Ex parte Earle et al.

Board of Patent Appeals and Interferences

Mar 9, 1999

08218507 (B.P.A.I. Mar. 9, 1999)

1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte KENT L. EARLE
and GREG L. LAURIANO
_____________
Appeal No. 98-1354
Application 08/218,507
______________
ON BRIEF
_______________
Before CALVERT, COHEN and STAAB, Administrative Patent Judges.
COHEN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the refusal of the examiner to
allow claims 22 through 26 and 28, as amended subsequent to
the final rejection. Claim 27 stands objected to but otherwise
is considered to be allowable by the examiner. Claims 29
through 33, all of the other claims remaining in the
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application, stand allowed.
Appellants’ invention pertains to a portable cutter for
cutting conduit. An understanding of the invention can be
derived from a reading of exemplary claim 22, a copy of which
appears in the APPENDIX to the revised brief on appeal (Paper
No. 16).
As evidence of obviousness, the examiner has applied the
document specified below:
Hanaway 3,449,992 Jun. 17, 1969
The following rejection is before us for review.
Claims 22 through 26 and 28 stand rejected under 35
U.S.C.
§ 103 as being unpatentable over Hanaway.
The full text of the examiner's rejection and response to
the argument presented by appellants appears in the answer
(Paper No. 19), while the complete statement of appellants’
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argument can be found in the revised appeal brief (Paper No.
16). We also note appellants’ grouping of claims in the brief
(page 9).
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Application 08/218,507
In our evaluation of the applied patent, we have1
considered all of the disclosure thereof for what it would
have fairly taught one of ordinary skill in the art. See In
re Boe, 355 F.2d 961, 965, 148 USPQ 507, 510 (CCPA 1966).
Additionally, this panel of the board has taken into account
not only the specific teachings, but also the inferences which
one skilled in the art would reasonably have been expected to
draw from the disclosure. See In re Preda 401 F.2d 825, 826,
159 USPQ 342, 344 (CCPA 1968).
4
OPINION
In reaching our conclusion on the obviousness issue
raised in this appeal, this panel of the board has carefully
considered appellants’ specification and claims, the applied
patent, and the respective viewpoints of appellants and the1
examiner. As a consequence of our review, we make the
determination which follows.
We reverse the examiner’s rejection of appellants’ claims
under 35 U.S.C. § 103.

At the outset, we note that independent claim 22 is drawn
to a portable cutter for cutting conduit comprising, in
combination, inter alia, a housing , a carriage slidably
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mounted on the
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housing, a saw blade rotatably supported on the carriage, a
motor mounted on the carriage for rotating the saw blade, a
battery supported by the housing for supplying power to the
motor, gripping members carried on the housing and movable
between an open position and a closed position for firming
gripping an object to be cut, means for actuating the gripping
members to closed positions where they firmly grip the object
to be cut, and a manually operable actuator carried by the
housing and operatively connected with the carriage for moving
the carriage from a retracted inoperative position to a
advanced operative position.
We turn now to the evidence of obviousness.
The patent to Hanaway teaches a manually-held power-
driven pipe cutter (Figure 1) which is indicated to be readily
portable (column 2, lines 5,6). A secondary frame 19, slidably
mounted on a main frame 11, is moved by rotation of a clamping
screw 34 threadedly received in the main frame. A drive motor
57, slidably received in the main frame and the secondary
frame, includes an
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adjustable chuck clamped onto the input shaft 51 of a right
angle drive slide 44 (column 3, lines 11 through 18). The
output shaft 52 of the slide 44 receives a circular cutter 53
for cutting a tube held between notches 28 and 33 on the main
and secondary frames, respectively.
Unlike appellants (brief, page 11), we are of the view
that one having ordinary skill in the art would have
understood the pipe cutter of Hanaway as being operable and
not merely a concept. Clearly, those versed in the art would
have fairly understood the right angle drive slide as being
any known device for converting a rotary input into a right
angle rotary output.
We note that appellants acknowledge the use of batteries
to drive motors as well known, but question where such a
battery could be placed on the pipe cutter of Hanaway (brief,
page 11). We have no doubt, however, but that those having
ordinary skill in this art would have been quite capable of
mounting a battery to the main frame of Hanaway to supply
power to the drive motor,
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as broadly claimed. We note that the examiner took official
notice in the final rejection that battery operated tools are
old and well known (page 5 of Paper No.6).
It is also appellants’ view that there is no carriage at
all in the Hanaway document for carrying a motor and cutter
(brief, pages 11 and 12). We disagree. The secondary frame 19
can appropriately be viewed as a carriage since it supports
the drive motor at cylinder bore 59 and the cutter at grooves
48, 49.
We are not, however, in accord with the examiner’s assessment
(answer, page 4) that the cylinder 57 (or frame 11) reads on
the claimed carriage. The cylinder 57 is the cylindrical
housing 57 of the drive motor. If this drive motor housing 57
were considered to be a carriage, as per the examiner’s view,
then the drive motor, also claimed, would have to be
inappropriately read on the same component. The examiner also
refers to the frame 11, i.e., the main frame, as the carriage.
However, the main frame is taught as a stationary component,
while appellants’ claimed
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carriage is slidably mounted for slidable movement. Thus, each
of the components referenced by the examiner cannot fairly be
considered to be a carriage.
Claim 22 requires gripping members carried on the housing
and movable between an open position and a closed position for
firmly gripping an object to be cut. In our opinion, the
Hanaway patent would not have been suggestive of the movable
gripping members as now claimed. More specifically, Hanaway
discloses, at best, a single, fixed, gripping member on the
main frame (housing) 11 comprising a horizontally extending
recess with face plates to define a generally V-shaped notch
28. It follows that Hanaway would also have not been
suggestive of the “means for actuating said gripping members
to closed positions where they firmly grip said object to be
cut”, a 35 U.S.C. § 112, sixth paragraph, means recitation.
The specification (page 13) describes the structure for
effecting movement of the gripper members (upper jaws 94, 96)
to firmly grip a conduit.
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The pipe cutter of Hanaway does include a clamping screw
34 (manually operable actuator) carried by the main frame
(housing) and operatively connected with the secondary frame
(carriage) for moving the carriage, as claimed. However,
Hanaway does not provide a suggestion for the movement of the
secondary frame (carriage) by the manually operable actuator
to an advanced position where the saw is moved into cutting
engagement with an object held by movable gripping members, as
set forth in claim 22.
For the reasons given above, we have determined that the
portable cutter of claim 22 would not have been obvious based
upon the evidence of obviousness before us.

In summary, this panel of the board has reversed the
rejection of claims 22 through 26 and 28 under 35 U.S.C. § 103
as being unpatentable over Hanaway.
The decision of the examiner is reversed.
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REVERSED

IAN A. CALVERT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
IRWIN CHARLES COHEN )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
LAWRENCE J. STAAB )
Administrative Patent Judge )
ICC/dal
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BANNER & WITCOFF LTD.
STE. 3000
TEN SOUTH WACKER DRIVE
CHICAGO, IL 60606
Appeal No. 98-1354
Application 08/218,507
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APPENDIX
22. A portable cutter for cutting conduit comprising, in
combination, a housing, a carriage slidably mounted on said
housing for sliding movement relative thereto, a saw blade
rotatably supported on said carriage, a motor mounted on said
carriage and operatively connected to said saw blade for
rotating said saw blade, a battery supported by said housing
and connected to said motor for supplying power to said motor,
gripping members carried on said housing and movable between
an open position and a closed position for firmly gripping an
object to be cut, means for actuating said gripping members to
closed positions where they firmly grip said object to be cut,
and a manually operable actuator carried by said housing and
operatively connected with said carriage for moving said
carriage from a retracted inoperative position to an advanced
operative position where said saw blade is moved into cutting
engagement with an object held by said gripping members.