Ex Parte MallisonDownload PDFBoard of Patent Appeals and InterferencesNov 25, 200308968534 (B.P.A.I. Nov. 25, 2003) Copy Citation The opinion in support of the decision being entered today was not written for publication and is not binding precedent of the Board.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. 31 UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte FRANK K. MALLISON __________ Appeal No. 2003-1118 Application 08/968,534 ___________ HEARD: November 5, 2003 ___________ Before FRANKFORT, STAAB, and MCQUADE, Administrative Patent Judges. MCQUADE, Administrative Patent Judge. DECISION ON APPEAL Frank K. Mallison appeals the examiner’s rejection of claims 1 through 17, all of the claims pending in the application. THE INVENTION The invention relates to “a dust collection and removal system to be used in conjunction with apparatus for improving tire uniformity during the manufacture of tires” (specification, page 1). Representative claims 1 and 16 read as follows: 1. In a machine having grinding wheels for selectively engaging the periphery of a tire, a dust collection and removal apparatus comprising: a) shroud means for housing the grinding wheels; Appeal No. 2003-1118 Application 08/968,534 2 b)vacuum means for collecting and removing dislodged dust from the tire surface and surrounding area, said vacuum means being connected to said shroud means and generating a vacuum flow which defines a vacuum flow path; c) nozzle means for directing a blast of air against the tire surface to dislodge dust adhered to the tire, said nozzle means being centered within the flow path generated by said vacuum means; and d) mounting means for mounting and adjusting said nozzle means within said shroud means. 16. A method of collecting and removing dust from a tire uniformity machine having grinding wheels for selectively engaging the periphery of a tire to improve tire uniformity, comprising the steps of: a) mounting at least one vacuum hose adjacement to the grinding wheel; b) mounting at least one air nozzle in the center of the vacuum flow path generated by said at least one vacuum hose; c) directing a blast of air from said at least one air nozzle toward the tire to dislodge dust therefrom; and d) collecting and removing the dislodged dust along said vacuum path through said at least one vacuum hose. THE PRIOR ART The references relied on by the examiner as evidence of obviousness are: Cothrell et al. (Cothrell) 4,525,955 Jul. 2, 1985 Grant 5,047,089 Sep. 10, 1991 Healy et al. (Healy) 5,279,076 Jan. 18, 1994 THE REJECTIONS Claims 1 through 15 stand rejected under 35 U.S.C. § 112, second paragraph, as failing to particularly point out and Appeal No. 2003-1118 Application 08/968,534 3 distinctly claim the subject matter the appellant regards as the invention. Claims 1 through 15 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Grant in view of Cothrell. Claims 16 and 17 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Healy in view of Cothrell. Attention is directed to the appellant’s brief (Paper No. 23) and to the Office action dated January 17, 2001 and the examiner’s answer (Paper Nos. 18 and 25) for the respective positions of the appellant and the examiner regarding the merits of these rejections. DISCUSSION I. The 35 U.S.C. § 112, second paragraph, rejection of claims 1 through 15 The following reasoning by the examiner forms the basis for this rejection: It is unclear from figure 2, where the flow path is and how the nozzle is situated in the center. There are no flow lines to show the path in figure 2. Figure 4 merely shows a nozzle centered in the vacuum flow, but not the grinding wheels housed in the shroud with the nozzle and vacuum means [Paper No. 18, page 2]. Presumably, this arguable well taken criticism of the drawings reflects a concern by the examiner that the limitations Appeal No. 2003-1118 Application 08/968,534 1 Claims 2 through 14 depend from claim 1. 2 Interestingly, although claim 16 contains a similar limitation, the examiner did not include it or dependent claim 17 in the rejection. 4 in independent claims 11 and 15 requiring the air nozzle or nozzle means to be centered within the vacuum flow path are indefinite.2 The second paragraph of § 112, ¶ 2, requires claims to set out and circumscribe a particular area with a reasonable degree of precision and particularity. In re Johnson, 558 F.2d 1008, 1015, 194 USPQ 187, 193 (CCPA 1977). In determining whether this standard is met, the definiteness of the language employed in the claims must be analyzed, not in a vacuum, but always in light of the teachings of the prior art and of the particular application disclosure as it would be interpreted by one possessing the ordinary level of skill in the pertinent art. Id. The paragraph spanning lines 4 through 27 on page 8 in the appellant’s specification indicates that the nozzle 70 is located in the center of the vacuum path in the sense that the high- pressure air emitted from the nozzle is focused directly at the point of lowest pressure created by the vacuum and that air is swept into the vacuum all around the nozzle to form a virtual air curtain around both the nozzle and the point at which the high- Appeal No. 2003-1118 Application 08/968,534 5 pressure air strikes and is deflected by the tire. Considered in light of this disclosure, the relationship set forth in claims 1 and 15 (as well as claim 16) between the air nozzle or nozzle means and the vacuum flow path is reasonably clear and precise. Thus, the examiner’s apparent concern that the subject claim limitations are indefinite is unfounded. Accordingly, we shall not sustain the standing 35 U.S.C. § 112, second paragraph, rejection of claims 1 through 15. II. The 35 U.S.C. § 103(a) rejection of claims 1 through 15 as being unpatentable over Grant in view of Cothrell Grant