Ex Parte Gehret et al

Patent Trial and Appeal BoardAug 11, 2017

12541364 (P.T.A.B. Aug. 11, 2017)

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. 12/541,364 08/14/2009 Robert S. Gehret TN-11112 3213 28268 7590 08/11/2017 THE BLACK & DECKER CORPORATION 701 EAST JOPPA ROAD, TW199 TOWSON, MD 21286 EXAMINER PATEL, BHARAT C ART UNIT PAPER NUMBER 3724 MAIL DATE DELIVERY MODE 08/11/2017 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 ROBERT S. GEHRET, CRAIG A. SCHELL, DARYL S. MEREDITH, TORREY R. LAMBERT, and ADAN AYALA ____________ Appeal 2016-000007 Application 12/541,3641 Technology Center 3700 ____________ Before ANTON W. FETTING, BRUCE T. WIEDER, and TARA L. HUTCHINGS, Administrative Patent Judges. WIEDER, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134 from the final rejection of claims 1, 2, 9, and 10. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. CLAIMED SUBJECT MATTER Appellants’ claimed “invention relates to a method and apparatus for automatically adjusting a fence as a miter saw adjusts to various bevel angles.” (Spec. ¶ 1.) 1 According to Appellants, the real party in interest is Black & Decker Inc., a subsidiary of Stanley Black & Decker Inc. (Appeal Br. 2.) Appeal 2016-000007 Application 12/541,364 2 Claim 1 is the sole independent claim on appeal. It recites (emphasis added): 1. A miter saw comprising: a table for supporting a workpiece; a first fence located on the table; and a beveling arm rotatably connected to the table for supporting a saw blade and allowing the saw blade to be inclined relative to the table, and a non-electric means for moving the first fence when the beveling arm is rotated to incline the saw blade; wherein, after the first fence is moved, the saw blade does not contact the first fence when the saw blade is moved toward the table to a cutting position. REJECTIONS Claims 1, 2, 9, and 102 are rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Claims 1, 2, 9, and 10 are rejected under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter the inventors regard as the invention. Claims 1, 2, 9, and 10 are rejected under 35 U.S.C. § 102(b) as anticipated by Wang (US 2006/0288836 A1, pub. Dec. 28, 2006). Claims 1, 2, 9, and 10 are rejected under 35 U.S.C. § 102(b) as anticipated by Brundage (US 5,042,348, iss. Aug. 27, 1991). 2 Claims 3–8 and 12–15 have been withdrawn. (See Amendment dated May 27, 2014.) Appeal 2016-000007 Application 12/541,364 3 ANALYSIS The § 112, first and second paragraph, rejections The Examiner finds that “‘[a] non-electric’ means for moving the first fence in line 6 of claim 1 raises the issue of a new matter as ‘a non-electric’ can be an hydraulic, mechanical, pneumatic or by hand or manual means for moving. The non-electric phrase is not disclosed in the original disclosure.” (Final Action 2.) Additionally, the Examiner finds that “[t]he Appellant has disclosed various embodiments in the specification, specifically Figs. 5–22. However, these embodiments do not cover the entirety of the scope of the phrase ‘non-electric’ as set forth above. Therefore, this limitation is still considered new matter.” (Answer 2–3.) The Examiner also concludes that the “means for moving” limitation is in means-plus-function form. (Id. at 4.) Appellants argue that “‘the broadest reasonable interpretation of a claim limitation that invokes ... 35 U.S.C. 112, sixth paragraph, is the structure, material or act described in the specification as performing the entire claimed function and equivalents to the disclosed structure.’ MPEP § 2181.” (Reply Br. 3.) Thus, Appellants further argue, “the ‘non-electric means’ cannot include other non-described embodiments that are not structural equivalents. Therefore, no new matter has been introduced and the written description requirement has been met.” (Id.) “When a claim uses the term ‘means’ to describe a limitation, a presumption inheres that the inventor used the term to invoke § 112, ¶6.” Biomedino, LLC. v. Waters Techs. Corp., 490 F.3d 946, 950 (Fed. Cir. 2007). Here, both Appellants and the Examiner agree that the “non-electric means” limitation is in means-plus function form and neither asserts that the Appeal 2016-000007 Application 12/541,364 4 limitation does not invoke the means-plus-function claiming contemplated by § 112, sixth paragraph. Once it is concluded “that a claim limitation is a means-plus-function limitation, two steps of claim construction remain: 1) the court must first identify the function of the limitation; and 2) the court must then look to the specification and identify the corresponding structure for that function.” Id. Thus, that the disclosed “embodiments do not cover the entirety of the scope of the phrase ‘non-electric’” is not determinative of whether the claim limitation meets the requirements of § 112, first paragraph, or § 112, second paragraph. In this case, the Examiner has not specifically identified the function of the limitation and has not specifically identified the corresponding structure. Moreover, with regard to the rejection under § 112, second paragraph, the Federal Circuit instructs us: While the specification must contain structure linked to claimed means, this is not a high bar: “[a]ll one needs