Ex Parte Shaw

Board of Patent Appeals and Interferences

Aug 13, 2003

05730221 (B.P.A.I. Aug. 13, 2003)

1
The opinion in support of the decision being entered
today was not written for publication and
is not binding precedent of the Board.
Paper No. 27
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte ROBERT F. SHAW
_______________
Appeal No. 2003-0760
Application No. 05/730,221
_______________
ON BRIEF
_______________
Before URYNOWICZ, THOMAS, and GARRIS, Administrative Patent
Judges.
URYNOWICZ, Administrative Patent Judge.
Decision on Appeal
This appeal is from the final rejection of claims 9-30 and
32-37.
The invention pertains to a cutting instrument. Claim 9 is
illustrative and reads as follows:
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Application No. 05/730,221
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9. An instrument for cutting, the instrument
comprising:
blade-shaped means of said instrument that has an edge
which forms the cutting edge thereof; including
means capable of being heated to elevate the
temperature of the blade-shaped means in the region of
the cutting edge, said means capable of being heated
being in the region of said edge and having a physical
parameter which varies as a function of temperature to
increase power dissipation in response to selective
cooling of regions along said edge for maintaining the
temperature of said edge within said selected
temperature range.
The references relied upon by the examiner are:
Meyer 958,753 May 24, 1910
Mitchell et al. (Mitchell) 2,863,036 Dec. 02, 1958
Marcoux 3,414,705 Dec. 03, 1968
Hirschhorn 3,502,080 Mar. 24, 1970
Claims 9, 10, 13-16, 19, 20 and 23-26 stand rejected under
35 U.S.C. § 103 as unpatentable over Mitchell in view of Marcoux.
Claims 11, 12, 17, 18, 21 and 22 stand rejected under 35
U.S.C. § 103 as unpatentable over Mitchell in view of Marcoux and
Hirschhorn.
Claims 27-30 and 32-37 stand rejected under 35 U.S.C. § 103
as being unpatentable over Meyer in view of Marcoux.
The respective positions of the examiner and appellant with
regard to the propriety of these rejections are set forth in the
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Application No. 05/730,221
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examiner’s answer (Paper No. 21) and the appellant’s brief and
reply brief (Paper Nos. 20 and 22, respectively).
Appellant’s Invention
The invention is adequately described on pages 1 and 2 of
appellant’s brief under the heading “Statement of the Invention”.
The Rejection under 35 U.S.C. § 103
of Claims 9, 10, 13-16, 19, 20 and 23-26
The examiner contends that motivation to substitute the
electric heating system of Marcoux, which utilizes material
having a positive temperature coefficient, for the electric
heating system of Mitchell, which utilizes heater and a rheostat,
is to avoid the disadvantages of a thermostat. According to the
examiner, these disadvantages are temperature fluctuation and a
relatively short life of the device.
Appellant submits that there is no suggestion from the
references which justifies a combination thereof. Appellant
argues that the examiner’s position presupposes that the prior
art suggested a need for or desirability of a cutting blade
maintained at a constant elevated temperature and that nowhere in
the references can such a suggestion be found.
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Application No. 05/730,221
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We will not sustain this rejection. We do not find the
motivation set forth by the examiner for combining the teachings
of Mitchell and Marcoux as persuasive. This is because Mitchell
heats his butchering knife with a circuit controlled by a
rheostat, not a thermostat. Mitchell’s rheostat does not
automatically adjust the circuit in order to maintain a knife at
constant temperature, as would a thermostat. Accordingly, the
teachings in Marcoux as to the disadvantages of a thermostat-
ically controlled circuit would not have applied to Mitchell’s
circuit controlled by a rheostat. Otherwise, appellant is
correct that there is no suggestion from the prior art that it
would have been in any way desirable to modify the heated
butchering knife of Mitchell so as to maintain the knife at a
constant elevated temperature for its disclosed purpose of
trimming animal corpus in a cold room.
The Rejection under 35 U.S.C. § 103
of Claims 11, 12, 17, 18, 21 and 22
We found, above, that motivation for combining the teachings
of Mitchell and Marcoux was not established. Whereas Hirschhorn
is not relied upon in the rejection for establishing such
motivation, but is relied upon to establish that the use of
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Application No. 05/730,221
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ceramic in a surgical blade was known in the art, we will not
sustain this rejection.
The Rejection under 35 U.S.C. § 103(a)
of Claims 27-30 and 32-37
We will not sustain this rejection.
In the first place, Meyer discloses a cauterizing wire D.
Wire D is not disclosed as forming a cutting edge. Accordingly,
combining the teachings of Meyer and Marcoux does not result in a
method utilizing a cutting edge.
Furthermore, assuming for purpose of argumentation that wire
D of Meyer forms a cutting edge, the examiner did not establish
that Meyer or Marcoux, or the combination thereof, suggests for
any reason the desirability of increasing power dissipation in
selected regions along a cutting edge to maintain the temperature
of the cutting edge substantially within a selected operating
range. The problem addressed by appellant is not recognized by
the prior art. That problem is to prevent significant increased
bleeding in fleshy areas of a corpus which tend to cool adjacent
portions of a cutting edge. Appellant accomplishes this by
increasing power dissipation in those adjacent portions of the
cutting edge so as to maintain the temperature of the edge
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substantially within a selected operating range. The mere fact
that the prior art may be modified in the manner suggested by the
examiner does not make the modification obvious unless the prior
art suggested the desirability of the modification. In re
Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783-84 (Fed. Cir.
1992).
REVERSED

STANLEY M. URYNOWICZ, JR. )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JAMES D. THOMAS ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
BRADLEY R. GARRIS )
Administrative Patent Judge )
vsh
Appeal No. 2003-0760
Application No. 05/730,221
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FISH & NEAVE
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