Ex Parte Fuchs et al

Patent Trial and Appeal BoardSep 28, 2012

11188545 (P.T.A.B. Sep. 28, 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. 11/188,545 07/25/2005 Wolfgang Fuchs 3387 9697 7590 09/28/2012 STRIKER, STRIKER & STENBY 103 EAST NECK ROAD HUNTINGTON, NY 11743 EXAMINER LOW, LINDSAY M ART UNIT PAPER NUMBER 3721 MAIL DATE DELIVERY MODE 09/28/2012 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 WOLFGANG FUCHS, HEIKO ROEHM, JUERGEN GAIRING, and JENS BLUM ____________ Appeal 2010-003952 Application 11/188,545 Technology Center 3700 ____________ Before GAY ANN SPAHN, MICHAEL C. ASTORINO, and WILLIAM A. CAPP, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s decision finally rejecting claims 1, 3-6, 8-12, and 14-17. Claims 2, 7, and 13 have been canceled. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We REVERSE. Appeal 2010-003952 Application 11/188,545 2 CLAIMED SUBJECT MATTER Claims 1 and 17 are the independent claims on appeal. Claim 1, reproduced below, with emphasis added, is illustrative of the subject matter on appeal. 1. A hand power tool, comprising a housing having at least two housing parts, sealing means providing mounting of said housing parts on one another fluid-tightly, said housing parts having short sides with which said housing parts abut against one another with interposition of said sealing means, said sealing means being fixed non- detachably and as an integrated part on one of said housing parts, wherein said parts at a point where they abut one another are configured as a tongue-and-groove connection, positioned longitudinally along the short sides, said sealing means being located in an area of partner faces of said tongue-and-groove connection, said sealing means being configured to remain in position before the housing is assembled and when the housing is disassembled, wherein said sealing means are configured to remain in a permanent position and further are configured so that the sealing means cannot be disassembled from said short sides without causing damage either to the housing parts or to the sealing means, wherein said housing parts are formed as injection molded parts, so that said sealing means formed as injection molded parts are injection molded on said housing parts during manufacture of said housing parts, such that said housing parts and said sealing means are produced simultaneously as a single, unitary, one-piece part. Appeal 2010-003952 Application 11/188,545 3 REJECTIONS The following Examiner’s rejections are before us for review. Claims 1, 3-6, 8-12, and 14-17 are rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Claims 1, 3-5, 8-12, and 14-17 are rejected under 35 U.S.C. § 103(a) as unpatentable over Terada (US 5,692,574, iss. Dec. 2, 1997) and deBlois (US 5,718, 014, iss. Feb. 17, 1998). Claim 6 is rejected under 35 U.S.C. § 103(a) as unpatentable over Terada, deBlois, and Burgsmüller (US 4,268,197, iss. May 19, 1981). OPINION Written Description Independent claim 1 and dependent claims 3-6, 8-12, and 14-16 Claim 1 recites, inter alia, “wherein said housing parts are formed as injection molded parts, so that said sealing means formed as injection molded parts are injection molded on said housing parts during manufacture of said housing parts, such that said housing parts and said sealing means are produced simultaneously as a single, unitary, one-piece part.” Br., Claims Appendix. The Examiner has found that the phrase “produced simultaneously as a single, unitary, one-piece part,” as recited in claim 1, “appears to suggest that the sealing means are made with the housing at the same time” and as such, the phrase has not been described in the Specification in such a way to reasonably convey to one of ordinary skill in the art that the inventors, at the time the application was filed, had possession of the claimed invention. Ans. 3. Appeal 2010-003952 Application 11/188,545 4 To satisfy the written description requirement, “the [original] specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). This test “requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art.” Id. “Based on that inquiry, the specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed.” Id. This inquiry is a question of fact. Id. (citing Ralston Purina Co. v. Far-Mar-Co, Inc., 772 F.2d 1570, 1575 (Fed. Cir. 1985)). The Examiner refers to the Specification on page 8, lines 18-20, which states “[t]he production of the half-shell with a soft component can be done by 2-K technology, in which first the hard component and then the soft component are injected in the same mold, such as an injection mold.” Emphasis added. See also Spec. 4-5 (stating “[t]he connection between the hard and soft components . . . can be additionally reinforced by form locking, such as back-injection molding”). The Examiner found that the statement at page 8 of the Specification “seems to suggest that the housing is produced first and the sealing means is produced second.” Ans. 3. The Examiner further found: This is not simultaneous, but rather two separate steps in the production process. It is not clear as to when the single, unitary, one-piece part is considered to be “produced.” For example, it could be considered to be “produced” immediately after injection of the material. If that were the Appeal 2010-003952 Application 11/188,545 5 case, the housing parts and sealing means would not be “produced simultaneously.” Ans. 6-7. The Appellants contend the Specification at page 8, lines 18-20 “clearly disclose[] that the hard and soft components are injected in the same mold. The mold is then processed such that both the hard and soft components are produced simultaneously to form the single, one-piece part within the mold.” Br. 7. Indeed, a person of ordinary skill in the art would understand that the product formed by the process of injection molding is produced when the all the materials have been cured in the mold as a single, unitary, one-piece