Ex Parte FuenferDownload PDFPatent Trial and Appeal BoardDec 19, 201713440643 (P.T.A.B. Dec. 19, 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. 13/440,643 04/05/2012 Josef Fuenfer 5068.1093 4077 23280 7590 12/21/2017 Davidson, Davidson & Kappel, LLC 589 8th Avenue 16th Floor New York, NY 10018 EXAMINER LONG, ROBERT FRANKLIN ART UNIT PAPER NUMBER 3721 NOTIFICATION DATE DELIVERY MODE 12/21/2017 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 JOSEF FUENFER Appeal 2016-008536 Application 13/440,643 Technology Center 3700 Before DANIEL S. SONG, KEN B. BARRETT, and ARTHUR M. PESLAK, Administrative Patent Judges. PESLAK, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Josef Fuenfer (“Appellant”) appeals under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1-5 and 10-13.1 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Appellant submits the real party in interest is Hilti Aktiengesellschaft. Appeal Br. 2. Appeal 2016-008536 Application 13/440,643 THE CLAIMED SUBJECT MATTER Claim 1, the only independent claim is reproduced below with italics added. 1. A hand-held power tool with a pneumatic striking mechanism comprising: a motor-driven exciter; a guide tube having an inside; and a piston-shaped striker, the piston-shaped striker passing through the inside of the guide tube and, with the exciter, delimiting an air spring in the guide tube, the guide tube being made of a metal strip bent to form the guide tube with opposite lengthwise edges joined by at least one of a seam and a positive fit created by teeth, the striker guided by the inside of the guide tube so as to be in contact with the guide tube in a radial direction. REJECTIONS 1) Claims 1-2 and 10-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 11-12 of copending U.S. Patent Application No. 13/900,405. 2) Claims 11-13 are rejected under 35 U.S.C. § 112, second paragraph, for indefiniteness. 3) Claims 1-5 and 10 are rejected under 35 U.S.C. § 103(a) as unpatentable over Aoki (US 2006/0076154 Al, published Apr. 13, 2006), Hartmann (US 2010/0300718 Al, published Dec. 2, 2010), Meshke (US 6,641,219 B2, issued Nov. 4, 2003), Ewell (US 3,731,437, issued May 8, 1973), and Du (US 6,522,042 Bl, issued Feb. 18, 2003). 4) Claims 10-13 are rejected under 35 U.S.C. § 103(a) as unpatentable over Aoki, Hartmann, Meshke, Ewell, Du, 2 Appeal 2016-008536 Application 13/440,643 Kammeraad (US 3,828,415, issued Aug. 13, 1974), and McClellan (US 4,167,992, issued Sept. 18, 1979). DISCUSSION Rejection 1 The nonstatutory double patenting rejection of claims 1-2 and 10-13 over independent claim 1 and its dependent claims 11-12 of copending U.S. Patent Application No. 13/900,405 is provisional because the claims in the copending application had not issued at the time of the Final Office Action. Final Act. 3—4. On December 27, 2016, subsequent to the docketing of this appeal, the claims in U.S. Patent Application No. 13/900,405 issued. Prior to issuance and subsequent to the Final Rejection in the application before us, independent claim 1 of the ’405 application was amended. Given this recent development, we do not reach the merits of this rejection. We leave it for the Examiner to determine whether the obviousness-type double patenting rejection still is proper in light of the amended claims of the ’405 application if prosecution continues in the instant application. Rejection 2 The Examiner rejects claims 11-13, which depend directly or indirectly from claim 1, finding that the limitation “the teeth” lacks sufficient antecedent basis. Final Act. 4. Appellant contends that “[t]he word ‘teeth’ is used in claim 1 and the assertion that there is no antecedent basis for claim 11 is just wrong.” Appeal Br. 4. The Examiner has not adequately explained why the use of “teeth” in claim 1 does not provide sufficient antecedent basis for claims 11-13. We, thus, do not sustain the 3 Appeal 2016-008536 Application 13/440,643 rejection of claims 11-13 as indefinite under 35 U.S.C. § 112, second paragraph. Rejection 3 The Examiner finds that Aoki discloses many of the limitations of claim 1 including a guide tube having an inside, but does not disclose, “the guide tube being made of a metal strip bent to form the guide tube with opposite lengthwise edges joined by at least one of a seam and a positive fit created by teeth.” Final Act. 5-6. The Examiner finds that Meshke discloses “a guide tube (25/45) being made of a metal strip (30) bent to form the guide tube . . . with opposite lengthwise edges (40) joined by at least one of a seam (55). . . [with] a positive fit created by teeth (60/65),” Ewell discloses “forming a guide tube (12/50) being made of a metal strip (11) bent to from the guide tube (12/50) with opposite lengthwise edges . . . joined by at least one of a seam,” and Du discloses “forming a flux guide tube (34”) being made of a metal strip . . . bent to form the guide tube . . . with opposite lengthwise