Ex Parte Bergner

Patent Trial and Appeal BoardOct 31, 2012

10585048 (P.T.A.B. Oct. 31, 2012)

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. 10/585,048 06/29/2006 Joao Jorge Bergner 3731 6190 7590 11/01/2012 Striker, Striker & Stenby 103 East Neck Road Huntington, NY 11743 EXAMINER OMAR, AHMED H ART UNIT PAPER NUMBER 2859 MAIL DATE DELIVERY MODE 11/01/2012 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 JOAO JORGE BERGNER ____________________ Appeal 2010-006541 Application 10/585,048 Technology Center 2800 ____________________ Before KALYAN K. DESHPANDE, BRYAN F. MOORE, and LARRY J. HUME, Administrative Patent Judges. HUME, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection of claims 1-12 and 14-20. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2010-006541 Application 10/585,048 2 STATEMENT OF THE CASE 1 The Invention Appellant’s invention is directed to a device with a power tool case that includes at least one receiving area for a power tool and a charging device. Spec. p. 1, ll. 4-5 and ll. 10-11. Exemplary Claims Claim 1 is an exemplary claim representing an aspect of the invention which is reproduced below (emphasis added to disputed limitations): 1 A device with a power tool case (10), that includes at least one first receiving area (12) for a power tool (16), and a charger (14), wherein the charger (14) and the power tool case (10) are designed to remain connected during a charging procedure, wherein said power tool is stored in a transport position in said at least one first receiving area, wherein said power tool is arranged in a second receiving area during said charging procedure in a standing position, and wherein said second receiving area is embodied as a stand and comprises charging contacts to transmit charging energy. 1 Our decision refers to Appellant’s Appeal Brief (“App. Br.,” filed Oct. 7, 2009); Reply Brief (“Reply Br.,” filed Mar. 17, 2010); Examiner’s Answer (“Ans.,” mailed Jan. 26, 2010); Non-Final Office Action (“NFOA,” mailed May 8, 2009); and original Specification (“Spec.”, filed June 29, 2006.). Appeal 2010-006541 Application 10/585,048 3 Prior Art The prior art relied upon by the Examiner in rejecting the claims on appeal is: Hyodo US 6,066,938 May 23, 2000 Burrus, IV US 2002/0008044 A1 Jan. 24, 2002 Kajiya US 2003/0150756 A1 Aug. 14, 2003 Zweigle US 6,682,361 B2 Jan. 27, 2004 Mather GB 2 397 704 A Jul. 28, 2004 Rejections on Appeal 1. Claims 1, 2, 6, 7, 11, and 20 are rejected under 35 U.S.C. §103(a) as being unpatentable over Mather in view of Hyodo. Ans. 4. 2. Claims 1, 3, 4, 5, 7-10, 12, 14-15, and 19 are rejected under 35 U.S.C. §103(a) as being unpatentable over Burrus, IV in view of Hyodo. Ans. 6. 3. Claim 16 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Burrus, IV and Hyodo in view of Kajiya. Ans. 10. 4. Claims 17 and 18 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Burrus, IV and Hyodo in view of Zweigle. Ans. 11. Appeal 2010-006541 Application 10/585,048 4 GROUPING OF CLAIMS Based upon Appellant’s arguments against the rejections on appeal (App. Br. 5-9; Reply Br. 2-4)2, we select representative claim 1 to decide this appeal in accordance with those arguments and rejections, such that claims 2-12 and 14-20 stand or fall with independent claim 1. ISSUES AND ANALYSIS 1. Unpatentability Rejection of Claim 1 over Mather and Hyodo Appellant’s Contentions Appellant contends that neither Mather nor Hyodo teaches or suggests a device with a power tool case with a first receiving area and a second receiving area, in which the power tool is stored in a transport position in the first receiving area and where the power tool is arranged in a second receiving area during a charging procedure in a standing position, as defined in claim 1. App. Br. 5. With respect to their inventive concept, Appellant contends: Due to the structure according to claim 1, it can be easily detected by an operator or even by any bypassing person, whether the power tool (16) is being charged (standing position) or is stored for the purpose of transportation (lying position). If the power tool (16) is located in the first receiving 2 We note, as did the Examiner (Ans. 15), that Appellant improperly argues against Mather in the unpatentability rejection over Burrus, IV in view of Hyodo (App. Br. 7), and we further note that Appellant did not correct this improper argument in the Reply Brief. We have disregarded Appellant’s arguments presented with respect to Mather as being irrelevant to the unpatentability rejection over Burrus, IV in view of Hyodo. Appeal 2010-006541 Application 10/585,048 5 area (12), the tool (16) is stored for transportation. However, if the power tool (16) is arranged in the second receiving area (26), indicated by the standing position of the power tool (16), the power tool (16) and a charger (14) are in the recharging mode. Therefore, a construction or arrangement can be provided which is very operator friendly and which can indicate its present condition with less effort. App. Br. 5. Appellant