Ex Parte Harris

Board of Patent Appeals and Interferences

Feb 25, 2010

10126678 (B.P.A.I. Feb. 25, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte K. MICHAEL HARRIS
____________

Appeal 2009-006390
Application 10/126,678
Technology Center 3700
____________

Decided: February 26, 2010
____________

Before: WILLIAM F. PATE, III, JENNIFER D. BAHR, and STEFAN
STAICOVICI, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL
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Application 10/126,678

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STATEMENT OF THE CASE
K. Michael Harris (Appellant) appeals under 35 U.S.C. § 134 (2002)
from the Examiner’s decision rejecting claims 1-5 and 20-23, which are all
of the pending claims. We have jurisdiction over this appeal under 35
U.S.C. § 6 (2002). Appellant’s representative presented oral argument on
February 4, 2010.

The Invention
Appellant’s claimed invention is directed to “a noise dampener
assembly for mounting a circular blade on the drive shaft of a circular saw.”
Spec. 1:7-8.
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A noise dampener hub assembly for mounting a
circular blade on the drive shaft of a circular saw
comprising:
an inside noise dampener disc having an
inner surface and an outer surface;
an outside noise dampener disc having an
inner surface and an outer surface;
a first pair of radially spaced noise
dampening resilient rings positioned on said inner
surface of said inside noise dampener disc for
contacting one of the sides of a circular saw blade;
and
a second pair of noise dampening resilient
rings positioned on said inner surface of said
outside noise dampener disc for contacting the
other one of the sides of a circular saw blade.

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The Rejections
The Examiner relies upon the following as evidence of
unpatentability:
Robinson US 1,947,662 Feb. 20, 1934
Chandler US 1,958,694 May 15, 1934
Wester US 4,083,279 Apr. 11, 1978
Sturtz US 4,249,441 Feb. 10, 1981
Gant US 4,729,193 Mar. 8, 1988
Knecht US 4,732,337 Mar. 22, 1988
Garand US 5,953,807 Sep. 21, 1999

Blue Forge Games, http://www.blueforgegames.com/ProductDescription_
YF-21.php (last visited Jan. 3, 2006).

The following rejections are before us for review1:
(1) The Examiner rejected claims 1, 2, and 4 under 35 U.S.C. § 102(b)
as being anticipated by Chandler.
(2) The Examiner rejected claims 1, 2, and 4 under 35 U.S.C. § 102(b)
as being anticipated by Knecht.
(3) The Examiner rejected claims 1-5 under 35 U.S.C. § 103(b) as
being unpatentable over Gant.
(4) The Examiner rejected claims 1-5 under 35 U.S.C. § 103(a) as
being unpatentable over Gant and Knecht.
(5) The Examiner rejected claims 1-5 under 35 U.S.C. § 103(a) as
being unpatentable over Wester and Sturtz.
(6) The Examiner rejected claims 20 and 21 under 35 U.S.C. § 103(a)
as being unpatentable over Robinson combined with any one of

1 The Examiner has withdrawn the rejection of claims 1-5 under 35 U.S.C. §
103(a) as being unpatentable over Gant and Altman. Ans. 3.
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Chandler, Knecht, Gant, Gant in combination with Knecht, and
Wester in combination with Sturtz.
(7) The Examiner rejected claims 22 and 23 under 35 U.S.C. § 103(a)
as being unpatentable over any of the reference combinations
relied upon in rejection (6), further in combination with Garand.2

SUMMARY OF DECISION
We REVERSE.

OPINION
Rejection (1)
Anticipation is established only when a single prior art reference
discloses, expressly or under the principles of inherency, each and every
element of a claimed invention. RCA Corp. v. Applied Digital Data Sys.,
Inc., 730 F.2d 1440, 1444 (Fed. Cir. 1984). In other words, there must be no
difference between the claimed invention and the reference disclosure, as
viewed by a person of ordinary skill in the field of the invention. Scripps
Clinic & Research Found. v. Genentech Inc., 927 F.2d 1565, 1576 (Fed. Cir.
1991).
“It is well settled that a prior art reference may anticipate when the
claim limitations not expressly found in that reference are nonetheless
inherent in it. Under the principles of inherency, if the prior art necessarily
functions in accordance with, or includes, the claimed limitations, it

