Ex Parte Pedersen

Patent Trial and Appeal BoardSep 17, 2018

13695028 (P.T.A.B. Sep. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/695,028 01/22/2013 23280 7590 09/19/2018 Davidson, Davidson & Kappel, LLC 589 8th A venue 16th Floor New York, NY 10018 FIRST NAMED INVENTOR Troels Pedersen 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. 5068.1118 1025 EXAMINER TECCO, ANDREW M ART UNIT PAPER NUMBER 3721 NOTIFICATION DATE DELIVERY MODE 09/19/2018 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): ddk@ddkpatent.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TROELS PEDERSEN Appeal 2017-011387 1 Application 13/695,0282 Technology Center 3700 Before HUBERT C. LORIN, NINA L. MEDLOCK, and BRADLEY B. BAY AT, Administrative Patent Judges. MEDLOCK, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. Â§ 134(a) from the Examiner's final rejection of claims 16-23 and 27-31. We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM-IN-PART. 1 Our decision references Appellant's Appeal Brief ("App. Br.," filed May 8, 2017) and Reply Brief ("Reply Br.," filed September 8, 2017), and the Examiner's Answer ("Ans.," mailed July 11, 2017) and Final Office Action ("Final Act.," mailed August 11, 2016). 2 Appellant identifies Hilti Aktiengesellschaft as the real party in interest. App. Br. 2. Appeal 2017-011387 Application 13/695,028 CLAIMED INVENTION Appellant's claimed "invention relates to a power tool with a gear which is controllable and thereby provides changes in the mechanical advantage between an input and an output shaft" (Spec. ,r 1 ). Claims 16 and 31 are the independent claims on appeal. Claim 16, reproduced below, is illustrative of the claimed subject matter: 16. A power tool comprising: a frame; a motor; a rotor rotatable relative to the frame by the motor and capable of manipulating a tool; a transmission for transmitting power between the motor and the rotor, the transmission comprising : at least two internally driven annulus gears, including a primary annulus gear and a secondary annulus gear, an externally driven sun gear, a planet carrier, and at least one planet wheel carried by the planet carrier and arranged to transfer torque between the sun gear and one of the annulus gears; wherein each annulus gear, the sun gear and the planet carrier are rotatable concentrically around a central axis, each planet wheel rotatable epicyclically around the central axis, and each planet wheel comprising at least two concentrically joined gear wheels; and a gear change structure allowing shifting between at least a first and a second configuration, the planet carrier being locked rotationally or partly locked rotationally to the frame in the first configuration and the planet carrier being released from rotational limitations of the frame in the second configuration. Claims Appendix 11 (Claims Appendix). 2 Appeal 2017-011387 Application 13/695,028 REJECTIONS Claims 28-30 are rejected under 35 U.S.C. Â§ 112, first paragraph, as failing to comply with the enablement requirement. Claims 28-30 are rejected under 35 U.S.C. Â§ 112, second paragraph, as indefinite for failing to particularly point out and distinctly claim the subject matter that Appellant regards as the invention. Claims 16-23 and 27-30 are rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Bixler et al. (US 2007 /0201748 Al, pub. Aug. 30, 2007) ("Bixler") and Ciolli (US 4,364,286, iss. Dec. 21, 1982) or, alternatively, over Bixler, Ciolli, and Smith et al. (US 6,273,200 Bl, iss. Aug. 14, 2001) ("Smith"). Claim 31 is rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Bixler and Smith or, alternatively, over Bixler alone. ANALYSIS Enablement The test for compliance with the enablement requirement is whether the disclosure, as filed, is sufficiently complete to enable a person of ordinary skill in the art to make and use the claimed invention without undue experimentation. In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). Thus, when rejecting a claim for lack of enablement, the Examiner bears the initial burden of setting forth a reasonable explanation of why the scope of the claim is not adequately enabled by the description provided in the Specification. In re Wright, 999 F.2d 1557, 1561-62 (Fed. Cir. 1993). Factors that may be considered in determining whether a disclosure would require undue experimentation include (1) the quantity of experimentation necessary, (2) the