goes on to contend that “each of the cited references shows only one receiving area . . . [and while] Hyodo et al. might show that the power tool can be stood in the area during charging, this does not support modification of either of the primary references to add a second receiving area for this purpose.” App. Br. 6. Finally, Appellant contends that “Hyodo et al would only lead the practitioner to modify Mather al to provide one receiving area in which the tool could be charged in a standing position rather than stored in a lying position, since likewise, neither Mather nor Hyodo proposes two receiving areas.” App. Br. 6. Issue 1 Did the Examiner err in finding that the combination of Mather with Hyodo teaches or suggests all the claimed limitations, particularly the limitations of “wherein said power tool is arranged in a second receiving area during said charging procedure in a standing position, and wherein said second receiving area is embodied as a stand,” as recited in claim 1? Appeal 2010-006541 Application 10/585,048 6 Analysis We have reviewed the Examiner’s rejections in light of Appellant’s arguments that the Examiner has erred. We disagree with Appellant’s conclusions with respect to claim 1, and we adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken and (2) the reasons and rebuttals set forth by the Examiner in the Examiner’s Answer (Ans. 4-5, 12-14) in response to Appellant’s Arguments (App. Br. 5-6; Reply. Br. 3). However, we highlight and address specific findings and arguments regarding claim 1 for emphasis as follows. In particular, we agree with the Examiner’s observation that the point of contention is whether the combination of Mather and Hyodo (each with a single position) would lead to the modification of Mather to add a second receiving area, or whether the modification would merely replace Mather’s first receiving area with that taught by Hyodo to yield a power tool case with only one receiving area. Ans. 12. Further to this point, we agree with the Examiner’s finding regarding motivation that it would have been obvious to modify Mather by Hyodo to add a second receiving area such that the power tool is arranged in a standing position in the second receiving area during a charging procedure to allow for the easy removal of the power tool from the charger using one hand while being charged, and which would also allow for charging of the power tool without having to disconnect the batteries, along with safely storing the power tool during transportation. Ans. 5. Appeal 2010-006541 Application 10/585,048 7 In support of our finding, we further agree with the Examiner’s statement that Mather teaches that his main goal is to combine storage and charging, and that “all the elements were known in the prior art,” such that it would have been obvious to one of ordinary skill in the art to modify Mather’s invention with that of Hyodo using known methods, i.e., by adding Hyodo’s charger to Mather’s power tool case to provide the benefit of a power tool case that combines storage of the power tool, charging of the batteries while also charging of the battery installed in the power tool without having to disconnect the battery from the power tool. Ans. 14. We agree with the Examiner that the prior art teaches two known positions, i.e., standing position (in Hyodo) and transport position (in Mather), and agree with the Examiner’s reasoning, supra, that the benefits obtained by combining these two positions in one case would have been obvious. In addition, we find that the Appellant has not presented persuasive arguments or evidence as to why it would be unreasonable to combine these two known positions in one case.3 3 Should further prosecution of this application ensue, we point out to the Examiner that claim 1, in its most basic form, is merely directed to a “device with a power tool case (10) that includes at least one first receiving area (12) for a power tool (16), and a charger (14).” Although not relied upon in reaching our ultimate decision in this appeal, we note that the various “wherein clauses,” directed to storage of the power tool in either a “transport position” or a “standing position,” may only amount to statements of intended use, which may or may not be entitled to patentable weight. See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) and Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). Appeal 2010-006541 Application 10/585,048 8 Thus, we find that Appellant has not convinced us of any error in the Examiner’s findings of fact or claim construction, such that we sustain the rejection of independent claim 1, and claims 2-12 and 14-20 which fall with claim 1. 