Ex Parte Lawlor et al

Patent Trials and Appeals Board

May 29, 2018

14149551 - (D) (P.T.A.B. May. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/149,551 01107/2014
10800 7590 05/29/2018
Maginot, Moore & Beck LLP
One Indiana Square, Suite 2200
Indianapolis, IN 46204
FIRST NAMED INVENTOR
Michael J. Lawlor
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.
1576-0769CNT1 1752
EXAMINER
LEE, LAURA MICHELLE
ART UNIT PAPER NUMBER
3724
MAILDATE DELIVERY MODE
05/29/2018 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 MICHAEL J. LAWLOR and JUERGEN WIKER 1
Appeal2017-008230
Application 14/149,551
Technology Center 3700
Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
BRANDON J. WARNER, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1, 2, 6-8, and 11-14. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants are the Applicants, Robert Bosch Tool Corporation and Robert
Bosch GmbH, which, according to the Appeal Brief, are the real parties in
interest. Br. 2.
Appeal2017-008230
Application 14/149,551
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A miter saw, comprising:
a base;
a turntable rotatable m relation to said base and
including a work piece support surface that lies in a first
plane;
a support assembly attached to said turntable;
a saw assembly attached to said support assembly and
configured to cut a work piece supported on said turntable;
and
a fence assembly including (i) an elongate fence body
supported by said base and positioned over said turntable,
said fence body defining a second plane that is perpendicular
to said first plane and having a first connecting structure, and
(ii) a fence insert supported on top of said elongate fence
body, said fence insert defining an elongate work piece
abutment surface and having a second connecting structure
operably coupled to said first connecting structure, said
elongate work piece abutment surface lying in a third plane
that is perpendicular to the first plane,
wherein (i) said fence assembly is positionable in a first
configuration and a second configuration, (ii) when said fence
assembly is positioned in said first configuration, said second
connecting structure cooperates with said first connecting
structure to secure said fence insert at a first position in
relation to said fence body, and (iii) when said fence assembly
is positioned in said second configuration, said second
connecting structure cooperates with said first connecting
structure to secure said fence insert at a second position in
relation to said fence body, and
wherein, when said fence insert is secured at said first
position, said elongate work piece abutment surface is
arranged such that said third plane is parallel to said second
plane and offset a first distance from said second plane,
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Application 14/149,551
wherein, when said fence insert is secured at said
second position, said elongate work piece abutment surface is
arranged such that said third plane is parallel to said second
plane and offset a second distance from said second plane,
and
wherein said second distance is not equal to said first
distance.
REJECTIONS 2
I. Claims 1, 2, 6, 7, 12, and 13 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Chang (US 5,855,366, iss. Jan. 5,
1999).
II. Claims 8 and 11 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Chang, Billings (US 2009/0095141 Al, pub.
Apr. 16, 2009), and Itzov (US 5,829,333, iss. Nov. 3, 1998).
III. Claims 1, 2, 6, 7, and 14 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Duginske (US 5,768,966, iss. June
23, 1998) or, in the alternative, under 35 U.S.C. § 103(a) as
unpatentable over Duginske and Itzov.
IV. Claims 8 and 11 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Duginske and Itzov.
2 \Ve note that the Non-Final Office Action (dated Nov. 3, 2015) includes a
rejection of claims 1, 2, 6-8, and 11-14 on the ground of obviousness-type
double patenting over claims 1----6 of U.S. Patent No. 8,621,970. See Non-
Final Act. 3. However, .Appellants subsequently filed a terminal disclaimer,
which was approved on December 27, 2016, rendering the rejection moot.
Thus, the obviousness-type double patenting rejection is not before us for
review.
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Application 14/149,551
Claims 1, 2, 6, and 7:
DISCUSSION
Rejection I
The Examiner finds that Chang teaches every limitation of
independent claim 1, including, in relevant part,
wherein, when said fence insert (30) is secured at said first
position (fig. 4), said elongate work piece abutment surface
(trapezoidal cutout shown in Figures 2 and 3) is arranged such
that said third plane is parallel to said second plane and offset a
first distance from said second plane, wherein, when said fence
insert is secured at said second position (fig. 5), said elongate
work piece abutment surface (trapezoidal cutout shown in
Figures 2 and 3) is arranged such that said third plane is parallel
to said second plane and offset a second distance from said
second plane, and wherein said second distance is not equal to
said first distance (as the extension plate is rotated about pin 35;
see figs. 4 and 5; the trapezoidal cutout flips from facing towards
the user to facing away from the user).
