Ex Parte Nicolantonio et al

Patent Trial and Appeal BoardDec 12, 2012

10959796 (P.T.A.B. Dec. 12, 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. 10/959,796 10/06/2004 Aldo Di Nicolantonio 3116 2342 7590 12/12/2012 STRIKER, STRIKER & STENBY 103 EAST NECK ROAD HUNTINGTON, NY 11743 EXAMINER WEEKS, GLORIA R ART UNIT PAPER NUMBER 3721 MAIL DATE DELIVERY MODE 12/12/2012 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 ALDO DI NICOLANTONIO, ROBERT SIMM, CHRISTIAN HEINE, and SIMON ISCH ____________________ Appeal 2010-011917 Application 10/959,796 Technology Center 3700 ____________________ Before: JOHN C. KERINS, SCOTT E. KAMHOLZ, and MITCHELL G. WEATHERLY, Administrative Patent Judges. KAMHOLZ, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-011917 Application 10/959,796 2 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134(a) from the decision of the Examiner to reject claims 1, 4, and 6-12 under 35 U.S.C. § 102(b) for anticipation by Andersson (US 4,421,181; iss. Dec. 20, 1983). We have jurisdiction under 35 U.S.C. § 6(b). We reverse. THE CLAIMED SUBJECT MATTER The claimed subject matter is directed to an auxiliary handle for a hand power tool. Claim 1, reproduced below (with emphasis added), is representative of the claimed subject matter: 1. An auxiliary handle for a motor-driven hand tool, comprising a mounting device which forms an upper region and provides a force-transmitting and/or form-locking connection to said hand tool; a handle forming a lower region and having a longitudinal central axis; a damping element forming an intermediate region and located at least locally between said mounting device and said handle in an axial direction, said damping element having a damping material with which, during an operation of said hand tool, it dampens vibrations transmitted through said mounting device to said handle, said damping element having at least one reinforcing region in its damping region acting for damping said vibrations that has a lower deformability than a remaining part of said damping region and during deviations of said handle in at least two different directions relative to said mounting device causes differently great elastic counter forces, wherein when considered along an axis extending parallel to a working direction of the hand tool, one reinforcing Appeal 2010-011917 Application 10/959,796 3 region is arranged forwardly and one reinforcing region is arranged rearwardly to said longitudinal central axis of said handle and the remaining part of said damping region has a higher deformability than said reinforcing regions, with said one forwardly arranged reinforcing region and said one rearwardly arranged reinforcing region spaced from one another circumferentially around such longitudinal central axis of said handle, and said remaining part of said damping region being located between said one forwardly arranged reinforcing region and said one rearwardly arranged reinforcing region as considered in a circumferential direction around said central longitudinal axis such that a deviation of said handle in said working direction counteracts a greater counter force than a deviation of said handle in a lateral direction transversely to said working direction. ANALYSIS In response to the Examiner’s finding that Andersson discloses all limitations of claim 1 in the claimed arrangement (Ans. 3-5), Appellants argue, among other things, that Andersson fails to disclose “a damping element forming an intermediate region and located at least locally between said mounting device and said handle in an axial direction.” Reply Br. 2. Instead, Appellants argue, Andersson’s damping elements “are located between the handle and the mounting device in a radial direction.” Id. We agree with Appellants that Andersson fails to disclose this feature of claim 1. In the explanation of the rejection, the Examiner stated merely that Andersson’s “damping element 16-19 form[s] an intermediate region that extends axially between the mounting device 21 and the handle 20 (figure 6).” Ans. 3. The claim limitation “in an axial direction” as used in Appeal 2010-011917 Application 10/959,796 4 the “damping element” limitation quoted above is reasonably construed in light of Appellants’ disclosure as meaning “along the longitudinal central axis of the handle.” Each of the figures in Appellants’ Specification shows that the damping element 4 is located at least locally between the mounting device 2 and the handle 3 along the longitudinal central axis of the handle. Andersson’s damping element (bladders 16-19), as Appellants note, is located between the mounting device (handle 21) and the handle (grip 20) along a radial direction. This arrangement can be seen in the Examiner’s annotated copy of Andersson’s Figure 6 on page 4 of the Answer, in which the central axis is marked by a dot to indicate that it extends into the paper. The bladders are not “located at least locally between” the mounting device and the handle as reckoned along the longitudinal central axis. As Andersson lacks this feature, the anticipation rejection cannot stand. DECISION For the above reasons, the Examiner’s decision to reject claims 1, 4, and 6-12 is REVERSED. REVERSED Klh