Ex parte Patrello

Board of Patent Appeals and Interferences

Aug 30, 2000

08680602 (B.P.A.I. Aug. 30, 2000)

1
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not written for publication and is not binding precedent of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. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte JOSEPH PATRELLO

_____________
Appeal No. 1998-2537
Application 08/680,602
______________
HEARD: August 16, 2000
_______________
Before McCANDLISH, Senior Administrative Patent Judge, and
COHEN and FRANKFORT, Administrative Patent Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner’s
final rejection of claims 1 through 4, which are all of the
claims pending in the application. Claim 5 has been canceled.
Appeal No. 1998-2537
Application 08/680,602
2
Appellant’s invention is directed to a method of
manufacturing a depressed center abrasive wheel having a
thickness of less than three thirty-seconds (3/32) of an inch.
The method comprises the steps of combining metered abrasive
grains (12), metered liquid resin (14), and other grinding
aids (16) into a hopper, which is then transferred into a
mixing chamber. This mixture and layers of fiberglass (26) or
equivalent reinforcing materials are provided in press cavi-
ties (24) of a hydraulic press having mating platens (22)
having flat surfaces to create flat “green” wheels. The flat
“green” wheels are then taken out of the press and disposed
between metal plates (32), each having a depressed wheel
center portion which clamps the flat “green” wheel and forms
the depressed center portion of the “green” wheel (Figure 3).
This clamped assembly is then cured to produce the final
depressed center abrasive wheel product. Claim 1 is represen-
tative of the subject matter on appeal and a copy of that
claim may be found in the Appendix to appellant's brief.
Appeal No. 1998-2537
Application 08/680,602
3
The prior art references of record relied upon by
the examiner as evidence of obviousness are:
Graham 3,836,345 Sept. 17, 1974
Huber et al. (Huber) 4,615,151 Oct. 7, 1986
Claims 1 through 4 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Graham in view of Huber.
Rather than attempt to reiterate the examiner’s full
statement with regard to the above noted rejections and con-
flicting viewpoints advanced by the examiner and appellant
regarding the rejection, we make reference to the final rejec-
tion (Paper No. 5, mailed September 2, 1997) and the exam-
iner’s answer (Paper No. 10, mailed February 20, 1998) for the
reasoning in support of the rejection, and to appellant’s
brief (Paper No. 9, received November 6, 1997) and reply brief
(Paper No. 12, received April 3, 1998) for the arguments
thereagainst.
OPINION
Appeal No. 1998-2537
Application 08/680,602
4
In reaching our decision in this appeal, we have
given careful consideration to appellant’s specification and
claims, to the applied prior art references, and to the re-
spective positions as set forth by the appellant and the
examiner.
With respect to the 35 U.S.C. § 103(a) rejection of
independent claim 1 as being obvious over Graham in view of
Huber, we note that the primary reference to Graham discloses
a
laminated grinding wheel (1) having a thickness of usually
between one sixteenth (1/16) of an inch to three (3) inches
(col. 3, lines 36-38), made of a plurality of layers of
stretchable creped paper (8) and abrasive particles (11)
adhered to the crepe paper via thermosetting resin (12),
creating a grinding wheel lay-up. In an alternative
embodiment, the lay-ups are made of layers of mat paper (2)
Appeal No. 1998-2537
Application 08/680,602
5
and grit paper (3) bonded together by means of a thermosetting
adhesive. The lay-ups are then placed in a suitable press
which may comprise heated upper and lower platen members, to
which pressure may be applied (col. 3, lines 31-41). The
secondary reference to Huber discloses a method for
manufacturing a sound absorbing grinding wheel comprising a
plurality of grinding layers (1) comprising abrasive grains,
filler and a binder; at least one dampening layer formed by
foils (2), preferably butyl rubber; and a reinforcing tissue
(3). The method comprises pouring and flattening a layer of
grinding mixture (1) in a mold (5) and inserting a foil (2)
lined with reinforcing tissue (3). More grinding mixture (4)
is poured thereon and another layer of foil (2) and
reinforcing tissue (3) may be placed thereon and repeated as
desired. This lay-up is then compressed in the
mold (5) to create a grinding wheel blank (7). After removing
the grinding wheel blank (7) from the mold (5), the blank is
clamped between clamping plates (6) and cured. Huber notes
(col. 2, lines 66-68) that the clamping plates (6) are
Appeal No. 1998-2537
Application 08/680,602
6
conformable to the finished grinding wheel and are to ensure
the accuracy in shape and dimension thereof.
It is the examiner’s position that Graham discloses
the production of flat or depressed center abrasive wheels
having a thickness of one sixteenth (1/16) of an inch. For
the process of forming depressed wheels, the examiner (on page
5 of the answer), points to col. 9, line 57 to col. 10, line
3, of Graham, which states:
Where the wheels are cold pressed, the
lay-ups preferably will be die cut to
approximate final diameter and arbor hole
dimensions and the lay-ups pressed at room
temperatures for 1 to 3 minutes to stops
[sic] which establish wheel thickness. The
lay-ups are then removed from the press and
stacked on a metal dowel rod of slightly
smaller diameter than the arbor holes, with
metal plates (flat for cutoff wheels or
shaped for depressed center wheels) and
release sheets positioned between adjoining
lay-ups, and pressure is applied to the
stack so formed by clamps or the like to
maintain the stack in compressed condition.
The stack is then placed in an oven and
cured for about 20-24 hours at a
temperature of from 325° F. to 375° F.
Appeal No. 1998-2537
Application 08/680,602
7
The examiner states that since lay-ups produced in
the pressing step above can be used for production of flat or
