Ex Parte Bauer et alDownload PDFPatent Trial and Appeal BoardSep 8, 201411239732 (P.T.A.B. Sep. 8, 2014) 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. 11/239,732 09/29/2005 Martin K. Bauer O05-012A 1928 26683 7590 09/09/2014 THE GATES CORPORATION IP LAW DEPT. 10-A3 1551 WEWATTA STREET DENVER, CO 80202 EXAMINER NGUYEN, PHONG H ART UNIT PAPER NUMBER 3724 MAIL DATE DELIVERY MODE 09/09/2014 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 MARTIN K. BAUER and STEVEN G. AUSTIN ________________ Appeal 2012-008347 Application 11/239,732 Technology Center 3700 ________________ Before NEAL E. ABRAMS, MICHAEL L. HOELTER, and LEE L. STEPINA, Administrative Patent Judges. STEPINA, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Martin K. Bauer and Steven G. Austin (Appellants) seek our review under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1–7, 9, 10, 12–23, 25, and 27–29. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. THE CLAIMED SUBJECT MATTER The claimed invention is directed to a portable saw. Independent claims 1, 10, and 20 are illustrative of the claims on appeal and are reproduced below: Appeal 2012-008347 Application 11/239,732 2 1. A portable saw for cutting hose, comprising: a base comprising: a front plate and a back plate, said front plate including at least one pair of first biasing pins and at least one pair of second biasing pins on a front face of said front plate; a top plate extending transversely between said front and back plates interconnecting said front and back plates; at least one connecting member extending transversely between a bottom portion of said front and back plates; and a saw body comprising a saw blade and a handle, said saw body pivotally mounted on said top plate of said base for movement of said saw blade downward, generally perpendicular to a hose disposed between said pair of first biasing pins and said pair of second biasing pins. 10. A portable saw comprising: a base comprising a front plate; a saw body comprising a saw blade and a handle, said saw body pivotally mounted on said base for movement of said saw blade downward; and a plurality of adjustable biasing pins mounted on a front face of said front plate, wherein each of said plurality of adjustable biasing pins is slideably movable in a horizontal direction and a vertical direction; wherein said plurality of adjustable biasing pins comprises at least one pair of first biasing pins and at least one pair of second biasing pins on the front face to retain, a hose disposed therebetween generally perpendicular to said saw blade as said saw blade moves downward, and wherein at least one pair of said first biasing pins is spaced apart from a vertical centerline plane of the front face by a distance dl, wherein at least one pair of said second biasing pins is spaced from the vertical centerline plane by a distance d2, and wherein d2 > dl. 20. A portable saw for cutting hose comprising: a base comprising a front plate having a front face; a main body comprising a saw blade and a handle, said main body pivotally mounted on said base for movement of said saw blade downward; Appeal 2012-008347 Application 11/239,732 3 a motor interconnected to the saw blade for driving the saw blade; and means for adjustably biasing a portion of the hose at a point located in front of the front face to retain said hose perpendicular to said saw blade as said saw blade moves downward. REFERENCES RELIED ON BY THE EXAMINER Stanley US 3,232,159 Feb. 1, 1966 Maples US 3,683,557 Aug. 15, 1972 THE REJECTIONS ON APPEAL Claim 20 is rejected under 35 U.S.C. § 102(b) as anticipated by Stanley. Claims 1–7, 9, 10, 12–19, 21–23, 25, and 27–29 are rejected under 35 U.S.C. § 103(a) as obvious over Stanley and Maples. ANALYSIS The rejection of claim 20 as anticipated by Stanley The Examiner rejects claim 20 as anticipated by Stanley and cites the pins 13 in Stanley for the “means for adjustably biasing a portion of the hose at a point located in front of the front face to retain said hose perpendicular to said saw blade as said saw blade moves downward” recited in claim 20. Ans. 11. Appellants traverse this rejection, asserting: The Office Actions dated October 13, 2010 states, on page 4, that Stanley does not show a second pair of biasing pins. Claim 20 includes the limitation, “means for