Ex Parte Montgomery

Board of Patent Appeals and Interferences

Sep 28, 2006

10657397 (B.P.A.I. Sep. 28, 2006)

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for publication and is not binding precedent of the Board.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
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte ROBERT H. MONTGOMERY, JR.
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Appeal 2006-3018
Application 10/657,397
Technology Center: 1700
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Decided: September 28, 2006
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Before WARREN, WALTZ, and JEFFREY T. SMITH, Administrative
Patent Judges.

WARREN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the decision of the
Examiner finally rejecting claims 22 through 25, all of the claims in the
application.
Claim 22 illustrates Appellant’s invention of a protective wear sleeve
for a bit holder, and is representative of the claims on appeal:
22. A protective wear sleeve for a bit holder of a cutting tool
assembly wherein the bit holder contains a central bore, and the wear sleeve
comprises:
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Appeal 2006-3018
Application 10/657,397
an elongated body having an axial forward end and an axial rearward
end;
the elongated body having a solid enlarged diameter portion adjacent
to the axial forward end thereof and a split portion beginning at and
extending in an axial forward direction from the rearward end wherein the
split portion contains a slot so that the split portion is flexible in a radial
direction, and a solid intermediate portion being between and contiguous
with the enlarged diameter portion and the split portion;
the split portion having an external surface that is uniform over the
entire length thereof, and the intermediate portion having an external surface
that is uniform wherein the diameter of the external surface of the split
portion is equal to the diameter of the surface of the intermediate portion;
and
when the wear sleeve is in the central bore, the external surface of the
split portion is biased in a radial outward direction against the central bore of
the bit holder so as to retain the wear sleeve in the central bore of the bit
holder.
The reference relied on by the Examiner is:
Peterson US 5,683,143 Nov. 4, 1997
The Examiner has rejected appealed claims 22 through 25 under
35 U.S.C. § 102(b) as being anticipated by Peterson (Answer 3-4).
We reverse.
We refer to the Answer and to the Brief and Reply Brief for a
complete exposition of the positions advanced by the Examiner and
Appellant.
OPINION
We agree with Appellant’s position set forth in the Brief and Reply
Brief, and add the following thereto for emphasis.
The issues in this appeal involve the “split portion” of the claimed
wear sleeve encompassed by claim 1. The “split portion” portion has the
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Application 10/657,397
following limitation in terms of structure: “wherein the split portion
contains a slot so that the split portion is flexible in a radial direction.” We
determine that this limitation further requires that the material in this portion
must be capable of being “flexible in a radial direction,” and indeed, the
specification discloses to one skilled in the art that this portion can be made
of “spring like resilient material” (specification 7:8-18). This structure and
material is further limited by the clause “when the wear sleeve is in the
central bore, the external surface of the split portion is biased in a radial
outward direction against the central bore of the bit holder so as to retain the
wear sleeve in the central bore of the bit holder.” Thus, the material of the
split portion must be capable of being “flexible in a radial direction” and
“biased in a radial outward direction.”
Appellant correctly points out in the Reply Brief that Peterson does
not disclose to one skilled in this art, either expressly or inherently, that as a
matter of fact the portion of sleeve 35 having slots 51 for roll pin 49 is made
of material that provides the claimed characteristics of the material in the
split portion of the wear sleeve in claim 1 (Peterson col. 3, l. 65, to col. 4,
l. 41, and FIG. 4). These claim requirements are not addressed by mere
structure alone.
Accordingly, in the absence of a prima facie case of anticipation
which addresses all of the claim limitations, we reverse the ground of
rejection of appealed claims 22 through 25 under 35 U.S.C. § 102(b).

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Application 10/657,397
The Examiner’s decision is reversed.

REVERSED

cam

John J. Prizzi
Kennametal Inc.
P.O. Box 231
Latrobe, PA 15650

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