depressed center wheels, “it seems clear that a press with
parallel cavity surfaces capable of producing wheels of flat
geometry was used in this compressing step” (final rejection,
pg. 2). The examiner then relies on Huber to teach the use of
a mold for producing flat lay-ups or “green” wheels wherein
the resin and the abrasive grain mixture are poured into a
mold and compressed. From these teachings, the examiner
concludes that it would have been obvious to one of ordinary
skill in the art to have used the mixture and mold of Huber
for producing “the instant flat green wheel since these
features produce a desired green wheel suitable for subsequent
processing and clamping with plates as taught by Huber” (final
rejection, page 3).
In response to the examiner’s rejection, the
appellant argues that the examiner has relied upon hindsight
and that the teachings of the present invention were used as a
template by the examiner to recreate the invention as claimed
Appeal No. 1998-2537
Application 08/680,602
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(brief, pp. 8 and 9). We agree with the appellant that Graham
and Huber, singly or in combination, do not teach or suggest
the step of
clamping a flat “green” wheel between depressed center metal
plates to form a depressed center “green” wheel as claimed in
appellant’s claims on appeal. In fact, Graham states in col.
4, lines 17-19, that “the hub or center portion 5 may be
offset from the plane of the grinding portion of the disc
during molding” (emphasis added). Col. 9, lines 46-48, states
that “[i]t is also within the spirit of the invention to mold
the grinding wheels using either post curing or cold pressing
techniques” (emphasis added). Then in col. 9, lines 57-61,
Graham states that “where the wheels are cold pressed, the
lay-ups . . . [are] pressed at room temperatures for 1 to 3
minutes . . . [and] then removed from the press and stacked on
a metal dowel rod . . . with metal plates (flat for cutoff
wheels or shaped for depressed center wheels)” (emphasis
added) and then subjected to pressure applied to the stack so
Appeal No. 1998-2537
Application 08/680,602
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formed by clamps or the like to maintain the stack in
compressed condition. The stack is then placed in an oven and
cured.
From our evaluation of the disclosure of the
Graham patent as a whole, it is our opinion that the noted
passages above clearly suggest that the depressed center
portion of the lay-ups is formed during the initial cold
pressed molding stage
and not during the subsequent stage of being positioned
between the depressed center metal plates, as the examiner
alleges.
Since the lay-ups are already formed with depressed centers,
it naturally follows that they would then be positioned
between plates with depressed center portions as stated in
Graham col. 9, lines 64 and 65. Moreover, we do not agree
with the examiner’s position (answer, pg. 4) that if “Graham
was using a ‘depressed center mold’ to form the initial green
Appeal No. 1998-2537
Application 08/680,602
10
wheel it seems clear that the reference would have disclosed
this type of press in the preparation of the lay-ups at Col.
9, lines 57-61.” Merely pointing out that the prior art is
silent as to what the examiner feels should have been included
is not a disclosure or teaching in the reference itself and is
not a valid reason for rejection of a claim.
With regard to Huber, we also do not find any
teaching or suggestion of clamping a flat “green” wheel
between depressed center plates to form a depressed center
“green” wheel. Huber describes his process (col. 2, lines 50-
68) stating that after the mixture is poured and flattened or
vibrated smooth, the foil and reinforcing tissue are inserted
into the mold and compressed
“to obtain a grinding wheel blank 7 having the desired dimen-
sions.” After this molding process, the blank is tightened
firmly between clamping plates and then cured. There is no
mention of a depressed center clamp being used, nor does the
reference explicitly state that the mold is exclusively a flat
Appeal No. 1998-2537
Application 08/680,602
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mold. The statement that “the mixture is poured and flattened
or vibrated smooth” prior to the molding process is not
evidence that the mold is exclusively a flat mold, as such an
operation could also be performed on a mold having a depressed
center portion.
It is not difficult to see how the examiner could
have interpreted the sometimes cryptic passages in Graham and
Huber to arrive at the stated rejection. However, in
reviewing both Graham and Huber as a whole, we find that these
references each relate to “green” wheels or lay-ups that
already include a depressed center portion and that they do
not teach or suggest a method as set forth in appellant’s
claim 1 on appeal. Therefore, we find that the examiner has
not established a prima facie case of obviousness.
In view of the foregoing, we will not sustain the
35 U.S.C. § 103(a) rejection of claim 1 posited by the
examiner.
Appeal No. 1998-2537
Application 08/680,602
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Since claims 2 through 4 depend from claim 1 and include all
of the limitations of claim 1, we will also not sustain the
examiner’s rejection of these claims under 35 U.S.C. § 103(a).
In summary, we will not sustain the examiner’s
rejection of claims 1 through 4 under 35 U.S.C. § 103(a) as
being unpatentable over Graham in view of Huber. Therefore,
the decision of the examiner is reversed.
REVERSED
HARRISON E. McCANDLISH )
Senior Administrative Patent Judge )
)
)
) BOARD OF
PATENT
IRWIN CHARLES COHEN ) APPEALS
AND
Administrative Patent Judge )
INTERFERENCES
)
)
)
CHARLES E. FRANKFORT )
Administrative Patent Judge )
Appeal No. 1998-2537
Application 08/680,602
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CEF:psb
Appeal No. 1998-2537
Application 08/680,602
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McCormick Paulding and Huber
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