`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`17/049,911
`
`10/22/2020
`
`Mitsumasa MIZUNO
`
`065933-0795
`
`9388
`
`Rimon PC - Panasonic Corporation
`8300 Greensboro Dr.
`Suite 500
`McLean, VA 22102
`
`LEEDS, DANIEL JEREMY
`
`3731
`
`PAPER NUMBER
`
`NOTIFICATION DATE
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`DELIVERY MODE
`
`05/28/2024
`
`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.
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`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`USPTOmail @rimonlaw.com
`
`eofficeaction @appcoll.com
`
`PTOL-90A (Rev. 04/07)
`
`
`
`UNITED STATES PATENT AND TRADEMARKOFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Ex parte MITSUMASA MIZUNO, ITARU MURUI,and
`ATSUSHI NAKAMURA
`
`Appeal 2023-001902
`Application 17/049,911
`Technology Center 3700
`
`Before MICHAEL C. ASTORINO, BRUCE T. WIEDER,and
`AMEEA. SHAH,Administrative Patent Judges.
`
`ASTORINO, Administrative Patent Judge.
`
`DECISION ON APPEAL
`
`Pursuant to 35 U.S.C. § 134(a), the Appellant! appeals from the
`
`Examiner’s decision to reject claims 1-4. We have jurisdiction under
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`35 U.S.C. § 6(b).
`
`We AFFIRM.
`
`' We use the word “Appellant”to refer to “applicant” as defined in
`37 C.F.R. § 1.42. The Appellant identifies the real party in interest as
`“PANASONIC INTELLECTUAL PROPERTY MANAGEMENTCoO.”
`AppealBr. 1.
`
`
`
`Appeal 2023-001902
`Application 17/049,911
`
`STATEMENT OF THE CASE
`
`Claimed Subject Matter
`
`Claim 1, the sole independentclaim, is representative of the subject
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`matter on appeal and is reproduced below.
`
`1. An electric power tool comprising:
`a driving shaft that is driven into rotation by a motor;
`an output shaft on which a front-end tool is attachable;
`a torque transmission mechanism that includes a magnet
`coupling including a driving magnet member coupled to a
`driving shaft side and a driven magnet member coupled to an
`output shaft side, a moment of inertia on a driven magnet
`memberside being larger than a momentofinertia on a driving
`magnet memberside; and
`a clutch mechanism provided between the motor and the
`torque transmission mechanism,
`wherein, the electric power tool is configured such that,
`when synchronization between the driving magnet member and
`the driven magnet memberis lost, an angle velocity by which the
`driven magnet memberis rotated in a reverse direction is smaller
`than an angle velocity by which the driving magnet member is
`rotated in a normal direction.
`
`Appeal Br. 10 (Claims App.).
`
`References
`
`Theprior art relied upon by the Examineris:
`
`Hornschuchetal.
`“Hornschuch”
`Gelfand etal.
`“Gelfand”
`
`US 2019/0199164 Al|June 27, 2019
`
`US 3,150,725
`
`Sept. 29, 1964
`
`US 3,952,814
`
`Apr. 27, 1976
`
`
`
`Appeal 2023-001902
`Application 17/049,911
`
`REJECTIONS
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`Claims 1—4 are rejected under 35 U.S.C. § 112(a) as failing to comply
`
`with the written description requirement.
`
`Claims 1—4 are rejected under 35 U.S.C. § 112(b) as indefinite.
`
`Claims 1—4 are rejected under 35 U.S.C. § 103 as unpatentable over
`
`Hornschuch, Gieras, and Gelfand.
`
`The rejections of claims 1-4 under 35 U.S.C. § 112
`
`ANALYSIS
`
`The “Appellant respectfully requests entry of the amendments made
`
`to claim | in the Amendmentfiled August 10, 2022” and asserts that non-
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`entered amendments would overcome the Examiner’s rejections under
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`35 U.S.C. § 112. Appeal Br. 5; Reply Br. 2; see Advisory Act. 1-2
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`(Box 7(a) (“For purposesof appeal, the proposed amendment(s): (a). .
`
`. will
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`not be entered”); “The amended claims do not overcometheprior art and
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`would not advanceprosecution. ... [T]he claim amendment would
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`overcomethe previous 112 rejections.”). The Appellant’s argumentis
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`directed to a petitionable issue not an appealable one. See 37 C.F.R.
`
`§ 1.181; Manual of Patent Examining Procedure (“MPEP”) §§ 1002.02(c),
`
`1201 (9th ed., rev. 07.2022, Feb. 2023) (“[M]atters which have been
`
`determinedto be petitionable and not appealable include .
`
`.
`
`. non-entry of
`
`amendments.”).
`
`The Appellant does not present an argumentthat the rejections of
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`claims 1—4 under 35 U.S.C. § 112(a) as failing to comply with the written
`
`description requirement or § 112(b) as indefinite are improper. Thus, we
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`
`
`Appeal 2023-001902
`Application 17/049,911
`
`summarily sustain the Examiner’s rejections of claims 1-4 under 35 U.S.C.