amount of direction or guidance presented, (3) the 3 Appeal 2017-011387 Application 13/695,028 presence or absence of working examples, (4) the nature of the invention, ( 5) the state of the prior art, ( 6) the relative skill of those in the art, (7) the predictability or unpredictability of the art, and (8) the breadth of the claims. See Wands, 858 F.2d at 737. Here, the Examiner bases the enablement rejection of claims 28-30 on the alleged failure of the Specification to describe "wherein shifting between the first and second configuration occurs automatically depending on operating conditions of the power tool" and "wherein at least one of the annulus gears or the planet carrier is connected to the frame to permit partial rotation relative to the frame during a specified load" as recited in claims 28 and 29, respectively (Final Act. 2-3; Ans. 3---6). 3 However, the Examiner neither addresses the Wands factors nor otherwise explains why a person of ordinary skill in the art would have to engage in undue experimentation to practice the claimed invention. The Examiner has failed to establish a prima facie case of non- enablement. Therefore, we do not sustain the Examiner's rejection of claims 28-30 under 35 U.S.C. Â§ 112, first paragraph. Indefiniteness The present application, as originally filed, included claims 1-15. Prior to the start of examination, Appellant filed a Preliminary Amendment on October 27, 2012 in which claims 1-15 were canceled, and claims 16-31 were added. New claims 28 and 29 read as follows (with emphasis added): 3 Claim 30 is rejected as non-enabled because "it contains the same subject matter as the parent claim [29]" (Final Act. 4). 4 Appeal 2017-011387 Application 13/695,028 28. The tool as recited in claim 16 wherein the gear change structure includes automatically operated structure actuating shifting between the first and the second configuration depending on operating conditions of the power tool. 29. The tool as recited in claim 16 wherein at least one of the annulus gears or the planet carrier is connected to the firm through a mechanism that allows for the planet carrier or the annulus gears to partly rotate relative to the frame during a specified load. New claim 30 depended from claim 29. In a Non-Final Office Action mailed March 3, 2016 ("Non-Final Act."), the Examiner determined that Appellant, by use of the term "automatically operated structure" in claim 28, and the term "mechanism" in claim 29, intended to invoke 35 U.S.C. Â§ 112, sixth paragraph (Non-Final Act. 7-8). And the Examiner rejected claims 28 and 29 underÂ§ 112, second paragraph, as indefinite, concluding with respect to each of claims 28 and 29 that "the Applicant's disclosure provides no insight as to how this feature is achieved or by what means it is automated. As such, the limitation is indefinite as the full metes and bounds of the limitation cannot be gauged in light of the Applicant's Specification" (id.). Claim 30 was rejected as indefinite based on its dependence from claim 29. In response to the Non-Final Office Action, Appellant filed an Amendment on June 30, 2016, in which claims 28 and 29 were amended to their present form- i.e., the terms "automatically operated structure" and "mechanism" were removed. Claim 28, as now pending, reads, "[t]he tool as recited in claim 16 wherein shifting between the first and the second configuration occurs automatically depending on operating conditions of the power tool." And claim 29 reads, "[ t ]he tool as recited in claim 16 wherein 5 Appeal 2017-011387 Application 13/695,028 at least one of the annulus gears or the planet carrier is connected to the frame to permit partial rotation relative to the frame during a specified load." In the Final Office Action, in rejecting claims 28-30 underÂ§ 112, second paragraph, the Examiner ostensibly does not contend that claims 28 and 29, as amended, should be interpreted as means-plus-function claims in accordance withÂ§ 112, sixth paragraph. Yet, the Examiner quotes the functional language recited in claims 28 and 29, and concludes that each of the claims is indefinite, i.e., that the "boundaries of the functional language are unclear" because "the recited function does not follow from the structure recited in the claim" (Final Act. 4--5; see also Ans. 6-7). 