edges . . . joined by at least one of a seam (99) positive fit created by teeth (101).” Id. at 7. The Examiner concludes that it would have been obvious to modify Aoki’s guide tube [to be] made of a metal strip bent to form the guide tube with opposite lengthwise edges joined by at least one of a seam and a positive fit created by teeth ... for reducing manufacturing costs, increasing strength, and interconnecting tubular members as taught by Hartman[n], Meshke et al., Ewell[,] and Du et al. Id. at 8-9. Appellant argues that Aoki’s guide tubes “typically are made from a full block and milled and polished to provide a good fit and low friction” 4 Appeal 2016-008536 Application 13/440,643 and that none of the prior art cited by the Examiner discloses a guide tube as recited in claim 1. Appeal Br. 5. Appellant also argues that there is no factual basis for using Meshke, which discloses a guide tube for a head rest restraint, and Ewell, which discloses a rotary abrasive tool, to modify Aoki, and Du’s guide tube is “a ring with inwardly projecting anchors 140 . . . [which] would prevent. . . contact with a striker” as recited in claim 1. Id. at 5-6. Appellant next argues that the Examiner’s reference to “interconnecting tubular members” is not understood, does not have any real advantage, and in any event Aoki does not need to interconnect its tubular member because it is milled from a solid block. Id. at 6. The Examiner responds that claim 1 is a product by process claim and if the “product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the . . . product was made by a different process.” Ans. 2 (citing In re Thorpe, 111 F.2d 695, 698 (Fed. Cir. 1985)). The Examiner does not dispute Appellant’s assertion that Aoki discloses a guide tube machined from a solid block of material and maintains that modifying Aoki’s guide tube as taught by Hartmann, Meshke, Ewell, and Du would have been obvious. Id. at 3—4. In reply, Appellant asserts that claim 1 is not a product by process claim but rather recites a structural limitation and in any event a bent metal strip is structurally different from the prior art milled body. The opposite lengthwise ends for example are a structurally distinguishing feature of a metal strip bent into a guide tube. A tube milled out of a solid block does not have such lengthwise ends, which actually results in a higher mechanical strength of the milled tube. Reply Br. 2. 5 Appeal 2016-008536 Application 13/440,643 Appellant then argues that the Examiner’s reasoning that modifying Aoki’s guide tube to increase its strength is erroneous. Id. For the following reasons, we do not sustain the rejection of claim 1. First, we do not agree with the Examiner that the guide tube limitation recited in claim 1 is a product by process claim limitation. We note that limitations such “as ‘intermixed,’ ‘ground in place,’ ‘press fitted,’ ‘etched,’ and ‘welded’” have been “held capable of construction as structural, rather than process, limitations.” In re Garnero, 412 F.2d 276, 279 (CCPA 1969). Here, although bending a metal strip may be construed as a process, the entire limitation of “guide tube with opposite lengthwise edges” of a bent metal strip that are joined by a seam or teeth is a structural limitation. Further, the Examiner has not shown that opposite lengthwise edges and a seam are present in Aoki’s guide tube. Second, the Examiner has not provided an adequate explanation to support the reasoning that modifying Aoki’s guide tube to include lengthwise edges and a seam would result in reduced manufacturing costs. In the absence of such an explanation or evidence, the reasoning is based on speculation. Third, the Examiner has not adequately explained why forming Aoki’s guide tube as proposed will result in an increase in strength over a guide tube machined from a single piece as disclosed in Aoki. Finally, the Examiner’s reference to “interconnecting tubular members” does not state a reason to modify Aoki’s guide tube, but rather states the result of the proposed modification. The Examiner’s reasons for modifying Aoki’s guide tube are, thus, not supported by a rational underpinning. Therefore, we do not sustain the rejection of claim 1 and claim 2-5 and 10 which depend from claim 1. 6 Appeal 2016-008536 Application 13/440,643 Rejection 4 Claims 10-13 depend directly or indirectly from claim 1. (Appeal Br. (Claims App.).) The Examiner’s relies on additional disclosure from Kammeraad and McClellan in the rejection of claims 10-13. Final Act. 9- 13. The additional disclosure and reasoning provided by the Examiner in the rejection of these claims fail to cure the lack of a rational underpinning for the rejection of claim 1. We, thus, do not sustain the rejection of claims 10- 13 for the same reasons stated for claim 1. DECISION The Examiner’s decision rejecting claims 1-5 and 10-13 is reversed. REVERSED 7 Copy with citationCopy as parenthetical citation