adjustably biasing a portion of the hose at a point located in front of the front face to retain said hose perpendicular to said saw blade as said saw blade moves downward.” This is written in means plus function language and is therefore limited to all embodiments disclosed in the application and equivalents. This application Appeal 2012-008347 Application 11/239,732 4 describes two pair of biasing pins for the reasons outlined above. This limitation is not shown or described in Stanley. The Office Action admits this is not shown in Stanley. For at least these reason Stanley cannot and does not anticipate Claim 20 of the present application. Br. 1011. The Examiner’s position is that claim 20 does not require two pairs of pins, and therefore, the single pair of pins disclosed in Stanley satisfies the recited “means for” feature of claim 20. Ans. 11. The feature at issue in claim 20 begins with the language “means for.” This leads to a presumption that this feature invokes 35 U.S.C. § 112, sixth paragraph. As the Federal Circuit explained: Accordingly, in determining whether a claim element falls within § 112, ¶ 6, this court has presumed an applicant advisedly used the word “means” to invoke the statutory mandates for means-plus-function clauses. Two specific rules, however, overcome this presumption. First, a claim element that uses the word “means” but recites no function corresponding to the means does not invoke § 112, ¶ 6. Second, even if the claim element specifies a function, if it also recites sufficient structure or material for performing that function, § 112, ¶ 6 does not apply. Rodime PLC v. Seagate Technology, Inc., 174 F.3d 1294, 1302 (Fed. Cir. 1999) (citations omitted). Accordingly, the presumption can be rebutted if the feature at issue (i) recites no function, or (ii) recites sufficient structure or material for performing the function recited. The final clause in claim 20 recites only functional language after the term “means for.” Therefore, we agree with Appellants’ assertion that the final clause in claim 20 should be interpreted under 35 U.S.C. § 112, sixth paragraph. Appeal 2012-008347 Application 11/239,732 5 Next, we must determine whether claim 20 requires two pairs of biasing pins as asserted by Appellants. 35 U.S.C. § 112, sixth paragraph states: An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. (emphasis added). Accordingly, we now look to the Specification, which states: To bias the hose and place the desired tension in the hose at or about the location to be cut, a front face 32 of front plate 24 typically includes a pair of first biasing pins 34a-b and at least one pair of second biasing pins 34c-d. In the illustrated embodiments, as shown in Fig. 1, for example, there is one pair of first biasing pins 34a-b and one pair of second biasing pins 34c-d. It is contemplated, however, that any number of pairs of biasing pins may be utilized in the present invention. Spec. 8, ll. 1419 (emphasis added). Thus, it appears that the Specification contemplates “any number of pairs of biasing pins.” We interpret “any number of pairs” to include one pair. Stanley discloses a pair of pins, as shown in Figure 1, and Appellants do not dispute this point. Appellants state, with respect to claim 20, “The Examiner cites against claim 1 [sic] only Stanley, which shows only one set of fixedly mounted pins.” Br. 10. Therefore, we agree with the Examiner that Stanley discloses the above- noted feature of claim 20, and Appellants’ contention does not persuade us of Examiner error. Accordingly, we affirm the rejection of claim 20 under 35 U.S.C. § 102(b) as anticipated by Stanley. Appeal 2012-008347 Application 11/239,732 6 The rejection of claims 1–7, 9, 10, 12–19, 21–23, 25, and 27–29 as obvious over Stanley and Maples Claims 1, 27, 9, and 27 Appellants assert that Stanley does not disclose a top plate as recited in claim 1. Appellants state: Claim 1 includes the limitation of “a top plate extending transversely between said front and back plates interconnecting said front and back plates.” Stanley may show something like a top plate, but Stanley certainly does NOT show a top plate “interconnecting said front and back plates” as required by claim 1. The structure the Office Action indicates as similar to the top plate of the present disclosure pivots and is not