Ex Parte Bozic

Patent Trial and Appeal Board

Sep 24, 2018

13389684 (P.T.A.B. Sep. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/389,684 04/19/2012
10800 7590 09/24/2018
Maginot, Moore & Beck LLP
One Indiana Square, Suite 2200
Indianapolis, IN 46204
FIRST NAMED INVENTOR
Milan Bozic
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.
2178-0112 7341
EXAMINER
MACFARLANE, EV ANH
ART UNIT PAPER NUMBER
3724
MAIL DATE DELIVERY MODE
09/24/2018 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 MILAN BOZIC 1
Appeal2018-002324
Application 13/389,684
Technology Center 3700
Before JENNIFER D. BAHR, JOHN C. KERINS, and JAMES A. CAL VE,
Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Milan Bozic ("Appellant") appeals under 35 U.S.C. § 134(a) from a
final rejection of claims 1-5, 7-10, and 12-20. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE and ENTER A NEW GROUND OF REJECTION
UNDER 37 C.F.R. § 41.50(b).
1 Robert Bosch GmbH is identified as being the real party in interest.
Appeal Br. 2.
Appeal2018-002324
Application 13/389,684
THE INVENTION
Appellant's invention is directed to a tool in the form of a jigsaw
blade. Claim 1, reproduced below, is illustrative:
1. A tool comprising:
a tip,
an end region defining a fastening element for fastening the tool
to a tool holding unit, and
a working portion defined between said tip and said end region
and including a linear working edge and an edge coextensive
with the working edge and located directly opposite the working
edge,
said working edge defining saw teeth and being linear along the
entire length of said working edge from said tip to said end
region, said working edge defining a working stroke direction in
which material is removed from a workpiece by said saw teeth,
and
said edge adjoining the tip and including;
a first edge region which is straight and includes a first
angle of inclination away from said working edge of
between 0° and 2.5° with the working edge;
a second edge region between the first edge region and the
tip which has a second angle of inclination different from
said first angle of inclination relative to said working edge;
and
a third edge region arranged adjacent the first edge region
at a distance from the second edge region and which has a
third angle of inclination different from said first angle
inclination relative to said working edge,
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wherein the entire length of said first, second and third
edge regions are all located directly opposite the working
edge and all combine to form the entire length of said edge,
and
wherein a distance between said working edge and said
edge increases in said working stroke direction from a
minimum distance at said third region to a maximum
distance at said second region and increases continuously
along said first edge region from said third edge region to
said second edge region.
REJECTIONS
The Examiner rejects:
(i) claims 1-5, 7, 9, and 10 under 35 U.S.C. § I03(a) as being
unpatentable over Wolf Electrical Tools Ltd. (GB 1406281, published Sept.
17, 1975) (hereinafter "Wolf') in view of Craven (US 3,357,462, issued
Dec. 12, 1967);
(ii) claim 8 under 35 U.S.C. § I03(a) as being unpatentable over Wolf
in view of Craven and Nottingham (US 2006/0005402 Al, published Jan.
12, 2006);
(iii) claim 12 under 35 U.S.C. § I03(a) as being unpatentable over
Wolf in view of Craven;
(iv) claims 13-15, 17 and 18 under 35 U.S.C. § I03(a) as being
unpatentable over Wolf in view of Craven;
(v) claim 16 under 35 U.S.C. § I03(a) as being unpatentable over
Wolf in view of Craven and Nottingham; and
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(vi) claims 19 and 20 under 35 U.S.C. § 103(a) as being unpatentable
over Wolf in view of Craven and Koing (DE 20 2004 017 Ul, published
Apr. 20, 2006).
ANALYSIS
Claims 1-5, 7, 9, and 10--35 USC§ 103(a)--WolflCraven
The Examiner finds that Wolf discloses the majority of the limitations
appearing in claim 1, with the exception of an explicit teaching that the
magnitude of the angle of inclination of the first edge region relative to the
working edge is between O and 2.5 degrees, as claimed. Final Act. 3---6. The
Examiner provides, at page 5 of the Final Action, the following annotated
version of Figure 2 of Wolf, illustrating where the Examiner finds structure
corresponding to the recited tip, end region, and first, second, and third edge
regions intermediate the tip and end region.
y
Illustrated above is an Examiner-annotated version of Figure 2 of Wolf,
showing a side of a jigsaw blade in plan view.
