Ex Parte Butzen et al

Patent Trial and Appeal BoardMay 8, 2018

14295449 (P.T.A.B. May. 8, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/295,449 06/04/2014 60840 7590 05/10/2018 MICHAEL, BEST & FRIEDRICH LLP (MT) 100 EAST WISCONSIN A VENUE SUITE 3300 MILWAUKEE, WI 53202 FIRST NAMED INVENTOR Robert W. Butzen 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. 066042-8186-US04 2664 EXAMINER CHOI, STEPHEN ART UNIT PAPER NUMBER 3724 NOTIFICATION DATE DELIVERY MODE 05/10/2018 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): MKEIPDOCKET@MICHAELBEST.COM milwaukeeip@milwaukeetool.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ROBERT W. BUTZEN, AUSTIN J. KAZDA, and ANDREW J. SCHULZ Appeal2017-008132 Application 14/295,449 Technology Center 3700 Before MICHAEL L. HOELTER, JEFFREY A. STEPHENS, and BRENT M. DOUGAL, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL 1 STATEMENT OF THE CASE This is a decision on appeal, under 35 U.S.C. Â§ 134(a), from the Examiner's final rejection of claims 1-3 and 5-18. App. Br. 1. Claim 4 has been canceled. App. Br. 11 (Claims Appendix). We have jurisdiction under 35 U.S.C. Â§ 6(b). We REVERSE. 1 The Appellants state Milwaukee Electric Tool Corporation is the real party in interest. App. Br. 2. Appeal2017-008132 Application 14/295,449 THE CLAIMED SUBJECT MATTER The disclosed subject matter "relates to saw blades and, more particularly, to saw blades for use with power tools." Spec. ,r 2. Apparatus claim 1 is the sole independent claim. Claim 1 is illustrative of the claims on appeal and is reproduced below. 1. A reciprocating saw blade for use with a reciprocating saw, the reciprocating saw blade comprising: a body having a first end portion and a second end portion, the body defining a longitudinal axis; an attachment portion coupled to the first end portion of the body, the attachment portion including a tang and an aperture configured to couple to the reciprocating saw; a cutting portion formed on the body, the cutting portion including a plurality of cutting teeth, each cutting tooth including a tip, a rake face, and a relief surface, each tip being an apex of the corresponding cutting tooth, the tips of the plurality of cutting teeth defining a plane; and a plunge point formed on the second end portion of the body for initiating a plunge cut, the plunge point including a leading tooth and a second tooth, the leading tooth including a tip and a rake face and defining a leading gullet that extends from the rake face of the leading tooth to the plurality of cutting teeth, the second tooth being positioned in the leading gullet closer to the leading tooth than to a nearest cutting tooth of the plurality of cutting teeth, the second tooth including a tip that is an apex of the second tooth and that is spaced apart from the plane; wherein the leading tooth and the second tooth of the plunge point are in line with the plurality of cutting teeth of the cutting portion to form a linear cutting edge; wherein the cutting portion also includes a plurality of gullets formed between the plurality of cutting teeth, and wherein the leading gullet is larger than each gullet of the plurality of gullets. 2 Appeal2017-008132 Application 14/295,449 Baker Elliston et al. Bucks et al. REFERENCES us 5,062,338 US 2008/0307936 Al US 2009/0145280 Al THE REJECTIONS ON APPEAL Nov. 5, 1991 Dec. 18, 2008 June 11, 2009 Claims 1-3, 11, 12, and 15-17 are rejected under 35 U.S.C. Â§ I02(b) as anticipated by Baker. Claims 1, 2, 5-7, 11, 12, and 15 are rejected under 35 U.S.C. Â§ I02(b) as anticipated by Elliston. Claims 5, 6, 8-10, and 13 are rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Baker. Claims 13 and 14 are rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Elliston. Claims 16-18 are rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Elliston in view of Bucks. ANALYSIS The rejection of claims 1-3, 11, 12, and 15-17 as anticipated by Baker Independent claim 1, and hence dependent claims 2, 3, 11, 12, and 15-17, includes the limitation, "the attachment portion including a tang and an aperture configured to couple to the reciprocating saw." Appellants contend that this limitation is not disclosed in Baker. App. Br. 6; Reply Br. 2. The Examiner provides a Merriam-Webster dictionary definition of the claim term "tang" and states that Baker teaches the claimed attachment portion because "Baker teaches an end portion with an aperture that can be attached to a frame with a handle of a hacksaw." Ans. 9. Presuming, for the 3 Appeal2017-008132 Application 14/295,449 sake of argument, that (a) Baker's hacksaw blade has a "tang" and, (b) "the [hacksaw] blade of Baker can be considered a 'reciprocating saw blade"' (as stated by the Examiner (Ans. 9)), the Examiner fails to explain how Baker's "tang" on Baker's "reciprocating saw blade" is "configured to couple to a reciprocating saw" as claimed. To recap, the Examiner considers a hacksaw blade to be a reciprocating saw blade, and acknowledges that Baker's blade can be attached to a hacksaw, but nowhere does the Examiner explain or address how the supposed "tang" on Baker's hacksaw blade is constructed or arranged so as to be attached to a reciprocating saw, nor does the Examiner attempt to equate a hacksaw to a reciprocating saw. Accordingly, we agree with Appellants that "the hacksaw blade 10 of Baker is designed to connect to a hacksaw frame, not a reciprocating saw." Reply Br. 2; see also App. Br. 6. In other words, Baker's "hacksaw blade 10 does not include a tang that is designed to couple to a reciprocating saw" as recited. Reply Br. 2. In addition to the above, claim 1 also includes the limitation "a plunge point formed on the second end portion of the body for initiating a plunge cut." Appellants' Specification differentiates a "plunge cut" (i.e., a "cut in a face of the construction material") from other types of cuts (i.e., those "starting at an edge, or periphery, of the construction material"). Spec. ,r 4; see also App. Br. 6. The Examiner, however, disregards such differentiation stating, "under a broadest reasonable interpretation, the term 'plunge cut' can be considered to be any cutting action that is capable of causing to penetrate a material." Ans. 9. Appellants reply, "the Examiner is not giving any meaning to the word 'plunge"' and is instead "simply interpreting the entire term to mean 'cut."' Reply Br. 2. We agree with Appellants' assessment that (a) a "plunge cut" is a type of cut and (b) the Examiner's 4 Appeal2017-008132 Application 14/295,449 interpretation of the claim term "plunge cut" is overly broad. In summation, the Examiner does not identify where Baker's blade includes "a plunge point formed on the second end portion of the body for initiating a plunge cut." To the extent the Examiner's interpretation of "plunge cut" is limited to a cut in the face of the material (e.g., by "penetrate a material" the Examiner means through the face of the material), the Examiner has not sufficiently explained how Baker's leading tooth is configured to initiate such a cut given its placement on Baker's hacksaw blade. See Ans. 9. Claim 1 also includes the limitation, "the second tooth ... is spaced apart from the plane" of "the tips of the plurality of cutting teeth." The Examiner explains that this limitation is met by the teachings of Baker because the plane need not be horizontal since "a vertical plane also can [] define[] the tips of the plurality of teeth." Ans. 10. The Examiner provides support by annotating Figure 3 of Baker showing a vertical plane tangent to alternate set teeth with the intermediate, oppositely set teeth being spaced from that vertical plane. See Examiner's annotation at Ans. 11. Appellants contend that this vertical plane "is only arbitrarily defined by some of the cutting teeth," and not all of them (i.e., "the tips of the plurality of cutting teeth"). Reply Br. 2. However, and perhaps more importantly, Appellants reference Paragraph 41 of Appellants' Specification