 is not listed in the rejection summary, it is discussed in
the body of the rejection. The rejection summary also erroneously includes
claim 22, which is the subject of a separate rejection. Final Act. 2, 9–11.
3 US 6,876,173 B2, issued April 5, 2005.
4 US 2008/0061734 A1, published March 13, 2008.
Appeal 2020-000539
Application 13/395,719
3
II. Claim 22 under 35 U.S.C. § 103(a) as unpatentable over Mastaler
in view of Roehm and Kook.5 Id. at 11.
OPINION
Appellant argues the rejection of claims 14, 16, 18–21, and 23–29 as a
group. Appeal Br. 5. Therefore, consistent with our rule, we select claim 14
and decide the appeal of this group of claims based on claim 14. 37 C.F.R.
§ 41.37(c)(1)(iv).
The Examiner finds that Mastaler discloses each element of claim 14,
but “differs from the claimed invention in that at least one charging
connection unit appears to be a wired charging connection unit instead of
wireless.” Final Act. 3. To address this difference, the Examiner turns to
Roehm, finding that Roehm discloses a coil winding for receiving energy
wirelessly for charging a power tool battery. Id. at 3–4. The Examiner
determines that it would have been obvious to modify Mastaler’s handheld-
tool battery charging apparatus to make it capable of receiving energy
wirelessly because there are known advantages for wireless charging such as
increased convenience. Id. at 4.
We sustain the rejection of claims 14, 16, 18–21, and 23–29 based on
the findings and conclusions well-expressed by the Examiner. Final Act. 3–
11; Ans. 3–4. We add the following for emphasis only.
Appellant’s assertion that Mastaler does not disclose a handheld-tool
battery charging apparatus as recited in the preamble, but rather “only
disclose[s] an adapter between a handheld power tool and a battery unit”
(Appeal Br. 5 (citing Mastaler, 2:59–61, 6:53–56); Reply Br. 1) is not well-
taken. First, Appellant does not advance any argument sufficient to establish

5 US 7,791,312 B2, issued September 7, 2010.
Appeal 2020-000539
Application 13/395,719
4
that the preamble should be construed as a limitation of claim 14. Generally,
a preamble is not construed as a limitation. Allen Eng’g Corp. v. Bartell
Indus., Inc., 299 F.3d 1336, 1346 (Fed. Cir. 2002). In particular, “when the
claim body describes a structurally complete invention such that deletion of
the preamble phrase does not affect the structure or steps of the claimed
invention,” the preamble is not considered a limitation. Catalina Mktg. Int’l,
Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002) (citing
IMS Tech., Inc. v. Haas Automation, Inc., 206 F.3d 1422, 1434 (Fed. Cir.
2000) (holding that the preamble phrase “control apparatus” did not limit the
claim scope where it merely gave a descriptive name to a structurally
complete invention). Moreover, even if the preamble were properly
construed as a limitation here, Appellant’s argument reveals no error in the
Examiner’s finding that Mastaler discloses it. Final Act. 2 (citing Mastaler,
Figs. 1, 2A, 4A, 5A, and 6); Ans. 4. As found by the Examiner (Ans. 4),
Mastaler’s expressly discloses “[a]n adapter for electrically connecting a
battery pack with [a]n electrical apparatus such as a cordless power tool or a
charger.” Mastaler, Abstract, code (57). In describing Figure 6, Mastaler
discloses that “electrical circuit 110 electrically connect[s] a battery pack 12
to a charger 112 through one of the adapters 10.” Mastaler, 7:18–21. Thus,
despite Appellant’s apparent belief, Mastaler’s disclosure is not limited to an
adapter, but includes a battery pack and a charger connecting through the
adapter. See Appeal Br. 5 (Appellant asserting that “Mastaler et al. only
disclose an adapter between a handheld power tool and a battery unit”).
Appellant also contends that Mastaler does “not disclose an adapter
that is capable of charging a battery pack, while being attached to the
handheld power tool.” Appeal Br. 5; Reply Br. 2. At best, this is a naked
assertion of what is lacking in the prior art and, as such, is not an argument
Appeal 2020-000539
Application 13/395,719
5
having any persuasive merit. In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir.
2011). Appellant fails to address the Examiner’s findings regarding
Mastaler at page 3 of the Office Action with any specificity.
In sum, because Appellant has failed to advance any persuasive
argument identifying reversible error in the Examiner’s rejection, we sustain
it.
Appellant makes no separate argument regarding the Examiner’s
rejection of claim 22, so we also sustain this rejection for the reasons
provided by the Examiner. Id.
CONCLUSION
The Examiner’s rejections are affirmed.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
14, 16, 18–
21, 23–29
103 Mastaler, Roehm 14, 16, 18–
21, 23–29

22 103 Mastaler, Roehm,
Kook
22
Overall
Outcome
14, 16, 18–29
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