Ex Parte FrolovDownload PDFPatent Trial and Appeal BoardJun 16, 201712872337 (P.T.A.B. Jun. 16, 2017) Copy Citation 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. 12/872,337 08/31/2010 Andrew Frolov 1576-1116(0212.82473) 3379 10800 7590 06/16/2017 Maginot, Moore & Beck LLP One Indiana Square, Suite 2200 Indianapolis, IN 46204 EXAMINER AYALA, FERNANDO A ART UNIT PAPER NUMBER 3724 MAIL DATE DELIVERY MODE 06/16/2017 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 ANDREW FROLOV Appeal 2015-007137 Application 12/872,337 Technology Center 3700 Before MICHELLE R. OSINSKI, ANNETTE R. REIMERS, and THOMAS F. SMEGAL, Administrative Patent Judges. OSINSKI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Andrew Frolov (Appellant)1 appeals under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1—8, 10, 14—16, and 21, which are all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. 1 According to Appellant, the real party in interest is Robert Bosch Tool Corporation and Robert Bosch GmbH. Br. 2. Appeal 2015-007137 Application 12/872,337 THE CLAIMED SUBJECT MATTER Claim 1, the sole independent claim, is reproduced below and is representative of the claimed subject matter on appeal. 1. A power saw comprising: a base structure including a generally flat top structure having an upper work surface with said top structure having an opening through which at least: a portion of a circular blade can extend: an undercarriage pivotably mounted to said base structure around a pivot axis located at an upper end portion of said undercarriage to provide an adjustable bevel angle of said blade relati ve to said top structure; and a motor saw assembly mounted to said undercarriage, the motor saw assembly comprising: a gear housing slidably connected to said undercarriage and configured to slide vertically between an upper position and a lower position with respect to said undercarriage, the gear housing being closer to the top structure in the upper position than in the lower position: an arbor shaft rotatably supported by the gear housing for movement therewith between the upper and lower positions, the arbor shaft being configured to receive a circular blade thereon, a drive motor mounted to the gear housing for movement therewith between the upper and lower positions and having an output shaft that extends therefrom, the drive motor being arranged with the output shaft oriented generally parallel to a plane of said blade and oriented 90 degrees relative to said arbor shaft, and a speed reducing gear train supported by the gear housing for movement therewith between the upper and lower positions, said speed reducing gear train coupling said output shaft and said arbor shaft, wherein movement of said gear housing between said upper and lower positions varies the portion of said blade that extends above said upper work surface. 2 Appeal 2015-007137 Application 12/872,337 EVIDENCE The Examiner relied on the following evidence in rejecting the claims on appeal: Kottke US 2002/0078812 A1 June 27, 2002 Gaw US 2008/0092709 A1 Apr. 24, 2008 Tanaka US 2009/0229437 A1 Sept. 17, 2009 Chung US 2011/0048195 A1 Mar. 3,2011 Kani US 8,272,454 B2 Sept. 25, 2012 THE REJECTIONS I. Claims 1—5, 7, 8, and 21 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Gaw, Kani, and Tanaka. Id. Final Act. 2—6. II. Claim 6 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Gaw, Kani, Tanaka, and Kottke. Id. at 6—7. III. Claims 1, 10, and 14—16 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Chung and Gaw. Id. at 7—9. OPINION Rejection I The Examiner finds that Gaw teaches many of the limitations of independent claim 1, including, inter alia, an undercarriage and “a motor saw assembly comprising an arbor shaft . . ., a drive motor . . ., and a gear housing . . . said motor saw assembly being adjustably mounted to said undercarriage.” Final Act. 2—3 (emphasis omitted). The Examiner acknowledges that Gaw “lacks a gearing housing which is slidably connected to said undercarriage and configured to slide vertically between an upper position and a lower position with respect to said undercarriage.” Final Act. 3 (emphasis added). The Examiner turns to Tanaka as teaching a 3 Appeal 2015-007137 Application 12/872,337 movable base that slides “along support shafts 6 vertically upward and downward in order to slide the motor and motor housing 7.” Id. (citing Tanaka 