Ex Parte Borzym

Board of Patent Appeals and Interferences

Feb 27, 2008

10245192 (B.P.A.I. Feb. 27, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JOHN J. BORZYM
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Appeal 2007-1875
Application 10/245,192
Technology Center 3700
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Decided: February 27, 2008
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Before TERRY J. OWENS, MURRIEL E. CRAWFORD, and JOSEPH A.
FISCHETTI, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. §§ 6(b) and 134(a) (2002) from the
final rejection of claims 1-10.
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Application 10/245,192

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Representative claim 1 reads as follows:
Claim 1: For use in an apparatus for performing a shearing
process on metal tubing which requires feeding the tubing over a
small diameter, flexible mandrel support rod within the tubing:
a small diameter, flexible mandrel rod extending between an
entry point and a shearing point;
a tubing support body attached to the mandrel rod between the
entry point and shearing point; and
at least one roller rotatably attached to the body for rotation
about an axis perpendicular to the rod, said roller extending from said
body for rolling contact with the inner surface of said metal tubing.
The references set forth below are relied upon as evidence of
unpatentability:
Craig US 1,905,158 Apr. 25, 1933
Schaefer US 2,654,014 Sep. 29, 1953
Shetler US 5,657,793 Aug. 19, 1997
Borzym US 6,123,003 Sep. 26, 2000

Claims 1 and 6 are the sole independent claims from which all
dependent appealed claims depend. Claims 1 and 6 stand rejected under 35
U.S.C. § 103(a) being unpatentable over Borzym in view of Schaefer.
Claims 1 and 6 each require: 1) “at least one roller rotatably attached
to the body for rotation about an axis perpendicular to the rod, said roller
extending from said body for rolling contact with the inner surface of said
metal tubing.”
It is undisputed that Borzym discloses all the elements of claims 1 and
6 except for the above listed roller element mounted on the body. (Appeal
Br. 6-8.)
The Examiner found that “Schaefer teaches a mandrel rod 23, 25
including a mandrel support body and rollers 24 which are attached to the
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body for rotation about an axis perpendicular to the rod 23,25.”
(Final Rej. 3) This too is undisputed. (Appeal Br. 6-8.)
However what Appellant does challenge is the Examiner’s conclusion
that
It would have been obvious to a person of
ordinary skill in the art to provide Borzym's tubing
support body with the rollers as taught by Schaefer
in order to provide support and stability to the
tubing during the shearing process and reduce the
friction between the support body and inner
surface of the tubing.
(Final Rej. 4).
We agree with Appellant that no prima facie case of obviousness has
been made by the Examiner in the proposed combination of Borzym and
Schaefer which underlies all rejections made under 35 U.S.C. § 103(a); thus
we cannot sustain the rejections of claims 1-10 under 35 U.S.C. § 103(a) for
the reasons set forth as follows.
In Schaefer, the mandrel 25 does not serve the purpose of preventing
sagging of the tubing into which it is inserted. Rather, in Schaefer, a
plurality of closely spaced conveyor rollers 54 and propelling rollers 53
support the tube at numerous points along its length. Further, the mandrel
25 in Schaefer is disclosed as being supported only at one end by a bracket
31 (col. 4, ll. 5-7) thereby leaving the roller body 24 to trail along at the free
end of the mandrel. Thus, the roller body in Schaefer is incapable of
preventing sagging in the tube because it is not supported at both axial ends
by the mandrel. This is because the mandrel 25 as shown in Figure 1 in
Schaeffer is described as having only two purposes: 1) to supply inert gas
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through openings 27 to a chamber defined by cups 28 and 291 carried by the
hollow mandrel (col. 3, ll. 62-70), and 2) to carry burr rollers 24 (col. 3, l.
61). The rollers 24 are defined in Schaefer as burr rollers because they roll
the inner bead formed at the seam of the tube (col. 5, ll. 45-47). Thus, the
problem faced by Schaefer and addressed by the rollers 24 cannot be said to
be the same as found in Borzym,2 or for that matter in Appellant’s device.
As such, the rollers 24 in Schaefer being supported by the mandrel at only
one end can only respond to the need of flattening the inner bead of the weld
and not to sagging. We therefore cannot sustain the rejection of independent
claims 1 and 6 under 35 U.S.C. § 103(a) based on Borzym and Schaefer, nor
claims 2 and 7 which depend respectively from these claims.
Dependent claims 3, 4, 8, 9, and 5, 10 are rejected on the merits under
35 U.S.C. § 103(a) using Shetler and Craig, respectively, in combination
with Borzym and Schaefer, where Borzym and Schaefer are used to cover
the limitations of independent claims 1 and 6. Thus, the rejections of claims
3, 4, 5, 8, 9, and 10 cannot be sustained for the reasons set forth, supra.
Finally we cannot sustain the 35 U.S.C. § 112, first paragraph
rejection of claims 1-10 as failing to comply with the written description
requirement. The Specification is clear as to the problem of sagging in both

1 We note that the same problem which Borzym seeks to avoid,
namely, that the forms 48 and 50 “create friction which adds to the power
required from the feed system…” (Specification 2:[0004]) would
undesirably be introduced by the sealing cups 28 and 29 carried by the
mandrel 25 in Schaeffer.
2 The Specification describes Borzym as using “forms 48 and 50
located at spaced midpoints along the mandrel rod and conforming
substantially to the inside surface configuration of the tubing” to overcome
the problem sagging along the mandrel length (Specification 1:[0003]).

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the prior art mandrel as addressed in paragraph [0003] and in the mandrel
rod 22 in the invention at paragraph [0018]. In paragraph [0003], the
Specification further describes the mandrel rod as being “… 20 or more feet
long and made of relatively small diameter steel stock, [and thus] tends to
sag relative to the tube centerline unless support is provided at one or more
midpoints.” (Specification 1: [0003]). In paragraph [0018] the Specification
even refers to the mandrel rod as “flexing.” Thus, whether a root term
“flex” is used in a verb form, e.g., in the Specification as “flexing,” or
recited as an adjective in the claims, e.g., “flexible”, is not a departure from
its meaning derived from the Specification conveying with reasonable clarity
to those skilled in the art that, as of the filing date sought, the mandrel rod is
flexible. See Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir.
1991). An applicant shows possession of the claimed invention by
describing the claimed invention with all of its limitations using such
descriptive means as words, structures, figures, diagrams, and formulas that
fully set forth the claimed invention. See Lockwood v. Am. Airlines, Inc.,
107 F.3d 1565, 1572 (Fed. Cir. 1997).
The decision of the Examiner is REVERSED.
REVERSED

hh

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