Ex Parte Binder et al

Patent Trial and Appeal Board

Dec 21, 2018

13916184 (P.T.A.B. Dec. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/916,184 06/12/2013
23280 7590 12/26/2018
Davidson, Davidson & Kappel, LLC
589 8th A venue
16th Floor
New York, NY 10018
FIRST NAMED INVENTOR
Albert Binder
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
5068.1131 1521
EXAMINER
HIBBERT, MARY C
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
12/26/2018 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):
ddk@ddkpatent.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALBERT BINDER, CHRISTOPH HAKENHOLT, and
JOCHEN KUNTNER1
Appeal2018-004072
Application 13/916, 184
Technology Center 3700
Before JENNIFER D. BAHR, BRANDON J. WARNER, and
FREDERICK C. LANEY, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision, set forth in the Non-Final Action issued February 24, 2017,
rejecting claims 1-12. We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 Hilti Aktiengesellschaft (Appellant) is the applicant as provided in
37 C.F.R. § 1.46 and is identified as the real party in interest.
Appeal2018-004072
Application 13/916, 184
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is the only independent claim and is
representative of the claimed subject matter.
1. A power tool comprising:
a bit socket configured to hold a chiseling bit movable
along an axis of movement; and
a magneto-pneumatic striking mechanism including a
primary drive arranged around the axis of movement and
having a first magnet coil, a ring magnet[,] and a second
magnet coil arranged consecutively in a striking direction, and,
on the axis of movement, inside the magnet coils, the striking
mechanism having a striker and a striking block arranged
consecutively in the striking direction, and the striking
mechanism having an air cushion acting upon the striker in the
striking direction, the ring magnet being permanently magnetic
and magnetized radially relative to the axis of movement.
REJECTIONS
I. Claims 1-9 and 12 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Schad et al. (US 2010/0206593 Al, published
Aug. 19, 2010, hereinafter "Schad") and Arnold (US 4,004,258,
issued Jan. 18, 1977).
II. Claims 10 and 11 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Schad, Arnold, and Patterson et al.
(US 5,200,728, issued Apr. 6, 1993, hereinafter "Patterson").
DISCUSSION
Rejection I
The Examiner found that Schad teaches most of the limitations of
claim 1, including first magnet coils (magnetic coils 4, 5), a striker (striking
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Application 13/916, 184
element 2), a striking block (anvil 3), and an air cushion (air spring), but that
Schad lacks "a ring magnet being permanently magnetic and magnetized
radially relative to the axis of movement as a part of the electromagnetic
pneumatic striking mechanism." Non-Final Act. 2-3 ( citing Schad ,r,r 9, 29-
34); see also Schad ,r 45 (teaching an air spring can be used instead of, or in
addition to, spiral spring 70). The Examiner found that Arnold teaches a
magneto-pneumatic piston mechanism comprising two magnet coils and a
permanently magnetic ring magnet magnetized radially relative to the axis of
movement. Non-Final Act. 3. The Examiner determined it would have been
obvious to modify Schad's striking mechanism/plunger arrangement "with
the permanent ring magnet as taught by Arnold to increase the magnetic
field strength of the high powered striking mechanism of Schad." Id.
Appellant attacked the rationale for the modification set forth by the
Examiner in the Non-Final Action on the basis that "there is absolutely no
teaching or indication in Schad or Arnold or any factual basis asserted ...
that a permanent magnet would at all increase the magnetic field strength of
the mechanism of Schad." Appeal Br. 5. 2 Appellant asserted further that, to
the contrary, adding Arnold's permanent ring magnet to Schad "would be
detrimental to Schad's device" because Schad's coil magnets would then
need "to overcome the permanent magnetic field." Id. Appellant directed
our attention to Arnold's specific teaching regarding its permanent magnet
that "the plunger is held in position by the force of a permanent magnet and
may be shuttled from one position to another by conventional mechanical
2 The Appeal Brief does not include page numbers. Thus, for convenience,
we refer herein to pages of the Appeal Brief numbered in consecutive order,
beginning with the title page as page 1.
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Application 13/916, 184
forces or by application of electrical energy to an electromagnetic winding to
create a magnetic force which counteracts and overcomes the permanent
magnetic force holding the plunger in a given position" (Arnold 1 :24--30).
Appeal Br. 5. Appellant submitted, "Arnold's permanent magnets thus
would reduce and counteract the magnetic coil of Schad." Id.
Appellant's argument is persuasive that the reason articulated by the
Examiner in the Non-Final Action for the combination lacks rational
underpinnings. As Appellant mentioned, Arnold teaches that the plunger is
held in position by the force of the permanent magnet and may be shuttled
from one position to another by application of electrical energy to the
appropriate one of the electromagnetic windings to create a magnetic force
which overcomes the force of the permanent magnet. Arnold 1:22-30.
Arnold teaches using two permanent magnetic circuits generated by
permanent magnets 18, which hold the plunger in place once it is moved into
one of the two permanent magnetic circuits. Id. 2:6-12; 3:34--37; Fig. 1.
According to Arnold, "[ n Jo springs, mechanical members[,] or gravity forces
are required to hold the plunger in place." Id. 2: 15-16. In order to move the
plunger from one stop in one magnetic circuit to a stop in the other magnetic
circuit, a brief electrical pulse is "applied to a winding in the magnetic
circuit into which the plunger is to be moved." Id. 2: 16-20. The only
substantial forces acting on the plunger in contact with one of the stops are
the forces generated by the permanent magnets, which hold the plunger in its
current position until a pulse is applied to the winding in the other magnetic
circuit sufficient to generate a magnetic force to overcome the forces from
the permanent magnets. Id. 2:23-29.
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Application 13/916, 184
Based on the teachings of Arnold, a person having ordinary skill in