122, Figs. 1, 5). The Examiner concludes that it would have been obvious to replace Gaw’s pivoting cam means 16 for raising the blade and its housing with Tanaka’s vertically slidable base/shaft assembly for raising a blade “in order to provide a raising and lowering device which allows for a better connection and disconnection from other parts of a saw device as taught by Tanaka.” Id. at 4 (citing Tanaka 5—6). Appellant argues that the identified paragraphs of Tanaka “merely refer to the lack of an ability to adjust the vertical position of the holding frame of prior art saw blade protectors relative to the upper surface of the saw table,” and that Tanaka seeks to “solve this problem by providing saw blade protectors with an adjusting device that enables the position of the holding frame of the blade protector to be adjusted relative to the upper surface of the table.” Br. 9. Appellant maintains that nothing “would lead a person of ordinary skill in the art to think that the raising and lowering device of Tanaka ‘allows for a better connection and disconnection from other parts of a saw device,’” as alleged by the Examiner. Id. The Examiner responds that paragraphs 5 and 6 describe the “limitations of the prior art” and the “need for such a sliding adjustable frame and support system.” Ans. 10. In addition, the Examiner points to paragraph 8 as “more clearly providing] the necessary motivation to support the assertions from above of the necessary rationale] for modifying Gaw with Tanaka.” Id. We determine that the Examiner has not sufficiently articulated a rational evidentiary underpinning to explain why a person of ordinary skill 4 Appeal 2015-007137 Application 12/872,337 in the art would have had reason, in light of Tanaka, to replace Gaw’s pivoting cam means 16 with Tanaka’s vertically slidable base/shaft assembly. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”) (cited with approval in KSR Int 7 Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)). The Examiner does not explain sufficiently why the described limitations of the prior art set forth in Tanaka, which relate specifically to saw blade protectors, are applicable to Gaw. Further, the Examiner does not explain what deficiencies exist with respect to Gaw’s pivoting cam means and/or how Tanaka’s vertically slidable base/shaft assembly would provide advantages relative to a pivoting cam means. More specifically, the Examiner’s assertion regarding Tanaka’s sliding assembly “allowing] for a better connection and disconnection from other parts of a saw device” (Final Act. 4) merely explains why a skilled artisan may desire relative movement between parts of a saw device in general, as opposed to explaining why a skilled artisan may desire relative movement using a sliding assembly instead of a pivoting assembly. Tanaka does not expressly set forth any improvement or advantage by allowing relative movement via a sliding assembly instead of a pivoting assembly, nor does the Examiner explain how such an improvement or advantage might be reasoned from knowledge generally available to one of ordinary skill in the art. In short, the Examiner does not explain sufficiently what would have led one of ordinary skill in the art, based on the teachings of Tanaka, to replace Gaw’s pivoting cam means with a sliding assembly. For the foregoing reasons, we find that the Examiner erred in concluding that the subject matter of claim 1 is unpatentable over Gaw, 5 Appeal 2015-007137 Application 12/872,337 Kani, and Tanaka, and we do not sustain the rejection of claim 1, or claims 2—5, 7, 8, and 21 which depend therefrom, under 35 U.S.C. § 103(a) as unpatentable over Gaw, Kani, and Tanaka. Rejection II The Examiner rejects claim 6 under 35 U.S.C. § 103(a) as unpatentable over Gaw, Kani, Tanaka, and Kottke. Final Act. 6—7. The rejection of this claim relies on the Examiner’s erroneous conclusion that the combination of Gaw, Kani, and Tanaka renders obvious replacing a pivoting cam means with a sliding assembly. See id. at 6. The Examiner does not explain how Kottke cures this underlying deficiency. Accordingly, we do not sustain the rejection of claim 6 under 35 U.S.C. § 103(a) as unpatentable over Gaw, Kani, Tanaka, and Kottke. Rejection III The Examiner finds that Chung teaches an arbor shaft 156 configured to receive a circular blade 108 thereon and a drive motor 116 having an output