Ex Parte LaBounty et al

Board of Patent Appeals and Interferences

May 19, 2004

09524904 (B.P.A.I. May. 19, 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written for publication and is not binding precedent of the Board.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. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte KENNETH R. LABOUNTY, ROSS D. CHRISTENSON,
and DANIEL P. JACOBSON
_____________
Appeal No. 2003-0510
Application No. 09/524,904
______________
ON BRIEF
_______________
Before ABRAMS, STAAB, and NASE, Administrative Patent Judges.
STAAB, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s final
rejection of claims 1-12, 14-17, 19 and 20, all the claims
currently pending in the application.
Appellants’ invention pertains to a heavy duty demolition
apparatus having a replaceable tip. An understanding of the
invention can be derived from a reading of exemplary claim 1,
which appears in the appendix to appellants’ main brief.
Appeal No. 2003-0510
Application No. 09/524,904
1As aptly noted by the examiner on page 5 of the answer,
claim 7 is written as two sentences. This informality is
deserving of correction upon return of the application to the
Technology Center.
2
The references of record relied upon by the examiner in the
final rejection as evidence of obviousness are:
Sederberg et al. (Sederberg) 5,992,023 Nov. 30, 1999
(filed Jul. 31, 1998)
Ramun 6,202,308 Mar. 20, 2001
(filed Jul. 6, 1999)
Claims 1-12, 14-17, 19 and 20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Sederberg in view of Ramun.1
Reference is made to appellants’ main and reply briefs
(Paper Nos. 13 and 15) and to the examiner’s answer (Paper No.
14) for the respective positions of appellants and the examiner
regarding the merits of this rejection.
Discussion
I. Claim Grouping
Appellants indicate on page 3 of the main brief that claim
17 should be considered separately from the remainder of the
appealed claims and has presented arguments specifically directed
to claim 17. Accordingly, claim 17 shall stand or fall alone.
As to the remainder of the appealed claims, appellants have
argued the patentability of these claims without regard to any
Appeal No. 2003-0510
Application No. 09/524,904
3
particular claim. Therefore, claims 1-12, 14-16, 19 and 20 shall
stand or fall together in accordance with the success or failure
of the arguments directed thereto. See In re Hellsund, 474 F.2d
1307, 1309-10, 177 USPQ 170, 172 (CCPA 1973); In re Wood, 582
F.2d 638, 642, 199 USPQ 137, 140 (CCPA 1978); and In re Nielson,
816 F.2d 1567, 1572, 2 USPQ2d 1525, 1528 (Fed. Cir. 1987).
II. Claims 1-12, 14-16, 19 and 20
Representative claim 1 calls for, among other things, an
indexable rotatable cross blade (appellants’ element 60)
removably mounted to the inside of the tie plate (appellants’
element 56) substantially transverse to the lower shear blade and
to the guide blade, the cross blade having four cutting surfaces
for successive exposure and shearing.
In rejecting claim 1 as being unpatentable over Sederberg in
view of Ramun, the examiner found (answer, page 3) that Sederberg
discloses a heavy-duty demolition apparatus comprising a lower
jaw 14 and an upper jaw 16 and pivot means 18 interconnecting the
jaws, the lower jaw having shearing blades 64, 66 and the upper
jaw having shearing blades 114, 116, the lower jaw also having a
rigid guide blade 34, a tie plate 90 securing the outer ends of
the lower shear blade and the guide blade together, an open slot
92 between the lower shear blade and the guide plate to receive
Appeal No. 2003-0510
Application No. 09/524,904
4
the upper shear blade therein, and a cross cutter blade (element
94 in Figures 6 and 11) removably mounted to the inside of the
tie plate, all as set forth in appellants’ claims. The examiner
further found (answer, pages 3-4) that the cross cutter blade of
Sederberg is “rotatable,” but that it is not necessarily
“indexable” as set forth in claim 1. To account for this alleged
deficiency, the examiner turned to Ramun.
Ramun discloses a heavy duty shear comprising a fixed lower
blade 34 and a movable upper blade 38. Of particular interest to
the examiner are Ramun’s shearing blade inserts 10. According to
Ramun (column 4, lines 31-40):
The movable blade 38 includes a plurality of
reversible, indexable blade inserts 10 positioned along
a side edge thereof. The blade inserts 10 are
removably attached to the movable blade 38 as will be
described hereinafter. Each of the blade inserts 10
includes a plurality of cutting edges along the side
edges thereof. When one of the respective cutting
edges of a blade insert 10 is worn down, a new cutting
edge can be presented by indexing or reversing the
blade insert 10 to present the new cutting edge in the
operative position. [Emphasis added.]
