Ex Parte Mallison

Board of Patent Appeals and Interferences

Nov 25, 2003

08968534 (B.P.A.I. Nov. 25, 2003)

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not written for publication and is not binding precedent of the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
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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
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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,
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Application 08/968,534
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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
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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
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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
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Application 08/968,534
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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
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REESE TAYLOR
RENNER, KENNER, GRIEVE, BOBAK
TAYLOR & WEBER
FIRST NATIONAL TOWER
SIXTEENTH FLOOR
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