Ex Parte Pilkington

Patent Trial and Appeal Board

Jun 24, 2013

12041904 (P.T.A.B. Jun. 24, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/041,904 03/04/2008 MARK IAIN PILKINGTON RORO-1537 2350
54621 7590 06/24/2013
Krieg DeVault LLP
One Indiana Square
Suite 2800
Indianapolis, IN 46204
EXAMINER
SWINNEY, JENNIFER B
ART UNIT PAPER NUMBER
3724
MAIL DATE DELIVERY MODE
06/24/2013 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MARK IAIN PILKINGTON
____________________

Appeal 2011-004430
Application 12/041,904
Technology Center 3700
____________________

Before PHILLIP J. KAUFFMAN, PATRICK R. SCANLON, and
BART A. GERSTENBLITH, Administrative Patent Judges.

SCANLON, Administrative Patent Judge.

DECISION ON APPEAL
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Application 12/041,904

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STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
decision rejecting claims 1-3, 9, 10, 15-18, and 21.1 Claims 8 and 11-14
stand withdrawn from consideration, and claim 7 is cancelled. Claims 6, 19,
and 20 are objected to as being dependent upon a rejected base claim, but
would be allowable if rewritten in independent form including all of the
limitations of the base claim and any intervening claims. Final Rej. 10. We
have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
THE INVENTION
Appellant’s claimed invention is directed to “a tool assembly having
structure for directing a flow of fluid to a cutting edge to remove chips from
the work-piece and cool the cutting edge.” Spec., para. [0001]. Claims 1
and 15 are the independent claims on appeal. Claim 1, reproduced below, is
illustrative of the claimed subject matter.
1. A tool assembly for removing material from
a work-piece and comprising:
a cutter having a plurality of cutting teeth
spaced circumferentially about an axis of rotation

1 The Examiner also rejects claim 4 under 35 U.S.C. § 112, second
paragraph, as being indefinite (Final Rej. 2; Ans. 3) and claims 4 and 5
under 35 U.S.C. § 102(b) as being anticipated by Briese (Final Rej. 5;
Ans. 6). However, Appellant enumerates the claims pursued on appeal and
claims 4 and 5 are not listed. App. Br. 4, 12; Reply Br. 5. Therefore, claims
4 and 5 are considered withdrawn from the appeal, and we suggest that the
Examiner cancel these claims upon return of jurisdiction of this application
to the Examiner. See Ex Parte Ghuman, 88 USPQ2d 1478, 1480 (BPAI
2008) (precedential); Manual of Patent Examining Procedure (MPEP)
§ 1215.03 (8th ed., Rev. 9, Aug. 2012).
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Application 12/041,904