`
`§ 112.
`
`The rejection of claims 1-4 under 35 U.S.C. § 103
`
`The Appellant argues that the Gieras reference is not analogousart to
`
`the present application becauseit is neither in the samefield of endeavornor
`
`reasonably pertinent to the problem faced by the inventor. Appeal Br. 5—7;
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`Reply Br. 2-5.
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`In response, the Examinerfinds:
`
`[T]he [Gieras] reference is (1) from the samefield of endeavor
`(a flywheelis an electric motor that uses electricity in order to
`translate electric energy into mechanical (kinetic) energy via
`the spinning of a rotor) and (2) the reference is reasonably
`pertinent to the problem faced by the inventor (the problem
`being the design analysis ofthe ratio between rotor andstator).
`
`Ans. 7.
`
`Two separate tests define the scope of analogouspriorart: (1) whether
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`the art is from the samefield of endeavor, regardless of the problem
`
`addressed and,(2) if the reference is not within the field of the inventor’s
`
`endeavor, whetherthe referencestill is reasonably pertinent to the particular
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`problem with which the inventoris involved. See In re Deminski, 796 F.2d
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`436, 442 (Fed. Cir. 1986); In re Wood, 599 F.2d 1032, 1036 (CCPA 1979);
`
`MPEP§ 2141.01(a)(1); see also In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir.
`
`2004) (explaining “[t]he identification of analogouspriorart is a factual
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`question”(citing In re GPAC, Inc., 57 F.3d 1573, 1577 (Fed. Cir. 1995))).
`
`With regard to the first test — 1.e., whether the art is from the same
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`field of the inventor’s endeavor, regardless of the problem addressed — as
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`discussed above, the Examinerfinds that the Gieras reference is in the same
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`field of the endeavor because Gieras’ “flywheelis an electric motor that
`
`4
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`Appeal 2023-001902
`Application 17/049,911
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`uses electricity in order to translate electric energy into mechanical
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`(kinetic) energy via the spinning of a rotor.” Ans. 7. In making this
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`finding, the Examiner appears to focus solely on the aspect of the claimed
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`invention that Gieras1s relied upon to teach,1.e., “a momentof inertia on a
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`driven magnet memberside being larger than a momentofinertia on a
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`driving magnet memberside.” See Ans. 6; Final Act. 8. The Examiner
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`misapplies the field of endeavortest to the facts of the present Appeal.
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`“Thfe field of endeavor] test for analogous art requires the PTO to
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`determine the appropriate field of endeavor by reference to explanations of
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`the invention ’s subject matter in the patent application, including the
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`embodiments, function, and structure of the claimed invention.” Bigio, 381
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`F.3d at 1325-26 (citations omitted, emphasis added); MPEP § 2141.01(a)()
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`(citing Airbus S.A.S. v. Firepass Corp., 941 F.3d 1374, 1380 (Fed. Cir.
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`2019)).
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`In this regard, the Appellant points out, and weagree,that the field of
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`the inventor’s endeavoris “an electric power tool.” Appeal Br. 5. We note
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`that the title of the Specification is “ELECTRIC TOOL?”andthe section
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`entitled “TECHNICAL FIELD”describes “[t]he present disclosure relates to
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`an electric power tool adapted to transmit a torque produced bythe rotation
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`of a driving shaft to an output shaft so as to rotate a front-end tool.”
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`Spec. J 1; see id. { 57 (“The present disclosure is applicable to the field of
`
`electric powertools.”); Reply Br. 4 (quoting Spec. Jf 1, 2). Additionally,
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`the Appellant points out that the field of Gieras’ endeavor “is directed to a
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`flywheel energy storage (FES) system.” Appeal Br. 5; see Ans. 6 (“The
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`[Gieras] device is a flywheel energy storage (FES) device.”). The Appellant
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`asserts that “the flywheel energy storage (FES) system of [Gieras] is
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`Appeal 2023-001902
`Application 17/049,911
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`functionally and structurally different from an electric powertool of the
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`present application.” Appeal Br. 7; see Reply Br. 5.
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`The Examiner does notfind that the field of Gieras’ endeavoris an
`
`electrical powertool. To the extent that the Examiner addresses Gieras’
`
`embodiments, function, and structure (see Ans. 6-7), we determine the
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`Examinerfails to adequately support a finding that the field of Gieras’
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`endeavoris the sameasthe field of the Appellant’s (inventor’s) endeavor.
`
`With regard to the second test — 1e., if the reference is not within the
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`field of the inventor’s endeavor, whether the referencestill is reasonably
`
`pertinent to the particular problem with whichthe inventor is involved — we
`
`note that “[a] reference is reasonably pertinentif .
`
`.