Ramun describes a similar set of reversible, indexable blade
inserts 10 for the lower blade 34 (column 4, lines 41-52).
Based on the above reference teachings, the examiner
concluded (answer, page 3) that it would have been obvious to one
Appeal No. 2003-0510
Application No. 09/524,904
2In evaluating the teachings of the applied references, it
is proper to take into account not only the specific teachings of
each reference, but also the inferences which one skilled in the
art would reasonably have been expected to draw from the
disclosure. See In re Preda, 401 F.2d 825, 826, 159 USPQ 342,
5
of ordinary skill in the art to provide the “various blades” of
Sederberg with “indexable” blades to extend the useful lives of
the blades, and thereby arrive at the subject matter of claim 1.
As further explained by the examiner in the “Response to
Argument” section on page 4 of the answer:
Both blades of Sederberg and Ramun are rotatable and
comparable, and accordingly, there is clear motivation
to combine the “rotatable” blade of Sederberg with the
“indexable” blade of Ramun. Moreover, the Examiner
takes the position that the rotatable blade of
Sederberg can be considered “indexable” and the
combination of Ramun is cited in the rejection because
the Appellant [sic, Appellants] differentiate the two
terms in his [sic, their] disclosure and Sederberg does
not use the term “indexable” in his disclosure.
The examiner’s position is well taken. First, we are in
accord with the examiner’s position to the effect that one of
ordinary skill in the art would have reasonably inferred from the
disclosure of Sederberg that the cross cutter blade 94 thereof
may be rotated and/or reversed so as to bring any one of the four
(4) long edges of the blade into a position where it would
function as the principal cutting edge of the cross cutter
blade.2 In this regard, Figures 6 and 11 of Sederberg illustrate
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Application No. 09/524,904
344 (CCPA 1968).
6
cross cutter blade 94 as being rectangular in shape whereby the
blade may be rotated about axes that are parallel to either the
long or short edges of the blade to bring any one of four (4)
long edges of the blade into an operative cutting position.
Further, this manner of operation is consistent and in keeping
with the statement appearing in the paragraph spanning columns
7 and 8 of Sederberg which states that the cutter blades of the
invention may be rotated to enable use of all four longitudinal
edges of the blade as the principal cutting edge. In our
opinion, progressive “end over end” and/or “reversible” rotation
of Sederberg’s cross cutter blade 94 would satisfy the rather
broadly worded requirement of the last paragraph of claim 1 that
the cross blade is “indexable” and “rotatable” such that four
cutting surfaces of the blade are presented for “successive”
exposure and shearing.
Second, to the extent progressive “end over end” and/or
“reversible” rotation of Sederberg’s cross cutting blade 94 would
not satisfy the “indexable” “rotatable” and “successive” language
of the last paragraph of claim 1, we agree with the examiner’s
implicit position to the effect that it would have been obvious
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Application No. 09/524,904
7
in view of the teachings of Ramun to modify the cross cutter
blade of Sederberg and its receiving recess 92 (such as by making
both the blade and the recess square in plan view) so that the
blade may be rotated about an axis perpendicular to one of its
major faces to bring successive adjacent cutting edges into an
operative cutting position. In this matter, note that Ramun
discloses that the reversible, indexable cutter blade inserts
10 having multiple cutting edges may be either rectangular,
square, or rhombus in shape (column 4, lines 31-52).
Appellants’ arguments in the main and reply briefs have been
considered. At the outset, we simply disagree with the argument
in the third full paragraph on page 4 of the reply brief that
appellants’ specification provides a definition for the term
“successive” appearing in the claims. As we see it, the section
of appellants’ specification quoted on page 4 of the reply brief
merely provides an example of what may constitute “successive”
exposure of a plurality of cutting surfaces. The argument in the
second full paragraph on page 4 of the reply brief that
Sederberg’s rectangular cross blade does not allow for
“successive” exposure of four edges for shearing is not
persuasive because it is based on an unreasonably narrow
interpretation of the scope of the “indexable” “rotatable” and
Appeal No. 2003-0510
Application No. 09/524,904
3In this regard, note page 7, lines 11-13, of appellants’
specification, where the elongated lower shear blades 36 and
37 are rotated and flipped around “to successively bring each of
the four cutting surfaces into position for shearing” (emphasis
added). Thus, based on appellants’ original disclosure,
“successive” exposure of cutting edges does not preclude the sort
of manipulation that would be required to bring the four long
cutting edges of Sederberg’s rectangular cross cutting blade into
operative position.
