Ex parte Naldi

Board of Patent Appeals and Interferences

May 11, 2001

08730724 (B.P.A.I. May. 11, 2001)

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for publication and is not binding precedent of the Board.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. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte VALTER NALDI
____________
Appeal No. 1999-1912
Application No. 08/730,724
____________
HEARD: April 26, 2001
____________
Before CALVERT, COHEN, and STAAB, Administrative Patent
Judges.
STAAB, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s
refusal to allow claims 1-18 as amended by an amendment filed
subsequent to the final rejection. At an oral hearing on
April 26, 2001, Israel Gopstein, attorney for appellant,
withdrew the appeal as to claims 1, 2, 5 and 7-14.
Accordingly, the appeal as to claims 1, 2, 5 and 7-14 is
dismissed, leaving claims 3, 4, 6, and 15-18 for our review.
Appeal No. 1999-1912
Application No. 08/730,724
Our understanding of this German language patent document1
is derived from a translation prepared in the USPTO. A copy
of this translation is attached to this decision.
A rejection of claims 1-10 under 35 U.S.C. § 112, second2
paragraph, made in the final rejection has been withdrawn by
the examiner in light of changes made to the claims pursuant
to the amendment filed subsequent to the final rejection. See
2
Claims 1, 2, 5 and 7-14 should be canceled by the examiner
upon return of the application to his jurisdiction. MPEP §
1215.03.
Appellant’s invention pertains to a panel cutting machine
having a fast fit connecting means for securing a saw blade
holder. A further understanding of the invention can be
derived from a reading of claim 15, a copy of which is found
in an appendix to appellant’s reply brief.
The references of record relied upon by the examiner in
the final rejection are:
Rudolf et al. (Rudolf) 5,199,223 Apr. 6,
1993
Suzuki 5,333,526 Aug. 2,
1994
Krüsi EP 0 267 156 Nov. 5, 19881
Claims 3, 4, 6 and 15-18 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Suzuki in view of Rudolf and
Krüsi.2
Appeal No. 1999-1912
Application No. 08/730,724
the advisory action mailed August 4, 1998 (Paper No. 11).
Note, for example, that independent claim 15 is drafted3
in Jepson format. By operation of 37 CFR § 1.75(e)(1), the
preamble of claims so drafted constitutes “a description of
all the elements or steps of the claimed combination which are
conventional or known.”
3
According to the examiner, Suzuki “substantially
discloses the claimed invention” (answer, page 3). We note,
however, that Suzuki is silent as the manner in which the saw
blades 14, 33 and 34 are connected to their respective drive
means, which is the crux of the claimed invention. Hence,
apart from setting forth the elements of the claimed machine
that appellant presumably concedes to be conventional or
known , Suzuki is of little relevance to the obviousness issue3
at hand. In any event, Suzuki discloses a machine for cutting
boards having a first station 1 where boards 5 are
successively cut into sections by saw blade 14, and a second
station 17 where the sections cut at the first station are cut
into a plurality of smaller sections by the saw blades 33, 34
of saws 30, 32.
Rudolf pertains to a device for clamping a disc-shaped
tool such as a grinding disc 11. Looking at Figure 1 of
Appeal No. 1999-1912
Application No. 08/730,724
4
Rudolf, the device includes a tool spindle 20 driven by a
motor 10 through drive gears 14, 16. The grinding disc 11 is
held between a flange 24 of the tool spindle and a circular
disc shaped screw head 92 of a retaining device 84. Screw
head 92 has a cylindrical piece 96 extending therefrom that
carries a threaded bolt 88. This bolt is received within the
threaded end of a clamping anchor 46, which clamping anchor is
in turn carried within a hollow portion of the tool spindle.
The clamping anchor 46 and the tool spindle 20 cooperate to
form cavities 56 and 70 connected by connecting channels 66.
The cavities and connecting channels are filled with a plastic
substance such a polyvinyl chloride with a relatively low
degree of polymerization (col. 9, lines 25-29). When the bolt
88 of the screw head 92 is threaded into the threaded end of
the clamping anchor to clamp the grinding disc between the
flange 24 and the screw head 92, the
volume of the cavities 56 and 70 decreases, thus compressing
the plastic substance (col. 9, lines 29-55). The plastic
substance “serves as elastic element which is volume-
compressible within certain limits and thereby allows the
grinding disc 22 to be held clamped when the retaining screw
Appeal No. 1999-1912
Application No. 08/730,724
5
86 is in the tightened state” (col. 9, lines 51-55). Rudolf’s
Figure 2 embodiment is similar to the Figure 1 embodiment,
except for the addition of a piston ring 130 and Belleville
washer springs 132 at the base of the cavity 134. With this
enhancement,
tightening of the retaining screw 86 is not
delimited by the elasticity of the plastic substance
but instead upon further tightening, the Belleville
washers 132 are first compressed until the piston
ring 130 is supported by the stepped surface 38 via
the compressed Belleville washers 132. Only after