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The Examiner turns to Craven for its disclosure of a saw blade having
a cutting portion angled or offset from a shank portion/axis of reciprocation
at an angle A of from about 1 to about 10 degrees. Final Act. 6. The
Examiner observes that the Craven blade configuration will cause the blade
to cut only during an upward stroke, with the blade moving out of contact
with a workpiece during a downward stroke. Id., citing Craven 2:70-3:2.
Thus, according to the Examiner, "the angle 'A' determines the angle at
which the blade backs off during a non-cutting stroke." Id.
The Examiner then reasons that:
Both Wolf and Craven teach blades designed to back off a
workpiece being cut during a noncutting stroke. Further, Wolf
teaches that the offset between its second and third edge regions
can be varied depending on the use of the particular blade
according to the material to be cut. One way of varying this offset
is to vary the first angle of inclination of the first edge region.
Also, the angle of inclination of the first edge region of the blade
of Wolf determines the angle at which the blade backs off during
its non-cutting stroke. Craven teaches that the angle at which a
blade backs off can be 1 to about 10 degrees. Thus, it would have
been an obvious matter of design choice to a person of ordinary
skill in the art to provide the first edge region of Wolf with an
angle of 1 to about 10 degrees as taught by Craven because
discovering an optimum backing off angle would have been a
mere design consideration based on the material being cut.
Id. at 7.
The Examiner, recognizing that the portion of the Figure 2 blade in
Wolf identified as corresponding to the claimed first edge region has a
"shorter but steeper" inclined region, additionally takes the position that
Wolf itself provides sufficient motivation for modifying the angle of
inclination, in disclosing an embodiment in Figure 3 having a longer, more
gradual inclined region. Ans. 20-21. The Examiner, noting that Wolf
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discloses that the back edges of the Figure 2 and Figure 3 embodiments have
the same effect in terms of backing off the blade during a non-cutting stroke,
takes the position that changing either the length or the angle of the inclined
region will "vary[] the offset," and that the optimum value of the angle of
inclination can be determined by routine experimentation. Id.
As to this latter position, Appellant argues that Wolf is only concerned
with the total amount of offset eventually achieved, that Figures 2 and 3 of
Wolf demonstrate two ways to achieve the same offset with an angle of
inclination of the back edge being of no particular import, and that, in any
event, Figure 3 establishes that, in order to employ a shallower angle of
inclination while achieving the same total amount of offset, what was the
third region of the Figure 2 blade is eliminated in the Figure 3 embodiment.
Reply Br. 5---6; see also Appeal Br. 10.
Appellant maintains, with respect to the Examiner's application of
Craven, that Craven does not discuss a backing-off angle, but rather shows
the entire cutting portion of the blade being angled, with the angle A
representing the angle at which the entire cutting portion of the blade is
offset relative to the end region. Appeal Br. 10. Appellant additionally
points out that the working edge and back edge of the Craven blade are
parallel, and thus Craven fails to disclose any angle of inclination of one
portion of the back edge relative to the working edge. Id. Appellant
additionally responds to the Examiner's position that Craven is cited as
disclosing a particular rate of backing off, by noting that Craven is silent as
to any rate of backing off. Reply Br. 6.
Appellant has the better position. The linchpin of the Examiner's
obviousness position is that Craven teaches a varying of a "rate of backing
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off," by varying an angle of inclination of the cutting portion of its blade,
and that it would have been obvious to change the angle of inclination of a
transition region on the back edge of the Wolf blade to a value in the
claimed range, as an optimization of the design based on the material being
cut. Wolf, however, discusses that the "total amount of offset" can be varied
depending upon the material to be cut, which relates to the relative depth of
the second and third edge regions, and not any "rate" of backing off or
offset. Wolf, p.2, 11. 22-25; see also Appeal Br. 9. The Examiner's
recognition that both the Figure 2 and Figure 3 embodiments in Wolf
achieve the same effect, while having different angles of inclination,
undermines the position that Wolf might benefit from one rate of backing off
versus another rate.