4 Appellant argues in the Appeal Brief that the claim language is clear and definite, and asserts that the bases of the rejection are not understood (see App. Br. 5). But, responding in the Answer, the Examiner simply reproduces the rejection, with no further explanation (see Ans. 6-7). The Federal Circuit has consistently held that the USPTO carries its procedural burden of establishing a prima facie case of unpatentability when its rejection satisfies the requirements of 35 U.S.C. Â§ 132 by notifying the applicant of the reasons for the rejection, "together with such information and references as may be useful in judging of the propriety of continuing the prosecution of [the] application." See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (alteration in original). Thus, what is required of the Office is that it sets forth the statutory basis of the rejection in a sufficiently articulate and informative manner as to meet the notice requirement of Â§ 132. Id. 4 Again, claim 30 is rejected based solely on its dependence from claim 29 (Final Act. 4 ). 6 Appeal 2017-011387 Application 13/695,028 Here, the indefiniteness rejection, in our view, does not comply with the minimal notice requirements of 35 U.S.C. Â§ 132. See Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990) (35 U.S.C. Â§ 132 is violated "when a rejection is so uninformative that it prevents the applicant from recognizing and seeking to counter the grounds for rejection"). As described above, the Examiner rejects claims 28 and 29 as indefinite on the ground that the "boundaries of the functional language are unclear" because "the recited function does not follow from the structure recited in the claim" Yet critically, the Examiner does not identify the structure recited in claims 28 and 29 from which the recited functions allegedly do not follow. Nor does the Examiner otherwise adequately explain why a person of ordinary skill in the art would be unable to determine the metes and bounds of the claims, which is the test for indefiniteness. See In re Zietz, 893 F.2d 319,322 (Fed. Cir. 1989) (During examination, after applying the broadest reasonable interpretation to the claim, if the metes and bounds of the claimed invention are not clear, the claim is indefinite and should be rejected); Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (The test for definiteness under 35 U.S.C. Â§ 112, second paragraph is whether "those skilled in the art would understand what is claimed when the claim is read in light of the specification."). The Examiner has failed, on this record, to establish a prima facie case of indefiniteness. Therefore, we do not sustain the Examiner's rejection of claims 28-30 under 35 U.S.C. Â§ 112, second paragraph. 7 Appeal 2017-011387 Application 13/695,028 Obviousness Independent Claim 16 and Dependent Claims 17-23 and 27-30 In rejecting independent claim 16 underÂ§ 103(a), the Examiner cites Bixler as disclosing a power tool comprising substantially all of the limitations of claim 16 (Final Act. 5-7). Bixler discloses a power tool having a transmission that includes three planetary gears 312, 362, and 402 (Bixler, ,r,r 56, 61, and 63 and Figures 3, 4, and 12-14). And the Examiner finds that any one of these planetary gears (i.e., 312, 362, and 402) meets the "at least one planet wheel" of claim 16 (id. at 6). The Examiner, however, acknowledges that Bixler does not disclose "each planet wheel comprising at least two concentrically joined gear wheels," as recited in claim 16 (id. at 7). The Examiner cites Ciolli to cure this deficiency of Bixler (id.). In particular, the Examiner finds that compound idler gears 42 and 45 disclosed in Ciolli meet the claim language (id.). And the Examiner concludes that it would have been obvious to a person of ordinary skill in the art at the time of Appellant's invention "to modify each of the planet wheels of Bixler with a planet wheel comprising at least two concentrically joined gear wheels as taught by Ciolli" because it would have been "useful in providing different rates of transmission reduction from the motor to the output spindle as might be desired by an end user" and "could also conserve space within a tool allowing for a more compact design" (id.). Appellant argues (App. Br. 7-8), and we agree, that a person of ordinary skill in the art would have had no reason to modify Bixler to provide different rates of transmission reduction, as the Examiner proposes, at least because Bixler already provides various speed reduction ratios. 