Ex parte Kislinger

Board of Patent Appeals and Interferences

Jul 26, 1999

08392766 (B.P.A.I. Jul. 26, 1999)

Application for patent filed January 30, 1995. Accord-1
ing to appellant, the application is a National stage applica-
tion under 35 U.S.C. § 371 of PCT/EP93/01827 filed July 13,
1993.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte HEINRICH KISLINGER

_____________
Appeal No. 97-2612
Application 08/392,7661
______________
HEARD: July 14, 1999
_______________
Before CALVERT, FRANKFORT and SCHAFER, Administrative Patent
Judges.
Appeal No. 97-2612
Application 08/392,766
A translation of this reference was filed by appellant2
on June 27, 1996.
A translation of this reference, prepared for the Patent3
and Trademark Office, is enclosed herewith.
2
CALVERT, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims
10 to 17, 24, and 32 to 38.
The appealed claims are drawn to a cutter head with
at least one interchangeable cutting blade, and (except for
claim 24) are reproduced in the appendix of appellant's brief.
The references applied in the final rejection are:
Caumette et al. (FR) 2,443,318 July 4,
1980 (French Application) 2
Biason et al. (EPA) 345,570 Dec. 13,
19893
(European Patent)
Appeal No. 97-2612
Application 08/392,766
3
Claims 10 to 17, 24, and 32 to 38 stand finally
rejected under 35 U.S.C. § 103 as unpatentable over FR in view
of EPA.
The basis of the rejection is set forth on pages 3
and 4 of the examiner's answer, and need not be repeated here.
After fully considering the record in light of the
arguments presented in appellant's brief and reply brief, and
in
the examiner's answer, we conclude that the claims on appeal
are patentable over the combination of FR in view of EPA, and
will not sustain the rejection.
It is well settled that "[t]he mere fact that the
prior art may be modified in the manner suggested by the
Examiner does not make the modification obvious unless the
prior art suggested the desirability of the modification." In
re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783-84 (Fed.
Cir. 1992), citing In re Gordon, 733 F.2d 900, 902, 221 USPQ
1125, 1127 (Fed. Cir. 1984). In the present case, the exam-
iner asserts that it would have been obvious "to have modified
Appeal No. 97-2612
Application 08/392,766
4
the concave/convex bearing arrangement of FR with a flat
bearing surface, like that taught by EPA, so as to allow for
the installation of cutting blades without chip breakers
(e.g.[,] concave surfaces) for cutting applications such as
wood and composite materials" (answer, pages 3 to 4). How-
ever, it is not evident why one of ordinary skill would
want to install blades without chip breakers, and the examiner
does not identify, nor do we find, any teaching or suggestion
in the applied prior art of the desirability of such a fea-
ture. While the clamping of a cutter blade between flat
surfaces is known, as disclosed by EPA, we find no teaching or
suggestion in the prior art which would have
motivated one of ordinary skill to employ such flat surfaces
on
the blade 7 and clamp 8 of FR instead of FR's cylindrical
bearing surface 12 on the clamp and concave face on the cutter
blade. Absent evidence of a suggestion to combine, the rejec-
tion cannot be maintained.
Conclusion
Appeal No. 97-2612
Application 08/392,766
5
The examiner's decision to reject claims 10 to 17,
24, and 32 to 38 is reversed.
REVERSED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
) BOARD OF
PATENT
CHARLES E. FRANKFORT ) APPEALS AND
Administrative Patent Judge ) INTERFER-
ENCES
)
)
)
RICHARD E. SCHAFER )
Administrative Patent Judge )

IAC:psb
Appeal No. 97-2612
Application 08/392,766
6
Herbert Cohen
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