Ex Parte Hilker

Patent Trial and Appeal Board

Feb 12, 2013

11654128 (P.T.A.B. Feb. 12, 2013)

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.
11/654,128 01/17/2007 David Hilker I1-I16 7502
7590 02/12/2013
Stephen J. Koundakjian
Post Office Box 5190
Hemet, CA 92544-0190
EXAMINER
SELF, SHELLEY M
ART UNIT PAPER NUMBER
3765
MAIL DATE DELIVERY MODE
02/12/2013 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________
Ex parte DAVID HILKER
____________________

Appeal 2010-011759
Application 11/654,128
Technology Center 3700
____________________

Before: BIBHU R. MOHANTY, NINA L. MEDLOCK, and PHILIP J.
HOFFMANN, Administrative Patent Judges.

HOFFMANN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-011759
Application 11/654,128
2
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the final rejection of
claims 1-3, 8, 9, 11, 12, 14, and 221. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
The rejected claims are directed to a router bit for creating a tenon in
the edge of a work piece (Spec. 2-6). Claim 1, which is the sole independent
claim, is reproduced below.
1. A router bit for creating a tenon in the
edge of a wooden work piece having an edge
thickness, when said router bit selectively engages
the edge of the work piece, said router bit
comprising:
a. a principal shaft having an upper portion,
a lower portion, a principal axis and a longitudinal
direction along said principal axis extending in a
first direction from said upper portion toward said
lower portion;
b. a first cutter projecting outwardly from
said principal axis proximate to said upper portion,
said first cutter comprising a first blade configured
and oriented to cause the upper portion of the base
of the tenon produced by engagement of said
router bit against the edge of the work piece
perpendicularly to said principal axis to be parallel
to the principal axis of said router bit;
c. a second cutter projecting outwardly from
said principal axis and longitudinally displaced
from said first cutter in said first direction, said
second cutter comprising a second blade
configured and oriented to cause the lower portion

1 Our decision will refer to Appellant’s Specification (“Spec.,” filed Jan. 17,
2007), Appeal Brief (“App. Br.,” filed Mar. 18, 2010), and Reply Brief
(“Reply Br.,” filed Jul. 16, 2010), as well as the Examiner’s Answer (“Ans.,”
mailed Jul. 1, 2010).
Appeal 2010-011759
Application 11/654,128
3
of the base of the tenon produced by engagement
of said router bit against the edge of the work piece
perpendicularly to said principal axis to be parallel
to the principal axis of said router bit;
d. a separator having a separator axis aligned
with said principal axis, said separator intervening
between said first cutter and said second cutter,
longitudinally separating said first cutter from said
second cutter by a fixed displacement, said fixed
displacement being less than one-half of the edge
thickness of the work piece; wherein
e. no substantial portion of said router bit
extends beyond said second cutter in said first
direction.

THE REJECTION
The Examiner rejects the claims as follows:
Claims 1-3, 8, 9, 11, 12, 14, and 22 stand rejected under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement2.
ANALYSIS
Each of the pending claims stands rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description requirement
(Ans. 4). Specifically, the Examiner asserts that the recitation in
independent claim 1 of “a separator . . . intervening between said first cutter
and said second cutter, [and] longitudinally separating said first cutter from
said second cutter by a fixed displacement, said fixed displacement being

2 Appellants have argued that the objection to the amendment filed July 30,
2009 is improper (App. Br. 4-5). We note that this objection is not subject
matter reviewable by the Patent Trial and Appeal Board (see M.P.E.P. §
1002 and 1201). Regardless, it appears that the amendment filed on the
cited date was made only in regard to the claims and not the specification,
drawings, or abstract.
Appeal 2010-011759
Application 11/654,128
4
less than one-half of the edge thickness of the work piece,” is not supported
by the original application (italics added) (Ans. 4-7). The Examiner makes
this assertion notwithstanding that measuring allegedly corresponding
features in Appellant’s original drawings shows a fixed displacement that is
0.375 of an edge thickness of a work piece (id.). Appellant argues that
inasmuch as the Examiner agrees that the original drawings show a fixed
displacement that is, in fact, less than one-half an edge thickness of a work
piece, the original application supports the claimed features (App. Br. 3-6,
Reply Br. 1). We disagree with Appellant.
We recognize that in an appropriate situation, drawings may be used
to provide descriptive support required by 35 U.S.C. § 112, first paragraph.
Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1565 (Fed. Cir. 1991). Both the
Examiner and Appellant recognize that unless otherwise stated, patent
drawings typically do not define the precise proportions of the depicted
elements (Ans. 5, App. Br. 3, Reply Br. 1). Where the drawings do not
clearly and conclusively disclose subject matter Applicant seeks to enter by
amendment, and the specification is completely silent in this respect, the
Examiner is justified in denying Applicant’s request as not complying with
35 U.S.C. § 112. See, e.g., In re Olson, 212 F.2d 590 (CCPA 1954)
(affirming a rejection based on improperly inserting the limitation “equally
spaced”). In this case, we agree with the Examiner that “the originally filed
disclosure was silent to the figures being drawn to scale and failed to
positively recite any determination of any dimensions of any [of the
claimed] element[s]” (Ans. 5). Thus, we sustain the Examiner’s rejection of
independent claim 1 on this basis.
Notwithstanding the above discussion, we also sustain the Examiner’s
rejection on the following independent basis. Even if we assume, arguendo,
Appeal 2010-011759
Application 11/654,128
5
that the drawings show a single example of a fixed displacement that is less
than one-half of an edge thickness of a work piece, as the Examiner points
out the original application still would not support the full scope of the
claims. Specifically, the Examiner points out that showing in the drawings
one specific fixed displacement that is 0.375 of an edge thickness of a work
piece would not support other fixed displacements that are “less than one-
half of the edge thickness of the work piece,”(italics added) as is recited in
independent claim 1 (Ans. 6). Appellant does not address this assertion in
the Appeal Brief or the Reply Brief. Thus, we also sustain the Examiner’s
rejection of independent claim 1 on this basis.
Claims 2, 3, 8, 9, 11, 12, 14, and 22 depend from independent claim 1.
Therefore, we sustain the rejection of claims 2, 3, 8, 9, 11, 12, 14, and 22 for
the same reasons as the independent claim.

DECISION
The Examiner’s rejection of claims 1-3, 8, 9, 11, 12, 14, and 22 under
35 U.S.C. § 112, first paragraph, is AFFIRMED.

AFFIRMED

mls