Non-Final Act. 5. The Examiner clarifies that Chang's
plate 30 has a recessed surface as indicated which is offset from
the outermost surface of the plate, which defines the second
plane as visible in Figure 3. When the plate 30 is positioned as
shown in Figures 2 and 4, the surface is located away from the
second plane at a distance equal to the offset, as also depicted in
Figure 3 . . . . When the plate is at a position as shown in Figure
5, plate 30 has been rotated about the pin 35 such that the offset
surface is facing away from the [work piece] on the backside of
the plate 30. It is distanced from the face of the fence (the second
plane) by the thickness of the plate 3 0 minus the distance of the
offset. Therefore, the offset surface is located in a third plane
which is positionable in two secured locations (Figs. 4 and 5)
where the third plane is located at two different distances offset
from the second plane of the front face of the fence.
Ans. 11-12.
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Application 14/149,551
Appellants argue that the Examiner's findings as to the disclosure of
Chang are in error because "the surface of the extension plate 30 that serves
as the [work piece] abutment surface in the first position (FIG. 4 of Chang)
is not used to abut the [work piece] in the second position (FIG. 5 of Chang)
and vice versa." Br. 6. Appellants assert that, "[i]n both FIGS. 4 and 5, the
surface of the extension plate 30 that is arranged facing toward a [work
piece] supported on the table and is in a position to abut the [work piece] is
the [work piece] abutment surface for that fence position." Id. According to
Appellants, "the [work piece] abutment surface, or the plane in which the
[work piece] abutment surface lies, is in the same position with respect to
the plane defined by the fence body 20 in both the first position and the
second position." Id. at 7.
Appellants' arguments are not persuasive. In particular, the
arguments do not identify error in the Examiner's interpretation that, when
Chang's extension plate 30 is in its second position, as shown in Figure 5,
the recessed trapezoidal surface of the back side of the extension plate
constitutes a work piece abutment surface. See Non-Final Act 5; Ans. 11-
13. Although we appreciate Appellants' observation that, when Chang's
extension plate 30 is in the second position (i.e., as depicted in Figure 5), the
back side surface of the extension plate may not be used to actually abut a
work piece (see Br. 6), we agree with the Examiner that claim 1 does not
include any language requiring that the "work piece abutment surface"
actually abut the work piece in both first and second fence insert positions
(see Ans. 12-13 (explaining that "there is no claim language that states that
the [work piece] must be abutting or capable of abutting the surface in both
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Application 14/149,551
the first and second position while the [work piece] is being cut")).
See In re Self, 671F.2d1344, 1348 (CCPA 1982) (noting that it is well
established that limitations not appearing in the claims cannot be relied upon
for patentability). In other words, the claim does not preclude the
Examiner's, broad, but reasonable, interpretation of the back side of
extension plate 30, as shown in Figure 5 of Chang, being the work piece
abutment surface when the extension plate is in the second position. In
addition, the Examiner takes the position that "the [work piece] would just
need to be capable of abutting the surface during any manipulation of the
[work piece]; during cutting, during storage, at rest, etc.," and "[a work
piece] would be capable of being positioned to abut the indicated surface [of
Chang] with the plate 30 in a position as shown in Figures 2 and 4." Ans.
12-13. Appellants do not specifically address this position or persuasively
explain why it is in error.
For the above reasons, Appellants fail to apprise us of error in the
Examiner's finding that Chang anticipates the subject matter of claim 1.
Accordingly, we sustain the rejection of claim 1, and its dependent claims 2,
6, and 7, for which Appellants rely on the same arguments (see Br. 7), under
35 U.S.C. § 102(b) as anticipated by Chang.
Claims 12 and 13:
In rejecting claim 12, which depends from claim 1, the Examiner
finds that "Chang discloses said elongate work piece abutment surface
defines a lower edge (lower edge of the trapezoidal cutout shown in Figures
2 and 3)." Non-Final Act. 6. The Examiner finds that the "lower edge of
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Application 14/149,551
said elongate work piece abutment surface is positioned at (is capable of
being positioned at) a second vertical height above said work piece support
surface of said turntable (e.g. by holding the insert by hand or by setting a[ n]
object underneath the plate 30)." Id. The Examiner clarifies that Chang's
"plate 30 is capable of being slightly lifted and/or pivoted about bolt 371 to
change the height of the bottom edge relative to the edge as shown in Figure
4 while still maintaining the plate 30 in a secured position." Ans. 13-14.
In addition to relying on the unpersuasive arguments presented for
claim 1 (see Br. 7), Appellants also assert that "Chang does not disclose or
suggest a fence assembly in which the lower edge of the fence insert is
positioned at different heights relative to the table surface when in the first
and second position" (id. at 8). This argument is unpersuasive because it
does not specifically address or point out error in the Examiner's findings as
presented in the rejection and clarified in the Answer. Other than the bald
assertion that "the Examiner's explanation found on page 6 of the Office
Action is unclear and not clearly articulated" (id.), Appellants do not point
out where the Examiner's articulated findings and explanation as to the
disclosure of Chang are deficient (see id., passim). In particular, Appellants
do not specifically contest the Examiner's finding that Chang's extension
plate 30 is capable of being lifted so as to change the height of the lower
edge of the trapezoidal recessed surface. See Non-Final Act. 6; Ans. 13-14.
For the above reasons, Appellants do not apprise us of error in the
Examiner's finding that Chang anticipates the subject matter of claim 12.
Accordingly, we sustain the rejection of claim 12, and its dependent claim
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13, for which Appellants rely on the same argument (see Br. 7), as
anticipated by Chang.
Rejection II
In contesting the rejection of dependent claims 8 and 11 under
35 U.S.C. § 103(a) as unpatentable over Chang, Billings, and Itzov,
Appellants rely on the arguments presented for patentability of claim 1,
subject to Rejection I. See id. at 8 (stating, "Billings does not cure the
deficiencies of Chang with respect to claim 1"). 3 For the reasons discussed
above, Appellants' arguments do not apprise us of error in Rejection I, and
likewise do not apprise us of error in Rejection II, which we sustain.
Rejection III
In the alternative rejection of independent claim 1, the Examiner finds
that Duginske discloses, in relevant part, "a fence insert (56) supported on
top of said elongate fence body (F/200; see fig. 13), said fence insert (56)
defining an elongate work piece abutment surface (front of 10)." Non-Final
Act. 9. The Examiner clarifies that the front surface of Duginske' s stop
56/10 represents a work piece abutment surface, and this surface is in a third
plane that is offset from fence front 220, which is in a second plane. See
Ans. 15 (including an annotated reproduction of Fig. 1 of Duginske ).
3 We note that, although the Examiner includes Itzov in the statement of the
rejection, the Examiner does not mention Itzov in the detailed explanation of
the rejection. See Non-Final Act. 7-8.
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Appellants argue that that "it is unreasonable to interpret the front
surface of the stop 56 as a [work piece] abutment surface." Br. 9. In
particular, Appellants assert that "there is no disclosure or suggestion in
Duginske that the front surface of the stop 56 is used to abut a [work piece]
or intended to abut or touch a [work piece] in any way." Id. According to
Appellants, "the front surface of the stop 56 is much too narrow to be useful
as a [work piece] abutment surface for a saw fence." Id. This argument is
not convincing. In finding that Duginske teaches a work piece abutment
surface, the Examiner takes the position that "[a work piece] would be
capable of being positioned to abut the indicated surface with the stop 56/10
in a position as shown in Figure[] 12 [ofDuginske]." Ans. 16; see also id.
(explaining that "the [work piece] would just need to be capable of abutting
the surface during any manipulation of the [work piece]; during cutting,
during storage, at rest, etc."). In this regard, Appellants do not identify error
in the Examiner's finding that the front surface of stop 56/10 is capable of
being used to abut a work piece as claimed. Although Appellants assert that
the front surface of stop 56/10 is too narrow to be used as a work piece
abutment surface (see Br. 9), Appellants do not offer any evidence to
support this position. In this regard, Appellants' assertion amounts to
nothing more than attorney argument unsupported by evidence, and, thus, is
entitled to little, if any, weight. In re Geisler, 116 F.3d 1465, 1470 (Fed.