the art would not have been prompted to modify Schad "with the permanent
ring magnet as taught by Arnold to increase the magnetic field strength of
the high powered striking mechanism of Schad," as stated by the Examiner
in the Non-Final Action. See Non-Final Act. 3. Thus, the rationale
articulated by the Examiner in the Non-Final Action lacks rational
underpinnings.
In response to Appellant's arguments in the Appeal Brief attacking the
articulated reason for the proposed modification, the Examiner articulates a
different reason for the modification. See Ans. 4. Specifically, the
Examiner reasons that
it would have been obvious ... to modify the striking
mechanism/plunger of Schad with the permanent ring magnet
as taught by Arnold as a simple substitution of actuators, where
the permanent magnet ring of Arnold to form [sic] an upper
circuit and a lower circuit depending on the position of the
plunger and the current applied to the circuit to shuttle the
plunger up and down creating linear motion.
Id. (citing Arnold 3:34--4:65).
Appellant contends that the modification of Schad with Arnold's
permanent ring magnet "would not be a 'simple substitution of actuators"'
because "Arnold would not create the linear striking forces that Schad
desires, and also would eliminate the springs desired by Schad for a 'more
efficient utilization of the energy contained in the system."' Reply Br. 2
( citing Schad ,r 7). 3
3 The Reply Brief does not include page numbers. Thus, for convenience,
we refer herein to pages of the Reply Brief numbered in consecutive order,
beginning with the title page as page 1.
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Application 13/916, 184
It is not entirely clear from the Examiner's use of the language
"simple substitution of actuators" exactly what structure of Schad the
Examiner proposes to replace with structure from Arnold. The Examiner
specifically mentions the permanent ring magnet of Arnold, but it is not
clear whether the Examiner proposes to substitute just Arnold's permanent
ring magnet into Schad in place of some structure in Schad or to replace the
entire actuator structure (the two coils and spring) of Schad with Arnold's
entire actuator structure (the two coils and permanent magnets). If the
Examiner proposes to substitute only Arnold's permanent magnets into
Schad, Arnold's teachings that the plunger is held in position by the force of
the permanent magnet (Arnold 1 :24--25), and that no springs are needed to
hold the plunger in place (id. 2: 15-16) would suggest that the permanent
ring magnet would replace the spring ( e.g., air spring) of Schad. However,
the structure resulting from such a modification would lack an air cushion
and, thus, would not satisfy all of the limitations of claim 1. Similarly, if the
Examiner proposes to replace the entire actuator structure (the two coils and
spring) of Schad with the entire actuator structure (two coils and permanent
ring magnet) of Arnold, the resulting structure would lack an air cushion.
We agree with Appellant that modifying Schad by providing an
actuator having a permanent ring magnet as taught by Arnold (whether by
replacing Schad's spring with Arnold's permanent ring magnet, replacing
Schad's spring and coils with Arnold's permanent ring magnet and coils, or
simply adding Arnold's permanent ring magnet to Schad) "would not be a
'simple substitution of actuators"' as the Examiner posits. See Reply Br. 2.
As explained above, Arnold's permanent ring magnet is designed to hold the
plunger in its present position, within whichever of the two magnetic circuits
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Application 13/916, 184
the plunger is presently disposed, until the coil in the other of the two
magnetic circuits is supplied with a pulse to generate an electromagnetic
force sufficient to overcome the holding force of the permanent magnets in
the permanent ring magnet. The striking mechanism of Schad's device, on
the other hand, is not designed to simply shuttle the striking element
between two positions, but rather, is designed to accelerate the striking
element into the anvil with "a greater striking force." Schad ,r,r 5, 7.
Schad' s striking mechanism is provided with a spring element "which exerts
a force on the striking element in every position in the working space in the
direction of the anvil," even during the movement of the striking element
away from the anvil. Id. ,r 6. Providing Schad's striking mechanism with a
permanent ring magnet as taught by Arnold4 would be detrimental to
Schad's objective, for the reasons set forth by Appellant. See Appeal Br. 5;
Reply Br. 2.
For the above reasons, the Examiner does not adequately explain why,
in view of the aforementioned teachings of Arnold and Schad, a person
having ordinary skill in the art would have been prompted to modify Schad's
striking mechanism with the permanent ring magnet taught by Arnold in a
manner that would arrive at the invention of claim 1. Accordingly, we do
not sustain the rejection of claim 1, or claims 2-9 and 12, which depend
from claim 1, as unpatentable over Schad and Arnold.
4 Notably, permanent magnets 18 of Arnold's permanent ring magnet are
oriented with a polarity ( with the S poles closer to the movement axis and
the N pole radially further away from the movement axis) that is reversed
relative to that disclosed by Appellant (with the N poles closer to the
movement axis and the S poles radially further away from the movement
axis). Compare Arnold, Fig. 1, with Appellant's Fig. 2.
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Rejection II
The aforementioned deficiency in the rationale for combining Schad
and Arnold pervades the rejection of claims 10 and 11 as unpatentable over
Schad, Arnold, and Patterson. See Ans. 7. In rejecting claims 10 and 11, the
Examiner determines it would have been obvious to modify Arnold's
solenoid with the different length coils of Patterson "for a more powerful
retraction of the armature with less heat buildup and a lower wattage." Id.
The Examiner does not make any findings or articulate any additional
reasoning that would cure the aforementioned deficiency in the combination
of Schad and Arnold. Id. Accordingly, we do not sustain the rejection of
claims 10 and 11 as unpatentable over Schad, Arnold, and Patterson.
DECISION
The Examiner's decision rejecting claims 1-12 is reversed.
REVERSED
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