Ex Parte Sauer et al

Patent Trial and Appeal BoardMar 20, 2017

12321339 (P.T.A.B. Mar. 20, 2017)

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. 12/321,339 01/15/2009 Thorsten Sauer 210,027 3918 38137 7590 03/20/2017 ABELMAN, FRAYNE & SCHWAB 666 THIRD AVENUE, 10TH FLOOR NEW YORK, NY 10017 EXAMINER WEEKS, GLORIA R ART UNIT PAPER NUMBER 3721 MAIL DATE DELIVERY MODE 03/20/2017 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 THORSTEN SAUER, NORBERT HEEB, and TILO DITTRICH ____________ Appeal 2014-006186 Application 12/321,3391 Technology Center 3700 ____________ Before CYNTHIA L. MURPHY, SHEILA F. McSHANE, and MATTHEW S. MEYERS, Administrative Patent Judges. McSHANE, Administrative Patent Judge. DECISION ON APPEAL The Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner’s decision to reject claims 1–4 and 6–16. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 According to the Appellants, the real party in interest is HILTI AKTIENGESELLSCHAFT. Appeal Brief filed December 24, 2013, hereafter “Appeal Br.,” 2. Appeal 2014-006186 Application 12/321,339 2 BACKGROUND The invention relates to a combustion operated setting tool for driving fastening elements. Specification, hereafter “Spec.,” 1:3–4. The invention is directed to improvements in the location of elements in the combustion chamber of the setting tool to provide minimal delay between actuation of the setting process by the trigger switch and the injection of fuel. Id. at 3:16–4:4. Representative claim 1 is reproduced from page 12 of the Claims Appendix of the Appeal Brief (Claims App.) as follows, with emphasis added to relevant claim limitations: 1. A combustion-operated setting tool (10) for driving in fastening elements, comprising: a guide cylinder (13); a setting piston (14) displaceable in the guide cylinder (13); a combustion chamber (15) bordering the guide cylinder, defining a combustion chamber axis (A) and having a first axial end (31) adjacent to the guide cylinder (13) and a second axial end (32) spaced from the guide cylinder (13); a fuel inlet (23) opening into the combustion chamber (15) substantially parallel to the axis of the combustion chamber for feeding fuel therein and located at the first end (31) of the combustion chamber (15); an ignition element (26) for igniting the fuel in the combustion chamber (15) and likewise located at the first end (31) of the combustion chamber (15); a ventilator (16) located in the combustion chamber (15) and supported on a rear wall (30) of the combustion chamber (15) at the second end (32) thereof; and a motor (17) for driving the ventilator (16). Appeal 2014-006186 Application 12/321,339 3 In a Final Rejection, the Examiner rejects claims 1–4, 6, 7, 14, and 15 under 35 U.S.C. § 103(a) as obvious over Nikolich,2 Walter,3 and Toulouse.4, Claims 8 and 11–13 are rejected under 35 U.S.C. § 103(a) as obvious over Nikolich and Phillips.5 Claims 9 and 10 are rejected under 35 U.S.C. § 103(a) as obvious over Nikolich, Phillips, and Walter. Claim 16 is rejected under 35 U.S.C. § 103(a) as obvious over Nikolich, Phillips, and Toulouse. Final Action, hereafter “Final Act.,” 2–6, mailed July 2, 2013; see also Answer, hereafter “Ans.” 2–5, mailed March 7, 2014. DISCUSSION The Appellants argue the rejection of claims 1–4, 6, 7, 14, and 15, and claims 8–13 and 16, respectively, on similar issues. Appeal Br. 5–10. In light of our disposition of this Appeal, we need only address certain issues relating to independent claims 1 and 8. The Appellants argue that the prior art fails to disclose the novel feature of claim 1 that is the location of both the fuel inlet and the ignition element at the first end of the combustion chamber opposite from the ventilator. Appeal Br. 5–6. More specifically, the Appellants assert that Nikolich does not disclose a fuel inlet or ignition element at that location as claimed. Id. The Appellants refer to dictionary definition of “at” to include “in, on, or near.” Id. at 6 (citing the Random House Dictionary, Random House, Inc. 2013). The Appellants argue that although Walter discusses the advantages of locating an ignition element in a spaced relationship relative to a side wall, it expressly teaches away from locating the ignition element at 2 US Patent 4,522,162, issued June 11, 1985. 3 US Patent 6,311,887 B1, issued November 6, 2001. 4 US Publication 2003/0094148 A1, published May 22, 2003. 