Ex Parte Meixner

Patent Trial and Appeal BoardNov 14, 2012

11911386 (P.T.A.B. Nov. 14, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE _________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _________________ Ex parte GERHARD MEIXNER _________________ Appeal 2010-009526 Application 11/911,386 Technology Center 3700 _________________ Before KEN B. BARRETT, PHILLIP J. KAUFFMAN, and BARRY GROSSMAN, Administrative Patent Judges. GROSSMAN, Administrative Patent Judge DECISION ON APPEAL Appeal 2010-009526 Application 11/911,386 2 STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134 involving claims to a hand- held power tool. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM the rejection of claims 1-10. THE INVENTION The disclosed invention is a hand-held power tool which has a rotation axis of a transmission element oriented diagonally to the working axis of the tool, and wherein the orientation of the working axis of the tool is unchangeable relative to the housing of the tool, the handle of the tool, and at least one transmission element. Spec. 1:11-26. Claim 1, the only independent claim, is illustrative of the claimed subject matter and is reproduced below: 1. A hand-held power tool, comprising: a motor unit (10a; 10b; 10c); a housing; a handle; a transmission unit (12a; 12b; 12c); and a working axis (14a; 14b; 14c), wherein at least one transmission element (16a, 18a, 20a; 16b, 18b, 2Gb; 18c) of the transmission unit (12a; 12b; 12c) has a rotation axis (22a, 24a; 22b, 24b; 24c) that is oriented diagonally to the working axis (14a; 14b; 14c), and wherein an orientation of the working axis (14a; 14b; 14c) is unchangeable relative to the housing, the handle and the at least one transmission element of said hand- held power tool. Appeal 2010-009526 Application 11/911,386 3 THE CLAIMS ON APPEAL There is confusion in the record as to the claims that are before us. Accordingly, we address this issue first. We hold that the rejection of claims 1-10 is on appeal. Claims 11 and 12 are not before us. The application was filed with claims 1-10. Claims 11 and 12 were added by the amendment of July 6, 2009. In the Office Action mailed October 30, 2009, a Final Rejection, which was in response to the July 6 amendment, the Examiner never examined, rejected, objected to, or mentioned claims 11 and 12. The Final Rejection only references claims 1- 10. Appellant notes this in the Appeal Brief. Br. 3. The Examiner’s Answer did not comment on claims 11 and 12. Based on the fact that claims 11 and 12 have never been rejected, they are not before us. We review the grounds of rejection to be reviewed on appeal listed by Appellant. Br. 4. THE REJECTIONS Claims 1 and 3-6 are rejected under 35 U.S.C. § 102(b) as anticipated by Barth (US 5,533,581, iss. Jul. 9, 1996). Claims 1-8 and 10 are rejected under 35 U.S.C. § 103(a) over Deliot (US 2,873,735, iss. Feb. 17, 1959) in view of Barth. Claim 9 is rejected under 35 U.S.C. § 103(a) over Deliot Appeal 2010-009526 Application 11/911,386 4 and Barth, and further in view of Cecchin (US 7,048,076 B2, iss. May 23, 2006). ANALYSIS The Rejection of Claims 1 and 3-6 Under 35 U.S.C. § 102(b) Appellant argues the rejection of claims 1 and 3-6 under 35 U.S.C. § 102(b) as a group (Br. 4-6), and we select independent claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(vii)(2011). Accordingly, claims 3-6 stand or fall with claim 1. The Examiner’s determination of anticipation relies in part on the finding that the working axis in Barth is “unchangeable.” Ans. 3, 6. Appellant argues that the working axis in Barth is not “unchangeable.” See Br. 5-6. The issue before us is whether Barth discloses a working axis that is “unchangeable” as called for in independent claim 1. Appellant argues that the structure disclosed in Barth “is manually changeable relative to a main [part] of a machine housing, in particular, relative to a handle 11.” Br. 5. Appellant also argues that an “important distinction of the present invention with regard to Barth is that the relative orientation of the working axis to the housing, the handle, and the motor shaft is unchangeable.” Id. The Examiner found that “an orientation of the working axis is unchangeable relative to the housing, the handle and the at least one transmission element of the hand-held power tool as shown in the Appeal 2010-009526 Application 11/911,386 5 embodiments of Figures 1-2 and 6-9.” Ans. 3. The Examiner stated that the orientation of the working axis is “unchangeable” when “the tool is in operation.” Ans. 6. In the Final Rejection, mailed October 30, 2009, the Examiner found that “[i]n a chosen orientation, [the] working axis [of Barth] is unchangeable.” Final Rej. 5. The pending claims must be given their broadest reasonable interpretation consistent with the specification as it would be interpreted by a person of ordinary skill in the art. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The Appellant has not pointed to anything in the Specification that provides any guidance or specific meaning of the term “unchangeable” as used in claim 1. See Br. 4, Summary of Claimed Subject Matter, (identifying Spec. 5:1-17 as relating to this limitation). The Examiner’s finding of anticipation is based on a claim interpretation that “unchangeable” encompasses certain situations where the working axis is unchangeable. Ans. 6. We determine that this is a reasonable interpretation of the claim and consistent with the record in this case. Appellant has not persuaded us that the Examiner’s finding that the working axis of Barth is unchangeable in certain situations is in error. See also Barth, col. 4, ll. 63-67 (disclosing that the two housing parts “are locked together so as to be fixed” with respect to rotation relative to one another in every angular position.) Appeal 2010-009526 Application 11/911,386 6 Accordingly, we affirm the rejection of claims 1 and 3-6 under 35 U.S.C. § 102(b). The Rejection of Claims 1-8 and 10 Under 35 U.S.C. § 103(a) Appellant argues the rejection of claims 1-8 and 10 as a group (Br. 6- 7), and we select independent claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(vii)(2011). Accordingly, Claims 2-8 and 10 stand or fall with claim 1. Appellant states that the rotation axis of the transmission element in Deliot is arranged perpendicularly and not diagonally to the working axis (Br. 6), a point already conceded by the Examiner. Ans. 4 (“Deliot fails to disclose rotation axis oriented diagonally to the working axis of the tool.”) The Examiner correctly found that Barth teaches a transmission element with an axis oriented diagonally to the working axis. Ans. 3 (citing element 17 as shown in Barth’s figure 1 or 2); see also id. at 4. Appellant then argues that: the practitioner could not be lead to the present invention by combining the subject matter of Barth with Deliot, since as argued above, Barth discloses a hand-held power tool with a tool spindle or working axis whose orientation is changeable relative to the handle. Br. 6 (emphasis added). We find the Appellant’s argument, which relies on the position that Barth provides a “changeable” orientation of the axes, unpersuasive for the reasons discussed above. Appeal 2010-009526 Application 11/911,386 7 Appellant also argues that the “practitioner would obtain no teaching or direction from Deliot to modify Barth.” (Br. 6). When considering obviousness of a combination of known elements, the basis of the combination is not limited to an applied reference. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417-418 (2007). Often, it will be necessary for a court to look to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent [application] at issue. Id. at 418. Here, the rationale provided by the Examiner for combining Deliot and Barth is that such a combination would reduce total weight or mass of the hammer (Ans. 4). Appellant has not pointed to any evidence to indicate any error in the Examiner’s conclusion of obviousness. Accordingly, we affirm the rejection of claims 1-8 and 10 under 35 U.S.C. § 103(a). The Rejection of Claim 91 Under 35 U.S.C. § 103(a) Appellant argues that neither Deliot nor Barth disclose that an orientation of the working axis is “unchangeable” and that “the third 1 Appellant’s argument refers repeatedly to “claim 6” when arguing the rejection based on the Cecchin reference. Br. 7. We understand this to be a typographical error, since it is claim 9, not claim 6, which is rejected based on Barth, Deliot, and Cecchin. It is clear to us from the context that Appellant intended to argue claim 9, not claim 6. Appeal 2010-009526 Application 11/911,386 8 reference to Cecchin does not disclose this feature.” Br. 7. Appellant’s sole allegation of error by the Examiner is the unchangeable nature of the axis as called for in the claims. We find Appellant’s argument unpersuasive for the reasons previously stated in this decision. Accordingly, we affirm the rejection of claim 9 under 35 U.S.C. § 103(a). SUMMARY We affirm the rejection of claims 1 and 3-6 under 35 U.S.C. § 102(b). We affirm the rejection of claims 1-8 and 10 under 35 U.S.C. § 103(a). We affirm the rejection of claim 9 under 35 U.S.C. § 103(a). 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)(1)(iv). AFFIRMED mls