Ex Parte Profunser et al

Patent Trial and Appeal Board

Apr 12, 2016

12799174 (P.T.A.B. Apr. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121799,174 04/19/2010
23280 7590 04/14/2016
Davidson, Davidson & Kappel, LLC
589 8th A venue
16th Floor
New York, NY 10018
FIRST NAMED INVENTOR
Dieter Profunser
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.
5068.1028 9987
EXAMINER
CHUKWURAH, NATHANIEL C
ART UNIT PAPER NUMBER
3721
NOTIFICATION DATE DELIVERY MODE
04/14/2016 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 DIETER PROFUNSER, PETER BRUGGER, and
JOCHEN KUNTNER1
Appeal2014-003049
Application 12/799,174
Technology Center 3700
Before GEORGE R. HOSKINS, BRANDON J. WARNER, and
AMANDA F. WIEKER, Administrative Patent Judges.
WIEKER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Dieter Profunser et al. ("Appellants") appeal under 35 U.S.C. § 134(a)
from the Examiner's final rejection of claims 1-13. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b ).
We REVERSE.
1 According to Appellants, the Real Party in Interest is Hilti
Aktiengesellschaft. Appeal Br. 2.
Appeal2014-003049
Application 12/799,174
CLAIMED SUBJECT MATTER
The invention concerns "a tangential impact wrench, and a control
method for an impact wrench." Spec. i-f 2. Claims 1, 5, and 10 are
independent claims. Claims 1 and 5 are illustrative of the subject matter on
appeal, and recite:
1. A control method for an impact wrench,
comprising the steps of:
establishing an operating mode during a predetermined
duration, a drive shaft being rotated in a low speed range during
the predetermined duration;
ascertaining whether the impact wrench applies an
impact; and
if impact does not occur in the low speed range,
switching the impact wrench into an operating mode for a soft
material, in which a speed of the drive shaft is maintained in
the low speed range,
if impact begins in the low speed range, switching the
impact wrench into an operating mode for a hard material, for
\vhich the speed of the drive shaft is increased to a higher speed
range.
5. An impact wrench comprising:
a drive shaft;
an output shaft;
an impact mechanism coupling the drive shaft to the
output shaft to transmit a torque;
an analysis unit for ascertaining whether the impact
mechanism applies an impact; and
a control unit to establish an operating mode during a
predetermined duration via rotation of the drive shaft in a low
speed range and to respond to an ascertainment by the analysis
unit as to whether the impact wrench applies an impact, an
operating mode for a soft material having a speed of the drive
shaft in a low speed range being established if impact does not
occur in the low speed range, or an operating mode for a hard
material having a speed of the drive shaft in a higher speed
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Appeal2014-003049
Application 12/799,174
range being established if impact in the low speed range does
occur.
Appeal Br., Claims App. 1-2 (emphasis added). Independent claim 10
includes limitations similar to those appearing in claim 1. See id. at Claims
App. 3.
REJECTION
Claims 1-13 stand rejected under 35 U.S.C. § 102(b) as anticipated by
Sainomoto (US 2005/0263304 Al, pub. Dec. 1, 2005).
ANALYSIS
Claims 1--4 and 10-13
Claims 1 and 10 recite a control method in which, after ascertaining
whether an impact wrench experiences an impact, one of two alternative
conditions occurs. Appeal Br., Claims App. 1, 3. If an impact does not
occur, the vvrench svvitches into an operating mode for soft materials, in
which the speed of the drive shaft is maintained at a low speed. Id.
Alternatively, if an impact does occur, the wrench switches into an operating
mode for hard materials, in which the speed of the drive shaft is increased to
a higher speed. Id.
The Examiner finds that Sainomoto discloses a control method in
which a user ascertains whether an impact wrench applies an impact. Final
Act. 2, 4. The Examiner also finds that Sainomoto's method includes
switching into the claimed operating modes. Id. at 2 (citing Sainomoto
i-fi-122, 39), 4 (citing Sainomoto i121 ).
Appellants argue: "It is true that a user will feel an impact of an
impact wrench. However there is absolutely no disclosure anywhere in
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Appeal2014-003049
Application 12/799,174
Sainomoto that 'if impact does not occur in the low speed range, switching
the impact wrench into an operating mode for a soft material .... '" Appeal
Br. 6 (emphasis omitted). Appellants also argue that Sainomoto does not
disclose "'if impact begins in the low speed range, switching the impact
wrench into an operating mode for a hard material .... ' While Sainomoto
has a mode for hard material ... , [switching to] it is never a function of 'if
impact begins in the low speed range,"' as claimed. Id. at 6-7 (citations
omitted).
We agree with Appellants' argument that Sainomoto does not disclose
the alternative conditional limitations requiring "switching" into different
operating modes. Id.; Reply Br. 2-3. We have reviewed the portions of
