Ex Parte Diehl et al

Patent Trial and Appeal Board

Jan 22, 2018

14980911 (P.T.A.B. Jan. 22, 2018)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/980,911 12/28/2015 Alan DIEHL 10761-14U2 9081
570 7590 01/24/2018
PANITCH SCHWARZE BELISARIO & NADEL LLP
ONE COMMERCE SQUARE
2005 MARKET STREET, SUITE 2200
PHILADELPHIA, PA 19103
EXAMINER
GAMI, TEJAL
ART UNIT PAPER NUMBER
2126
NOTIFICATION DATE DELIVERY MODE
01/24/2018 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):
u sptomail @ panitchlaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALAN DIEHL and ROBERT B. PATTERSON
Appeal 2017-009931
Application 14/980,911
Technology Center 2100
Before JEAN R. HOMERE, MICHAEL J. STRAUSS, and
MICHAEL M. BARRY, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from a Non-Final
Rejection of claims 1—20. We have jurisdiction under 35 U.S.C. § 6(b). We
heard oral arguments in this appeal on October 24, 2017.
We reverse.
1 Appellants identify Truemill, Inc. as the real party in interest. App. Br. 3.
Appeal 2017-009931
Application 14/980,911
Introduction
Appellants describe the disclosed and claimed invention as relating to
“a computer program that generates commands for a CNC [computer
numerical control] milling machine for forming a starting hole in a
workpiece.” Spec. 14. In describing the background to the invention,
Appellants identify that, for milling a piece of material, there is a general
requirement for a starting hole, which may be created by a drill bit or an end
mill. Id. 5—7. Claim 1 is representative:
1. A method of creating a starting hole for milling in
a surface of a workpiece by a CNC milling machine with a
milling cutter mounted to a rotating spindle, the method
comprising:
(a) milling a first hole at a first diameter to a first depth
into the workpiece along the axis of the starting hole; and
(b) successively milling a second hole at a second
diameter to a second depth into the workpiece along the axis of
the starting hole, wherein the second diameter is smaller than
the first diameter, wherein the starting hole always includes
milling the first hole and the second hole,2 and wherein the
diameter of the milling cutter is less than the diameter of the
first hole and the second hole.3
App. Br. 21 (Claims App’x).
2 The claim requirement “wherein the starting hole always includes milling
the first hole and the second hole” recites a structural limitation (“wherein
the starting hole includes . . .”) that includes only a method step limitation
(“milling the first hole and the second hole”). Because the claim otherwise
requires creating a (single) starting hole with steps of milling the first and
second holes, this requirement appears to be redundant.
3 In view of Appellants’ Specification, we construe the requirement of
“wherein the diameter of the milling cutter is smaller than the diameter of
the first hole and the second hole” as requiring the same milling cutter be
used for both milling the first hole and milling the second hole, and that the
diameter of the milling cutter is smaller than the diameter of the second hole.
2
Appeal 2017-009931
Application 14/980,911
The two steps of milling in the method of claim 1 result in a starting
hole with a smaller-diameter second hole at the bottom of a larger-diameter
first hole, such as that shown in the example of Figure 1 of Appellants’
Application, reproduced here:
z
i
“FIG. 1 is a diagram of a tool path for milling a starting hole in a workpiece
in accordance with a preferred embodiment of the invention.” Spec. 118.
Rejections
Claims 1—20 stand rejected under 35 U.S.C. § 103 as unpatentable
over Diehl et al. (US 2005/0256604 Al; Nov. 17, 2005) (Diehl), Fischer et
al. (US 2002/0195428 Al; Dec. 26, 2002) (“Fischer”), and Agapiou et al.
(US 2007/0269282 Al; Nov. 22, 2007) (“Agapiou”). Final Act. 2-11.
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Appeal 2017-009931
Application 14/980,911
ANALYSIS
In rejecting claim 1, the Examiner relies on Diehl for teaching
“milling a first hole at a first diameter to a first depth into the workpiece
along the axis of the starting hole” and on Fischer, in view of Diehl, for
teaching or suggesting “successively milling a second hole at a second
diameter to a second depth into the workpiece along the axis of the starting
hole, wherein the second diameter is smaller than the first diameter.” Non-
Final Act. 3—4. Appellants argue the Examiner errs in relying on Fischer
because it is not analogous art to Appellants’ invention. See App. Br. 7—8,
11—18. Appellants contend “Fischer has nothing whatsoever to do with the
claimed invention. Fischer is not creating a starting hole for milling in a
surface of a workpiece. The holes that are formed in Fischer are solely for
the completely different purpose of removing an object. . . .” App. Br. 7;
see also id. at 8, 11—18.
To rely on a reference as a basis for rejection, the reference must
either be in the same field of endeavor as the invention or else be reasonably
pertinent to a problem with which the inventor was concerned. In re
Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992). “A reference is reasonably
pertinent if, even though it may be in a different field from that of the
inventor’s endeavor, it is one which, because of the matter with which it
deals, logically would have commended itself to an inventor’s attention in
considering his [or her] problem.” In re ICON Health & Fitness, Inc., 496
F.3d 1374, 1379-80 (Fed. Cir. 2007) (quoting In re Clay, 966 F.2d 656, 659
(Fed. Cir. 1992)). The Federal Circuit notes, “[t]he Supreme Court’s
decision in KSR . . . directs us to construe the scope of analogous art broadly,
stating that ‘ familiar items may have obvious uses beyond their primary
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Appeal 2017-009931
Application 14/980,911
purposes. ’” Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir.
2010) (quoting with emphasis, KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398,
402 (2007)). For example, when a problem is not unique to the claimed
subject matter, a skilled artisan addressing a problem with portable
computers may look to areas such as “a desktop telephone directory, a piano
lid, a kitchen cabinet, a washing machine cabinet, a wooden furniture
cabinet, or a two-part housing for storing audio cassettes.” See In re
Paulsen, 30 F.3d 1475, 1481—82 (Fed. Cir. 1994) (affirming rejection of a
laptop computer hinge as obvious over hinged cabinets, piano lids, etc.,
because the “problem is not unique to portable computers”).
The Examiner responds to Appellants’ arguments by finding “the
inventor’s field of endeavor is hole diameter and depth[, wjhich is analogous
to Fischer (see Fischer: Abstract).” Ans. 16. We disagree with the
Examiner. The field of endeavor of Appellants’ invention is milling4 in
general, and more specifically, as recited in claim 1 ’s preamble, “creating a
starting hole for milling.” The endeavor Fischer is concerned with is the
maintenance and repair of steam turbines, including the removal and repair
of turbine buckets, and at more general level Fischer is concerned with the
basic idea of pin removal by drilling. See Fischer ]f]f 1—6. Pin removal is not
an aspect of milling. Thus, Fischer is not in the same field of endeavor as
Appellants’ invention.
The crux of the analogous art issue, then, is whether Fischer’s
disclosure of a method of drilling for pin removal is reasonably pertinent to
4 Putting aside the superfluous wherein clause, see supra note 2, claim 1
essentially requires successively milling two coaxial, successively smaller-
diameter holes using a milling cutter having a diameter smaller than either
hole.
5
Appeal 2017-009931
Application 14/980,911
the problem facing Appellants. It is not. As the limitations of claim 1 and
the Specification make clear, see Spec. 5—12, any characterization of the
problem facing Appellants includes the challenges of using a milling cutter
for creating a starting hole. A reference that teaches a method of drilling can
certainly be pertinent to such a challenge. Indeed, Appellants were aware of
drilling as a pertinent option for creating a starting hole. See Spec. 1 6.
Fischer, however, which the Examiner relies upon essentially to show a hole
structure with a coaxial, smaller-diameter hole as created by the second step
of claim 1, is simply inapposite to the problem solved by Appellants. The
problem solved by claim 1 is how to use a milling cutter to create the
starting hole. We agree with Appellants that an ordinarily skilled artisan,
considering these issues, would not have consulted Fischer’s teaching of a
method for drilling stuck dovetail pins out of a turbine bucket. Reply Br. 2;
App. Br. 7-8, 11-18.
Accordingly, because the Examiner’s determination of obviousness
for claim 1 relies on Fischer, we do not sustain the rejection of claim 1 under
35 U.S.C. § 103.5 We also, for the same reasons, do not sustain the § 103
5 Because we reverse the rejection based on the dispositive issue of whether
Fischer is analogous art, we do not address Appellants’ other arguments,
about which we express no opinion. We note, in an ex parte appeal, the
Board “is basically a board of review—we review . . . rejections made by
patent examiners.” Ex parte Gambogi, 62 USPQ2d 1209, 1211 (BPAI
2001). Review under 35 U.S.C. § 134 is not a process for the Board “to
examine the application and resolve patentability in the first instance.” Ex
parte Braeken, 54 USPQ2d 1110, 1112 (BPAI 1999). The Board’s primary
role is to decide based on the findings and conclusions presented by the
Examiner. See 37 C.F.R. § 41.50(a)(1). We express no opinion as to the
validity of the pending claims in view of additional explanation and/or
references. Although we have authority to reject claims under 37 C.F.R.
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Appeal 2017-009931
Application 14/980,911
rejection of independent claim 11, which recites commensurate limitations
and stands rejected on the same grounds, or of dependent claims 2—10 and
12—20, which stand rejected over the same prior art as claims 1 and 11.
DECISION
For the above reasons, we reverse the rejection of claims 1—20 under
35 U.S.C. § 103.
REVERSED
§ 41.50(b), no inference should be drawn when we elect not to do so. See
Manual of Patent Examining Procedure (MPEP) § 1213.02.
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