interconnected with the front and back plates as shown in the present disclosure. Br. 11. The Examiner cited the support member 16 of Stanley for the recited top plate, stating “Stanley teaches the top plate 16 interconnecting the front plate 8 and the back plate 35 through members 23. See Fig. 1. Therefore, Stanley teaches ‘a top plate interconnecting said front and back plates.’” Ans. 12. Appeal 2012-008347 Application 11/239,732 7 Figure 1 is reproduced below for clarity. Figure 1 of Stanley depicts a perspective view of the recited saw in use. We agree with the Examiner that the support member 16 in Stanley correlates to the recited “top plate” of claim 1. Contrary to the Appellants’ assertion that the structure cited by the Examiner pivots and is not interconnected with the front and back plates, as can be seen in Figure 4, support member 16 does not pivot. There is no indication in the Specification that Stanley’s corresponding “top plate” (i.e., member 16) pivots, and Appellants do not indicate how Stanley’s member 16 is not, albeit through other structure, “interconnected” with front plate 8 and back plate 35 as found by the Examiner. Ans. 12. We also note that Stanley Appeal 2012-008347 Application 11/239,732 8 discloses that “support plates 23 [] are in turn welded at 24 to the sides of the member 16.” Stanley, col. 3, ll. 17, 18. Appellants next argue the above- noted “pivot” issue with respect to the relationship of the recited saw body to the top plate by stating: Furthermore, Claim 1 includes the limitation of “said saw body pivotally mounted on said top plate.” Stanley shows the saw body fixedly mounted on what the Office Actions deems the top plate, and the top plate being arguably pivotally mounted to some sort of base-type structure. This is very different than the limitations in Claims 1 of the present application. Br. 11. The Examiner’s position, still referring to the support member 16, is as follows: Stanley teaches the saw body pivotally mounted on the top plate 16 through members 23. It is noted that the members 23 are connected to the top plate 16 (Figs. 1 and 4) and the saw body pivots about an axis 37 at the upper ends of the members 23 (Fig. 1) from a horizontal position (Fig. 1) to an upper position (Fig. 4). Therefore, Stanley teaches “said saw body pivotally mounted on said top plate”. Ans. 12. It is clear from Stanley’s Figure 4, reproduced below, that the Examiner’s position is correct. Appeal 2012-008347 Application 11/239,732 9 Figure 4 depicts a right-side view of the saw before rotation and after rotation. Figure 4, does not show rotation of the support member 16. Appellants next argue neither of Stanley or Maples discloses the recited pairs of biasing pins. Appellants state: Claim 1 also includes the limitation “... said front plate including at least one pair of first biasing pins and at least one pair of second biasing pins on a front face of said front plate ...” As noted above, Stanley does not show or suggest 2 pair of biasing pins at all, and suffers from the deficiencies this disclosure intends to rectify. Maples may show 2 pair of biasing pins, but not in any structure that could be a front plate, as described with interconnections to other portions of the present disclosure. Therefore[,] neither of these references show[s] this limitation, and cannot be combined to render this limitation obvious. For this additional reason, Claim 1 is not anticipated by the Stanley and Maples references. Br. 12. Appeal 2012-008347 Application 11/239,732 10 The Examiner acknowledges Stanley does not disclose a second pair of biasing pins and relies on Maples for this feature. Ans. 8. The Examiner asserts that it would have been obvious to replace the support block 9 in Stanley with a second pair of pins as disclosed in Maples to receive hoses of different sizes. Id. Stanley describes placing the pins 13 in the various apertures 12 to accommodate hoses with different sizes. See Stanley, col. 2, ll. 35–70. Maples discloses two pairs of pins and describes adjusting them for the same reason as does Stanley, that is, to accommodate different sizes of tubing. Maples states, “[o]bviously, different size tubing and tubing having different flex characteristics may be suitably retained by the tube holding means 13 by suitable adjustment of the respective