5 US Patent 6,260,519 B1, issued July 17, 2001. Appeal 2014-006186 Application 12/321,339 4 the first (bottom) wall of the combustion chamber. Id. at 7 (citing Walter, 5:8–12, 9:36–42). The Appellants further contend that Toulouse also fails to disclose the location of the fuel inlet and ignition element in the location claimed.6 Id. As to independent claim 8, the Appellants similarly argue that neither Nikolich or Phillips disclose both the fuel inlet and the ignition element in the front end surface of the combustion chamber located adjacent to the setting piston as claimed. Appeal Br. 8–9. The Appellants assert that Phillips’ combustion chamber 126 is defined by the piston 45 and the rear wall in which the spark plus 40 is located, and therefore the accelerator plate 33 does not form the front wall of the combustion chamber 126, as the Examiner asserts, but rather divides it into two region, primary region 182 and secondary region 184. Id. at 9–10 (citing Phillips, 6:25–27). As such, the Appellants argue that Phillips does not disclose that an ignition element is in the front wall of the combustion chamber. Id. at 9. The Examiner responds that the term “at” of claim 1 should be interpreted as “near” and Nikolich therefore discloses that the fuel inlet is at the front end of the combustion chamber by the depiction of Figure 1, and that Figure 2 of the reference also teaches one of skill in the art to provide a fuel inlet and ignition inlet at a common end of a combustion chamber. Ans. 2–3. The Examiner relies on Walker for its teaching of orienting an ignition element in the space near the front of the combustion chamber, and Toulouse 6 The Appellants also present arguments relating to additional prior art that the Examiner referred to in the Advisory Action, mailed September 30, 2013. We need not address herein the additional prior art, nor related arguments, because the Examiner did not address this art or the related arguments in the Answer. See Ans. 2–4. Appeal 2014-006186 Application 12/321,339 5 for its teaching of a fuel inlet at the first end of a combustion chamber extending parallel to the axis of the combustion chamber. Id. at 3. The Examiner finds that it would have been obvious to one of ordinary skill in the art to modify the fuel inlet of Nikolich to be oriented parallel to the combustion chamber axis because Toulouse teaches that such a configuration is known for the purpose of delivering fuel to a combustion chamber. Final Act. 3–4. As to claim 8, the Examiner finds that Phillips discloses an ignition element 36 secured in a front wall 33, and it would have been obvious to one having ordinary skill in the art to modify Nikolich to include an ignition element in the front wall because Phillips suggests that such a modification ensures effective ignition of fuel dispersed into a combustion chamber. Final Act. 4–5 (citing Phillips 1:29–37, 3:20–4:2). The Examiner additionally relies on the finding that the fuel inlet of Nikolich is located at a place adjacent to the extremity of the front of the combustion chamber, which falls within the broadest reasonable interpretation of “at,” as discussed for claim 1. Ans. 4–5. After considering each of the Appellants’ contentions and the evidence presented in this Appeal, we are persuaded that the Appellants identify reversible error, and we therefore reverse the obviousness rejections. We add the following for emphasis. The Specification identifies the inventive feature as the location of the fuel inlet and ignition element at the first end of the combustion chamber opposite the second end with the ventilator provided in order to reliably ignite the fuel mixture with a very short delay period. Spec. 4:6–5:3. In Appeal 2014-006186 Application 12/321,339 6 other words, the alleged invention as claimed is the co-location of the elements in a specific orientation in the combustion chamber. As to claim 1, we agree with the Appellants that Nikolich fails to disclose the fuel inlet at the first wall of the combustion chamber opposite the ventilator. Although Figure 1 of Nikolich depicts this element closer to the first wall than the second, we do not discern that this is “at,” or even “near,” the wall. Additionally, even if we were to find Nikolich’s teachings sufficient, the Examiner’s findings on the motivation to modify Nikolich to not only re-orient the fuel inlet orientation, but also to co-locate the ignition element at the same specific location as the fuel inlet, are inadequate. As to claim 8, the Examiner’s findings are insufficient to support that Phillips discloses an ignition element at the front wall, and, as discussed above for claim 1, Nikolich also fails to teach a fuel element at the front wall. We therefore cannot sustain the rejection of independent claim 1, along with claims 2–4, 6 and 7 that depend from it, and claim 8, along with claims 9–16 that depend from it. SUMMARY The rejection of claims 1–4 and 6–16 under 35 U.S.C. § 103(a) is reversed. REVERSED