Ex parte Ouchi et al.

Board of Patent Appeals and Interferences

Jan 26, 1998

08073586 (B.P.A.I. Jan. 26, 1998)

Application for patent filed June 8, 1993.1
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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte WATARU OUCHI, TAIZO MORITA and SHINYA TAGAWA
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Appeal No. 97-1621
Application 08/073,5861
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ON BRIEF
________________
Before STAAB, McQUADE and CRAWFORD, Administrative Patent Judges.
McQUADE, Administrative Patent Judge.
DECISION ON APPEAL
This appeal is from the final rejection of claims 1 through
4 and 6 through 16, all of the claims pending in the application.
The invention relates to “a continuous cutter for severing
pieces of equal length from a coiled elongate article, for
example an extruded aluminum tubular article used to prepare heat
Appeal No. 97-1621
Application 08/073,586
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exchanger tubes” (specification, page 1). Claim 1 is
illustrative and reads as follows:
1. A continuous cutter for severing pieces of equal length
from a coiled elongate article, the cutter comprising:
an uncoiler for carrying the elongate article wound thereon
so as to be drawn therefrom;
a movable stand disposed downstream of the uncoiler for
reciprocating movement;
a drive mechanism for causing the movable stand to
reciprocate a given distance;
a shiftable clamp carried by the movable stand so as to
clamp and unclamp the elongate article;
a cutter blade mounted on the movable stand downstream of
the shiftable clamp;
a fixed clamp interposed between the uncoiler and the
movable stand so as to clamp and unclamp the elongate article;
the shiftable clamp being kept in its clamping state with
the fixed clamp simultaneously being in its unclamping state
during the downstream movement of the movable stand, the fixed
clamp being kept in its clamping state with the shiftable clamp
simultaneously being in its unclamping state during the upstream
movement of the movable stand;
the cutter blade severing each piece from the elongate
article being drawn off the uncoiler during each downstream
movement of the movable stand; and
a stretcher disposed between the fixed clamp and the
uncoiler, the stretcher including upper rollers arranged
stationary at given intervals and lower rollers each interposed
between two adjacent upper rollers and movable up and down, so
that the elongate article from the uncoiler advances through the
stretcher while successively turning around the lower rollers in
a meandering manner, and the lower rollers can be raised against
their weight during the intermittent advancement of the elongate
Appeal No. 97-1621
Application 08/073,586
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article drawn off the uncoiler.
The references relied upon by the examiner as evidence of
obviousness are:
Suarez et al. (Suarez) 4,724,733 Feb. 16, 1988
Sato 4,771,621 Sept. 20, 1988
Wallis 4,939,967 Jul. 10, 1990
Stroup, Jr. (Stroup) 5,143,268 Sept. 1, 1992
The appealed claims stand rejected under 35 U.S.C. § 103 as
follows:
a) claims 1, 3, 6 through 13, 15 and 16 as being
unpatentable over Stroup in view of Suarez and Sato; and
b) claims 2, 4 and 14 as being unpatentable over Stroup in
view of Suarez and Sato, and further in view of Wallis.
Stroup discloses an apparatus “for separating flat heat
exchanger tubing into predetermined lengths” (column 1, lines 6
through 8). As described by Stroup,
[t]he apparatus 10 includes a conventional uncoiler
assembly 12, which uncoils the stock upon demand, a
stock feed roller assembly 14, a straightening and
sizing assembly 16, a clamping assembly 18 for
incrementally feeding the stock, a clamping assembly 20
for stabilizing the stock during a scoring and parting
operation, a scoring assembly 22, and a clamping
assembly 24 for parting the stock by impact [column 2,
lines 37 through 45].
Figures 1 and 2 illustrate the manner in which these elements are
arranged.
Appeal No. 97-1621
Application 08/073,586
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Suarez also discloses an apparatus for separating tubing
into predetermined lengths. As described by Suarez,
[t]he apparatus includes drive rollers to feed the
workpiece, horizontal and vertical straightener
rollers, and a movable carriage assembly which moves in
a parallel path of travel to the workpiece. The free
end of the workpiece contacts the carriage assembly and
