Ex Parte CHOU et al

Patent Trial and Appeal BoardFeb 27, 2019

15059740 (P.T.A.B. Feb. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 15/059,740 03/03/2016 28268 7590 02/27/2019 Stanley Black & Decker, Inc. 6201 Greenleigh Avenue, MR045 Middle River, MD 21220 FIRST NAMED INVENTOR Mark CHOU 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. P-US-TN-15951 5647 EXAMINER ALIE, GHASSEM ART UNIT PAPER NUMBER 3724 MAIL DATE DELIVERY MODE 02/27/2019 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 MARK CHOU, BOJUN SHI, KEJIA WANG, and XIUBAO LAN Appeal2018-005453 Application 15/059,740 1 Technology Center 3700 Before STEFAN STAICOVICI, MICHAEL L. HOELTER, and JAMES P. CALVE, Administrative Patent Judges. STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE- Appellants appeal under 35 U.S.C. Â§ 134(a) from the Examiner's decision in the Final Office Action ( dated Sept. 15, 2017, hereinafter "Final Act.") rejecting claims 1-5 and 7-15. 2 We have jurisdiction over this appeal under 35 U.S.C. Â§ 6(b ). 1 Black & Decker Inc. is the applicant and identified as the real party in interest in Appellants' Appeal Brief (filed Mar. 14, 2018, hereinafter "Appeal Br."). Appeal Br. 3. 2 Claims 6 is canceled. See Appeal Br. 3. Appeal2018-005453 Application 15/059,740 SUMMARY OF DECISION We AFFIRM-IN-PART. INVENTION Appellants' invention relates to a hand-held powered garden tool and its attachment to a pole assembly. Spec. para. 1. Claims 1, 8, and 14 are independent. Claims 1 and 14 are illustrative of the claimed invention and read as follows: 1. A powered garden tool comprising: a powerhead having a housing, the housing having an motor chamber for holding an electric motor, a main handle capable of being gripped by a user and having a generally longitudinal axis extending rearwardly from a front portion of the housing, the main handle having a first trigger to tum the motor on or off, wherein the motor has a longitudinal axis which extends rearwardly from the front portion of the housing such that the main handle and motor chamber are generally parallel to each other; a blade assembly driveably connected to the motor and extending out from the front portion of the housing; a pole assembly having a coupling member capable of removably connecting to the motor chamber of the powerhead for use in a poled configuration. 14. A method of attaching a pole assembly to a garden tool powerhead, comprising the steps of: providing a powerhead having a housing with a first handle and a motor chamber, an electric motor located in said motor chamber, and a power cord having three electrical contacts to supply power to the motor attached to said housing, the first handle having a first trigger to actuate the motor, a blade assembly extending out from a front portion of the housing and operatively connected to the motor; 2 Appeal2018-005453 Application 15/059,740 attaching a pole assembly to the powerhead housing, the pole assembly having an electrical connector on a first end, and second handle and a second power cord on a second end, the second handle having a second trigger, the electrical connector being electrically connected to the second power cord, and wherein when the pole assembly is attached to the powerhead, actuation of the motor is controlled by the second trigger and the first trigger is in an off position. REJECTIONS I. The Examiner rejects claim 5 under 35 U.S.C. Â§ 112 (b) as being indefinite. II. The Examiner rejects claims 1 and 5 under 35 U.S.C. Â§ I02(a)(l) as being anticipated by Mathiesen (US 3,731,380, iss. May 8, 1973, hereinafter "Mathisen"). 3 III. The Examiner rejects claims 1 and 5 under 35 U.S.C. Â§ I02(a)(l) as being anticipated by Halstead (US 6,349,712 Bl, iss. Feb. 26, 2002). IV. The Examiner rejects claim 7 under 35 U.S.C. Â§ I03(a) as being unpatentable over Mathisen and Causey et al. (US 4,207,675, iss. June 1 7, 1980, hereinafter "Causey"). V. The Examiner rejects claims 1, 5, and 7 under 35 U.S.C. Â§ I03(a) as being unpatentable over Grahn (US 3,579,827, iss. May 25, 1971) and D 'Alessandro, Sr. (US 5,787,590, iss. Aug. 4, 1998, hereinafter "D' Alessandro") or Martin (US 4,330,938, iss. May 25, 1982). VI. The Examiner rejects claims 2--4 and 8-15 under 35 U.S.C. Â§ I03(a) as being unpatentable over Grahn, D 'Alessandro or Martin, and 3 As both Appellants and Examiner refer to this reference as "Mathisen," for consistency purposes, we shall do so as well. 3 Appeal2018-005453 Application 15/059,740 Weber (US 7,989,718 Bl, iss. Aug. 