Ex Parte Thomaschewski et al

Patent Trial and Appeal Board

Apr 6, 2016

12707396 (P.T.A.B. Apr. 6, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
121707,396 02/17/2010 Walter Thomaschewski
24126 7590 04/08/2016
ST ONGE STEW ARD JOHNSTON & REENS, LLC
986 BEDFORD STREET
STAMFORD, CT 06905-5619
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.
03630-P0097A 2476
EXAMINER
NGUYEN, GEORGE BINH MINH
ART UNIT PAPER NUMBER
3723
NOTIFICATION DATE DELIVERY MODE
04/08/2016 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):
patentpto@ssjr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WALTER THOMASCHEWSKI and RAINER MANN
Appeal2013-007921
Application 12/707,396
Technology Center 3700
Before LINDA E. HORNER, LYNNE H. BROWNE, and
MARK A. GEIER, Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Walter Thomaschewski and Rainer Mann (Appellants) seek our
review under 35 U.S.C. § 134 of the Examiner's final decision rejecting
claims 1-5, 7-9, and 11-20. 1 We have jurisdiction under 35 U.S.C. § 6(b).
An oral hearing was held on March 30, 2016.
We REVERSE.
1 According to Appellants, the real party in interest is C. & E. Fein GmbH.
Appeal Br. 2.
Appeal2013-007921
Application 12/707,396
CLAIMED SUBJECT MATTER
Appellants' claimed subject matter relates to a tool connected to an
oscillating drive "that is equipped with a working surface for grinding or
polishing." Spec. para. 1. Claims 1 and 3 are independent claims and are
reproduced below.
1. An oscillating tool machine comprising:
an oscillating drive having a drive motor, which has a
given machine power (rated input power);
a work spindle driven rotatingly oscillatingly by said drive
motor about a longitudinal axis thereof; and
an oscillating tool attached releasably to said work spindle
and having a working surface of a certain size for grinding and
polishing;
wherein a quotient of the size of working surface of the
tool (in square millimeters) and the rated power input (in Watts)
of the drive motor is at least 35 mm2/W.
3. An oscillating tool machine comprising:
an oscillating drive having a drive motor, which has a
given deadweight in grams;
a work spindle driven rotatingly oscillatingly by said drive
motor about a longitudinal axis thereof; and
an oscillating tool attached releasably in form-locking
fashion to said work spindle and having a working surface of a
certain size (in square millimeters) for grinding or polishing;
wherein a quotient of the working surface and the
deadweight of said oscillating drive without the tool (in grams)
is at least 5.5 mm2/g.
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Application 12/707,396
EVIDENCE
The Examiner relied upon the following evidence:
Izumisawa
Jones
Mac Kay
Chang
Dehde
us 5,919,085
US 6,688,958B1
US 2004/0005851 Al
US 7,094, 138 B2
US 8,007,346 B2
REJECTIONS
July 6, 1999
Feb. 10,2004
Jan. 8,2004
Aug. 22, 2006
Aug. 30, 2011
Appellants appeal from the Final Action, dated September 13, 2012,
which contained the following rejections: 2
1. Claims 1 and 3 under 35 U.S.C. § 103(a) as unpatentable over
Appellants' Admitted Prior Art found in paragraphs 58-60 of the
Specification (AAPA) and Jones.
2. Claims 2, 4, 5, 7-9, 11, 13, 16, and 17 under 35 U.S.C. § 103(a) as
unpatentable over AAP A, Jones, Izumisawa, and MacKay.
3. Claims 12 and 18-20 under 35 U.S.C. § 103(a) as unpatentable
over AAPA, Jones, and Dehde.
2 The Final Action also included a rejection of claims 7, 9, 11-14, 16, 18,
and 19 under 35 U.S.C. § 112, second paragraph, as indefinite due to
insufficient antecedent basis for certain claim limitations. Final Act. 2-3.
Appellants sought to amend these claims after the Final Action to cure the
antecedent basis issues. Response to Final Official Action (dated July 13,
2012). The Examiner entered the claim amendments. Advisory Action
(dated December 3, 2012). We understand that the rejection under
35 U.S.C. § 112, second paragraph, was overcome by entry of the claim
amendments. See Ans. 4-9 (omitting the indefiniteness rejection from the
listing of the Grounds of Rejection). As such, we do not address the
indefiniteness rejection in this Decision.