discloses “a device and method for removing and cleaning a relatively softer material, such as asbestos, from a relatively harder surface, such as, walls and ceilings” (column 1, lines 7 through 10). As best shown in Figures 2 and 3, the device includes a cleaning head 10 comprising a housing 12 having an open face 20, a sleeve 18 on the housing opposite the open face, a vacuum hose 16 coupled to the sleeve, a plurality of knives 30, 32, 34 and 36 arranged at the open face, a transverse scraping blade 40 disposed on the trailing side of the knives, and a spraying head 42 located on the trailing side of the blade to direct a high velocity jet 43 of water or other suitable liquid at the surface being cleaned, preferably at an oblique angle to enhance the washing action of the jet (see column 4, Appeal No. 2003-1118 Application 08/968,534 6 lines 59 through 64). In use, as an operator moves the cleaning head across the surface to be cleaned, the knives make parallel incisions in the soft material, effectively cutting it into parallel strips, the blade scrapes the strips from the surface, the water jet further cleans the scraped surface to remove residual material and the vacuum hose aspirates liquid and removed material from the head (see column 7, line 36 et seq.). Grant adds that while spray heads employing air or gas atomization could be used, airless spraying systems are preferred since any sprayed air will reduce the velocity, and hence the entraining effect, of air entering the cleaning head through the open face (see column 5, lines 52 through 58). Conceding that Grant’s cleaning device does not respond to the above discussed limitations in independent claims 1 and 15 requiring an air nozzle or nozzle means centered within a vacuum flow path, the examiner turns to Cothrell to overcome this deficiency. Cothrell discloses a device for cleaning endless abrasive belts used for sanding and grinding operations. As shown in Figure 5, the device, which is specifically constructed as a component of a sanding and grinding apparatus 10, includes a hood 81, a nozzle means 95 for delivering pulses of compressed air Appeal No. 2003-1118 Application 08/968,534 7 onto the belt surface, and evacuating throats 96 and 97 connected to a vacuum source for removing air and debris. In proposing to combine Grant and Cothrell to reject claims 1 and 15, the examiner concludes that it would have been obvious to one of ordinary skill in the art “to modify the water jet of Grant to be an air jet centered in the vacuum port, as taught by Cothrell, in order to thoroughly and efficiently remove dust and debris during grinding” (Paper No. 18, page 3). Even if Grant and Cothrell are assumed to be analogous art (the appellant urges that they are not), this proposed combination to reject claims 1 and 15 is unsound. To begin with, the disparate natures of the devices respectively disclosed by these references and the fact that Grant considers the use of an air spray of the sort disclosed by Cothrell to be counterproductive indicate that the combination stems solely from impermissible hindsight. Indeed, Grant’s explanation that air sprays would reduce the aspiration effect of the system completely belies the examiner’s implication that Cothrell’s air jet would remove debris more thoroughly and efficiently than Grant’s liquid spray. Moreover, as Cothrell offers no indication that air nozzle means 95 is centered within the vacuum flow path generated by evacuating throats 96 and 97 in the sense required Appeal No. 2003-1118 Application 08/968,534 8 by the “centered” limitations in claims 1 and 15 as read in light of the underlying disclosure, the proposed combination of the references, even if made, would not result in the subject matter claimed. Thus, the combined teachings of Grant and Cothrell do not justify the examiner’s conclusion that the differences between the subject matter set forth in independent claims 1 and 15 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 and 15, and dependent claims 2 through 14, as being unpatentable over Grant in view of Cothrell. III. The 35 U.S.C. § 103(a) rejection of claims 16 and 17 as being unpatentable over Healy in view of Cothrell Healy discloses a dust collection apparatus for use in a tire grinding machine, and more particularly different embodiments of such an apparatus respectively adapted for use with full face grinding (Figures 1 through 7), shoulder grinding (Figures 8 through 12), center grinding (Figures 13 through 17) and sidewall grinding (Figures 18 through 20). As best shown in Figures 5, 6, 10, 11, 14, 15 and 18, each of the embodiments Appeal No. 2003-1118 Application 08/968,534 9 includes compressed air nozzles and vacuum ports laterally offset from one another. The examiner concedes that Healy’s dust collection apparatus does not respond to the limitation in independent claim 16 requiring the step of mounting the air nozzle or nozzle means in the center of the vacuum flow path and relies on Cothrell to cure this shortcoming. For reasons similar to those discussed above, however, such reliance on Cothrell is misplaced. Accordingly, we shall not sustain the standing 35 U.S.C. § 103(a) rejection of claim 16 and dependent claim 17 as being unpatentable over Healy in view of Cothrell. Appeal No. 2003-1118 Application 08/968,534 10 SUMMARY The decision of the examiner to reject claims 1 through 17 is reversed. REVERSED CHARLES E. FRANKFORT ) Administrative Patent Judge ) ) ) BOARD OF PATENT ) ) APPEALS AND LAWRENCE J. STAAB ) Administrative Patent Judge ) INTERFERENCES ) ) ) ) ) JOHN P. MCQUADE ) Administrative Patent Judge ) JPM/kis Appeal No. 2003-1118 Application 08/968,534 11 REESE TAYLOR RENNER, KENNER, GRIEVE, BOBAK TAYLOR & WEBER FIRST NATIONAL TOWER SIXTEENTH FLOOR AKRON, OH 44308-1456 Copy with citationCopy as parenthetical citation