Sainomoto cited by the Examiner and we fail to see, and the Examiner has
not explained adequately, how these portions disclose the steps of
"switching" into an operating mode for a soft material or an operating mode
for a hard material. Rather, cited paragraphs 21-22 disclose that torque
setting unit 80 may be adjusted to the appropriate torque for a given
fastening application, including, for example, the use of less torque with soft
substrates and more torque with hard substrates. Sainomoto i-fi-121-22.
Cited paragraph 39 further discloses that the torque can be adjusted to the
speed of the drive shaft. Id. i1 3 9. While these portions of Sainomoto
establish that a user may set the torque value to any appropriate level, these
portions of Sainomoto do not disclose the claimed steps of "switching" from
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Appeal2014-003049
Application 12/799,174
an initial operating state into a different operating state upon ascertaining
whether an impact wrench applies an impact. 2
In the Examiner's Answer, the Examiner states that the conditional
limitation in which an impact does not occur "indicates no prior impact
occurred in the low speed and no switching the impact wrench into an
operating mode for a soft material, and too this may not be part of the
operation of the tool." Ans. 5. By this interpretation, the Examiner appears
to suggest that Sainomoto need not disclose this limitation because, in such a
condition, the speed does not change from that established in the initial
operating mode. However, this position does not account for the express
language of claims 1 and 10, which requires "switching ... into an operating
mode for a soft material." If the method remains in the initial operating
mode, as the Examiner suggests, this would not be a "switch," regardless of
whether the speed is maintained. Therefore, the Examiner has not
established that Sainomoto discloses the claimed "switching."
Further, regarding the conditional limitation in which an impact does
occur, the Examiner states that this "is a condition which has not occurred,
and it is possible such condition may not occur in operation of the tool."
Ans. 5. By this interpretation, the Examiner appears to suggest that
Sainomoto need not disclose this limitation either, because it is a condition
that may not occur. However, claims 1 and 10 recite alternative conditional
limitations, one of which occurs in the case of impact and one of which
2 We note that any consideration of what one of ordinary skill in the art may
have deemed to be obvious is outside the scope of the anticipation rejection
before us for review.
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Appeal2014-003049
Application 12/799,174
occurs in the case of no impact. Therefore, in applying the prior art, at least
one condition must be satisfied because an impact is either applied or it is
not. The Examiner has not established that Sainomoto discloses the claim
language requiring "switching" into a different operating mode, under either
alternative condition. Reply Br. 2-3.
Therefore, we cannot sustain the Examiner's rejection of claims 1 or
10, or claims 2--4 and 11-13, which depend therefrom and incorporate these
limitations.
Claims 5-9
Claim 5 recites an impact wrench comprising, inter alia, "an analysis
unit for ascertaining whether the impact mechanism applies an impact."
Appeal Br., Claims App. 2.
The Examiner finds that Sainomoto discloses this limitation, stating
that Sainomoto discloses "analysis unit (7) for ascertaining whether the
impact mechanism [(2, 30)] applies an impact." Final Act. 3.
We agree with Appellants' argument that the Examiner's finding is in
error. Appeal Br. 7-8 ("Element 7 is a fastening judger and not an analysis
unit determining an impact."). We have reviewed the cited element of
Sainomoto and we fail to see, and the Examiner has not explained
adequately, how Sainomoto's element 7 is an analysis unit for ascertaining
whether the wrench applies an impact. To the contrary, Sainomoto discloses
that element 7 is a "fastening judger" that "compares the estimated value of
the current fastening torque with a value of a predetermined reference torque
set in the torque setting unit 80 ... [and] outputs a stop signal for stopping
the rotation of the motor 1 to the controller." Sainomoto i-f 26. Sainomoto
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Application 12/799,174
does not disclose that this element also ascertains whether an impact is
applied, and the Examiner does not explain how this element would be
capable of performing such a function. See Final Act. 3; Ans. 6 (failing to
respond to Appellants' argument); see also Sainomoto i-f 25 (discussing that
"impact sensor 4 senses occurrence of impact blow of the hammer 2 on the
anvil 30").
Therefore, we cannot sustain the Examiner's rejection of claim 5, or
claims 6-9, which depend therefrom and incorporate this limitation.
DECISION
The rejection of claims 1-13 under 35 U.S.C. § 102(b) as anticipated
by Sainomoto is REVERSED.
REVERSED
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