Ex Parte Ogawa et alDownload PDFPatent Trial and Appeal BoardSep 24, 201210564761 (P.T.A.B. Sep. 24, 2012) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte TATSUSHI OGAWA, NORIMITSU SEKIGUCHI, and HIROKI YAMAMOTO ____________ Appeal 2010-006895 Application 10/564,761 Technology Center 3700 ____________ Before STEFAN STAICOVICI, JAMES P. CALVE, and SCOTT A. DANIELS, Administrative Patent Judges. CALVE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from the rejection of claims 1 and 3-21. App. Br. 2. Claim 2 has been cancelled. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. Appeal 2010-006895 Application 10/564,761 2 CLAIMED SUBJECT MATTER Claim 1 is illustrative of the claimed subject matter on appeal: 1. A power-driven nailing machine comprising: a driving cylinder; a driving piston slidably housed within the driving cylinder; a driver coupled with the driving piston; a nose body having a lower end with a nail discharge port; and a contact nose arranged to be protrusively urged toward a leading end of the nose body, the contact nose having an upper end and a leading end, including a cylindrical portion formed at its upper portion such that the cylindrical portion defines a circular cylindrical bore having a longitudinal axis and a substantially uniform cross section transverse to the longitudinal axis, the circular cylindrical bore extending from an interior of the contact nose to an upper end surface substantially transverse to the longitudinal axis of the upper end, the nose body being housed in the circular cylindrical bore such that the contact nose is held slidably along the nail discharge port of the nose body, wherein the contact nose includes a leading end discharge port for guiding a nail driven from the leading end discharge port toward a work, and the leading end discharge port includes a guide portion longer than the nail. REJECTIONS Claims 1 and 3-7 are rejected under 35 U.S.C. § 112, second paragraph, as being indefinite. Claims 1 and 3-21 are rejected under 35 U.S.C. § 102(b) as being anticipated by Kubo (JP 2002337066; pub. Nov. 26, 2002).1 1 Corresponds to Kubo (US 6,578,750 B2; iss. Jun. 17, 2003). See Ans. 3. Appeal 2010-006895 Application 10/564,761 3 ANALYSIS Claims 1 and 3-7 as indefinite The Examiner found that the term “circular cylindrical bore” in claim 1 is indefinite because it is unclear how the circular cylindrical bore extends from an interior of the contact nose to an upper end surface substantially transverse to the longitudinal axis of the upper end. Ans. 3. The Examiner also found that it is difficult to discern what is meant by an interior of the contact nose and also is unclear how the cylindrical area extends from an interior of the contact nose because it appears that no element extends from an interior of the contact nose. Ans. 7. We agree with Appellants that a skilled artisan would understand what is claimed when claim 1 is read in light of Appellants’ Specification, which discloses a nailing machine with a contact nose 13 with a cylindrical portion at its upper portion and the cylindrical portion defines a circular cylindrical bore 13a that extends longitudinally from an interior of the contact nose to an upper end surface that is transverse to the longitudinal axis of the contact nose. See Spec. 8, l. 22 to 9, l. 3; figs. 1-4; Reply Br. 2. As such, we cannot sustain the rejection of claims 1 and 3-7 as indefinite. Claims 1 and 3-21 as anticipated by Kubo Claims 1 and 3-7 The Examiner found that Kubo discloses a nailing machine as recited in claim 1 with a nose body 26 having a lower end with a nail discharge port 25 and a contact nose 34 urged towards a leading end of the nose body 26. Ans. 3. The Examiner also found that Kubo discloses a contact nose 34 with an upper end having a cylindrical portion that defines a circular cylindrical bore with a longitudinal axis and a substantially uniform cross section such App App that nose roun cons Ans. Figu surfa anno and r inclu subs the n cont 2 The num eal 2010-0 lication 10 the nose b 34. Id. T d closed-lo idered “cir 7. The Ex re 6 of Ku ce). Id. T tated illus eproduced Figure 6 We agre ding a cyl tantially un ose body act nose th Examine eral “37” w 06895 /564,761 ody 26 is h he Examin op portion cular” eve aminer al bo clearly he Exami tration of F below. shows no e with App indrical po iform cro is housed i at is labele r’s mark-u hich deno oused in t er also fo having a n if it doe so found t shows a u