Ex Parte Kalinsky

Board of Patent Appeals and Interferences

Jul 22, 2004

09773366 (B.P.A.I. Jul. 22, 2004)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ROBERT M. KALINSKY
____________
Appeal No. 2004-0241
Application No. 09/773,366
____________
ON BRIEF
____________
Before ABRAMS, FRANKFORT, and McQUADE, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1-20,
which are all of the claims pending in this application.
We REVERSE.
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Application No. 09/773,366
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BACKGROUND
The appellant's invention relates to a multi-spindle machine. An understanding of
the invention can be derived from a reading of exemplary claim 1, which appears in the
appendix to the appellant's Brief.
The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Schubert 3,747,444 Jul. 24, 1973
Zugel 4,644,819 Feb. 24, 1987
Manning (Manning ‘031) 5,676,031 Oct. 14, 1997
Manning (Manning ‘037) 5,730,037 Mar. 24, 1998
Cucchi 6,044,736 Apr. 4, 2000
Claims 1, 2, 15 and 16 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Schubert.
Claims 1-3 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over
Zugel in view of Cucchi.
Claims 4-14 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over
Zugel in view of Cucchi and Manning ‘031.
Claims 17-20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable
over Schubert in view of Manning ‘037.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the above-noted rejections, we make reference to the Answer
(Paper No. 10) for the examiner's reasoning in support of the rejections, and to the Brief
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Application No. 09/773,366
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(Paper No. 9) and Reply Brief (Paper No. 11) for the appellant's arguments
thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the examiner. As a consequence
of our review, we make the determinations which follow.
The appellant’s invention is an improvement to the feeding of stock into multi-
spindle machines which simultaneously drive a number of machining devices from a
single main motor. According to the appellant, it is typical in the prior art systems to
feed new stock into a machine at the same high speed that subsequently is used to
drive the tools which work upon the stock, which causes new stock to impact and
bounce back from the stock stops that align it in the work position, which is undesirable.
The appellant’s invention slows down the feeding of new stock into a machine prior to
the stock engaging a stock stop. In furtherance of this objective, all of the claims call for
a stock feeder mechanism comprising a brake arrangement operative to slow the speed
of the feeder mechanism and a controller which operates to control the braking
arrangement “to slow the speed of the feeder mechanism during stock feeding” (claim 1,
emphasis added).
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Application No. 09/773,366
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The Rejection Under Section 102
The examiner is of the view that the subject matter recited in claims 1, 2, 15 and
16 is anticipated by Schubert and has found, inter alia, that Schubert’s brake
arrangement 56 is operative to slow the speed of the feeder mechanism during stock
feeding (Answer, page 4). In response to the appellant’s challenge of this
determination, the examiner points to Schubert’s teaching that the gears of the feeding
mechanism can easily be changed, and then takes the position that “Schubert is
capable of at least two different feed speeds” and therefore “inherently teaches a
machine controller to control the various functions and elements of the machine tool,”
thus disclosing a machine controller that “is fully capable of functioning (braking during a
feeding operation) in the manner set forth in claim 1" (Answer, page 8).
Anticipation is established only when a single prior art reference discloses,
expressly or under the principles of inherency, each and every element of the claimed
invention. See, for example, RCA Corp. v. Applied Digital Data Systems, Inc., 730 F.2d
1440, 1444, 221 USPQ 385, 388 (Fed. Cir. 1984). A reference anticipates a claim if it
discloses the claimed invention such that a skilled artisan could take its teachings in
combination with his own knowledge of the particular art and be in possession of the
invention. In re Graves, 69 F.3d 1147, 1152, 36 USPQ2d 1697, 1701 (Fed. Cir. 1995),
cert. denied, 116 S.Ct. 1362 (1996), quoting from In re LeGrice, 301 F.2d 929, 936,
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133 USPQ 365, 372 (CCPA 1962). Applying this guidance of our reviewing court to the
situation at hand leads us to conclude that the evidence adduced by the examiner does
not support a rejection under Section 102. Our reasoning follows.
It is true that Schubert discloses a system in which gears in the drive mechanism
can be changed and brakes can be applied in order to alter the speeds of various drive
shafts (columns 1, 3 and 4). However, the examiner has not directed our attention to an
explicit teaching in Schubert of slowing the speed of the stock feeder mechanism during
stock feeding, as is required by all of the appellant’s claims. Nor does Schubert appear
to recognize the problem to which the appellant has directed his inventive efforts or, for
that matter, any other problem which would be solved by such operation of the stock
feeder. Even if the Schubert stock gear feeder system were capable of operating in
such a fashion as to slow the feeder mechanism during stock feeding, there appears to
be no disclosure or teaching of a machine controller (independent claim 1) or a brake
system (independent claim 16) which directs it to do so. This being the case, Schubert
does not anticipate the subject matter recited in independent apparatus claims 1 and
15, and we will not sustain the Section 102 rejection of claims 1, 2, 15 and 16.
The Rejections Under Section 103
The test for obviousness is what the combined teachings of the prior art would
have suggested to one of ordinary skill in the art. See, for example, In re Keller,
