Ex Parte Bauer et al

Patent Trial and Appeal Board

Sep 8, 2014

11239732 (P.T.A.B. Sep. 8, 2014)

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. 1011.
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. 1419 (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, 27, 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, 1219, 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