2 The Examiner clarified the obtuse statements of the grounds of rejection of
claims 20-23 on pages 2 and 3 of the Examiner’s Answer. Appellant
responded to these “clarified” rejections on pages 11-15 of the Reply Brief.
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anticipates.” In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir.
2002) (citations and internal quotation marks omitted). “Inherency,
however, may not be established by probabilities or possibilities. The mere
fact that a certain thing may result from a given set of circumstances is not
sufficient.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations
and internal quotation marks omitted).
The Examiner’s rejection of claims 1, 2, and 4 as being anticipated by
Chandler is grounded in part on the Examiner’s finding that the stripes of
semi-plastic tire tape material 8, 9 of Chandler correspond to the first and
second pairs of resilient rings called for in claim 1. Ans. 4. According to
the Examiner, the “tire tape is made of a resilient material.” Id. Appellant
argues that Chandler does not describe the tape material as resilient, and that
neither the description of the tape material as being “tire tape” nor the
description of the tape material as being “semi-plastic” implies or suggests
resilience, that is, “the ability to spring back to shape.” App. Br. 12. In
response, the Examiner asserts that “[t]he mere fact that the ‘tire tape’ of
Chandler is described as semi-plastic implies that the tape has properties of
resiliency.” Ans. 8. Accordingly, the issue presented in the appeal of this
rejection is whether the Examiner has provided sufficient technical
reasoning and/or evidence to support the finding that Chandler discloses,
either expressly or under principles of inherency, first and second pairs of
“resilient” rings, as called for in claim 1, and claims 2 and 4, which depend
from claim 1.
We find that the ordinary and customary meanings of “plastic” are “in
a flexible or changing state” and “capable of continuous and permanent
change of shape in any direction without breaking.” Webster's New World
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Dictionary 1090 (David B. Guralnik ed., 2nd Coll. Ed., Simon & Schuster,
Inc. 1984). We further find that the ordinary and customary meaning of
“semi-plastic” is imperfectly plastic. Id. at 1294. Additionally, we find that,
consistent with Appellant’s proffered definition of “resilience,” which the
Examiner has not disputed, an ordinary and customary meaning of
“resilient” is “bouncing or springing back into shape, position, etc. after
being stretched, bent, or, esp., compressed.” Id. at 1210. In other words, the
terms “semi-plastic” and “resilient” describe different characteristics of a
material. Accordingly, we find that Chandler’s description of the tape
material as “semi-plastic” does not imply that the tape material necessarily is
“resilient.”
The Examiner has not pointed to, and we cannot find, any disclosure
in Chandler describing the tape material 8, 9 as “resilient.” The Examiner
likewise has not provided any evidence to support the statement that “tire
tape is made of a resilient material.”
We therefore conclude that the Examiner has not provided sufficient
technical reasoning and/or evidence to support the finding that Chandler
discloses, either expressly or under principles of inherency, first and second
pairs of “resilient” rings, as called for in claim 1, and claims 2 and 4, which
depend from claim 1. We reverse the rejection.
Rejection (2)
Claim 1 requires inside and outside discs, each having an inner
surface and an outer surface, as well as a first pair of rings positioned on the
inner surface of the inside disc and a second pair of rings positioned on the
inner surface of the outside disc. We agree with Appellant that the
Examiner’s attempt to parse each of the pressed-on outer rings 8 of Knecht
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into portions corresponding to the discs and portions corresponding to the
rings (see Ans. 4), in order to account for these four distinct elements of
claim 1, is unreasonable. See App. Br. 15. We reverse the rejection.
Rejection (3)
As acknowledged by the Examiner (Ans. 5), Gant describes only one
O-ring 30, 32 positioned on the inner surface of each disc (end plates 14,
16), not the pair of radially spaced rings on each disc, as called for in claim
1. See Gant, col. 3, ll. 31-33; Fig. 1. In order to account for this difference,
the Examiner reasons that it would have been obvious to provide a second
groove and a second O-ring on the inner surface of each end plate 14, 16
“for the purpose of providing an increased clamping effect.” Ans. 5.
Appellant argues that there is no suggestion in Gant that a second O-ring on
each side would improve gripping action, as alleged by the Examiner (App.
Br. 16); that the declarations of David M. Ray, Ben Harris, and Ryan Willey
included in the Evidence Appendix to the Appeal Brief show that the
provision of two pairs of O-rings provides a significant and unexpected
reduction in the noise generated by the circular saw (App. Br. 16 and Reply
Br. 8); and that Gant’s criticism of conventional mounting arrangements
employing a multitude of parts which have to be aligned and assembled
together each time the wheel is replaced (col. 1, ll. 42-45) expressly teaches
away from the inclusion of additional parts, such as additional O-rings
(Reply Br. 7-8).
In light of the contentions of the Examiner and Appellant, a threshold
question is whether the Examiner has articulated a reason with rational
underpinning that would have prompted a person of ordinary skill in the art
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to modify Gant’s mounting arrangement by providing a second groove and a
second O-ring in each of the end plates 14, 16.
Rejections on obviousness grounds must be supported by “some
articulated reasoning with some rational underpinning” to combine the
known elements in the manner required in the claim at issue. KSR Int’l. Co.
v. Teleflex Inc., 550 U.S. 398, 418 (2007). However, “the analysis need not
seek out precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ.” Id.
In making a rejection on the basis of obviousness, the examiner has
