SD3, LLCDownload PDFPatent Trials and Appeals BoardJun 11, 20212020006270 (P.T.A.B. Jun. 11, 2021) Copy Citation 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. 14/860,015 09/21/2015 Stephen F. Gass SDT 379 2808 27630 7590 06/11/2021 SawStop Holding LLC 11555 SW Myslony Street Tualatin, OR 97062 EXAMINER DEXTER, CLARK F ART UNIT PAPER NUMBER 3724 MAIL DATE DELIVERY MODE 06/11/2021 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 STEPHEN F. GASS, PAUL H. STASIEWICZ, and JAMES F.W. WRIGHT Appeal 2020-006270 Application 14/860,015 Technology Center 3700 Before JENNIFER D. BAHR, PHILLIP J. KAUFFMAN, and SEAN P. O’HANLON, Administrative Patent Judges. O’HANLON, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision to reject claims 1, 4, and 6–8. We have jurisdiction over this appeal under 35 U.S.C. § 6(b). We AFFIRM. In explaining our Decision, we refer to the substitute Specification filed December 21, 2017 (“Spec.”), the Non-Final Office Action mailed 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as SawStop Holding, LLC. Appeal Br. 1. Appeal 2020-006270 Application 14/860,015 2 April 15, 2019 (“Non-Final Act.”), the Appeal Brief filed September 3, 2019 (“Appeal Br.”), the Examiner’s Answer mailed July 6, 2020 (“Ans.”), and the Reply Brief filed September 4, 2020 (“Reply Br.”). SUMMARY OF THE INVENTION Appellant’s claimed invention relates to table saws. Spec. 1:8–10. Claims 1 and 4 are independent. Claim 1, reproduced below from page 17 (Claims Appendix) of the Appeal Brief, is illustrative of the claimed subject matter: 1. A table saw comprising: a table defining a work surface; a substantially planar, circular blade configured to extend at least partially above the work surface to an elevation; a motor operatively coupled to the blade to spin the blade; and an elevation system supporting the blade and operable to change the elevation of the blade relative to the work surface; where the elevation system includes a handwheel that a user rotates to change the elevation of the blade, a shaft connected to the handwheel that rotates when the user rotates the handwheel, a spring associated with the shaft that applies a force or torque to the shaft which varies with the elevation of the blade, an elevation carriage supporting the blade and configured to move up and down to change the elevation of the blade, and a mechanism operatively connecting the elevation carriage with the shaft so that rotation of the shaft causes the elevation carriage to move up or down, where the mechanism includes a cam surface connected to the shaft to rotate with the shaft, and where the cam surface converts the force or torque applied by the spring which varies with the elevation of the blade to a force or torque that is substantially constant with the variation of the elevation of the blade. Appeal 2020-006270 Application 14/860,015 3 REFERENCES The Examiner relies on the following prior art references in rejecting the claims on appeal: Anderson US 97,263 Nov. 30, 1869 Cusumano US 2,420,301 May 13, 1947 Schneider US 3,499,478 Mar. 10, 1970 Cloutier ’890 US 5,103,890 Apr. 14, 1992 Hiller US 5,133,399 July 28, 1992 Cloutier ’433 US 5,259,433 Nov. 9, 1993 Mullet US 6,561,256 B2 May 13, 2003 Kicher US 8,025,090 B2 Sept. 27, 2011 Frolov US 2014/0260869 A1 Sept. 18, 2014 REJECTION Claims 1, 4, and 6–8 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Frolov and Official Notice, as evidenced by Schneider, Cloutier ’890, Cloutier ’433, Mullet, Kicher, Anderson, Cusumano, and Hiller. Non-Final Act. 3–8; Ans. 3–8. ANALYSIS In contesting the rejection, Appellant presents arguments for independent claim 1 and relies on these same arguments for independent claim 4 and dependent claims 6–8. See Appeal Br. 4–16. We select claim 1 as representative, and claims 4 and 6–8 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv) (2019). The Examiner finds that Frolov discloses a table saw substantially as recited in independent claim 1, but does not disclose a spring or a cam surface. Non-Final Act. 3–4; Ans. 3–4, 6. The Examiner Appeal 2020-006270 Application 14/860,015 4 takes Official Notice that such control mechanisms are old and well[-]known in the art and provide various well[-]known benefits including requiring a constant, minimal force required by an operator to perform a function that requires varying force thus making it easier for an operator or a limited-power motor to perform such a task. Non-Final Act. 6; see also Ans. 7. The Examiner cites various prior art references “[a]s evidence in support of the taking of Official Notice.” Non- Final Act. 6 (emphasis omitted). For example, the Examiner points to Schneider as evidencing “a well[-]known example of such a control mechanism that includes a force-altering connection that includes a spring (e.g., 26) around a shaft and a cam surface (e.g., on 32), wherein this control mechanism allows the door, which requires a nonlinear lifting force, to be lifted with constant, reduced force.” Id.; see also Ans. 7. The Examiner determines that, when faced with the problem of desiring and/or requiring a reduced, linear force for lifting an object that requires a non- linear lifting force for benefits such as increased efficiency, it would have been obvious to one having ordinary skill in the art to explore such control mechanisms in other arts that solve substantially the same problem in the substantially the same manner. Therefore, it would have been obvious to one having ordinary skill in the art to apply the teachings such as those described above and add such a control mechanism to the elevation system of Frolov. Id. at 6–7; see also Ans. 7–8. Appellant first argues that the Examiner’s rejection is in error because Schneider, Cloutier ’890, Cloutier ’433, Mullet, Kicher, Anderson, Cusumano, and Hiller are non-analogous art. Appeal Br. 5–10; Reply Br. 2–7. For the reasons that follow, this argument does not apprise us of Examiner error. Appeal 2020-006270 Application 14/860,015 5 Appellant argues that the Examiner’s taking of Official Notice “is incorrect because most of the cited references are non-analogous art and therefore should not be used to support an obviousness rejection.” Appeal Br. 5. However, Appellant does not identify any authority requiring that a reference cited as evidence in support of Official Notice must be analogous art. Moreover, Appellant does not argue or provide persuasive evidence that the noticed fact is not considered to be common knowledge or well-known in the art. See MPEP § 2144.03(C). Thus, Appellant does not address the rejection as set forth by the Examiner and, therefore, fails to apprise us of error. Nevertheless, even considering Appellant’s arguments, we are not persuaded that the cited supporting references are non-analogous. Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (citing In re Deminski, 796 F.2d 436, 442 (Fed. Cir. 1986)). The Supreme Court’s decision in KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007) directs us to construe the scope of analogous art broadly, stating that “familiar items may have obvious uses beyond their primary purposes, and a person of ordinary skill often will be able to fit the teachings of multiple patents together like pieces of a puzzle.” [KSR, 550 U.S.] at 402 (emphasis added). Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010). The Examiner appears to concede that the cited supporting references are not in the inventors’ field of endeavor. See, e.g., Non-Final Act. 9–10 Appeal 2020-006270 Application 14/860,015 6 (discussing only “the problem being addressed”). Thus, our analysis focuses on the second prong of the analogous art test. “A reference is reasonably pertinent if . . . it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem.” In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). “If a reference disclosure has the same purpose as the claimed invention, the reference relates to the same problem, and that fact supports use of that reference in an obviousness rejection.” Id. In other words, “familiar items may have obvious uses beyond their primary purposes.” KSR, 550 U.S. at 402. Appellant argues that the inventors were concerned with “the problem of raising and lowering a blade in a table saw.” Appeal Br. 6; see also id. at 8 (“the problem of how to raise and lower a blade in a table saw, and more particularly, how to do so with a handwheel while making the effort required by a user to turn the handwheel comfortable.”). Appellant asserts that “none of the[] references address the problem of how to raise and lower a blade in a table saw with a handwheel.” Id. at 9. This argument is unpersuasive because it defines the inventors’ problem too narrowly. “[T]he reasonable- pertinence analysis must be carried out through the lens of a [person having ordinary skill in the art] who is considering turning to art outside her field of endeavor.” Donner Tech., LLC v. Pro Stage Gear, LLC, 979 F.3d 1353, 1360 (Fed. Cir. 2020). “Such a[n artisan]—resigned to considering art outside her field of endeavor—would thus not identify the problems so narrowly so as to rule out all such art.” Id. Here, Appellant’s definition of the inventors’ problem improperly focuses on the specific components of its Appeal 2020-006270 Application 14/860,015 7 table saw (e.g., blade, handwheel), effectively precluding consideration of references outside the claimed invention’s field of endeavor. Appellant contends that, although “the references at issue all concern lifting and lowering in a general sense, the fact remains that lifting and lowering garage doors and blinds is different than lifting and lowering a saw blade in a table saw.” Appeal Br. 10. According to Appellant, one of ordinary skill in the art “would not have considered garage doors and window blinds because of the differences between table saws, garage doors and window blinds,” as “those devices have different structures, they are used in different environments for different purposes, and they are sized and shaped differently.” Reply Br. 4. This argument is unpersuasive because differences alone do not preclude a reference from being reasonably pertinent to a problem addressed by the inventors. See Donner, 979 F.3d at 1361 (“[T]here will frequently be significant differences between a patent and a reference from a different field of endeavor. But it does not follow that such a reference is, for that reason alone, not reasonably pertinent to one or more problems to which the claimed invention relates.”). As noted by Appellant, when altering the geometry of their elevation mechanism, the inventors were concerned with the difficulty in raising the saw blade and sought means to facilitate this lifting. See Appeal Br. 12–13 (“[I]in a table saw as disclosed in applicant’s specification, with an elevation mechanism that allow[s] a user to fully raise or lower a blade with one or relatively few turns of a handwheel, the geometry is different and ‘the handwheel could be too hard to turn to raise the blade, and/or could be too easy to turn to lower the blade’ without the spring.” (citing Spec. 95:23–24)). Appellant concedes that the cited supporting references address Appeal 2020-006270 Application 14/860,015 8 the same problem of facilitating the lifting of an object. See, e.g., id. at 8–9. Thus, the cited supporting references are analogous art to the claimed invention because they are reasonably pertinent. Next, Appellant argues that none of Schneider, Cloutier ’890, Cloutier ’433, Mullet, Kicher, Anderson, Cusumano, and Hiller “show[s] a shaft that can be rotated by a handwheel to change the elevation of a blade while a spring applies a force to the shaft that varies with the elevation of a blade.” Appeal Br. 11. Appellant also asserts that “none of th[e] references show[s] a handwheel shaft with a cam that makes the force required to turn the handwheel substantially constant with the variation of the elevation of the blade.” Id. According to Appellant, “in the prior art mechanisms to raise garage doors and window blinds, the shafts are positioned above the door or blind where a user could not reach a handwheel if one were connected to the shaft.” Id. These arguments are unpersuasive because they are not responsive to the rejection presented. As discussed above, the Examiner relies on Frolov to disclose a table saw having an elevation mechanism with a shaft and a handwheel. See Non-Final Act. 3. The Examiner takes Official Notice that lifting mechanisms using a spring and a cam on a shaft were old and well-known in the mechanical art, and cites Schneider, Cloutier ’890, Cloutier ’433, Mullet, Kicher, Anderson, Cusumano, and Hiller as evidentiary support. Id. at 6. In other words, the Examiner’s rejection is based on the combined teachings of Frolov and Official Notice, as evidenced by Schneider, Cloutier ’890, Cloutier ’433, Mullet, Kicher, Anderson, Cusumano, and Hiller. Appellant’s arguments against Schneider, Cloutier ’890, Cloutier ’433, Mullet, Kicher, Anderson, Cusumano, and Hiller individually do not apprise us of error. See In re Appeal 2020-006270 Application 14/860,015 9 Keller, 642 F.2d 413, 426 (CCPA 1981) (“[O]ne cannot show non- obviousness by attacking references individually where, as here, the rejections are based on combinations of references.”). Next, Appellant argues that “no prior art table saw ever used a spring associated with a handwheel shaft and a cam on the handwheel shaft, and no prior art reference has suggested a reason to do so.” Appeal Br. 11. Appellant asserts that “there is no evidence that a person of ordinary skill in the relevant art would have had that desire or would have viewed the non- linear force required to change the elevation of a blade as a problem.” Id. at 14. According to Appellant, “[g]iven that the [E]xaminer’s proffered reason is not expressed in the prior art, it appears that the [E]xaminer fell prey to hindsight bias.” Id.; see also Reply Br. 8 (“Without some evidence in the prior art that there was a need ‘to reduce the burden of raising and lowering the saw blade,’ as purported by the [E]xaminer, it appears that the [E]xaminer simply created the purported motivation with hindsight.”). This line of argument is unpersuasive because it appears to insist on an explicit teaching, suggestion, or motivation in the prior art to establish obviousness, where such an argument has been foreclosed by the Supreme Court. KSR, 550 U.S. at 419 (stating that a rigid insistence on teaching, suggestion, or motivation is incompatible with its precedent concerning obviousness). The Court noted that an obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for [an examiner] can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 418. Instead, the relevant inquiry is whether the Examiner has set forth “some articulated reasoning with some rational underpinning to support the legal conclusion of Appeal 2020-006270 Application 14/860,015 10 obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR, 550 U.S. at 418. Here, the Examiner articulates adequate reasoning based on rational underpinnings as to why it would have been obvious to modify Frolov’s table saw elevation system having a handwheel and a shaft to include a spring that applies force or torque to the shaft and a cam surface that