8 Appeal 2017-011387 Application 13/695,028 Bixler expressly discloses that transmission assembly 16 includes "a plurality of reduction elements or reduction gearsets that may be selectively engaged ( and disengaged) by the speed selector mechanism 60 to provide a plurality of user-selectable speed ratios" (Bixler ,r 47). We also fail to see how, and the Examiner has not adequately explained how, the proposed modification would provide a more compact design. The Examiner asserts that Ciolli teaches "making use of the space within the tool by having gears of a shape that will allow for interaction with annulus gears while not having to further increase [the] circumference of the tool to do so" (Ans. 9). But, the Examiner does not identify any particular reason why using compound gears as taught by Ciolli would make the Bixler transmission more compact. Further responding to Appellant's argument in the Answer, the Examiner explains that "[i]t is simply a matter of obvious design choice for one of ordinary skill to decide what size gears to use in a power tool of generally known construction" (Ans. 8). According to the Examiner, "[ m ]odifying a set of gears to have a slightly different size as taught by Ciolli is notoriously well-known so as to accommodate desired speeds/gear ratios and also accommodate the inner geometries of tool housings" (id.). But, the limitation in question, namely "each planet wheel comprising at least two concentrically joined gear wheels," is not simply a matter of gear size. The Examiner has not established, on this record, that a person of ordinary skill in the art would have had an apparent reason, to replace one or more of the planetary wheels of Bixler with a planet wheel comprising at least two concentrically joined gear wheels, as taught by Ciolli. As such, the 9 Appeal 2017-011387 Application 13/695,028 Examiner has failed to establish a prima facie case of obviousness. See KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (holding that a prima facie case of obviousness requires showing that one of ordinary skill in the art would have had both an apparent reason to modify the prior art and predictability or a reasonable expectation of success in doing so). Therefore, we do not sustain the Examiner's rejection of claim 16 under 35 U.S.C. Â§ 103(a) as unpatentable over Bixler and Ciolli. For the same reason, we also do not sustain the rejection of dependent claims 17-23 and 27-30. Cf In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) ("dependent claims are nonobvious if the independent claims from which they depend are nonobvious"). The Examiner does not rely on Smith in any way that cures the deficiency described above with respect to Ciolli. Therefore, we do not sustain the Examiner's alternative rejection of claims 16-23 and 27-30 as unpatentable over Bixler, Ciolli, and Smith. Independent Claim 31 In rejecting independent claim 31 underÂ§ 103(a), the Examiner cites Bixler as disclosing all of the structural limitations of claim 31 (Final Act. 11-12). The Examiner finds that Smith discloses the "allowing locking" and "allowing releasing" limitations (id. at 12) ( citing Smith Figures 2, 3, and 5; Abstract; col 1, 11. 26-31; col. 3, 11. 16-21 ). And the Examiner concludes that it would have been obvious to a person of ordinary skill in the art at the time of Appellant's invention "to modify the spindle lock method [ of] Bixler with that of Smith" because that "would allow a user to still use the tool to tighten a working element or fastener if the tool suffered a power failure or if hand tightening was desired to either provide 10 Appeal 2017-011387 Application 13/695,028 for increased torque or reduce the chance of stripping the fastener" (id. at 12-13). Responding in the Appeal Brief, Appellant asserts that Bixler "is not modifiable by Smith" and further that the proposed "modification is not understood" (App. Br. 9). Appellant, thus, questions, "[is] the asserted frame 14/16 of Smith being used as the actual frame of Bixler [?]" (id.). Appellant also argues that the modification "would appear to remove the entire function of the Bixler spindle lock assembly" (id. at 8) ( discussing the combination of Bixler and Smith as applied to claim 16). As described above, the Examiner notified Appellant in the Final Office Action that claim 31 is rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Bixler and Smith (Final Act. 11 ). And the Examiner cited specific portions of the references (i.e., by paragraph number (in Bixler) and column/line and figure number (in Smith)) that are the bases for the rejection (id. at 11-13). The Examiner further set forth the bases for the rejection in the Answer, explaining that Smith teaches a gear change structure that can be locked, and that "[p ]roviding a means to lock a rotating tool in place was well-known in the art and would allow for a tool bit to more easily be changed out or the tool used in a manual fashion" (Ans. 9; see also id. at 11 ). Also, specifically addressing Appellant's earlier inquiry, the Examiner explained: The Appellant appears to make particular note that the features need to be "locked to the frame." However, it is noted that the when an element is locked in place relative to the frame, that it is in essence locked to the frame because the frame itself provides the basic structure of the tool that limits the movement of the internal components. The locking structures disclose are 11 Appeal 2017-011387 Application 13/695,028 therefore deemed to speak to locking the respective elements to the frame. Id. at 11. We find that the Examiner's rejection satisfies the notice requirement ofÂ§ 132, and, therefore, establishes a prima facie case of obviousness. Cf Jung, 637 F.3d at 1363 ("[T]he examiner's discussion of the theory of invalidity ... the prior art basis for the rejection ... and the identification of where each limitation of the rejected claims is shown in the prior art reference by specific column and line number was more than sufficient to meet this burden."). The burden, thus, shifted to Appellant to rebut the Examiner's prima facie case by distinctly and specifically pointing out the supposed errors in the Examiner's action, as well as the specific distinctions believed to render claim 31 patentable over the applied references. See 37 C.F.R. Â§ 4I.37(c)(iv) ("The arguments shall explain why the examiner erred as to each ground of rejection contested by appellant."); see also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) ("[W]e hold that the Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art."). Appellant has failed to carry that burden. Rather than distinctly pointing out the Examiner's supposed errors, Appellant summarily asserts in the Appeal Brief that Bixler is not modifiable by Smith, without presenting any persuasive argument or technical reasoning to explain why this is so. Appellant also presents no persuasive argument or technical reasoning to support Appellant's assertion that the modification would remove the entire function of the Bixler spindle lock assembly. And although Appellant 12 Appeal 2017-011387 Application 13/695,028 maintains that the modification is not understood, after the Examiner provided a further explanation in the Answer, Appellant made no mention of the rejection of claim 31 at all in Appellant's Reply Brief. We are not persuaded, on the present record, of error on the part of the Examiner. See Jung, 637 F.3d. at 1365 ("[I]t has long been the Board's practice to require an applicant to identify the alleged error in the examiner's rejections") ( citing Ex Parte Frye, 94 USPQ2d 1072 (BP AI 2010) (precedential) ("The panel then reviews the obviousness rejection for error based upon the issues identified by appellant, and in light of the arguments and evidence produced thereon.")). Therefore, we sustain the Examiner's rejection of claim 31 under 35 U.S.C. Â§ 103(a). 5 DECISION The Examiner's rejection of claims 28-30 under 35 U.S.C. Â§ 112, first paragraph, as failing to comply with the enablement requirement is reversed. The Examiner's rejection of claims 28-30 under 35 U.S.C. Â§ 112, second paragraph, as indefinite is reversed. The Examiner's rejections of claims 16-23 and 27-30 under 35 U.S.C. Â§ 103(a) are reversed. The Examiner's rejection of claim 31 under 35 U.S.C. Â§ 103(a) as unpatentable over Bixler and Smith is affirmed. We do not reach the Examiner's rejection of claim 31 under 35 U.S.C. Â§ 103(a) as obvious over Bixler. 5 Because we affirm the rejection of claim 31 under 35 U.S.C. Â§ 103(a) as obvious over Bixler and Smith, we need not, and do not reach, the Examiner's cumulative rejection of claim 31 under 35 U.S.C. Â§ 103(a) as obvious over Bixler. 13 Appeal 2017-011387 Application 13/695,028 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED-IN-PART 14