Ex Parte Kozyrski et al

Board of Patent Appeals and Interferences

Apr 27, 2005

09822136 (B.P.A.I. Apr. 27, 2005)

The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte VINCENT T. KOZYRSKI
and DONALD B. EFFGEN
_______________

Appeal No. 2005-0879
Application No. 09/822,136
_______________
ON BRIEF
_______________
Before FRANKFORT, MCQUADE, and BAHR, Administrative Patent
Judges.
MCQUADE, Administrative Patent Judge.
DECISION ON APPEAL
Vincent T. Kozyrski et al. appeal from the final rejection
(mailed November 4, 2003) of claims 1, 4 through 6, 13 and 25
through 30, all of the claims pending in the application.
THE INVENTION
The invention relates to “hand-held rotary cutting tools for
use with thin sheet materials” (specification, page 1).
Representative claim 1 reads as follows:
1. A hand-held rotary cutter for cutting thin sheet
materials, comprising:
a handle having a hand grip portion; and
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Application No. 09/822,136
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a circular cutting blade having a cutting edge, a diameter,
and a thickness, wherein the cutting blade is pivotally mounted
to the handle, and the cutting edge includes an edge angle that
is not less than forty degrees and not greater than fifty
degrees;
wherein the diameter of the cutting blade is not greater
than fifteen times the thickness.
THE PRIOR ART
The references relied on by the examiner to support the
final rejection are:
Mathein 704,352 July 08, 1902
Jahn 5,235,748 Aug. 17, 1993
THE REJECTIONS
Claims 1, 4 through 6, 13 and 25 through 30 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Mathein.
Claims 1, 4 through 6, 13 and 25 through 30 also stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over
Jahn.
Attention is directed to the brief (filed February 6, 2004)
and answer (mailed July 1, 2004) for the respective positions of
the appellants and examiner regarding the merits of these
rejections.
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Application No. 09/822,136
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DISCUSSION
As framed and argued by the appellants, the dispositive
issue in the appeal is whether Mathein or Jahn would have
rendered obvious a rotary cutter or rotary cutting blade meeting
the limitations in independent claims 1, 13, 25 and 28 requiring
a cutting edge angle “that is not less than forty degrees and not
greater than fifty degrees.” The appellants’ specification (see
pages 1 through 3) asserts that cutting edge angles within this
range afford a higher degree of durability and safety as compared
to sharper, smaller angle cutting edges, while still being
effective for cutting thin sheet materials. These assertions
find support in the 37 CFR § 1.132 Declarations of Vincent T.
Kozyrski filed September 17, 2002 and September 29, 2003. The
second Kozyrski declaration also indicates that cutting edge
angles within the specified range are more effective for cutting
thin sheet materials than duller, larger angle cutting edges.
Turning to the prior art applied by the examiner, Mathein
discloses a rotary cutter comprising a rotary disk cutter L for
trimming photographic prints, and Jahn discloses a rotary cutter
comprising a circular cutter wheel 16 for severing foil seals on
wine bottles. Neither reference conveys any information as to
Appeal No. 2005-0879
Application No. 09/822,136
4
the cutting edge angle of these cutting implements beyond that
which is depicted in their respective drawings.
In making the rejection based on Mathein, the examiner
submits that
[i]t is acknowledged that dimensions may not be taken
directly from patent drawings since they are not
engineering drawings. However, “The drawings must be
evaluated for what they reasonably disclose and suggest
to one of ordinary skill in the art.” In re Aslanian,
200 USPQ 500 (CCPA 1979), MPEP 2125. It would appear
that Mathein suggests that the disc should be rather
thick and have a rather large edge angle. Since this
is within or similar to the [range] claimed, 40-50
degrees, . . . it would have been an obvious matter to
set such [range] as being within normal parameters of
conventionality dependent on the size of the blade, the
material from which it is made, its rotating speed,
what material is being cut, the developed friction, and
how often it is desired to replace the blade [answer,
pages 3 and 4].
The rejection predicated on Jahn has a similar rationale
(see page 4 in the answer).
Rejections based on 35 U.S.C. § 103(a) must rest on a
factual basis. In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173,
177-78 (CCPA 1967). In making such a rejection, the examiner has
the initial duty of supplying the requisite factual basis and may
not, because of doubts that the invention is patentable, resort
to speculation, unfounded assumptions or hindsight reconstruction
to supply deficiencies in the factual basis. Id.
Appeal No. 2005-0879
Application No. 09/822,136
1 See the Office action mailed on July 29, 2003 which was
incorporated by reference into the final rejection.
5
In essence, the factual basis advanced by the examiner in
support of the appealed rejections consists of Mathein’s drawing
of rotary disk cutter L and Jahn’s drawing of circular cutter
wheel 16. As urged by the examiner, things clearly shown in the
drawings of a reference patent are not to be disregarded in
assessing the patentability of a claim. In re Mraz, 455 F.2d
1069, 1072, 173 USPQ 25, 27 (CCPA 1972). On the other hand, as
patent drawings generally are not working drawings drawn to
scale, it is well established that they do not define the precise
proportions of the elements shown therein and may not be relied
on to show particular sizes if the specification is completely
silent on the issue. Hockerson-Halberstadt Inc. v. Avia Group
International Inc., 222 F.3d 951, 956, 55 USPQ2d 1487, 1491
(Fed. Cir. 2000).
In the present case, Mathein and Jahn do not discuss cutting
edge angles or indicate that their drawings are to scale.
Moreover, the drawings in these references are not so clear that
they teach, or would have suggested, a cutting edge angle within
the range set forth in the appealed claims. Indeed, by the
examiner’s own measurement,1 Mathein’s drawings show a cutting
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Application No. 09/822,136
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edge angle of approximately 68 degrees and Jahn’s drawings show a
cutting edge angle of approximately 60 degrees, both of which
fall outside the range specified in the claims. These references
also are devoid of any evidentiary support for the examiner’s
conjecture that it would have been obvious to provide Mathein’s
rotary disk cutter L or Jahn’s circular cutter wheel 16 with a
cutting edge angle “that is not less than forty degrees and not
greater than fifty degrees” as recited in independent claims 1,
13, 25 and 28 based on the size, material, speed, durability
and/or intended use of these components.
Thus, neither Mathein nor Jahn justifies a conclusion that
the differences between the subject matter recited in independent
claims 1, 13, 25 and 28, and dependent claims 4 through 6, 26,
27, 29 and 30, and the prior art are such that the subject matter
as a whole would have been obvious at the time the invention was
made to a person having ordinary skill in the art. Accordingly,
we shall not sustain the standing 35 U.S.C. § 103(a) rejection of
claims 1, 4 through 6, 13 and 25 through 30 as being unpatentable
over Mathein or the standing 35 U.S.C. § 103(a) rejection of
claims 1, 4 through 6, 13 and 25 through 30 as being unpatentable
over Jahn.
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Application No. 09/822,136
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SUMMARY
The decision of the examiner to reject claims 1, 4 through
6, 13 and 25 through 30 is reversed.
REVERSED
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOHN P. MCQUADE ) APPEALS
Administrative Patent Judge ) AND INTERFERENCES
)
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
JPM/kis
Appeal No. 2005-0879
Application No. 09/822,136
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