Ex Parte Borzym

Board of Patent Appeals and Interferences

Mar 5, 2008

10310194 (B.P.A.I. Mar. 5, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JOHN J. BORZYM
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Appeal 2008-0120
Application 10/310,194
Technology Center 3700
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Decided: March 5, 2008
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Before WILLIAM F. PATE, III, JENNIFER D. BAHR, and DAVID B.
WALKER, Administrative Patent Judges.

PATE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s final
rejection of claims 19 and 20, all the claims currently pending in the application.
We have jurisdiction under 35 U.S.C. § 6(b) (2002).

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SUMMARY OF DECISION
We REVERSE.

THE INVENTION
Appellant’s claimed invention is directed to a method of cutting tubular steel
stock (Spec. ¶ 0001). Claim 19, reproduced below, is representative of the subject
matter on appeal.
19. A method of cutting tubing with a supported shear having a set of
relatively movable external tools defining a shear plane which lies between
an input side from which uncut tubes are fed and an output side into which
cut tube portions are fed, the supported shear further having an internal
mandrel mounted on the end of a rod lying entirely on the input side of the
shear plane, the shear apparatus further including a tube feed device on the
input side, wherein the method comprises the steps of:
setting the tools in a condition which obstructs the movement of
tubing through the shear plane;
operating the feed device for the purpose of causing a tube to advance
into a position abutting the tools at the shear plane;
resetting the tools to an unobstructed condition;
further operating the feed device for the purpose of advancing the tube
a predetermined distance beyond the shear plane;
determining whether or not tubing has actually advanced substantially
the predetermined distance and producing a signal quantity having a data
content indicating the results of the determination; and
controlling further movement of the tube according to the data content
of the signal quantity.
THE REJECTIONS
The Examiner relies upon the following evidence in the rejections:
Rollyson US 4,585,600 Apr. 29, 1986
Suitts US 5,406,870 Apr. 18, 1995
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Borzym US 6,123,003 Sep. 26, 2000