to do in order to obtain the benefit of [§ 112, ¶ 6] is to recite some structure corresponding to the means in the specification, as the statute states, so that one can readily ascertain what the claim means and comply with the particularity requirement of [§ 112,] ¶ 2.” [Atmel Corp. v. Information Storage Devices, Inc., 198 F.3d 1374, 1382 (Fed. Cir. 1999).] Additionally, interpretation of what is disclosed in the specification must be made in light of the knowledge of one skilled in the art. Id. at 1380. Thus, in order for a means-plus-function claim to be valid under § 112, the corresponding structure of the limitation “must be disclosed in the written description in such a manner that one skilled in the art will know and understand what structure corresponds to the means limitation. Otherwise, one does not know what the claim means.” Id. at 1382. Appeal 2016-000007 Application 12/541,364 5 Biomedino, 490 F.3d at 950. In this case, the Examiner has not determined whether, under a properly construed claim, the specification discloses such corresponding structure. We note, however, that the Examiner suggests that there is an identifiable function and corresponding structure. (See Answer 2–3 (“The Appellant has disclosed various embodiments in the specification, specifically Figs. 5–22.”); see also Spec. ¶¶ 67, 70 and Figs. 9, 11.) In view of the above, we are persuaded that the Examiner has not undertaken a proper claim analysis and therefore, has erred in rejecting claims 1, 2, 9, and 10 under § 112, first and second paragraphs. The § 102(b) rejection - Wang In relevant part, the Examiner finds that Wang discloses a non-electric means for moving 354, 356, the first fence 352 when the beveling arm 302 is rotated (via drive arrangement 356, [358], Fig. 17) to incline the saw blade 332, wherein, after the first fence 352 is moved the saw blade 332 does not contact the first fence 352 when the blade 332 is moved toward the table 300 to a cutting position (per para [0060-0069]). (Final Action 4.) Specifically, the Examiner finds that “Wang does teach moving the fence when the beveling arm is rotated as the movement- adjusting motor drives the movable fence.” (Answer 3.) Appellants argue that Wang’s “sensors and motor are electric components, they are different than the mechanical embodiments disclosed in the Specification and cannot constitute a structural equivalent of such mechanical embodiments.” (Reply Br. 5–6.) Therefore, Appellants argue, “the Wang structure is not the claimed ‘non-electric means for moving the Appeal 2016-000007 Application 12/541,364 6 first fence when the beveling arm is rotated to incline the saw blade.’” (Id. at 6.) The Examiner does not sufficiently explain why the structure disclosed in Wang expressly or inherently describes the structure of the non- electric means limitation, under a proper § 112, sixth paragraph, claim construction. See In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999). The § 102(b) rejection - Brundage In relevant part, the Examiner finds that Brundage discloses a non-electric means 85 for moving the first fence 13 when the beveling arm 19, 121 is rotated to incline (via arm 85 and 129, 131, 7 and 3, Fig. 11) the saw blade 17; wherein, after the first fence 13 is moved, the saw blade 17 does not contact the first fence 13 when the saw blade 17 is moved toward the table 7 to a cutting position (per col. 7, ln. 30-col. 9, ln. 52, Figs. 1-12). (Final Action 5.) Appellants argue that Brundage teaches “that the fence is movable, [but] it does not teach the functional step of moving the fence when the beveling arm is rotated to change the saw blade’s beveling angle. Instead Brundage teaches moving the fence when the table is rotated, so as to change the saw blade’s miter angle.” (Appeal Br. 15.) “Such mitering operation is different from a beveling operation . . . .” (Id. at 16; see also Spec. ¶ 2.) Brundage discloses a miter lock handle 11 and a separate bevel lock handle 27. (Brundage, col. 4, ll. 39–49.) Brundage also discloses: The depending arm 85 of the work supporting fence 13 is attached to an undersurface of the intermediate arcuately shaped element 99, and the annular boss 89 at its lower end is slideably received within the enlongated [sic] slot 91, in order to allow the Appeal 2016-000007 Application 12/541,364 7 work supporting fence 13 to move as the turntable 7 and miter saw blade 17 are rotated to the miter adjustment desired. (Brundage, col. 7, ll. 22–29.) In short, Brundage discloses that the fence is adjustable when the miter angle is adjusted. It is unclear where Brundage discloses adjusting the fence when the beveling arm is rotated. Regardless, the Examiner does not sufficiently explain why the structure disclosed in Brundage expressly or inherently describes the structure of the non-electric means limitation, under a proper § 112, sixth paragraph, claim construction. DECISION The Examiner’s rejection of claims 1, 2, 9, and 10 under 35 U.S.C. § 112, first paragraph, is reversed. The Examiner’s rejection of claims 1, 2, 9, and 10 under 35 U.S.C. § 112, second paragraph, is reversed. The Examiner’s rejections of claims 1, 2, 9, and 10 under 35 U.S.C. § 102(b) are reversed. REVERSED