Ex parte PEAY

Board of Patent Appeals and Interferences

Feb 20, 1998

08098062 (B.P.A.I. Feb. 20, 1998)

Application for patent filed July 28, 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journal and (2) is not binding precedent of the Board.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. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte KENT PEAY, DAVID A. McCLOSKEY
and JAN M. ANDERSSON
________________
Appeal No. 96-3031
Application 08/098,0621
________________
ON BRIEF
________________
Before ABRAMS, STAAB, McQUADE, Administrative Patent Judges.
McQUADE, Administrative Patent Judge.
DECISION ON APPEAL
This appeal was taken from the final rejection of claims 1,
2, 6 through 9, 13, 14 and 26. The examiner has since indicated
claim 26, which was amended subsequent to final rejection, to
stand allowed. Thus, the appeal as to claim 26 is hereby
dismissed, leaving for review the standing rejection of claims 1,
Appeal No. 96-3031
Application 08/098,062
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2, 6 through 9, 13 and 14. Claims 15, 16, 18, 20 through 22 and
24, the only other claims pending in the application, also stand
allowed.
The invention relates to “a cutting insert for use in a
drill bit for cutting holes in a mine roof” (specification, page
1). Claim 1 is representative of the subject matter on appeal
and reads as follows:
1. A cutting insert for a rotary roof bit used for
drilling holes in a mine roof, comprising a body formed of hard
material and including first and second main surfaces, first and
second end surfaces, a bottom surface, and a top surface; said
first and second main surfaces being spaced apart by a thickness
of said body; said first and second end surfaces being spaced
apart by a width of said body; said top and bottom surfaces being
spaced apart by a height of said body; a maximum width of said
body being greater than a maximum height of said body; said top
surface including first and second top sections, said first top
section intersecting said first main surface to define therewith
a first cutting edge; said first top section being inclined
downwardly from said first cutting edge to said second main
surface to form a relief; said second top section intersecting
said second main surface to define therewith a second cutting
edge; said second top section being inclined downwardly from said
second cutting edge to said first main surface to form a relief;
each of said first and second cutting edges comprising a
plurality of cutting edge segments forming obtuse angles between
one another as said insert is viewed in a direction perpendicular
to said main surfaces; an outermost one of said cutting edge
segments of each cutting edge forming an angle of at least 120
degrees with said respective end surface, said body including an
axial notch disposed at a center of said top surface between said
cutting edges, said notch extending completely across the
thickness of said body.
Appeal No. 96-3031
Application 08/098,062
In a footnote on page 5 in the main brief, the appellants2
refer to an affidavit (actually a declaration), submitted on May
15, 1995 (Paper No. 12), containing data purportedly
“demonstrating the improved penetration rate obtained by the
presently claimed insert.” The examiner, however, has refused to
enter the declaration into the record (see the advisory action
dated May 24, 1995, Paper No. 14). Accordingly, we have not
considered the declaration in reviewing the merits of the
rejection on appeal.
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The prior art items relied upon by the examiner as evidence
of obviousness are:
Nance 5,269,387 Dec. 14, 1993
(filed Feb. 27, 1992)
The prior art roof bit insert discussed in lines 13 through 24 on
page 2 in the appellants’ specification (the admitted prior art
roof bit insert).
Claims 1, 2, 6 through 9, 13 and 14 stand rejected under
35 U.S.C. § 103 as being unpatentable over Nance in view of the
admitted prior art roof bit insert.
Reference is made to the appellants’ main and reply briefs
(Paper Nos. 16 and 18) and to the examiner’s answer (Paper No.
17) for the respective viewpoints of the appellants and the
examiner with regard to the propriety of this rejection. Since2
the appellants, stating that “[a]ll claims stand or fall
together” (main brief, page 4), have not argued separately the
patentability of any particular claim apart from the others, all
of the appealed claims shall stand or fall with representative
Appeal No. 96-3031
Application 08/098,062
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claim 1 (see In re Young, 927 F.2d 588, 590, 18 USPQ2d 1089, 1091
(Fed. Cir. 1991); In re Wood, 582 F.2d 638, 642, 199 USPQ 137,
140 (CCPA 1978)).
Nance discloses a mine roof tool bit insert which the
appellants concede “possesses the features recited in the claims
on appeal except for the center notch” (main brief, page 4).
The admitted prior art roof bit insert is described on page
2 in the appellants’ specification as follows:
It has been conventional to provide a roof bit
insert 10' with a center notch N, as shown in FIG. 2A.
By replacing the chisel edge 16 with such a notch, the
penetration rate of the conventional roof bit is
increased. In that regard, a chisel edge does not
perform a cutting action as such, but rather serves to
grind or pulverize the center region of the hole being
drilled. That, however, is not an efficient or rapid
way to remove rock material. By providing a center
notch in lieu of a chisel, a center core of rock
material will be formed which can be more easily broken
into fragments, thereby improving the penetration rate.
According to the examiner,
applicants admitted in page 2, lines 13-24 that it is
conventional to provide a roof bit insert with a center
notch to improve the penetration rate. It would have
been obvious to one of ordinary skill in the art at the
time the invention was made to provide the insert of
Nance ‘387 with a center notch for the advantage
pointed out above [answer, page 3].
The appellants, on the other hand, take the position that
this combination of Nance and the admitted prior art would not
Appeal No. 96-3031
Application 08/098,062
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have been obvious because the proposed modification of the Nance
insert would “likely be at the expense of reduced wear life”
(main brief, page 5) and thus runs counter to Nance’s repeatedly
stated objective of increasing wear resistance.
The discussion in the last paragraph on page 7 of the
appellants’ specification lends support to the assertion that the
proposed modification of the Nance insert would be at the expense
of reduced wear life. Nonetheless, both Nance (see column 2,
lines 49 through 52) and the appellants’ admission establish that
increased penetration rate also is a desired characteristic of
mine roof cutting inserts. Indeed, the combined teachings of
Nance and the admitted prior art demonstrate that the artisan
would have readily appreciated the proposed modification of the
Nance cutting insert as involving a relatively simple and
straightforward tradeoff of one known advantageous property
(increased wear life) for another (increased penetration rate).
In this light, the differences between the subject matter recited
in representative claim 1 and the prior art are such that the
subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art.
Accordingly, we shall sustain the standing 35 U.S.C. § 103
rejection of claim 1 and of claims 2, 6 through 9, 13 and 14
Appeal No. 96-3031
Application 08/098,062
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which stand or fall therewith.
The decision of the examiner is affirmed.
As a final matter, it is noted that the term “said chisel
cutting edge portion” in independent claim 8 lacks a proper
antecedent basis and that claim 8 and dependent claim 13
apparently utilize inconsistent terminology, i.e. “second cutting
edge segment” (claim 8) and “innermost cutting edge segment”
(claim 13), to refer to the same cutting edge segment. It is
also noted that the recitation of both a notch and a chisel edge
or chisel edge portion in appealed claim 8 and in allowed claims
18 and 24 appears to be inconsistent with the indication in the
underlying specification that these two features are mutually
exclusive. These areas of concern should be appropriately
addressed upon return of the application to the examining group.
Appeal No. 96-3031
Application 08/098,062
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
LAWRENCE J. STAAB ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JOHN P. McQUADE )
Administrative Patent Judge )
Appeal No. 96-3031
Application 08/098,062
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Ronald L. Grudiecki
Burns, Doane, Swecker & Mathis
George Mason Bldg.
Washington & Prince Sts.,
P.O. Box 1404
Alexandria, VA 22313-1404
Appeal No. 96-3031
Application 08/098,062
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