imparts movement to the assembly. The carriage
assembly includes a cutter assembly for severing the
workpiece, a stripper assembly for breaking the article
from the workpiece, and a kick-out for sending the
article to a storage bin [Abstract].
Sato discloses a system for the continuous processing of an
elongate steel plate. The system includes a central processing
unit having loopers positioned at its entrance and exit ends to
control the traveling speed of the plate. Each of the loopers
consists of a plurality of fixed upper rollers and a plurality of
lower rollers mounted on a vertically adjustable carriage.
Wallis discloses a machine for cutting tubing into
predetermined lengths wherein cutting assemblies are reciprocated
longitudinally in synchronism with the tubing by a motor-driven
gear and crank assembly.
With regard to the standing 35 U.S.C. § 103 rejection of
independent claim 1, the examiner finds that the apparatus
disclosed by Stroup meets all of the limitations in this claim
except for those requiring a cutter blade mounted on a movable
stand and a stretcher having movable rollers (see page 9 in the
Appeal No. 97-1621
Application 08/073,586
The record (see Paper Nos. 18 and 21) indicates that the2
examiner has refused entry of the reply brief filed by the
appellants on February 10, 1997 (Paper No. 17). Accordingly, we
have not considered the arguments advanced in the reply brief in
reviewing the merits of this appeal.
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answer, Paper No. 16). With regard to these deficiencies, the
examiner concludes that it would have been obvious to one of
ordinary skill in the art “to have substituted a movable carriage
carrying both a clamp and an upstream cutter for Stroup, Jr’s
movable clamp for the advantage of continuously (instead of
incrementally) feeding the coiled tubing stock as taught by
Suarez et al” (answer, page 9) and “to modifiy [sic, modify] the
stretcher of Stroup, Jr. to have movable lower rollers for the
purpose of maintaining a constant web velocity as taught by Sato”
(answer, page 10).
We agree with the appellants, however, that this proposed
combination of references is unsound (see pages 5 through 18 in
the main brief, Paper No. 15). Given the disparate natures of2
the machines disclosed by Stroup, Suarez and Sato, it is apparent
that the examiner has engaged in an impermissible hindsight
reconstruction of the appellants’ invention by using claim 1 as a
template to selectively pick and choose from among isolated
disclosures in the prior art. Moreover, even if the references
were combined in the manner proposed by the examiner, the
Appeal No. 97-1621
Application 08/073,586
Claim 6 depends from canceled claim 5. Based on the3
record before us, we assume that claim 6 is intended to depend
from independent claim 1. In the event of further prosecution
before the examiner, appropriate action should be taken to
rectify this matter.
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resulting apparatus would not meet the limitation in claim 1
requiring “a fixed clamp interposed between the uncoiler and the
movable stand so as to clamp and unclamp the elongate article.”
The examiner’s finding that this recitation is met by Stroup’s
rollers 42 (see page 9 in the answer) is not well taken. These
rollers, which Stroup describes as being part of the
straightening and sizing assembly 16, do not constitute a “clamp”
under any reasonable definition of this term.
In light of the foregoing, we shall not sustain the standing
35 U.S.C. § 103 rejection of independent claim 1, or of dependent
claims 3, 6 through 13, 15 and 16, as being unpatentable over
Stroup in view of Suarez and Sato.3
Nor shall we sustain the standing 35 U.S.C. § 103 rejection
of dependent claims 2, 4 and 14 as being unpatentable over Stroup
in view of Suarez and Sato, and further in view of Wallis. In
short, the teachings of Wallis do not overcome the above noted
deficiencies of the basic Stroup, Suarez and Sato combination
with respect to the subject matter recited in parent claim 1.
Appeal No. 97-1621
Application 08/073,586
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Therefore, the decision of the examiner to reject claims 1
through 4 and 6 through 16 under 35 U.S.C. § 103 is reversed.
REVERSED
LAWRENCE J. STAAB )
Administrative Patent Judge )
)
)
)
JOHN P. McQUADE ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
Appeal No. 97-1621
Application 08/073,586
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