Ex Parte Hughes

Patent Trial and Appeal Board

Sep 12, 2017

12401211 (P.T.A.B. Sep. 12, 2017)

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.
12/401,211 03/10/2009 Donald R. Hughes 090023 5431
26285 7590 09/14/2017
KfrT flATRS T T P-Pimhnrah
EXAMINER
210 SIXTH AVENUE
PITTSBURGH, PA 15222-2613
SWINNEY, JENNIFER B
ART UNIT PAPER NUMBER
3724
NOTIFICATION DATE DELIVERY MODE
09/14/2017 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):
USpatentmail@klgates.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DONALD R. HUGHES
Appeal 2015-0072331
Application 12/401,2112
Technology Center 3700
Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and
TARA L. HUTCHINGS, Administrative Patent Judges.
HUTCHINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1—15. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Our decision references Appellant’s Appeal Brief (“App. Br.,” filed Dec.
17, 2014), and Reply Brief (“Reply Br.,” filed July 28, 2015), and the
Examiner’s Answer (“Ans.,” mailed May 28, 2015), and Final Office Action
(“Final Act.,” mailed Jan. 10, 2014).
2 Appellant identifies Greenleaf Technology Corp. as the real party in
interest. App. Br. 4.
Appeal 2015-007233
Application 12/401,211
CLAIMED INVENTION
Appellant’s claimed invention relates to “cutting tools including a
mechanism for adjusting replaceable cutting inserts mounted on the cutting
tool.” Spec. 11.
Claim 1, reproduced below, is the sole independent claim, and is
representative of the claimed subject matter on appeal:
1. A cutting tool comprising:
a cutting tool body including at least one recess adapted
for mounting a removable cutting insert therein, the recess
including two locating surfaces positioned at an acute angle
relative to each other; and
a cutting insert retaining and adjusting mechanism
associated with the recess and including, a nest slidably mounted
in the recess, the nest including a single cutting insert pocket,
wherein the nest further includes a side wall and a bottom wall
positioned at an acute angle relative to each other and that engage
and slidably move along the two locating surfaces of the recess
when the nest is slidably mounted in the recess, wherein only the
side wall and the bottom wall of the nest contact the recess of the
cutting tool body,
a first wedge adapted to selectively exert pressure on the
nest and retain the nest in a desired position in the recess, a
second wedge adapted to selectively exert pressure on a cutting
insert positioned in the cutting insert pocket and retain the cutting
insert in a desired position, and
an adjustment screw having a first threaded portion and a
second threaded portion, the first threaded portion threadedly
disposed in a threaded bore in the cutting tool body, the second
threaded portion threadedly disposed in a threaded bore in the
nest, wherein the first threaded portion has the same handedness
but a different thread pitch as the second threaded portion,
wherein rotation of the adjustment screw axially slidably linearly
advances and retracts the nest in the recess, and wherein the
adjustment screw only threadedly engages the cutting tool body
and the nest.
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Appeal 2015-007233
Application 12/401,211
REJECTION
Claims 1—15 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Kaiser (US 3,434,193, iss. Mar. 25, 1969), Gamble (US 6,702,526 B2,
iss. Mar. 9, 2004), Mizutani (US 6,789,983 B2, iss. Sept. 14, 2004), and
Kalokhe (US 4,428,704, iss. Jan. 31, 1984).
ANALYSIS
We are persuaded by Appellant’s argument that the Examiner erred in
rejecting independent claim 1 under 35 U.S.C. § 103(a) because Kalokhe,
does not disclose or suggest,
an adjustment screw having a first threaded portion and a second
threaded portion, the first threaded portion threadedly disposed in
a threaded bore in the cutting tool body, the second threaded
portion threadedly disposed in a threaded bore in the nest, wherein
the first threaded portion has the same handedness but a different
thread pitch as the second threaded portion,
as recited in claim 1. App. Br. 17—30; see also Reply Br. 9-14.
In rejecting claim 1, the Examiner finds that Kaiser discloses an
“adjusting screw (33) disposed in the tool body (24),” but acknowledges that
Kaiser’s adjusting screw 33 does not disclose the claimed first and second
threaded portions. Ans. 6. To cure the deficiency, the Examiner relies on
Kalokhe. See Ans. 6 (“Kalokhe teaches a screw disposed in a nest (22) and
the tool body (20)”).
By way of background, Kalokhe relates to a tool cartridge 14 that is
fastened to a boring bar 10 for line boring operations. Kalokhe, Abstract,
col. 1,11. 53—56. The boring bar 10 has an open recess extending along a
long axis, and a tool cartridge 14 mounted in the recess. Id. at claim 1, Fig.
1. Cartridge 14 has two legs 20, 22 separated by a recess 24. Id. at col. 1,11.
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Appeal 2015-007233
Application 12/401,211
56—58. A differential screw 44 has first and second threaded portions 46A,
46B, which are disposed in legs 20, 22 of cartridge 14, respectively. See id.
at Figs. 1—2, col. 2,11. 36-48.
The Examiner equates Kalokhe’s cartridge leg 20 as the claimed “tool
body,” and cartridge leg 22 as the claimed “nest.” Ans. 6. Yet, cartridge
legs 20, 22 are legs of the same cartridge, and do not reasonably constitute
the claimed tool body and nest. Instead, we find that Kalokhe’s boring bar
10 would constitute the claimed “tool body including at least one recess
adapted for mounting a removable cutting insert,” as recited in claim 1. See
App. Br. 18 (“boring bar (10). . . would be considered the ‘tool body’ of the
Kalokhe device”).
Because first threaded portion 46A of screw 44 engages leg 20 of the
cartridge, second threaded portion 46B engages leg 22 of the cartridge, and
neither threaded portion 46A, 46B is disposed in boring bar 10, Kalokhe
fails to disclose or suggest that first threaded portion 46A is “threadedly
disposed in a threaded bore in the cutting tool body,” as required by claim 1.
In response to Appellant’s arguments, the Examiner finds “threaded
screw (33) of Kaiser is not disposed in nest (28),” and “Kalokhe and
Mizutani both teach a threaded screw disposed in a nest.” Ans. 13.
But Mizutani also fails to cure the deficiencies of Kaiser. Mizutani
relates to a clamping mechanism for a cutting insert used in a rotary cutting
tool. Mizutani, col. 1,11. 6—8. Insert 22 and adjustment screw 29 are fixed
to a cartridge 23. Id. at col. 7,11. 42-45. Cartridge 23 is inserted into a
cartridge-receiving recess 27 in tool body 21, and positioned such that the
head of adjusting screw 29 is in contact with positioning piece 30. Id. at col.
5,11. 45—53, Fig. 2A. Turning adjusting screw 29 adjusts the position of
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Appeal 2015-007233
Application 12/401,211
cartridge 23 when the head of the adjusting screw 29 abuts positioning piece
30. Id. at col. 4,11. 17—20. Mizutani’s adjusting screw 29, like the screw of
Kaiser, only has one threaded portion. Like the screw of Kalokhe,
Mizutani’s screw is only disposed in the cartridge, not the tool body.
The Examiner concludes that one of ordinary skill “would have
looked to Kalokhe and [Mizutani] for the teaching of disposing the screw in
the nest to facilitate axial[] adjustment of the nest.” Ans. 13. But it is not
readily apparent, and the Examiner does not adequately explain, why one of
ordinary skill in the art would modify Kaiser’s screw, which is threadedly
disposed only in the tool body, based on the screws of Kalokhe and
Mizutani, which each is threadedly disposed only in a cartridge, to arrive at
the claimed adjustment screw having a “first threaded portion threadedly
disposed in a threaded bore in the cutting tool body,” and a “second threaded
portion threadedly disposed in a threaded bore in the nest,” as recited in
claim 1.
In view of the foregoing, we do not sustain the Examiner’s rejection
of independent claim 1, and dependent claims 2—15, under 35 U.S.C.
§ 103(a).
DECISION
The Examiner’s rejection of claims 1—15 under 35 U.S.C. § 103(a) is
reversed.
REVERSED
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