ner’s findi igure 6 of se body 26 ellants th rtion that ss section n the circu d as “Uni p of Figur tes the co 4 he circular und that K uniform c s not form hat the por niform cro ngs are be Kubo pro within “U at Kubo do defines a c transverse lar cylind form cross e 6 appear ntact nose cylindric ubo’s con ross sectio an absolu tion of the ss section st understo vided at p pper end” es not dis ircular cy to the lon rical bore. section” d s to have e top. Col. al bore of tact nose d n that can te perfect c bore desi of the bor od from t age 5 of th of contac close a con lindrical b gitudinal a The porti oes not ho rased the 5, ll. 8-14 the contac efines a be ircle. gnated in e (inside he e Answer t nose 37.2 tact nose ore with a xis where on of the use any “3” in the . t Appeal 2010-006895 Application 10/564,761 5 portion of the nose body 26. Instead, nose body 26 is housed within the “Upper end” of the contact nose that includes a ramped escape portion 45, the cross section of which increases along the contact nose 37 until the ramped portion ends in an open portion. The Examiner’s interpretation of the term “circular” as encompassing such a configuration is unreasonably broad and inconsistent with Appellants’ Specification, which discloses that the upper portion of the contact nose 13 has a cylindrical area 13a with a large diameter formed therein to accommodate the lower end of the nose body 6 in the cylindrical area 13a. Spec. 8, l. 22 to 9, l. 3; figs. 2-5. As such, we cannot sustain the rejection of claims 1 and 3-7. Claims 8-21 The Examiner found that Kubo discloses a nailer with a nose body 26 and a contact nose having a hollow member with proximal and distal ends where the end of the nose body 26 is “circumferentially received within the proximal end of the hollow member” of the contact nose and the contact nose circumferentially surrounds the nose body 26. Ans. 4, 8. Appellants argue claims 8-16 and 18-21 as a group and separately argue claim 17. App. Br. 8-10. We select claim 8 as representative and address Appellants’ arguments as to claim 17. Appellants argue that Kubo fails to disclose a nose body that is circumferentially received within the proximal end of a hollow member of the contact nose because the proximal end of hollow member 45 does not surround the nose body 26. App. Br. 9. We agree with the Examiner that Kubo discloses a nose body 26 with a fourth end (distal end of nose body 26 as shown in Figure 6 of Kubo) that is circumferentially received within the proximal end of the hollow member App App of th by le recei in Fi the h bore circu Exam agre C-sh cann 5, wh The nose the e such 3 An perim obje (11th eal 2010-0 lication 10 e contact n ad line 45 ves the fou gure 6. W Claim 17 ollow mem defined by mferentia iner foun e with App aped cross ot be cons ich is rep Figure 5 contact no portion 26 scape port , we canno ordinary, eter of a ct” “periph ed. 2005) 06895 /564,761 ose as cal in Figure rth end o e sustain t depends ber of th the inner lly receive d that Kub ellants tha -section w idered “cir roduced be is a sectio se top 37 i to have a ion 45 of t t sustain t customary circle” or “ ery”. See . led for in c 6 forms a f the nose he rejectio from claim e contact n surface an d within th o disclose t the prox ith guide cular”. K low: nal view o s configur nail-picku he upper c he rejectio meaning the extern MERRIAM 6 laim 8.3 T hollow me portion 26 n of claim 8 and rec ose compr d the four e first circ s this featu imal end o grooves 43 ubo illustr f the cont ed this wa p inclined ontact nos n of claim of “circum al bounda -WEBSTER he rampe mber that (i.e., the d s 8-16 and ites that th ises “a fir th end of t ular cylin re. Ans. f the conta and an es ates this ar act mechan y to allow surface 4 e 37. Col 17. ference” i ry or surfa ’S COLLEG d portion d circumfer istal end) 18-21. e proxima st circular he nose bo drical bore 5 (citing F ct nose 37 cape porti rangemen ism of Ku the lower 4 and pass . 5, ll. 39-5 ncludes “t ce of a fig IATE® DIC esignated entially as shown l end of cylindrica dy is .” The ig. 1). We forms a on 45 and t at Figure bo. side of the through 0. As he ure or TIONARY l Appeal 2010-006895 Application 10/564,761 7 DECISION We REVERSE the rejection of claims 1 and 3-7 as indefinite. We AFFIRM the prior art rejection of claims 8-16 and 18-21 and REVERSE the prior art rejection of claims 1, 3-7, and 17. AFFIRMED-IN-PART Klh Copy with citationCopy as parenthetical citation