Ex Parte Riviere et al

Board of Patent Appeals and Interferences

Jul 25, 2011

11162627 (B.P.A.I. Jul. 25, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BERTRAND RIVIERE, CHRISTER JONSSON, and
MATTI KARONEN
____________

Appeal 2009-012522
Application 11/162,627
Technology Center 3700
____________

Before LINDA E. HORNER, EDWARD A. BROWN, and
CHARLES N. GREENHUT, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Bertrand Riviere et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the Examiner’s decision rejecting claims 1-20 under 35 U.S.C.
§ 103(a) as being unpatentable over Fauser (US 5,951,213; issued
September 14, 1999) and Sjöö (US 6,168,356 B1; issued January 2, 2001).
An oral hearing was held on July 21, 2011. We have jurisdiction under
35 U.S.C. § 6(b). We REVERSE.
THE INVENTION
Appellants’ claimed invention relates to a milling tool and an
indexable cutting insert for an end mill for the machining of contours in a
workpiece. Spec. 1, para. 1. Claim 1, reproduced below, is representative of
the subject matter on appeal.
1. A milling tool comprising a shaft and a front chip-
removing end, the end having at least one cutting insert pocket
comprising a boring, an indexable cutting insert receivable in
the pocket, a clamp arranged to hold the cutting insert in the
cutting insert pocket, the cutting insert being asymmetrical in
respect of a line through a hole in the cutting insert, the cutting
insert comprising two cutting edge portions, each cutting edge
portion comprising a substantially straight cutting edge and a
curved cutting edge along respective intersecting lines between
a clearance surface and a chip surface, the curved cutting edges
having different lengths, the cutting insert pocket and the
cutting insert comprising cooperating projections and recesses,
wherein the projections are arranged on both sides of and at
different distances from the boring and the recesses are
arranged on both sides of and at different distances from the
hole of the cutting insert.
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Independent claim 13 is directed to an indexable cutting insert for a
milling tool having recesses in a bottom side of the cutting insert that are
“arranged on both sides of and at different distances from the hole of the
cutting insert.”
ISSUES
Appellants contend that neither Fauser nor Sjöö discloses or suggests
providing projections and/or recesses at different distances from a boring of
an insert or a hole of a cutting insert, as called for in claims 1 and 13, and the
Examiner failed to articulate an adequate reason as to why one having
ordinary skill in the art would have been led to make such a modification to
the prior art. App. Br. 6-8; Reply Br. 3-4.
The issue presented by this appeal is whether the Examiner articulated
adequate reasoning based on rational underpinning to explain why a person
having ordinary skill in the art would have been led by the teachings of
Fauser and Sjöö to the projections and/or recesses located at different
distances from a boring or a hole, as called for in claims 1 and 13.
ANALYSIS
We agree with Appellants that the Examiner’s initial rejection of
claims 1-20 failed to make a finding that either Fauser or Sjöö discloses
projections and/or recesses arranged at different distances from a boring in
the insert pocket and a hole in the insert. App. Br. 6; Ans. 3. In fact, the
Examiner acknowledged that Fauser lacks such a disclosure. Ans. 3. The
Examiner found that Sjöö discloses a plurality of projections and recesses on
its mating elements on both sides of the boring, but made no finding that
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these projections and recesses are “at different distances” as claimed. Id.
Further, the Examiner failed to provide any reasoning to explain why one
having ordinary skill in the art would have been led to position projections
and/or recesses “at different distances” as claimed. Id.1 As such, the
Examiner’s initial rejection failed to address all of the limitations found in
independent claims 1 and 13.
In response to Appellants’ arguments raised in the Appeal Brief, the
Examiner stated:
With respect to appellants arguments concerning the
different distances from a boring, the examiner submits that to
provide the device of Fauser et al as modified by Sjoo et al.
with projections and recesses formed at different distances from
a boring would have been obvious to one of ordinary skill in the
art since all the claimed elements were known in the prior art
and one skilled in the art. . . could have located the elements as
claimed at the claimed locations by known methods with no
change in their respective functions, and the combination would
have yielded nothing more than predictable results. Hence one
skilled in the art would have recognized from routine
experimentation the ideal location for the elements to provide
the most secure and effective connection between the elements.
Further, it has been held that discovering an optimum
value of a result effective variable (i.e. location and distance
from the boring) involves only routine skill in the art and it

1 The rejection states only that “[i]t would have been obvious to one having
ordinary skill in the art at the time the invention was made to provide Fauser
et al. with a plurality of projections and recesses on its mating elements on
both sides of its boring in the manner as taught by Sjoo et al. in order to
provide a firmer connection between the elements of the assembly.” Ans. 3.
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appears that the modification would be one of inherent benefit
to the user and therefore an improvement to the assembly.
Ans. 5-6.
The function of Fauser’s projection/recess pair is “to accept axial
forces.” Fauser, col. 7, ll. 42-45. The function of Sjöö’s projections and
recesses is to provide generally upright abutment support surfaces so that the
cutting insert does not need to have its side surfaces abut against any
abutment surfaces of the holder so as to allow cutting inserts having
different contour lines to be clamped in one and the same insert pocket.
Sjöö, col. 1, ll. 45-50 and col. 5, ll. 59-62; figs. 12 and 13. At most, Sjöö
suggests to one having ordinary skill in the art to dispose a plurality of
projections and recesses on Fauser’s pocket and insert arranged at the same
distance from a boring in the pocket and a hole in the insert. Sjöö, Fig. 12.
Appellants’ Specification describes that the groove 41 is arranged
closer to the hole 31 in the cutting insert than groove 42 so that “the cutting
insert can only be placed in one way in the cutting insert pocket.” Spec 5-6,
para. 20. On the contrary, Sjöö discloses providing a variety of grooves on
the underside of the cutting insert, so that the cutting insert can be indexed to
a number of positions in relation to the holder and in relation to the
workpiece. Sjöö, col. 6, ll. 10-17; figs. 14 and 15 (showing two possible
positions of the cutting insert, whereby the cutting insert shown in figure 15
has been turned by one groove spacing, i.e., 30º, in relation to the position of
the cutting insert shown in figure 14). This functionality would seem to be
destroyed by the Examiner’s proposed modification. As such, the function
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of the claimed positions of the projections and recesses at different distances
is different from the function of the projection/recess pair disclosed in
Fauser or of the projections and recesses disclosed in Sjöö. Contra Ans. 5
(where the Examiner erroneously found that “[a] skilled artisan could have
located the elements as claimed at the claimed locations by known methods
with no change in their respective functions. . . .”). The Examiner has not
provided adequate support for the rationale that positioning the projections
and recesses at different distances is somehow ideal for providing the most
secure and effective connection between the elements or that doing so is
merely optimization of the location. As such, we cannot sustain the
rejection of independent claims 1 and 13 or their dependent claims 2-12 and
14-20.
CONCLUSION
The Examiner failed to articulate adequate reasoning based on rational
underpinning to explain why a person having ordinary skill in the art would
have been led by the teachings of Fauser and Sjöö to the projections and/or
recesses located at different distances from a boring or a hole, as called for
in claims 1 and 13.
DECISION
The decision of the Examiner to reject claims 1-20 is REVERSED.

REVERSED

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