Ex Parte Auman

Board of Patent Appeals and Interferences

May 31, 2006

09895611 (B.P.A.I. May. 31, 2006)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BARNEY J. AUMAN
____________

Appeal No. 2006-0593
Application No. 09/895,611
____________

ON BRIEF
____________

Before FRANKFORT, OWENS and BAHR, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal from the examiner's rejection of claims 3, 4, 6 and 7,
the only claims pending in this application.
We AFFIRM.
Appeal No. 2006-0593 Page 2
Application No. 09/895,611

BACKGROUND
The appellant's invention relates to a machine used to rotate the mold of a capital
for an architectural column in the process of manufacturing a capital from elastomers
and foams or elastomer-foam combinations (present specification, page 1). A copy of
the claims under appeal is set forth in the appendix to the appellant's brief. Independent
claims 3 and 6 are illustrative of appellant’s invention and read as follows.
3. A machine for manufacturing a capital for an architectural
column, which comprises:
a shaft;
a means for rotating said shaft about a first axis,
wherein said shaft extends substantially symmetrically about
a point of rotation for the first axis;
a means for rotating said shaft about a second axis
that is substantially orthogonal to said first axis;
a means for rotating said shaft about a third axis that
is substantially orthogonal both to the first axis and to the
second axis; and
a releasable connector attached to said shaft for
connecting a mold to said shaft.

6. A machine for manufacturing a capital for an architectural
column, which comprises:
a shaft;
a means for rotating said shaft about a first axis;
a means for rotating said shaft about a second axis
that is substantially orthogonal to said first axis;
a means for rotating said shaft about a third axis that
is substantially orthogonal both to the first axis and to the
second axis; and
a releasable connector attached to said shaft for
connecting a mold to said shaft.

Appeal No. 2006-0593 Page 3
Application No. 09/895,611

Applied Prior Art

Mankowich et al. (Mankowich) 3,347,971 Oct. 17, 1967
Bavers 3,596,324 Aug. 3, 1971
Von der Heide 3,683,062 Aug. 8, 1972
Pivar 3,825,395 Jul. 23, 1974
Friesen 4,695,244 Sep. 22, 1987
Pitavy et al. (Pitavy) 4,764,322 Aug. 16, 1988
Lin 5,035,601 Jul. 30, 1991

The Rejections
Claims 3, 4, 6 and 7 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by von der Heide.
Claims 3, 4, 6 and 7 also stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Pitavy in view of any one of Pivar, Lin, Bavers, Friesen, Mankowich
and von der Heide.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding this appeal, we make reference to the examiner's answer
(mailed June 1, 2005) for the examiner's complete reasoning in support of the rejections
and to the appellant's brief (filed March 7, 2005) for the appellant's arguments
thereagainst.
Appeal No. 2006-0593 Page 4
Application No. 09/895,611

OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claims, to the applied prior art, and to the respective
positions articulated by the appellant and the examiner. On the basis of this review, for
the following reasons, we conclude that the examiner’s rejections should be sustained.
The teachings of the references relied upon by the examiner are not in dispute in
this appeal. Rather, the dispositive issue in this appeal is the meaning of “a means for
rotating said shaft about a third axis that is substantially orthogonal both to the first
axis and to the second axis” as set forth in independent claims 3 and 6. Specifically,
the appellant contends that von der Heide does not anticipate the subject matter of
claims 3, 4, 6 and 7 because
although the axes of the device in von der Heide that
produce rotation in the direction of the arrows 110 and 111
will always be orthogonal to one another, the axis that
produces the rotation shown in FIG. 9 in a clockwise
direction, will not always be orthogonal to the axis that
produces the rotation in the direction of arrow 110. In fact,
rotation in the direction of arrow 111 will sometimes cause
the axis that produces the rotation in the direction of arrow
110 to be parallel to the axis that produces the rotation
shown in FIG. 9 in a clockwise direction [brief, page 12].