Appellant additionally observes that, at least in the Figure 2
embodiment of Wolf proposed to be modified by the Examiner, "the
'backing off' is immediate and the angle of that quick transition is largely
irrelevant." Appeal Br. 13. Similarly, even though not explicitly stated, the
disclosure in Craven evidences that the backing off of its blade as a non-
cutting stroke is initiated would be substantially instantaneous, in that the
cutting teeth would disengage the workpiece along the entire length of the
blade as soon as the non-cutting stroke begins. Varying the angle of the
cutting portion of the blade in Craven would appear to only affect the
distance of separation of the blade from the workpiece as the non-cutting
stroke progresses. In both cases, the concept of a "rate of backing off' does
not appear to be of any significance.
The proposed reason to modify Wolf in view of Craven is thus seen as
not being supported by rational underpinnings. The rejection of claim 1 as
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being unpatentable over the combination of these references is not sustained.
The same rejection as applied to claims 2-5, 7, 9, and 10, which depend
from claim 1, is also not sustained.
Claim 8--35 USC§ 103(a)--WolflCraven/Nottingham
Claim 8 depends from claim 1. The Examiner does not rely on
Nottingham in any manner that remedies the deficiencies in the combination
of Wolf and Craven. See Final Act. 7-8. Accordingly, the rejection of
claim 8 is not sustained.
Claim 12--35 USC§ 103(a)--Wolf/Craven
Independent claim 12 is directed to a system including a machine tool
having a tool holding unit, in combination with a tool having essentially the
same limitations as those set forth in claim 1. The basis for the rejection is
the same as that for claim 1 (Final Act. 8-11), and the rejection suffers from
the same deficiencies as does the rejection of claim 1. The rejection of claim
12 is therefore not sustained.
Claims 13-15, 17 and 18--35 USC§ 103(a)--Wolf/Craven
Independent claim 13 is directed to a tool having, in pertinent part,
essentially the same limitations as those set forth in claim 1. The basis for
the rejection is the same as that for claim 1 (Final Act. 11-15), and the
rejection suffers from the same deficiencies as does the rejection of claim 1.
The rejection of claim 13 is therefore not sustained. The same rejection as
applied to claims 14, 15, 17, and 18, which depend from claim 13, is also not
sustained.
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Claim 16--35 USC§ 103(a)--WolflCraven/Nottingham
Claim 16 depends from claim 13. The Examiner does not rely on
Nottingham in any manner that remedies the deficiencies in the combination
of Wolf and Craven. Accordingly, the rejection of claim 16 is not sustained.
Claims 19 and 20--35 USC§ 103(a)--WolflCraven/Koing
Claims 19 and 20 depend from claim 1. The Examiner does not rely
on Koing in any manner that remedies the deficiencies in the combination of
Wolf and Craven. Accordingly, the rejection of claims 19 and 20 is not
sustained.
New Ground of Rejection--Claims 1-5, 7-10, and 12-20--Indefiniteness
A claim is properly rejected as being indefinite under 35 U.S.C. § 112,
second paragraph if, after applying the broadest reasonable interpretation in
light of the specification, the metes and bounds of a claim are not clear
because the claim "contains words or phrases whose meaning is unclear." In
re Packard, 751 F.3d 1307, 1310 (Fed Cir. 2014).
The Examiner and Appellant disagree as to the proper claim
construction of the claim limitation requiring that "said working edge
defin[ es] a working stroke direction in which material is removed from a
workpiece by said saw teeth." See Final Act. 2-3; Appeal Br. 7-9. The
term appears in each of independent claims 1, 12, and 13. Neither the term
"working stroke direction," nor its modifier that the direction is "in which
material is removed from a workpiece by said saw teeth," appears in
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Appellant's Specification as filed. Spec., passim; Reply Br. 3 ("term that
Applicant created specifically to help define the blade width feature")
Because the independent claims additionally require that "a distance
between said working edge and said edge increases in said working stroke
direction," the Examiner attempts to reconcile the fact that the blade width
increases in a direction associated with a non-cutting stroke, with the
direction of removal of material, which is presumed to be the direction of the
cutting stroke opposite the direction of the non-cutting stroke, arriving at a
construction that the working stroke direction includes both the direction of
the cutting stroke and the non-cutting stroke. Final Act. 2-3.