that does slight compression of the plastic
substance . . . occur in order to achieve final
clamping of the grinding disc 22. [Col. 10, lines
25-30.]
Krüsi pertains to a device for cutting wooden beams to
length, and would appear to be the most pertinent of the
references applied by the examiner against the claims. Of
particular interest is Figure 6, which shows a cross section
of the drive mechanism for the saw, and Figure 7, which shows
open
and closed perspective views of a chuck for holding the
tapered shank 19 of a saw blade holder. The chuck of Krüsi
comprises a conically shaped recess for receiving the tapered
shank of the saw blade holder and a expandable bushing 21
Appeal No. 1999-1912
Application No. 08/730,724
6
prestressed to an open position mounted on the end of an
axially displaceable spreader bar 20. As explained on page 19
of the translation, when the spreader bar is moved to the
right the bushing opens to accept a locking pin 69 carried by
the tapered shank. With the tapered shank inserted into the
bushing, the spreader bar is moved to the left, causing
fingers of the bushing to be cammed inwardly by camming lugs
(not numbered) of hollow shaft 16. As a result, the locking
pin 69 is gripped by the bushing and the tapered shank is
drawn into the conically shaped recess to firmly hold the saw
blade holder.
In rejecting claims 3, 4, 6 and 15-18, the examiner has
found that Rudolf teaches a fast-fit tool holder connecting
means comprising “a gripper (46), a conical surface (Fig. 2 at
48), a projecting element (108), a tie (46, 50) stressed by
elastic means (58, 60), [and] a first and second bush (90,
96)” (answer, page 4). According to the examiner, it would
have been obvious
to one of ordinary skill in the art (1) to replace the
unillustrated saw connection of Suzuki with a connecting means
of the type shown by Rudolf, and (2) to replace Suzuki’s
Appeal No. 1999-1912
Application No. 08/730,724
Presumably, said “second bush” would correspond to4
cylindrical piece 96 extending from circular disc shaped screw
head 92 of Rudolf, which the examiner has identified as being
a second bush in Rudolf.
7
“second bush” “with a flexible second bush which is expanded4
upon axial displacement, as taught by [Krüsi]” (answer, page
4). Implicit in the above is the examiner’s determination
that these modifications of Suzuki would result in a device
that corresponds to the subject matter of claims 3, 4, 6 and
15-18 in all respects.
We cannot accept the examiner’s position. At the outset,
given the fundamental differences in construction and
operation of the connecting means of Rudolf and Krüsi, it is
difficult to imagine why one of ordinary skill in the art
would have turned to Krüsi as a teaching reference for
modifying the device of Rudolf. In particular, it is
difficult to image why one of ordinary skill in the art would
have found it desirable, and thus obvious, to replace the so-
called “second bush” [presumably, element 96] of Rudolf with a
flexible bush that is expandable upon axial
displacement thereof, notwithstanding that Krüsi teaches such
a construction. This is particularly so because there does
Appeal No. 1999-1912
Application No. 08/730,724
8
not appear to be any cogent reason for making element 96 of
Rudolf flexible so as to be expandable, as called for in the
claims. Moreover, the examiner’s reading of the claimed first
bush and flexible second bush on elements 90 and 96,
respectively, of Rudolf is a hindsight analysis of Rudolf
based on appellant’s teachings, especially when these claim
terms are read in light of appellant’s disclosure. In
addition, the tool holder of Krüsi does not have both a first
bush and a second flexible bush, with the second flexible bush
being expandable upon axial displacement of the first bush, as
claimed. Instead, Krüsi’s tool holder is akin to appellant’s
Figure 4 embodiment, which is not the subject of the appealed
claims. Finally, there is the matter of the requirement of
claims 3 and 15, from which all the other claims remaining on
appeal depend, calling for the expansion of the second
flexible bushing furthermore causing a pressing action of the
toolholder body on a surface integral with the first
supporting and fast-fit connecting means. The examiner has
not adequately addressed this claim limitation in his
determination of obviousness.
Appeal No. 1999-1912
Application No. 08/730,724
9
In light of the above, the decision of the examiner
rejecting claims 3, 4, 6 and 15-18 as being unpatentable over
Suzuki in view of Rudolf and Krüsi is not sustainable.
The decision of the examiner is reversed.
REVERSED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
IRWIN CHARLES COHEN ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LAWRENCE J. STAAB )
Administrative Patent Judge )
lp
Appeal No. 1999-1912
Application No. 08/730,724
10
LOWE PRICE LEBLANC & BECKER
99 CANAL CENTER PLAZA SUITE 300
ALEXANDRIA VA 22314
Leticia
Appeal No. 1999-1912
Application No. 08/730,724
APJ STAAB
APJ CALVERT
APJ COHEN
DECISION: REVERSED
Send Reference(s): Yes No
or Translation (s)
Panel Change: Yes No
Index Sheet-2901 Rejection(s):
Prepared: January 29, 2002
Draft Final
3 MEM. CONF. Y N
OB/HD GAU
PALM / ACTS 2 / BOOK
DISK (FOIA) / REPORT