`
`. it is one which, because
`
`of the matter with whichit deals, logically would have commendeditself to
`
`an inventor’s attention in considering his problem.” Jn re Clay, 966 F.2d
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`656, 659 (Fed. Cir. 1992); see Donner Technology, LLC yv. Pro Stage Gear,
`
`LLC, 979 F.3d 1353, 1359, 1361 (Fed. Cir. 2020) (“The relevant question 1s
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`whether a PHOSITA ‘would reasonably have consulted’ the reference in
`
`solving the relevant problem.”) (citing Heidelberger Druckmaschinen AG vy.
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`Hantscho Com. Prods., Inc., 21 F.3d 1068, 1071 (Fed. Cir. 1994)); see also
`
`MPEP§ 2141.01(a)(). The Examiner misapplies this test to the facts of the
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`present Appeal by not focusing on a problem that the Appellant (inventor) is
`
`involved.
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`The Examiner’s explanation of the Appellant’s problem,1.¢., “the
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`problem being the design analysis of the ratio between rotor and stator”
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`(Ans. 7), is not representative of a problem faced by the Appellant
`
`(inventor). First, the design analysis is not a problem; rather, the design
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`analysis pertains to the solution of a problem. Therefore, the Examiner’s
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`
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`Appeal 2023-001902
`Application 17/049,911
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`identification of the Appellant’s (inventor’s) problem appears to be focused
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`on a solution, rather than a problem addressed by the Appellant (inventor).
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`Second, and more importantly, the Appellant’s invention includes a driving
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`magnet member and a driven magnet memberthat both rotate. See, e.g.,
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`Claim | (“an angle velocity by which the driven magnet memberis rotated
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`in a reverse direction is smaller than an angle velocity by whichthe driving
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`magnet memberis rotated in a normal direction” (emphasis added)). Appeal
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`Br. 10 (Claims App.). The driving magnet memberandthe driven magnet
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`member on the Appellant’s invention is nota stator, 1.e., a stationary portion
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`of an electric generator or motor. Therefore, there is no support for the
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`Examiner’s explanation that a problem faced by the Appellant (inventor) is
`
`the design analysis of the ratio betweenrotor andstator.
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`Wenote that the Appellant points out that a “problem faced by the
`
`inventor of the present application is reducing noise.” Appeal Br. 5—6
`
`(citing Spec. [ 4). The Specification, at paragraph four, describes:
`
`A related-art electric power tool employsa structure
`[0004]
`for transmitting a rotation torque of a motor to the output shaft
`mechanically and so produces noise when used. In particular, a
`mechanical rotary impact tool produces an impact torque when
`the hammerstrikes the anvil and so produces a large impact
`noise. Therefore, developmentof an electric power tool that is
`excellent in quietness, with the impact torque being maintained,
`is called for.
`
`Additionally, we note that the Specification, at paragraphsfive andsix,
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`discusses the solution to the problem of large impact noises produced
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`from a mechanical rotary impacttool:
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`Thepresent disclosure addressesthe issue discussed
`[0005]
`above and a purpose thereof is to provide an electric powertool
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`
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`Appeal 2023-001902
`Application 17/049,911
`
`that is excellent in quietness, with the transmitted torque being
`maintained.
`
`[SOLUTION TO PROBLEM]
`
`An electric power tool according to an embodiment
`[0006]
`of the present disclosure includes: a driving shaft that is driven
`into rotation by a motor; an output shaft on which a front-end
`tool is attachable; a torque transmission mechanism that includes
`a magnet coupling including a driving magnet member coupled
`to the driving shaft side and a driven magnet membercoupled to
`the output shaft side, a momentof inertia of the driven magnet
`memberside being larger than a momentofinertia of the driving
`magnet memberside; and a clutch mechanism provided between
`the motor and the torque transmission mechanism.
`
`While the problem of “reducing noise” may not be the only problem with
`
`which the Appellant (inventor) is involved,it is one that is clearly
`
`demonstrated by the Appellant’s Specification. On this record, the
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`Examinerfails to adequately support a finding that the Gieras reference is
`
`reasonably pertinent to a particular problem with which the inventoris
`
`involved(e.g., reducing noise) or is one which, because of the matter with
`
`whichit deals, logically would have commendeditself to the inventor’s
`
`attention in considering the problem (e.g., reducing noise).
`
`Therefore, we determine that the Examiner’s finding that the Gieras
`
`reference is analogousprior art is inadequately supported. Thus, we do not
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`sustain the Examiner’s rejection of claims 1—4 under 35 U.S.C. § 103.
`
`
`
`Appeal 2023-001902
`Application 17/049,911
`
`DECISION SUMMARY
`
`In summary:
`
`Outcome
`
`Hornschuch, Gieras, po
`aae
`
`Gelfand
`
`TIME PERIOD FOR RESPONSE
`
`No time period for taking any subsequentaction in connection with
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`this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
`
`§ 1.136(a)(1)Gv).
`
`AFFIRMED
`
`