which states, "The distances and angles identified herein refer to a saw blade in which the cutting teeth are unset." See Reply Br. 2-3. In other words, the distances and angles "are measured before the teeth are set, even though the 5 Appeal2017-008132 Application 14/295,449 teeth may later be set."2 Reply Br. 3. Hence, the Examiner's reliance on a plane defined by tips after the teeth have been set, is contrary to Appellants' Specification ( as would have been understood by one skilled in the art). Accordingly, the Examiner has not established by a preponderance of the evidence that Baker anticipates the claimed apparatus. Thus, based on the record presented, we do not sustain the Examiner's rejection of claims 1- 3, 11, 12, and 15-17 as anticipated by Baker. The rejection of claims 1, 2, 5-7, 11, 12, and 15 as anticipated by Elliston Claim 1, and hence dependent claims 2, 5-7, 11, 12, and 15, includes the limitation addressed above regarding "a plunge point" and "a plunge cut," and the Examiner repeats the contention, "the term 'plunge cut' can be considered as any cutting action that is capable of causing to penetrate a material." Ans. 12. We again agree with Appellants that "a plunge cut is a type of cut" and that "the Examiner is not giving any meaning to the word 'plunge."' Reply Br. 3. To the extent the Examiner's interpretation is giving sufficient weight to the term "plunge," we agree with Appellants that Elliston does not show the leading end of the saw blade, thus making it unclear whether the leading tooth is capable of initiating a plunge cut. See App. Br. 9. Appellants also specifically address the limitation, "the plunge point including a leading tooth and a second tooth." App. Br. 9. Appellants rely on the Merriam-Webster website stating "'[l]eading' is commonly defined as 2 "[I]t should be readily apparent that a saw blade may be designed according to the disclosed dimensions with unset cutting teeth, and the cutting teeth may ultimately be set as desired during manufacture." Spec. iT 41. 6 Appeal2017-008132 Application 14/295,449 'coming or ranking first'" and that "the 'leading tooth' is defined and identified as the first tooth 174 (Fig. 3) at the end of the saw blade body." App. Br. 9 ( citation omitted). Appellants contend that Elliston does not disclose the requisite structure because Elliston "does not disclose that the unset tooth 1310 [see Final Act. 4] is the first tooth at the end of the reciprocating saw blade" but instead, "as clearly shown in Fig. 15 of Elliston, there are other teeth 1315L and 1315R on both sides of the unset tooth 1310." App. Br. 9. The Examiner responds, "Elliston discloses a leading tooth ( 1310, note that 1310 is a leading tooth of repeating tooth pattern)" and that "the term 'leading' does not limit to be a first tooth [sic] of the entire blade (i.e., a first tooth from one end)." Ans. 12. Appellants disagree stating "The Examiner is parsing the claim language too much instead of reading the claim as a whole." Reply Br. 3. This is consistent with Appellants' earlier argument that "considering the unset tooth 1310 to be a 'leading tooth' vitiates any meaning from the term 'leading."' App. Br. 9. The Examiner responds that "tooth 13[10] can still be considered as the leading tooth as claimed since the tooth 1310 is disposed adjacent to the second end." Ans. 12. However, Appellants point out, "[c]laim 1 recites a plunge point on the second end portion of the body" (i.e., not "adjacent to") and that "the leading tooth cannot be considered an arbitrary tooth in the middle of a saw blade" as proposed by the Examiner. Reply Br. 3. The Examiner provides no further clarification or rebuttal on this point. Appellants also address the limitation of the leading tooth "defining a leading gullet" with "the second tooth being positioned in the leading gullet." Appellants contend that the Examiner's corresponding second tooth (i.e., Elliston's tooth 1315R (see Final Act. 4)) "cannot be the second tooth 7 