pins as desired.” Maples, col. 3, ll. 11–15. Regarding the Appellants’ assertion that Maples does not disclose biasing pins located in a structure correlating to the front plate recited in claim 1, we note the Examiner relies on Maples to remedy the deficiency in Stanley regarding the number of pairs of pins, not for the front plate. The issue is whether the Examiner’s reasoning for making the asserted combination of Stanley and Maples is sound, not whether Maples further discloses features for which the Examiner already cites Stanley. We find no error in the Examiner’s conclusions regarding the presence of a top plate and a pivotally mounted saw, and agree that it would have been obvious to one of ordinary skill in the art to replace the support block in Stanley with two sets of movable pins, in view of the teaching of Maples. Therefore, we sustain the rejection of independent claim 1 and because Appellants have chosen not to separately argue the claims Appeal 2012-008347 Application 11/239,732 11 depending from claim 1, we also sustain the like rejection of dependent claims 2–7, 9, and 27 under 35 U.S.C. § 103(a) as obvious over Stanley and Maples. Claims 10, 1219, and 28 Appellants argue: Claim 10 includes the limitation “ . . . a plurality of adjustable biasing pins mounted on a front face of said front plate, wherein each of said plurality of adjustable biasing pins is slideably movable in a horizontal direction and a vertical direction; wherein said plurality of adjustable biasing pins comprises at least one pair of first biasing pins and at least one pair of second biasing pins on the front face to retain . . . [.]” Neither Stanley nor Maples shows teaches or suggests biasing pins that are slideably moveable in a horizontal direction and a vertical direction. For at least this reason, this limitation of Claim 10 is not obvious in light of the Stanley and Maples references. Br. 13. The Examiner states: The Applicant argues that Stanley and Maples do not teach the pins moveable in a horizontal direction and a vertical direction. This argument is not persuasive. Maples teaches the plate 21 having a plurality of holes 28 arranged in a horizontal direction and a vertical direction in Fig. 1. When the teaching of a second pair of pins in Maples (Fig. 5) is applied to Stanley, the plurality of holes 28 are provided on the front plate 6 in Stanley. When a user desires to adjust a pin, he removes the pin from its current hole and moves it vertically to a vertical hole or horizontally to a horizontal hole. Therefore, the combination of Stanley and Maples teaches the pins moveable in a horizontal direction and a vertical direction. Ans. 13 (emphasis added). The Examiner has not provided evidence or persuasive argument that either of Stanley or Maples discloses pins slideably moveable in a horizontal and a vertical direction, as recited in claim 10. Accordingly, even assuming, Appeal 2012-008347 Application 11/239,732 12 arguendo¸that it would have been obvious to combine the teachings of Stanley and Maples, this feature would not be present, and we therefore reverse the rejection of claim 10 and claims 12–19 and 28, which depend from claim 10. Claims 21–23 and 29 Claims 21–23 and 29 add to claim 20 details regarding the biasing pins, and stand rejected as being unpatentable over the combined teachings of Stanley and Maples. The rejection of claim 20 as being anticipated by Stanley has been sustained (supra at 10). Appellants do not present arguments directed to the obviousness rejection of claims 21–23 and 29, but take the position that these claims are allowable “for at least the reasons enumerated above with regard to Claim 20” and “over the cited references.” Br. 14. In view of these statements, we consider claims 21–23 and 29 as being grouped with claim 20, and therefore we also sustain this rejection. DECISION The Examiner’s rejection of claim 20 under 35 U.S.C. § 102(b) as anticipated by Stanley and the Examiner’s rejection of claims 1–7, 9, 21–23, 25, 27, and 29 under 35 U.S.C. § 103(a) as obvious over Stanley and Maples are affirmed. The Examiner’s rejection of claims 10, 12–19, and 28 under 35 U.S.C. § 103(a) as obvious over Stanley and Maples is reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED-IN-PART llw Copy with citationCopy as parenthetical citation