shaft. Final Act. 7—8. The Examiner also finds that Chung teaches a speed reducing gear train coupling the output shaft and the arbor shaft 156 in that ‘“the power shaft 152 may be directly driven by the motor or by a reduction gear.’” Id. at 8 (quoting Chung 149). The Examiner further finds that Chung teaches a gear housing 144 slidably connected to undercarriage 124 and configured to slide vertically between an upper position and lower position with respect to the undercarriage 124. Id. at 7.2 2 The Examiner acknowledges that Chung lacks an output shaft extending generally parallel to a plane of a saw blade, with said output shaft oriented at 90 degrees relative to the arbor shaft. Final Act. 8. The Examiner finds that Gaw teaches this missing limitation, and the Examiner concludes that it would have been obvious “to modify Chung by orienting the Chung motor 6 Appeal 2015-007137 Application 12/872,337 Appellant argues that Chung teaches only that “a speed reducing gear train may be used to couple the motor 116 to an intermediate drive shaft, i.e., power shaft 152,” but “does not disclose or suggest using a speed reducing gear train to couple the motor to the arbor shaft.” Br. 12. The Examiner responds that the blade (received on shaft 156) is attached at least operatively to power shaft 152, and thus meets the claim language. Ans. 10 (citing Chung, Fig. 3D). We agree with the Examiner that the configuration of Chung, where a reduction gear is disposed between motor 116 and power shaft 152, in which power shaft 152 in turn drives power wheel 150 and in which belt 154 transfers rotational movement from power wheel 150 to blade wheel 156 on which blade 108 is affixed, meets the limitation of a speed reducing gear train coupling the output shaft of the drive motor and the arbor shaft because of the operative connection between the power shaft 152 and the arbor shaft. In other words, Chung’s speed reducing gear train indirectly couples the output shaft of motor 116 to the arbor shaft 156 (through the operative connection of power shaft 152 to arbor shaft 156). Appellant also argues that gear housing 144 identified by the Examiner is not slidably connected to undercarriage 124, but rather is pivotably connected thereto. Br. 12. Appellant argues that at most Chung teaches slidably connecting carriage 124 and frame 114 “to enable the height of the blade to be adjusted relative to the upper surface of the table.” Id. at 12—13. The Examiner responds that Chung’s element 504 “supports] a to be 90 degrees relative to the Chun[g] blade and orienting the output shaft to be generally parallel to the blade plane in order to maintain a minimal profile for the motor assembly necessary for beveling type assemblies as taught by Gaw.” Id. (citing Gaw 127). Appellant does not contest the Examiner’s findings or conclusions with respect to the teachings of Gaw. 7 Appeal 2015-007137 Application 12/872,337 housing and a motor and a blade thereon to be slid up and down while also being able to be pivoted.” Ans. 10-11 (citing Chung | 50, Fig. 3B). The Examiner maintains that “[t]he pivoting movement of such elements does not preclude a vertical up and down movement as Appellant seems to imply.” Id. at 11. Appellant does not respond to the Examiner’s finding regarding element 504, and we are not persuaded that the Examiner erred in finding that gear housing 144 is slidably connected to carriage 124 via guide posts 504. For the foregoing reasons, we do not find that the Examiner erred in concluding that the subject matter of claim 1 is unpatentable over Chung and Gaw, and we sustain the rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable over Chung and Gaw. We also sustain the rejection of claims 10, and 14—16, for which Appellant relies on the same arguments and reasoning we found unpersuasive in connection with independent claim 1. See Br. 13. DECISION The Examiner’s rejection of claims 1—5, 7, 8, and 21 under 35 U.S.C. § 103(a) as unpatentable over Gaw, Kani, and Tanaka is reversed. The Examiner’s rejection of claim 6 under 35 U.S.C. § 103(a) as unpatentable over Gaw, Kani, Tanaka, and Kottke is reversed. The Examiner’s rejection of claims 1, 10, and 14—16 under 35 U.S.C. § 103(a) as unpatentable over Chung and Gaw 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)(l)(iv). AFFIRMED-IN-PART 8 Copy with citationCopy as parenthetical citation