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along a cutting end periphery, said cutter also
having a body extending away from said cutting
end periphery along said axis of rotation;
a passageway for directing a flow of coolant
to said cutting end periphery, said passageway
defined at least in a part by said cutter; and
a cap engaged with said cutter and having a
dispersion disk positioned in spaced relation to
said cutting end periphery whereby an annular gap
is defined between said cutting end periphery and
said dispersion disk along said axis of rotation,
said gap communicating with said passageway for
directing coolant radially outward relative to said
axis of rotation, said annular gap being open
toward said plurality of teeth and also being open
in a direction originating at said axis of rotation
and extending away from said axis of rotation
between said plurality of teeth.
Claim 15 is directed to a tool assembly for cutting metal comprising,
inter alia, a cutter, a cap received in a cavity of the cutter so as to define an
annular gap, and a passageway for directing coolant to the annular gap.
REJECTIONS
The following rejections are before us on appeal:
Claims 1-3, 9, and 10 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Briese (US 4,322,189, iss. Mar. 30, 1982).
Claims 1, 15-18, and 21 stand rejected under 35 U.S.C. § 102(b) as
being anticipated Briese.
ANALYSIS
The Examiner finds that Figure 1 of Briese discloses a tool assembly
having all the elements of claim 1 including an annular gap “defined
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between the base portion of the tool, 30 and the dispersion disk.”2 Ans. 3-4.
Appellant argues that “Figure 1 of Briese does not disclose, expressly or
inherently, an annular gap being open toward a plurality of teeth and also
being open in a direction originating at the axis of rotation and extending
away from the axis of rotation between the plurality of teeth.” App. Br. 6.
We agree that Briese fails to disclose an annular gap as claimed.
Briese discloses a milling tool 2 having a coolant flow guide plate 28
attached to the central base portion 30 of the milling tool 2 for distributing
coolant in the direction of the cutting inserts 32. Briese, col. 2, ll. 62-66;
fig. 1. The guide plate 28 has a central receiving chamber 34 and a plurality
of spiral channels 36 formed in one face thereof so that coolant from a
central duct 14 is received in the central receiving chamber 34 and fed out
through the channels 36 toward the cutting inserts 32. Briese, col. 3, ll. 1-
17; figs. 1-3.
As such, the channels 36 arguably form four discrete “gaps” between
the end face of the tool’s base portion 30 and the guide plate 28, but these
channels 36, considered individually or collectively, do not define a gap that
is annular. “Terms in claims are to be given their ordinary and accustomed
meaning, unless it appears that the inventor used them differently.” Lantech,
Inc. v. Keip Mach. Co., 32 F.3d 542, 547 (Fed. Cir. 1994) (quoting
Envirotech Corp. v. Al George, Inc., 730 F.2d 753, 759 (Fed. Cir. 1984)).
Here, there is nothing in the claims, Appellant’s Specification, or the
prosecution history that would suggest Appellant intended to use “annular”
in a manner different than its ordinary meaning, making it appropriate to

2 The rejection of independent claim 15 likewise relies, at least in part, upon
Figure 1 of Briese. Ans. 9-10.
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consult a general dictionary definition of the word for guidance in
determining the ordinary and customary meaning of the claim term as
viewed by a person of ordinary skill in the art. Comaper Corp. v. Antec,
Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010). An ordinary meaning of
“annular” taken from a general dictionary is “of, relating to, or forming a
ring.” MERRIAM-WEBSTER ONLINE DICTIONARY, (2013), http://www.merriam-
webster.com, accessed June 18, 2013.3 The spiral channels 36 of Briese do
not relate to, form, or in any way resemble a ring and consequently do not
define an annular gap.
The Examiner offers a second basis for rejecting claim 1, as well as
independent claim 15, as being anticipated by Briese, noting that “[t]he
milling tool of Figure 1, encompasses several of the same structural
elements of Figure 6, and will therefore be made reference to in the [second
basis of] rejection.” Ans. 6. In this case, the Examiner finds that Figure 6 of
Briese discloses “an annular gap . . . defined between the base portion of the
tool, 30 and the dispersion disk,” as recited in both claims 1 and 15. Ans. 7.
Figures 4-6 of Briese do not so much disclose a different embodiment
than that depicted in Figures 1-3, but show a means for attaching the coolant
flow guide plate 28 to the central base portion 30 of the milling tool 2.
Briese, col. 3, ll. 33-35. This includes an expansion bushing 46 received in a
central aperture 44 and secured by a set screw 52. Briese, col. 3, ll. 38-44;
figs. 4, 6. Figures 4 and 6 show that the guide plate 28 continues to have
discrete channels 36. Accordingly, the arrangement shown in Figure 6 of

3 This definition is believed to accurately reflect the meaning of “annular” at
the time of the invention, i.e., as of the effective filing date of Appellant’s
application.
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Briese fails to include a gap that is annular for the same reasons as discussed
supra.
For the above reasons, we find that Briese (relying on Figure 1 and/or
Figure 6) does not disclose each and every element of claims 1 and 15. We
accordingly reverse the rejections of independent claims 1 and 15, and their
dependent claims 2, 3, 9, 10, 16-18, and 21, as anticipated by Briese.
DECISION
We reverse the decision of the Examiner rejecting claims 1-3, 9, 10,
15-18, and 21.

REVERSED

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