Ex Parte Wiker et al

Patent Trial and Appeal BoardMar 9, 2017

13273624 (P.T.A.B. Mar. 9, 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. 1576-0853 2765 EXAMINER NGUYEN, PHONG H ART UNIT PAPER NUMBER 3724 MAIL DATE DELIVERY MODE 13/273,624 10/14/2011 10800 7590 03/09/2017 Maginot, Moore & Beck LLP One Indiana Square, Suite 2200 Indianapolis, IN 46204 Juergen Wiker 03/09/2017 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 JUERGEN WIKER and RALPH DAMMERTZ Appeal 2015-0046221 Application 13/273,6242 Technology Center 3700 Before NINA L. MEDLOCK, PHILIP J. HOFFMANN, and TARA L. HUTCHINGS, Administrative Patent Judges. HOFFMANN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of claims 1, 2, and 18. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Our decision references Appellants’ Specification (“Spec.,” filed Oct. 14, 2011), Appeal Brief (“Appeal Br.,” filed Sept. 2, 2014), and Reply Brief (“Reply Br.,” filed Mar. 6, 2015), as well as the Final Office Action (“Final Action,” mailed April 2, 2014) and the Examiner’s Answer (“Answer,” mailed Jan. 6, 2015). 2 According to Appellants, “Robert Bosch Tool Corporation and Robert Bosch GmbH are . . . the real parties in interest.” Appeal Br. 2. Appeal 2015-004622 Application 13/273,624 According to Appellants, the invention relates “to table saws having reconfigurable workpiece support surfaces.” Spec. 11. Claims 1 and 18 are the only independent claims. Appeal Br., Claims App. We reproduce claim 1, below, as illustrative of the claims on appeal. 1. A table saw assembly, comprising: a base portion including a base work piece support surface defining a support plane; a saw blade opening defined in the base work piece support surface; a saw assembly including a saw blade positionable to extend upwardly through the saw blade opening; a first extension including a first extension work piece support surface pivotable with respect to the base portion using a first pivot assembly between a first position whereat the first extension work piece support surface is coplanar with the base work piece support surface and a second position whereat the first extension work piece support surface is located above the support plane; a second extension including a second extension work piece support surface; pivotable with respect to the base portion using a second pivot assembly between a third position whereat the second extension work piece support surface is coplanar with the base work piece support surface and a fourth position whereat the second extension work piece support surface is located above the support plane; and a handle, wherein the table saw assembly is configured such that when the first extension is in the second position and the second extension is in the fourth position the handle is (i) located above the base work piece support surface, (ii) below a plane defined by the first and second extension work piece support surfaces, and (iii) accessible by a user. Id. 2 Appeal 2015-004622 Application 13/273,624 REJECTION AND PRIOR ART3 The Examiner rejects claims 1,2, and 18 under 35 U.S.C. § 102(b) as anticipated by Skinner (US 5,105,862, iss. Apr. 21, 1992). ANALYSIS Independent claim 1, from which claim 2 depends, recites a first extension including a first extension work piece support surface pivotable with respect to the base portion using a first pivot assembly between a first position whereat the first extension work piece support surface is coplanar with the base work piece support surface and a second position whereat the first extension work piece support surface is located above the support plane. Appeal Br., Claims App. Appellants argue that the rejection is in error because [wjhen the device of Skinner is assembled, the panel 13 is clamped to the support platform 64 with a vise 52. (Skinner at column 11, lines 36—39). Consequently, there is no allowed movement. Thus, whenever the device of Skinner is assembled, the alleged extension cannot pivot. A component which cannot pivot is not the same as a component which is pivotable. Appeal Br. 22. In response, the Examiner determines that “the claimed extension is pivotable during a set up process. During a set up process in Skinner, the vise 52 is not tightened up. Therefore, the extension 13 can pivot with respect the base portion 64.” Answer 5. However, the Examiner does not provide any evidence, such as a citation to Skinner, to support this 3 Although the Examiner rejects numerous claims as indefinite, anticipated, and obvious in the Final Office Action, in the Answer the Examiner withdraws all of the rejections except an anticipation rejection based on Skinner. See Answer 2—A. 3 Appeal 2015-004622 Application 13/273,624 finding. The Examiner’s reasoning on pages 6—7 of the Answer as to how Skinner’s “extension” 13 would pivot relative to its “base portion” 64 is insufficient to support the rejection, because it is not apparent to us that “extension” 13 would pivot as explained by the Examiner. Further, as Appellants point out, even if Skinner’s “extension” 13 may pivot relative to “base portion” 64, it is unclear whether the extension’s work piece support surface at a second position would be located above the support plane, as claimed, or below the support plane in direct opposition to the recitations of claim 1. Reply Br. 2—A. Thus, for the above reasons, we do not sustain the anticipation rejection of claim 1, or the anticipation rejection of its dependent claim 2. Further, inasmuch as independent claim 18 recites a similar limitation as claim 1, and the Examiner’s basis for the rejection of claim 18 is similar to that discussed above for claim 1, we also do not sustain the anticipation rejection of claim 18. Appeal Br., Claims App.; Answer 3, 5—7. DECISION We REVERSE the Examiner’s anticipation rejection of claims 1, 2, and 18. REVERSED 4