Ex Parte Rysavy

Patent Trial and Appeal Board

Oct 25, 2012

11745555 (P.T.A.B. Oct. 25, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JAROMIR RYSAVY
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Appeal 2010-011267
Application 11/745,555
Technology Center 3700
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Before: CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
JAMES P. CALVE, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-011267
Application 11/745,555

2
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1-
17 and 19-21. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
The claims are directed to a cutting insert and cutting tool. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A cutting insert comprising an insert body
having a clamping hole including a clamping
surface defining at least part of a non-circular,
substantially elliptical cone and having two clamp
contact points defining outer edges of at least one
area of contact between the damping surface and a
clamp, the insert comprising a top surface, a
bottom surface, and a plurality of edge surfaces
comprising insert supporting surfaces between the
top surface and the bottom surface, wherein the
outer edges of the at least one area of contact are
arranged relative to at least two non-parallel insert
supporting surfaces of the insert supporting
surfaces so that components of a force applied to at
least the two damp contact points of the at least
one area of contact are adapted to be transmitted
simultaneously to the two non-parallel insert
supporting surfaces of the insert supporting
surfaces.

REJECTION
Claims 1-17 and 19-21 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Gräfe (US 4,283,163 iss. Aug. 11, 1981) and Weller
(US 3,341,921 iss. Sep. 19, 1967). Ans. 3.

Appeal 2010-011267
Application 11/745,555

3
OPINION
The original position taken by the Examiner regarding the “clamping
hole including a clamping surface defining at least part of a non-circular,
substantially elliptical cone” of independent claims 1 and 10 was, “[i]t is old
and well known in the art of geometry that a circle is a form of an ellipse.”
Final Rej. 11. However, perhaps because this interpretation is precluded by
the express language of the claim, “non-circular,” and the express definition
in Appellant’s Specification as “excluding shapes that are circular, even
though, technically, a circle is a form of ellipse” (Spec. 5), the Examiner
appears to have abandoned this position. Nevertheless, in the statement of
rejection the Examiner contends Gräfe teaches a substantially elliptical cone
(Ans. 3); for example, in response to Appellant’s arguments the Examiner
contends that
Grafe teaches a clamping surface having a curvature. It is old
and well known in the art of geometry for curvatures to define a
path (which may lead to a desired shape). According to
Britannica Encyclopedia, the term curvature is defined as, the
rate of change of direction of a curve with respect to distance
along the curve. Therefore, the clamping hole and the claming
[sic] surface are defined by curvature capable of being non-
circular and substantially elliptical.
Ans. 11.
Like Appellant, we have difficulty understanding the Examiner’s
position. Reply Br. 1-2. The rejection is based upon 35 U.S.C. § 103(a), and
the Examiner, in the Answer, appears to recognize that there are differences
between the prior art and the claimed subject matter. But, the Examiner does
not offer reasoning as to why the claimed subject matter as a whole would
have been obvious in light of those differences. See KSR Int’l. v. Teleflex,
Appeal 2010-011267
Application 11/745,555

4
550 U.S. 398 (reaffirming the framework of Graham v. John Deere Co. of
Kansas City, 383 U.S. 1 (1966)). The meaning of “curvature capable of
being non-circular and substantially elliptical” is unclear. As best we can
tell, the Examiner’s position appears to be that since Gräfe discloses a hole
defining a circular cone, and circles are curved, that in light this disclosure,
cones of all other curvatures, such as ellipses, would have been obvious.
This is not a case where the disclosure of a fairly small genus can be
said to disclose each species therewithin. The particular geometries of the
clamping holes in the prior art and the claimed subject matter are selected to
ensure the ability to maintain precise tolerances. See e.g., Weller col. 2, l. 2.
And, there are a wide variety of geometries one could choose or conceive of.
The Examiner has not articulated reasoning with rationale underpinnings as
to why the specific structure claimed by Appellant would have been obvious
in light of Gräfe’s hole simply because they share a common feature:
curvature.
Accordingly, the Examiner’s rejection cannot be sustained.

DECISION
The Examiner’s rejection of claims 1-17 and 19-21 is reversed.

REVERSED

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