Likewise, with respect to Pitavy, the appellant urges that
in Pitavy et al., although the y and z axes will always be
orthogonal to one another and the x and y axes will always
be orthogonal to one another, rotation about the y axis will
Appeal No. 2006-0593 Page 5
Application No. 09/895,611

cause the x axis not to be orthogonal with respect to the z
axis and, at times, even parallel to the z.
Consequently, Applicant respectfully suggests that no
matter with what Pitavy et al. is combined, the combination
will not create the device of the present claims 3, 4, 6, and 7,
which require a third axis that is substantially orthogonal both
to the first axis and to the second axis [brief, page 13].

We find no requirement in any of claims 3, 4, 6 and 7 that the first, second and third
axes be orthogonal, or even substantially orthogonal to one another at all times.
Moreover, we find no indication in the appellant’s underlying disclosure, either with the
specification as originally filed or as amended with the subject matter objected to by the
examiner as new matter, that the third axis of rotation is substantially orthogonal to both
of the first (pitch) and second (roll) axes of rotation at all times during the rotation.
Specifically, with the table 19 rotated substantially away from its orthogonal orientation,
shown in Figure 2, with respect to the supporting bars 20, the (roll) axis of rotation of
shaft 2 will not be substantially orthogonal to the axis of rotation of the supporting bars
20 (as described in the penultimate paragraph on page 8 of appellant’s specification as
originally filed). On the other hand, even with the description of the third axis of rotation
in the amended version of the penultimate paragraph on page 8 of the specification,
rotary motion of supports holding the shaft 2 to table 19 would move the (roll) axis of
rotation of the shaft to an orientation that is not substantially orthogonal to the (pitch)
axis of the table 19. We thus conclude that the claim language “a means for rotating
said shaft about a third axis that is substantially orthogonal both to the first axis and to
Appeal No. 2006-0593 Page 6
Application No. 09/895,611

the second axis” cannot reasonably be read, in light of appellant’s specification, as
requiring that the three axes of rotation be substantially orthogonal to one another at all
times during the rotation.
In light of the above, the appellant’s line of argument is not persuasive of any
error on the part of the examiner in determining that claims 3, 4, 6 and 7 are anticipated
by von der Heide or rendered unpatentable over Pitavy in view of any of Pivar, Lin,
Bavers, Friesen, Mankowich and von der Heide. The rejections are sustained.
The appellant contends that the examiner’s objection to the amended
specification under 35 U.S.C. § 132 as containing new matter is an appealable issue,
presumably on the basis that Section 2163.06 of the Manual of Patent Examining
Procedure (MPEP) indicates that “If both the claims and specification contain new
matter either directly or indirectly, and there has been both a rejection and objection by
the examiner, the issue becomes appealable and should not be decided by petition”
(brief, page 12). We are not, however, presented with the situation described in that
section of the MPEP. Specifically, while it is true that the examiner has both objected to
new matter in the specification and rejected claims 3, 4, 6 and 7, the examiner has not
rejected the claims as containing new matter (or lacking written description support) and
has not alleged that the particular subject matter in the specification characterized by
the examiner as new matter is present in any of the claims. In this instance, for the
reasons discussed above, the determination with regard to the objection to the
Appeal No. 2006-0593 Page 7
Application No. 09/895,611

specification has no bearing on the anticipation and obviousness issues in this appeal.
Accordingly, the examiner’s objection and requirement for deletion of new matter added
to the specification is reviewable by petition under 37 CFR § 1.181 and not by the Board
of Patent Appeals and Interferences.
CONCLUSION
To summarize, the decision of the examiner to reject claims 3, 4, 6 and 7 under
35 U.S.C. § 102(b) and 35 U.S.C. § 103(a) is AFFIRMED.
Appeal No. 2006-0593 Page 8
Application No. 09/895,611

No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a).
AFFIRMED

CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
TERRY J. OWENS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
Appeal No. 2006-0593 Page 9
Application No. 09/895,611

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