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Application 12/707,396
4. Claims 14 and 15 under 35 U.S.C. § 103(a) as unpatentable over
AAP A, Jones, and Chang.
ANALYSIS
First Ground of Rejection
The Examiner found that the "AAP A discloses the claimed invention
except for the quotients set forth in []claims[ 1 and 3]." Final Act. 3. The
Examiner found that "Jones ... discloses that it is desirable to construct
portable sanders with working surface area of two to four times the size of
the user's hand to maximize available working surface area." Id. at 4 (citing
Jones, col. 1, 11. 29-33). The Examiner determined that it would have been
obvious "to have modified the AAPA's oscillating tool with a working
surface area as taught by Jones ... in order to maximize available working
surface area." Id.
Appellants contest the Examiner's finding as to the teaching in Jones.
In particular, Appellants argue that "Jones does not explicitly disclose that
the working surface of a manual sander should be increased two to four
times the size of the user's hands in order to maximize available working
surface area." Appeal Br. 9. In fact, Appellants assert that "Jones arguably
teaches away [from] increasing the working surface area relative to the
user's hand." Reply Br. 4 (citing Jones, col. 1, 11. 34--43).
As noted by Appellants, although Jones teaches that prior art
"[ m ]annual sanders often are constructed to maximize available working
surface area and result in working surfaces of two to four times the size of
the user's hand," Jones also teaches that "since manual sanders rely on the
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Application 12/707,396
force or pressure from the user's hand, much of the larger working surface
area is not efficiently utilized because the hand does not reach all areas of
the working surface." Jones, col. 1, 11. 29-35. Jones teaches that "[s]ections
of working material that are not used during sanding or finishing are simply
wasted." Id., col. 1, 11. 37-39. To address this problem, Jones discloses "a
hand-held manual sander [which], in effect, makes the sander an extension
of the user's hand" and in which "the working surface area is not extended
beyond the control of the hand, [such that] waste of working material is
minimized." Id., col. 2, 11. 17-22; see also Figs. 1, 2 (showing hand grip 30,
mounting plate 40, and working surface 50 of substantially the same size).
Based on the teachings of Jones to reduce the size of the working
surface to avoid waste of the working material, we agree with Appellants
that one having ordinary skill in the art would not have been led by the
disclosure in Jones to enlarge the working surface of a prior art oscillating
tool. As such, the Examiner has failed to articulate adequate reasoning
based on rational underpinnings to explain why a person of ordinary skill in
the art would have been led to modify the oscillating tool of the AAP A to
make the working surface larger in light of Jones.
As an alternative to the proposed modification of the oscillating tool
of the AAPA with Jones, the Examiner also determined that the claimed
ranges would have been obvious because "where the general conditions of a
claim are disclosed in the prior art, discovering the optimum or workable
ranges involves only routine skill in the art." Final Act. 4.
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Application 12/707,396
Appellants argue that the AAP A discloses that "prior art oscillating
tools have small working surfaces because they were designed to perform
particular operations and avoid overloading of the oscillating drives" and
that "an excessively large working surface was considered a disadvantage"
because it "would either result in poorer grinding results or even in
overloading of, or damage to, the gearing or the motor of the oscillating
tool." Appeal Br. 14 (citing Spec. paras. 6, 14). Thus, Appellants contend
that "a person skilled in the art would not be motivated to try optimizing a
prior art oscillating tool, through routine experimentation, by increasing
working surface and thus increasing the [claimed] quotient[ s] ... because
the disclosure of the AAP A teaches away from increasing working surface .
. . and would not lead one to increase the [claimed] quotient[ s] ... in order
to improve grinding results and abrasion effects." Id. at 14-15; see also id.
at 15 (arguing that "[t]he working surface includes different features that
help reduce the mass inertia of the oscillating tool that is received in the
work spindle" and that "[a ]s a result, a larger working surface may be used
in combination with an oscillating drive with unchanged drive power and/or
unchanged weight").
The Specification describes that prior art tools developed for use with
oscillating drives "always have a relatively small working surface, because
they are used for special operations and because it is expected that otherwise
the grinding results might be impaired or overloading of such oscillating
drives might occur." Spec. para. 6. The Specification further describes:
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Application 12/707,396
The working surface of prior art devices always was
strictly limited depending on the drive power of the oscillating
drive, determined either by its rated power input or by its weight,
as an excessively large working surface was considered to be a
disadvantage. It was expected that an excessively large working
surface would either result in poorer grinding results or even in
overloading of, or damage to, the gearing or the motor of the
oscillating drive.
