throbber
www.uspto.gov
`
`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
`
`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.
`
`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
`
`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
`
`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
`
`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-
`
`entered amendments would overcome the Examiner’s rejections under
`
`35 U.S.C. § 112. Appeal Br. 5; Reply Br. 2; see Advisory Act. 1-2
`
`(Box 7(a) (“For purposesof appeal, the proposed amendment(s): (a). .
`
`. will
`
`not be entered”); “The amended claims do not overcometheprior art and
`
`would not advanceprosecution. ... [T]he claim amendment would
`
`overcomethe previous 112 rejections.”). The Appellant’s argumentis
`
`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
`
`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
`
`

`

`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;
`
`Reply Br. 2-5.
`
`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
`
`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
`
`problem with which the inventoris involved. See In re Deminski, 796 F.2d
`
`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
`
`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
`
`field of the inventor’s endeavor, regardless of the problem addressed — as
`
`discussed above, the Examinerfinds that the Gieras reference is in the same
`
`field of the endeavor because Gieras’ “flywheelis an electric motor that
`
`4
`
`

`

`Appeal 2023-001902
`Application 17/049,911
`
`uses electricity in order to translate electric energy into mechanical
`
`(kinetic) energy via the spinning of a rotor.” Ans. 7. In making this
`
`finding, the Examiner appears to focus solely on the aspect of the claimed
`
`invention that Gieras1s relied upon to teach,1.e., “a momentof inertia on a
`
`driven magnet memberside being larger than a momentofinertia on a
`
`driving magnet memberside.” See Ans. 6; Final Act. 8. The Examiner
`
`misapplies the field of endeavortest to the facts of the present Appeal.
`
`“Thfe field of endeavor] test for analogous art requires the PTO to
`
`determine the appropriate field of endeavor by reference to explanations of
`
`the invention ’s subject matter in the patent application, including the
`
`embodiments, function, and structure of the claimed invention.” Bigio, 381
`
`F.3d at 1325-26 (citations omitted, emphasis added); MPEP § 2141.01(a)()
`
`(citing Airbus S.A.S. v. Firepass Corp., 941 F.3d 1374, 1380 (Fed. Cir.
`
`2019)).
`
`In this regard, the Appellant points out, and weagree,that the field of
`
`the inventor’s endeavoris “an electric power tool.” Appeal Br. 5. We note
`
`that the title of the Specification is “ELECTRIC TOOL?”andthe section
`
`entitled “TECHNICAL FIELD”describes “[t]he present disclosure relates to
`
`an electric power tool adapted to transmit a torque produced bythe rotation
`
`of a driving shaft to an output shaft so as to rotate a front-end tool.”
`
`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,
`
`the Appellant points out that the field of Gieras’ endeavor “is directed to a
`
`flywheel energy storage (FES) system.” Appeal Br. 5; see Ans. 6 (“The
`
`[Gieras] device is a flywheel energy storage (FES) device.”). The Appellant
`
`asserts that “the flywheel energy storage (FES) system of [Gieras] is
`
`

`

`Appeal 2023-001902
`Application 17/049,911
`
`functionally and structurally different from an electric powertool of the
`
`present application.” Appeal Br. 7; see Reply Br. 5.
`
`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
`
`Examinerfails to adequately support a finding that the field of Gieras’
`
`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
`
`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
`
`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
`
`whether a PHOSITA ‘would reasonably have consulted’ the reference in
`
`solving the relevant problem.”) (citing Heidelberger Druckmaschinen AG vy.
`
`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
`
`present Appeal by not focusing on a problem that the Appellant (inventor) is
`
`involved.
`
`The Examiner’s explanation of the Appellant’s problem,1.¢., “the
`
`problem being the design analysis of the ratio between rotor and stator”
`
`(Ans. 7), is not representative of a problem faced by the Appellant
`
`(inventor). First, the design analysis is not a problem; rather, the design
`
`analysis pertains to the solution of a problem. Therefore, the Examiner’s
`
`

`

`Appeal 2023-001902
`Application 17/049,911
`
`identification of the Appellant’s (inventor’s) problem appears to be focused
`
`on a solution, rather than a problem addressed by the Appellant (inventor).
`
`Second, and more importantly, the Appellant’s invention includes a driving
`
`magnet member and a driven magnet memberthat both rotate. See, e.g.,
`
`Claim | (“an angle velocity by which the driven magnet memberis rotated
`
`in a reverse direction is smaller than an angle velocity by whichthe driving
`
`magnet memberis rotated in a normal direction” (emphasis added)). Appeal
`
`Br. 10 (Claims App.). The driving magnet memberandthe driven magnet
`
`member on the Appellant’s invention is nota stator, 1.e., a stationary portion
`
`of an electric generator or motor. Therefore, there is no support for the
`
`Examiner’s explanation that a problem faced by the Appellant (inventor) is
`
`the design analysis of the ratio betweenrotor andstator.
`
`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,
`
`discusses the solution to the problem of large impact noises produced
`
`from a mechanical rotary impacttool:
`
`Thepresent disclosure addressesthe issue discussed
`[0005]
`above and a purpose thereof is to provide an electric powertool
`
`

`

`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
`
`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
`
`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
`
`this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
`
`§ 1.136(a)(1)Gv).
`
`AFFIRMED
`
`

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket