Ex Parte Iannello

Board of Patent Appeals and Interferences

Oct 27, 2008

10910393 (B.P.A.I. Oct. 27, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JOSEPH P. IANNELLO
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Appeal 2008-1697
Application 10/910,393
Technology Center 3600
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Decided: October 27, 2008
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Before JENNIFER D. BAHR, LINDA E. HORNER, and
STEVEN D.A. McCARTHY, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

Joseph P. Iannello (Appellant) has filed a request for rehearing under
37 C.F.R. § 41.52 requesting that we reconsider our decision of August 1,
2008 (“Decision”), wherein we affirmed the rejection of claims 8, 9, and 27
under 35 U.S.C. § 102(b); affirmed the rejection of claims 11-13 under 35
Appeal No. 2008-1697
Appl. No. 10/910,393
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U.S.C. § 103(a); and reversed the rejection of claim 10 under § 103(a). The
Appellant argues that the Board “misapprehended the extent of what [the]
Stepper [reference] teaches” and, in particular, “has failed to appreciate the
functional/operational differences between the disclosed upper portion of the
tool back (10), as taught by the Stepper [reference], and the claimed
attachment device” (Request for Rehearing 2).

THE INVENTION
The Appellants’ claimed invention is directed to a mechanical
cleaning device for mounting on a cutting blade. The device includes an
expandable metal clamp, at least one bolt to constrict the metal clamp, and a
replaceable brush head (Spec. 5:7-9).

ANALYSIS
The Appellant asserts that if we consider the upper portion of the tool
back (10) to be the claimed attachment device, then the upper portion of the
tool back (10) of Stepper must cause the claimed removable brush head
(lower portion of the tool back (10)) to be linked to or make contact with the
expandable metal clamp (the body section (S)), as claimed (Request for
Rehearing 3). The Appellant contends that “Stepper fails to teach that the
upper portion of the tool back (10) causes the clamp (S) and the brush head
(the lower portion of tool (10)) to be joined” (Request for Rehearing 4).
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The claim language at issue in our Decision was the recited
attachment device. In particular, claim 8 recites “said attachment device
engaging said attachment site to attach said removable brush head to said
expandable metal clamp.” We construed “attachment device” to mean “any
contrivance used to join the removable brush head to the expandable metal
clamp” (Decision 11). Then, we found that Stepper’s holder including
elongated saddle S is an expandable metal clamp (Decision 8, Facts 1-3), the
lower portion of the tool back 10 forms the removable brush head (Decision
9, Facts 4-5), the ridge 24 on the saddle is the attachment site (Decision 9,
Fact 8), and the upper portion of the tool back 10 is an attachment device
which engages ridge 24 to attach the lower portion of the tool back 10 to the
saddle S, as claimed (Decision 11, Facts 8 & 9).
The Appellant appears to contest only Finding of Fact 9, which
concludes that the upper portion of the tool back 10 is an attachment device,
because it engages an attachment site 24 on the expandable metal clamp S to
join the removable brush head (the lower portion of the tool back 10) and the
expandable metal clamp S. The Appellant argues Stepper teaches that
compression from the bolt 26 and nut 30 being tightened causes the flanges
16 and 18 to be joined to the lower portion of tool back 10 and thus the
upper portion of the tool back 10 is not involved in joining the lower portion
of the tool back to the clamp S (Request for Rehearing 4, citing Stepper, col.
2, ll. 16-50).
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While we agree that the tightening of the bolt 26 and nut 30
compresses flanges 16 and 18 about the sides of the lower portion of the tool
back 10 (Decision 4-5, Facts 6 & 7), the Appellant’s argument overlooks the
further disclosure in Stepper that “the saddle has a ridge 24 which serves to
bite into and grip the tool back when the saddle is secured in place”
(Stepper, col. 2, ll. 26-28 and 44-49, Fig. 2; see also Decision 5, Fact 8).
Thus, there are two forces at work in Stepper that cause the tool back to be
attached to the saddle, viz., the compression of the flanges 16 and 18 against
the lower portion of the tool back 10 and the biting of the ridge 24 into the
upper portion of the tool back 10. Our Decision was based on the finding
that the ridge 24 is the claimed attachment site. The claims do not state that
there can be only one attachment site to attach the removable brush head to
the expandable metal clamp. Rather, the claims require only that the
attachment device engage “said attachment site.” The upper portion of
Stepper’s tool back 10 engages the ridge 24 when the bolt 26 and nut 30 are
tightened. Thus, the tool back 10 (including the lower portion) is joined to
the expandable metal clamp, in part, at ridge 24, and thus ridge 24, rather
than flanges 16 and 18, is the claimed attachment site. As such, we find the
Appellant’s argument that “Stepper fails to teach that the engagement of the
upper portion of the sweeping tool back (10) with the saddle back (14)
causes the flanges (16 and 18) to be joined or secured to the sweeping tool
back (10)” (Request for Rehearing 5) to be unpersuasive.
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We also find the Appellant’s argument as to the embodiment of
Figure 3 unpersuasive, because we relied on the embodiment of Figure 2 of
Stepper to show all the elements of claim 8. Contrary to the Appellant’s
assertion that “Stepper discloses and illustrates that the flanges (16 and 18)
are joined with or attached to the lower portion of the sweeping tool back
(10) without the engagement of the upper portion of the sweeping tool back
(10) to the saddle back (14) …” (Request for Rehearing 6 (emphasis
added)), the embodiment of Figure 2 of Stepper shows that ridge 24 of the
saddle back 14 has direct engagement with the upper portion of the
sweeping tool back 10.
To be clear, we did not hold, as asserted by the Appellant, that “the
engagement of the upper portion of the sweeping tool back (10) with the
saddle back (14) causes the flanges (16 and 18) to be joined or secured to the
sweeping tool back (10)” (Request for Rehearing 6). Rather, we held that
the engagement of the upper portion of the tool back 10 (attachment device)
with the ridge 24 (attachment site) on the saddle S causes the lower portion
of the tool back 10 (removable brush head) to be joined with the saddle S
(expandable metal clamp).
Further, the fact that the lower portion of tool back 10 of Stepper is
also attached to saddle S via the flanges 16 and 18 is of no moment, because,
as explained supra, claim 8 does not require that the claimed attachment
device is the only means of attaching the removable brush head to the
expandable metal clamp.
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DECISION
Accordingly, while we have granted Appellant's request for rehearing
to the extent that we have reconsidered our decision, the request is denied
with respect to making any changes in the decision. No time period for
taking any subsequent action in connection with this appeal may be extended
under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv) (2006).

DENIED

vsh

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