Cir. 1997); see also In re Pearson, 494F.2d1399, 1405(CCPA1974) (An
attorney's arguments in a brief cannot take the place of evidence.).
Appellants also argue that, even if the front surface of Duginske' s stop
56/10 could be considered a work piece abutment surface, "Duginske does
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not disclose or suggest that the [work piece] abutment surface is offset a first
distance from the plane of the fence body in a first position and offset a
second distance from the plane of the fence body in a second position."
Br. 10. According to Appellants,
FIGS. 2 and 3 [of Duginske] highlight another use of the stop 56
which is to hold an auxiliary wood fence to the front of the track
200. In FIG. 2, the auxiliary wood fence is the fence body
whereas in FIG. 3 the track 200 is the fence body. In both cases,
the front surface of the stop 56 is the same distance from the
plane defined by fence body.
Id. This argument is unpersuasive. Although Figure 2 of Duginske depicts
the use of auxiliary wood fence 224 between track 200 and stop 56,
Appellants' arguments do not identify error in the Examiner's findings as
presented in the rejection. As discussed above, the Examiner finds that
Duginske's track 200 represents the fence body that defines the second
plane, and the front surface of stop 56 represents the work piece abutment
surface defining a third plane that is offset from the second plane. See Non-
Final Act. 9; Ans. 15. The Examiner explains that Figures 2 and 3 of
Duginske show that "[t ]he [work piece] abutment surface is positionable in
two different positions, in slots 210 and 212, wherein the plane of the [work
piece] abutment surface would thereby be offset at two different locations
from the [second] plane defined by the face of the fence." Ans. 15. In this
regard, Appellants do not persuasively refute the Examiner's interpretation
that Duginske's track 200 represents the fence body (i.e., the second plane),
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Application 14/149,551
from which the outer surface of stop 56 (i.e., the third plane) is offset by
different amounts, 4 as depicted in Figures 2 and 3.
For the above reasons, Appellants' arguments do not apprise us of
error in the Examiner's finding that Duginske anticipates the subject matter
of claim 1, which is supported by a preponderance of the evidence.
Accordingly, we sustain the rejection of claim 1, as well as dependent claims
2, 6, 7 and 14, for which Appellants rely on the same arguments (see Br. 11 ),
under 35 U.S.C. § 102(b) as anticipated by Duginske or, in the alternative,
under 35 U.S.C. § 103(a) as unpatentable over Duginske and Itzov.
Rejection IV
In contesting the rejection of dependent claims 8 and 11 under
35 U.S.C. § 103(a) as unpatentable over Duginske and Itzov, Appellants rely
on the arguments presented for patentability of claim 1, subject to Rejection
III. See id. For the reasons discussed above, Appellants' arguments do not
apprise us of error in Rejection III, and likewise do not apprise us of error in
Rejection IV, which we sustain.
DECISION
The Examiner's decision rejecting claims 1, 2, 6, 7, 12, and 13 under
35 U.S.C. § 102(b) as anticipated by Chang is AFFIRMED.
4 Figure 3 of Duginske depicts the front surface of flip stop 10 offset from
the front surface 220 of track 200 by the thickness of flip stop 10, whereas
Figure 2 depicts the front surface of flip stop 10 offset from front surface
220 of track 200 by the thickness of flip stop 10 plus the thickness of
auxiliary wood fence 224. Compare Duginske, Fig. 3, with id., Fig. 2.
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The Examiner's decision rejecting claims 8 and 11 under 35 U.S.C.
§ 103(a) as unpatentable over Chang, Billings, and Itzov is AFFIRMED.
The Examiner's decision rejecting claims 1, 2, 6, 7 and 14 under
35 U.S.C. § 102(b) as anticipated by Duginske or, in the alternative, under
35 U.S.C. § 103(a) as unpatentable over Duginske and Itzov is AFFIRMED.
The Examiner's decision rejecting claims 8 and 11 under 35 U.S.C.
§ 103(a) as unpatentable over Duginske and Itzov 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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