Appeal2017-008132 Application 14/295,449 because the tooth 1315R is upstream of the unset tooth 1310." App. Br. 9. In other words, " [ i] f this tooth 131 SR was a 'second tooth,' the unset tooth 1310 could not be considered a leading tooth." App. Br. 9-10. More succinctly, as per Appellants, the Examiner's "arrangement is backwards." Reply Br. 3. The Examiner responds with a somewhat confusing statement that "even if 131 SR is a first tooth on the entire cutting edge, the tooth 1310 of the first pattern still can be considered as the claimed leading tooth." Ans. 13. It is not clear whether the Examiner is now considering tooth 131 SR as the first or leading tooth while also contending that tooth 1310 is likewise the leading tooth. Nevertheless, the Examiner proffers a hypothetical that "if the tooth pattern shown below represents the first tooth pattern at the second end portion, the second tooth 131 SR can be considered to be disposed closer to 1310 than the nearest cutting tooth 1320R" (so as to satisfy the limitation that the second tooth is positioned "closer to the leading tooth than to a nearest cutting tooth of the plurality of cutting teeth"). The Examiner's identified annotation is provided below: Â·Â·Â·Â·Â·Â·Â·Â·Â·Â·-Â·Â·Â·Â·J __ ._ ........... Â·Â·Â·Â·Â·Â·Â·Â·Â·Â·Â·Â·Â·Â·Â·Â·--Â·Â·Â·Â·Â·Â·Â· .~Â·" -"~- .. u~-~-.-""'"Â·''"~ ~ ~,. ........ , ,.... ~ , r- .-... -- ..... -._._._ ........... . leading twBet l -.~Â«HHâ€¢'-V~,---. .... ,,,Â·.:-,â€¢â€¢â€¢o~ ; 8 Appeal2017-008132 Application 14/295,449 The above is a partial depiction of Figure 15 of Elliston which has been annotated by the Examiner to depict a "leading gullet." Tooth 1315L to the left of leading tooth 13 10 has been omitted. In support of this annotation, the Examiner states, "there is nothing in the claim preventing to include a tooth 1320L to be another tooth in the leading gullet on the first tooth pattern." Ans. 13. However, the claim recites that the leading gullet is the gullet of the leading tooth (i.e., tooth 1310) and not that of any "tooth pattern" as the Examiner proposes. Additionally, Appellants' Specification states, "the gullet 114 of each cutting tooth 50 is defined by the rake face 110 of the cutting tooth 50 and a gullet surface 138." Spec. ,r 44. Further, "Each gullet surface 138 extends from the corresponding rake face 110 to the protrusion 130 of an adjacent tooth 50 and includes a base 142." Spec. ,r 44. To be clear, "rake face 110" is depicted in Appellants' Figure 3 as that tooth surface most perpendicular to the work piece and terminating at the cutting tip. Hence, in the Examiner's annotation above, the gullet of leading tooth 1310 is to the left of that tooth, not to the right as annotated. Thus, in conformance with Appellants' Specification, we agree with Appellants that the Examiner's "arrangement is backwards." Reply Br. 3. Accordingly, and based on the record presented, the Examiner has not established by a preponderance of the evidence that Elliston anticipates the claimed apparatus. Consequently, we do not sustain the Examiner's rejection of claims 1, 2, 5-7, 11, 12, and 15 as anticipated by Elliston. 9 Appeal2017-008132 Application 14/295,449 The rejection of (a) claims 5, 6, 8-10, and 13 as unpatentable over Baker; (b) claims 13 and 14 as unpatentable over Elliston; and, (c) claims 16--18 as unpatentable over Elliston in view of Bucks Each of these claims depend, directly or indirectly, from claim 1. The Examiner's additional reasons for their rejection does not cure all defects regarding parent claim 1 discussed above. 3 Thus, for reasons already expressed, we do not sustain the Examiner's rejections of these claims. DECISION The Examiner's rejections of claims 1-3 and 5-18 are reversed. REVERSED 3 Given our discussion of multiple limitations above for claim 1, we need not decide whether Bucks' plunge nose and modifications to Elliston based thereon (see Final Act. 8-9) may cure the deficiency regarding the "plunge point" recited in claim 1. 10