Id., para. 14. The portion of the Specification relied on by the Examiner as
the AAP A discloses that known oscillating drives have a quotient of the
working surface of the oscillating tool and the drive power of between 9.5
and 33.86 mm2/W and a quotient of the working surface of the oscillating
tool and the total weight of the oscillating drive of between 2.5 and 5.42
mm2/g. Id., para. 60.
The Specification describes that the disclosed invention deviates from
the prior art by using a larger working surface for the oscillating tool, and
that this larger working surface is combined with different features that serve
to reduce the mass inertia of the tool received on the drive spindle to allow
for a larger working surface with an unchanged drive power or unchanged
deadweight as compared with conventional oscillating drives. Id.,
paras. 15-19. The Specification describes that "[b ]y reducing the mass
inertia ... higher abrasion can be achieved in combination with reduced
loading of the machine." Id., para. 23.
The upper limits of the prior art ranges are close to, but do not overlap
with, the lower ends of the claimed ranges. Compare prior art quotients of
33.86 mm2/W and 5.42 mm2/g with claimed quotients of at least 35 mm2/W
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Application 12/707,396
and at least 5.5 mm2/g. Importantly, there is no teaching in the AAPA that
the end points of the prior art are approximate or can be flexibly applied.
Indeed, as noted by Appellants, the AAP A suggests that one of ordinary skill
in the art would not have been led to increase the working surface of the
oscillating tool for fear of achieving poorer grinding results or overloading
and damaging the gearing or motor of the oscillating drive. Thus, the
evidence before us tends to show that one having ordinary skill in the art
may not have expected a tool having a larger working surface than
conventional oscillating tools such that the quotients fall within the ranges
claimed to have the same properties as, or perform in the same manner as,
conventional tools.
Further, the Specification suggests that Appellants discovered that the
claimed quotients were important characteristics of the working capacity of
the oscillating tool. Spec. para. 13. The Specification alone does not
provide adequate evidence that the parameters that comprise claimed
quotients were known to be result-effective variables such that one having
ordinary skill in the art would have optimized the variables used for these
quotients as a matter of routine skill in the art. See In re Antonie, 559 F.2d
618, 620 (CCPA 1977) (holding that the case in which a parameter
optimized was not recognized in the art to be a result-effective variable is an
exception, to the rule of In re Aller, 220 F.2d 454 (CCPA 1955), that
discovery of an optimum value of a variable in a known process is normally
obvious). The Examiner has not provided us with other evidence in this
ground of rejection on which to base a determination that the claim ranges
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Application 12/707,396
would have resulted from optimization of the variables through routine skill
in the art. As such, based on the facts present in the record before us, we
find that the Examiner has failed to articulate adequate reasoning based on
rational underpinnings to explain why a person of ordinary skill in the art
would have been led to modify the oscillating tool of the AAP A to make the
working surface larger as a matter of routine optimization.
For these reasons, we do not sustain the rejection of claims 1 and 3
under 35 U.S.C. § 103(a) as unpatentable over AAPA and Jones.
Second, Third, and Fourth Grounds of Rejection
The remaining grounds of rejection on appeal are directed to claims
that depend from either claim 1 or claim 3, and are based on the same
combination of the AAP A and Jones that we found deficient in the rejection
of claims 1 and 3 discussed above. The Examiner does not rely on the
teachings oflzumisawa, l\1acKay, Dehde, or Chang to cure the above-noted
deficiencies in the combination of the AAP A and Jones. Final Act. 4-8. As
such, for the same reasons provided in our analysis of claims 1 and 3, we do
not sustain the rejections under 35 U.S.C. § 103(a) of claims 2, 4, 5, 7-9, 11,
13, 16, and 17 as unpatentable over AAPA, Jones, Izumisawa, and MacKay,
of claims 12 and 18-20 as unpatentable over AAP A, Jones, and Dehde, and
of claims 14 and 15 as unpatentab le over AAP A, Jones, and Chang.
DECISION
The decision of the Examiner to reject claims 1-5, 7-9, and 11-20 is
REVERSED.
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REVERSED
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