part. The effect of the foregoing is that the product is “produced simultaneously as a single, unitary, one-piece part.” As such, the Specification describes the claimed invention and therefore, the Appellants had possession of the claimed invention. Thus, the rejection of claims 1, 3-6, 8-12, and 14-16, as failing to comply with the written description requirement, is not sustained. Independent claim 17 As claim 17 does not contain the language of “produced simultaneously as a single, unitary, one-piece part” upon which the Examiner bases the lack of written description rejection, we also do not sustain the Examiner’s rejection of claim 17 as failing to comply with the written description requirement. Thus, the rejection of claim 17, as failing to comply with the written description requirement, is not sustained. Appeal 2010-003952 Application 11/188,545 6 Obviousness The Examiner has found with respect to claims 1 and 17 that Terada “discloses a hand power tool (1) having a housing with at least two housing parts ([body housing] 3, [handle] 5) and a sealing means ([rubber ring] 30) that fluid-tightly seals the housing parts (airtight, column 5, lines 60-65) and is interposed between short sides of the housing parts (Fig. 4A-4G).” Ans. 3, 5, and Terada, col. 5, ll. 16-17. With respect to claim 17, the Examiner adds that Terada’s “sealing means ([rubber ring] 30) is deemed to be fixed on the housing parts because it is firmly positioned between them.” Ans. 5. The Examiner has also found that Terada “does not disclose the use of injection molding to form the plastic seal on one of the housing parts,” but that deBlois discloses “the use of injection molding to form a plastic seal (the cover piece) on the housing of a tool.” Id. The Examiner concludes “it would have been obvious to one having ordinary skill in the art at the time of the invention to injection mold the seal [of Terada] to the housing in order to manufacture a secure seal in a low-cost manner.” Ans. 5-6, see also Ans. 8. As such, we understand that for the rejection of claims 1 and 17, the Examiner has modified Terada’s apparatus in view of deBlois teaching to reach the conclusion that the recitations of each claim are unpatentable, i.e., obvious. The Appellants assert that “[a]s provided in column 3, lines 59-61 of deBlois, the cover 24 which is produced by injection molding forms an outer skin over a majority of the subassembly shell 22.” Br. 11 (emphasis omitted). The Appellants persuasively contend that “deBlois does not disclose injection molding of the sealing means.” Id. (emphasis omitted). DeBlois discloses a tool housing having a “subassembly shell 22 Appeal 2010-003952 Application 11/188,545 7 compris[ing] two half members 26 . . . . The two members 26 are basically mirror images of each other and are held together by a single screw 29 at the holes 28 and metal rings 31 at the front and rear of the members 26.” Col. 3, ll. 36-41, fig. 2. The cover 24 is overmolded (injection molded) onto shell 22 to form an outer skin over a majority of the shell 22. See col. 3, ll. 55-61, col. 8, ll. 58-60, figs. 1, 9A. Cover 24 has various functions including providing waterproofing, a non-slip surface, and a uniform and stylish appearance, and resiliently absorbs physical shocks if the tool is dropped on a hard surface. Col. 10, ll. 27-52. So although cover 24 is injected molded, cover 24 does not act as a sealing means integrated on one of the housing parts and interposed between abutting housing parts. In response to the Appellants’ contention, the Examiner explains that “[i]t is acknowledged that deBlois operates differently than Terada.” Ans. 8. Indeed, Terada’s rubber ring can absorb vibration and can act as an air cushion by deforming (col. 5, ll. 55-57, col. 6, ll. 1-3), which is different functionality as compared to the functionality of deBlois’s cover 24. The Examiner adds that both Terada’s rubber ring and deBlois’s cover 24 “utilize materials in order to form seals for keeping out debris and other particles.” Ans. 8. However, we determine that the differences in the functionality between Terada’s rubber ring and deBlois’s cover are considerable. See also Br. 9-12. The Examiner’s conclusion of obviousness appears to rely on the ability to manufacture Terada’s rubber ring by injection molding as taught by deBlois’s injection molding process.1 However, deBlois’s teaching does 1 The Examiner has also found that “[a]s is well known in the art, the use of injection molding provides a low-cost method for manufacturing a secure sealing means.” Ans. 3. Appeal 2010-003952 Application 11/188,545 8 not adequately support the Examiner’s reasoning. Hence, the Examiner’s reasoning is not supported by rational underpinning. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds [require] some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”) (cited with approval in KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)). Thus, for the foregoing reasons, the rejection of independent claim 1 and its dependent claims 3-5, 8-12, and 14-16, and independent claim 17, as unpatentable over Terada and deBlois cannot be sustained. Turning to the rejection of claim 6 as unpatentable over Terada, deBlois, and Burgsmüller, the Examiner has further found that Burgsmüller discloses “the use of a grease/oil resistant plastic for sealing elements in a drill” and “[a]s is well known in the art, grease/oil resistant sealing elements allow for the effective sealing in environments, such as inside many tool constructions, where grease/oil is used (such as in transmissions, etc[.]).” Ans. 6. Since claim 6 ultimately depends from claim 1 and these findings do not remedy the deficiency of the Examiner’s rejection with respect to claim 1, the rejection of claim 6 as unpatentable over Terada, deBlois, and Burgsmüller cannot be sustained. DECISION We REVERSE the rejections of claims 1, 3-6, 8-12, and 14-17. REVERSED Klh