the initial duty of supplying the requisite factual basis and may not, because
of doubts that the invention is patentable, resort to speculation, unfounded
assumptions or hindsight reconstruction to supply deficiencies in the factual
basis. In re Warner, 379 F.2d 1011, 1017 (CCPA 1967).
We find that Gant discloses a cutting disk mounting assembly
employing a pair of resilient O-rings 30, 32 received in grooves 26 and 28,
respectively, in interior surfaces 34, 36 of end plates 14, 16 for applying a
firm, uniform resilient grip on opposite sides of the cutting disk 12. Gant,
col. 1, ll. 58-64; col. 2, ll. 17-22; col. 3, ll. 29-33 and 54-60; Fig. 1. The
cross-sectional area of each O-ring 30, 32 is sufficiently greater than that of
the respective groove 26, 28 so that the O-rings can be compressed when the
plates are attached in clamping relation and still project beyond the interior
surfaces of the plates 14, 16 such that the O-rings, and not the interior
surfaces of the plates, engage and grip the cutting disk 12. Id., col. 4, ll. 22-
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28 and 35-43. Gant describes the mounting arrangement as self-aligning,
with its O-rings generating “a uniformly-distributed, resilient gripping force
on the disk.” Id., col. 1, l. 68 to col. 2, l. 2.
While it is tempting to speculate that the use of two radially-spaced O-
rings in each of the end plates 14, 16 might provide a more uniformly-
distributed gripping force, in the radial direction, on the cutting disk 12,
thereby presumably providing improved gripping, the Examiner has not
cogently explained, or established a factual basis to show, that a person of
ordinary skill in the art could reasonably have predicted that this would be
the result, rather than, for example, an increased risk of an improper seating
of one of the O-rings, or decreased gripping force applied at sufficient radial
distance from the center of the cutting disk to provide acceptable stability.
See Gant, col. 4, ll. 19-22 (noting that the grooves 26, 28 for receiving the
O-rings are formed in the interior surfaces of the end plates 14, 16 adjacent
respective peripheral edges 58, 60 of the plates). Accordingly, we conclude
the Examiner has failed to supply the requisite factual basis to establish that
the proposed reason for the modification has rational underpinning. We
reverse the rejection.
Rejection (4)
In making this rejection, the Examiner again acknowledges that Gant
lacks a second O-ring on the internal surface of each end plate 14, 16, as
called for in claim 1. Ans. 5. The Examiner attempts to remedy this
deficiency by once again resorting to an arbitrary parsing of the pressed-on
outer ring 8 of Knecht to arrive at a finding that Knecht teaches an additional
ring, “which is a portion of element 8, contacting the surface of the circular
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blade 2 as shown in figure 1.” Id. We agree with Appellant that Knecht
does not describe two pairs of O-rings. See App. Br. 17. We reverse the
rejection.
Rejection (5)
Claim 1 requires a noise dampener hub assembly “for mounting a
circular blade on the drive shaft of a circular saw” comprising inside and
outside discs and first and second pairs of radially spaced resilient rings
positioned on the inside surfaces of the inside and outside discs,
respectively, “for contacting one [or the other] one of the sides of a circular
saw blade.” Appellant argues that the mounting arrangements taught by
Wester and Sturtz for retaining the edges of chopping blades by embedding
them into rings are not applicable to the field of circular saws. Reply Br. 10.
The Examiner finds that blades 28 of Wester are circular saws. Ans. 7.
The Examiner’s finding that Wester’s blades 28 are circular saws, or
somehow in combination constitute a circular saw, is unreasonable.
Wester’s blades 28 preferably are “generally trapezoidal in plan view.”
Wester, col. 3, ll. 6-7; Fig. 2. The blades 34 of Sturtz, likewise, are “of
generally trapezoidal cross-section.” Sturtz, col. 4, ll. 18-19. While they are
mounted so as to extend radially outwardly from a tire, such that their outer
tips are located on a circle, the blades themselves are not circular, and
together do not form a circular saw blade.
Claim 1 does not positively recite a circular saw or circular saw blade.
Claim 1 does, however, require a hub assembly “for mounting a circular
blade on the drive shaft of a circular saw” comprising first and second pairs
of radially spaced resilient rings positioned on inner surfaces of first and
second discs for contacting one of the sides of a circular saw blade. The
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retainers 32 of Wester and 52 of Sturtz comprise inwardly directed flanges
provided with grooves in which the retaining rings are received. Wester,
col. 5, ll. 1-4; Wester, Figs. 2 and 4; Sturtz, col. 4, ll. 41-45; Sturtz, Fig. 2.
The flanges are configured in this manner so that the retaining rings engage
the lateral ends of the generally trapezoidal blades when the retainers are
secured in place. Wester, col. 4, ll. 54-60; Sturtz, col. 4, ll. 46-54. The
mounting assemblies of Wester and Sturtz are not configured such that a pair
of radially spaced resilient rings received in grooves on the inwardly
directed flanges would both contact one of the sides of a circular saw blade,
as called for in claim 1, as well as claims 2-5 depending from claim 1. Thus,
we agree with Appellant that even if Wester’s mounting assembly were
modified as proposed by the Examiner to make the retaining rings of a
resilient material, such as an elastomer (see Ans. 6), the resulting mounting
assembly still would not be capable of mounting a circular saw blade with
the pairs of resilient rings contacting one of the sides of the circular saw
blade as claimed. We reverse the rejection.
Rejections (6) and (7)
The Examiner has not relied on either Robinson or Garand for any
teaching that would remedy the deficiencies in rejections (1) through (5)
discussed above. Thus, we reverse these rejections as well.

DECISION
The Examiner’s decision is reversed.
REVERSED

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