2. Unpatentability Rejection of Claim 1 over Burrus, IV and Hyodo Appellant’s Contentions4 Appellant contends that: In Burrus et al especially, no suggestion is provided which would have led someone skilled in the art to arrange the power tool (104) in a standing position during charging or to provide a second receiving area for charging the power tool (104) in a standing position. Since the Burrus et al reference specifically discloses arranging the power tool (104) in a lying position during charging it could not be seen why a person skilled in the art should change this arrangement. App. Br. 7. Appellant goes on to contend that: [S]uch a modification actually contradicts the Burrus disclosure, because the charging of the power tool (104) is performed during the transport and thus when the vehicle is moving. A standing arrangement of the power tool (104) would be very unstable and would lead to an unreliable transport and charging of the power tool (104). This would not only affect the charging result but also the work of the people who operate with the insufficiently charged power tool (104). 4 As pointed out in FN 2, supra, Appellant improperly argued the Mather reference rather than the Burrus, IV reference in the first two paragraphs on page 7 of the Appeal Brief. Appeal 2010-006541 Application 10/585,048 9 Moreover, this unstable transport situation could also result in a damage of the power tool (104) when falling out of the charger during transport. Thus, someone skilled in the art would not consider arranging the power tool (104) in a standing position during charging. Further, neither of the cited references discloses that a second receiving area is embodied as a stand and comprises charging contacts to transmit charging energy[.] App. Br. 8 (emphasis omitted). Finally, Appellant contends that: Burrus teaches away from the present invention by specifically disclosing that the power tool (104) is disposed in a lying position during charging. No motivation exists that would lead the practitioner to modify this structure. In fact, the modification proposed by the Examiner contradicts the Burrus disclosure: Burrus discloses charging the power tool during transport when the vehicle is in motion, so that a standing arrangement of the power tool would be unstable. Reply Br. 3-4. Issue 2 Did the Examiner err in finding that the combination of Burrus, IV and Hyodo teaches or suggests all the claim limitations, particularly the limitations “wherein said power tool is arranged in a second receiving area during said charging procedure in a standing position, and wherein said second receiving area is embodied as a stand and comprises charging contacts to transmit charging energy,” as recited in independent claim 1? Appeal 2010-006541 Application 10/585,048 10 Analysis We have reviewed the Examiner’s rejections in light of Appellant’s arguments that the Examiner has erred. We disagree with Appellant’s conclusions with respect to claim 1, and we adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken and (2) the reasons and rebuttals set forth by the Examiner in the Examiner’s Answer (Ans. 6-7, 14-17) in response to Appellant’s Arguments (App. Br. 7-8; Reply. Br. 3-4). However, we highlight and address specific findings and arguments regarding claim 1 for emphasis as follows. In particular, we agree with the Examiner (and Appellant) “that replacing the first transport and charging receiving area disclosed by Burrus, IV with the charging area disclosed by Hyodo et al. ‘would be very unstable and would lead to an unreliable transport and charging of the power tool’ and that it ‘could also result in a damage of the power tool when falling out of the charger during transport.’” Ans. 16-17 (citing App. Br. 8). This argument by Appellant (i.e., that Burrus, IV describes a transport position and Hyodo describes a standing position) supports the Examiner’s position that a person of ordinary skill in the art would not be motivated to replace the transport position in Burrus, IV with Hyodo’s standing position, but would rather be motivated to add Hyodo’s standing position to Burrus, IV as a second position to achieve the benefits identified by the Examiner. Ans. 17. Finally, with respect to Appellant’s contention that the combination of Burrus, IV and Hyodo does not teach or suggest the recitation in claim 1 of Appeal 2010-006541 Application 10/585,048 11 “wherein said second receiving area is embodied as a stand and comprises charging contacts to transmit charging energy,” we note that the Examiner has cited Hyodo at FIG. 10 (elements 1 and 20) as teaching a power tool charger and a power tool in a standing position (in a stand) during charging. Lacking any special definition by Appellant of a “standing position” or “embodied as a stand,” we agree with the Examiner’s findings in this regard. Thus, we find that Appellant has not convinced us of any error in the Examiner’s findings of fact or claim construction, such that we sustain the second rejection of independent claim 1, and claims 2-12 and 14-20 which fall with claim 1. CONCLUSIONS Appellant has not established that the Examiner erred with respect to the unpatentability rejections of claims 1-12 and 14-20, and the rejections are sustained. DECISION The decision of the Examiner to reject claims 1-12 and 14-20 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2011). AFFIRMED msc