4To conclude otherwise would require the presumption of
stupidity rather than skill on the part of the ordinarily skilled
artisan. See In re Sovish, 769 F.2d 738, 743, 226 USPQ 771, 774
(Fed. Cir. 1985)
8
“successive” language of the claims. In this regard, we do not
consider that the claims require the cross blade to be rotatable
about an axis perpendicular to one of the blade’s major faces to
successively bring a new cutting edge into an operative
position.3 The argument in the first full paragraph on page 4 of
the reply brief that rotating the cross cutter blade 94 of
Sederberg to expose the two short sides of the blade would
clearly be unworkable also appears to be founded on appellants’
unreasonably narrow interpretation of the scope of the
“indexable” “rotatable” and “successive” language of the claims.
Moreover, the ordinarily skilled artisan would not operate
Sederberg in this manner.4
In light of the above, we shall sustain the standing
35 U.S.C. § 103(a) rejection of claim 1 as being unpatentable
Appeal No. 2003-0510
Application No. 09/524,904
9
over Sederberg in view of Ramun. We also shall sustain the
standing 35 U.S.C. § 103(a) rejection of claims 2-12, 14-16, 19
and 20 as being unpatentable over Sederberg in view of Ramun
since, as noted above, appellants have not separately argued the
patentability of these claims with any reasonable degree of
specificity.
III. Claim 17
Claim 17 differs from the applied prior art in that it calls
for the cross blade and the tie plate to form therebetween a
first angle between one and thirty degrees. This is illustrated
in appellants’ Figure 3 where the major faces of the cross blade
60 form an angle " with the inner surface 56b of the tie plate,
and is described in the paragraph spanning pages 6-7 of the
specification where the benefits of this arrangement are
explained. In rejecting claim 17, the examiner has (1) taken the
position (answer, pages 3-4) that the shim 96 of Sederberg can be
used to adjust the angle between the tie plate and the cross
blade, (2) cited In re Aller, 220 F.2d 454, 105 USPQ 233 (CCPA
1955) for the principle that “it is not inventive to discover the
optimum or workable ranges by routine experimentation when
general conditions are disclosed in the prior art” (answer, pages
3-4), and (3) urged that appellants have merely used routine
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Application No. 09/524,904
10
skill to discover the optimum or workable range of the angle
between the cross blade and the tie plate. Based on the above,
the examiner concluded that claim 17 is not patentable. We do
not agree.
First, we are apprised of nothing in Sederberg that teaches,
suggests or implies that the shim 96 is used for the purpose of
adjusting the angle between the cross blade and the tie plate,
notwithstanding the examiner’s apparent position to the contrary.
Second, even if Sederberg did teach that the cross blade may be
situated at an angle to the tie plate, the principle of
discovering the optimum value of a variable does not apply where
the parameter optimized is not recognized in the art as being a
result-effective variable. In re Antoine, 559 F.2d 618, 621, 195
USPQ 6, 8-9 (CCPA 1977). Thus, “routine experimentation” does
not defeat patentability unless it comes within the teachings of
the art. In re Fay, 347 F.2d 597, 602, 146 USPQ 47, 51 (CCPA
1965). In the present case, assuming for the sake of argument
that Sederberg intended to arrange the cross plate 94 at an angle
relative to tie plate 90, variation of that angle cannot be said
to have been an obvious matter of “routine experimentation”
because neither Sederberg nor Ramun teaches or suggests that such
Appeal No. 2003-0510
Application No. 09/524,904
11
angle is a result-effective variable. See In re Boesch, 617 F.2d
272, 276, 205 USPQ 215, 219 (CCPA 1980). As a consequence, one
of ordinary skill following the teachings of the applied
references would not have been led to vary the angle in order to
determine an optimum range of values therefor. Cf. In re Huang,
100 F.3d 135, 139, 40 USPQ2d 1685, 1689-90 (Fed. Cir. 1996)(since
prior art taught that polyurethane layer absorbs shock, obvious
to experiment to obtain the optimum range of thickness for shock
absorption).
Therefore, we shall not sustain the standing rejection of
claim 17 as being unpatentable over Sederberg in view of Ramun.
Conclusion
The standing rejection of claims 1-12, 14-17, 19 and
20 under 35 U.S.C. § 103(a) is affirmed as to claims 1-12, 14-16,
19 and 20, but is reversed as to claim 17.
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The decision of the examiner is affirmed-in-part.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
LJS:hh
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