converts the force or torque to a substantially constant force or torque for elevating the saw blade. See Final Act. 6–7 (explaining that the proposed modification would provide a reduced linear force for lifting the saw blade); Ans. 18–21 (explaining that the proposed modification would provide a known mechanical advantage, making it easier to adjust the height of the saw blade, and would eliminate friction and wear of Frolov’s threaded members). Appellant argues that the Examiner’s reasoning is deficient because “prior art table saws did not require such a force and have never required such a force, as is evident from looking at prior art elevation mechanisms, such as the elevation mechanisms disclosed in Frolov.” Appeal Br. 12 (citing Non-Final Act. 6). Appellant asserts that, in prior art table saws, “only a relatively small force is needed to raise and lower the blade and a user would likely not notice any changes in that force as the elevation changed, because those changes would be smaller still.” Id. However, these arguments are presented in conclusory fashion without supporting evidence or persuasive technical reasoning, and thus fail to apprise us of error. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (holding that attorney arguments or conclusory statements are insufficient to rebut a prima facie case of obviousness); In re Pearson, 494 F.2d 1399, Appeal 2020-006270 Application 14/860,015 11 1405 (CCPA 1974) (citing In re Cole, 326 F.2d 769 (CCPA 1964)) (“Attorney’s argument in a brief cannot take the place of evidence.”). To the extent Appellant argues that spring and cam elements would not be compatible with Frolov’s elevation system (see Appeal Br. 13 (asserting that “there is no indication how the elevation mechanisms in Frolov might be so modified to work with such an elevation system”)), Appellant does not proffer factual evidence or persuasive rationale to explain how combining the references’ teachings in an operable manner would be beyond the level of ordinary skill in the art. See KSR, 550 U.S. at 421 (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). Moreover, we are unpersuaded by Appellant’s contention that the Examiner relied on impermissible hindsight in reaching the determination of obviousness of the claimed subject matter (see Appeal Br. 14; Reply Br. 8) because Appellant does not identify, nor do we discern, any knowledge relied upon by the Examiner that was gleaned only from Appellant’s disclosure and that was not otherwise within the level of ordinary skill at the time of the invention. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971) (“Any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from [Appellant’s] disclosure, such a reconstruction is proper.”). Finally, Appellant argues that Frolov “teaches away from adding a spring and cam surface to an elevation system.” Appeal Br. 13. Appellant asserts that, “[t]he fact that Frolov discloses multiple potential elevation Appeal 2020-006270 Application 14/860,015 12 systems without ever suggesting an advantage provided by, or requirement for, constant force or torque as the elevation of the blade varies, teaches away from applicant’s invention.” Id. at 14. We are not persuaded by this argument. A reference teaches away from a claimed invention or a proposed modification if “a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Kubin, 561 F.3d 1351, 1357 (Fed. Cir. 2009) (quoting In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)). Prior art does not teach away from claimed subject matter merely by disclosing a different solution to a similar problem unless the prior art also criticizes, discredits, or otherwise discourages the solution claimed. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Here, Appellant does not point to, nor do we find, any disclosure in Frolov criticizing, discrediting, or otherwise discouraging the combination of teachings proposed by the Examiner in the rejection. The fact that Frolov is silent as to advantages or needs regarding constant force or torque as blade elevation varies does not constitute a teaching away from the Examiner’s proposal to modify Frolov’s blade elevation system to include a spring that applies force or torque to the shaft and a cam surface that converts the force or torque to a substantially constant force or torque (see Final Act. 3–4, 6–7; Ans. 18–21). For the above reasons, Appellant does not apprise us of error in the Examiner’s determination that the subject matter of claim 1 would have been obvious. Accordingly, we sustain the rejection of claim 1, and of claims 4 and 6–8 falling therewith, as being unpatentable over Frolov and Official Appeal 2020-006270 Application 14/860,015 13 Notice, as evidenced by Schneider, Cloutier ’890, Cloutier ’433, Mullet, Kicher, Anderson, Cusumano, and Hiller. CONCLUSION In summary, Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 4, 6–8 103 Frolov, Official Notice as evidenced by Schneider, Cloutier ’890, Cloutier ’433, Mullet, Kicher, Anderson, Cusumano, Hiller 1, 4, 6–8 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation