Ex Parte Enyedy

Board of Patent Appeals and Interferences

Mar 28, 2007

10800929 (B.P.A.I. Mar. 28, 2007)

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for publication and is not binding precedent of the Board.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 EDWARD A. ENYEDY
____________

Appeal 2006-2370
Application 10/800,929
Technology Center 3600
____________

Decided: March 28, 2007
____________

Before MURRIEL E. CRAWFORD, STUART S. LEVY, and ROBERT E.
NAPPI, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
This appeal involves claims 1-20, the only claims pending in this
application. We have jurisdiction over the appeal pursuant to 35 U.S.C. §
6(b) (2002).
Appeal 2006-2370
Application 10/800,929

2
The claims are directed to a wire feeding mechanism for advancing a
continuous length of wire along a pathway. Claim 1 is illustrative:
1. A wire feeding mechanism for advancing a continuous
length of wire along a pathway, comprising:

a housing having two roller supports each rotatable about a
corresponding axis transverse to a wire pathway, said roller supports
being on opposite sides of said pathway and being driveably engaged
with each other;

a drive roller on each of said roller supports for rotation
therewith, said drive roller including an outer surface extending
circumferentially about said corresponding axis that defines a groove
having an included angle between a pair of intersecting walls defining
the groove that is about thirty degrees (30o) or greater and less than
ninety degrees (90o), said drive roller on each of said roller supports
compressively contacting a continuous length of wire between said
roller supports such that said wire is advanced along said pathway in
response to rotation of said drive rollers.

The Examiner relies on the following prior art references to show
unpatentability:
Gilliland US 5,540,371 Jul. 30, 1996
Blank US 6,427,894 B1 Aug. 6, 2002

Appellant’s discourse of Prior Art (“AAPA”) Application No.
10/800,929, pp. 1-3 and Fig. 5.

The rejections as presented by the Examiner are as follows:
1. Claims 1-10 and 14-20 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gilliland in view of Appellant’s disclosure at page
1 line 15 to page 3 line 29 and Fig. 5.
Appeal 2006-2370
Application 10/800,929

3
2. Claims 11-13 are rejected under 35 U.S.C § 103(a) as unpatentable
over Gilliland in view of Appellant’s disclosure page 1 line 15 to page
3 line 29 and Fig. 5 and Blank.
Appellant contends that the cited prior art does not disclose a pair of
intersecting walls defining a groove and that there is no motivation to
combine the teachings of the cited references.
The Examiner contends that the cited prior art does disclose a pair of
intersecting walls defining a groove and there is ample motivation to
combine the teachings of the cited references.
ISSUES
The first issue is whether Appellants have shown that the Examiner
erred in finding that the prior art discloses a pair of intersecting walls
defining a groove.
The second issue is whether Appellants have shown that the Examiner
erred in holding that there is motivation to combine the teachings of the prior
art.
FINDINGS OF FACT
Appellant’s claim 1 is directed to a wire feeding mechanism that
includes a pair of intersecting walls on a drive roller defining a groove.
Appellant’s disclosure describes this feature on page 8 and depicts this
feature in Fig. 3. Claim 14 similarly recites a wire feeding mechanism
which includes a drive roller having a groove formed by first side wall
intersecting a second side wall. The groove that is formed by the
intersecting walls is about thirty degrees or greater and less than ninety
degrees (Specification 8-9). Claims 1 and 14 require two drive rollers
Appeal 2006-2370
Application 10/800,929

4
disposed opposite one another. The Specification discloses these two drive
rollers at page 3.
Appellant’s AAPA describes a wire feeding mechanism with a drive
roller having a groove formed by walls 126 and 128 which are at an angle
between thirty and sixty degrees (Specification 3; Fig. 5). In this prior art
device there is only one drive roller which is disposed opposite a flat idler
roller. The groove formed in the Fig. 5 device is not formed by opposing
intersecting side walls. Rather the side walls themselves never intersect but
rather are joined by a curved portion.
Gilliland discloses a wire feeding mechanism having two drive rollers
opposite one another and a groove disposed within each drive roller (Fig.
3B). Gilliland discloses that the use of two grooves, i.e., grooves on both
rollers, provides more contact with the wire than using the arrangement of a
single groove in one drive roller opposite a flat idler and therefore minimizes
the possibility of the rollers slipping on the wire while using the least
amount of pressure to grip the wire (Gilliland, col. 6, ll. 56-60). The groove
disclosed in Gilliland is not formed by opposing side walls that intersect.
The side walls never intersect but rather are joined by a flat portion.
A person of ordinary skill in the art would have been motivated to
modify the device of Appellant’s Fig. 3B to include a groove on an opposite
drive roller to achieve the advantage of minimizing the possibility of roller
slippage on the wire while using the least amount of pressure to grip the
wire.
Appeal 2006-2370
Application 10/800,929

5
ANALYSIS
Neither Gilliand nor AAPA describes a groove on a drive roller that is
formed by intersecting side walls. Therefore, the Appellant has shown that
the Examiner erred in finding that elements of claims 1 and 14 as taught by
the combination. On the record before us, it follows that the Examiner erred
in rejecting claims 1 and 14 and claims 2-5 and 15-20 dependent thereon.
There is motivation to combine the teachings of Gilliland and AAPA
so that the AAPA is modified to include two opposing drive rollers with a
groove in each drive roller. A person of ordinary skill in the art would have
been motivated to modify AAPA in this matter to achieve the advantages of
two drive rollers i.e. less roller slippage while using the least amount of
pressure. Therefore, the Appellant has not shown that the Examiner erred in
holding there was motivation to combine the teachings of Gilliland and
AAPA.
On the record before us, it follows that the Appellant has not shown
that the Examiner erred in rejecting claims 6-10 as being unpatentable by
Gilliland and APA and rejecting claims 11-13 as being unpatentable by
Gilliland and AAPA and further in view of Blank.
CONCLUSION/ORDER
The Examiner’s rejection of claims 1-5 and 14-20 is not sustained.
The Examiner’s rejection of claim 6-13 is sustained. However, since
our reasons for sustaining the rejection as to these claims is materially
different from those set forth in the Answer, we denominate this as a new
ground of rejection pursuant to 37 C.F.R. §41.50(b) (2004).

Appeal 2006-2370
Application 10/800,929

6
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b) (effective September 13, 2004). 37 C.F.R. § 41.50(b)
provides "[a] new ground of rejection pursuant to this paragraph shall not be
considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new ground of rejection to avoid
termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner . . . .

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record . . . .

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a) (2006).
AFFIRMED-IN-PART – 37 § C.F.R. 41.50(b)

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