Appellant disagrees, maintaining that "the claim specifically recites
that the working edge defines the working stroke direction." Appeal Br. 7.
In addition, based upon the blade height increase limitation, Appellant avers
that the working stroke direction "is from the fastening end region to the
tip." Id. at 8. In Appellant's Figure 2, that direction is from left-to-right.
Several sentences later, however, Appellant states that, "as the blade moves
to the left (in the working stroke direction) the height of the blade increases"
from a minimum to a maximum. Id. Appellant maintains that "the
consistent interpretation is that as the blade moves in a working stroke
direction, the teeth remove material and the blade height increases." Id.
Confoundingly, Appellant additionally states that "[Appellant] has
consistently explained that 'working stroke direction' is the direction in
which material is removed and not the direction that the blade is moved to
remove the material." Reply Br. 3. Appellant, in replying to the Examiner's
presentation of an annotated version of Appellant's Figure 2 on page 19 of
the Answer, showing an arrow pointing right-to-left as being a working
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stroke direction in the context of removing ( cutting) material from a
workpiece, maintains that "as [Appellant] has defined the term in the claim,
the 'working force direction' is opposite to the arrow in the Examiner's
annotation." Reply Br. 3
If we assume that the working force direction is from left-to-right as
the immediately preceding position indicates, we are unable to reconcile that
with Appellant's other statement that, "as the blade moves to the left (in the
working stroke direction) the height of the blade increases," which connotes
movement in a right-to-left direction. In addition, the "direction in which
material is removed" cannot be clearly ascertained. Whereas the Examiner
is of the opinion that material is removed (cut) from the workpiece in the
direction of the cutting stroke, Appellant appears to believe that material is
removed in the direction of the non-cutting stroke, possibly by the backsides
of the cutting teeth with the blade moving in a backing off motion. We also
envision an interpretation that material is actually removed from a
workpiece in a direction orthogonal to the working edge of the blade, as the
cutting teeth advance into the material. Although we would expect
Appellant to argue that this is contrary to the claim reciting that the working
edge defines the working stroke direction, without any guidance provided by
the Specification, it seems reasonable to take the position that the working
edge defines (orthogonally) the direction in which material is removed from
the workpiece.
For the foregoing reasons, the limitations discussed are not susceptible
of clear understanding as to their scope, and independent claims 1, 12, and
13 are therefore rejected as being indefinite under 35 U.S.C. § 112, second
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paragraph. Claims 2-5, 7-10, and 14--20 are rejected on the same grounds,
in that they depend from one of claims 1 and 13.
Because we have determined above that the rejections of the claims
are based on a deficient combination of the teachings of Wolf and Craven
that do not involve these claim limitations, we are able to reach the merits of
the rejections, notwithstanding this rejection based on indefiniteness on the
basis that the metes and bounds of the claim are not clearly understood.
DECISION
The rejection of claims 1-5, 7, 9, and 10 under 35 U.S.C. § 103(a) as
being unpatentable over Wolf and Craven is reversed.
The rejection of claim 8 under 35 U.S.C. § 103(a) as being
unpatentable over Wolf, Craven, and Nottingham is reversed.
The rejection of claim 12 under 35 U.S.C. § 103(a) as being
unpatentable over Wolf and Craven is reversed.
The rejection of claims 13-15, 17 and 18 under 35 U.S.C. § 103(a) as
being unpatentable over Wolf and Craven is reversed.
The rejection of claim 16 under 35 U.S.C. § 103(a) as being
unpatentable over Wolf, Craven, and Nottingham is reversed.
The rejection of claims 19 and 20 under 35 U.S.C. § 103(a) as being
unpatentable over Wolf, Craven, and Koing is reversed.
Claims 1-5, 7-10, and 12-20, are rejected, in a new ground of
rejection pursuant to 37 C.F.R. § 4I.50(b ), under 35 U.S.C. § 112, second
paragraph, as being indefinite.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 4I.50(b). Section 4I.50(b) provides "[a] new ground of rejection
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pursuant to this paragraph shall not be considered final for judicial review."
Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
( 1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
REVERSED; 37 C.F.R. § 4I.50(b)
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