2, 2011) or Banta (US 5,070,576, iss. Dec. 10, 1991). VII. The Examiner rejects claims 8, 9, and 13 under 35 U.S.C. Â§ I03(a) as being unpatentable over D' Alessandro and Weber or Banta. ANALYSIS Rejection I The Examiner finds that claim 5 is indefinite because "the outer housing" limitation lacks antecedent basis. Final Act. 2. As Appellants do not address the rejection, Appellants have waived any argument of error. See Appeal Br. 10. Accordingly, we summarily sustain the indefiniteness rejection of claim 5. See In re Berger, 279 F.3d 975, 984, 985 (Fed. Cir. 2002) (holding that the Board did not err in sustaining a rejection under 35 U.S.C. Â§ 112, second paragraph, when the applicant failed to contest the rejection on appeal). Rejections II and III Independent claim 1 requires, inter alia, a "housing having a[] motor chamber for holding an electric motor ... wherein the motor has a longitudinal axis which extends rearwardly from the front portion of the housing." Appeal Br. 16 (Claims App.). The Examiner finds that Mathisen discloses a garden powered tool including, inter alia, powerhead S having housing A that has a "motor chamber inherently holding an electric motor (not shown) ... wherein the motor has a longitudinal axis which extends rearwardly from the front 4 Appeal2018-005453 Application 15/059,740 portion 12 of the housing [A]." Final Act. 2-3 (citing Mathisen, Fig. 1). The Examiner further finds that Halstead discloses a power tool including, inter alia, powerhead 20 having housing 22 holding electric motor 28 "wherein the motor has a longitudinal axis which extends rearwardly from the front portion of the [housing]." Id. at 3 (citing Halstead, Fig. 1). Appellants argue that "Mathisen does not disclose the motor, let alone its orientation, and so the Examiner's conclusions about the axis of the motor is pure conjecture." Appeal Br. 11. Appellants make the same argument with respect to the Halstead disclosure. Id. at 12. We appreciate that Mathisen' s housing A and Halstead' s housing 22 include a motor. See Mathisen, col. 4, 11. 4--7, Fig. 1, Halstead, col. 2, 11. 41- 45, Fig. 1. Nevertheless, Appellants are correct that neither Mathisen nor Halstead discloses the orientation of the motor. As such, it appears that the Examiner is relying on a theory of inherency to establish that the longitudinal axis of the Mathisen and Halstead motors necessarily "extends rearwardly from the front portion of the housing[s]" A and 22, respectively. "Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient." In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citation omitted). Here, just because Mathisen's housing A and Halstead's housing 22 include a motor, this does not mean that the longitudinal axis of the motor necessarily "extends rearwardly from the front portion of the housing." For example, the motor can be oriented at a skew angle to the front housing portion, or the motor can be oriented vertically such that its longitudinal axis extends parallel to the front portion of 5 Appeal2018-005453 Application 15/059,740 Mathisen's housing A and Halstead's housing 22. See, e.g., D' Alessandro, Fig. 1. Furthermore, we note that in reviewing the Examiner's response to Appellants' arguments discussed supra, the Answer does not address Appellants' arguments. See Examiner's Answer 9-10 (dated Apr. 12, 2018, hereinafter "Ans."). Specifically, the Examiner does not provide findings or reasoning rebutting Appellants' arguments. Thus, for the foregoing reasons, on the record before us, we do not agree that the motor in Mathisen's housing A and Halstead's housing 22 necessarily has a longitudinal axis that "extends rearwardly from the front portion of the housing," as called for by claim 1. Accordingly, we do not sustain the rejection of claims 1 and 5 as anticipated by either Mathisen or Halstead. Rejection IV The Examiner's use of the Causey disclosure does not remedy the deficiency of Mathisen discussed supra. See Final Act. 4. Therefore, for the reasons discussed above, we also do not sustain the rejection of claim 7 over the combined teachings of Mathisen and Causey. Rejection V Appellants do not present arguments for the patentability of claims 5 and 7 apart from claim 1. See Appeal Br. 12-13. 4 Therefore, in accordance 4 Appellants erroneously refer to claims 12 and 15, whereas the Examiner's rejection is of claims 5 and 7. Compare Appeal Br. 12, with, Final Act. 4---6. 6 Appeal2018-005453 Application 15/059,740 with 3 7 C.F .R. Â§ 41.3 7 ( c )(1 )(iv), we select claim 1 as the representative claim to decide the appeal of the rejection of these claims, with claims 5 and 7 standing or falling with claim 1. The Examiner finds that Grahn discloses most of the limitations of independent claim 1, but "does not explicitly teach a pole assembly having a coupling member capable of removably connecting to the motor chamber of the powerhead for use in a poled configuration." Final Act. 4--5 (citing Grahn, Figs. 1-10). Nonetheless, the Examiner finds that D' Alessandro discloses "a pole assembly 14 having a coupling member 16 capable of removably connecting to the motor chamber of the powerhead 80 for use in a poled configuration." Id. at 5 (citing D' Alessandro, Figs. 1-8). The Examiner further finds that Martin discloses a pole assembly 10 having coupling members 60, 61 "capable of removably connecting to the motor chamber of the powerhead [tool 40] for use in a poled configuration." Id. (citing Martin, Figs. 1-3). Thus, the Examiner concludes that "[i]t would have been obvious to a person of ordinary skill in the art to provide Grahn' s power tool with the pole assembly, as taught by [D ']Alessandro or Martin, in order to enable the tool to reach the out of reach objects need[ ed] to be cut." Id. Appellants first argue that the pole assembly of D 'Alessandro is not connected to the motor chamber. Appeal Br. 13. According to Appellants, the Examiner has not properly identified where the motor is on D' Alessandro's clipper 19. Id. Nonetheless, Appellants take the position that even if the motor chamber in D' Alessandro is "the 'can' portion of the housing," "pole 14 is not secured at this portion." Id. To better illustrate 7 Appeal2018-005453 Application 15/059,740 such a position, Appellants provide an annotated Figure 1 of D 'Alessandro as shown below: Appellants' annotated Figure 1 of D 'Alessandro shows pole 14 having shoe 16 secured to clipper 19 (base) and a "motor chamber" ("a circular 'can' portion") that holds a motor. Id. at 12. We are not persuaded by Appellants' arguments because a drawing teaches all that it reasonably discloses and suggests to a person of ordinary skill in the art. In re Aslanian, 590 F.2d 911,914 (CCPA 1979). In this case, we agree with Appellants that a skilled artisan would readily recognize that the motor chamber of D 'Alessandro is the "can" portion illustrated above. Nonetheless, the Examiner is also correct that because the motor chamber of D 'Alessandro "is vertically positioned into the coupling member 16," inner pole 52 of extension pole 14 is "connected to the bottom portion of the motor chamber" via coupling member (shoe) 16. Ans. 10 ( citing D' Alessandro, Fig. 8). As such, in contrast to Appellants' position, we agree with the Examiner that D 'Alessandro's pole assembly 14 is connected to the motor chamber via coupling member 16, as claimed. See id. 8 Appeal2018-005453 Application 15/059,740 Second, Appellants argue that because Martin's stripping machine does not have a unitary housing, but rather separates the motor of tool 40 from main frame member 15, it would not have been obvious to a skilled artisan to attach a pole to Grahn's motor chamber. Appeal Br. 13. Appellants explain that because Grahn's motor 42 is located in motor chamber 31 that is surrounded by looped handle 23, it would be difficult to attach bracket 47 and strap 48 of Martin to the body of Grahn "due to being blocked by the looped handle." Id. As such, according to Appellants, "it would be much easier for one skilled in the art to attach the pole to the handle [28] [ of Grahn], and the Examiner has given no motivation or rationale why one skilled in the art would either look to Martin or how such a combination would take place." Id. We are not persuaded by Appellants' arguments because the Examiner's modification is an improvement to Grahn's hedge trimmer 20 to attach it to an extension pole in the same way as taught by Martin to lead to a predictable result, that is, "to extend the reach of the garden tool of Grahn" (see Ans. 10), and the modification is well within the skill of one having ordinary skill in this art. KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) ("[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill."). Here, Martin discloses using bracket 47 and strap 48 to connect tool 40 to tubular handle 16. See Martin, Fig. 1. We, thus, agree with the Examiner that in a similar manner, a skilled artisan would have readily attached an extension pole to motor chamber 26, 9 Appeal2018-005453 Application 15/059,740 31 of Grahn's hedge trimmer 20 using Martin's bracket 47 and strap 48. Ans. 10. Appellants' assertion that the Examiner's modification "would be difficult if not impossible due to ... looped handle [23]" (see Appeal Br. 13) is unsupported attorney argument and cannot take the place of evidence in the record. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). For example, the skilled artisan would have readily appreciated to attach an extension pole to motor chamber 31 of Grahn's hedge trimmer 20 by positioning the extension pole through the loop of handle 23 and connecting to the motor chamber 26, 31 using Martin's bracket 47 and strap 48. See Grahn, Figs. 1, 2. In conclusion, for the foregoing reasons, we sustain the rejection of claim 1 under 35 U.S.C. Â§ 103(a) as unpatentable over Grahn and D 'Alessandro or Martin. Claims 5 and 7 fall with claim 1. Rejection VI Claims 2 and 9 Claim 2 requires, inter alia, "a first power cord having at least three electrical contacts" and "an adapter that connects to the first power cord." See Appeal Br. 16 (Claims App.). Similarly, claim 9 requires a "first power cord having at least three electrical contacts"5 and "an adapter cord capable of connecting the first power cord to an electrical outlet." See id. at 18. The Examiner finds that D 'Alessandro discloses "an adapter 45 that connects to the first power cord (the cord that is connected to the adapter 45) 5 This limitation appears in independent claim 8 from which claim 9 depends. See Appeal Br. 17 (Claims App.). 10 Appeal2018-005453 Application 15/059,740 on the powerhead 19 ... the adapter capable of connecting to a power outlet." Final Act. 6 (citing D' Alessandro, Fig. 3). In response, Appellants argue that D 'Alessandro discloses only first and second power cords. Appeal Br. 14. According to Appellants, the Examiner's interpretation of D' Alessandro's male receptacle 45 as the claimed adapter is inconsistent with Appellants' Specification, which describes an adapter as "a separate cord that is releasably connected to the tool power cord so that it can be plugged into a wall outlet." Id. Thus, Appellants contend that the claimed adapter "is not a part of the first (tool) power cord." Id. We note that the Examiner finds the combined teachings of Grahn and D 'Alessandro or Martin lacking the limitation of a "first power cord ha[ ving] three electrical contacts." See Final Act. 6. Thus, the Examiner turns to either Weber or Banta to disclose that "the use of a cord with three electrical contacts is old and well known in the art." Id. at 6-7 (citing Weber, Fig. 8, Banta, Fig. 1 ). More specifically, the Examiner finds that Weber discloses "a tool 10 having two connectors 42, 44 each having three electrical contacts" and Banta discloses "a garden tool 100 including a first cord 129 having three electrical contacts." Id. (citing Weber, Fig. 8, Banta, Fig. 1 ). Thus, according to the Examiner it would have been obvious to a skilled artisan "to provide Grahn' s power tool, as modified by Alessandro or Martin, with three connectors, as taught by Weber or Banta, in order to provide more voltage to the motor." Id. at 7. As such, in the Examiner's rejection, the "first power cord" of Grahn, as modified by Alessandro or Martin, and Weber or Banta, includes three 11 Appeal2018-005453 Application 15/059,740 electrical contacts (connectors). Accordingly, we do not agree with the Examiner's interpretation of D' Alessandro that "the cord that is connected to the adapter 45" constitutes the claimed "first power cord." See Final Act. 6. Such a "cord" does not include "three electrical contacts," and, thus, does not constitute a "first power cord," as called for by each of claims 2 and 9. Hence, in order for the Examiner's "cord that is connected to the adapter 45" to constitute the claimed "first power cord," male receptacle 45 must be included as part of the "first power cord." Hence, Appellants are correct that D 'Alessandro's male receptacle 45 is part of the "first power cord" and, therefore, cannot also be construed as an adapter that connects to the first power cord, as called for by each of claims 2 and 9. See Appeal Br. 14. In conclusion, for the foregoing reasons, we do not sustain the rejection of claims 2 and 9 under 35 U.S.C. Â§ 103(a) as unpatentable over Grahn, D 'Alessandro or Martin, and Weber or Banta. Claims 4, 10, and 14 Each of claims 4, 10, and 14 requires, inter alia, using the second trigger to actuate the motor and placing the first trigger in an "OFF" position when the pole assembly is secured to the garden tool. See Appeal Br. 17-19 (Claims App.). The Examiner finds that "Grahn in view of Martin teaches ... that ... in the poled configuration, the first trigger i[s] in the off position." Final Act. 7. 12 Appeal2018-005453 Application 15/059,740 Appellants argue that "Martin shows only a first trigger on the electric drill, and similarly, Grahn only shows a single trigger for the hedgetrimmer." Appeal Br. 14. We are not persuaded by Appellants' arguments because the Examiner is correct that Martin discloses squeezing second trigger 57 on hand grip 50 for activating drill tool 40, whereas a first trigger on drill tool 40 is not activated, that is, it is placed in an "OFF" position. Ans. 11 ( citing Martin, col. 3, 11. 26-32). We further agree with the Examiner's position that "the first trigger on the drill [tool 40] could not be triggered or touched when the device or drill is in a poled configuration." Id. (citing Martin, Fig. 1 ). Accordingly, for the foregoing reasons, we sustain the rejection of claims 4, 10, and 14 under 35 U.S.C. Â§ 103(a) as unpatentable over Grahn, Martin, and Weber or Banta. However, we agree with Appellants that although D 'Alessandro discloses second trigger 51 on pole assembly 14, D 'Alessandro further discloses that when activating second trigger 51, a first trigger that activates clippers 19 is depressed, that is, it is placed in an "ON" position, via VELCROâ„¢ strap 34. Appeal Br. 14 (citing D' Alessandro, col. 3, 11. 23-28). As such, we do not sustain the rejection of claims 4, 10, and 14 over the combined teachings of Grahn, D' Alessandro, and Weber or Banta. 13 Appeal2018-005453 Application 15/059,740 Claims 3, 8, 11-13, and 15 As claim 3 depends from claim 2, for the reasons discussed supra, we also do not sustain the rejection of claim 3 over the combined teachings of Grahn, D 'Alessandro or Martin, and Weber or Banta. Appellants do not address the rejection of claims 8 and 11-13. See Appeal Br. 13-14. Hence, Appellants have waived any argument of error. Accordingly, we summarily sustain the rejection of claims 8 and 11-13 under 35 U.S.C. Â§ 103(a) as unpatentable over Grahn, D' Alessandro or Martin, and Weber or Banta. As to the rejection of claim 15, because claim 15 depends from claim 14, for the reasons discussed supra in the rejection of claim 14, we also sustain the rejection of claim 15 under 35 U.S.C. Â§ 103(a) as unpatentable over Grahn, Martin, and Weber or Banta. However, we do not sustain the rejection of claim 15 over the combined teachings of Grahn, D 'Alessandro, and Weber or Banta. Re} ection VII As Appellants do not address the rejection, Appellants have waived any argument of error. See Appeal Br. 10-15. Accordingly, we summarily sustain the rejection of claims 8, 9, and 13 under 35 U.S.C. Â§ 103(a) as unpatentable over D 'Alessandro and Weber or Banta. 14 Appeal2018-005453 Application 15/059,740 SUMMARY The Examiner's decision to reject claim 5 under 35 U.S.C. Â§ 112(b) as being indefinite is affirmed. The Examiner's decision to reject claims 1 and 5 under 35 U.S.C. Â§ 102( a)( 1) as being anticipated by Mathisen is reversed. The Examiner's decision to reject claims 1 and 5 under 35 U.S.C. Â§ 102( a)( 1) as being anticipated by Halstead is reversed. The Examiner's decision to reject claim 7 under 35 U.S.C. Â§ 103(a) as being unpatentable over Mathisen and Causey is reversed. The Examiner's decision to reject claims 1, 5, and 7 under 35 U.S.C. Â§ 103(a) as unpatentable over Grahn and D' Alessandro or Martin is affirmed. The Examiner's decision to reject claims 2, 3, and 9 under 35 U.S.C. Â§ 103(a) as unpatentable over Grahn, D' Alessandro or Martin, and Weber or Banta, is reversed. The Examiner's decision to reject claims 4, 10, 14, and 15 under 35 U.S.C. Â§ 103(a) as unpatentable over Grahn, D' Alessandro, and Weber or Banta, is reversed. The Examiner's decision to reject claims 4, 10, 14, and 15 under 35 U.S.C. Â§ 103(a) as unpatentable over Grahn, Martin, and Weber or Banta, is affirmed. The Examiner's decision to reject claims 8 and 11-13 under 35 U.S.C. Â§ 103(a) as unpatentable over Grahn, D' Alessandro or Martin, and Weber or Banta, is affirmed. 15 Appeal2018-005453 Application 15/059,740 The Examiner's decision to reject claims 8, 9, and 13 under 35 U.S.C. Â§ 103(a) as unpatentable over D' Alessandro and Weber or Banta is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED-IN-PART 16