Ex parte RUSSELL

Board of Patent Appeals and Interferences

Sep 28, 1998

08532507 (B.P.A.I. Sep. 28, 1998)

Application for patent filed September 22, 1995. 1
According to appellant, this application is a division of
Application No. 08/251,024, filed May 31, 1994, now U.S.
Patent No. 5,486,133, issued January 23, 1996.
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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journal and (2) is not binding precedent of the Board.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. 10
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JERRY RUSSELL
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Appeal No. 97-4209
Application No. 08/532,5071
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ON BRIEF
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Before MEISTER, McQUADE and CRAWFORD, Administrative Patent
Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 97-4209
Application No. 08/532,507
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This is a decision on an appeal from the examiner's final
rejection of claims 20, 21, 29, and 30 which are all the
claims pending in the application. Claims 1 through 19 and 22
through 28 have been canceled. Appellant's claimed subject
matter is a grinding wheel. Claim 20 is exemplary of the
subject matter on appeal and recites:
20. Grinding wheel construction for cutting teeth into a belt
blank to produce a timing belt, said wheel construction
comprising:
a wheel (58) having an axis of rotation (F) and an
abrasive peripheral grinding surface (100) of predetermined
width;
and characterized by said grinding surface (100) having a
concave profile across said width and a plurality of radially
projecting grinding ribs (106) extending circumferentially
about the periphery of said grinding surface (106) and spaced
laterally across the width of said grinding surface (100).
THE REFERENCES
The examiner has relied on the following references:
Miller 2,144,987 Jan. 24, 1939
Quintilio 5,373,666 Dec. 20, 1994
(filed Mar. 22, 1993)
THE REJECTIONS
Claims 20, 21, 29 and 30 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Miller in view Quintilio.
Appeal No. 97-4209
Application No. 08/532,507
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Rather than reiterate the entire arguments of the
appellant's and examiner in support of their respective
positions, reference is made to the appellant's Brief (Paper
No. 8), the Final Rejection (Paper No. 6) and the Examiner's
Answer (Paper No. 9) for the full exposition thereof.
OPINION
In reaching our conclusions on the issues raised in this
appeal, we have carefully considered appellant's specification
and claims, the applied references, and the respective
viewpoints advanced by the appellant and the examiner. As a
consequence of our review, we have made the determinations
which follow.
The examiner found that Miller disclosed the subject
matter of independent claims 20, 29 and 30 except that Miller
did not disclose a concave profile across the width of the
grinding wheel. The examiner relies on Quintilio for teaching
a grinding wheel having a concave grinding profile across the
width. Quintilio discloses a grinding wheel for the machine
working of marble and granite. The profile of the grinding
wheel is concave. The examiner concluded:
Appeal No. 97-4209
Application No. 08/532,507
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[T]o modify the shape of the profile of the grinding
wheel of Miller by having various shaped profiles
such as a concave grinding surface as taught by
Quintilio would have been obvious at the time
applicant's invention was made to a person of
ordinary skill in the art in order to accommodate
and grind workpieces having a rounded shape. [Final
Rejection (Paper No. 6) at page 3].
We do not agree. In order for the examiner to set forth
a prima facie case of obviousness, she must establish why one
having ordinary skill in the art would have been led to the
claimed invention by the reasonable teachings or suggestions
found in the prior art or by reasonable inferences to the
artisan contained in such teachings or suggestions. See In re
Sernaker, 702 F.2d 989, 994, 217 USPQ 1, 5 (Fed. Cir. 1983).
We find no suggestion or motivation for the combination
advanced by the examiner. Miller discloses a grinding wheel
for grinding serrated blades for use in cutter heads. The
cutter blades that are produced by the Miller method have
serrations that are perfectly true and accurate, are free from
distortion and scaling, and fit perfectly the serrations of
the body with which they interfit as is depicted in Figures 4
and 7 (column 1, lines 6-8; column 2, lines 3-8). Quintilio,
on the other hand, discloses a grinding wheel for machining
Appeal No. 97-4209
Application No. 08/532,507
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marble and granite. Aside from sharing the disclosure of a
grinding wheel, the grinding wheels and materials that are
ground by the grinding wheels of Miller and Quintilio have
little in common. In our view, the only suggestion for
combining such disparate structures in the manner proposed by
the examiner stems from hindsight knowledge derived from
appellant's own disclosure. Therefore, we will not sustain
the examiner's rejection of claims 20, 21, 29
Appeal No. 97-4209
Application No. 08/532,507
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and 30 under 35 U.S.C. § 103 as being unpatentable over Miller
in view Quintilio.
The decision of the examiner is reversed.
REVERSED
JAMES M. MEISTER )
Administrative Patent Judge )
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)
)
)
)
JOHN P. McQUADE ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
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MURRIEL E. CRAWFORD )
Administrative Patent Judge )
clm
Appeal No. 97-4209
Application No. 08/532,507
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Richard M. Hoffmann
Reising, Ethington, Barnard & Perry
P.O. Box 4390
Troy, MI 48099