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642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981). In establishing a prima facie
case of obviousness, it is incumbent upon the examiner to provide a reason why one of
ordinary skill in the art would have been led to modify a prior art reference or to combine
reference teachings to arrive at the claimed invention. See Ex parte Clapp, 227 USPQ
972, 973 (Bd. Pat. App. & Int. 1985). To this end, the requisite motivation must stem
from some teaching, suggestion or inference in the prior art as a whole or from the
knowledge generally available to one of ordinary skill in the art and not from the
appellant's disclosure. See, for example, Uniroyal, Inc. v. Rudkin-Wiley Corp.,
837 F.2d 1044, 1052, 5 USPQ2d 1434, 1439 (Fed. Cir.), cert. denied, 488 U.S. 825
(1988).
The first of these rejections is that claims 1-3 are unpatentable over Zugel in view
of Cucchi. The examiner finds all of the subject matter in these claims to be disclosed
or taught by Zugel, except for a brake to slow the feeding mechanism during stock
feeding. However, it is the examiner’s view that such is taught by Cucchi, and it would
have been obvious to one of ordinary skill in the art to add brakes to the Zugel system
“to provide reliable braking free from de-synchronization with the machine tool” (Answer,
page 5).
Zugel is directed to a high-low speed drive system for multiple spindle machines.
Zugel states in the opening paragraphs that in such machines low speed is used during
the machining operation and high speed is provided to accomplish a number of portions
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of the work cycle, including withdrawing the tool slides, indexing carriers, opening and
closing the collets, bringing the slides up to the work, as well as to “feed the bar stock”
(column 1, lines 27-33). The objective of the Zugel invention is to provide a drive
system that more smoothly changes the speed of the main drive shaft from high to low
speeds (column 2, lines 5-11).
While brakes are used in the Zugel system, contrary to the examiner’s assertion,
Zugel fails to disclose or teach a braking arrangement that is operated to slow the
speed of the feeder mechanism during stock feeding. In fact, as the above-noted
portion of the Zugel specification clearly states, feeding of the stock is accomplished at
high speed, with low speed being engaged only for the machining operations. Thus, in
addition to the shortcoming in Zugel regarding the lack of a brake, which is admitted by
the examiner, it is our position that this reference also fails to disclose or teach slowing
the speed of the feeder mechanism during stock feeding.
Cucchi discloses a positioning system for a rotary loader that feeds bars to a
lathe. As explained in column 1, a rotatable drum carrying the bar stock is braked and
located in position to feed the bars by the interaction of a plurality of pins 17 carried on
the drum with a cam surface 20. Cucchi teaches that after the drum is stopped in
rotation by the braking and positioning mechanism “the loader can perform,” which from
our perspective indicates that the feeder mechanism does not begin to operate, that is
to move the stock laterally into position to be worked, until after the brake means has
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been applied. In any event, even if one were to accept, arguendo, the examiner’s
conclusion that Cucchi teaches slowing the feed mechanism during stock feeding, we
fail to perceive any teaching, suggestion or incentive which would have led one of
ordinary skill in the art to modify the Zugel system by adding such a brake if for no other
reason than it would cause Zugel to be unable to accomplish the stated objective of not
slowing the speed of the feeder mechanism until the beginning of the machining step,
and this would operate as a disincentive for one of ordinary skill in the art to make such
a modification. In this regard, the mere fact that the prior art structure could be modified
does not make such a modification obvious unless the prior art suggests the desirability
of doing so. In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984).
It therefore is our conclusion that the combined teachings of Zugel and Cucchi
fail to establish a prima facie case of obviousness with regard to the subject matter
recited in independent claim 1 and, it follows, of dependent claims 2 and 3. As a
consequence, this rejection of claims 1-3 cannot be sustained.
Claims 4-14, all of which are dependent from claim 1, stand rejected as being
unpatentable over Zugel in view of Cucchi and Manning ‘031, the latter being added for
its teaching of using stock stopping devices. Be that as it may, Manning ‘031 fails to
overcome the deficiency discussed above in the combination of Zugel and Cucchi
against parent claim 1, and we therefore will not sustain this rejection.
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Claims 17-20, which are dependent from claim 15, stand rejected on the basis of
Schubert in view of Manning ‘037, which was applied for teaching a stock feeder
mechanism comprising a detection system. As we determined above in evaluating the
Section 102 rejection of claim 15, Schubert fails to disclose or teach a brake system to
slow the speed of the feeder mechanism during the stock feeding operation.
Considering Schubert in the light of Section 103 does not alter this finding, for the
examiner has adduced no evidence to support a conclusion that it would have been
obvious to provide this feature in the Schubert system. Manning ‘037 fails to overcome
this deficiency, and therefore the present rejection cannot be sustained.
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CONCLUSION
None of the rejections is sustained.
The decision of the examiner is reversed.
REVERSED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
)
JOHN P. McQUADE )
Administrative Patent Judge )
NEA/lbg
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Application No. 09/773,366
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WALKER & JOCKE, L.P.A.
231 SOUTH BROADWAY STREET
MEDINA, OH 44256