Ex Parte Pasulka

Board of Patent Appeals and Interferences

Jan 12, 2006

10322194 (B.P.A.I. Jan. 12, 2006)

1
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written for publication and is not binding precedent of the Board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
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte MATTHEW P. PASULKA
______________
Appeal No. 2005-2687
Application 10/322,194
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HEARD: DECEMBER 13, 2005
_______________
Before KIMLIN, Pak, and KRATZ, Administrative Patent Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 9-15,
21 and 22. Claims 9, 12, and 21 are illustrative:
9. A piece of cut metal formed by a metal cutting
apparatus, comprising:
cooled slag semi-adhering to the metal base wherein the
cooled slag forms a plurality of general arcuate paths,
wherein the pieces of cut metal has a cut formed therein
by the metal cutting apparatus, so that an edge of the cut is
straight.
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Application 10/322,194
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12. A piece of cut metal formed by a metal cutting
apparatus, comprising:
first and second surfaces, said first and second surfaces
being disposed on opposite sides of said cut metal; and
an edge connecting said first and second surfaces, wherein
said edge has a grain pattern that is not perpendicular to said
first and second surfaces of said cut metal.
21. A piece of cut metal formed by a metal cutting
apparatus, comprising:
a metal base; and
a cooled slag semi-adhering to the metal base.
The examiner relies upon the following references in the
rejection of the appealed claims:
Jones 2,289,786 July 14, 1942
Babcock 2,301,923 Nov. 17, 1942
Meincke 2,470,999 July 28, 1944
Bissonnette 5,944,915 Aug. 31, 1999
Appellant’s claimed invention is directed to a piece of
cut metal having slag semi-adhered to the metal base.
Claims 9-15, 21 and 22 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over any one of Bissonnette,
Babcock, Meincke or Jones. Claims 21 and 22 stand rejected
under 35 U.S.C. § 102(b) as being anticipated each of
Bissonnette, Babcock and Jones.
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Application 10/322,194
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We have throughly reviewed the respective positions
advanced by appellant and the examiner. In so doing, we will
sustain the examiner’s rejection of claims 9-11, 21 and 22, but
reverse the examiner’s rejection of claims 12-15. Our
reasoning follows.
We consider first the examiner’s section 102 rejection of
claims 21 and 22. Claim 21 on appeal simply calls for a piece
of cut metal having cooled slag semi-adhered to the metal base.
There is no dispute that each of Bissonnette, Babcock and Jones
describes cut metal work pieces having slag adhered thereto.
It is appellant’s contention that the slag described in the
references is not semi-adhered to the metal base. However, as
pointed out by the examiner, the present specification fails to
define the claim term “semi-adhering” in any way that serves to
distinguish the piece of cut metal from the pieces described in
the applied references. While appellant maintains that “the
apparatus is described in the cited and applied references are
incapable of forming a cooled slag semi-adhering to a metal
base” (page 10 of principal brief, fourth paragraph), and
relies on the Sykes declaration in support of the argument,
appellant has not established on the present record actual
differences between how the slag is adhered to the cut metal
Appeal No. 2005-2687
Application 10/322,194
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pieces of the references and how the slag of the claimed
invention semi-adheres to the cut metal piece. Significantly,
the Sykes declaration states that the slag of the references is
not sufficiently oxidized “to make it semi-adhering, thus
requiring the user to grind substantial amounts” (page 3 of
declaration, first full sentence.) However, appellant’s own
specification at page 37, discloses that the semi-adhering
“slag may be removed with a grinder and other methods known in
the art” (second paragraph). Hence, although there maybe a
distinction in appellant’s method and apparatus for forming a
cut metal piece, appellant has not demonstrated that cut metal
pieces within the scope of the appealed claims are patentably
distinct from the cut metal pieces of the prior art.
We will also sustain the examiner’s Section 103 rejection
of claims 9-11, 21 and 22. Manifestly, inasmuch as we find
that the subject matter of claims 21 and 22 is described by the
applied prior at within the meaning of Section 102, it
logically follows that we will sustain the rejection of these
claims under Section 103. As for claims 9-11, the claims
recite that the slag “forms a plurality of general arcuate
paths” (claim 9), forms paths “traverse to the longitudinal
length of the gouge” (claim 10), and “has generally linear
Appeal No. 2005-2687
Application 10/322,194
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shapes” (claim 11). In essence, we find that the relative
nature of the claim language that defines the paths of the
cooled slag does not serve to distinguish the claimed slag from
the slag of the prior art. We essentially agree with the
examiner that if the cut pieces of the prior art are in the
form of “a bar or other round shape, the slag shapes will be
arcuate” (page 5 of answer, first paragraph), at least
generally so. On the other hand, appellant has not established
on the record, let alone explained, how the actual paths of the
cooled slag in the prior art are substantively different than
the paths of the cooled slag within the scope of the appealed
claims.
The rejection of claims 12-15 is another matter. These
claims specify particular grain patterns on the edge which
connect the first and second surfaces of the piece of cut
metal. Claim 12, for example, recites that “said edge has a
grain pattern that is not perpendicular to said first and
second surfaces of said cut metal.” As acknowledged by the
examiner, the cited references are silent with respect to the
grain pattern of the edge of the cut metal. Faced with such
silence, it is the examiner’s burden to set forth a rationale
which explains either why the prior art inherently has a grain
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pattern like that claimed, or why it would have been obvious
for one of ordinary skill in the art to form such a grain
pattern. The examiner has done neither. The examiner
erroneously reasons that because no method or apparatus is
recited in the appealed claims, “[t]he claims are so direct
solely to an article with no mention of any processing step
required to produce the article, thereby allowing for any
desired processing step able to produce the article to be
employed” (sentence bridging pages 4 and 5 of answer).
However, while the claims may embrace any process for making
the recited grain pattern, the examiner has pointed to no
process or apparatus in the prior art that would form the
claimed grain pattern. In essence, the examiner has ignored
the specific features of the articles defined in claims 12-15.
In conclusion, based on the foregoing, the examiner’s
Section 102 rejection of claims 21 and 22 is sustained, as is
the examiner’s Section 103 rejection of claims 9-11 and 21-22.
However, the examiner’s Section 103 rejection of claims 12-15
is reversed.
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Accordingly, the examiner’s decision rejecting the
appealed claims is affirmed-in-part.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a)(iv)(effective Sept. 13, 2004).
AFFIRMED-IN-PART
Edward C. Kimlin )
Administrative Patent Judge )
)
)
)
Chung K. Pak ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Peter F. Kratz )
Administrative Patent Judge )

ECK/cam
Appeal No. 2005-2687
Application 10/322,194
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