The following rejections are before us for review.
1. Claim 19 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Borzym and Suitts.
2. Claims 19 and 20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Borzym in view of Rollyson.
ISSUE
Appellant contends that Suitts “does not teach or make obvious the last three
steps of the claimed method and does not produce the whole invention when or if
combined with Borzym” (Appeal Br. 6), and Rollyson fails “to suggest the use of a
‘sensor’ in a verification method as defined” by the claimed invention (Appeal Br.
9). The Examiner contends Suitts and Rollyson both teach cutting devices which
utilize sensors to determine whether or not tubing has advanced a predetermined
distance beyond a cutting plane and produce a signal indicating the result of the
determination (Answer 7 and 9).
The issue before us is whether the applied combinations teach a method of
cutting tubing which includes, inter alia, advancing the tubing a predetermined
distance beyond a shear plane, determining whether the tubing actually advanced
the predetermined distance, producing a signal indicating the results of the
determination, and controlling further movement of the tubing based on the
produced signal.
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FINDINGS OF FACT
We find that the following enumerated findings are supported by at least a
preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed.
Cir. 1988) (explaining the general evidentiary standard for proceedings before the
Office).
1. Appellant admits that Borzym clearly teaches an apparatus which is
designed and programmed to carry out the first three steps of the claimed invention
(Appeal Br. 4).
2. Borzym fails to teach determining whether or not tubing has advanced
a predetermined distance and producing a signal indicating the results of the
determination.
3. Suitts teaches a method of operating a tube cutting machine to move
lengths of tubing and cut tubing pieces the length of the machine for discharge
from an end of the machine remote from a cutting head (Suitts, col. 1, ll. 8-12).
4. The tube is fed into the tube cutter on a carriage which includes means
for detecting the leading edge of the tube and for detecting the trailing edge of the
tube (Suitts, col. 1, ll. 12-14).
5. Initially, a sensor determines if a length of tubing is available to be
clamped by the carriage 67. If so, the carriage clamps the available tubing (Suitts,
col. 5, ll. 6-8).
6. As the length of tube is transported, the leading edge of the tube is
detected by sensor 75, and the location of the carriage 67 is determined. The
machine then calculates the relative tube position and advances the leading edge of
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the tube a fixed distance across the cut line to make a crop cut (Suitts, col. 5, ll. 8-
14).
7. The carriage 67 then retracts and clamps the tube at a location farther
from the leading edge and advances the tube forward as each cut is made until the
sensor 77 detects a trailing edge of the tube. Upon sensing the trailing edge of the
tube, the machine calculates the carriage position and signals the machine as to the
relative position of the tube end (Suitts, col. 5, ll. 14-20).
8. Suitts fails to teach producing a signal indicating whether the tubing
has advanced a predetermined distance and controlling further movement of the
tube based on the signal.
9. Rollyson teaches a method of cutting stick propellant in precise
lengths independent of fluctuations in strand velocity (Rollyson, col. 1, ll. 11-13).
10. Sensors are employed so that strand velocity just prior to the cut is
measured/computed and the cutter motor action activated in accordance to strand
velocity (Rollyson, col. 3, ll. 18-20).
11. The output of sensors at P0, P1 is used to select various modes of
operation of a Binary Code Decimal (BCD) counter (Rollyson, col. 3, ll. 25-27).
12. When the propellant reaches P0, the load input is deactivated and the
counter begins to count pulses from the precision oscillator 50. It counts down
from the preset value, becoming more negative in value until the propellant reaches
P1. At this point the count direction is reversed and the counter value begins to
increase toward zero (Rollyson, col. 3, ll. 41-47).
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13. When the count value reaches zero, a pulse is sent out to the cutter by
a time period equal to the cutter delay in advance of the propellant reaching P2
(Rollyson, col. 3, ll. 47-50).
14. Rollyson fails to teach controlling the movement of the propellant.
PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences between the
subject matter sought to be patented and the prior art are such that the subject
matter as a whole would have been obvious at the time the invention was made to a
person having ordinary skill in the art to which said subject matter pertains.’” KSR
Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1734 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations including
(1) the scope and content of the prior art, (2) any differences between the claimed
subject matter and the prior art, and (3) the level of skill in the art. Graham v. John
Deere Co., 383 U.S. 1, 17-18 (1966). See also KSR, 127 S.Ct. at 1734 (“While the
sequence of these questions might be reordered in any particular case, the
[Graham] factors continue to define the inquiry that controls.”) The Court in
Graham further noted that evidence of secondary considerations “might be utilized
to give light to the circumstances surrounding the origin of the subject matter
sought to be patented.” 383 U.S. at 17-18.
In KSR, the Supreme Court emphasized “the need for caution in granting a
patent based on the combination of elements found in the prior art,” id. at 1739,
and discussed circumstances in which a patent might be determined to be obvious.
In particular, the Supreme Court emphasized that “the principles laid down in
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Graham reaffirmed the ‘functional approach’ of Hotchkiss, 11 How. 248.” KSR,
127 S.Ct. at 1739 (citing Graham, 383 U.S. at 12 (emphasis added)), and
reaffirmed principles based on its precedent that “[t]he combination of familiar
elements according to known methods is likely to be obvious when it does no more
than yield predictable results.” Id.
ANALYSIS
Rejection of claim 19 as unpatentable over Borzym and Suitts
Appellant contends that claim 19 is patentable over the combination of
Borzym and Suitts because Suitts “does not teach or make obvious the last three
steps of the claimed method and does not produce the whole invention when or if
combined with Borzym ‘003” (Appeal Br. 6). More specifically, Appellant
contends that the leading edge detector 75 of Suitts is not downstream of the shear
plane and therefore cannot possibly determine whether or not tubing has advanced
a predetermined distance beyond the shear plane (Id.).
In rejecting claim 19, the Examiner found that Suitts teaches (1) a sensor 75,
located a predetermined distance relative to the axis of the cutting head 54, that
detects the leading edge of the tube and communicates data regarding the position
of the leading edge to a programmable controller, and (2) a sensor 77 that detects
the trailing edge of the tube which indicates how far the tube has advanced beyond
the shear plane (Answer 4). The Examiner further found that “when the leading
edge of the tube is detected, the position of the tube, which is inherently located a
predetermined distance beyond the shear plane, is known” (Answer 7). We
disagree.
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Suitts teaches a method of operating a tube cutting machine to move lengths
of tubing and cut tubing pieces the length of the machine for discharge from an end
of the machine remote from a cutting head (Finding of Fact 3). The tube is fed into
the tube cutter on a carriage which includes means for detecting the leading edge
of the tube and for detecting the trailing edge of the tube (Finding of Fact 4).
Initially, a sensor determines if a length of tubing is available to be clamped by the
carriage 67. If so, the carriage clamps the available tubing (Finding of Fact 5). As
the length of tube is transported, the leading edge of the tube is detected by sensor
75, and the location of the carriage 67 is determined. The machine then calculates
the relative tube position and advances the leading edge of the tube a fixed distance
across the cut line to make a crop cut (Finding of Fact 6). The carriage 67 then
retracts and clamps the tube at a location farther from the leading edge and
advances the tube forward as each cut is made until the sensor 77 detects a trailing
edge of the tube. Upon sensing the trailing edge of the tube, the machine
calculates the carriage position and signals the machine as to the relative position
of the tube end (Finding of Fact 7).
Although Suitts teaches utilizing a sensor to detect the leading edge of the
tube, it is not inherent that when the leading edge is detected the tube is located a
predetermined distance beyond the shear plane. To the contrary, because the
leading edge sensor 75 of Suitts is located before the shear plane, it must be
triggered before the tube ever crosses the shear plane. Therefore, the signal
produced by the leading edge sensor 75 cannot possibly determine whether or not
the tube has advanced a predetermined distance beyond the plane. Furthermore,
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the trailing edge sensor of Suitts is utilized to determine the length of tubing left to
be cut (i.e., the amount of tubing available to be advanced beyond the cutter), not
whether the tube has advanced a predetermined distance beyond the cutter. The
combination of Borzym and Suits fails to provide a method of cutting tubing which
includes, inter alia, advancing the tubing a predetermined distance beyond a shear
plane, determining whether the tubing actually advanced the predetermined
distance, producing a signal indicating the results of the determination, and
controlling further movement of the tubing based on the produced signal. As such,
we cannot sustain the Examiner’s rejection of claim 19 as unpatentable over
Borzym and Suitts.
Rejection of claims 19 and 20 as unpatentable over Borzym and Rollyson
Appellant contends that Rollyson teaches three sensors P0, P1, P2
downstream of a cutter 18 that “work in combination with a pulse counting
scheme… to ensure that the cutter operates as the lead edge reaches P2 regardless
of stock speed” and “[t]his is not a registration verification technique” (Reply Br.
3). The Examiner found Rollyson teaches sensors P0, P1, located at a fixed
location relative to the cutter 18, that detect the material 14 and produce output
signals that are utilized by the cutter 18 to further advance the material 14 (Answer
6).
Rollyson teaches a method of cutting stick propellant in precise lengths
independent of fluctuations in strand velocity (Finding of Fact 9). Sensors are
employed so that strand velocity just prior to cutting is computed and the cutter
motor action is activated based on the computed velocity to ensure consistent
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strand lengths (Finding of Fact 10). The output of sensors at P0, P1 is used to select
various modes of operation of a Binary Code Decimal (BCD) counter (Finding of
Fact 11). When the propellant reaches P0, the load input is deactivated and the
counter begins to count pulses from the precision oscillator 50. It counts down
from the preset value, becoming more negative in value until the propellant reaches
P1. At this point, the count direction is reversed and the counter value begins to
increase toward zero (Finding of Fact 12). When the count value reaches zero, a
pulse is sent out to the cutter by a time period equal to the cutter delay in advance
of the propellant reaching P2 (Finding of Fact 13). Although the sensors P1 and P2
inherently determine whether or not the material has advanced a predetermined
distance beyond the cutting plane, there is no disclosure or suggestion in Rollyson
of controlling further movement of the material based on the output of these
sensors. To the contrary, the cutting device of Rollyson utilizes a pneumatic
conveyor 28 to carry the material 14 through the cutting plane. As a result, the
material 14 continues to move irrespective of the output of the sensors. The sensor
output is utilized to control the cutter 18, not the movement of the material.
Therefore, Rollyson fails to teach controlling the movement of the propellant
(Finding of Fact 14). As such, we cannot sustain the Examiner’s rejection of
claims 19 and 20 as unpatentable over Borzym and Rollyson.
CONCLUSIONS OF LAW
We conclude that the Examiner erred in rejecting claim 19 under 35 U.S.C.
§ 103(a) as unpatentable over Borzym and Suitts, and claims 19 and 20 as
unpatentable over Borzym and Rollyson.
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DECISION
The Examiner’s decision under 35 U.S.C. § 103(a) to reject claim 19 as
unpatentable over Borzym and Suitts, and claims 19 and 20 as unpatentable over
Borzym and Rollyson is reversed.
REVERSED

JRG

Thomas N. Young
YOUNG & BASILE P.C.
Suite 624
3001 W. Big Beaver Road
Troy, MI 48084